Mr. Justice Henry Carr, a judge of the Chancery Division of the High Court of England & Wales, looks back on his career as a silk and his ascent to the judiciary, and offers his thoughts on key recent trends in intellectual property (“IP”) disputes.
Justice Henry Carr of the UK Patents Court recently visited Hong Kong and the Chinese mainland to discuss the enforcement of IP rights. In Hong Kong, he gave a very well-attended talk to IP practitioners on recent case law in the UK.
Justice Carr, who was appointed to the bench in October 2015 after a very successful career as a top IP silk in London, sat down with the Hong Kong Lawyer to discuss his views on the importance of IP and the need for its effective enforcement.
Writing His Own Script
He studied jurisprudence at Hertford College, Oxford following a discussion with his father. “When I was fourteen or fifteen I was very keen on acting and I wanted to be an actor. My father said to me, ‘Well why don’t you be a barrister because barrister are actors who write their own scripts’, which is really a good way of describing the job. It brought me to the profession,” he said.
After Oxford, he completed a LLM in legal protection of computer programs at the University of British Columbia, which led him into IP practice. “IP was one of those certain instances in life that just happens,” he stated. “When I was at university in the UK, in the final year I decided that I wanted to get to University of British Columbia in Vancouver (excellent skiing and sailing). A professor I met told me that I might be interested in studying legal protection of computer programs. This was in 1979 and that area of law was in its initial phases. So that’s what I did. I wrote a thesis about the legal protection of computer programs, copyrights, patents, etc. and when I got back to the UK I went to a chambers that did contract cases, and they said: ‘Look, since you’ve done this thesis, you should go into intellectual property.”
“That ended up with 34 years of cases at the bar. A lot of them were great fun,” he reminisced.
When asked about his favourite case, Justic Carr said: “You always think about the last one you did. As a barrister, they always say you are only really as good as your last case. And the last case I did concerned a very important cancer drug, involving immunotherapy for blocking a particular receptor and the drug had tremendous health benefits. The cancer community was extremely excited about this form of immunotherapy. It was very interesting meeting with experts and also, cross-examining the expert witnesses. The witnesses in these cases tend to be very high quality, very knowledgeable and interesting to engage in the subject matter. We do a lot of preparation for those kinds of cases. On that particular case I was on the side of the patentee and it’s rather good to be on the side of a patentee where you genuinely believe there is a really great invention - something that the inventor looked at and thought about from a completely different perspective, and ended up doing something really significant”.
“The most challenging part about a case like that is the fact that all the responsibility is on you,” he added. “You obviously have a team of experts and a junior barrister, maybe two, who are very good, but in the end you are the one presenting the case and people look to you to make the decision. After a while, that becomes second nature. When you are first learning it, it can be quite challenging. Of course having a very supportive family with four children helped. I was able to just go home and I didn’t think too much about work when I was home.”
On what made him decide to become a judge, Justice Carr, described it as a natural transition. “I think if I became a judge at 40, I would have missed the cut-and-thrust battle which I did enjoy all those years. I didn’t become a judge until I was 57. At that age, it’s a somewhat different story. Becoming a judge is an opportunity to continue till I am seventy and to make a contribution to the law (which I always wanted to do) and hopefully make things better,” he said.
Increasing Importance of IP
Turning to the handling of IP cases in general, Justice Carr noted the increasing importance of IP to the modern economy. “With the Internet economy, there is a need for some kind of regulatory system which allows a degree of creativity – which is absolutely essential in the globalised economy,” he said. “For major IP disputes, if you have a strong court system which is also quick, that is the best way of resolving disputes in the most efficient way. However, within that structure I see a very significant room for mediation. It can be very surprising. Sometimes parties will think that settlement is absolutely impossible, and then sometimes months after, the discussions during mediation turn out to be the key for these cases to settle. So, I am in favour of alternative dispute resolution. I definitely encourage parties to take the opportunity.”
“Arbitration is different,” he adds. “In mediation, each party has their say and the process allows a party to articulate their case themselves. Having a trusted mediator who knows what he is talking about to go between the two parties, makes the difference. Confidentiality of the proceedings can be an advantage. The other advantage is that, if you have an arbitration agreement, you can resolve your issues worldwide sitting in one particular jurisdiction. However, for that you need a contract, for example, a settlement agreement or licensing agreement that actually provides for arbitration. Otherwise by the time parties fall out in a major IP dispute, they may find it difficult to agree on venue, scope of the arbitration etc.”
