Richard Meade: “Better opportunities for the Bar’s junior advocates will foster diversity”

JUVE Patent: How will the cost cap in conjunction with the Shorter Trials Scheme aid efficiency at the UK High Court?
Richard Meade: The cost cap trial came from user demand.  We have a regular meeting of the IP Court Users Committee and it was raised there because of reports from members of the committee, who represent the professions and the industry, that they would like the option to have greater certainty about their costs exposure. It is a natural fit with the Shorter Trials Scheme, where the costs ought to be better understood and more closely managed. So, the intention is that it will make the Shorter Trials Scheme still more attractive to court users, because they’ll know that their costs liability is limited, which they’ve reported is something that they think would be very important to them.

“The cost-cap is a natural fit with the Shorter Trials Scheme”

What constitutes a successful pilot study?
It will run for three years in the first instance and at the end of the three years, it can be renewed or made permanent or not renewed. Cases that have begun during the three years carry on in the scheme, whether or not the scheme is extended or made permanent. So, we will be monitoring the uptake and success of the scheme over those three years to see how many cases start in the scheme with the cost cap and how many continue, since cases can be transferred in or out of the Shorter Trials Scheme. We will be checking those cases through to their conclusion to see in particular what costs orders are made.

We recently had a meeting of the IP Court Users Committee which Lord Justice Colin Birss attended – he is the Deputy Head of Civil Justice and he’s been a great supporter of it. He provided input regarding how we should monitor it, with the next stage being that we will firm up a bit more formally who participates in monitoring the scheme. It’ll be at least one of the judges and probably a solicitor’s firm which will help us sift the cases.

Are there any other ways in which the court is seeking to achieve greater efficiency?
The FRAND-first approach is certainly to do with efficiency because it arises out of an appreciation that the many technical trials we’re doing sometimes don’t focus on the real dispute between the parties and prolong the time to the FRAND determination. There was the case of Alba some years ago where by agreement the defendant said that it recognised that it would need to take a licence eventually. The defendant proposed doing FRAND first on the basis that it would take the licence that came out of it. So, that was a consensual defendant-initiated FRAND first. That has happened in some other cases. In Kigen vs. Thales, which proceeding towards trial at the moment, the implementer again proposed it.

“Technical trials don’t focus on the real dispute between the parties”

In patent cases, is FRAND-first a departure from the status quo?
We were slightly moving in that direction, perhaps with some of the other more traditional or common FRAND cases, where the number of technical trials prior to FRAND was reduced and some of the technical trials were put back behind FRAND. It’s not a radical sudden jump in direction, because these things tend to develop in an evolutionary way and not a revolutionary way. So, I don’t think it was suddenly switched from all the technical trials first to all the technical trials second. And we won’t be dealing with it in a black-and-white binary way, we’ll have to deal with it flexibly as individual cases come along. For example, in Panasonic vs. Xiaomi, one set of defendants has agreed to FRAND first and the other one hasn’t.

Is it necessary that the claimant accepts FRAND first, and then requests courts in other jurisdictions to stay the case pending there?
I don’t consider it being essential for the claimant to agree. I am not commenting on the circumstance of any individual case, but in quite a number of cases, it would be the claimant’s preference to do FRAND as quickly as possible. If the defendant agrees that they’ll take the FRAND licence, then that’s settled, but the defendant won’t always do that. And as I’ve said in my judgments, the result of Unwired Planet is that there is no injunction until there’s a decision that a patent is infringed.

“Often, it would be the claimant’s preference to do FRAND as quickly as possible”

But that doesn’t necessarily prevent the court doing FRAND first – it can decide what the FRAND licence will be, and then later when there is a decision about the infringement the defendant can either choose to take the licence or come under an injunction. So I don’t believe that it’s essential for the parties to agree the sequencing of technical trials relative to FRAND. The court can impose it, but we won’t do that in a blanket way. That will be up for decision in any individual case.

