Nicoventures Trading Ltd v Philip Morris Products, SA (A Company Formed Under the Laws of Switzerland) & Anor

An application to expedite a patent trial requires a good reason established by evidence. A mere wish for commercial certainty is insufficient. Relevant considerations include the administration of justice, prejudice, special factors and the commercial context. Parallel proceedings concerning the same European patent are a relevant factor, particularly where an earlier UK validity decision may assist a foreign infringement court, but they cannot alone justify expedition. Genuine commercial urgency, supported by evidence of time-sensitive investment or business decisions, may justify expedition where the listing can be accommodated without serious prejudice or disruption.

Philip Morris sought expedition of UK validity and infringement proceedings concerning the Robinson patent portfolio, so that trial would take place before related German infringement proceedings. BAT opposed expedition and sought equivalent expedition of related Greim patent litigation concerning its glo product. The court considered the principles in James Petter v EMC Europe Limited [2015] EWCA Civ 480, including the factors derived from Gore v Geox, and assessed whether either case involved a good reason for expedition.

1. Robinson proceedings expedited. The court ordered the trial to take place in January or February 2021. The application was assessed using the four-factor framework derived from Gore v Geox and restated in James Petter v EMC Europe Limited [2015] EWCA Civ 480.
2. A party seeking expedition must establish a good reason by evidence. Commercial certainty is not, by itself, sufficient. The evidence must explain the commercial context and why the requested timetable matters.
3. Parallel proceedings in another European Patent Convention state are relevant. A UK validity judgment may assist a foreign infringement court dealing with the same patent. That factor is not strong enough to justify expedition on its own and does not involve criticism of the foreign legal system. The court agreed with the approach in HTC v Europe Ltd v Apple Inc [2011] EWHC 2396 (Pat), ZTE (UK) Limited v Telefonaktiebolaget LM Ericsson [2011] EWHC 2709 (Pat), Garmin (Europe) Limited v Koninklijke Philips N.V. [2017] EWHC 8165 (Pat) and Takeda UK Ltd v F Hoffmann-La Roche AG [2018] EWHC 2155.
4. The German trial date did not independently justify expedition. However, Philip Morris established real commercial urgency: the UK IQOS market was developing, important investment decisions were due in early 2021, and the German infringement proceedings materially increased the business risk. The trial could be accommodated after Christmas without serious prejudice to BAT or excessive disruption to court administration.
5. Greim proceedings not expedited. BAT showed that an earlier judgment would assist international decision-making, but did not establish why the end of 2020 was particularly important. The ordinary Patents Court timetable therefore remained appropriate.
6. The court summarily assessed costs at £95,000, including a reduction of approximately £30,000 from the solicitors’ claimed figure.