Crocker doesn't come a cropper as application to transfer courts fails

Crocker Enterprises Ltd v Giordano Poultry-Plast SpA is an extempore judgment of Mr Justice Mann (Patents Court, England and Wales) last month involving conditional fee arrangements and the transfer of proceedings between the expensive Patents Court and the cost-capped Patents County Court (PCC).

In short, Giordano -- the defendant in patent and design infringement proceedings brought by Crocker -- applied for the proceedings to be transferred from the Patents Court to the PCC.  Giordano, which had its own patent and design rights, denied infringing and challenged the validity of Crocker's patent on lack of inventive step, among other grounds.

 This action had not got very far before Crocker asked to amend his claims so as to include a claim for revocation of Giordano's patent and, back in March 2013, just before the change in the costs regime for patent litigation in England and Wales which effect from April 2013, Crocker entered into a conditional fee agreement (CFA) with its solicitors. Once the regime change took effect, Crocker gave notice to Giordano of the CFA and applied for a directions hearing. In response, Giordano applied for the proceedings to be transferred to the PCC where, because of cost capping, the uplift under the CFA might not be recoverable if Crocker succeeded. Said Giordano, the financial value of the claim was small, the case was not legally or technologically complex, it was agreed that the trial would last two days and in all the circumstances the case was fit for the PCC. Giordano also submitted that the parties were on an unequal footing since Crocker had entered into a CFA just before the regime change.  Crocker disagreed: the case was not as simple as Giordano said it was -- and if it was transferred to the PCC there would be constraints on the production of evidence that would curtail Crocker's ability to advance its case.

Mann J refused the application to transfer the action to the PCC. In his view:

* The patent issues appeared relatively straightforward and were the kind of issues with which the PCC was well equipped to deal. However, there were also design right claims, and these added an extra layer of complexity. The PCC could be expected to deal with those issues, but they meant that the case could not be considered as straightforward.

* Crocker had begun the action in the Patents Court and wanted to continue there.  This was a significant factor to be weighed in the balance. A party had the opportunity to proceed in the PCC in an appropriate case if it so wished but, if a claimant wished to proceed in the Patents Court and the case merited it, that option should not lightly be taken away.

* The CFA had been properly entered into and Crocker was entitled to expect its case to be dealt with under the old costs regime and in the Patents Court. Transfer to the PCC would result in capping, which would be unfair when Crocker had chosen the benefits of proceeding in the Patents Court under a CFA since the costs cap was unlikely to be lifted.

* The criteria for a transfer order were set out in the Civil Procedure Rules, CPR r.30.3(2) and the main factor in favour of transfer was the low value of the claim. However, that was outweighed by the issues of complexity and the unfairness of ex post facto cost-capping.

This piece is based on a LexisNexis note.