The Technology Disputes Law Review: United Kingdom - England & Wales

Overview

Technology disputes of all forms are becoming increasingly common in the UK; the amount and complexity of technology projects being undertaken has increased in recent years with a corresponding increase in disputes. This is particularly so in the wake of the covid-19 pandemic and the resulting rapid increase in the use of technology.

In this chapter we address the UK (England and Wales) court procedure for those types of dispute that are most likely to arise, namely system development and service delivery disputes, outsourcing disputes, investor disputes and intellectual property (IP) disputes.

This list is not exhaustive and with the development of new technologies inevitably comes new types of disputes. There will most likely be a continued increase in disputes involving emerging technologies, such as AI, crypto and cybersecurity, and the regulation of the tech giants. Many of the underlying causes, issues and procedures are common across different types of dispute and so this chapter may be of interest to anyone operating in the technology sphere.

Year in review

The following outlines some of the key trends seen over the past year. As might be expected, a number of these – such as increased interest in force majeure provisions and the widespread use of remote hearings – relate to the covid-19 pandemic. In addition, data disputes remain a trend, new arbitration rules for digital disputes have been published and important developments in patent law are set to continue.

i Force majeure and frustration

The covid-19 pandemic and the resulting impact on businesses' ability to meet their contractual obligations have given rise to an increase in cases relying on the force majeure provisions of a contract, where one party claims to be excused from its breach of performance by reason of factors outside its control. In English law, the ability to make such a claim depends upon the precise wording of the contract and courts are generally strict in their interpretation of specific terms. Where parties are unable to rely on force majeure provisions, there has also been an increase in attempts to rely on the common law doctrine of frustration, which entirely discharges a contract if it becomes impossible to perform. Findings of frustration are rare and, while the pandemic has given rise to claims relying on frustration, it remains to be seen how the courts will decide those claims.

ii Insolvency

Another trend arising from the pandemic is the rise in insolvency proceedings within the technology sector as parties who have suffered, either directly or through difficulties in the supply chain, become unable to pay their debts as they fall due.

iii Remote hearings

During the covid-19 pandemic, the English courts have remained open for business, with many trials heard either as 'hybrid' hearings, with both remote attendees and attendees in court, or fully remotely by videoconferencing. The courts are starting to return to normal, but, given the efficiencies of using videoconferencing, it is likely that remote or hybrid hearings will continue to be used, such as for short hearings or cases where a party or witness cannot attend in person (e.g., an overseas expert who cannot travel).

iv Digital Dispute Resolution Rules

Away from the pandemic, reflecting the rise in the number and prominence of technology disputes, on 22 April 2021, the UK Jurisdiction Taskforce published new arbitration rules, the Digital Dispute Resolution Rules, which are intended to provide a specialised, quicker and cheaper dispute resolution process for disputes arising out of emerging digital technologies such as cryptoassets, cryptocurrencies and distributed ledger technology, and fintech disputes. It remains to be seen how these will be implemented and the impact they will have on technology disputes.

v Data

Claims relating to the use and misuse of data continue to be a trend across the sector. Judgment is currently awaited from the Supreme Court in the case of Lloyd v. Google LLC,2 the claim issued as a representative class action by Richard Lloyd alleging that Google breached its duties as a data controller under the Data Protection Act 1998 by secretly tracking the internet activity of Apple iPhone users for commercial purposes between 9 August 2011 and 15 February 2012. The judgment will become the leading authority on damages for breaches of data protection law in England and Wales and will clarify whether and how representative actions can be brought.

vi SEP and FRAND disputes

In August 2020, the UK Supreme Court held in joined appeals in Unwired Planet v. Huawei and Conversant v. Huawei and ZTE3 that the English courts have jurisdiction to determine the royalty rates and other terms of a licence on fair, reasonable and non-discriminatory (FRAND) terms if the owner of a standard essential patent (SEP) covering the UK demonstrates that it is valid and infringed, and to grant an injunction to restrain the infringement unless the implementer takes that FRAND licence. On the facts of that case, a global portfolio licence was found to be FRAND and the Court set rates for territories outside the UK.

