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	England and Wales Patents County Court
You are here: BAILII >> Databases >> England and Wales Patents County Court >> Alk-Abello Ltd v Meridian Medical Technologies Dey Pharma Lp [2010] EWPCC 14 (09 November 2010) URL: http://www.bailii.org/ew/cases/EWPCC/2010/14.html Cite as: [2011] FSR 13, [2010] EWPCC 14, [2010] EWPCC 014

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IN THE PATENTS COUNTY COURT

		St. Dunstan's House 133-137 Fetter Lane London EC4A 1HD
		09/11/2010

His Honour Judge Birss QC :

1. This action concerns European Patent (UK) No. 0 620 748 entitled "Automatic Injectors". The major issue I have to decide is whether to transfer this case to the High Court, Patents Court. The other issue which arises relates to the position and status of the first defendant.

Background

2. The patent was granted on 28^th July 2010. The application for the patent was filed on 5^th January 1993, some 17 years earlier. Quite why it took 17 years to be granted is not explained in the evidence and I will not speculate. Priority is claimed from a UK filing on 7^th January 1992 and a US filing on 26^th August 1992. The proprietor of the patent when it was granted was the first defendant (Meridian). After these proceedings began, on 7^th October 2010 the patent was assigned to the second defendant (Dey).
3. The patent relates to automatic injectors. The specification consists of just over 8 pages of description, one independent claim, 27 dependent claims and figures 1 to 28C. The subject matter is wholly mechanical in nature.
4. Figures 1 to 4 show an automatic injector which works in the following way. The injector is loaded with a drug and set so that the needle is kept inside the barrel of the device before the device needs to be used. To use the injector, the barrel is placed against the skin of a patient (say their leg), a safety pin is removed and then the end cap is pressed down. With the safety pin removed, the short movement of the end cap releases a collet which allows a spring to begin to uncoil. This pushes a first piston against the drug but because the drug is essentially incompressible, that in turn pushes another second piston on which the needle is mounted. The needle advances and penetrates a seal, emerging into the open. The needle then advances into the skin until the second piston rests against the inside end of the injector. The spring still has some way to uncoil and this force now acts to inject the drug through the needle, into the patient. After the injection operation is complete there is a cover which can move into place to cover the needle. This will reduce the risk of the dirty needle pricking someone by accident.
5. It is useful to consider figures 1 - 4 in order to understand the context in which this case arises but they do not describe the invention. The patent states that only the embodiments of figs 17-22 and 26-28 are within the scope of the invention (col 4 line 5 – 6 and see also col 15 line 6-10). Claim 1 of the patent is written in the familiar characterising form used in the European Patent Office. The pre-characterising portion (which is generally taken as acknowledged prior art) describes an automatic injector with a needle cover. The characterising portion of claim 1 requires the device to have a particular kind of cover member and also requires:

"further means to prevent the cover member being retracted to the injection position to expose the needle in the unsheathed position after the injection operation."

6. As I understand it this feature relates to what the patent describes as an "automatic locking mechanism" (col 8 line 14) for the cover. One automatic locking mechanism is shown in the embodiment in figs 17-19 involving a pin running in a guide track to lock the cover and another guide track system is shown in figs 26-28. Figs 20-22 shows a locking mechanism for the cover which does not involve a pin in a guide track but tips the cover off centre so that it cannot readily be pushed back along the barrel of the injector. These are the figures the patent refers to as being the ones within the scope of the invention.
7. Thus in summary the invention is an automatic injector device with a locking needle cover.

