Jane Lambert
Patents Court (Nicholas Caddick KC) Price and others v Flitcraft Ltd and others [2023] EWHC 695 (Pat) (3 April 2023)
I discussed Nicholas Caddick KC's judgment in Price and others v Flitcraft Ltd and others [2022] EWHC 3381 (Pat) (20 Dec 2022) in Patents, Copyright and Passing off - Price v Flitcraft Ltd on 16 Jan 2022 and A Patent Trial in Manchester at Last - Price v Flitcraft Ltd in IP Northwest on 17 Jan 2023, This was an action for patent and copyright infringement and passing off. The first claimant, Philip Price, did not win on anything but the second claimant, Supawall Ltd, did have some success with the patent claim though not with passing off. As it was not obvious which party was the overall winner a further hearing took place on 16 March 2023 to decide which of those parties should pay which costs. The judgment was handed down on 3 April 2023 (Price and others v Flitcraft Ltd and others [2023] EWHC 695 (Pat) (3 April 2023)).
As Mr Caddick KC noted, the court has a very wide discretion under CPR 44.2. The usual rule is for the unsuccessful party to pay the costs of the action but where a party has succeeded on some but not all issues it may be more just to allow or disallow the costs of particular issues. Such orders can lead to difficulty in assessment because it is not always easy for a costs judge to divide the costs between several issues. Another possibility is to order the unsuccessful party to pay a proportion of the overall costs. The deputy judge referred to that as "the broad brush approach."
It appears from paras [7] to [9] of Mr Caddick's judgment that all parties favoured the broad brush approach but disagreed on how the costs should be apportioned. The defendants sought 70% of their costs while the claimants sought in their written submissions a "high proportion" of the claimants' costs. In their oral submissions, the claimants argued that Mr Price should pay the costs where he had been unsuccessful but the defendants should pay 80% of Supawall's costs.
The deputy judge did not think that either party collectively had succeeded overall. He, therefore, decided to:
- apportion the costs of the action as a whole as best he could between the three causes of action, and then
- in relation to the patent claims, apportion the costs between Mr Price and Supawall.
He, therefore, apportioned 75% of the costs to the patent claim, 20% to the copyright claim and 5% to passing off because the patent claims were much more important in terms of value and time spent at trial. The copyright claim consumed less time and passing off hardly any time at all.
Following Mr Justice Henry Carr's approach in
L'Oréal S.A. v RN Ventures Ltd (no. 2) [2018] EWHC 391 (Ch), [2018] Bus LR 1149, [2018] WLR(D) 163 where a proprietor had succeeded but an exclusive licensee had failed, Mr Caddick decided to apportion the costs of the patent claim. In
L'Oréal, Mr Justice Henry Carr had ordered a 50-50 split. Mr Caddick decided to apportion the costs of the patent issues as to 60% to Mr Price's claim and 40% to Supawall's. He ordered Mr Price to pay the defendants' costs of his failed patent claim (that is to say, 60% of 75% of the defendant's total costs of the action). As that claim had been founded on a purported assignment to keep the patents out of the hands of Mr Price's trustee in bankruptcy, Mr Caddick ordered Mr Prince to pay those costs on an indemnity basis.
Supawall had been successful against the 1st, 3rd and 4th defendants. However, it abandoned its claim as regards one of the patents and lost in respect of one of the products. The judge also had to take account of Supawall's conduct in supporting Mr Price's claim in respect of which the judge had already ordered costs to be paid on an indemnity basis. Taking everything into account Mr Caddick ordered the 1st, 3rd and 4th defendants to pay Supawall 30% of 75% of the claimants' total costs of the action. He separately ordered Supawall to pay the defendants'' costs of and relating to the application to join the official receiver as a party on a standard basis.
Mr Caddick ordered Mr Price to pay the defendants' costs of the copyright claim which he had apportioned at 20% of their total costs on a standard basis. He ordered both claimants to pay the defendants' costs of the passing off claims being 5% of their overall costs on a standard basis. He indicated that he was minded to order a payment of costs on account in accordance with CPR44 (2) (8), As he did not consider that he had sufficient materials to make such an order before him, he directed the parties to make written submissions and file evidence as to what such payment should be.
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