Nikken Kosakusho Works v Pioneer Trading Company
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Lewison,MR. JUSTICE LEWISON,‘MR. JUSTICE LEWISON’ |
| Judgment Date | 19 October 2004 |
| Neutral Citation | [2003] EWHC 3261 (Pat),[2003] EWHC 2006 (Pat),[2004] EWHC 2426 (Pat) |
| Docket Number | Case No: HC03C01963,Case No: HC 03C01963 |
| Date | 19 October 2004 |
| Court | Chancery Division (Patents Court) |
[2003] EWHC 3261 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr. Justice Lewison
Case No: HC03C01963
MR. MICHAEL TAPPIN (instructed by DLA) for the Respondent/Claimant
MR. BENET BRANDRETH (instructed by FIELD FISHER WATERHOUSE) for the Applicant/Defendant.
Approved Judgment
1. The claimants in this case applied for an interim injunction before Jacob J. He refused to grant the injunction on the ground that on the materials available to him, there was no arguable case although he did express the view that a case might be produced in the future.
2. The claimants, however, have recently discontinued that part of the claim which alleges infringement of the patent. There are other issues relating to the validity of the patent which have still to be determined by the court. In parallel with the proceedings in this jurisdiction there are other proceedings between the claimants and the defendants, both in Germany and in the United States of America.
3. Following the discontinuance of the claim for patent infringement, the defendants asked the claimants to acknowledge that the mill chuck which they were manufacturing did not infringe the claimants’ patent. That acknowledgment was refused. Consequently, the defendants have applied for permission to amend their counterclaim to seek a declaration under section 71 of the Patents Act 1977 that their activities do not infringe the patent.
4. The application for permission to amend is resisted. The grounds upon which the application is resisted are really two-fold. First of all, the claimants say that they have offered binding undertakings not to sue either the defendants or its customers or suppliers alleging infringement of the patent and have also offered to undertake not to threaten to sue. Consequently, the claimants say, everything that can legitimately be achieved within the United Kingdom by a declaration under section 71 has been offered by way of undertaking.
5. Second, and perhaps intertwined with the offer, the claimants say that since they have offered the defendants everything that is legitimately achievable in commercial terms in the United Kingdom, there must be other reasons which are motivating the defendants to apply for permission to amend. That motivation, they suggest, is a wish on the part of the defendants to use any declaration which they might obtain for collateral purposes in the proceedings either in Germany or the United States or both.
6. In my judgment there is a dispute between the claimants and the defendants about the defendants’ legal entitlement to manufacture and sell their machine chuck. Whether they have the right to do that or not is a legal question. It is part of their legal rights and, on the face of it, they are entitled to have their legal rights determined by the court. The claimants’ fear that a declaration will be used by the defendants for collateral purposes presupposes that the defendants will obtain such a declaration. It is, of course, the claimants’ case that they will not because they are indeed infringing. But that, as it seems to me, is not a reason for refusing the defendants an opportunity of establishing that they are not infringing.
7. So far as additional expense is concerned, there is already a trial in prospect but even if there were to be additional expense, which is unjustified, the court has ample power under the rules to disallow costs if, at trial, the judge forms the view that costs were unnecessarily incurred.
8. In my judgment this is an application which ought to be allowed and I will therefore allow it.
MR. BRANDRETH: My Lord, we then come to the question of costs. Given that the defendant has been successful in its application, it seeks its costs.
Do you have a schedule?
MR. BRANDRETH: I do, my Lord. I am handing up to you at the same time the costs schedule supplied by our opponents because I think it is instructive to set our costs request in context. (Costs schedules handed to his Lordship)
Yes.
MR. BRANDRETH: There are two differences between the costs schedule submitted by DLA and that submitted by my solicitors. The first is that, of course, we were the applicants and therefore had the responsibility of preparing the papers for the application.
Yes .
MR. BRANDRETH: The second is that DLA's statement of costs do not include counsel's fees, my learned friend's fees.
Yes.
