In an exclusive interview with England and Wales High Court judge Colin Birss, Patent Strategy learns what keeps him busy, why plausibility is here to stay and how he discusses bees instead of patents with other IP judges
Sir Colin Birss’s office has a wonderful view of the Maughan Library just across the street.
While gazing at the grand King’s College London edifice from a few stories up the Rolls Building on London’s Fetter Lane, the High Court justice shows his knowledge of history by explaining that the library used to be the public records office.
Before that, it was the official residence of the Master of the Rolls, the president of the England and Wales Court of Appeal’s civil division, until it was surrendered to the Crown in 1837.
He says that he has got into the habit of looking out for kestrels, which nest on top of the library. But despite the view, he has not developed a love of bird watching in the same way as he has for bee keeping.
“I got into bee keeping because I met someone at a party late in the evening whose father kept bees,” he explains. “I had mentioned that I had some apple trees and was wondering how they might be pollenated. The next day, the thing I retained was that it would be a good idea to keep bees.
“So I did. True story.”
When we sit down to have our interview, the first thing I ask him about is the Unwired Planet v Huawei case, in which he famously ruled that global licences can be fair, reasonable and non-discriminatory (FRAND) in the 2017 first-instance judgment. Birss had predicted at a conference in 2018 that disputes over FRAND terms would one day be fought in one place, and would be treated in a similar fashion to international commercial dispute resolution.
But the judge politely declines to comment because of the upcoming Supreme Court hearing, explaining that it is not for him as a first instance judge to ponder on how the higher court might or should rule.
When asked what was high on his agenda, however, he mentions that he is keen to apply lessons learned from other types of law to IP.
“My experience doing non-IP cases and seeing how wider business and property disputes are fought has been very interesting. I have been thinking a lot about that and the lessons we in IP can learn from that,” he says.
The conversation then turns to what else is high on his agenda, the shortage of patent judges in the High Court presently and what the judge would like to see from litigants.
What else is high on your agenda at the moment?
Apart from judging, the thing that is taking up most of my mental space is Online Civil Money Claims (OCMC). As part of my membership of the Civil Procedure Rule Committee, which is fascinating, I lead the subcommittee that supervises the OCMC project.
The project is a small claims system for litigants in person with claims under £10,000 ($12,700). They can use it to file online and the defendants can also respond online, if they wish. It is a pilot project and we have had 90,000 or so cases since it went public in March 2018. It is an extremely interesting insight into the future and potential benefits of using digital systems in courts.
An example of the potential for improvement is the latest release that came in early September. Among other things, we have now put the directions questionnaire process online. That change means that a case that once would have taken about 60 days from issue to be ready to go to a district judge for case management directions is now taking an average of five days.
Mind you, I should be careful when citing averages, because the number of cases at the moment is still small. But it is a significant illustration, all the same.
What would you like to see from litigants?
Obviously, there are things that litigants do that bother me from time to time, but I'm probably not self-aware enough to put a pin on what those are now. People try to do their best most of the time. Things go wrong sometimes – but they always do in any endeavour.
My experience of the UK’s Intellectual Property Enterprise Court (IPEC) tells me that cross-examination could be shorter. Opening speeches would be better longer and cross-examination shorter – most of the time.
Cross-examination is an extremely valuable part of our justice system, but that does not mean we have to spend a long time doing it. Usually, the real points are relatively specific.
That would partly involve a culture change. The young barristers in the IPEC who did not have preconceived ideas of how trials should go, instantly got the idea of a strictly time-limited system instantly and were very comfortable with giving fairly brief examinations.
Some of the more experienced barristers found it harder to adapt, but did adapt pretty fast once they understood how it was going to work.
I do not mean that the High Court should have timetables as detailed as the ones in the IPEC, but cross-examination does go on longer than it needs or ought to. A better way would often be to show the judge the documents in advance.
My experience in the last two years is that despite the details that we concern ourselves with in the way IP cases are tried, including the sorts of things the courts and lawyers sometimes beat themselves up about, in fact IP cases are tried exceptionally well. The quality of attorneys, solicitors and barristers, and the way information is presented, is very high in the UK system.