The case

8. The claimant ALK is a "research driven global pharmaceutical company focussing on allergy treatment, prevention and diagnosis" (paragraph 5 of the witness statement of Mr Daniel Brook of Hogan Lovells for the claimant (ALK)). ALK currently is the distributor of a product called EpiPen in the United Kingdom pursuant to an agreement with the second defendant (Dey). The EpiPen is an autoinjector for injecting adrenaline (also known as epinephrine) (Mr Brook's witness statement paragraph 5). I can take judicial notice of the fact that adrenaline injectors like EpiPen are used to treat acute allergic reactions and try to prevent anaphylactic shock. For example some beekeepers keep an EpiPen in order to deal with extreme reactions to bee stings. The evidence before me is that annual UK sales of the EpiPen are worth in the region of some $24 Million.
9. Mr Brook explains that the agreement between ALK and Dey comes to an end at the end of this year and that ALK intends to market its own adrenaline product called JEXT in the UK next year. ALK expects to obtain a marketing authorisation from the regulatory authority shortly. Dr Turner QC for ALK explained that his client expected the authorisation to be given in early 2011 or possibly the middle of the year.
10. ALK's case is that the JEXT device would not infringe and that the patent is invalid. ALK has filed an opposition at the EPO. However the nine month opposition period under the EPC does not expire until March 2011 and according to EPO practice, the Opposition Division will not start to look substantively at the case until that period ends in order that they can deal with all oppositions to a patent in one go. ALK wish to deal with the patent in the UK in a shorter timeframe to remove the commercial uncertainty here. There is no doubt that such an objective is readily achievable in this court. There is nothing in the nature of this case which means it could not be ready for trial in April – June 2011.
11. ALK issued the claim form on 17^th September 2010. The Particulars of Claim pleads that the patent is invalid based on a single novelty-only reference (WO 92/19296 Kramer) under s2(3) of the Patents Act 1977 and two obviousness citations (US 4,820,275 Haber and US 4.850,994 Zerbst). A point on added matter is also taken. The Particulars of Claim also includes a claim for a declaration of non-infringement under s71(1) of the Patents Act. The declaration caused a familiar flurry at the outset of the proceedings dealing with the problem of confidential product descriptions under s71. However in the end nothing turns on that before me.
12. The Particulars of Claim names the defendant as Meridian because at the date of issue Meridian were the proprietor. ALK had no reason to think otherwise. On 7^th October Meridian assigned the patent to Dey and on 15^th October Meridian brought an application to substitute the new proprietor (Dey) for themselves. This is the second issue I need to resolve.
13. On 19^th October ALK applied to join Dey as second defendant, to fix a trial date and for directions generally. At the time the directions were being considered, it was not clear whether the new procedural rules in the Patents County Court would apply to a pre-existing case or not. That was a matter which had been the subject of correspondence in the case (e.g. the letter of 6^th October from HLBBshaw to the court). My judgment in the Technical Fibre case [2010] EWPCC 011 was given on 20^th October. In Technical Fibre I held (paragraph 9) that the new procedures in CPR Pt 45.41 – Pt 45.43 and corresponding section 25C of the Costs Practice Direction; CPR Pt 63, Section V Patents County Court, consisting of CPR Pt 63.17 – 63.26; and Section V of the Practice Direction 63 – Intellectual Property Claims paragraphs 27 – 31, did not apply to existing cases. This case is of course one such albeit only by a matter of a couple of weeks. I also stated in that judgment (paragraph 10) that the new provisions on transfer in Practice Direction 30 which supplements CPR Pt 30 seemed to me self evidently to apply from 1^st October 2010 to all cases whenever they commenced. Neither party before me in the present case argued to the contrary.
14. In response to ALK's application, Dey indicated that they wished to apply to transfer the case to the High Court and that is the issue I need to decide.

Transfer to the High Court

15. The legal framework in relation to transfer from the Patents County Court to the High Court is as follows. I will deal first with the provisions which apply generally and then turn to the provisions specific for transfers to or from the Patents County Court.
16. The power to transfer a case from a county court to the High Court is s42 of the County Courts Act 1984. S42(1) provides that in certain cases provided for by a provision mentioned in subsection (7) (which must be in the High Court) a county court shall order transfer or order them to be struck out in certain circumstances. Then s42(2) provides that "subject to any such provision, a county court may order the transfer of any proceedings before it to the High Court". The word "may" clearly indicates that the court has a discretion to transfer or not, to be exercised on proper grounds.
17. CPR Pt 30.3 deals with criteria for such a transfer order. The matters the court must have regard include:-