MR. BRANDRETH: Nonetheless, my Lord, despite the fact that it is our application and our costs schedule ——.
Yes, they have spent twice as much as you have?
MR. BRANDRETH: Indeed. Indeed apparently 9.7 hours have been spent by Mr. Tulley, the partner in charge, on documents, my Lord, although the witness statement is in fact from Mr. Chatterton.
In any event, my Lord, set alongside those costs, our costs of 5,060.50 appear entirely reasonable. We had to prepare a witness statement. We had to prepare the application. In all, we seek the entirety of our costs.
Yes.
MR. TAPPIN: I am hard pushed to say much in response given the relative figures. I obviously cannot resist that costs should be awarded against us.
No, indeed.
MR. TAPPIN: It is a matter for you to assess what you believe to be a reasonable figure for this application ——.
Yes.
MR. TAPPIN: ——based on what you have seen.
Absolutely.
MR. TAPPIN: You have seen the way it has been broken down. I really cannot say that they should have spent much less time ——.
No, indeed.
MR. TAPPIN: ——and how much time we have spent. I would say that we have spent more time talking to our clients about what to do than they seem to have done.
Yes. I will order the claimants to pay the defendants costs of the application which I assess at 5,000.
MR. TAPPIN: Just so that we are clear, is that inclusive or exclusive of VAT?
They have not claimed VAT.
MR. TAPPIN: They say “plus VAT”.
I assume you are VAT registered.
MR. BRANDRETH: Indeed.
In which case you are not entitled to have VAT.
MR. TAPPIN: It comes and goes as it were. So 5,000.
5,000, yes.
MR. TAPPIN: My learned friend points out, quite rightly, that the order that he seeks in his application notice does not deal with the issue of costs of the amendments.
That is true. The amendment will be allowed on the usual basis that any costs thrown away by the amendment will be the claimants in any event.
MR. BRANDRETH: Costs of and occasioned by ——.
Yes.
MR. BRANDRETH: Costs of and occasioned by the amendment to be ours in any event?
Costs thrown away. If you put in a defence to the amended counterclaim, I am not saying that those costs are to be yours in any event; it will depend on who wins the counterclaim.
MR. BRANDRETH: Yes.
So it is only costs thrown away by the amendment.
MR. TAPPIN: My Lord, I expect it is a hypothetical situation anyway because the costs thrown away are acceptable.
I am sorry?
MR. TAPPIN: Costs thrown away would be acceptable to the defendants.
Yes, costs thrown away by the amendment to be the claimants in any event.
Is that everything now, gentlemen?
MR. BRANDRETH: My Lord, yes.
MR. TAPPIN: My Lord, yes.
Thank you very much.
[2004] EWHC 2426 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr. Justice Mann
Case No: HC 03C01963
MR. J. BALDWIN Q.C. and MR. M. TAPPIN (instructed by Messrs. DLA, Leeds) for the Claimants)
MR. I. PURVIS and MR. B. BRANDRETH (instructed by Messrs. Field Fisher Waterhouse) for the Defendants.
APPROVED JUDGMENT
Mr. Justice Mann
On 8 October, 2004 I handed down judgment in this case. I ruled that for the reasons given, the Claimant's patent was invalid and should be revoked. Costs were dealt with at that time. On that occasion, Mr. Baldwin, Q.C. for Nikken invited me to stay the revocation order so that his client could make an application to amend the patent to introduce what he said would be validating amendments. He informed me in general terms of what amendments would be proposed, but did not have them formulated. Mr. Purvis, for Pioneer, opposed that step. Both parties seemed to wish me to deal with the matter at that time, without the benefit of citation from the authorities, or full argument on the precise form of the proposed amendment, but, I declined to do so, and adjourned the matter until today so that it could be properly argued with the benefit of full skeletons directed to the point.
The Nature of the Amendments.
Nikken have now made a formal application to introduce two amendments. The amendments can be simply stated: at paragraph 7 of my first Judgment I set out Claim 1 of the...
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