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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA & Ors [2016] EWHC 27 (Pat) (13 January 2016)
URL: http://www.bailii.org/ew/cases/EWHC/Patents/2016/27.html
Cite as: [2016] WLR(D) 2, [2016] FSR 25, [2016] EWHC 27 (Pat), [2016] WLR 2353, [2016] 1 WLR 2353

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Neutral Citation Number: [2016] EWHC 27 (Pat)
Case No: HC - 2013 - 000099

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

The Royal Courts of Justice,
7 Rolls Building,
Fetter Lane, London EC4A 1NL
13/01/2016

B e f o r e :

MR. JUSTICE BIRSS
____________________

Between:

ELECTROMAGNETIC GEOSERVICES ASA
(a company incorporated under the laws of Norway)
Claimant
- and -


(1) PETROLEUM GEO-SERVICES ASA
(a company incorporated under the laws of Norway)

(2) PGS EXPLORATION (UK) LIMITED

(3) PGS GEOPHYSICAL AS
(a company incorporated under the laws of Norway)
Defendants

____________________

MR. ADRIAN SPECK QC (instructed by Bird & Bird) for the Claimant
MR. JAMES WHYTE (instructed by Bristows) for the Defendants

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

    Mr Justice Birss :

  1. In this judgment I set out my reasons for making various orders at this hearing. The points to be covered are:
  2. i) Experiments

    ii) Scientific adviser

    iii) Permission to call Dr Eidesmo

    iv) Permission to amend the pleadings

  3. In this action the claimant (EMGS) claims infringement of patent EP (UK) 1 256 019. The defendants (PGS) deny infringement and counterclaim for revocation. The trial is currently fixed for a window starting on 7th March 2016 with a time estimate of 10 days plus 2 days pre-reading.
  4. The patent is entitled "Method for determining the nature of subterranean reservoirs" and the claims relate to a method of finding hydrocarbons. Recognising that hydrocarbons can be oil or gas, I will refer to this as finding oil. Following a trial in June 2008 between EMGS and Schlumberger, Mann J decided that the patent was invalid ([2009] EWHC 58 (Ch)) but on appeal, in a judgment dated July 2010, the Court of Appeal decided it was valid ([2010] EWCA Civ 819). In that Schlumberger v EMGS action infringement was not in issue.
  5. The Court of Appeal explained that the problem was how to find oil. At paragraph 13 Jacob LJ said that the solution of the patent could explained in a simple and general manner as being to use marine CSEM (Controlled Source Electromagnetic) surveying on a previously identified layer to find out if it contained oil. The layer could be identified by seismic methods.
  6. The problem with seismic methods is that they rely on vibrations and while these can distinguish between solid rock and fluid (such as an oil or water bearing layer), if you find a fluid containing layer using seismic methods, those methods cannot tell you if the fluid is oil or water. However water and oil have different electromagnetic (EM) properties and so using an EM field may allow you to distinguish between the two. The claim is set out by the Court of Appeal at paragraph 14. The key parts of the claim for present purposes require the application of a time varying EM field to the subterranean strata, detecting the EM field response, seeking, in the wave field response, a component representing a refracted wave and determining the presence or nature of the reservoir identified based on the presence or absence of a refracted wave component. The claim also requires that the offset, that is to say the distance between the transmitter and the receiver, is given by a formula related to the wavelength of the transmission through the overburden. The claim has other words in it but it is not necessary to mention them at this stage.
  7. So the claim calls for the transmission of an EM field and its reception and refers to "seeking, in the wave field response, a component representing a refracted wave". Figure 2 of the patent (see paragraph 30 of Mann J, cited by the Court of Appeal at paragraph 18) shows the refracted wave in a diagrammatic way. The figure shows the paths different "waves" from the transmitter can take to the receiver. The refracted wave passes along the fluid bearing layer. In very simplistic terms, at least in some circumstances, the point is that if the fluid is oil the EM energy represented by the refracted wave flows more strongly and faster through the oil bearing layer than the other waves which pass through the sea, other rocks and may be reflected by the sea floor. On the other hand at least in some circumstances, if the fluid in the layer is water, the EM energy represented by the refracted wave may flow less strongly and slower than the others. I should repeat that this is a very crude explanation and a key issue in the case is about whether, even if something like this crude explanation applies in some cases, it applies in others. Another issue is that this explanation is given in terms of waves. A point in the case is that while references to waves may be appropriate on the footing that the wave-like solutions to Maxwell's equations dominate because the relevant medium experienced by the field has very low conductivity (s), it may not be appropriate when the diffusive solutions to Maxwell's equations dominate because the medium has a high conductivity (low resistivity). Of course salt water has a high conductivity.
  8. In parallel with this action is an action in Norway between EMGS and PGS relating to the Norwegian patent in the same family as this patent. In February 2015 the Norwegian Court found the Norwegian patent invalid for lack of novelty. That judgment is under appeal in Norway.
  9. Experiments

