We have commented previously on the benefits a Product & Process Description (PPD) provides to the parties in patent litigation, and how it can avoid the substantial costs and distraction of providing disclosure of the accused infringing product or process - see "PPD - Get it right or face the consequences". However, as set out in the recent High Court decision in Varian Medical Systems AG v Elekta Ltd and another  EWHC 2679 (Pat) a PPD does not always alleviate the accused infringer of having to give disclosure on the question of infringement.
Varian's patent was for a magnetic resonance imaging linear accelerator used in radiotherapy. A key feature of the patent and the patent claims was "real time control". Elekta served a PPD providing details of their product, which was to the effect that the product did not have real time control. This was challenged by Varian because Elekta had been making public statements that they were going to launch and were offering a product which had the real time control feature. Varian therefore sought disclosure from Elekta. This was resisted by Elekta on the basis that having provided a PPD, it was relieved of the burden of providing any further disclosure on the question of infringement.
The English Civil Procedure Rules provide (63PD6.1) that:
Standard disclosure does not require the disclosure of documents that relate to:
(1) the infringement of a patent by a product or process where … the defendant [serves] …
(i) full particulars of the product or process alleged to infringe; and
(ii) any necessary drawings or other illustrations.
Thus, Elekta argued that they had fulfilled the requirements and therefore no further disclosure relating to infringement could be sought.
The Judge, Birss J. agreed - up to a point. He commented, "the practice direction provides that when a party serves a Product Description they are relieved of the obligation of standard disclosure relating to 'the infringement of a patent by a product or process'". However, he then went on to add, "in my judgment, what that is concerned with is the nature and characteristics of the product or process in issue and the question of whether the product or process falls within the claims. What it is not concerned with is a factual issue of whether certain acts have or have not been carried out".
It is not just the making and selling of products that can give rise to patent infringement; so too can the offering of products if such products fall within the scope of the claims of the patent. The question of the products that Elekta was offering for sale therefore was a live question for the court to resolve. Accordingly Birss J ordered that Elekta give disclosure of documents going to the issue of what product Elekta was offering for sale.
The distinction between acts of sale and acts of offering for sale was particularly pertinent in this case as the patent was nearing the end of its life, and Elekta had openly stated that after the expiry of the patent they intended to incorporate the real time control feature into their products. It was relevant, therefore, to know whether Elekta were already offering such products for sale.
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