The Supreme Court's judgment confirms the English courts' willingness to set global FRAND licence terms, regardless of how important the UK is as a market (in Huawei's case less than 1 per cent of sales were in the UK). It is an important decision, which has already seen the UK become the forum of choice for SEP holders. Parties are now racing to issue competing claims in jurisdictions they consider to be favourable and seeking anti-suit injunctions to preserve their preferred forum. There are also a number of pending cases in which the English courts are considering related issues such as: the point at which an implementer should commit to licence terms set by the English court4 and whether the damages payable for infringement of a UK SEP should be calculated by reference to a global licence.5 The European Commission is also consulting6 on a new framework to make the licensing of SEPs clearer and more transparent, and recognising the importance of SEPs to new technologies such as the internet of things.

vii Doctrine of equivalents

The courts have also continued to grapple with the implications of the UK's new approach to construing patent claims, following the Supreme Court's 2017 decision7 introducing separate consideration of infringement by equivalents.

Some guidance has been given in recent cases. It has been indicated that a patentee 'cannot have it both ways', by narrowing a claim to avoid issues with validity in prosecution only to rely on the doctrine of equivalents to broaden the claim in enforcement.8 It has also been suggested that a Formstein defence exists in English law, limiting claims to a normal interpretation to prevent them ensnaring equivalents that lack novelty or are obvious.9 However, this commentary was obiter, and other issues – such as whether an equivalent can invalidate a claim10 – remain to be tested. It is likely that further guidance on equivalents will be needed from the Court of Appeal and the Supreme Court over the next few years.

Claims and remedies

i Claims

The most common causes of action in system development, service delivery or outsourcing disputes will be breach of contract or negligence. Breach of contract claims will often arise where, for example, the party developing the system or carrying out the outsourcing fails to meet key deadlines or to deliver to the agreed specification. Such claims will often be brought alongside, or in the alternative to, negligence claims where the party bringing the claim will argue that the standard fell below not just contractual requirements, but also the common law duty of care.

Investor disputes and disputes as to the scope of patent licences will typically be for breach of contract. Where a patent licensee is undertaking activities outside the scope of its licence, that may also introduce issues of patent infringement.

In patent infringement disputes, the patentee will typically claim patent infringement while the alleged infringer will typically counterclaim for revocation, in addition to defending the infringement claim. A party that wishes for clarity about its commercial activity in relation to a third-party patent may seek a declaration of non-infringement. Other IP claims that may arise in technology disputes include copyright infringement (e.g., of copyright in software and datasets), database right infringement (an important IP right that protects the investment made in creating structured datasets) and for breach of confidence (e.g., to protect trade secrets). The Court of Appeal has emphasised that trade secret owners will need to identify and plead their trade secrets carefully and precisely in any claim for their misuse.

ii Remedies

The standard remedy for either a breach of contract or a negligence claim is damages. For both causes of action damages are compensatory in nature and reflect, so far as possible, the loss suffered by the innocent party, rather than being punitive.

Damages for breach of contract are measured as the amount required to put the claimant in the position it would have been in had the contract been performed. Contracts may also contain liquidated damages provisions that specify the amount of damages payable in the event of certain breaches, most commonly delay. Damages for negligence are measured as the amount required to put the claimant in the position as if the tort had not been committed.

Damages for breach of contract, and for other claims arising from the contract, may be capped or limited by the terms of the contract. A party cannot make double recovery, meaning it cannot recover separate amounts for different causes of action to cover the same act and loss.

If a breach of contract is sufficiently serious, the claimant may also be entitled to repudiate the contract (meaning that it is terminated and both parties are discharged from future performance) and to claim damages.

In some circumstances, damages for breach of contract may not be an adequate remedy and so a party may request an order that the court compel the other party to perform its contractual obligations, known as specific performance. Unlike damages, there is no right to specific performance and the court has discretion over whether to make such an order. The enforcement of provisions in a shareholders' agreement is one of the circumstances in which a court may order specific performance; for example, if the agreement requires shareholders to take certain actions without which the company cannot operate (such as granting a licence) damages may not be an adequate remedy for the other shareholders and the court may compel the shareholders to comply with their obligations.

In IP infringement cases, the key remedies sought are typically:

  1. an injunction to prevent further infringement (often seen as the most important remedy);
  2. an order for delivery up or destruction of infringing products;
  3. either damages or an account of the infringer's profits; and
  4. an order for publication of the decision.

Damages are assessed at a separate damages inquiry and are intended to be compensatory, rather than punitive. If the IP owner cannot show an actual loss (e.g., lost sales), damages will be based on a royalty, either using the IP owner's normal rate if it grants licences or by assessing a reasonable royalty. As an alternative to damages, an IP owner may elect for an account of the infringer's profits. Before doing so, it may obtain disclosure about the defendant's infringing sales to help it choose between the options. In copyright infringement disputes, the copyright owner may claim additional damages depending on the flagrancy of the infringement.

