BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
(sitting as a Judge of the Intellectual Property Enterprise Court)
| Kwikbolt Limited
|Airbus Operations Limited
Mr H. Ward (instructed by Allen & Overy) appeared on behalf of the Defendant.
Crown Copyright ©
" Next, practice direction 30, para.9 :
'When deciding whether to order a transfer of proceedings to or from the Intellectual Property Enterprise Court the court will consider whether –
(1) a party can only afford to bring or defend the claim in the Intellectual Property Enterprise Court; and
(2) the claim is appropriate to be determined by the Intellectual Property Enterprise Court having regard in particular to –
(a) the value of the claim (including the value of an injunction);
(b) the complexity of the issues; and
(c) the estimated length of the trial.
9.2 Where the court orders proceedings to be transferred to or from the Intellectual Property Enterprise Court it may –
(1) specify terms for such a transfer; and
(2) award reduced or no costs where it allows the claimant to withdraw the claim'.
 His Honour Judge Birss considered the relevant factors for transfer in ALK-Abello Limited v Meridian Medical Technologies  EWPCC 14 , there in the context of the predecessor of the IPEC, that is to say the Patents County Court. He said this:
'30. Pulling the various factors together, the points to consider are:-
i) the financial position of the parties (s.289(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 (s.289(2) 1988 Act).
31. A factor which does not play a role is the one in CPR Pt 30.3(c) (availability of a judge specialising in the type of claim in question) since specialist judges are available in both courts.
32. Once those factors are considered I must bear in mind what sort of cases the Patents County Court was established to handle and that its role is to provide cheaper, speedier and more informal procedures 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. The decision turns on what the interests of justice require, taking into account both parties interests and interests of other litigants'.
 Judge Birss expanded on what he had said in para.30 of ALK-Abello , with regard to the financial position of the parties, in Comic Enterprises Limited v Twentieth Century Fox Film Corporation  EWPCC 13 . He said this:
'21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland's submissions that her client should stay in the PCC. Mr Malynicz submitted it was in effect just another factor to be weighed up like all the others. (I should note he does not accept the evidence on the point but I will deal with that below.) On the issue of principle, in my judgment Mr Malynicz is wrong. The Patents County Court has a specific role to improve access to justice for smaller and medium sized enterprises in the area of intellectual property. I described access to justice for small and medium sized enterprises as a "decisive factor" in Alk-Abello (para.55) and I stand by that observation.
22. However cases in which an SME seeks to sue a large defendant were always obviously going to present particular problems for a specialist court for small and medium sized enterprises in intellectual property matters. The fact that an IP right is held by a small claimant does not mean that the defendant will conveniently be a small enterprise as well. In the past small claimants were concerned that they could not afford to fight in the High Court and, more importantly, could not afford to lose. The costs order would bankrupt the company. The PCC's cost capping system deals with this problem and caps the claimant's downside costs risk at £50,000. That is one of the ways in which the PCC facilitates access to justice.
23. Many smaller business people perceive that their intellectual property has been stolen by large corporations. Hitherto there was little they felt they could do about it. The PCC is by no means intended to be a panacea but it is intended to be a forum to facilitate access to justice for smaller IP rights holders and for that matter smaller organisations accused of infringing IP rights as well.
24. So what is the court to do when faced with a small claimant suing a large defendant? One thing is plain. As I have said already each case depends on its facts. A small claimant does not have an unfettered right to stay in the PCC regardless of the nature of the case any more than a large defendant has an unfettered right to demand that it be sued in the High Court'.
 He also went on to say this:
"48. I remind myself that the ultimate objective of an order for transfer is to do justice between the parties. The argument that the case should remain in the Patents County Court is a powerful one. Access to justice for SMEs is capable of being a decisive factor having regard to the purposes for which the Patents County Court was set up. The claimant in this case would be severely affected by an adverse costs order in the High Court. However set against that is the nature of this case itself and its value".
 On the facts in Comic Enterprises, Judge Birss was concerned with the behaviour of the claimant, the party opposing transfer out of the Patents County Court:
"55. I believe the decisive factor in this case is the claimant's approach to the litigation despite its being an SME. The claimant is not approaching the case as if it is a Patents County Court claim. The claimant's approach has been to run this case as a full scale High Court style action with a claim for an injunction with catastrophic consequences for the defendant. Since that is the claim the claimant wishes to advance, the correct forum in which to do it is the High Court".
 In Environmental Recycling Technologies  EWHC 2097 Pat , Warren J referred to para.48 of Comic Enterprises and said this:
"56. Ms. Lawrence submits that the financial position of the parties is determinative. I think she gets that proposition in the sense that when an SME wants the Patents County Court and is poor, the factor is decisive and that was indeed what Judge Birss said. If you have a very poor defendant, SME or individual who wants a case in the Patents County Court, that is a decisive factor. For my part I would not say it was decisive but it is obviously an enormously important factor and may overwhelm others.
57. But even Judge Birss did not mean to be as prescriptive as that. For him, as is obviously correct, the overriding matter is the justice of the case and access to justice. It does not follow, and it is illogical, that just because a party can afford High Court litigation means that the case must be in the High Court (other factors pointing in that direction) especially if the party is an SME or individual".
 Mr. Riordan reminded me of the cautionary note provided by Judge Birss in Destra Software Limited v Comada (UK) LLP  EWPCC 39 . This was a case concerning a dispute about computer software. The judge recognised that it could be factually complicated, but he said this at paragraph 34:
"34. However, in fact at the moment we do not know whether this case will be anything like as complicated as it might seem. That will depend on the process of disclosure and rounds of pleadings which are inevitable in a software copyright case. Although it sounds complicated, in fact it is inevitable that copyright cases of this kind have to be looked at this way. They do require more management than other intellectual property cases."
MR WARD: My Lord, firstly, I imagine this will be short, but I will seek permission to appeal that judgment on the basis that my Lord's judgment, with respect, completely failed to address the central question on this application, which was the actual justice which the (inaudible) being deprived of, particularly in light of my later offer, which my Lord did not address at all.
JUDGE HACON: Okay, well, that is a matter for you to take up with the Court of Appeal, Mr Ward.
MR WARD: Yes.
JUDGE HACON: (Inaudible) a matter of case management.