Posts Tagged Costs
Eli Lilly v Genentech: When does a patent infringement case turn into questions of validity? – and its impact on cost findings.
I explained the issue in  EWHC 3104 (Pat) Eli Lily v Genentech in my posting on Chugai v UCB. A defendant in a patent infringement case often tries to make the case that the suit is about patent invalidity really: for this obliges the court per GAT v Luk to refer (only the) invalidity issue to the court with exclusive jurisdiction under Article 24(4) Brussels I Recast.
Here, Eli Lily seek a declaration of non infringement of a bundle of European patents held by Genentech, a US-incorporated firm.
Birss J in the case summarises all relevant precedent, including Chugai, to reach the conclusion that the suit can stay in the UK.
Of note is his holding on costs. The English courts do not just review whether the case is currently about validity but also what the likelihood is that it will become one on validity. For if it does later on, Birss J suggests ‘this entire exercise will have been something of a charade‘ (at 84). (Which is not quite the case: even if the validity issue needs to be temporarily outsourced to different courts, the infringement issue may later return to the courts of England).
On this point, Eli Lilly refuse to disclose whether they may seek a ruling on the validity of the patents: they would rather wait to see Genentech’s defence. Not an unacceptable position, but one, High Court does warn, which will have an impact on costs. At 87: ‘I am satisfied that these unusual circumstances mean that it would not be fair to pre-empt what each party may decide to do. There are sufficient uncertainties that the right thing to do is wait and see what happens. However in my firm but necessarily provisional view that wait should be at Lilly’s risk as to costs. If Genentech does counterclaim for infringement, and validity of the non-UK patents is put in issue (here or abroad) in response, then it is very likely that Lilly should bear the whole costs of this application even if they win it in its form today.‘
That latter point is interesting. It’s twice now this week that judgments come to my attention where jurisdictional considerations are clothed in costs implications.
(Handbook of ) European Private International Law, 2nd ed. 2016, Chapter 2, Heading 220.127.116.11.
Aarhus and costs recovery. The impact of the EIA Directive and the Convention post consent in Alyson Austin
Reminiscent of an earlier posting on costs, the High Court recently had to consider the impact of the EIA Directive on cost orders. Mrs Austin lives close to an opencast mining and reclamation site in Wales. She complains of noise from heavy machinery and dust, affecting her home and preventing her family from sleeping. Planning consent had been granted in 2005. Mrs Austin’s current action is based on private nuisance proceedings, based inter alia on the allegation that some of the conditions attached to the consent have not been complied with. The claim therefore is related to post-EIA compliance and the order sought by Mrs Austin is one to limit her costs.
Milwyn Jarman QC held – upon assist by James Pereira and Jack Connah) – that direct applicability of the Aarhus Convention in the UK is limited to those parts which have been incorporated in the EU’s EIA Directive [‘otherwise, it remains a matter to be taken into account (…) in resolving ambiguities or in exercising discretions’ – a narrow view perhaps, albeit supported by UK precedent, on the impact of the Convention in the UK’s legal order] and that the Directive itself, as far as its impact on costs is concerned, sees upon judicial review proceedings in the process of EIA-based consent only, not an action in private nuisance post such consent.
Leave to appeal was granted and shall be heard end of June. The Aarhus Committee itself is also considering the issue and will proceed with findings in 2014.
This issue has exercised various courts and officials in the UK for some time. The 2014 developments are eagerly awaited.
Is justice what you can afford to be done? ECJ turns to Aarhus Convention to apply ‘not prohibitively expensive’ in the EIA Directive.
In Edwards, the European Court of Justice (‘ECJ’) turned to the 1998 Aarhus Convention on Access to Information, Public Participation in Decision-making and Access to Justice in Environmental Matters, to interpret the provision ‘not prohibitively expensive’ in the European Directive on Environmental Impact Assessment (‘EIA’). These provide that members of the public (with sufficient interest) must have access to a review procedure before a court of law or another independent and impartial body established by law to challenge the substantive or procedural legality of decisions, acts or omissions subject to the public participation provisions of the Directive. Any such procedure must be, in the words of the Directive, ‘fair, equitable, timely and not prohibitively expensive.’
The House of Lords had affirmed a Court of Appeal’s decision to dismiss the appeal of Ms Pallikaropoulos and, on 18 July 2008, ordered her to pay the respondents’ (including the Environment Agency) costs of the appeal, the amount of which, in the event of disagreement between the parties, was to be fixed by the Clerk of the Parliaments. The respondents submitted two bills for recoverable costs in the amounts of GBP 55 810 and GBP 32 290. The jurisdiction of the House of Lords was transferred to the newly-established Supreme Court and the detailed assessment of the costs was carried out by two costs officers appointed by the President of the Supreme Court. In that context, Ms Pallikaropoulos relied on Directives 85/337 and 96/61 to challenge the costs order that had been made against her.
The Supreme Court asked the ECJ inter alia
– whether the question whether the cost of the litigation is or is not “prohibitively expensive” within the meaning of Article 9(4) of the Aarhus Convention as implemented by [those] directives be decided on an objective basis (by reference, for example, to the ability of an “ordinary” member of the public to meet the potential liability for costs), or should it be decided on a subjective basis (by reference to the means of the particular claimant) or upon some combination of these two bases?, and whether
– in considering whether proceedings are, or are not, “prohibitively expensive”, is it relevant that the claimant has not in fact been deterred from bringing or continuing with the proceedings?
In 2003, the EIA Directive had been amended and specific reference had been made to the Aaurhus Convention with which, the Directive said, the EIA Directive had to be ‘properly aligned’.
The ECJ held that the cost of proceedings must neither exceed the financial resources of the person concerned nor appear, in any event, to be objectively unreasonable. As regards the analysis of the financial situation of the person concerned, the assessment which must be carried out by the national court cannot be based exclusively on the estimated financial resources of an ‘average’ applicant, since such information may have little connection with the situation of the person concerned. The national court may also take into account the situation of the parties concerned, whether the claimant has a reasonable prospect of success, the importance of what is at stake for the claimant and for the protection of the environment, the complexity of the relevant law and procedure and the potentially frivolous nature of the claim at its various stages. That the claimant has not been deterred, in practice, from asserting his or her claim is not in itself sufficient to establish that the proceedings are not, as far as that claimant is concerned, prohibitively expensive.
Plenty of criteria therefore for the Supreme Court to consider, altogether a (slight but important) dent in Member States’ national civil procedure rules.