Edwards Lifesciences AG v Cook Biotech Incorporated (No.2)
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE KITCHIN |
| Judgment Date | 12 June 2009 |
| Neutral Citation | [2009] EWHC 1443 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 12 June 2009 |
| Docket Number | Case No: HC08 C 00934 |
[2009] EWHC 1443 (Pat)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
PATENTS COURT
Before:MR. JUSTICE KITCHIN
Case No: HC08 C 00934
MR. ROGER WYAND QC, MR. PIERS ACLAND and MR. MILES COPELAND (instructed by Messrs. Bird & Bird) for the Claimant
MR. SIMON THORLEY QC and MR. ADRIAN SPECK (instructed by Messrs. Marks & Clerk Solicitors) for the Defendant
APPROVED JUDGMENT
ON COSTS
MR. JUSTICE KITCHIN:
I have handed down judgment in this case and I must now decide the appropriate order for costs. As is apparent from my judgment, Edwards sought revocation of Cook's patent EP (UK) 1 255 510. Cook defended the claim and counterclaimed for infringement. I have found the patent is invalid and not infringed. Accordingly, the claim has succeeded and the counterclaim has failed. Edwards is the commercial winner and has defeated an attempt by Cook to have its SAPIEN product removed from the market. In these circumstances Edwards asks for its costs of the action.
Cook does not dispute that Edwards is entitled to an order for costs in its favour but says I should apply a discount to reflect the fact that Edwards relied on a number of pieces of prior art which it either abandoned or upon which it failed. It also says that Cook's costs are too high for a case of this length and complexity.
The principles which I must apply are well established and set out in CPR 44.3 which provides, so far as relevant:
“(1) The court has discretion as to –
(a) whether costs are payable by one party to another;
(b) the amount of those costs; and
(c) when they are to be paid.
(2) If the court decides to make an order about costs –
(a) the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party; but
(b) the court may make a different order.
…
(4) In deciding what order (if any) to make about costs, the court must have regard to all the circumstances, including –
(a) the conduct of all the parties;
(b) whether a party has succeeded on part of his case, even if he has not been wholly successful;
…
(5) The conduct of the parties includes –
(a) conduct before, as well as during, the proceedings and in particular the extent to which the parties followed the Practice Direction (Pre-Action Conduct) or any relevant pre-action protocol;
(b) whether it was reasonable for a party to raise, pursue or contest a particular allegation or issue;
(c) the manner in which a party has pursued or defended his case or a particular allegation or issue; and
(d) whether a claimant who has succeeded in his claim, in whole or in part, exaggerated his claim.
(6) The orders which the court may make under this rule include an order that a party must pay –
(a) a proportion of another party's costs;
(b) a stated amount in respect of another party's costs;
(c) costs from or until a certain date only;
…
(e) costs relating to particular steps taken in the proceedings;
(f) costs relating only to a distinct part of the proceedings; and
(g) interest on costs from or until a certain date, including a date before judgment.
(7) Where the court would otherwise consider making an order under paragraph (6)(f), it must instead, if practicable, make an order under paragraph (6)(a) or (c).”
I would add the following observations. First, as Jacob LJ explained in SmithKline Beecham Plc v. Apotex Europe Ltd. (No. 2) [2005] FSR 24, an issue by issue approach is one that should be applied so far as it reasonably can, but such an approach is not the be all and end all. Whether or not it was reasonable for a party to raise, pursue or contest a particular allegation remains a relevant fact to be taken into account as part of the conduct of the parties. Second, the exercise upon which the court must engage is necessarily imprecise as Jacob LJ himself recognised in the SmithKline case. Third, one of the matters to which the court must have regard is proportionality. Finally, the court has a wide discretion to further the overriding objective.
In applying these principles to the present case, the following matters appear to me to be of particular relevance: first, as I have indicated, Edwards is the successful party. I consider it also relevant that the consequence to Edwards of failure would have been extremely serious. Its commercial product, the SAPIEN, was threatened with removal from the market. By contrast, Cook does not manufacture or sell a heart valve and there is no evidence before me that it brought this action to protect a market position.
Second, Cook originally maintained that all 34 claims of the patent were independently valid. When ordered by the court to serve a revised set of independently valid claims it reduced the number to 25. It persisted in this position up to the point of exchange of experts' reports but, at the last moment and after Edwards' experts had substantially completed the preparation of their reports, it reduced the number still further to 10. In the end I considered a total of nine claims at trial. I have no doubt that the failure by Cook to address the question of independent validity of the subsidiary claims more purposefully at an earlier stage has caused an unnecessary increase in the costs incurred by Edwards.
Third, Cook persisted in seeking disclosure of documents relating to...
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