  10. In the Norwegian proceedings each side submitted evidence, including expert evidence, which included the result of computer modelling. An example of these models is a computer simulation of what happens when an EM field is applied to a simplified model of strata in which the resistivity of the layers varies in 1 dimension with depth. The results include plots of the amplitude and phase of the received EM field. Differences in amplitude can indicate whether the signal is stronger or weaker in given circumstances and differences in phase can indicate whether the signal is faster or slower. Other results of the simulations model the resulting energy flows by plotting the Poynting vector at different points. The Poynting vector describes the energy transport by propagation of an EM field. Its direction is the cross product of the electric and magnetic field vectors.
  11. In October 2014 Norris J gave directions. These included directions for experiments. The directions order was in conventional form. A date for a Notice of Experiments was set (30 weeks before trial), a period for the other party to make admissions was given (7 days) and the order provided that:
  12. "Where any fact which party wished to be established by experimental proof is not admitted that party shall apply to the court for further directions in respect of such experiments."
  13. In July 2015 Mann J gave further directions. At that stage in July it was, I think, common ground that the computer modelling should be the subject of the regime for Notices of Experiments and the judge gave directions on that basis. In any event in Consafe v Emtunga [1999] RPC 154 (paragraph 16) Pumfrey J held that the procedure for Notices of Experiments should be used for the sort of finite element analysis computer modelling which was in issue in that case. In my judgment Consafe plainly applies to this case. The issues which arose today are a further illustration of why it is right that computer modelling and simulations should generally be subject to the experimental notice regime. The computer modelling in Consafe was different from the modelling in issue here but from the point of view of legal proceedings they create the same difficulties as any other experiments. The output from the modelling depends on the input and running the same test with different input data will or may produce a different result. So the choice of appropriate inputs to rely on is an exercise in judgment, which is what I understand Pumfrey J to have referred to in Consafe.
  14. For a conventional scientific experiment in a patent case, such as one involving wet chemistry, the way to be sure that the experimental result relied on is genuinely what happens for a given set of initial conditions and circumstances, is to have a witnessed repeat of the experiment. This is also true with computer modelling: the way to be sure that the output is genuinely what happens for a given set of inputs is to have a witnessed repeat of the modelling run. It may be that the counter party does not need to see a repeat in a given case or that a repeat would be disproportionate but it is the availability of a witnessed repeat which is important. With computer modelling it may be that the need to have a witnessed repeat is removed by providing the totality of the input data and the computer software to the other party so that they can run the model themselves and see that the result is genuine. However that does depend on all the data and code being made available.
  15. The directions in July 2015 set a staged timetable for Notices of Experiments, with one date in August and a second later date for the defendants to serve a further notice (if so advised) arising from any amendment to the claimant's Statement of Case on Construction, directions for which were also given in July.
  16. In accordance with the directions the defendants served a First Notice of Experiments and a Second Notice of Experiments. One dispute had been whether the Second Notice was properly responsive to the amendments to the Statement of Case which were made. EMGS contended it was not although this point was not strongly pressed at the hearing. Following Mr Whyte's explanations about what the purpose of the experiments were, I am satisfied that the Second Notice complies with the July directions. The Second Notice includes tests which could have been done earlier but the significance of modelling energy flux (and the other modelling carried out) only came into focus following the amendments to the Statement of Case.
  17. The real difficulty which came before me was as follows. The Notices set out a protocol for the computer modelling and present results. The Notices are divided into parts, each part being a group of modelling runs. The Notices then state the facts to be admitted and in that sense like all Notices of Experiments, operate as Notices to Admit Facts. Taking part B(iii) as an example, this is entitled "Impact of water depth on marine CSEM". The first fact to be admitted is that when the procedure set out is performed, the result provided is produced. Then further facts which Mr Speck called "interpretative" facts are set out. The second fact to be admitted is "in model (a), for the case of a uniform half-space, there is a very limited difference between the in-line electric field amplitude measurements in the case of 1000m water depth and 5000m water depth in the range 0-5000m". The third, fourth and fifth facts are drafted in a similar way. The sixth fact is "Taken together models (a) and (b) show that in-line electric field amplitude measurements will be water depth-dependent even if the subsurface structure is the same". The seventh fact is that "Taken together models (a) and (b) show that the effect of the 'airwave' cannot be ignored in shallow water". The eighth fact asserts that together models (a) and (b) show that the airwave is "a complicated coupling" between two things. This eighth fact is apt to be called interpretative.
  18. The defendants applied for an order that (i) the claimant should reply to the Notice to Admit and (ii) the claimant be permitted to rely on the material set out in the Notices.
  19. It can be seen from the facts to be admitted above that it is not immediately apparent what role the experiments are to play in the proceedings. Neither the evidence in support of the application nor the skeleton argument sought to address that question. The reason why, I am sure, was because in general terms the significance of the experiments was obvious to the parties since they are steeped in this case and in the light of the previous Norwegian proceedings. Furthermore the defendants' experiments are discussed by the relevant expert witness in his report which has been served. Mind you, that report (with annexes) is 200 pages long.
  20. Another partial explanation is that the actual compass of the case management dispute on experiments was relatively narrow. The claimant was asking for copies of all the code and data which would allow the claimant's advisers and experts to understand what had been done. The code had been provided (rightly) and much of the data but there was an outstanding point on the totality of the data. The defendants regarded it as a ridiculous point, in that the claimant was asking for the data to know the separation of modelled data points used to make up the output graphs, and the defendants regarded this as trivial issue. The claimant was also suggesting that it should run its own version of the simulations using its own code with the defendants' parameters to see if essentially the same result arose. That would in effect be an admission. There was also an argument about modelling in reply.
