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Pre-action disclosure in patent cases

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15/06/2015

In the High Court case of Big Bus v Ticketogo [1] Big Bus, which operates open top bus sightseeing tours, successfully applied for pre-action disclosure against Ticketogo under the Civil Procedure Rules, namely CPR 31.16, to obtain patent licences previously granted by Ticketogo.

Ticketogo is the proprietor of a UK patent for a ticketing system, which it claimed Big Bus was infringing. In October 2012, Ticketogo’s solicitors wrote to Big Bus, alerting them to the existence of the patent and stating that it was prepared to enter into a licence with Big Bus as it had done with other companies. At the hearing, Ticketogo’s counsel stated that it had in fact granted over 60 licences of the patent and the evidence showed that Ticketogo conducts no business other than patent licensing.

Big Bus denied infringement or that it needed a licence; in response, Ticketogo name-dropped existing licensees presumably with the intention of encouraging Big Bus towards the licence. Ticketogo continued to insist upon Big Bus’ need for a licence and referenced other licences it had recently concluded. To help it evaluate the claim and perhaps find a way towards resolution of the dispute, Big Bus responded with an application for pre-action disclosure (i.e. disclosure before the commencement of legal proceedings) for copies of the licences as well as other documents. The judge granted the application.

In reaching his decision, the judge considered whether the applicant and respondent were likely to be the parties to any subsequent proceedings, whether the respondent’s duty of standard disclosure would extend to the documents or classes of documents subject to the pre-action application if proceedings had started, and whether disclosure would dispose fairly of the anticipated proceedings. The judge found all these threshold conditions to be met. The judge said that it was not necessary to obtain the consent of all the licensees for disclosure prior to granting the application – a simple letter notifying them of their right to object to disclosure of their licences would suffice.

This is a useful decision which could be deployed by potential litigants faced with unmerited claims from patent trolls to force the trolls to disclose licence terms. The decision helps to level the playing field between parties where one holds all the relevant information and the other none at all, or very little. The judge emphasised the importance of “transparency” in helping to achieve resolution of disputes without the need to institute proceedings. The courts will not be sympathetic where the application is in reality only a “fishing” expedition and the applicant will need to be specific about the category of documents it wishes to see.

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[1] [2015] EWHC 1094 (Pat)

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