(a) the financial value of the claim and the amount in dispute, if different;

(b) whether it would be more convenient or fair for hearings (including the trial) to be held in some other court;

(c) the availability of a judge specialising in the type of claim in question;

(d) whether the facts, legal issues, remedies or procedures involved are simple or complex;

(e) the importance of the outcome of the claim to the public in general;

(f) the facilities available to the court at which the claim is being dealt with, particularly in relation to-

(i) any disabilities of a party or potential witness;

(ii) any special measures needed for potential witnesses; or

(iii) security;

(g) whether the making of a declaration of incompatibility under section 4 of the Human Rights Act 1998 has arisen or may arise;

(h) in the case of civil proceedings by or against the Crown, as defined in rule 66.1(2), the location of the relevant government department or officers of the Crown and, where appropriate, any relevant public interest that the matter should be tried in London.

(see CPR Pt 30.3 (1) and (2))

18. As between the High Court and the Patents County Court items (f), (g) and (h) are not likely to be material but each of the other factors bears consideration at least to some extent.
19. There are then provisions specific to the Patents County Court. Section 289(2) of the Copyright Designs and Patents Act 1988 gives guidance on the exercise of the discretion to transfer:

"In considering in relation to proceedings within the special jurisdiction of a patents county court whether an order should be made under section 40 or 42 of the County Courts Act 1984 (transfer of proceedings from or to the High Court), the court shall have regard to the financial position of the parties and may order the transfer of the proceedings to a patents county court or, as the case may be, refrain from ordering their transfer to the High Court notwithstanding that the proceedings are likely to raise an important question of fact or law."

20. Two points emerge from this. Consideration of both parties' financial positions is required and a case raising an important question of fact or law need not necessarily be transferred to the High Court (per Bingham MR in Chaplin v Lotus (see below)).
21. Finally the new paragraphs 9.1 and 9.2 of Practice Direction 30 – Transfer apply in the Patents County Court after 1^st October 2010 (referred to in new Pt 63.18). The paragraphs are as follows:-

Transfer to or from a patents county court (rule 63.18)

9.1 When deciding whether to order a transfer of proceedings to or from a patents county court the court will consider whether-

(1) a party can only afford to bring or defend the claim in a patents county court; and

(2) the claim is appropriate to be determined by a patents county court having regard in particular to-

(a) the value of the claim (including the value of an injunction);

(b) the complexity of the issues; and

(c) the estimated length of the trial.

9.2 Where the court orders proceedings to be transferred to or from a patents county court it may-

(1) specify terms for such a transfer; and

(2) award reduced or no costs where it allows the claimant to withdraw the claim.

22. The combination of all the provisions set out above applies to the case before me.

The cases on transfer

23. So far as I am aware this is the first contested application to transfer a case between the High Court and the Patents County Court since the new provisions came in on 1^st October 2010. Nevertheless I am sure that guidance can be obtained from the cases decided prior to 1^st October 2010, always bearing in mind that the legislative framework when they were decided was not exactly the same as it is now.
24. Although decided well before the advent of the CPR and various other amendments to the relevant provisions, the Court of Appeal's judgment in Memminger v Triplite [1992] RPC 210 still seems to me to be relevant in making two points. First, if there is no reason to alter the status quo, the action should proceed in the court in which it began. If the factors are all neutral then a case should stay where it started. Second, the parties' wishes alone are not the only factor, the proper administration of justice generally is important. A refusal to transfer a case may create a risk of injustice to other litigants whose cases would be delayed as a result (see also the judgment of Neuberger J (as he then was) sitting in the Patents County Court in Wesley Jensen v Coopervision, (unreported 2^nd July 2001)).
25. The other important case on transfer is Chaplin v Lotus (Court of Appeal, Bingham MR, Rose and Waite LJJ, unreported 17^th December 1993). In that case Sir Thomas Bingham, the then Master of the Rolls considered the jurisdiction of the Patents County Court and the question of transfers. After setting out s289(2) of the 1988 Act Bingham MR said:

