Assessment – Patent – Infringement of patent

Liversidge v Owen Mumford Ltd and another company: Patents County Court: 20 September 2012

In the main judgment of the instant action (see [2012] All ER (D) 32 (Aug)), the court held that the defendant's product did not infringe the claimant's patent and that the patent was invalid. The court proceeded to deal with consequential orders, including costs. The two defendants to the claim had been separately represented in the case and had filed separate defences. The total costs were £36,000 in the case of the first defendant, and £38,000 in the case of the second defendant. A point of principle arose concerning the application of the capped costs system in the Patents County Court (PCC).

The defendants submitted that the claimant should be ordered to pay about £36,000 in costs to the first defendant and £38,000 to the second defendant, making a total of about £73,000. On behalf of the claimant, it was submitted that the court should not make that order because it would be a breach of the rules. The most the claimant should be ordered to pay was one set of PCC scale costs, which, pursuant to Civil Procedure Rule 44.42, were capped at £50,000.

The court ruled: CPR 45.42(1) protected the paying party and meant that the court could not award total costs of more that £50,000 in the PCC. The terms of CPR 45.42(1) were clear. Subject to the exceptions, the total costs a litigant could be ordered to pay in proceedings in the PCC was £50,000 (see [13], [19] of the judgment). Certainty about one's future costs exposure was a key part in the facilitating access to justice for small and medium-sized enterprise (see [14] of the judgment).

In the instant case, if the second defendant's submission were right then a claimant with two claims against a single defendant would be entitled to two cost caps. That was not correct and the submission would be rejected. An order that the claimant had to pay £73,000 would breach CPR 45.42(1) (see [13], [14] of the judgment). The defendants' submission on the main issue would be rejected (See [13], [14] of the judgment). Bristol-Myers Squibb Co v Baker Norton Pharmaceuticals Inc [2001] All ER (D) 330 (Mar) considered; Gimex International Groupe Import Export v Chill Bag Co Ltd [2012] All ER (D) 117 (Sep) considered.

James Abrahams (instructed by Field Fisher Waterhouse LLP) for the claimant; Anna Edwards-Stuart (instructed by Manches LLP) for the first defendant; Charlotte May (instructed by Herbert Smith LLP) for the second defendant.