Omnipharm Ltd v Merial (No 2)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin |
| Judgment Date | 29 January 2013 |
| Neutral Citation | [2013] EWCA Civ 10 |
| Court | Court of Appeal (Civil Division) |
| Date | 29 January 2013 |
| Docket Number | Case No: A3/2012/0423 |
[2013] EWCA Civ 10
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE FLOYD
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Richards
Lord Justice Kitchin
and
Mr Justice Peter Smith
Case No: A3/2012/0423
Henry Carr QC and Thomas Mitcheson (instructed by Fasken Martineau LLP) for the Claimant/Respondent
Andrew Waugh QC and Thomas Hinchliffe (instructed by Taylor Wessing LLP)
for the Defendant/Appellant
This is the judgment of the court.
The parties have been unable to agree a form of order in the light of our main judgment ( [2013] EWCA Civ 2) and have identified a series of issues upon which we have been asked to rule. We shall address them in turn.
What is the appropriate order to make in relation to the costs of the respondent's notice and cross-appeal?
Each side seeks its costs of these issues. Merial says that, alternatively, there should be no order in respect of these costs in so far as they were incurred in relation the 564 patent but it should have these costs in so far as they were incurred in relation to the 881 patent.
We have come to the conclusion that Omnipharm is entitled to these costs for the following reasons. First, we believe Omnipharm is properly characterised as the winner; it has achieved its commercial aim on this appeal. Merial's appeal against the judge's finding of insufficiency has failed.
Second, as recorded at [10] of our main judgment, Omnipharm's contentions in relation to obviousness were contingent. Omnipharm's case was that the judge's finding that the 564 patent was insufficient was consequent upon his reasons for rejecting the obviousness attack against the patent. Accordingly, if the judge had not found the patent insufficient, he ought to have found it invalid for obviousness. By parity of reasoning, he ought to have found the 881 patent invalid for obviousness too. It followed that once this court had formed the view that the appeal against the judge's finding of insufficiency of the 564 patent must be dismissed, the appeal on obviousness in relation to both patents fell away.
Third, Omnipharm says, with justification, that its stance has been consistent. It made clear it would only seek permission to cross-appeal in the event that Merial was granted permission to appeal. In its main skeleton on the appeal dated 30 April 2012 it argued the issue of obviousness in relation to the 564 patent and sought permission to cross-appeal in relation to the 881 patent. Then, in its reply skeleton dated 27 September 2012, it said in terms that it would only pursue its appeal in relation to the obviousness of either patent in the event that it was unsuccessful in upholding the decision of the judge that the 564 patent was insufficient. That was the position it maintained at the hearing of the appeal.
Fourth, as for insufficiency on the basis that the claims cover systemic administration, this was raised against the 564 patent and Omnipharm lost. But it was only a further reason for upholding the judge's finding of insufficiency and did not take up much time. It was also raised against the 881 patent, but only contingently.
Should the costs of the applications for maintenance of security subsequent to 8 February 2012 which Omnipharm has been ordered to pay, be expressed as a percentage deduction from Omnipharm's costs of the appeal or be left to a detailed separate assessment?
Merial says it has incurred at least £38,000 and...
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Actavis Group Ptc EHF and Another v Eli Lilly and Company
...order for the Patent to lack inventive step. As in several recent judgments, this is an important issue in the present case. 103 In Omnipharm Ltd v. Merial [2011] EWHC 3393, Floyd J (as he then was) summarised the position as follows: "i) There is but one statutory question: was the inventi......