From Ian Wood (Charles Russell Speechleys LLP) comes a hot-off-the-press judgment which, Ian suggests, may be a new weapon to use against patent trolls. Ian explains:
In what the judge, Arnold J, himself characterises as unprecedented, a company accused of infringing a patent (Big Bus) applied to the High Court for the owner of the patent (Ticketogo) to disclose the commercial contracts it had with existing licensees under the patent before court proceedings were brought. It sought this information in order to assess whether it should defend the claim (which would be expensive) or to seek a commercial settlement in advance of legal action. The judge agreed that the owner of the patent (Ticketogo) should disclose the licence agreements.The Big Bus Company operates open-top bus sightseeing tours. Ticketogo has a ticketing system patent which provides a method of issuing tickets over the internet using a barcode in an image file format. Ticketogo does not conduct any business except patent licensing. Who are we to say that Ticketogo might be a patent troll?In October 2012, Ticketogo contacted Big Bus notifying it of the existence of the patent, saying that Big Bus’s ticketing system infringed its patent and offering to license the patent to Big Bus if commercial terms could be agreed. Big Bus denied that its ticketing system infringed the patent.Ticketogo’s lawyers responded by referring to the high costs involved in challenging the validity of a patent and listing other licensees who, they (i.e. Ticketogo’s lawyers) said, “presumably decided after due consideration not to attempt a challenge to the validity of the patent.”All went quiet for a while but, in February 2015, new solicitors instructed by Ticketogo (Taylor Wessing) wrote again saying that Ticketogo believed that Big Bus, “requires a licence of the patent. Many others have decided to take a licence,” and attached a current list of 43 licensees. To many, including the judge, this would appear that Ticketogo was threatening litigation -– and the licences were relevant to its claim. Accordingly, Big Bus sought pre-action disclosure (under suitable confidentiality provisions) of the patent licences previously granted by Ticketogo in order to help it quantify the value of the claim for patent infringement that could be brought against it by Ticketogo. Big Bus said that, because of the potential irrecoverable costs it might incur even if it was successful in any patent infringement proceedings, it was willing to resolve the dispute through a commercial agreement. However, to do so it needed first to establish the value of Ticketogo’s claim.Big Bus applied to the High Court of Justice (Patents Court) asking for Ticketogo to be required to disclose commercial details of the licences it had granted to others using its patent in advance of infringement proceedings that Ticketogo might pursue against Big Bus. The judge decided that this pre-action disclosure should be made.
The case is The Big Bus Company v Ticketogo Ltd [2015] EWHC 1094 (Pat). It's not yet on BAILII but should be. Ian Wood acted together with David Fyfield on behalf of Big Bus; Taylor Wessing acted for Ticketogo.
