OPES CORPORATION OY v REPUBLIC TECHNOLOGIES (UK) LIMITED [2022] EWHC 2428 (Ch)

[2022] EWHC 2428 (Ch)

Case No HP-2021-000045

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF

ENGLAND AND WALES

INTELLECTUAL PROPERTY LIST (ChD)

PATENTS COURT

Venue Royal Courts of Justice, The Rolls Building, 7 Rolls Buildings

London, EC4A 1NL

Date 19 th July 2022

Before

MRS JUSTICE FALK

Between

OPES CORPORATION OYClaimant

REPUBLIC TECHNOLOGIES (UK) LIMITEDDefendant

MR M KEAY appeared for Claimant

MR J MOSS appeared for Defendant

APPROVED COSTS JUDGMENT

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[1]I am afraid that I am going to award costs against the Defendant. I do not think that the Defendant has gone about this in the right way. The Defendant provisionally agreed the search terms. It was wrong for it to make a unilateral decision to do only the searches it chose to do, once its initial searches had produced what in its view were too many documents.

[2]The Defendant told the Claimant that it was going to apply to the Court. It did not do so. I have been referred to the guidance of Marcus Smith J in Agents' Mutual v Gascoigne Halman Ltd

[2019] EWHC 3104 (Ch)

at [15]. That guidance is apposite here. The Defendant should not have just unilaterally have gone ahead with its proposal.

[3]In particular, the Defendant had the documents and could readily have suggested exclusionary terms. It could also readily have proposed a first pass review (at least) by a much more junior member of staff, and should have done so.

[4]So, exceptionally, I do not consider that the order should be costs in the case on this occasion. Rather, the Claimant should get their costs. ----------------- This judgment has been approved by the Judge. Digital Transcription by Marten Walsh Cherer Ltd., 2nd Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP. Telephone No: 020 7067 2900. DX 410 LDE Email: info@martenwalshcherer.com Web: www.martenwalshcherer.com