Push to Innovate
In recent years, the UK courts have undertaken significant changes in the way they handle cases, and this has made them much more user-friendly and efficient. Justice Carr explained some of the major changes. “We have now a menu with a series of options depending on the size and urgency of the dispute,” he said. “First, we have the Intellectual Property Court in the Chancery Division and for big disputes that is the venue of choice. For patents, for example, we now have a target that we try to have cases resolved within a year of their commencement, which is pretty quick, especially for a big case. That tends to work. We generally resolve them at first instance within a year to 15 months depending on how fast the parties wish to move. The cases are principally major biotech cases and major mobile phone disputes. You do need specialist lawyers to bring the cases quickly to trial. Preparation has to be very efficient.”
“But then we also have the Intellectual Property Enterprise Court (“IPEC”),” he noted. “IPEC is for smaller cases where the trial will be one to two days. The great thing about IPEC is it gives small to medium sized enterprises, who otherwise would feel there is too much of a risk to sue, access to court. The IPEC has what’s called cost-capping, which means that if you lose the case the other side can only recover up to £50,000 from you. So in terms of downside risk, for the party deciding whether to sue, that’s the most they will have to pay to other side, which allows them to control their costs. For very small cases they may be no costs recovery. That is an interesting innovation. The efficiency of the court largely depends on not having a great deal of disclosure and the judge being able to control the time efficiently. It is all about good case management, both pre-trial and during trial.”
In order to ensure a party gets a fair hearing, the judges in England are careful to ensure that the case is heard by the right court and it is possible for cases to be transferred from IPEC to the High Court if there are going to be substantial disputes of facts or major issues of law.
“There is a third option which is an interesting new innovation,” said Justice Carr. “It has been piloted this year and at the moment it seems to be working very well. It’s also called the shorter trial scheme which takes a position somewhere in between IPEC and full high court proceedings. The trial can’t last longer than four days. At the case management conference, one or maybe both parties will come to court and say we want this to be part of the shorter trial scheme. If you want disclosure, you have to apply for the particular category. For cross-examination, the judge will divide up the time between the two parties, giving each, say, a day. There are no limits on the size or importance of the case that may use the scheme. You also don’t have to show the case is urgent; you simply have to show that it’s suitable for a shorter trial. The kind of case that isn’t suitable for a shorter trial is where there are substantial disputes of fact including attacks on credibility or where there are multiple issues. However, design cases are quite suitable for the shorter trial scheme. Those cases will come on perhaps six months from the initiating proceedings. It’s all about speed.”
“In addition to the shorter trial scheme, the IP judges try to take certain measures to ensure that cases are not over complicated,” he said. “There is a balance between allowing parties to present their cases as they wish on one hand and on the other hand balancing the interest of other court users. There two aspects in particular. One is in patent cases deciding how much disclosure is needed. Very often the case is largely about what the patent says and what the prior art says, and not really about what happened within individual companies. And then, similarly, for registered designs, those cases are really about what the design representation looks like, so you don’t need any large amount of disclosure.”
Tips for Advocates
When asked for some tips for advocates appearing before the court, Justice Carr emphasised: “The first thing is to be responsive. Don’t come in and think that you are going to deliver this long speech and the judge isn’t going to say anything; you should not plan to rigidly move from point to point. I think the best way of looking at the presentation of a case is that it’s more of a conversation. So you need to be very well prepared, but equally, when the judge asks the questions, you don’t want to say ‘That’s something I will come to when I reach my point six’. You want to say, ‘Well, this is the answer’, because if a judge asks questions, he or she is really listening and most receptive to your answers. Whereas, if a judge is just sitting there and you are talking, how much of it is really going in? That’s why you need to be flexible. I always suggest that you carefully prepare, have detailed notes and then be prepared in your head to just discuss it.”
“In terms of expert witnesses, as a judge I look for objectivity, he said. “Therefore, if an expert is coming to argue the case, it’s hard to take that much notice because this is what the barrister should be doing, and it’s not really helpful. So I look to see if the expert is capable of just being entirely honest, entirely objective, because if the point that’s put in cross-examination doesn’t support the side of the case that the expert is appearing to support, and it is correct, the best thing he would say is: ‘I agree completely’. In terms of cross-examination of the expert, a barrister just needs to focus on key points and not get lost in long discussions. The expert will probably be someone who knows a lot more in the subject than you do. You need to be focused and you need to keep the questions short and to the point.”
Lessons for Hong Kong
Finally, on what the Hong Kong judiciary can learn from the UK’s experience with creating specialist IP courts, Justice Carr commented: “Essentially, if you want to have a lot of IP cases you need to have a specialist IP court because you need to give parties the confidence that the quality of the judgments are going to be sufficiently high.”
* Hong Kong Lawyer thanks Douglas Clark, barrister, for assisting with editing this interview and Cynthia Claytor for conducting the initial interview.