  21. So the defendants thought, and it seems to me that the claimant also thought, that the issue about experiments could be resolved without the court needing to understand in any depth what role the modelling work was to play in the case. However those thoughts were not right. When the court is being asked to make the "further directions in respect of such experiments" which are contemplated by the standard directions, it is necessary for the party seeking to rely on the experiments to explain to the court what role they are to play in the case. Great detail may not be required but the experiments do need to be put into context. Referring simply to a full expert's report does not help.
  22. I asked Mr Whyte about that at the hearing. It is to his credit and the credit of those instructing him that although the papers for the hearing had not addressed that issue in any detail, the defendants' team were able to do so over the course of a morning. I suspect the process was not assisted by me asking numerous questions.
  23. Some of the experiments relate to the validity case over two items of prior art. That was clear enough on the face of the Notices. With the benefit of Mr Whyte's explanation, it is clear that the rest of the experiments on which the defendants wish to rely relate to the issues of infringement and insufficiency, and a possible squeeze between them. Part of the point of the experiments is to show that the defendants' technique is not in accordance with the claim and, if (which is denied) the claim covers what the defendants do, it is insufficient. One reason it is said to be insufficient is that in certain, relevant, circumstances the offset provided by the formula in the claim would not produce the result claimed because in those circumstances the "refracted wave" from the relevant fluid layer would not be stronger and faster if it contained oil. The term "refracted wave" is in quotation marks because the defendants say that at least in these circumstances (if not generally) the effect on the overall received signal caused by the presence of the fluid layer would not really be a refracted wave at all. I do not need to resolve any of these issues now. I can say I am satisfied that the experiments have a proper role in these proceedings.
  24. However the order sought by the defendants is not appropriate. Part of the difficulty may have been highlighted by the submission of counsel that the most important fact to be admitted in the Notice was the first one, that when the procedure is followed, the results shown occur. Although Notices of Experiments routinely contain such a fact, to regard it as the most important is to misunderstand the function of that part of a Notice. That fact should normally be the least important fact to be admitted. CPR PD63 7.1 requires that a party seeking to establish any fact by experimental proof conducted for the purpose of litigation must (my emphasis) serve a notice "(1) stating the facts which the party seeks to establish". This rule is vital for a number of reasons. It requires the party serving the notice to think precisely about what it is that the experiment is supposed to prove and what role it is to play in the case. It gives proper notice to the other party of what facts the experiment is supposed to prove. When the facts are properly set out it should also allow the court to understand what the experiment is for or at least should allow for that understanding to be arrived at fairly readily with further submissions. This in turn allows the court to retain control over the experimental evidence. The permission the court then gives to rely on the experimental evidence is permission to rely on it in order to prove those facts. If the party then changes its case and wishes to rely on the same experiment to prove something different, they may need permission to amend the Notice. That maintains some discipline in the proceedings and mitigates or avoids the problem which arose in Molnlycke v Brightwake [2011] EWHC 140 (Pat) in which a party wanted to rely at trial on an electron micrograph which had been produced for one purpose for a very different purpose. Taking the approach that the expert's reports explain what facts an experiment is supposed to prove in litigation is not adequate.
  25. At one stage Mr Speck suggested that there was no need for his clients to reply to the Notice to Admit Facts at all. I do not agree. Just as the Notice is important for the reasons I have given, so too is the requirement that the other party responds to it properly.
  26. The Notice also and obviously interacts with the question of whether a repeat of the experiment is required. The order sought by the defendants did not address repeats at all. The defendants' order provided that the defendants would be entitled to rely on the experiments in the Notice irrespective of whether the facts were admitted or not. What seems to have been contemplated was that even if the facts were admitted, the experiment would still be relied on. That may be appropriate in particular circumstances but it is not normal. In such a circumstance one has to ask why the experiment is still necessary. If the experiment is supposed to be proving something else not in the Notice, that tends to indicate that the Notice is deficient.
  27. A Notice is a notice that an experiment will be done. The experiment which will be done is usually called the "repeat" because one assumes it was done first for the notice, and is then repeated in the presence of the other party's representatives. This is another important part of the Patents Court's approach to the management of experimental evidence. Although the court sometimes allows a party to rely on the first unwitnessed experiment which was used to prepare the Notice, the primary experimental evidence for which permission is given at this stage to rely on is the repeat. Sometimes the court decides a repeat would be disproportionate but that is another matter.
  28. The parties had not envisaged that repeats would be done at all but in the course of argument it emerged that the problem about data points was related to this. Without the data points it was not possible for the defendants to verify that they agreed what would happen if the model was run. With the data points, in effect the claimant might be able to repeat the simulation itself anyway and a repeat could then be unnecessary. If the defendants had been required to carry out a witnessed repeat of the model then that would have involved giving the claimant access to the data points in any event. When this emerged at the hearing the parties agreed to a timetable to provide for repeats (if necessary).
  29. For these reasons I decided to permit the defendants to rely on the experiments to prove the facts set out in the Notices, directed the claimant to respond to the Notices, gave directions for witnessed repeats if necessary and gave the claimant permission to serve a Notice in reply. On the latter point, the defendants said the appropriate time for a response to the Notice and any application for experiments in reply had passed long ago. I do not agree. The claimant was not in a position to know what to do until it either saw the repeats or had access to all the relevant data.
  30. Scientific adviser