In the context of disputes about SEPs (which, in the UK, have to date been about patents declared to be essential to mobile phone and cellular standards), patentees will seek a 'FRAND injunction'. An infringing implementer will be restrained from infringing an SEP covering the UK unless it takes a licence on FRAND terms. The English court will set the terms of the FRAND licence, including the royalty rate at a separate FRAND trial, once validity, essentiality and infringement of the relevant SEPs have been established in technical trials.

Courts and procedures

i Court procedure

Civil proceedings in England and Wales are governed by the Civil Procedure Rules (CPRs) and by guides published by the individual courts. Nearly all civil trials are heard by a single judge at first instance, without a jury.

There are no courts or arrangements specifically for technology disputes in England and Wales. Despite its name, the Technology and Construction Court does not deal with technology disputes, but rather disputes about buildings, engineering and surveying.11 There are, however, a number of specialist courts that may be appropriate to hear technology disputes.

The High Court deals with claims over the value of £100,000 and certain other claims (such as for fraud or defamation). The High Court consists of three divisions – the Queen's Bench (QBD), Chancery and Family. The QBD and Chancery Division are further divided into specialist courts and lists, including the QBD's Commercial Court, and the Intellectual Property List and the Patents Court in the Chancery Division. Specialist courts and lists of the QBD and the Chancery Division are collectively known as the Business and Property Courts.12

The Commercial Court is staffed by judges with knowledge and experience of commercial disputes13 and would most likely deal with system development, outsourcing, investment or other commercial disputes.

Most patents proceedings are heard by the specialist Patents Court. Actions are categorised by technical complexity, with more complex cases normally heard by dedicated Patents Court judges with extensive patents experience.14 Other high-value or complex IP disputes, including over copyright in software and trade secrets, will fall under the general Intellectual Property List.

Lower value, lower complexity IP cases may be heard by the Intellectual Property Enterprise Court (IPEC). IPEC trials are limited to two to three days and there are caps on both damages (£500,000) and recoverable costs (£50,000). The IPEC is overseen by specialist 'enterprise judges.'

The Patents Court or the IPEC may hear licensing disputes if they are associated with a patent dispute.

ii Interim or provisional remedies

The courts have the power to order a number of interim measures. A non-exhaustive list of the remedies is set out in CPR 25, but the courts' power is not limited to these measures. The interim remedies in CPR 25 include the following, which are most likely to be relevant to system development, service delivery, outsourcing or investor disputes:

  1. interim or preliminary injunctions (PIs);
  2. interim declarations;
  3. orders to deliver up goods;
  4. orders to freeze assets;
  5. orders directing a party to provide information about the location of property or assets;
  6. search orders;
  7. orders for disclosure of documents before a claim has commenced; and
  8. orders for interim payments by a defendant on account of any damages, debt or other sum (except costs).

One of the most important of these in IP infringement cases is PIs.

To obtain a PI, the applicant needs to demonstrate that, first, there is a serious issue to be tried (typically a relatively low bar); second, damages will not be an adequate remedy for the applicant, by showing it would suffer irreparable or unquantifiable harm; and, third, damages would be an adequate remedy for the defendant if it were to succeed ultimately. If the position is not clear cut, the judge will balance the parties' interests. If that balance is equal, the court will seek to preserve the status quo, so if, for example, an infringing product has not been launched or a trade secret not disclosed, maintaining the status quo will favour a PI.

Often, in technology patent cases, the court has found that the patentee's loss can be quantified (e.g., as lost sales or as royalties) if a PI is refused, and thus compensated for in damages if the patentee succeeds at trial. In IPCom v. Xiaomi15 (a FRAND case), it was held that the patentee would not suffer irreparable harm if the PI were refused and that damages would be an adequate remedy.

PIs are more commonly granted in disputes relating to other IP rights, including to protect trade secrets. For example, in Celgard v. Shenzhen Senior Technology,16 Celgard was granted a PI prohibiting importation of 'battery separators' for lithium-ion batteries that had been developed in China allegedly using trade secrets misappropriated from Celgard in the United States, based on UK legislation implementing the relatively new EU Trade Secrets Directive.17 The English courts will also assist businesses in protecting their confidential information by granting orders requiring former employees to preserve, deliver up and delete company information if there is a risk that it may be misused.