What about parallel FRAND cases at the UPC?
That’s a complicated question which is very much under development. It would be desirable in many cases if, once we decided to do FRAND first here in the UK, the parties could agree not to burden themselves with foreign proceedings. Or they can go and make appropriate applications in the foreign courts, and it will then be up to the foreign courts to decide what to do. It’s a matter for international discussion and for courts of the various different important jurisdictions to act with comity.

But certainly, it will always be a matter for consideration whether or not a foreign court wants to stay its proceedings pending the UK; or in appropriate cases we in the UK might consider staying our proceedings. It depends on which resolution looks the most efficient and the speediest.

“It would be desirable if, once we decide to do FRAND first, parties didn’t burden themselves with foreign proceedings”

How did your colleagues on the continent and at the UPC react to this approach?
Everybody knows that this is a time of rapid change. There has been no, as it were, international formal consensus. Discussions take place when we judges meet each other at meetings, conferences, seminars, EPO events – there hasn’t been any concrete formal agreement about what to do, but we actively discuss these things. When you see dozens of technical trials happening in parallel all around the world, it’s only a natural thing for judges to think about how to do them efficiently.

What are the preconditions for the court to do ‘FRAND first’?
I think if the parties agreed to do FRAND first, the court would be extremely likely to agree, and in a way the parties can bring that about by both undertaking that they will grant and take the licence that the court determines. There is decision, a positive decision by a judge in the Kigen case that in terms of jurisdiction an implementer can apply for the determination of FRAND terms. And in Nokia v Oppo, the parties agreed that that decision was correct. It hasn’t been decided by the Court of Appeal that an implementer can ask for the Court to settle FRAND terms.

If one side wants FRAND first and the other doesn’t, then the court will have to rule on whether to do that or not. But I don’t think it has to be consensual for the court to decide FRAND first. But because the Supreme Court in Unwired Planet vs. Huawei decided the case before and in the way it did, there can’t be an injunction, or the choice between an injunction or a licence, until there’s a finding that a patent is valid and infringed. So, if one were to do FRAND first before a technical trial, one would be deciding what the FRAND terms would be once you get to the stage of there being a valid and infringed FRAND patent. But none of this is formulaic. We’ll have to decide in individual cases.

As you mentioned, FRAND-first is not a new approach. When did the discussion on FRAND-first in patent issues initially come about?
My first awareness of doing FRAND first was the Alba case, so it’s always been in contemplation. Because it’s been recognised for a long time and formalised by the Supreme Court in Unwired Planet that you can’t grant an injunction until there’s a finding of infringement, in a sense a natural way to do things where the defendant wouldn’t agree to do FRAND first was to see if there was a valid and infringed patent and do FRAND after that.

“It’s on people’s radar that the existing FRAND arrangements might be suboptimal”

We’ve learned that that’s not always the most efficient way to do it. Perhaps an appreciation grew that it wasn’t the best way to do it in cases where the portfolio was very large and the likelihood that there would be an infringed and essential patent that was valid was correspondingly high, and especially where the parties had, because they’ve been negotiating, recognised that there would be a licence in due course. So, that’s why I say it’s been evolutionary.

Certainly, a number of patent portfolio owners expressed frustration that they were having to do technical trials with the result that the FRAND determination was taking a long time. So, it’s always been on people’s radar that FRAND first was a theoretical possibility and that the existing arrangements might be suboptimal in some cases.

As a judge, what are your first impressions of the UPC?
We keep a close eye on it. We talk to colleagues from the UPC judiciary all the time. They were there in numbers at the Venice meeting of European patent judges. There are judges at events at the EPO. There was a very interesting meeting about FRAND in Paris in the autumn where there were UPC judges present. So, we talk about it all the time. And I read closely about it and I read judgments when they come out. So we wish them every success and we will collaborate in an active and collegiate way with them.

Have you seen any challenges arising for the UK IP courts with the advent of the UPC?
There was certainly in the last few months before the UPC started a very sharp downturn in the number of patent cases being started in the UK. But by the end of the calendar year 2023, the number of cases caught up to where it usually would be, and in fact, there were a lot of very big cases started in the second half of 2023 in the Patents Court.

