"the new procedures in CPR Pt 45.41 – Pt 45.43 and corresponding section 25C of the Costs Practice Direction; CPR Pt 63, Section V Patents County Court, consisting of CPR Pt 63.17 – 63.26; and Section V of the Practice Direction 63 – Intellectual Property Claims paragraphs 27 – 31, did not apply to existing cases. This case is of course one such albeit only by a matter of a couple of weeks."
“this is the first contested application to transfer a case between the High Court and the Patents County Court since the new provisions came in on 1st October 2010. Nevertheless I am sure that guidance can be obtained from the cases decided prior to 1st October 2010, always bearing in mind that the legislative framework when they were decided was not exactly the same as it is now.”
“(i) the financial position of the parties (s289(2) 1988 Act). This includes but is not limited to considering whether a party can only afford to bring or defend the claim in a patents county court (para 9.1(1) Practice Direction 30). This factor is closely related to access to justice. The Patents County Court was set up to assist small and medium sized enterprises in enforcing and litigating intellectual property disputes. Guidance on the nature of these enterprises can be found from the Commission Recommendation 2003/361/EC.(ii) whether the claim is appropriate to be determined by a patents county court. This involves considering:(a) the value of the claim, including the value of an injunction and the amount in dispute. (para 9.1(2)(a) Practice Direction 30 and CPR 30.3(a))(b) the complexity of the issues (para 9.1(2)(b) Practice Direction 30 and CPR 30.3(d))(c) the estimated length of the trial. (para 9.1(2)(c) Practice Direction 30). Related to this is CPR 30.3(b) - whether it would be more convenient or fair for hearings (including the trial) to be held in some other court.(iii) the importance of the outcome of the claim to the public in general (CPR 30.3(e)) albeit that a case raising an important question of fact or law need not necessarily be transferred to the Patents Court (s289(2) 1988 Act).”
“for the purposes of considering transfers, the assessment of the value of a claim and the value of an injunction is intended to reflect commercial realities. It is not intended to involve fine questions of causation or remoteness of damage. Accordingly as it stands before me this claim is one with a value measured as a substantial part of $24 Million per year. I note also that the patent has just over two years left before expiry.”
“Although this is a factor in High Court / County Court transfers generally, in the Patents County Court the effect of the 1988 Act is that a case raising an important question of fact or law need not necessarily be transferred. However that does not make importance irrelevant altogether.”
“The conundrum on this application is that I have no doubt the case is entirely suitable to be tried in the Patents County Court from the point of view of the issues arising and the case management machinery necessary to deal with them. The balance I have to draw would have been more difficult if the delay point was still live but that was sorted out during the hearing and I can transfer this case safe in the knowledge that I am not building in major delays by doing so.
"The value of the case on the evidence as it stands points in favour of the High Court and the financial position of the parties does so as well. It might be asked why a case which could readily be decided in this court using the procedures now available should not be heard here. Why does value matter? The answer in my judgment is to emphasise what the Patents County Court was set up to achieve. The decisive factor is that the court was set up to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. With the new procedures in place I intend to devote my energies to making them work in order to achieve that objective. However this is not the case in which to do it.”