The English courts also have an established practice of granting website-blocking injunctions (including dynamic ones) against internet service providers to restrict access to IP infringing content online.

iii Protecting trade secrets in litigation

Proceedings in English courts are public and the courts give great weight to the principle of open justice. In addition, parties must generally disclose all relevant documents unless privileged. Irrelevant confidential material may be redacted, but relevant material must be disclosed. This could result in trade secrets both being seen by the other side and being disclosed in documents or at hearings open to the public.

There are, however, measures that parties can ask the court to take to protect trade secrets. These include restricting access to the court files and entering into confidentiality agreements to limit who has access to confidential information (e.g., a confidentiality club permitting agreed individuals to inspect documents containing material of this kind). Where documents to be filed at court (such as pleadings or evidence) refer to confidential information, it may be possible to include this in a separate annex or to file a redacted version (as is common practice in the Patents Court).

Once a document has been referred to in open court, it ceases to be confidential. An application may be made to restrict its further use,18 although the parties cannot impose a requirement of this kind on the judge. It may also be possible to avoid sensitive information being read aloud in a public hearing. In exceptional circumstances, a hearing in private may also be permitted.

There is also a risk that trade secrets and other confidential information may be referred to in the content of a judgment. However, the court may be prepared to issue a separate 'public' version with confidential information redacted. For example, that was the approach of the Patents Court – which recognises that parties will often need to disclose documents containing commercially sensitive material – in Unwired Planet v. Huawei,19 where confidential licensing information was redacted from the public judgment.

iv Limitation periods

Limitation periods in England and Wales are governed by the Limitation Act 1980. The general time limit for an action founded on contract or tort is six years from the date on which the cause of action accrued. In the case of breach of contract claims, that is six years from the date of the breach of contract or 12 years in the case of a deed. In negligence claims, that is six years from the date the claimant suffers damage or, in respect of latent damage, six years from the claimant's date of knowledge. The limitation period in IP infringement cases is also six years.

The expiry of a limitation period is a defence, rather than a statutory requirement. Courts will not on their own initiative strike out a claim for being out of time; it is for the defendant to plead that the limitation period has expired.

v Timeline

System development, service delivery, outsourcing, licence and investment disputes will follow the same timeline as other commercial disputes in the Business and Property Courts. IP disputes, including copyright and trade secret cases, follow a similar timeline, with modifications for patent disputes.

Before issuing proceedings, parties should normally comply with the Practice Direction on Pre-Action Conduct, which requires parties to exchange certain information to understand the issues in dispute.20 Failure to do so can lead to a party being penalised in costs at the end of proceedings.

A claim is commenced by issuing a claim form and paying a court fee, which varies depending upon the value of the dispute. The information to be contained in the claim form is set out in CPR 7. Once the claim form has been issued, the claimant has four months to serve it on a defendant in the jurisdiction or six months if the defendant is outside the jurisdiction.

Once a claim is issued, the following main steps and timelines typically apply.

StepTimeline
Claimant to serve particulars of claim, setting out the details of the claimWithin the four-month period and within 14 days of service of the claim form (in the Commercial Court, within 28 days of the defendant having filed an acknowledgement of service indicating an intention to defend the claim)
Defendant to file acknowledgement of serviceWithin 14 days of service of particulars of claim (in the Commercial Court, within 14 days of service of the claim form)
Defendant to file defenceWithin 28 days of the date of service of the particulars of claim
Claimant to serve a replyWithin 28 days of the directions questionnaire from the court (in the Commercial Court, within 21 days of service of the defence)

The court will then hold a case management conference and will make a directions order specifying the steps and deadlines through the remainder of the proceedings. The steps will normally include: disclosure of documents; exchange of factual witness statements; exchange of experts' reports, if any; pretrial review hearing; and trial.

The date of the trial will be determined by its length and the availability of the court, and many of the other deadlines will be set with reference to the trial date. For a one- to two-week trial, a time frame of approximately 18 months from issue is common.

vi IP disputes

The Patents Court endeavours to bring cases to trial within 12 months of issue, with judgment typically following one to two months later. Procedural steps broadly follow those set out above but with some variations, such as additional time being given (42 days versus 28 days) for filing the defence (and any counterclaim) to a claim for infringement, and separate 'particulars of infringement' and 'grounds of invalidity' being served. Certain documents must also be served on the Comptroller of Patents.

Suitable, less complex, IP disputes may be heard under the Shorter Trials Scheme. Trials under the Scheme are limited to four days and cases are tightly case managed by a docketed judge, with the aim of coming to judgment within 12 months of starting proceedings.

IPEC cases typically take 12–18 months and, as in the Patents Court, some procedures and time limits are modified.

