Costs order knocks spots off pimple patent

Pimpled ... but not
the finished product

PatLit thanks Richard Kempner (Kempner & Partners) for drawing its attention to his firm's note on a recent Patents Court for England and Wales decision, Select Healthcare v Cromptons [2010] EWHC 3055 (Pat).  In this case Mr Justice Mann emphasised how important it is for a claimant to provide proper details of its claim, in order to allow a defendant to understand the case against it.  In this action the claim was for infringement of a patent relating to a patient slide sheet with a “pimpled finish”. The defendant asked for clarification, including details of what was meant by “pimpled finish”, and where the pimples were alleged to be found on the defendant’s product. Following a refusal by the claimant to provide any such information, the defendant applied to the court for an “unless order” (that unless the requested information was provided, the claim should be struck out).

Mann J did not strike out the claim, but he did order the claimant to provide a statement of case and an expert report explaining it.  Most unusually the judge also awarded the defendant costs on the higher, indemnity, basis, on the ground that the claimant had wilfully refused to disclose its case until compelled to do so at the hearing.  Said the judge

"13. In my view this is a case in which the claimants have given every impression of playing games in this action. I do not need to make a finding as to whether are not they actually were playing games but they have certainly given that very strong impression. The claimants have also given the very strong impression that they do not know what their case is and they have been reluctant to be pinned down, and have demonstrated a tendency from time to time to change their case.

14. There is nothing inherently wrong with changing a case; it happens all the time in these courts. When it happens in the manner in which it happened in this case and with decreasing rather than increasing clarity as to what the case is, then that is a practice which must be stopped. It has been said more than once, particularly in the context of patent litigation, that it must be conducted efficiently, properly and with a proper regard to costs. All litigation must be conducted with a proper regard to the need to disclose what a case is so that the other party can understand it and meet it.

15. In this respect the claimant has, in my view, fallen lamentably short of the standards required of patent litigants in this court. I am quite satisfied that the claimant has brought this application on itself and has brought itself close to having its claim struck out and, therefore, as a matter of principle the claimant ought to pay the costs of this application.

16. I also have no doubt that the claimants should pay the costs of this application on an indemnity basis. The wilful, as it seems to me, refusal to disclose its case until asked point blank by a judge of this Division what the case was and their reliance on totally misconceived technicalities arising out of the patent, and a reliance on an assertion that the defendant really ought to ask the right questions, are, in my view, rather remarkable in the context of the litigation that I have seen. It is simply not the way in which litigation ought to be conducted and is plainly, in my view, within the category of conduct which falls to be penalized by an award of indemnity costs. I therefore order that the claimant pay the costs of this application on an indemnity basis".

Claimants always face the challenge of having to provide sufficient information to comply with the Civil Procedure Rules while striving as far as possible to “keep one’s powder dry” as to certain aspects of a claim. A claimant is not required to disclose full details of its entire case before trial, but it is clear in this case that the judge believed the claimant had overstepped the mark, penalising it by ordering indemnity costs.  The moral of the story, says Kempner, is that a claimant, facing a request for clarification and/or further information from the defendant, must ensure it has provided proper details of its claim before it can safely decline to provide the requested clarification and/or further information.