Philip Price v Flitcraft Ltd
| Jurisdiction | England & Wales |
| Judge | Nicholas Caddick |
| Judgment Date | 03 April 2023 |
| Neutral Citation | [2023] EWHC 695 (Pat) |
| Docket Number | Claim No: IL-2022-MAN-000001 |
| Court | Chancery Division (Patents Court) |
[2023] EWHC 695 (Pat)
Mr Nicholas Caddick K.C.
(sitting as a Deputy High Court Judge)
Claim No: IL-2022-MAN-000001
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Stephen Grime K.C. and Jon King (instructed by RHF Solicitors) for the Claimants
Giles Maynard-Connor K.C. (instructed by Primas Law Solicitors) for the Defendants
Hearing date: 16 th March 2023
JUDGMENT ON COSTS
Nicholas Caddick K.C. (sitting as a Deputy High Court Judge):
In this judgment, I deal with the issue of costs in relation to the above action, in the light of my findings at [2022] EWHC 3381 (Pat).
CPR r.44.2
Under CPR r.44.2(1) the court has a 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. However, as r.44.2(2) makes clear, the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party, although the court may make a different order.
In deciding what order (if any) to make about costs, the court must have regard to all the circumstances, including (inter alia) the conduct of all the parties and whether a party has succeeded on part of its case, even if that party has not been wholly successful (see r.44.2(4)). In this regard, r.44.2(5) provides that the conduct of the parties includes (a) conduct before, as well as during, the proceedings, (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 its case or a particular allegation or issue; and (d) whether a claimant who has succeeded in the claim, in whole or in part, exaggerated its claim.
Having considered these matters, r.44.2(6) provides that the costs orders which the court may make 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; (d) costs incurred before proceedings have begun; (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. However, r.44.2(7) qualifies this, saying that, before the court considers making an order under sub-paragraph (6)(f), it must first consider whether it is practicable to make an order under sub-paragraph (6)(a) or (c) instead.
Accordingly, where a party has succeeded overall but has been unsuccessful on a specific issue or issues, the court has power to make an issue based costs order (i.e. allowing or disallowing the costs of particular issues). However, such orders can lead to considerable difficulties in an assessment as it may not be easy for a costs judge to divide the costs between the various issues. In such cases, a “broad brush” approach, whereby the trial judge makes an order for a proportion of the overall costs to be payable by the unsuccessful party, can be preferable to an issue based order.
The issues at trial
In the present case,
a. The First Claimant (“Mr Price”) made claims for (i) patent infringement on the basis of his claim to be the proprietor of the patents in issue and (ii) copyright infringement based on his claim to be the owner of copyright in certain works. These claims failed because he failed to establish that he had the requisite title.
b. The Second Claimant (“Supawall”) made a claim for patent infringement on the basis of its claim to be the exclusive licensee of the patents. It succeeded in this claim as regards the Defendants' Old Injectawall Products but failed as regards the Defendants' New Injectawall Products.
c. The Claimants together made the passing off claim, which failed.
The parties' positions
On the basis of these findings, Mr Maynard-Connor submitted that it would be very difficult (indeed, he said, ridiculous) for a costs judge to have to make an assessment by reference to specific issues. On this basis, having analysed matters such as conduct and the degrees of success on specific issues as required under r.44.2, he invited me to order the Claimants (collectively) to pay 70% of the costs of the Defendants (collectively). He was, in effect, asking me to look at the case very much in the round.
Mr Grime in his written submissions took a similar approach in that he also invited me to look at the case in the round. However, his conclusion was that, applying r.44.2, the correct order should be that the Defendants (collectively) should pay a high proportion of the costs of the Claimants (collectively).
As I understand it, Mr Grime, in his oral submissions, suggested a different approach. He argued that, whilst Mr Price should pay the costs of the issues on which he had failed, the Defendants should pay 80% of Supawall's costs of the other issues, the discount reflecting issues on which Supawall had lost (including passing off).
Apportionment between the claims
An approach in the round has considerable attractions in terms of simplicity and in reducing the issues for a costs judge carrying out a costs assessment. However, given the findings summarised in paragraph 6 above, I do not think that it is possible to say that either the Claimants collectively or the Defendants collectively have succeeded. It is true that the Claimants collectively brought the passing off action on which they failed. However, the other claims were not brought collectively. Whilst Mr Price's patent claim had elements that were common to Supawall's patent claim, the two claims were separate claims and Mr Price's claim failed whereas Supawall's succeeded. The copyright claims were brought by Mr Price alone and failed.
Given this, and using the broad brush approach that both parties accept is necessary and desirable, it seems to me that I should (i) apportion the costs of the action as a whole as best I can between the three heads of claim (patent, copyright and passing off) and then (ii) in relation to the patent claims, apportion the costs between Mr Price and Supawall. In this regard, it seems better to take a broad brush approach based on what I saw and heard in the course of the trial, rather than to leave this apportionment to a costs judge.
On this basis, my starting point is that the parties' overall costs of the claim can be apportioned 75% as to the patent claims, 20% as to the copyright claims and 5% as to the passing off claims. I say this because the patent claims were by far the most important, both in terms of value and in terms of the time spent on them during the trial. The copyright claims were of much less importance at trial and the passing off claim occupied very little time.
The Patent claims
Dealing first with the costs of the patent claims.
As I have mentioned, there were two separate claims, one by Mr Price as proprietor, the other by Supawall as exclusive licensee and, it seems to me, that I have to deal with those claims separately not least because Mr Price's claim failed whereas Supawall's claim succeeded in part. Further, I should not make an order that would result in Mr Price paying the Defendants' costs of unsuccessfully defending Supawall's claim. Nor do I think that it would be fair to make an order that the costs of the two patent claims be set off against each other or that there should be no order as to costs of these claims.
On this basis, I will apportion the overall patent costs as between Mr Price's claim and Supawall's claim. In taking this approach, I note that in L'Oréal S.A. v RN Ventures Ltd (no. 2) [2018] EWHC 391 (Ch), where patent claims were made (successfully) by a proprietor and (unsuccessfully) by an exclusive licensee, Henry Carr J started by apportioning the costs between those claims on a 50/50 basis (see at [21]).
In the present case, I do not think a 50/50 split would be correct. Clearly, there were elements that were common to both Mr Price's claim and Supawall's claim (i.e. the need to establish that Mr Price was the inventor and that he had not held the patents on trust for MTFP and to show that the Defendants' actions constituted an infringement). However, there were other and very substantial...
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