A party may apply for an expedited trial, for which it will need to satisfy the court that there is an 'objective urgency' to deciding the claim. This is a high threshold given the impact on other litigants, and the court will also take account of prejudice that expedition may cause the other party. If the defendant is subject to a PI, that may favour expedition.21

Evidence and witnesses

i Disclosure

Apart from low-value claims (£10,000 or equivalent) assigned to the small claims track,22 all proceedings in England and Wales include disclosure of documents, the process by which each party is required to make available to the other party documents that are relevant to the issues in dispute. Relevant documents include those that are adverse to a party's own case.

Disclosure obligations apply to all 'documents', meaning anything in which information of any description is recorded23 and including all forms of electronic documents such as emails, Microsoft Word and portable document format (or PDF) documents, voice recordings and instant messages.

Parties, and their legal representatives, have a duty to preserve documents once a dispute is contemplated, and courts can impose sanctions if a party fails properly to preserve documents or comply with its disclosure obligations.

The specific extent and process for document preservation and disclosure will depend upon which track and in which list the claim is assigned. The majority of technology disputes will be heard in the Business and Property Courts, which apply the disclosure pilot scheme24 (DPS) to most cases.

Under the DPS, parties will generally give 'initial disclosure' of key documents at the same time as serving their statements of case25 and there is then discussion and agreement, or an order, about the issues against which documents will be disclosed and the 'model' of disclosure to be adopted in respect of that issue, which will determine the extent of the searches each party must undertake. The DPS contains a continuing obligation to disclose known adverse documents (i.e., documents that the party is aware are or were previously in its control without undertaking any further searches beyond those already undertaken and that are adverse to the party's case) regardless of which model of disclosure is ordered.26

Disclosure in patent disputes is typically fairly limited. In particular, in the Patents Court:

  1. Disclosure on validity is normally restricted to documents created in a four-year window, two years either side of the priority date of the patent.
  2. Disclosure on infringement is usually by way of a product or process description setting out 'full particulars' of the allegedly infringing product or process, verified by someone 'personally acquainted' with the relevant facts.

Disclosure in IPEC cases is even more tightly controlled and must meet a cost–benefit test. In both the Patents Court and the IPEC, known adverse documents must be disclosed.

Documents need not be disclosed if they are privileged. The types of privilege most likely to be relevant are (1) legal advice privilege, which applies to confidential communications between a client and the client's lawyer that have come into existence for the dominant purpose of giving or receiving legal advice; and (2) litigation privilege, which applies to confidential communications between a client and the client's lawyer, or between either of them and a third party made for the dominant purpose of pending, reasonably contemplated or existing litigation.

ii Witnesses

After the disclosure of documents, parties will exchange written witness statements.

Witness statements set out the evidence of witnesses of fact on whose evidence the parties will rely at trial. Written witness statements will stand as that witness's evidence in chief at trial, meaning they will not be required to give the same evidence orally. All witnesses who provide a statement will be expected to attend the trial to be cross-examined on the contents of their statement. If they do not do so, the weight of their statement will be significantly reduced.

The requirements for witness statements are governed by CPR 32 and Practice Direction 32. Since 6 April 2021, there have been more prescriptive rules about how witness statements used at trial are prepared and their content.27

iii Expert witnesses

Expert witnesses may be needed to help the court understand technical issues and they are likely to be important in many technology disputes. They are typically the key witnesses in patent litigation.

Expert evidence can only be submitted with the permission of the court. The court may order that a single, joint expert be appointed by the parties to report on a specific issue. In more complicated cases, the court can order that each party appoint its own expert; this is invariably the approach in technology disputes. Although experts are appointed by the parties, their role is to assist the court and they owe their duties to the court rather than to the appointing party. Their evidence is required to be 'the independent product of the expert uninfluenced by the pressures of litigation'.28

Evidence in chief is given by way of written reports, on which the expert will be cross-examined at trial.

The appointment of experts, their duties and the format and content their reports must follow are governed by CPR 35 and its Practice Direction, and by guidance from the Civil Justice Council.29 In addition, the Patents Court has provided guidance on how a party's lawyers should work with experts in patent disputes to avoid a loss of objectivity or evidence being tainted by hindsight.30 Failure to instruct an expert properly may fatally undermine the expert's credibility.

iv Experiments

Experimental evidence may be important for patent cases. However, given that experiments may need to be repeated in front of both parties' experts or give rise to reply experiments, and thus may be time-consuming and expensive, the court will control their admissibility.