'The High Court and County Courts Jurisdiction Order 1991 governs the allocation of cases as between the High Court and the county court. Very broadly speaking, claims valued at less than £25,000 are to be tried in a county court and claims for more than £50,000 in the High Court. But these fixed limits are subject to Article 7(5) of the Order, which provides:

"The High Court and the county courts, when considering whether to exercise their powers under section 40(2), 41(1) or 42(2) of the County Courts Act 1984 (Transfer) shall have regard to the following criteria—

(a) the financial substance of the action, including the value of any counterclaim,

(b) whether the action is otherwise important and, in particular, whether it raises questions of importance to persons who are not parties or questions of general public interest,

(c) the complexity of the facts, legal issues, remedies or procedures involved, and

(d) whether transfer is likely to result in a more speedy trial of the action,

but no transfer shall be made on the grounds of subparagraph(d) alone."

Read together, as they should be, these provisions indicate, to my mind quite clearly, how the discretion to transfer should be exercised by the judge of the Patents County Court. He is to have regard to the financial position of the parties. He is not obliged to transfer if it is shown that the proceedings are likely to raise an important question of fact or law. But subject to those rules he should bear in mind that the Patents County Court was established to handle the smaller, shorter, less complex, less important, lower value actions. It was to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. Subject to the rules referred to, longer, heavier, more complex, more important and more valuable actions continue to belong in the High Court. Ultimately, as with any exercise of discretion, the decision must turn on what the interests of justice are judged to require: that means taking account not only of the interests of the plaintiff who wants to pursue his action in the Patents County Court but also the interests of the defendant who wants to have his liability determined in the High Court.'

26. It is important to note that although the High Court and County Courts Jurisdiction Order 1991 referred to is still in force in some respects, the financial limits mentioned are not in force and Article 7 has been repealed and replaced by CPR Pt 30.3 above. There is at present no financial limit in the Patents County Court albeit there are proposals for a damages limit of £500,000 in future.
27. Nevertheless it seems to me that I should follow the guidance in Chaplin v Lotus in the present case modified to the extent necessary by the provisions of CPR 30.3 and by paragraph 9.1 of the Practice Direction –Transfers.
28. Although the legislation setting up the Patents County Court does not define "small and medium sized enterprises", the European Commission has adopted a definition. It is set out in "Commission Recommendation of 6^th May 2003 concerning the definition of micro, small and medium sized enterprises" (2003/361/EC) at OJ L 124/36 20.5.2003. The Recommendation applies from 1^st January 2005. The definition is set out in Title 1 of the Annex to the Recommendation. It is quite elaborate but Article 2 of Title 1 is the key to the definition providing that:-

i) a "microenterprise" employs fewer than 10 persons with an annual turnover and/or balance sheet not exceeding 2 million Euros;

ii) a "small enterprise" employs fewer than 50 persons with an annual turnover and/or balance sheet not exceeding 10 million Euros; and

iii) a "medium enterprise" employs fewer than 250 persons with an annual turnover and/or balance sheet not exceeding 43 million Euros.

29. It seems to me that in the absence of any other guidance, these definitions have some utility at least as a starting point to allowing one to gauge the sorts of enterprises the Patents County Court is intended to serve.
30. Pulling the various factors together, the points to consider are:-

i) the financial position of the parties (s289(2) 1988 Act). This includes but is not limited to considering whether a party can only afford to bring or defend the claim in a patents county court (para 9.1(1) Practice Direction 30). This factor is closely related to access to justice. The Patents County Court was set up to assist small and medium sized enterprises in enforcing and litigating intellectual property disputes. Guidance on the nature of these enterprises can be found from the Commission Recommendation 2003/361/EC.

