PALs meeting 25 February 2009

Speaker’s Notes

 "Communications with the Other Side"

or

"Never Wrestle with a Pig"

(you both get muddy and the pig loves it)

INTRODUCTION

  1. Scope of the topic – mainly written communications, but two points in opening on telephone communications
    1. Never be afraid to say

                                                              i.      “I think I should let you know our position on that point in a letter” – he may ridicule you at the time but that will not last, whereas an incautious admission will.

                                                             ii.      “I cannot answer that question without breaching client privilege” i.e. it goes to how we might decide to run our case (so mind your own business until I decide to tell you or the rules of court require me to do so).

GENERAL ISSUES ON CORRESPONDENCE

  1. What is it for? – Contrasting Views (perhaps displaying the different approaches to the topic of solicitors and patent attorneys)
    1.  “Ostensibly it is to make for efficient conduct of the proceedings, but rather than being the grease that oils the wheels of justice it seems it is the grit between the wheels.” – Patent Attorney
    2. “It is in the letter that the litigating solicitor’s art is most completely expressed” – Solicitor
  2. What is it for? – detail
    1. Nuts and bolts – document serving – tracks the stages of litigation and avoids uncertainty (dates of service; confirmation of receipt etc.)
    2. Test the issues – perfectly legitimate process to put the spotlight on the issues, persuade the other side to drop it (or vice versa); may narrow the issues.
    3. Less worthy

                                                              i.      Forging a wedge between other team and its client

                                                             ii.      Distracting the other side (to be dealt with below; but note the words of an experienced IP barrister whose views I canvassed when preparing the talk - “Don’t get distracted – the other side may attempt to divert attention from the core issues in the case by raising irrelevant points, or making minor counterclaims or allegations. Obviously these need to be dealt with, but unless necessary, don’t burn up time and money on debating at endless length points on which you will never reach a consensus with the other side.” 

                                                           iii.      Exhaust his funds.

  1. Who are you writing to?
    1. The letter may be addressed to the other side, but in fact you are writing to the JUDGE cc to the other side.
    2. What effect does that have? - it means that it is part of adversarial advocacy  - keep it clear and keep it short  - you are writing for the benefit of a judge who has to get on top of the case, needs to see the point you are making very clearly amongst a whole slew of correspondence. Sometimes that means summarising where we are in correspondence at the top of the letter, sometimes it may mean having separate letters on separate topics, sometimes ensuring that there are plenty of headings and numbered paragraphs so that they can easily be picked out by counsel at a hearing.
    3. Even in reply (to a letter that muddles several issues together) – “your letter raises three issues” – identify – deal with in turn (you take control of the correspondence and it helps to make sure you haven’t missed any of his points)
    4. Feel free to pull one of them out of a letter and deal with just that one – especially if it helps to isolate the other side – they cannot hide the absence of a response to it in a long and complex response.
  1. The “who am I writing to” question tells you something about the style and tone that should be adopted.
    1. Personal preference (so not a formal requirement, but I think it reads better in open court) – write in the third person to the firm not the individual – Dear Sirs; Yours faithfully (even if sent as a pdf under cover of a less formal e mail)
    2. Not personally spiteful – remember the rule about use of aggression and vituperative language – “think about your letter being read out in front of a judge and 50- people, including your mum and dad. If you blush, when you think about that then don’t send it”.
    3. Remember too if the clients are at war you may be the only remaining channel of communication through which settlement may be considered.  You have a duty to keep that channel open.  Not to close it by self indulgent slanging matches with your professional opponent.
    4. Some comments from the barrister referred to earlier (so someone a little further back from the correspondence coal face):

                                                              i.      Avoid or make very sparing use of expressions such “we are surprised”/”astonished”/”horrified”/”amazed”/”shocked” (unless that is really the case).

                                                             ii.      Don’t say “we submit that ….” – the letter is not a submission to the court, but a statement of your client’s position. Having said that, you may decide that it is pointless to be unrealistically bullish on a subject. So, in an appropriate case, you might say – “if this matter proceeds, our client will say that …”.  or “it will be our client’s contention as a matter of law that”.   (To which I would add that if the point is a good one it does not need to be pumped up – “clear beyond paradventure”)

 Personally, he said, I prefer the following:

 “your clients claim/defence will fail because, as a matter of law [XXXX]”

“your product X falls within at least claims 1, 5 and 9 of our client’s patent”

“by doing …. you/your client has passed off/infringed our registered trade mark”

 “our client’s product does not have the following [X, Y] it follows that it does not fall within the scope of any of the claims of your client’s patent”.