  31. PGS submitted that the case involved a difficult area of science and wished to raise with the court the possibility of sitting with a scientific adviser. EMGS resisted this.
  32. The statutory basis for appointing a scientific adviser to assist the Patents Court is in s70 of the Senior Courts Act 1981, particularly s70(3) which relates to a scientific adviser rather than an assessor. The relevant rules are CPR PD63 paragraph 5.10 and r35.15. Although rule 35.15 only uses the word "assessor" in Halliburton v Smith [2006] EWCA Civ 1599 the Court of Appeal held that this rule related to scientific advisers under s70(3) as well. At r35.15(2) the CPR provides that the assessor will assist the court in dealing with a matter in which the assessor has skill and experience. The Court of Appeal in Halliburton carefully reviewed this jurisdiction including its history, in paragraphs 8 to 31 of the judgment of the Court.
  33. The Patents Court operates a technical rating system for allocating patent cases to the appropriate type of judge. The technical category runs from 1 to 5. Cat 5 is the most complex. The complexity is technical complexity not legal complexity and not commercial importance. A case about simple mechanics may be in Cat 1 or 2 whereas cases about biotechnology and some areas of telecommunications may be in Cat 4 or 5. The system does not and is not there to allocate cases to individual judges, it exists because the Patents Court has the benefit of judges with different kinds of experience and seeks to make most efficient use of the available judicial resources. Some of the judges of the Patents Court came from the patent bar and have experience of litigating patents for many years. They may have science degrees too. They are sometimes referred to as Cat 4/5 judges. Currently Arnold J, Henry Carr J and myself are the Cat 4/5 judges. Other designated judges of the Patents Court did not get involved in patent actions before going on the bench. They may also have a science degree but are less likely to have made heavy use of their scientific training in the intervening years. These other patents judges, while fully capable of dealing with patent cases which involve less complex science, do not profess to be comfortable handling technically difficult cases with the sort of expenditure of time and effort which a Cat 4/5 judge would require.
  34. When this patent was tried first time round in Schlumberger v EMGS, it was listed to be heard by another Cat 4/5 judge, Floyd J as he then was, but close to trial things changed and, unless it was to be adjourned, the case had to be heard by a judge of the Patents Court who was not a Cat 4/5 judge. Mann J was allocated to hear the case. Hitherto no scientific adviser had been appointed but in the circumstances Prof Bailey was appointed to assist the court. On appeal the Court of Appeal also had the benefit of a scientific adviser. PGS invite this court to consider having a scientific adviser for the forthcoming trial. They have identified a number of possible marine CSEM scientists in academic institutions who might be able to help. Two of them have indicated a willingness to help if required.
  35. EMGS submit the court does not need this assistance and should not order it. The reasons for EMGS's submissions are these. It is true that this case is technically complex but it is no more complex than the most complex Cat 5 cases usually are and is within the ability of a Cat 4/5 judge to handle with the assistance of primers (which have been agreed) and the explanations of counsel and the experts. The original case was not set up to have a scientific adviser when it was going to be heard by Floyd J and no primers had been prepared. The reason a scientific adviser was appointed before at first instance was because the trial was not before a Cat 4/5 judge. In the Court of Appeal, only one of the three judges (Jacob LJ) was a Cat 4/5 judge. EMGS is concerned about the problem, recognised in Halliburton, of a lack of transparency about what information the court is receiving. It emphasises in particular that there is or at least seems to be a dispute between the parties about exactly what marine CSEM is or encompasses. Entirely unwittingly a marine CSEM expert may impart to the judge views which relates to that sort of topic which