“The second half of 2023 saw lots of big cases in the Patents Court”

I don’t think that was a symptom of a long-term reduction in the number of cases in the UK, but rather clients and their professional advisors taking a ‘wait-and-see’ approach, or perhaps just they had devoted all their resources to getting ready for UPC litigation in an active or defensive way. But in any case, as far as one can tell from the six months of experience we’ve had, the rate of starting proceedings in the UK is what it was before the UPC. It just slowed down for a little bit on a wait-and-see basis, as far as I can tell.

What opportunities does the UK system offer the UPC?
Obviously the UK has a very well-established system – specialist judges and advisors, a long history of case law – so it’s a known quantity. Practitioners have also said to me, which I think is fairly common sense, that the UK remains a very big market. And if you want a decision about a UK patent, you have to do it in the UK, so that’s not going to change.

And then at the moment, there are procedural options available in the UK that aren’t elsewhere, in particular global FRAND and other things possibly like Arrow declarations. Maybe the UPC will offer these things in due course. It’s going to be very important and interesting to see what the UPC’s decision about its jurisdiction over those things is. I’m always curious to know what practitioners think about whether they should be using the UK and why they’re choosing the UPC, or why they slowed down starting cases in the UK.

“Some procedural options are available in the UK that aren’t available elsewhere”

If UK patent court case numbers rise drastically, would this impact the speed at which judgments are issued?
The Practice Statement about the Patents Court trial listing regime that was made some time ago and that was reissued with some slight amendments recently says that we’ll attempt to have a trial within twelve months in a patent case, if we can. And we work to that. With these very, very big cases that’s tough to do, because if we’ve got a case that’s going to require a 15- or 20-day trial, it’s hard to find a slot within a year. But we try to do that, and we’ve expedited quite a few cases recently to make sure we do that. We hear trials in September, if we need to: I will, and so will James Mellor and Richard Hacon, as appropriate.

We also keep capacity in hand by having deputies who are authorised to hear patent cases and by using judges who are authorised to hear patent cases and have some experience in patent cases, although they maybe weren’t patent practitioners when they were at the Bar. There’s a significant number of Chancery judges authorised to hear patent cases and they’ve done that – not just in the FRAND sphere, but in the substantive underlying disputes.

The London chapter of the ChIPs network began an initiative which led to changes in the Patents Court Guide, written by you, regarding diversity. What impact would you like to see the changes have on, for example, opportunities for junior advocates?
One would want to see more junior advocates getting the opportunity for all advocacy at trials and other hearings. And I think that there is evidence of that happening. I’ve noticed it and I know anecdotally from speaking to practitioners that at least some of those instances where junior advocates have done the advocacy at big applications or trials, at least some of those instances have definitely come about specifically because of the encouragement in the Patents Court guide. It’s a bit hard to tell from the bench when a junior advocate does some advocacy in a trial, whether it’s because of the guide or whether they would have done it anyway or whether there are different reasons.

“Junior advocates should get the opportunity for more advocacy at trials and hearings”

How is the profession working to make itself more diverse and inclusive in other ways?
ChIPs/IP Inclusive organised a very good event in the autumn at WilmerHale where all of the major chambers were represented, and a good cross-section of the patent solicitors and patent attorneys. The judges have also got a part to play. We will be more actively raising advocacy opportunities for more junior representatives earlier in the conduct of cases to support it actually happening. This means asking at hearings what thought has been given to that, which is up to us judges to a large extent. I think part of the feedback was that more active questioning from the judges will support it.

Then, of course, the professionals have got to support it, and counsel should be aware that they should do that. Solicitors have got to be aware of it and they have the task of raising it with their clients and persuading their clients, which also requires some commitment. There’s also been system-wide guidance about this – for example, the Commercial Court has got a similar scheme. The Lady Chief Justice (Lady Sue Carr, head of the judiciary of England and Wales) also put out a statement saying that across the judiciary we should do this. It is not yet the subject of formal rules across the whole system, but the encouragement to do this has been given across the whole system.

