Cook (UK) Limited v Boston Scientific Limited & Ors.

Cases initially suitable for the Shorter Trials Scheme should be transferred out where the addition of patents, prior art, experiments, factual evidence or other complexity makes the scheme unsuitable. The court must manage the resulting proceedings in accordance with the overriding objective and at proportionate cost.

Case management may include tailored disclosure and fact-evidence directions where the material is potentially probative, the issue is genuinely relevant, and the exercise can be confined so that it remains proportionate. Patent case management should provide sufficient particulars to focus expert evidence, but should not impose premature or onerous detail where expert analysis may later require amendments.

This was a case management conference in patent proceedings concerning two European patents relating to endoscopic clips. The claim initially concerned one patent and had been issued in the Shorter Trials Scheme. Following an earlier direction by Mellor J, a second patent was added with a counterclaim for infringement, together with further prior art and potential factual and experimental issues.

The court considered whether the proceedings should remain in the Shorter Trials Scheme, how costs should be managed following transfer, and the parties’ competing proposals concerning disclosure, fact evidence, product samples and particulars of validity. The central questions were whether the case remained suitable for the scheme and what directions were necessary to deal with the issues justly and proportionately.

1. Transfer from the Shorter Trials Scheme. The case was no longer suitable for the scheme. It involved two patents, multiple pieces of prior art, possible experiments, potential fact evidence and an increased trial estimate. Having regard to the overriding objective and the administration of the court list, the case was transferred out of the Shorter Trials Scheme.
2. Costs. The proceedings were to be costs-budgeted going forwards. Costs incurred up to the CMC, while the case remained in the Shorter Trials Scheme, were left to be summarily assessed at the appropriate time.
3. Disclosure and fact evidence. The court waived the usual disclosure procedural requirements applicable to a case commencing in the new track. A product and process description had to be complete so far as the relevant party could verify it; where it could not verify all relevant aspects, a disclosure list had to be served for the remainder. Limited disclosure from Boston concerning alleged user feedback was permitted because the material could be relevant and probative, but the exercise had to be confined and proportionate. Related fact evidence from persons familiar with the allegedly infringing products was also permitted, subject to limits ensuring that preparation and trial were not disrupted and subject to review at the PTR.
4. Other directions. Samples of Boston’s Resolution products were refused because the immediate relevance was insufficient and the consequences of disclosure could be significant. The requested additional particulars of the adaptations or modifications said to be obvious were also refused as too onerous and premature. The agreed particulars were sufficient at that stage to guide expert consideration.

The judgment records earlier procedural decisions in the same proceedings. An ex parte hearing before Meade J concerned interim anti-suit injunctive relief relating to parallel Dutch proceedings; that issue was settled. Mellor J subsequently considered trial listing and indicated that the case would probably leave the Shorter Trials Scheme if the second patent were added. This judgment determined the resulting case-management issues.