Hospira UK Ltd v Cubist Pharmaceuticals, LLC

In patent litigation, the successful party ordinarily recovers its general costs. Costs attributable to discrete issues on which it lost may be disallowed. Ordering the successful party to pay the opponent’s costs of such an issue requires a further judgment that this is just in the circumstances, but the case need not be extremely rare. A substantial, clearly separable issue pursued unsuccessfully may justify that order. On permission to appeal, the proposed appeal must have a real prospect of success. An appeal is a review, not a rehearing.

Following judgment revoking three patents owned by Cubist Pharmaceuticals, LLC, the court determined the costs consequences. Hospira was the successful claimant and was entitled to its general costs. The disputes concerned several unsuccessful patent issues and whether they justified deductions or an order that Hospira pay Cubist’s costs.

The court also considered Cubist’s applications for permission to appeal concerning the 417 and 047 patents.

1. The successful party ordinarily recovered its general costs. Costs could be allocated to discrete issues on which it lost, with separate consideration of whether it should recover those costs and whether justice required it to pay the opponent’s costs.
2. “Suitably exceptional” did not mean extremely rare. The successful party’s failure on an issue was insufficient by itself, but a discrete issue involving substantial expenditure could justify an order requiring payment of the opponent’s costs. The court applied Monsanto v Cargill No.2 [2007] EWHC 3113, F&C Alternative Investment (Holdings) Ltd v Barthelmy (No.3) [2012] EWCA Civ. 843 and Hospira UK Ltd and Novartis AG [2013] EWHC 886.
3. Hospira was ordered to pay Cubist’s costs of the daptomycin insufficiency issue and first-priority entitlement challenge. Deductions were made for other discrete unsuccessful issues; no deduction was made for issues that were not suitably circumscribable.
4. Under CPR Part 52.3(6), the proposed appeal had to have a real prospect of success. Appeals were by way of review, not rehearing. Permission was refused, subject to renewal in the Court of Appeal.

This was a first-instance costs and permission-to-appeal decision. The underlying action resulted in revocation of three patents. Permission to appeal was refused, subject to renewal in the Court of Appeal.