Verathon Medical (canada) Ulc V. Aircraft Medical Limited
| Jurisdiction | Scotland |
| Judge | Lord Hodge |
| Neutral Citation | [2011] CSOH 60 |
| Court | Court of Session |
| Published date | 30 March 2011 |
| Year | 2011 |
| Date | 30 March 2011 |
| Docket Number | A680/07 |
| OUTER HOUSE, COURT OF SESSION [2011] CSOH 60 | |
| A680/07 | OPINION OF LORD HODGE in the cause VERATHON MEDICAL (CANADA) ULC Pursuer; against AIRCRAFT MEDICAL LIMITED Defender: ________________ |
Pursuer: Currie QC et Higgins; Maclay Murray & Spens LLP
Defender: Lake QC; DLA Piper Scotland LLP
30 March 2011
[1] On 1 February 2011 I issued an opinion ([2011] CSOH 19), which has given rise to these motions for expenses. In that opinion I refused the pursuers' application to amend their patent, assoilzied the pursuers from the conclusions of the counterclaim in which the defenders sought to challenge the validity of the pursuers' patent, and granted the defenders absolvitor in the action for infringement of the pursuers' patent.
[2] The pursuers sought (i) the expenses of the counterclaim, (ii) the certification as skilled witnesses of Dr Ron Walls, Dr Christopher Frerk and Professor Colin Roberts, each of whom gave evidence at the proof, and (iii) an award of an additional fee under Rule of Court 42.14(3) having regard to each of the factors specified in parts (a)-(g) of that Rule.
[3] The defenders opposed that motion. If the court were to award expenses to the pursuers, the defenders opposed the award of an additional fee only to the extent that regard should not be had to factors (d) and (g). Factor (d) of rule 42.14(3) is "the place and circumstances of the cause or in which the work of the solicitor in preparation for, and conduct of, the cause has been carried out." Factor (g) is "the steps taken with a view to settling the cause, limiting the matters in dispute or limiting the scope of any hearing."
[4] The defenders sought (i) the expenses of the principal action, (ii) the expenses of the counterclaim, (iii) the expenses of the pursuers' minute under Rule of Court 55.5 to amend their patent, (iv) the certification as skilled witnesses of Dr John Henderson, Professor Peter Denyer and Dr Ian Muirhead, and (v) the award of an additional fee having regard to each of the factors specified in parts (a) to (g) of Rule of Court 42.14(3).
[5] The pursuers did not oppose the defenders' motion in relation to items (i), (iii) and (iv) of the preceding paragraph. They opposed the defenders' application for the expenses of the counterclaim (item (ii)) and their application for an additional fee, (item (v)) but only in relation to factors (d) and (g).
[6] The main issue between the parties was, as Mr Currie stated, the expenses of the counterclaim.
(I) The expenses of the counterclaim
[7] In his submission in support of his motion, Mr Currie made six points. First, he argued that the counterclaim was a distinct ground of action. Secondly, he pointed out that the defenders had tabled twenty two pieces of prior art in relation to laryngoscopes and eight pieces of prior art in relation to cameras in support of their challenge to the validity of the pursuers' patent. The pursuers had had to address each of these pieces of prior art in their pleadings, their expert reports and their evidence. His instructing solicitors had examined the transcripts and had estimated that about 40% of the evidence had been common to the issues of infringement and validity, 37.5% had related to validity alone and 7% to infringement alone. The balance concerned the Glidescope and the applications to amend.
[8] Thirdly, notwithstanding the extensive citation of prior art, the defenders in their final submissions had relied on only eight pieces of prior art in their challenge to the validity of the pursuers' patent. This, he submitted, demonstrated that much of the cited prior art had no bearing on the case.
[9] Fourthly, on the defenders' construction of the pursuers' patent they failed to prove its invalidity. The onus was on them to do so. Fifthly, he submitted that it was not relevant that the court had expressed the view that if the construction of the patent which the defenders opposed had been correct, it would have been minded to hold the patent invalid because of the Wood patent and the AVIL device. He pointed out that the defenders had asserted that other prior art, including the Bullard laryngoscope and other devices with anatomically shaped blades, invalidated the pursuers' patent, even on their interpretation of its scope.
[10] Sixthly, he submitted that the court should have regard to the wider context of the defenders' opposition to the pursuers' patent. They had opposed the pursuers' patent before the European Patent Office (EPO) in February 2006. After the EPO amended the patent in October 2007, both sides had appealed that decision. The EPO Board of Appeal upheld the amended patent in May 2010. Thus in the face of these failed challenges, the defenders chose again to challenge the pursuers' patent in these Scottish proceedings.
[11] In the circumstances he submitted that there was no reason to depart from what he described as the "rough and ready" rule that expenses follow success. It would, he argued, be unfair to award the defenders the expenses of the counterclaim. He suggested that one possibility to reflect the context of the challenge in...
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The Scottish Ministers V. Omar Sharif
...in which it should be departed from is a decision of Lord Hodge in the case of Verathon Medical (Canada) ULC v Aircraft Medical Limited [2011] CSOH 60. In that case, which was a patent infringement action, there was what could be described as mixed success. Lord Hodge refused the pursuers' ......