The Big Bus Company Ltd v Ticketogo Ltd

Pre-action disclosure may be ordered to assist settlement and save costs where the jurisdictional conditions in CPR rule 31.16 are satisfied. In patent infringement litigation, standard disclosure can in principle extend to documents relevant to quantum, even where a split trial is likely, although the court may stage disclosure. Comparable patent licences may be relevant to assessing damages where the patentee exploits the patent by licensing. The court should identify a suitably comparable class rather than assume that every licence is disclosable. Commercial confidentiality and a patentee’s preference to negotiate without price transparency do not, by themselves, defeat an otherwise justified order.

The applicant operated open-top sightseeing bus tours. The respondent owned a patent for an internet ticketing system and had repeatedly asserted that the applicant required a licence, while referring to licences granted to other businesses. The applicant disputed infringement and patent validity but sought disclosure of the respondent’s patent licences to assess the value of any potential damages claim and promote settlement. The application was made under section 33(2) of the Senior Courts Act 1981 and CPR rule 31.16. The central issues were whether the jurisdictional conditions were met, whether licence agreements would fall within standard disclosure, and whether disclosure was desirable and proportionate.

1. The application was granted in principle. The jurisdictional conditions in CPR rule 31.16(3)(a) and (b) were satisfied because both parties were likely to be parties to anticipated patent proceedings. It was unnecessary to show that those proceedings were themselves likely, although on the evidence they were likely: Black v Sumitomo Corp [2001] EWCA Civ 1819.

2. The test in CPR rule 31.16(3)(c) was also satisfied, but only for a sufficiently comparable class of licences. Standard disclosure under CPR rule 31.6 extends in principle to documents affecting the parties’ cases on quantum. The possibility of a split trial, or of an election for an account of profits, did not remove that jurisdiction. The court could instead stage disclosure under CPR rule 31.5(8)(f).

3. Where a patent proprietor derives remuneration through licensing, comparable licences may be relevant to the reasonable royalty or damages assessment. Comparability is not confined to licences charging a fee per ticket. Licences based on lump-sum royalties, turnover or profits may also be relevant.

4. The desirability requirement in CPR rule 31.16(3)(d) was met. Disclosure of information held only by the respondent would enable the applicant to assess the value of the claim, consider whether litigation was worthwhile, promote settlement and assist proportionate case management. The court’s discretion was exercised in favour of disclosure.

5. The order was limited to licences granted to licensees in the transport sector. The evidence did not establish that entertainment-sector licences were sufficiently comparable. Confidentiality concerns could be addressed through a confidentiality club. The court encouraged the parties to seek agreement on reciprocal information concerning ticket sales and profits.