ii) whether the claim is appropriate to be determined by a patents county court. This involves considering:

a) the value of the claim, including the value of an injunction and the amount in dispute. (para 9.1(2)(a) Practice Direction 30 and CPR 30.3(a))

b) the complexity of the issues (para 9.1(2)(b) Practice Direction 30 and CPR 30.3(d))

c) the estimated length of the trial. (para 9.1(2)(c) Practice Direction 30). Related to this is CPR 30.3(b) - whether it would be more convenient or fair for hearings (including the trial) to be held in some other court.

iii) the importance of the outcome of the claim to the public in general (CPR 30.3(e)) albeit that a case raising an important question of fact or law need not necessarily be transferred to the Patents Court (s289(2) 1988 Act).

31. A factor which does not play a role is the one in CPR Pt 30.3(c) (availability of a judge specialising in the type of claim in question) since specialist judges are available in both courts.
32. Once those factors are considered I must bear in mind what sort of cases the Patents County Court was established to handle and that its role is to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. The decision turns on what the interests of justice require, taking into account both parties interests and interests of other litigants.

The factors in this case

33. I will deal with them in turn.

Financial position of the parties

34. Both parties are or are part of substantial undertakings. Neither is a small or medium sized enterprise within the Commission Recommendation. In future this court may have to consider precisely how to approach a case in which the litigant is part of a major group but the business unit with which the case is concerned is a small one, but that is not this case. There is no question here that both sides can well afford to litigate in the High Court. There is no concern about access to justice in this case.

Value of the claim, including the value of an injunction and the amount in dispute.

