Brundle v Perry
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Civil Procedure
- Intellectual Property Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
On 6 March 2014, judgment was handed down in favor of Brundle and Betafence against Mr Perry regarding patent disputes and groundless threats. Costs were awarded based on the scale costs in Practice Direction 45, with additional costs imposed due to Mr Perry's unreasonable behavior. A notice was ordered to be published to address commercial uncertainty, with the case establishing key principles on the applicability of scale costs, the impact of unreasonable behavior on costs, and the authority to mandate dissemination of judgements.
Judgment
Judge Hacon :
On 6 March 2014 I handed down judgment in this action. At a subsequent hearing on 27 March 2014 I made an order dealing with, among other things, costs and dissemination of the judgment. These are my reasons in relation to those two matters.
Costs
Transitional provisions for scale costs in the IPEC
The Claimant (“Brundle”) has succeeded both in relation to Brundle’s claim against the Defendant (“Mr Perry”) for groundless threats of patent infringement proceedings and in relation to Mr Perry’s counterclaim for patent infringement. The First Third Party (“Betafence”) has succeeded in relation to the additional claim brought against it for infringement of Mr Perry’s patent. Both Brundle and Betafence are entitled to an award of costs.
Brundle’s claim form is dated 12 March 2013. Brundle accepts that the costs it seeks should comply with the scale costs set out in ‘old’ Table A in Practice Direction 45, i.e. that table as it applied on 30 September 2013 (see Phonographic Performance Limited v Hamilton Entertainment Limited No. 2 [2013] EWHC 3801 (IPEC) ). This is subject to a submission that scale costs should not apply at all, considered below.
On 20 December 2013 Mr Perry issued a claim form for additional claims under CPR Part 20 . One of the claims brought by Mr Perry was in fact a counterclaim against Brundle for infringement of his patent. This was procedurally inappropriate but nothing turns on it. In addition Mr Perry’s claim form alleged that the two Third Parties, Betafence and Britannia Fasteners Limited (“Britannia”) had infringed Mr Perry’s patent. Britannia took no part in the proceedings. Betafence did and has won. Betafence now submits that it should be awarded costs based on ‘new’ Table A, i.e. that table as it has applied since 1 October 2013.
As Birss J stated in PPL v Hamilton No. 2 (cited above) the relevant transitional provisions are found in paragraph 25 of CPR Update 66:
"Transitional and saving provisions
(a) those amendments shall only apply to proceedings started in the Intellectual Property Enterprise Court on or after 1st October 2013, and
(b) Table A and Table B in Practice Direction 45, as they applied on 30th September 2013, shall continue to have effect in respect of any proceedings started in a patents county court which are continued in the Intellectual Property Enterprise Court."
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