Cook v Boston – practicalities relating to the Shorter Trial Scheme and costs budgeting

This short CMC judgment ([2022] EWHC 2060 (Pat)) in proceedings between Cook and Boston Scientific contains a few practical points on the Shorter Trial Scheme (STS) and other case management issues.

By way of background, the STS was set up with the purpose of providing parties with an avenue to achieve earlier, shorter trials for reasonably sized litigation at a proportionate cost. Cases are managed by docketed judges with the aim of reaching trial within 10 months from the date of issue of the claim, and cases are streamlined with restrictions on disclosure, the length of pleadings and the degree of expert evidence. A significant advantage of the STS over the usual multi-track procedure is that the time-consuming costs budgeting requirements under the relevant civil procedural rules do not apply.

In this case, Cook had commenced a revocation action against Boston’s patent to an endoscopic clip under the STS, because it initially involved only one patent and one piece of prior art. There was the prospect of a second patent potentially entering the proceedings, having already been asserted by Boston in the Netherlands, but at an earlier trial listing hearing Mellor J was happy to allow the case to continue in the STS provided that patent did not enter the case.

By the time of this CMC, however, the second patent was in issue and with the case now involving several pieces of prior art, two experts and the likelihood of experiments and fact evidence, the parties and the judge were in agreement that it needed to be transferred out of the STS.

The point of practical interest here is that, as the claimants were not prepared to certify that the value of the claim was over £10 million and so exempt from the cost budgeting provisions, the Judge pointed out that the default position was that the usual cost budgeting rules should apply. Parties looking to transfer claims out of the STS should therefore bear in mind that costs budgets may be required if the claim is likely to be worth less than £10 million.

The position on disclosure was a little unusual in that Cook sought an order for disclosure from Boston, the patentee, in relation to infringement – in this case for documents under Boston’s control relating to the issue of “user feedback” regarding use of Cook’s allegedly infringing products. The Judge allowed limited disclosure from Boston, provided it did not become overly expensive or interfere with the proper conduct of the preparation for trial. However, Cook’s request for samples of Boston’s products was refused. The Judge noted that, whilst the provision of samples is a relatively straightforward exercise, the consequences of such an order “could be significant” and there had to be good reason, bearing in mind the need for proportionality.

On statements of case, the Judge acknowledged the benefit of early and better particularisation of cases by way of statements of case on infringement and validity, and noted that their use is becoming increasingly common practice. In this case, Cook had also agreed to provide a claim chart mapping the prior art embodiments on to each claim of the patents, though the Judge refused Boston’s request for further particularisation by identifying the adaptations or modifications Cook contends would have been obvious for the skilled team to make to each embodiment. In his view, the benefit of early particularisation helping to narrow the issues and focus the efforts of the parties can be lost by overly onerous requests – Boston’s request was therefore not a fair step in managing the case.