DSM IP Assets BV & Anor v Algal Omega 3 Limited & Anor

In a multi-patent action, costs should reflect the parties’ success on the litigation viewed objectively. The court may analyse separate patents or suitably circumscribed issues where that produces a fairer result. The three-question framework is a convenient structure, not a rigid code. The relevant question is whether an issue-based order is appropriate in all the circumstances, including the costs caused by the issue and the overall justice of the case.

An Island Records order is limited to information needed to make an informed choice between an inquiry as to damages and an account of profits. It is not pre-action disclosure or a substitute for the fuller disclosure required at the substantive inquiry or account.

The judgment concerned the form of order hearing following the liability trial in which DSM succeeded on EP155, while Mara succeeded in invalidating EP740 and EP801. DSM sought to be treated as the overall winner and requested substantial costs and additional Island Records disclosure. Mara argued that it had achieved greater success and sought costs reflecting its victories on two patents.

The court also determined applications for permission to appeal. Mara sought permission concerning EP155 validity. DSM sought permission concerning EP801 validity. DSM additionally sought permission to apply for a dissemination order.

1. Costs. Mara was the overall winner because it succeeded on two of the three patents, including the two patents which remained in force and could have supported injunctive relief. The prospective amount of DSM’s damages for EP155 was irrelevant to identifying the winner of the liability trial, since it remained to be determined on an inquiry or account.
2. The familiar questions concerning the overall winner, suitably circumscribed issues, and whether an issue-based order is appropriate were a convenient analytical structure. The court was not bound to apply them mechanically. The governing question was appropriateness in all the circumstances. The litigation could fairly be analysed by reference to the three patents, notwithstanding common subject matter and evidence.
3. No additional deductions were justified for Mara’s conduct of the EP740 or EP801 validity cases. The abandoned or amended prior-art attacks had been pursued reasonably, had served a legitimate purpose, or did not constitute suitably circumscribed issues. On EP801 infringement, a deduction of 10.61% from Mara’s total costs was appropriate to reflect the abandoned enzymatic disruption/lysis case and shortcomings in expert evidence.
4. DSM was awarded costs equivalent to Mara’s costs attributable to EP155. Mara recovered its costs of EP740 and EP801 subject to the deduction. The resulting order required DSM to pay 25.4% of Mara’s liability-trial costs, assessed on the standard basis, with an interim payment of £520,000.
5. Island Records disclosure. The purpose of such an order is to facilitate an informed election between damages and an account. It requires readily available, sufficiently reliable and approximate information, produced quickly and proportionately. It does not require customer identities or associated-entity costs merely because those matters may later be relevant to an inquiry. No disclosure beyond that already agreed was ordered.
6. Permission to appeal. Permission was refused to DSM concerning EP801 because the proposed construction points would not alter the result on validity. Permission was granted to Mara concerning EP155, particularly because the judge had not cited a relevant passage in Dr Wynn’s evidence. DSM was given until 31 July 2025 to apply for a dissemination order, without any indication that such an order would be justified.
7. DSM was ordered to pay 90% of Mara’s outstanding post-trial costs. The interim payment was increased to £580,000.

First-instance form of order hearing following the liability judgment in the same proceedings. The judgment records the prior liability decision as [2025] EWHC 675 (Pat).