Brundle v Perry

In the Intellectual Property Enterprise Court, the transitional costs regime applies by reference to the claim form commencing the relevant claim. An additional claim issued after the introduction of new scale costs is governed by the new table, even where the original action began earlier.

The court retains a discretion to depart from scale costs, but the overall costs cap should be lifted only in a truly exceptional case or where a specified exception applies. Unreasonable conduct may justify additional costs within the cap.

A dissemination order may be made in favour of a successful non-infringer where there is a real need to dispel commercial uncertainty in the marketplace. Such orders are not routine.

The judgment concerned costs and dissemination following an earlier judgment in patent infringement and groundless threats proceedings. The claimant had succeeded against the defendant, and the first third party had succeeded against the defendant’s additional infringement claim. The court had to determine which transitional scale-costs table applied, whether the defendant’s conduct justified departure from the IPEC costs regime, and whether the judgment should be publicised to address continuing commercial uncertainty.

1. Costs tables. The relevant transitional provisions were in paragraph 25 of CPR Update 66. The court rejected the interpretation that “proceedings” necessarily encompassed every claim, counterclaim and additional claim in one piece of litigation. The parties’ legitimate expectations were central. The original claim, issued before 1 October 2013, was therefore subject to old Table A, while the additional claim issued afterwards was subject to new Table A. The approach was consistent with Liversidge v Owen Mumford Ltd [2012] EWPCC 40; [2013] FSR 38.
2. Departure from the IPEC regime. Rules 45.30–45.32 made the IPEC costs caps and scale costs mandatory subject to limited exceptions. Following Henderson v All Around The World Recordings Ltd [2013] EWPCC 19; [2013] FSR 42, the court accepted that the general costs discretion remained available, but held that lifting the overall cap required a truly exceptional case. Departure from scale costs for particular stages could occur without lifting the cap. The transitional approach was also consistent with Phonographic Performance Limited v Hamilton Entertainment Limited No. 2 [2013] EWHC 3801 (IPEC).
3. Conduct. The defendant’s intemperate behaviour and circulation of a purported judicial letter were relevant under CPR 44.2. The conduct was strikingly unusual but not truly exceptional. It justified an additional £2,000 payable to each successful party, while keeping the combined award within the £50,000 cap. The awards were £36,525 to the claimant and £13,120 to the first third party.
4. Dissemination. The court accepted that it had jurisdiction to order dissemination in favour of a successful non-infringer. Applying Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339; [2013] FSR 9, such an order should normally be made only where there is a real need to dispel commercial uncertainty. That requirement was satisfied, and publication of the specified notice was ordered at the defendant’s expense.
5. No damages were awarded for the unjustified threats because there was no evidence of loss and the court declined to speculate. The order was stayed pending the defendant’s application for permission to appeal and, if permission were granted, pending the appeal.

The judgment gave reasons following an earlier merits judgment in the same proceedings dated 6 March 2014. The defendant intended to seek permission to appeal; permission had been refused by the judge on the basis that an appeal had no real prospect of success. The consequential order was stayed pending any application for permission and, if granted, the appeal.