35. This is the key point relied on by Mr Adrian Speck for the Second defendant in supporting his application for transfer and a key battleground between the parties. The evidence is that the annual UK sales of Dey's EpiPen by ALK are about $24 Million. ALK are going to stop selling EpiPen and replace it with the new product JEXT. Neither Dey nor ALK can say how much of that market the JEXT product will take but it is quite clear that ALK will aim to take a substantial chunk of it if they can. So far as it appears before me the only barriers to the JEXT product entering the UK market are a regulatory authorisation – but that will arrive early in 2011 (probably) and the patent in this case, assuming in Dey's favour it is valid and would be infringed. If it is not valid or would not be infringed by the JEXT product then as the matter stands before me, ALK will be free and entitled to sell JEXT to compete with EpiPen next year.
36. However Dr Turner submits that it is not correct to simply take that $24 Million figure at face value. First the EpiPen does not fall within the patent. It has no needle cover. So the patent does not provide a monopoly covering EpiPen as a matter of law. The $24 Million sales are not sales of the patented product. Second the invention the subject of the patent is only one small part of the injector product in any case. It is the locking needle cover only. The bulk of the sales value of the item is by no means attributable to the locking needle cover. Third, taking the second point one stage further, if it turns out that the JEXT product does infringe a valid claim, it could be readily modified to avoid infringing, for example by getting rid of the needle cover altogether and then it would be a matter of a few weeks to obtain an amended authorisation. Finally the circumstances surrounding the assignment of the patent from Meridian to Dey are not explained. Hogan Lovells pointed out to the defendants that they were unaware of any royalty stream from the patent and asked the defendants to disclose the value of the assignment. That information would help put a value on the claim and the defendants' failure to answer those questions should lead the court to infer that the value is low.
37. The first point raises the question of how to assess the value of an injunction. It seems to me to be unreal to ignore the fact that the product with which this is concerned is being introduced to take a substantial part of a market worth $24 Million. The fact that those sales are currently met by products falling outside the patent is irrelevant. It seems to me that the value of the injunction should be assessed considering both the patentee's position and the position of the alleged infringer. If Dey wins the case then the injunction will prevent sales of JEXT and leave the market open for EpiPen, earning $24 Million annually. There was reference in the submissions to other competitive products elsewhere in Europe but again no evidence about them. If ALK wins the case they will be clear to launch a product intent on earning up to $24 Million per year. That is their incentive for bringing these proceedings. A party seeking to earn sales of that magnitude is not going to be deterred by the cost of litigation in the High Court.
38. In SmithKline Beecham v Apotex [2003] EWCA Civ 137 the Court of Appeal heard an appeal relating to the grant of an interlocutory injunction to restrain sales of the drug paroxetine hydrochloride by Apotex. The patent claimed the drug in the anhydrate form but the commercial product (Seroxat) which the patentee's group sold was in a different form – a hemihydrate. The hemihydrate did not fall within the claims of the anhydrate patent in suit. On behalf of Apotex it was submitted that no interlocutory injunction should be granted to protect a market for a product falling outside the patent. The argument was put in various ways including consideration of remoteness of damage and causation and was based on statements in Polaroid v Eastman Kodak [1977] RPC 379 and Peaudouce v Kimberley-Clark [1996] FSR 680. The argument was rejected by Aldous LJ, with whom Carnwath LJ and Sir Christopher Staughton agreed, and the grant of the injunction by Jacob J at first instance was upheld. If one asks the question – what would the value of that injunction have been – it seems to me to be clear that its value to SmithKline was in protecting the market for Seroxat, a product outside the patent. SmithKline had no sales of the patented product at all.
39. On the second and third points taken by ALK, Mr Speck submits there is simply no evidence in support of those submissions. He is right. I have no evidence as to the significance of the needle cover at all and equally, while I can believe that a modification could easily be made, I have no evidence before me. Dr Turner responded to this submission by accepting that the evidence did not deal with it but also by pointing out that EpiPen has no needle cover and so the needle cover cannot be very important. That seems to me to be a nice argument but no substitute for proper evidence if the point was going to be taken. Transfer applications are not trials and the evidence need to be kept within proper bounds. Parties on applications to transfer do not need elaborate evidence but in this case there is nothing at all on the point. I do not take account of the second and third points.
40. I wish to emphasise however that it seems to me that in principle ALK's submissions on this are capable of being a complete answer to the first point above, if there was some evidence to support them. Simply because the product as a whole earns $24 million annually is by no means the end of the story. The value of the injunction would be quite different if it were actually was the case that, on the assumption JEXT did infringe, it could be readily modified to avoid infringement altogether in a matter of a few weeks and its sales would suffer at most a minor blip. Such circumstances would undermine the $24 million figure entirely. Dr Turner submitted that the defendants bore the onus since they are seeking transfer and therefore any lack of evidence should rebound in them. In my judgment that is not the right way of looking at it. The JEXT product is ALK's product and they are the ones would have the means to put some evidence before the court on this issue. As I said above these applications are not trials, but at the moment all I have is some elegant speculation.
41. ALK's final point on value relates to the failure by the defendants to explain the value of the assignment. They submit in effect that if Meridian and Dey are not prepared to tell the court how much they valued the patent for when they assigned it between them, why should I assume it has any value at all? In another case that might be a point of significance but in the present case it does not undermine the force of the fact that the JEXT product is to compete with EpiPen in a $24 Million market.
42. In my judgment, for the purposes of considering transfers, the assessment of the value of a claim and the value of an injunction is intended to reflect commercial realities. It is not intended to involve fine questions of causation or remoteness of damage. Accordingly as it stands before me this claim is one with a value measured as a substantial part of $24 Million per year. I note also that the patent has just over two years left before expiry.

Complexity of the issues

43. This is not a complex patent case. The facts are simple and there is no legal issue arising of which I am aware. A mechanical patent of this kind can appear complicated at first sight but the Patents County Court is a specialist court for dealing with just this sort of case.
44. The parties informed me that the technical difficulty rating of this case is 3 (on a scale of 1 to 5) and Mr Speck was anxious to emphasise that this rating was agreed on both sides when I suggested in the course of argument that the case was really not complicated. It seems to me the right submission on that question was Dr Turner's when he pointed out that the technical difficulty rating is not addressing the same question as the issue of complexity arising on a transfer. The rating is used by the High Court for listing purposes. A simple case about genetic engineering will have a technical difficulty of 5 to reflect the nature of the technology but it would still be a simple case.
45. In terms of the issues of law and fact which arise in this case, it is eminently suitable to be tried in the Patents County Court.