I agree with all of those points and would add that you can do without a long run up to the point you want to make i.e. preceding any of the statements quoted above with something like “we would respectfully suggest that your client’s position on this issue is untenable because…” – think of the Judge trying to pick up on the point reading the letter for the first time in trial.

 

START AS YOU INTEND TO GO ON

  1. The first letter.
    1. IP protocol – follow but do not be a slave to it
    2. Threats – Be Careful, not Timid – some guidance notes at http://www.ryanlaw.co.uk/Miscellaneous%20Practice%20Notes.htm

                                                              i.      Analyse – is this is a threat to someone who falls within the “protected species”

                                                             ii.      If yes – advise and decide on the risk

                                                           iii.      If no – write the letter

                                                          iv.      Don’t fudge – if you know it’s a threat then it is a threat regardless of language

  1. What is the aim of writing? – Opening letters
    1. If Claimant:

                                                              i.      Satisfy court that notice given (e.g. innocent infringement cases)?

                                                             ii.      Spell out the case to show consistency and clarity to judge or master later?

                                                           iii.      Get a dialogue going?

                                                          iv.      Or something in between.

    1. If Defendant:

                                                              i.      Demonstrate to court that claimant’s folly spelt out to him in clear terms at the outset and given chance to withdraw (one to hold in readiness for an end of trial costs wrangle?)

                                                             ii.      Get out of the litigation? - think seriously as to whether you need to address aggressively every point the opponent has made or whether you can make concessions (even in open correspondence) at an early stage to get rid of a case, before costs get out of hand.

  1. Before writing the first letter -  Get the story right (whether you are acting for Claimant or Defendant)
    1. Cost/benefit balance - Claimant

                                                              i.      turn every stone and the cost of the first letter = cost of a small trial; but

                                                             ii.      fail to get the story right and you will be on the back foot from the first reply letter – your opponent now has the initiative and is now asking questions of you, challenging your every statement, finding inconsistencies; so

                                                           iii.      persuade the client that it is better to spend the money to make sure that

1.      the first letter the judge or master sees is impressive;

2.      the other side has nowhere to turn – and draft the letter as though it were a summary of Particulars of Claim (fact1 – so it follows we are owners; fact 2 – so it follows that the right relied on is valid and subsisting; and so on).

    1. Cost/benefit balance - Defendant

                                                              i.      See judgment in the case of Cantor Gaming v Game Account Global. Defendant ended up paying all the Claimant’s costs, in part because their initial response to the claim.

                                                             ii.      Again, persuade the client to invest the money to enable you to construct a response that is solid, realistic and likely to be consistent with the case that is subsequently pleaded.

  1. Subsequent correspondence – before you write, you have to read (and it’s a good idea to pause between the two stages).
    1. If the letter under reply is an opening claimant letter then what is the client facing – a polite chat to avoid problems, or multi-million pound litigation?  Compare the following: 

“If we do not hear from you within 7 days, our client reserves the right to take such steps as are necessary to protect its legal rights.”

 

“If we do not hear from you within 7 days, we have advised our client to commence legal proceedings without further notice to you.”

 

“If we do not hear from you within 7 days, our client has instructed us to issue proceedings against you.”

 

“If we do not hear from you within 7 days, we will issue and serve a claim form, a draft of which is attached hereto.”

    1. For all correspondence generally:

(i) read the four corners of the document. a 5 page letter from a top firm will have cost at least a thousand pounds to write. Treat it like a chinese pot, and look at it carefully!

 (ii) read everything. Look at (a) the reference at the top of the page - partner or junior assistant? (b) the date -  is the date on page 2 the same as page 1 - if not it is a common mistake showing how long the letter has been in preparation: read the footer, it may also have inconsistent dates.

(iv) style - what does it tell you about the author -  are they in a hurry? is this a case they are using to churn fees? do they like case law? are they on top of the facts?