I had a conversation with someone with a wide experience of civil justice in general who, when they worked with me on a patent case, could not believe how orderly and well-presented everything was.
We’ve heard there is a shortage of patent judges at the moment. Is that the case?
Yes. Henry Carr J’s very sad and untimely death, coupled with the welcome move up to the Court of Appeal of Arnold J this week, has created a gap.
As I'm sure you know, the way the Patents Court is organised is cases are categorised by subject matter. They are given a number from one to five – categories four and five are for the heavier science and tech cases.
There is a further pool of full-time High Court business and property judges nominated to sit in the Patents Court. These judges are able to do patent cases, but do not have the experience of science and technology to efficiently do some of the heavy cases in biotech, chemistry and telecoms. In terms of categories, they will deal with the cat-one, two and three cases, but are not so comfortable with the four and five matters.
People talk about ‘cat-four and five’ patent judges – that used to be me, Carr and Arnold, and now there is just me. We also have a useful pool of part-time judges, usually senior silks from the Patent Bar, who are qualified to sit in the Patents Court.
They have the technical experience and can handle cat-four and five cases. They sit already and will be sitting a bit more this year. I will do most of the four and five cases this term, but not all of them.
The part time judges are helping out and we may be able to have Arnold J sit in the Patents Court for a period next term. So it should be fine.
What is being done to fill the gap?
Hopefully we will recruit one or two new judges next year. I think we will. The process has started now, and the year of me being the only full-time cat-four and five patents judge will hopefully not last too long.
If we get back to a position where we have three nominated ‘cat-four and five’ judges in London – and that is as many as we have ever had – we will be fine. Even if we only have one extra, that is what the de facto position because of my circuit commitments and Henry’s illness.
The listing office tried not to have him undertake some of the very heavy cases, but he still worked exceptionally hard all the same and we are grateful for that. His example was extraordinary. So there has not really been three full time cat-four and five judges in London for a while.
Do you have much of a role in the IPEC anymore?
I have not been closely involved in the IPEC for a number of years and it has been enormously successful under HHJ Richard Hacon's leadership. One of the things my predecessor Arnold J did as the judge in charge of the Patents Court was undertake a supervisory role in relation to IPEC. He attended the users committee meeting and I imagine I will do that.
We're in the process of setting up IPEC small claims courts in the centres outside London. That will be really good. They will use the same model as in London in the business and property courts centres in Leeds, Cardiff, Manchester, Newcastle, Birmingham, Bristol and Liverpool. There will be district judges, trained to handle the cases. Small IP litigants deserve to be able to take their cases to local competent courts rather than having to come to London.
In terms of innovations, obviously elements of the disclosure pilot that is running in the business and property courts have been taken from the IPEC. Other examples of things that were IPEC based are the shorter trial scheme and the capped costs pilot.
You spoke last year about how the doctrine of equivalents is like a pendulum. Do you think it is here to stay?
Yes. When it comes to the doctrine of equivalents, to the extent that these pendulums swing, they do not swing very fast. We have our law from the Supreme Court and it is being applied, and these things take longer than a year.
That is what is good about the common law system. The law develops based on cases. It is fairly early days – we have had cases, but not that many.
And what about plausibility?
It is here to stay. You asked me whether the way the courts in the UK approach plausibility is out of step with other countries. One of the significant aspects of this is that the UK approach is based on the case law of the Boards of Appeal in the EPO.
It is not a situation of the UK being out of step with that. In terms of other countries, often the difficulty you can have is that courts may do what amounts to the same thing but give it different names.
Despite the differences that people get obsessed about in terms of how various European courts approach IP, although some cases may come out very differently, most come out the same way.
What has been a surprising aspect of your life as a judge?
One of the most unexpected but wonderful things about becoming a judge with experience of IP is getting to know judges in other countries. That is certainly not why I became a judge, and I never expected that to be a thing. But it is.
Many judges in the UK, particularly the specialist patent judges, have developed contacts with judges all over the world, from Germany to Japan to Australia.
I have been to China a number of times to meet and work with judges these. I know IP judges in Korea. There is a WIPO IP judges forum, which is fascinating. You learn so much from people. It is a great thing.
I know an IP judge in the US who keeps bees, as I do. We talk about that rather than patents.