Cipla Ltd v Glaxo Group Ltd
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Pumfrey |
| Judgment Date | 05 April 2004 |
| Neutral Citation | [2004] EWHC 819 (Pat),[2004] EWHC 477 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: (1) HC 2003 C00429 (2) HC 2003 C02619 (3) HC 2003 C03055 (4) HC 2003 C03946 |
| Date | 05 April 2004 |
[2004] EWHC 819 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr. Justice Pumfrey
Case No: (1) HC 2003 C00429 (2) HC 2003 C02619 (3) HC 2003 C03055 (4) HC 2003 C03946
MR. ANDREW WAUGH QC and DR. JUSTIN TURNER (instructed by Simmons & Simmons) for the Defendant
MR. COLIN BIRSS (instructed by Taylor Wessing) for Cipla Limited and Neolab Limited
MR. MICHAEL TAPPIN (instructed by Sanderson Lumber) for Generics (UK) Limited
MR. JAMES ABRAHAMS (instructed by Roiter Zucker) for Ivax Pharmaceuticals (UK) Limited
MR. MARK CHACKSFIELD (of Campbell Forsyth) for Arrow Generics Limited
Approved Judgment on Costs
Mr. Justice Pumfrey
I have now to deal with the questions of costs of these four actions. I have found the problem raised by the respective applications for costs which have been made in this case remarkably difficult.
The position is in outline as follows. As I have already made clear, there are four actions. They were never consolidated. The timetable of the proceedings, so far as is relevant for present purposes, is that the first of the actions was commenced by Cipla in January 2003. On 23rd July the second action was, effectively, commenced by Generics [UK] Limited and an application was made by Generics [UK] Limited for its action to be heard at the same time as the Cipla action. On 22nd August a yet further action was commenced by Ivax Pharmaceuticals [UK] Limited and the application for the case to be heard at the same time as the two actions which had already been started was made on 4th September. It was actually heard on 6th October.
The effect of the various orders or agreements that the actions should be heard together was that the evidence in any one of the actions should stand as the evidence in the others. If this had not been agreed prior to the hearing in front of Lewison J. on 7th November it was certainly made clear at that point, because he made an order that the evidence in the last of the actions, that commenced by Arrow Generics Limited, should stand as evidence in the other three actions and that their evidence in each of those actions should stand in each of the others.
Although little was made of this point in the argument before me on the question of costs, it seems to me to have some significance, which I shall explain when I have completed my review of the procedural steps.
The application by Arrow to join in, if I may use the phrase without frivolity, "the party" was opposed by the other claimants. It is a feature of these proceedings that the claimants have held each other at arm's length so far as possible. The reason for doing so is entirely straightforward and simple to understand. While each of them has a common interest with the others in bringing the patent to an end, each of them, so far as possible, wishes to maintain any commercial advantage which it may gain along the way to the prejudice of the others. That is entirely understandable. Moreover, this is not a merely theoretical consideration since recent history has demonstrated that pairs of actions to revoke can indeed be ordered to come on together and can be compromised by one only of the claimants at a very late stage. That happened in the Seroxat litigation involving BASF and Generics where Generics compromised shortly before the proceedings came on for hearing in court.
So one is confronted with a position in which the claimants are far from being in the same commercial interest, although no doubt in the same legal interest. One has four actions in which the evidence is, to use a shorthand phrase, mutual evidence, and there is a subsisting risk that at any stage one or more of the actions will be compromised.
The matter came to trial and the claimants were successful. Glaxo, the unsuccessful patentee, contends that it should not have to pay more than one set of costs. The reasons as concisely set out in a letter dated 26th March 2004 from Glaxo's solicitors, Simmons & Simmons, to the defendants' solicitors collectively. Glaxo say this:
"Having regard to the date of expiry of our client's SPC in relation to salmeterol on 24th October 2005, the patent for which has not been challenged, it was wholly unnecessary for there to be four separate sets of proceedings in respect of the patent in suit. It was inevitable that a final decision of the Court of Appeal in respect of the patent in suit, if indeed an appeal took place, would be received well before the above date.
Assuming, therefore, that such final decision rendered the patent in suit invalid, none of the claimants was at risk of interlocutory relief and, of course, if such final decision ruled that the patent was valid then none of the claimants would have launched a product in any event because of the salmeterol SPC.
Further, it was apparent, as and when each of the additional claimants commenced their separate proceedings, that there was increasing and unnecessary duplication in the preparation and presentation of the pleadings in evidence. This was something which the claimants only belatedly acknowledged closer to trial, by which time there had been significant duplication of costs.
We are, therefore, of the view that there should be one set of costs available for the claimants and we would propose that these should be the costs of Cipla to be taxed if not agreed. It is for the court to decide whether the costs should be awarded solely to Cipla or should be distributed amongst all the claimants. If the court is minded to follow the latter course, then we believe it is fair for the one set of costs to be paid to the claimants in the proportions which the totals of their separate costs bear to one another."
Glaxo then articulate in what can be called a fallback position, which was the fallback position which was adopted before me, which is that if the court is not prepared to accede to the primary case, then it will be argued that at least one set of costs only should be payable from the date of my order for consolidated grounds of objection; that is to say, 17th December 2003.
The ordinary rule is, of course, that the successful claimants are entitled to their reasonable costs of bringing and succeeding in the action. If I am to take the step of depriving one or more of a successful set of claimants of their costs in an action, not by way of a direction to the costs judge or by way of an individual assessment of the reasonableness of various items of costs, which is inappropriate when deciding on an order for costs after trial, there must, it seems to me, to be some basis of principle upon which such an order can be made.
In Bristol-Myers Squibb v Baker Norton [2001] RPC 1, the Court of Appeal was confronted with an order that had been made by Jacob J. In a case in which two separate defendants in infringement proceedings had counterclaimed for revocation. Jacob J. had said:
'It seems to me that the governing principle should be that where there are two or more parties fighting a common enemy, unless there are special circumstances, the court should lean in favour of one set of costs. One can always say that the second party might be better off if they had their own particular legal team. I am not always sure that is true: too many cooks spoil the broth. Even assuming that a party might be slightly better off, unless there is a real conflict, genuinely justified by separate sets of lawyers, I think the better view is that the parties should be under pressure to agree there should be one set of lawyers to face the common enemy. I think the court should be reluctant to grant two sets of costs.
'Often the position...
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