Generics (UK) Ltd (T/A Mylan) v Novartis AG
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Arnold |
| Judgment Date | 12 April 2013 |
| Neutral Citation | [2013] EWHC 886 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC 11 C0449, HC 12 C02558 |
| Date | 12 April 2013 |
[2013] EWHC 886 (Pat)
Mr. Justice Arnold
Case No: HC 11 C0449, HC 12 C02558
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
The Rolls Building 7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Simon Thorley QC and Mr. Thomas Mitcheson (instructed by Taylor Wessing LLP) appeared on behalf of Hospira.
Mr. Michael Tappin QC (instructed by Bird & Bird LLP) appeared on behalf of Mylan.
Mr. Andrew Waugh QC and Mr. Miles Copeland (instructed by Bristows LLP) appeared on behalf of Novartis
I now have to deal with the costs of these two actions. As is not uncommon, the parties are a long way apart. The claimants say that they should recover all of their costs. Novartis says that the claimants should pay 25% of Novartis' costs.
The principles to be applied in these circumstances are familiar subject to one small qualification. The court generally approaches the matter by asking itself three questions: first, who has won; secondly, has the winning party lost on an issue which is suitably circumscribed so as to deprive that party of the costs of that issue; and thirdly, are the circumstances (as it is sometimes put) suitably exceptional to justify the making of a costs order on that issue against the party that has won overall.
I say sometimes put because I think a review of decisions of the Patents Court on costs issues over the past five years would show that that particular phraseology is often, but not always, employed. Sometimes it has put been put in slightly different ways, notably by myself.
The origin of the phrase "suitably exceptional" is the judgment of Longmore LJ in Summit Property v Pitmans (A Firm) [2001] EWCA Civ 2020. As has been pointed out recently by Davis LJ in F&C Alternative Investments (Holdings) Ltd v Barthelemy [2012] EWCA Civ 843 at [46]–[49], it is apparent that Longmore LJ was not intending when using the words "suitably exceptional" in the particular circumstances in which he did to impose a specific requirement of exceptionality. The question rather is one of whether it is appropriate in all the circumstances of the individual case not merely to deprive the winning party of its costs on an issue in relation to which it has lost, but also to require it to pay the other side's costs.
Accordingly, the starting point is to ask who has won. So far as that is concerned, counsel for Novartis did not seriously dispute that the overall winners were the claimants. After all, the patents have been revoked. Accordingly, the claimants have achieved their commercial objective. Nevertheless, he submitted that there were a series of issues in relation to which they had lost and that in the circumstances it was appropriate not merely that the claimants should be deprived of their costs of those issues, but also that they should pay Novartis' costs.
I will come to the specific issues shortly, but before doing so it is convenient to record the result which he submitted should follow. He submitted that. in relation to the matters on which the claimants have been successful, they should recover 32% of their respective costs. In relation to the issues on which he contended that Novartis had been successful, he submitted that Novartis should recover 65% of its costs.
Taking into account the fact that Novartis' costs are a little over £1.5 million, that Hospira's costs are slightly less and that Mylan's costs are roughly £500,000, and doing a bit of arithmetic, he arrives at the net result which I have already mentioned, namely that there should be a payment by the claimants of 25% of Novartis' costs.
It is convenient to mention straightaway that in my view the arithmetical calculation that has been adopted to arrive at that result contains a significant flaw, even on the basis of Novartis' own evidence.
As counsel for Mylan pointed out, Mr. Cordery, of Novartis' solicitors, states in paragraph 17 of his second witness statement that the approximate division of time on Novartis' side as between the two claims was 73% attributable to the Hospira matter and 27% attributable to the Mylan matter. That is something which, in my view, must be taken into account as well as the disparity between the totals cost bills of Hospira and Mylan. It is quite understandable that there should be such disparity, both as regards the size of the Hospira and Mylan bills and as regards the amount of time spent on the Novartis side, because Mylan came into the matter at a much later stage. Both for that reason and because of the way the work was divided between them, more of the overall work of the claimants was done by Hospira than was done by Mylan. Correspondingly, Novartis had more work to do responding to Hospira than it did to Mylan.
I turn then to consider the matters in relation to which it is contended that Novartis was successful. I will take them in what, to my mind, are ascending order of seriousness.
First, there was a short Edwards v Cook point that was raised very...
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