Smithkline Beecham Plc and Another v Apotex Europe Ltd and others: CA 16 Dec 2004

Following its earlier main judgment in the case, the court made use of the CPR to award costs on an appeal. The overall result had been that the patent was found to be valid but not infringed. There had been huge costs. Smithkline sought costs on an indemnity basis, saying the court had certified the patent valid at first instance, and that the appeal was a subsequent proceeding when indemnity costs ought to be ordered under the 1977 Act. Apotex said that the appeal was part of the same proceedings. That was correct. Nevertheless the CPR also applied, and the court used rule 44.3 to take the costs questions on an issue by issue basis.

Lord Justice Ward Lady Justice Arden Lord Justice Jacob
[2004] EWCA Civ 1703, Times 12-Jan-2005, [2005] FSR 24, [2005] 2 Costs LR 293
Patents Act 1977 65, Civil Procedure Rules
England and Wales
CitedSmithkline Beecham Plc v Apotex Europe Limited CA 29-Nov-2004
. .
CitedRe Elgindata Ltd (2) CA 15-Jul-1992
A successful plaintiff who had not been shown to have behaved improperly or unreasonably was not to have his costs reduced or be ordered to pay any part of his opponents costs for having pursued some unsuccessful points. Nourse LJ said that ‘(i) . .
CitedStena Rederi Aktiebolag, Stena Line Aktiebolag v Irish Ferries Ltd. CA 13-Feb-2003
. .
CitedEnglish v Emery Reimbold and Strick Ltd; etc, (Practice Note) CA 30-Apr-2002
Judge’s Reasons Must Show How Reached
In each case appeals were made, following Flannery, complaining of a lack of reasons given by the judge for his decision.
Held: Human Rights jurisprudence required judges to put parties into a position where they could understand how the . .
CitedRediffusion v Singer Link CA 1993
In Patent infringement proceedings it may be proper for a court to assess costs on an issue by issue basis because of the ‘large number of issues and the very extensive costs that can be incurred.’ . .
CitedSummit Property Ltd v Pitmans CA 19-Nov-2001
Whilst surprising, it was possible that a successful claimant could be ordered to pay the majority of a defendant’s costs. Under the Civil Procedure rules, it was proper to order costs on an issue by issue basis. . .

Cited by:
CitedSmithkline Beecham Plc v Apotex Europe Limited CA 29-Nov-2004
. .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, Costs, Civil Procedure Rules

Leading Case

Updated: 01 November 2021; Ref: scu.220352