Mayne Pharma PTY Ltd & Anor v Pharmacia Italia SPA

An order for delivery up in patent proceedings is ancillary to an injunction. It should be made only where necessary to protect the patentee’s rights and secure compliance with the injunction. It is neither punitive nor compensatory. Goods which have been removed from the jurisdiction, cannot there infringe the domestic patent, and are not shown likely to be re-imported do not ordinarily justify delivery up.

A party whose unhelpful litigation conduct causes unnecessary costs may be deprived of costs or required to bear the resulting expense irrespective of the overall result. An interim payment on costs should be a realistic estimate of recoverable costs and should reduce the need for a costly assessment.

This was a judgment on consequential relief and costs following the Court of Appeal’s earlier judgment that the patent had been infringed. The appeal came from the Patents Court, where Roger Wyand QC had sat as a deputy judge of the Chancery Division.

The court considered whether an injunction should be supplemented by delivery up of material which had been imported, re-exported to the Middle East and remained under the defendant’s control. It also considered liberty to apply for a post-expiry injunction, the costs consequences of an abandoned contention that a claim expression was a term of art, the appropriate interim payment on costs, and permission to appeal to the House of Lords.

1. Appeal allowed; consequential order made unanimously. Jacob LJ gave the reasons, with whom Hooper LJ and the President agreed. The court granted the agreed injunction, refused delivery up, gave liberty to apply concerning a possible post-expiry injunction, ordered payment of 70 per cent of the costs below and the costs of the appeal, directed careful scrutiny of the bill, ordered an interim payment of £200,000, and refused permission to appeal to the House of Lords.
2. Delivery up. An order for delivery up is ancillary to an injunction and exists only to ensure that the injunction is obeyed. Adopting the reasoning in Roussel Uclaf & Another v Pan Laboratories Limited [1994] 51 FCR 316, the court held that the remedy does not punish an infringer or compensate a patentee. There was no exceptional feature justifying an order with retrospective effect from judgment. The material had been removed after judgment but before the order, was outside the jurisdiction, and there was no evidence of an intended re-importation. Its presence abroad did not put the patentee’s domestic rights at risk.
3. Post-expiry relief. Liberty to apply for a post-expiry injunction was granted by agreement, along lines considered in Dyson v Hoover [2001] RPC 27. The court expressly left open whether jurisdiction exists to grant such an injunction.
4. Costs. The refusal to clarify whether the expression “not reconstituted from a lyophilisate” was advanced as a term of art unnecessarily increased costs. The party affected was entitled in principle to recover those costs by a cross-claim on assessment. A 15 per cent allowance for that issue produced an overall recovery of 70 per cent of costs below. The £200,000 interim payment was a realistic estimate intended to encourage settlement, while leaving any further recovery subject to close scrutiny by the costs judge.

• Court of Appeal (Civil Division): Following its earlier infringement judgment, the court made consequential orders in this judgment on costs: [2005] EWCA Civ 294.
• High Court, Chancery Division, Patents Court: Appeal from a decision of Roger Wyand QC, sitting as a deputy judge. The lower-court citation is not stated in the judgment.