the parties will be unaware of and cannot challenge or address. As a fall back, EMGS submits that if the court does need assistance, it is likely to be at the outset and as help with the fundamental physics. Once the court is up to speed on that, the parties and the experts will be able to put their points to the court and the education of the judge will take place in a transparent way. Thus EMGS submit the best kind of person would be a general physicist who was a good teacher. To the submission from PGS that it seems odd to appoint a person with much less experience of marine CSEM to educate the court on marine CSEM when they are available, EMGS contends that that is a virtue of its approach. A general physicist who is good at teaching will be able to help the court but will not risk imparting views on the contentious issues about marine CSEM.
  36. Sometimes the Patents Court has had the advantage of assistance from a technically qualified person from the UKIPO. This approach is not only less costly (the parties are agreed that if a scientific adviser is appointed, they will share the costs), it also meets concerns of the kind raised by EMGS. Something along these lines happened in PCME v Goyen [1999] FSR 801. In that case Laddie J was assisted by Mr Summerhayes from the UKIPO for the early part of the trial (see paragraph 74). Laddie J had unrivalled scientific experience particularly in pharmaceuticals and medicine but the case involved electronics, which was not an area the judge was familiar with. In Qualcomm v Nokia [2008] EWHC 329 (Pat) Floyd J sat with Dr Griffiths from the UKIPO as a scientific adviser (see paragraph 27).
  37. In Nokia v InterDigital [2007] EWHC 3077 (Pat) Pumfrey J was given a two day technical tutorial by Mr Wiffen before the case began but Mr Wiffen did not sit with the judge after that. The judge described is as a very helpful introduction and said that "as the subject matter of patent actions becomes increasingly complex such a non-controversial introductory course for the judge seems to me to be highly desirable." (paragraph 6)
  38. As the Court of Appeal explained in Halliburton (paragraph 31) the relevant perception is that of a fair minded and reasonable observer. In that case the court could expect from a reasonable and fair minded observer an understanding of the respective roles of the court, namely for the court to exercise its judicial function and exclude from consideration extraneous opinions, and for the scientific adviser to assist the court in understanding the technical evidence and to help the court evaluate it. But the overriding objective to do justice has always to be kept in mind and the fact that it is the court's task, not the scientific adviser's, to decide the case.
  39. This case is indeed at the top end of Cat 5, but it is not unique in that regard. I have decided that the right thing to do is to ask the parties to arrange for the judge hearing the trial to have a non-controversial introductory course, probably over no more than a day, before reading into the case in any depth. The best person to act as a scientific adviser in order to carry out that teaching exercise would be a marine CSEM expert. A marine CSEM expert will be able to focus in on that area itself and once the judge has had the benefit of such a start in the field, the rest of the materials will be more easily digestible. Having had a foretaste of the issues at this hearing, I expect that a Cat 4/5 judge with that assistance would then be well equipped to handle the trial itself without a scientific adviser sitting in the trial, but simply with the assistance of the primers, the experts and the parties' legal teams.
  40. Any written materials produced by the scientific adviser for the judge should be given to the parties after the introductory course has taken place. The purpose of this exercise is not to vet the materials, it is to allow the parties to see what has been provided. If they wish to comment they can do so at trial. Inevitably what passes between the scientific adviser and the judge verbally will not be available but a reasonable and fair minded observer would understand the respective roles of the court and the adviser and would have no reason to think that these roles have not been fulfilled.
  41. Permission to call Dr Eidesmo

