Hospira UK Ltd v Cubist Pharmaceuticals, LLC, Court of Appeal - Patents Court, October 17, 2016, [2016] EWHC 2661 (Pat)

Resolution Date:October 17, 2016
Issuing Organization:Patents Court
Actores:Hospira UK Ltd v Cubist Pharmaceuticals, LLC
 
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Case No: HP-2014-000037

Neutral Citation Number: [2016] EWHC 2661 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

The Rolls Building,

7 Rolls Buildings,

London, EC4A 1NL

Date: Monday, 17th October 2016

Before:

MR. JUSTICE HENRY CARR

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Between:

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MR. RICHARD MEADE, QC (instructed by Taylor Wessing LLP) for the Claimant

MR. ANDREW WAUGH, QC and MR. THOMAS HINCHLIFFE, QC

(instructed by Carpmaels & Ransford LLP) for the Defendant

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JudgmentMR. JUSTICE HENRY CARR :

Costs

  1. In this matter I am asked to decide the question of costs following judgment in this action whereby I revoked three patents owned by the Defendant (``Cubist''). It was accepted before trial by Cubist that another patent, which the parties designate ``the 580 patent'', was invalid.

  2. It is common ground that, as the winner, the Claimant (``Hospira'') is entitled to its general costs. The dispute is whether, in respect of certain issues, Hospira should not recover its costs and in respect of certain other issues I should order that Hospira pay Cubist's costs.

  3. Before turning to these issues, a question arises in relation to the 580 patent. Mr. Waugh QC, who appears for Cubist, submits that the estimate of costs that have been provided by Hospira, which is £112,500, ought to be treated with great caution because no detailed calculation or basis for this quantification is put forward. He suggests that it is normal to record time against each patent in multi-patent litigation and those details have not been disclosed or provided. He also points out that Ms. Balleny of Carpmaels and Ransford has calculated that Cubist's costs of dealing with the 580 patent were £60,000 rather than £112,500.

  4. For my part, I see no reason to doubt the estimate of Hospira's costs which has been provided in Mr. Stoate's third witness statement at [4.2]. The basis of that calculation is reasonable, given that this was Cubist's patent and Carpmaels & Ransford were familiar with this subject matter having prosecuted patents from the same family. It is unsurprising that Hospira's costs would be likely to be more than those of Cubist's. Furthermore, on a form of order hearing of this nature, it is not necessary to submit a detailed costs bill, which is a matter for the assessment. Therefore, I accept Mr. Stoate's estimate and that is the figure which I shall apply when considering the overall percentages of recoverable costs.

  5. I now turn to the issues in respect of which there is some dispute as to whether there should be a deduction and, if so, how much. It is often said that the correct principles to apply in patent actions are very well known. In particular, in Monsanto v Cargill No.2 [2007] EWHC 3113, [2008] FSR 16 at [2]- [9], Pumfrey LJ set out the approach that the courts should take to costs in patent actions under the CPR. This approach was subsequently approved by the Court of Appeal in MMI v Cellxion [2012] EWHC Civ. 139. In summary:

    i) The overall winner is likely, save in the most exceptional circumstances, to be entitled to payment of all his costs which are not or cannot be allocated to a particular issue, which are the general costs of the action.

    ii) If costs are suitably circumscribable so that they can properly be allocated to issues upon which the overall winner has nevertheless lost, there are two questions:

    a) should that party recover his costs of that issue; and

    b) is the case so exceptional that the winning party should pay the otherwise unsuccessful party's costs incurred in respect of that issue?

  6. The fact that those principles are frequently cited disguises an uncertainty in their application, namely, what is meant by the phrase ``so exceptional that the winning party should pay the otherwise unsuccessful party's costs''. Mr. Waugh has referred me to the principles set out in the White Book at...

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