Barry Liversidge v Owen Mumford Ltd and Another
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss QC |
| Judgment Date | 20 September 2012 |
| Neutral Citation | [2012] EWPCC 40 |
| Court | Patents County Court |
| Docket Number | Case No: CC11P01399 |
| Date | 20 September 2012 |
[2012] EWPCC 40
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
His Honour Judge Birss QC
Case No: CC11P01399
HC11C01398
James Abrahams (instructed by Field Fisher Waterhouse LLP) for the Claimant
Anna Edwards-Stuart (instructed by Manches LLP) for the First Defendant
Charlotte May (instructed by Herbert Smith LLP) for the Second Defendant
Hearing date: 26th July 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
In the main judgment in this action ( [2012] EWPCC 33) I decided that the defendants' product did not infringe the claimant's patent and that the patent was invalid. Among the consequential orders to be made were orders concerning costs. A point of principle arose concerning the application of the capped costs system in the Patents County Court to the facts of this case. I heard the parties' argument on the point and informed the parties of my decision at the hearing. That allowed the effect of the decision on the actual costs order to be sorted out then and there. This judgment contains my reasons for the decision. There will be no need to attend its handing down.
At this hearing James Abrahams appeared for Mr Liversidge instructed by Field Fisher Waterhouse. Anna Edwards-Stuart appeared for Owen Mumford instructed by Manches and Charlotte May appeared for Abbott instructed by Herbert Smith.
The problem
At the conclusion of the case each defendant filed its own bill of costs. This is not surprising since each defendant incurred its own costs. The two defendants had been separately represented at all times in this case. They filed separate defences, instructed separate solicitors and separate counsel. In substance the points made by both defendants were the same and at trial Daniel Alexander QC, for Abbott, made all the submissions on the merits.
Although the points of substance made by each defendant were the same, there were points on which their interests were capable of diverging. Owen Mumford did not supply finished articles to Abbott. At least in theory it might have been the case that Abbott infringed but Owen Mumford did not, although the commercial consequences of this outcome would have been the same. Conversely it was at least conceivable that Owen Mumford might have infringed under s60(2) of the 1977 Act by supplying parts even though Abbott's final product did not fall within the claim. None of these points were live in the end but they show that no criticism could be levelled at the defendants for being formally separately represented as they were albeit that they made common cause.
Taking each of the defendant's costs bills relating to the proceedings in the Patents County Court and conducting a summary assessment in the usual way, and taking into account PCC costs stages (see Westwood v Knight ([2011] EWPCC 11)) produced total figures of about £36,000 for Owen Mumford and £38,000 for Abbott. In addition there were some costs incurred by Abbott in relation to the High Court but they were dealt with separately and do not have a bearing on the issue I am dealing with (see Westwood v Knight, para 13).
On that basis the defendants submitted I should order the claimant to pay about £36,000 in costs to Owen Mumford and £38,000 to Abbott, making a total outlay of about £73,000. However Mr Abrahams submitted I should not make that order because it would be a breach of the rules. He submitted that the most his client should be ordered to pay was one set of PCC scale costs, which are capped at £50,000.
The CPR
The relevant provisions of the CPR are VII of Part 45 and in particular r45.42, as follows:
VII Scale Costs for claims in a patents county court
Scope and interpretation
45.41 (1) Subject to paragraph (2) this Section applies to proceedings in a patents county court.
(2), (3) ….[ immaterial ]
(4) "Scale costs" means costs as defined in rule 43.2(1)(a)
Amount of scale costs
45.42 (1) Subject to rule 45.43 the court will not order a party to pay total costs of more than —
(a) £50,000 on the final determination of a claim in relation to liability; and
(b) £25,000 on an inquiry as to damages or account of profits
(2) The amounts in paragraph (1) apply after the court has applied the provision on set off in accordance with rule 44.3(9)(a).
(3) The maximum amount of scale costs that the court will award for each stage of the claim is set out in the Costs Practice Direction.
(4) The amount of the scale costs awarded by the court in accordance with paragraph (3) will depend on the nature and complexity of the claim.
(5) [ immaterial]
Section 25 C of the Costs Practice Direction then sets out tables of the scale costs for each stage of a claim up to the determination of liability and for each stage of an inquiry as to damages or account of profits.
Mr Abrahams submitted that CPR r45.42(1)(a) meant what it said. The court " will not order a party to pay total costs of more than (a) £50,000 on the final determination of a claim in relation to liability". He submitted that the order sought by the defendants would violate that rule. Mr Abrahams submitted that the purpose of the rule was to facilitate access to justice for smaller and medium sized enterprises in intellectual property litigation. To achieve this objective the costs orders...
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