  42. Dr Eidesmo is one of the inventors and was called by EMGS at the previous trial. He is no longer an employee of EMGS. EMGS served a Civil Evidence Act Notice to rely on parts of Dr Eidesmo's previous witness statement as hearsay statements. The Notice is under s2(1) of the Civil Evidence Act 1995 and CPR r33.2. PGS applied under CPR r33.4(2) for permission to call Dr Eidesmo to cross-examine him.
  43. The passages from Dr Eidesmo's witness statement which EMGS relied on in the Civil Evidence Act Notice relate to the reactions of others to the invention and the success rate of the invention. PGS pointed out that in his judgment Mann J, who heard Dr Eidesmo be cross-examined, decided that while he could rely on Dr Eidesmo's factual account of how the invention came to be made, the judge took more care with the account of the reactions of others because the strength of Dr Eidesmo's view may have coloured his views (paragraph 23). Mann J also decided to give no weight to Dr Eidesmo's evidence about success rates (paragraph 109).
  44. PGS also explained that they wished the scope of the cross-examination to cover a wider range of topics than the evidence the subject of the Notice. This included topics on which he had given evidence in Norway, including a point on the offset formula in claim 1.
  45. EMGS resisted the application. It submitted that the passages from Dr Eidesmo's statement were just part of a whole series of points in support of its case on reactions to the invention. Given that this was just one piece of evidence which the court could weigh up along with the rest, there was no need to extend the trial by permitting cross-examination on it. EMGS also submitted that it had no authority over Dr Eidesmo and could not produce him as a witness. EMGS also submitted that the cross-examination should not go beyond the contents of the statements relied on.
  46. The question of the scope of the cross-examination under CPR r33.4(2) raises a point of principle. Rule 33.4 refers to cross-examining the maker of the statement notified "on the contents of the statement". The authors of the White Book (33.4.1) draw attention to this and submit that it means that cross-examination permitted under this rule should be confined to the contents of the statement. There appears to be no decided case on the point. Counsel for PGS submitted that that was not what the rule meant because the limiting words "contents of the statement" were not in the relevant statutory provision, which is section 3 of the Civil Evidence Act 1995. That section states that rules of court may provide for the maker of a hearsay statement served by one party to be called by another party and cross-examined and refers to giving leave to the other party to call the witness to cross-examine him on the statement "as if he had been called by the [party serving the notice] and as if the hearsay statement were his evidence in chief". Since cross-examination of a witness called by a party at trial is not normally limited to the contents of their witness statement, the Act must be understood as permitting cross-examination on a wider basis and so too should the rule.
  47. Counsel for EMGS submitted that the words "contents of the statement" in the rule had the effect which the authors of the White Book contended.
  48. I agree with counsel for PGS that the Act is wider than the words of the rule but I do not agree that this means the rule should be construed differently. The words in the rule were clearly not an accident and at first sight they bear the meaning suggested by the authors. I believe the explanation is as follows. Normally a party calling a witness cannot cross-examine that witness. They can only introduce evidence as evidence in chief (or in re-examination) and will usually need to serve a witness statement in advance. Being able to cross-examine a witness you have called is an exception. The Act permits this and provides that rules of court may provide for it. Therefore the power conferred by s3 is wide. Rules of court which referred to a party cross-examining a hearsay statement on that wide basis would not be ultra vires. However the rule which has actually been made is narrower. It is limited to giving permission to cross-examine the maker on the contents of the hearsay statement. That makes sense because, if one thinks about it, in that case the party cross-examining has in effect already got the equivalent of the evidence in chief of that witness in the form of the hearsay statement. If the cross-examining party could cross-examine more widely they would be able to introduce new evidence, effectively in chief, on new topics not foreshadowed before, whether in a witness statement or otherwise and do so using the techniques of cross-examination. What would happen then? Would the party serving the original notice then be able to cross-examine its own witness on these wider issues but only re-examine on the issues in the hearsay notice? That is a recipe for confusion. Leading new evidence in chief in this way could be unfair to the party serving the hearsay notice who may have had no notice of any of it. In my judgment that is likely to be why the rule was drafted as it was. So the cross-examination permitted by an order under r33.4 is cross-examination confined to the contents of the statement. No doubt that could include matters going to credit but the permission given under the rule does not extend more widely. No doubt the court could, in the exercise of its overall case management powers, permit wider cross-examination in a proper case but to do so would require careful consideration of the consequences.
  49. Turing to this case, I am satisfied that cross-examining under the rule is appropriate, given Mann J's approach to Dr Eidesmo's evidence. I am not satisfied that cross-examination on a wider basis is made out on this application. No attempt has been made to address the implications of that. Simply stating in general terms what further topics it is that the cross-examiner wishes to cover is not sufficient. Furthermore at least some of the wider topics mentioned seem to involve using Dr Eidesmo as a vehicle for further expert evidence.
  50. Permission to amend the pleadings