Experiments carried out for litigation are privileged until they are deployed, when that privilege is waived. Work-up experiments may also be required to be disclosed, to prevent cherry-picking of favourable results.

Enforcement

If a party (the judgment debtor) fails to make payment of a judgment awarding damages, there are a number of enforcement methods available to the party claiming payment (the judgment creditor).

The appropriate enforcement procedure will depend upon the nature and location of the judgment debtor's assets. The judgment creditor will, therefore, need to identify and locate the judgment debtor's assets.

The most common methods of enforcing monetary judgments against commercial parties with assets within the UK are (1) a third-party debt order, under which someone who owes the judgment debtor a debt, usually a bank, pays the judgment creditor directly; and (2) a writ of control, which requires a High Court enforcement officer to take control of and sell a judgment debtor's goods to satisfy the money judgment.

Deliberate breach of a final injunction is a contempt of court and failure to comply can, ultimately, be punished by fines and imprisonment.

Alternative dispute resolution

Alternative dispute resolution (ADR) is encouraged in all disputes and the court has a duty to manage cases by actively encouraging the parties to use an ADR procedure.31 If a party fails to consider the ADR options available to it or fails to engage in ADR procedures suggested by another, there may be costs consequences. The possibility of requiring – rather than merely encouraging – participation in ADR in appropriate cases is under debate. This was mooted by the then Chancellor of the High Court (now Master of the Rolls and Head of Civil Justice) in McParland v. Whitehead,32 and supported by a recent report by the Civil Justice Council.33

ADR options encouraged by the court include mediation with the aim of entering into a binding settlement, or making a formal offer to settle under CPR 36, which contains specific cost consequences intended to encourage compromise.

Separately, arbitration has become increasingly popular as an alternative to litigation, particularly in international agreements and those where confidentiality may be an issue. Agreements may also provide for expert determination in respect of disputes of a certain nature where particular industry expertise is required.

Outlook and conclusions

Many of the developments discussed at the outset of this chapter represent the start of a trend and we expect to see continued developments in those areas. The world's reliance on technology continues to increase in the wake of the covid-19 pandemic, which saw many firms rush to work virtually; this is almost certain to give rise to further disputes as technology is implemented or subsequently used. Added to that is the precarious economic landscape in which many companies are operating and there is a real risk that insolvencies will also play a role in forthcoming disputes.

Footnotes

1 Jayne Bentham is a partner, Eleanore Di Claudio is a managing associate, Priya Nagpal is a partner and Benjamin Thomas is a managing associate at Simmons & Simmons LLP.

2 UKSC 2019/0213.

3 [2020] UKSC 37.

4 Claim No. HP-2019-006 Optis Cellular v. Apple (Trial F).

5 IPCOM v. HTC [2020] EWHC 2941, under appeal.

7 Actavis v. Eli Lilly [2017] UKSC 48.

8 Akebia v. Fibrogen [2020] EWHC 866 (Pat).

9 e.g., Facebook v. Voxer [2021] EWHC 1377 (Pat).

10 Optis Cellular v. Apple [2021] EWHC 1739 (Pat).

14 The Court of Appeal includes several former Patents Court judges, so appeals will also typically have 'specialists' on the bench.

15 [2019] EWHC 3074 (Pat).

16 [2020] EWHC 2072 (Ch), [2020] EWCA Civ 1293.

17 Directive (EU) 2016/943. The UK implementing legislation is unaffected by Brexit.

18 CPR 31.22(2).

19 e.g., [2017] EWHC 3083 (Pat).

20 In disputes involving certain IP rights, any pre-action correspondence must be carefully drafted to avoid giving grounds for an action against the sender for making 'unjustified threats' of infringement proceedings.

21 See, e.g., Warner-Lambert v. Teva [2011] EWHC 2018 (Ch).

22 CPR 27.

23 CPR 31.14.

24 Practice Direction 51U.

25 Practice Direction 51U, paragraph 5.

26 Practice Direction 51U, paragraph 3(2).

27 Practice Direction 57AC.

28 Practice Direction 36, 2.1 and 2.2.

29 Guidance for the instruction of experts in civil claims, 2014.

30 e.g., Medimmune v. Novartis [2011] EWHC 1669 (Pat) at [99]-[114], reiterated recently in Akebia v. Fibrinogen [2020] EWHC 866 (Pat) at [1]-[13] and Fisher & Paykel v. Flexicare [2020] EWHC 3282 (Pat) at [20].

31 CPR 1.4(e).

32 [2020] EWHC 298 (Ch) at [42].

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