Estimated length of the trial etc.

46. The issues of length of trial and whether it would be more convenient to hear the case in another court are related to the wider question of the administration of justice and the needs of other litigants.
47. The parties agree that this case would take about 3 or perhaps 4 days to try under the procedure applicable to it. I agree. I would also say that if this case had been commenced after 1^st October 2010 I can see no reason at all why it could not have been determined readily using the new procedures and with a trial in no more than 2 days.
48. The claimant wishes to have this dispute resolved in a timely fashion and suggested a trial on any convenient date after 1^st April 2011. The Patents County Court diary can accommodate that without difficulty and without any impact on third parties. I am told that the High Court is currently listing trials for January 2012 unless they are expedited. Mr Speck submitted that this was the real reason that ALK had brought this claim in this court. He submitted they simply wanted to jump the High Court queue. It may well be right that a key element in the claimant's motivation for bringing the case in this court is the availability of a trial from April next year. However the counterpart to Mr Speck's submission is the question of why Dey wish to transfer the case to the High Court at all. Since the case began before 1^st October, it will be tried in exactly the same way as it would be in the High Court. The costs cap in the new procedures does not apply. It might be thought that the patentee simply wanted to avoid an early trial. A transfer to the High Court might introduce very significant delay.
49. During the hearing an issue arose as to how soon the High Court could hear the case on an expedited basis. At one stage it seemed that even an expedited trial in the High Court could not be heard until December 2011, but subsequently the parties have confirmed that this case could be heard in the High Court on an expedited basis before the long vacation (i.e. before 31^st July 2011).
50. It seems to me that if the court was faced with an application to transfer which would inherently build in a delay of that kind, this would be a factor which weighed against transferring the case. However in the present case I do not have to approach the matter on that basis. Mr Speck (on instructions) informed me that his clients were not seeking to delay a trial and would, if the case was transferred to the High Court, cooperate with the claimant to have the trial listed as soon as practicable before the summer of 2011. Accordingly if I transfer the case I can do so safe in the knowledge that I am not causing significant delay. The trial will be heard in the High Court before the summer, which is essentially when it would be heard in the Patents County Court.

Importance of the outcome

51. The final factor is the question of the importance of the outcome. Although this is a factor in High Court / County Court transfers generally, in the Patents County Court the effect of the 1988 Act is that a case raising an important question of fact or law need not necessarily be transferred. However that does not make importance irrelevant altogether.
52. In this case there is no important question of fact or law. Nonetheless I understand that the Defendants, as American corporations, are concerned that their rights might be decided in a lesser court than the High Court. Perhaps the name "Patents County Court" has put them off. Many observers have suggested that the name should be changed. For a start the court is not concerned only with patents and never has been. It is a specialist IP court staffed by a specialist judge. The special jurisdiction of the court relates to patents and designs (s287(1) of the 1988 Act) and the court is competent to hear the full range of patent cases including cases concerning entitlement, infringement and validity. The court is a designated community designs court (Art 80(2) of Council Regulation 6/2002/EC and art. 2(1)(a)(ii) of the Community Designs (Designation of Community Designs Courts) Regulation 2005 (SI 2005/696)), and the court has jurisdiction in trade mark cases and is a designated community trade mark court (Art 91(1) of Council Regulation 40/94/EC (now Art 95(1) of Council Regulation 207/2009/EC by virtue of reg. 12(1)(a)(ii) of the Community Trade Mark Regulations 2006 (SI 2006/1027). The Patents County Court's jurisdiction in copyright and passing off is recognised in CPR 63.13(1)(a) and PD 63 para 16.1. Thus the report of the Intellectual Property Court Users' Committee Working Group on proposals for reform of the Patents County Court, which led to the new rules now in place, suggested it should be renamed the Intellectual Property County Court. The term "county court" is entirely accurate having regard to the way the English legal system is set up but it can also convey an inaccurate impression, particularly to observers from abroad. Although the legislation allows for the creation of multiple Patents County Courts, there is only a single one and it has a territorial jurisdiction the same as the High Court – the whole of England and Wales. The same remedies are available in each court. There is no reason whatsoever why litigants foreign or domestic should be put off from having their intellectual property rights determined in the Patents County Court.