    1. A quote from someone whose views I sought while preparing this talk. “Wittgenstein said famously at the end of the Tractatus Logico Philosophus (no, me neither!) "whereof we cannot speak, we must be silent" -  i.e. solicitors cannot lie. But they can stay quiet. So listen intently in the letter not to the windy things that they say, but to the things that they miss out, the points they skirt over and fail to address.”  Behind the pretentious tone there is a good point.  And I would add, too, look for the phrase that sticks out from the rest of the letter – different tone or style; precise language suddenly becoming vague and woolly – what problem are they cautiously drafting round?

 

  1. Now ready to write?  As with opening salvo - what is the aim of this letter?
    1. to close off an irrelevant side issue?
    2. to test to destruction the other side’s case?
    3. to prevent the other side taking procedural corner cuts (usually to avoid an issue being tested)

Then reflect the language of the strategy in the letter.

 

  1. Having decided the broad aim, consider the detail.
    1. Try to create a letter which is like a block of marble. No cracks, no fissures which the other side can get their chisel into.
    2. You don't have to reply to every point (see the alternative title to the talk). You are entitled to say “we do not regard this issue to be relevant to the matter on which we are instructed and we do not intend to distract our trial preparations or incur unnecessary correspondence by continuing the correspondence”.  Equally You are entitled to say “we have each aired our views; we evidently do not agree; if you feel you must take the matter further we suggest you raise it with the judge or master”
    3.  Not replying on a point means that the other side are left uncertain as to what to do about it - uncertainty is good (it was reported to me, later, that a client had said that I was like a lobster in defence - he doesn't move if he doesn't have to!!!)
    4. You don’t have to wax lyrical on every point - "thank you for disclosure, we are sure you have pointed out the obligations to give full disclosure to your client and that you therefore do not possess copies of any letters between the parties between X date and Y date. We shall be cross examining Mrs X (who signed the disclosure list) at trial" – enough said, you don’t need to bang on about disclosure being seriously deficient etc.
  2. Law and procedure that should also be kept in mind.
    1. Don't say "we have been advised by counsel that", or "we have advised our client that", unless those statements are true: see CHC Software v Hopkins and Wood [1993] FSR 241.
    2. Don’t make representations of fact that are false (apart from anything else you may invalidate any settlement agreement resulting from it).
    3. Don’t say you will start proceedings if you know that you will not.
    4. Don’t over egg the case – December 2008 report: “Which?, formerly known as the Consumers' Association, has reported Davenport Lyons to the Solicitors Regulation Authority (SRA). Announcing the move, Which? said it had drawn regulators' attention to the detail of Davenport Lyons' letters. The complaint includes claims they "make incorrect assertions about the nature of copyright infringement; ignore the evidence presented in defence; and increase the level of compensation claimed over the period of correspondence".  No premature judgment as to who is right and who is wrong in that scenario; but you would prefer not to be in a position where that sort of news item can be written.
    5. Protection from Harassment Act 1997 - 'A person must not pursue a course of conduct
      (a) which amounts to harassment of another, and
      (b) which he knows or ought to know amounts to harassment of the other.'
  3. Without Prejudice - language
    1. Using the word when its not part of genuine settlement communications – no protection against any admissions or concessions being relied on in court.
    2. Forgetting to use the words when it is - the communication is protected.

                                       But client embarrassment even if it doesn’t result in the judge seeing the concession.

    1. “Without prejudice” (can never refer to it in court or chambers) and “without prejudice save as to costs” (may only refer to it when costs being considered).
    2. A particular danger in telephone conversations.  “can we speak off the record” – check what he means by it.  If he means “without prejudice” then clarify that and get on with the conversation.  If he means that he is going to tell you something that may not be reported to your own client then pause and ask yourself very carefully whether you want to be put into that position.
    3. The potential value of an open offer – deliberately made and carefully calculated (these days reasonableness can be good, even if it involves a degree of concession – but carry the client with you).
  1. Without Prejudice - management
    1. Separate from other correspondence (for bundling)
    2. Without prejudice material to be in a separate letter (not a separate section with a new heading)

Chris Ryan

February 2009