Hot on the heels of Friday’s post regarding the Gimex case we have another PCC costs capping case, that of Barry Liversidge and (1) Owen Mumford Limited; and (2) Abbott Laboratories Limited.
In the main judgment Birss ruled that the defendants’ product did not infringe Mr Liversidge’s patent and in fact that the aforementioned patent was invalid. When it came to an order on costs the parties were in dispute with how to deal with the PCC’s cost cap. Having been summarily assessed in the usual way and taking into account the staged PCC costs the total figures were £36k for Owen Mumford and £38k for Abbott. The defendants’, unsurprisingly, argued that the £50k cost cap should apply to each of their legal fees. However Mr Liversidge’s representatives argued that this this would mean a total outlay of some £74k i.e. way above the £50k cost cap. Mr Liversidge’s representatives further suggested that the purpose of the cost cap was to facilitate access to justice for smaller and medium sized enterprises by providing certainty to litigants.
Birss first considered whether or not it was proper for the defendants’ to have been separately represented in the matter, deciding that it was conceivable that Owen Mumford may have infringed even if Abbott’s had not. Furthermore Birss made the point that the parties’ had acted properly in instructing a single joint expert, being jointly represented at the CMC, providing a joint statement as to the patent’s obviousness and dealing with points at trial by way of a single set of submissions.
By reference to his own judgment in Gimex and Pt 45 CPR Birss ruled that:
the terms of r45.42(1) are clear. Subject to the exceptions which do not apply, the total costs a litigant can be ordered to pay in proceedings in the Patents County Court is £50,000. An order that Mr Liversidge had to pay £73,000 would breach that rule. ..The competing factors are an emphasis on a compensatory approach to costs on the one side, which is what the defendants emphasise here, and certainty for litigators in the PCC, which is what the claimant emphasises. For the reasons I gave in Gimex, I think the balance of these factors comes down in favour of certainty when one takes into account the purpose for which the PCC was set up. A certainty about one’s future costs exposure is a key part in facilitating access to justice for SMEs.
One point raised by Ms Edwards-Stuart, representing Owen Mumford, is that if the costs cap is set as this then there is the concern that a claimant would simply add in parties to the claim in order to take unfair advantage of the costs cap when in actual fact the defendants ought to be in separate proceedings. Birrs’ view on this is that such matters should be dealt with at the CMC and that one option would be to allow the claim to proceed against one defendant only and stay the remaining actions pending trial.
Along with the PCC Small Claims track, which comes into force today, the PCC’s recent costs decisions are encouraging for SMEs seeking to enforce their IP. It will certainly be interesting to see how these recent rulings affect larger corporations’ handling of PCC claims.