Hughes v Paxman

The Court of Appeal does not give procedural directions for proceedings in the Patent Office; such matters are left to the Comptroller. A minor excess in the relief sought in a Statement of Grounds does not, in itself, justify reducing the successful party’s costs. On assessment, the court may reduce a claimed sum to reflect unnecessary work. Leave to appeal to the House of Lords may be refused where the court considers that granting it would not be right.

Following the main judgment delivered on 23 June 2006, the Court of Appeal considered consequential matters in the appeal between Hughes v Paxman. Mr Paxman had succeeded before Kitchin J in the Patents Court and in the Court of Appeal. The court addressed Mr Hughes’s request for a procedural direction concerning an amended Statement of Grounds, the appropriate costs order and assessment, and an application for leave to appeal to the House of Lords.

1. The court refused Mr Hughes’s request for an order requiring Mr Paxman to serve an amended Statement of Grounds in the Patent Office. Giving procedural directions for Patent Office proceedings was not the function of the Court of Appeal. The matter was left to the Comptroller.

2. The court rejected the submission that Mr Paxman’s costs should be reduced because the Statement of Grounds sought more than could be granted. Mr Paxman had succeeded both before Kitchin J and in the Court of Appeal. The court regarded the point as minor and insufficient to justify any reduction in his full costs.

3. The court assessed the costs of the appeal itself. Although the amount claimed was £30,238, the court considered that the statements of costs indicated a certain amount of unnecessary work. It assessed the appropriate figure at £25,000.

4. The court refused leave to appeal to the House of Lords. The parties were directed to liaise over the final form of the order and submit it to the court as soon as practicable.

• Court of Appeal (Civil Division): In the consequential judgment dated 4 July 2006, the court dealt with procedural directions, costs and leave to appeal following its main judgment of 23 June 2006, in which Mr Paxman had succeeded.
• High Court of Justice, Chancery Division (Patents Court): Kitchin J had previously given judgment in favour of Mr Paxman.