Wobben Properties GmbH v Siemens Public Ltd Company & Ors

In an issues-based costs assessment, the court should identify the overall winner and decide whether a lost issue is sufficiently distinct to justify depriving that party of its costs. A further order requiring the winner to pay the losing party’s costs depends on what is appropriate in all the circumstances and does not require exceptional circumstances.

An interim payment on account must be a reasonable sum. The court may consider the likely detailed-assessment recovery and the other party’s costs.

This was the return hearing following the substantive patent judgment, reported at [2015] EWHC 2114 (Pat). The defendants had won overall, and the court had to determine the proportion of their costs payable by the claimant.

The court considered issues concerning Frantz, Shozaburo, insufficiency and novelty over Bossanyi, together with the appropriate interim payment on account of costs.

1. The issues-based approach requires the court to identify the overall winner, consider whether the winner lost on a sufficiently circumscribed issue, and decide whether it is appropriate in all the circumstances to require the winner to pay the other party’s costs on that issue. “Suitably exceptional” does not impose a separate requirement of exceptionality. Hospira UK Ltd v Novartis AG was followed.
2. Siemens had properly abandoned Frantz, but the abandoned obviousness argument was independent of the claim amendment. Wobben was therefore entitled to its costs relating to Frantz. The overall deduction for Frantz was 11%.
3. Siemens lost its novelty argument concerning Shozaburo. The court deducted 10% for Siemens’s costs on that issue, but did not require Siemens to pay Wobben’s costs.
4. No deduction was made for insufficiency. The points were proper protective points, and their not being decided did not make them costs-bearing. No deduction was made for novelty over Bossanyi because the document also had to be considered for obviousness.
5. For an interim payment under rule 44.2(8), the test is to award a reasonable sum, not an “irreducible minimum”. The likely detailed-assessment recovery and the other party’s costs are relevant considerations. The court ordered payment of £1.2 million.
6. Wobben was ordered to pay 79% of Siemens’s costs.

The judgment was consequential upon the substantive patent judgment reported at [2015] EWHC 2114 (Pat), in which the defendants succeeded overall.