Weighing up the factors

53. The conundrum on this application is that I have no doubt the case is entirely suitable to be tried in the Patents County Court from the point of view of the issues arising and the case management machinery necessary to deal with them. The balance I have to draw would have been more difficult if the delay point was still live but that was sorted out during the hearing and I can transfer this case safe in the knowledge that I am not building in major delays by doing so.
54. The value of the case on the evidence as it stands points in favour of the High Court and the financial position of the parties does so as well. It might be asked why a case which could readily be decided in this court using the procedures now available should not be heard here. Why does value matter? The answer in my judgment is to emphasise what the Patents County Court was set up to achieve. The decisive factor is that the court was set up to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. With the new procedures in place I intend to devote my energies to making them work in order to achieve that objective. However this is not the case in which to do it.
55. I am aware that there are some commentators who have suggested that the Patents County Court procedures are ideal for cases of this kind irrespective of value. If the parties were in agreement then this case would remain in this court. However a transfer is sought and I have to decide what to do. The fact that the court's machinery is able to handle the case is a different question from whether it should do so when one party wishes to litigate in the High Court. It may be in future that procedures now being employed in this court will have a wider application in other cases but that is not the key point. Access to justice for small and medium sized enterprises is the decisive factor.
56. Although this court could readily hear this case, in my judgment it should be transferred to the High Court.

The position of Meridian

57. I will deal with the question Meridian's status in this case shortly. Mr Hill for Meridian submitted that I should substitute Dey for his clients and order that his clients have all their costs paid by the claimant ALK. His point is that the claim form was issued so quickly after the letter before action (7 days) that this conduct was a breach of the pre-action protocols and the claimant ought to pay costs. However since the action is being defended that seems to me to be rather unreal. If the defendant came to court and could show that the proceedings as a whole would not have been brought because they would have settled pre-action then, subject to questions of fact and causation, I can see how one might at least get that submission off the ground (but see Merial v Sankyo [2004] EWHC 3077 (Pat) for an illustration of the difficulties inherent in proving such a thing). The pre-action protocols are important and their abuse in other circumstances may lead to adverse costs orders but in this case the 7 days between letter and claim form do not justify a costs order against the claimant.
58. However Mr Hill also had a second point as follows. Meridian were granted the patent in July 2010 and were the proprietors when the claim form was issued. However Meridian then assigned the patent to Dey on 7^th October. If only they had had more time, submits Mr Hill, Meridian would have assigned the patent to Dey before the claim form was issued and would not have played a part in the case at all. Thus they should never have been here and should have their costs paid in any event. It seems to me however that, leaving aside the fact that I do not have anything like sufficient evidence of the surrounding circumstances to assess that matter properly, the real point is that I do not understand how it justifies Mr Hill's submission on costs. Why should the claimant pay costs to Meridian for that? If the claimant wins the case then the claimant would be entitled to its costs, not Meridian.
59. A different matter is the question of Meridian's ongoing involvement in the case. Since Meridian were the proprietors of the patent when the claim form was issued I am reluctant to remove them from these proceedings altogether. However if – as they say they will – Meridian take no further part in the case whatsoever then there is no reason why they should be liable for any costs incurred after this application. ALK and Dey accept that and accordingly I am going to refuse Meridian's application for substitution, allow Dey into the case as the second defendant and make a direction capping Meridian's exposure to future costs on the basis I have outlined above.
60. I will hear the parties on the proper form of order. It may be something to deal with in writing.