BOS GmbH & Company KG v Cobra UK Automotive Products Division Ltd ((in Administration)) (Costs)
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss |
| Judgment Date | 25 September 2012 |
| Neutral Citation | [2012] EWPCC 44 |
| Docket Number | Case No: 0CL 70145 |
| Court | Patents County Court |
| Date | 25 September 2012 |
[2012] EWPCC 44
His Honour Judge Birss QC
Case No: 0CL 70145
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
Peter Colley (instructed by Wither & Rogers LLP) for the Claimant
Geoffrey Pritchard (instructed by Wragge & Co. LLP) for the Defendant
Hearing dates: 20th July 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
His Honour Judge Birss QC
His Honour Judge Birss QC:
In my main judgment in this action ( [2012] EWPCC 38) I decided that the claimant's patent was invalid and was not infringed by the defendant's security net product. Today I heard the parties in relation to various points arising from the judgment. This judgment deals with two of those consequential points. They are an order for dissemination and costs.
Mr Colley appears for the claimant instructed by Withers & Rogers. Mr Pritchard appears for the defendant instructed by Wragge & Co.. Since trial the defendant company has gone into administration. The administrators are seeking to sell the business as a going concern. Taylor Wessing are the solicitors for the administrators although Wragge & Co. were instructed by the administrators for the purposes of this costs hearing.
I will not rehearse the background. It is set out in my main judgment.
Order for dissemination
The defendant sought an order for dissemination of the judgment. The order sought requires the claimant to place a notice on its website referring to the main judgment for 6 months and to place an advertisement in a prominent trade journal (The Automotive Engineer) for two editions. The claimant submitted no such order for dissemination should be made. If (which the claimant denied) the order was to be made, the claimant submitted that 6 months was too long and only a single issue of the magazine should be covered. I rejected those submissions at the hearing. In my judgment if the order is to be made, the period and number of editions sought by the defendant were fair. There were also detailed points on the wording of the notice but they were resolved at the hearing. It was also agreed that, if made, the order will be stayed pending any appeal or application for permission to appeal. I decided to make the order for dissemination, with the reasons to be given in this judgment.
Mr Colley submitted I should not order dissemination for the following reasons. He referred to my judgment in Samsung v Apple [2012] EWHC 2049 (Pat) in the High Court. He pointed out (see paragraphs 32–41) that Art 15 of the IP Enforcement Directive (2004/48) only refers to dissemination in the case in which a rights holder has established infringement. The Directive does not describe an order for dissemination when the rights holder has lost the case. He submitted that this asymmetry was deliberate because an accused infringer can always take action for a declaration of non-infringement and has the remedy of a claim for unjustified threats at least in some cases. He emphasised that the defendant in this case has the freedom to publish the decision itself. Mr Colley also submitted that unlike Samsung v Apple, this case is not one in which there is significant interest in the public domain. Thus he said there should be no order for dissemination of the judgment by the claimant.
Mr Pritchard submitted there should be an order that the claimant disseminate the judgment. He pointed out that in this case both sides had sought orders for dissemination in their respective prayers for relief. In particular the claimant had itself sought an order for dissemination of the judgment in its Particulars of Claim (assuming of course it had won the case). Mr Pritchard accepted Mr Colley's point that the Directive does not refer to an order for dissemination when the rights holder has lost the case but submitted that Samsung v Apple shows that the court has jurisdiction to make such an order, the question being whether it is the right thing to do in a given case. Mr Pritchard submitted it was the right thing to do here having regard to the circumstances generally. His client had been sued in the UK and Germany. The German court had found the defendant's product to infringe the patent in a bifurcated procedure. The finding of non-infringement here was important in the particular market in which these companies operate. The perception of the defendant as a going concern was of particular importance given that it is now in administration. Mr Pritchard also submitted that the argument about the availability of declarations of non-infringement and threats proceedings did not justify the asymmetry between making an order for dissemination if the rights holder prevailed but not making one where the rights holder had failed. The same goes for the freedom of a party to publish a decision.
Mr Colley replied that the remedy of dissemination in this case was disproportionate given the nature of the market and emphasised that the litigation was certainly not the sole explanation for the defendant's administration. I should say I accept that latter submission of Mr Colley's.
It seemed to me that much of the thrust of Mr Colley's submission would have applied equally to an order for dissemination of the judgment which his client had sought itself in the Particulars of Claim (assuming it won). Mr Colley submitted that in this case the factors mean that I would have refused that order had he won the case.
I prefer Mr Pritchard's submissions. I distinguish between two factors — first the factors specific to the market and circumstances in this case and second the general points raised by Mr Colley such as the availability of court declarations, unjustified threats and freedom to publish, which are submitted to explain the asymmetry in the Directive.
I ask myself whether the particular market and circumstances of this case would make an order for dissemination fair or appropriate. I think they would and do. That would apply as much to the claimant (had it won) as to the defendant (who did win). In my judgment, if the claimant had won this case, Mr Colley would have asked for essentially the same order now sought with the corresponding changes to reflect the outcome. It would have been hard to resist by the defendant. In this case the specific factors in the market and circumstances favour an order for dissemination.
I do not accept that the availability of declaratory relief and the fact that a party can publicise a judgment itself, can provide a justification for the asymmetry in the IP Enforcement Directive. It seems to me that if orders for dissemination are to be made, there is no justification for applying a different standard depending on whether they arise because the rights holder had lost rather than because the rights holder had won. Remedies like declarations are available to either side and both have the ability to publicise a judgment. Necessarily all factors have to be considered in the exercise of the court's discretion either way. That will include considering whether there is any need for such an order given the other remedies available from the court and the fact that the winner can publicise its victory anyway. These will be considered in every case.
I have noticed that many Particulars of Claim in intellectual property cases now routinely include a claim for an order for dissemination of the judgment. A claimant who includes such a claim can hardly complain if the court decides to make the converse order in favour of the defendant. Perhaps a claimant who does not wish to be made subject to such an order should think twice about seeking one itself in the first place.
In this case, it would be fair and proportionate to make the order sought by the defendant and I will do so.
Costs
The parties agreed that the general approach to dealing with the scale costs after trial in the PCC is that set out in Westwood v Knight [2011] EWPCC 11.
The parties also agreed that the Court of Appeal's judgment in MMI Research v Cellxion [2012] EWCA Civ 139 concerning the costs in patent actions was applicable. In the judgment of the court, given by Sir Robin Jacob, the Court referred to and quoted the relevant part of SmithKline Beecham v Apotex [2004] EWCA Civ 1703, referred to the judgment of Pumfrey J in Monsanto v Cargill [2007] EWHC 3133 and the judgment of Floyd J in Qualcomm v Nokia [2008] EWHC 277. The upshot of those judgments is having identified who won (no dispute about that here) the issue by issue approach involves two further stages. Are there issues on which the winner should be deprived of its costs and second are there issues which are suitably exceptional that the winner should actually pay the loser's costs of those issues.
Before me there is no real dispute as to how the MMI principles would work if this were a High Court case. The problem before me is how to marry the issue based approach with the PCC costs scale. Before dealing with the problem, I will deal with the issue based approach as if this were a High Court case.
The parties respective costs spent on these proceedings are broadly comparable. Each spent just under £200,000 on the litigation. Mr Pritchard accepts that, if this were the High Court, a discount of 25% off his client's costs would be applied. That arises from two items of prior art on which he lost (Butz and Ament) and two non-infringement arguments he advanced but lost on (bar-like and tubular insert/rohrformigen). Mr Colley submits that the discount should be much larger but in fact there is not as much between the parties as it...
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