Wobben Properties GmbH v Siemens Plc and Others
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Birss |
| Judgment Date | 16 September 2015 |
| Neutral Citation | [2015] EWHC 2863 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 16 September 2015 |
| Docket Number | Case No: HP-2013-000014 |
[2015] EWHC 2863 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Justice Birss
Case No: HP-2013-000014
Andrew Lykiardopoulos QC (instructed by Powell Gilbert LLP) appeared for the Claimant
Justin Turner QC and James Whyte (instructed by Bristow LLP) appeared for the Defendants
The first task I have to perform this morning, which is the return day of deciding the consequentials arising from my judgment in this patent case, which is [2015] EWHC 2114 (Pat), is to deal with the incidence of costs.
The parties have approached this with a considerable degree of common ground. It is common ground that the overall winner is the defendants, whom I will refer to compendiously as Siemens, and it is common ground that the claimant Wobben should pay a proportion of Siemens' costs. Siemens' submission is that that proportion should be 91% of Siemens' costs. Wobben's submission is that that proportion should be approximately 70% of Siemens' costs. The question I have to decide is which of those two figures or somewhere in between is the right one.
The basis on which this is argued is the familiar issues-based approach to costs which is taken routinely in patent cases, and in many other cases. The issue focuses on the various different points and in particular, as always in a case like this, focuses on the points which were taken by the winning party but which the winning party did not succeed on. Patent cases are notorious for the fact that in reality whichever side wins has generally taken one or two points which it will not have succeeded on.
In this case the four matters that I need to deal with are Frantz, Shozaburo, insufficiency and novelty over Bossanyi. These references can be understood by referring back to my main judgment and I will not elaborate in any great detail.
Frantz was a piece of prior art which had been pleaded as rendering the claims both lacking novelty and being obvious. Ultimately it was dropped by Siemens during the course of the trial and it is common ground that some deduction should be made from Siemens' costs. Siemens submit that the deduction should be 1%. What is not common ground is the actual cost attributable to Frantz and of more significance is the point that Wobben submit that not only should I make a deduction from Siemens' costs, but I should also notionally make a further deduction from Siemens' costs to account for the fact that I should, in effect, order Siemens to pay Wobben's costs of Frantz. I should say it is also common ground, as is commonly done, that rather than making an order which Siemens would actually have to pay Wobben's costs relating to Frantz if I were satisfied that that was appropriate, necessitating a separate costs assessment, both parties agree that the fair and appropriate way to do that is to make a further percentage deduction from Siemens' costs reflecting the fair proportion of Siemens' costs which would account for that.
The parties are also agreed that, given that the amounts of costs spent by Siemens and Wobben are different, there is, if you like, a conversion factor where one can take a proportion of one side's costs and convert it into a proportion of the other side's costs. These are all matters which are common ground.
The correct approach to deciding this issue was discussed in the judgment of Arnold J in Hospira UK Ltd v Novartis AG [2013] EWHC 886 (Pat), and I will quote paragraphs 2, 3 and 4 of his judgment.
"2. The principles to be applied in these circumstances are familiar subject to one small qualification. The court generally approaches the matter by asking itself three questions: first, who has won; secondly, has the winning party lost on an issue which is suitably circumscribed so as to deprive that party of the costs of that issue; and thirdly, are the circumstances (as it is sometimes put) suitably exceptional to justify the making of a costs order on that issue against the party that has won overall.
3. I say sometimes put because I think a review of decisions of the Patents Court on costs issues over the past five years would show that that particular phraseology is often, but not always, employed. Sometimes it has been put in slightly different ways, notably by myself.
4. The origin of the phrase 'suitably exceptional' is the judgment of Longmore J in Summit Property v Pitmans (A Firm) [2001] EWCA Civ 2020. As has been pointed out recently by Davis LJ in F&C Alternative Investments (Holdings) Ltd v Barthelemy [2012] EWCA Civ 843 at [46]–[49], it is apparent that Longmore LJ was not intending when using the words 'suitably exceptional' in the particular circumstances in which he did to impose a specific requirement of exceptionality. The question rather is one of whether it is appropriate in all the circumstances of the individual case not merely to deprive the winning party of its costs on an issue in relation to which it has lost, but also to require it to pay the other side's costs."
The significance of the point made by Arnold J in paragraph 4 is that the phrase "suitably exceptional" for deciding whether to go further and notionally have the winning party pay a proportion of the losing party's costs, which is a phrase used in the judgment of Floyd J Nokia v Qualcomm [2008] EWHC 777, is that it is not a criterion which is supposed to impose a specific requirement of exceptionality. I respectfully agree with the judgment of Arnold J. It seems to me, as he said, that the question is one of whether it is appropriate in all the circumstances of the individual case not merely to deprive the winning party of its costs on an issue in relation to which to which it has lost, but to require it to pay the other side's costs. It is notorious that a test of that kind will be difficult to predict its outcome in advance. Nevertheless, I am satisfied that it is the appropriate way of dealing with costs under the CPR today.
The reasons why Wobben submit that I should go further and deprive Siemens of the costs relating to Frantz are these. The point was raised as an attack on validity. Siemens then made a conditional application to amend the claims to insert a feature, the feature being that the wind turbine in question produced electricity, the point being that the Frantz document describes a wind turbine or a windmill (I am not making a specific finding on the meaning of the word "turbine", which I know was an issue) which does not actually generating electricity as described. There was an argument about whether that amendment was added matter, but by May the patentee had produced an alternative amendment, which was not said to add matter by Siemens, which would be something which distinguished the claim over Frantz because it required the windmill or wind turbine to produce electricity connected to an electrical network.
Nevertheless, the point Wobben make is that Siemens also had an argument, which was elaborated in the evidence, that even if the claims were novel over Frantz, they lacked an inventive step. The argument was about whether it would be obvious to connect up the Frantz windmill in order to generate electricity in electrical network.
When the matter came to trial, Wobben altered its position on amendment and made its electricity generating amendment unconditional amendment, which meant that I did not have to decide whether to permit that amendment, except in the most limited sense. The amendment is there in Annex 1 of the main judgment.
After a period of reflection, which I accept a party must be entitled to, Mr. Turner submits his clients then decided to drop Frantz. Accordingly, he submits his clients cannot be accused of behaving in an improper way and therefore should not be notionally required to pay Wobben's costs.
I am quite satisfied that it cannot be said that anything Siemens...
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