  51. EMGS applies to amend its case on infringement to extend the alleged infringements to cover cases in which there is a foreign connection. The allegations are still infringement of the UK patent but EMGS wishes to contend that the UK patent is infringed in certain circumstances even though the survey itself was carried out overseas. When a survey is carried out PGS produce information described as "deliverables" in the Product and Process Description (PPD). Although the survey itself took place overseas, the deliverables are or may be offered for disposal in the UK.
  52. The main amendments are in paragraph 7 of the draft Re-Amended Particulars of Infringement. Infringement of process claims under s60(1)(b) is alleged on the basis that it is the offer to dispose and disposal of deliverables, which happens in the UK, which is the final step in using the process. Thus even if the other steps took place outside the UK, this step happening here means that the process has been used in the UK. Infringement under s60(1)(c) is alleged on the basis that the deliverables are products obtained directly by means of the process. Infringement under s60(2) is alleged on the basis that the deliverables supplied and offered for supply here are means relating to an essential element of the process.
  53. PGS do not dispute that the amendments disclose an arguable case such that permission to amend should be given, but they contend that it is too late to deal with the legal and factual issues they raise at trial. Thus permission should be given but consideration of the issues raised by these amendments should take place after trial. PGS note that issues of the kind considered in Menashe v William Hill may arise [2002] EWCA Civ 1702.
  54. As a general principle it is far better that these matters are resolved in one go than it is that they are split. The Patents Court does sometimes split issues in this way but it is highly undesirable. I am quite sure that these matters can be accommodated, based on what I understand about them, at this trial. I had a discussion with the parties at the hearing about the trial timetable. It is already tight but I doubt this makes a significant difference.
  55. A critical element is that allowing the matters to be addressed this way is at the claimant's risk. The claimant has made it absolutely clear, subject to a point on some further details of the RFI in paragraph 10 of Mr. Boon's witness statement, that it is content to run the case on the basis of the materials in the PPD. Notably the PPD describes the UK and foreign surveys in the same level of detail and with the same specificity. It is true there are examples in the PPD and those examples are of UK surveys, but they are only exemplary. I am not satisfied that more disclosure may be required for the foreign surveys as distinct from any issue about the foreign and UK surveys together. As such, disclosure is not a good reason for excluding this material. But it is at the claimant's risk. If it emerges that further information about the foreign surveys is required for the claimant to prove its case, then no doubt the right order will be to hive off those issues and they can be decided later, or some other approach taken, but I am not satisfied that the risk if this happening is high.


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