Do you foresee the scheme eventually impacting judicial diversity?
Obviously one hopes that the encouragement for junior advocates will over time lead to those advocates being more successful. The whole scheme is based on the premise that there is, in fact, greater diversity at the junior end of the Bar. And that needs to be fostered and encouraged by giving that segment of the Bar a better opportunity to do advocacy. You can see that that will take time to feed through to applications to the judiciary, because those people will first of all have to become more senior advocates, leading counsel in due course and then apply to be members of the judiciary. So, I think it’s a very important initiative, but it will only be in years to come that it impacts judicial diversity.

“Diversity needs to be fostered by giving the junior segment of the Bar better opportunities”

What can be done to improve diversity on a more invisible level – for example, working class backgrounds, or the LGBTQ+ community?
I would hope and expect that, if you look at the junior segment of all the professions who work in the Patents Court, diversity is getting better across all of those dimensions. The Patents Court Guide initiative came from ChIPs originally, which has got a focus on gender diversity. But it’s in no way limited to that. So, I would certainly hope that it also has the capacity to improve and will improve, for example, diversity in respect of working-class advocates.

Another thing that I found interesting at the discussion we had in the autumn was it’s harder to go to a client and say “we would like to use this junior advocate at a forthcoming hearing” if you haven’t already supported that young legal professional by giving them the opportunity to participate actively in client and strategy meetings, for example. Because if young women, for example, are not supported to actively take part in important roles in those meetings, they won’t be supported by the clients and get a chance at the advocacy. So, you can’t see this just in terms of suddenly saying to a client: “Please use this advocate.” You’ve got to say it more broadly than that.

“If young women are not supported to actively take important roles, they won’t be supported by the clients”

In that sense, junior advocates have to be supported in their participation in the legal team before the discussion about who’s going to do a hearing comes up. Another important thing is that this scheme is not there just to encourage the leading advocates to give junior advocates hopeless points that they don’t want to argue – it’s to identify important points that can competently be done by a junior advocate.

Does the current barrister/solicitor system limit younger people to take a more active role in UK proceedings?
I don’t think so. The Patents Court’s guide scheme is there for the benefit of all junior advocates in barristers’ chambers, in solicitors’ firms and in patent attorneys’ firms. And obviously the way in which clients get to meet their advisors may be slightly different because of the barrister/solicitor arrangement we have here. But since I’ve been in practice, teams have become so integrated that the clients always know their barristers well. So, I don’t think there’s any distance between the client and the barrister that would lead them to not want to let a junior barrister do part of the case.

“I’ve not yet done a FRAND validation trial, but I’ve played a part in shaping FRAND procedure”

Which UK patent case has made the biggest impact in recent years?
The case that’s had the biggest impact on the shape of UK litigation is definitely the Supreme Court in Unwired Planet by some distance, because we could do global FRAND and that has changed so many things since then. But, with regard to my own cases, trying to extrapolate patterns or trends is folly because you decide the cases as they come to you. If you rule on four weak patents in a row, you probably revoke them, so you’ve got to be very careful about extrapolating from that data.

Did you have a chance to hear a FRAND trial yet?
This year we’ve got a very busy sequence of FRAND cases in the Patents Court. I couldn’t do the Interdigital FRAND case because I advised Interdigital. I couldn’t do the Optis vs. Apple FRAND case, because, if I had done that FRAND trial, there would have been two other high category, complicated patent trials, technical trials that wouldn’t have a judge. So, for scheduling reasons, I couldn’t do that one. There were two that I was going to do in Nokia vs. Oppo and Philips vs. Oppo but the first of those was adjourned and the second settled. I think I’ve played quite a major part in shaping FRAND procedure, but I haven’t yet done a FRAND valuation trial. But it will happen, and I’m interested to do it.

This interview was conducted by Amy Sandys and Mathieu Klos.