Mmi Research Ltd (Claimant/ Respondent) v Cellxion Ltd and Others

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeSir Robin Jacob
Judgment Date23 Feb 2012
Neutral Citation[2012] EWCA Civ 139
Docket NumberCase No: A3/2011/0756 and 0793

[2012] EWCA Civ 139





[2009] EWHC 418 (Pat) and [2011] EWHC 426 (Pat)

Royal Courts of Justice

Strand, London, WC2A 2LL


Lord Justice Elias

Lord Justice Kitchin


Sir Robin Jacob

Case No: A3/2011/0756 and 0793

Mmi Research Ltd
Claimant/ Respondent
(1) Cellxion Ltd
(2) Cellxion Networks LLC
(3) Mark Brumpton
(4) Datong Electronics Plc
(5) Rohde & Schwarz Gmbh & Co Kg
(6) Anthony Timson

Mr Alastair Wilson QC and Mr Simon Malynicz (instructed by Addleshaw Goddard LLP) for the Appellants/Defendants

Mr Martin Howe QC and Mr Henry Ward (instructed by Charles Russell LLP) for the Claimant/Respondent

Original hearing dates: 22 nd and 23 rd November 2011

Sir Robin Jacob

This is the Court's judgment about costs following our main judgment [2012] EWCA Civ 7. Both sides have provided us with detailed written submissions as to these. At one stage they asked us to remit all questions of the costs at first instance to the trial Judge. This we were not willing to do: it would certainly have resulted in delay and most likely into a greatly amplified satellite argument. We decided that with just written submissions we would be in a position to decide the questions with as much precision as is reasonably possible given the complexities involved. Having now read the submissions we remain satisfied that we took the right course, that either remission or oral argument before us would be an unnecessary escalation of the point.


The questions are, what is to be done about the following sets of costs:

(i) Those of the main trial before Floyd J up to and including his first judgment, [2009] EWHC (Pat) 418;

(ii) Those of the costs before Floyd J following that judgment;

(iii) The costs in the Court of Appeal leading to the remittal to Floyd J of closely defined issues ("the remitted issues");

(iv) The costs of the remitted issues trial before Floyd J;

(v) The costs of the appeal.


We turn first to the applicable principles. So far as patent actions are concerned, Jacob LJ (with whom the other members of the court agreed) addressed these in SmithKline Beecham v Apotex [2004] EWCA Civ 1703:

"Costs of Patent proceedings and the CPR

24. In respect of all intellectual property matters the general rule is that the CPR and associated practice directions apply, unless a rule in Part 63 or its practice direction provides otherwise ( CPR 63.2). There is no such rule. So, subject to the two statutory provisions discussed above, the general rules apply as much to patent actions as to any other action.

25. It follows that all the factors and matters set forth in CPR 44.3 apply to how the court should exercise its discretion as to costs. Prior to the CPR a party who was successful overall was not normally deprived of its costs of an issue it took unsuccessfully unless it has done so unreasonably, see Re Elgindata (No. 2) [1992] 1 WLR 1207. But since the CPR a more issue-by-issue approach is appropriate, see Summit Property v Pitmans [2001] EWCA Civ 2020, applied in a patent action, Stena v Irish Ferries [2003] EWCA Civ 214. Even before the CPR an issue-by-issue approach was, as an exception to the Elgindata approach, applied in patent actions because of the "large number of issues and the very extensive costs that can be incurred" per Aldous LJ in Rediffusion v Singer Link [1993] FSR 369 at 410.

26. An issue-by-issue approach is therefore one that should be applied so far as it reasonably can. On the other hand 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 factor to be taken into account as part of the conduct of the parties (see CPR 44 rule (3)(a) and (5)(b).

The impossibility of great precision

27. Before turning to this particular case I should say something about this. Although an issue-by-issue approach is likely to produce a "fairer" answer and is likely to make parties consider carefully before advancing or disputing a particular issue, it should not be thought that it is capable of achieving a "precise" answer. The estimation of costs, like that of valuation of property, is more of an art than a science. True it is that one can measure certain things (such as pages of witness statements or transcript devoted to a particular issue) but they can only be indicia to be taken into account. It would be dangerous to rely upon them as absolutes. Indeed brevity of a document, or a cross-examination, may be the result of great care: was it Hazlitt who apologised for the length of a letter, excusing himself on the grounds that he had not enough time to compose it?

28. It follows that there is no "precise" figure of costs which, in theory with perfect measurement tools, one could reach. The best that can be achieved is an estimate which is necessarily going to be somewhat crude".


Shorter statements of principle are to be found in Monsanto v Cargill [2007] EWHC 3113 at [6–8], Pumfrey J and Qualcomm v Nokia [2008] EWHC 277. In the latter Floyd J pithily put it thus:

"The correct approach is to ask oneself three questions. First of all, who has won; secondly has the party that has won lost on an issue which is suitably circumscribed to deprive that party of the costs of that issue and, thirdly, is the case a suitably exceptional one to justify making a costs order on that issue against the party who has won overall."


Neither side challenges any of this. Mr Howe QC for MMI sought to emphasise the...

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