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You are here: BAILII >> Databases >> Scottish Court of Session Decisions >> ITP SA v Technip Offshore UK Ltd [2005] ScotCS CSIH_76 (15 November 2005)
URL: http://www.bailii.org/scot/cases/ScotCS/2005/CSIH_76.html
Cite as: [2005] ScotCS CSIH_76, [2005] CSIH 76
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ITP SA v Technip Offshore UK Ltd [2005] ScotCS CSIH_76 (15 November 2005)
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FIRST DIVISION, INNER HOUSE, COURT OF SESSION |
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Lord President Lord Hamilton Lord Macfadyen
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[2005CSIH76] A3606/00 OPINION OF THE COURT delivered by THE LORD PRESIDENT in RECLAIMING MOTION in the cause ITP SA Pursuers and Respondents; against TECHNIP OFFSHORE UK LIMITED, formerly known as COFLEXIP STENA OFFSHORE LIMITED Defenders and Reclaimers: _______ |
Act: C.M. Campbell, Q.C.; Simpson & Marwick (Pursuers and Respondents)
Alt: Currie, Q.C.; Maclay Murray & Spens (Defenders and Reclaimers)
15 November 2005
[1] Following the interlocutor of 19 November 2004, in which the court allowed the defenders' reclaiming motion, recalled the interlocutor of the Lord Ordinary dated 26 August 2003 and assoilzied the defenders (2005 S.C.116), both parties have enrolled motions for expenses. It is not in dispute that the defenders are entitled to the expenses of the proceedings as from 17 February 2004 when the Board of Appeal of the European Patent Office revoked the patent in suit. The issue between the parties relates to the expenses of the proceedings prior to that date. [2] Before coming to the contentions of the parties it is convenient to set out a brief history of events in the European Patent Office and the Court of Session. Not long after the grant of the patent in the European Patent Office on 1 March 2000 the defenders gave notification of their opposition to it on the ground that it lacked novelty or an inventive step. After certain procedure, on 4 July 2002 the Opposition Division of the European Patent Office rejected the opposition. Thereafter the defenders filed an appeal against this decision to the Board of Appeal. Meanwhile the pursuers had raised the present action in 2001. In their defences the defenders disputed the pursuers' claim that they had infringed the patent, and in a counterclaim sought the revocation of the patent on the ground that the invention in respect of which the patent had been granted was not new, and in any event did not involve an inventive step. Following a proof in January 2003, which lasted for three weeks, on 26 August 2003 the Lord Ordinary rejected the defenders' case for revocation of the patent, granted declarator and interdict against the infringement of the patent, and continued the case for an inquiry into the pursuers' claim for an account of profits. The defenders reclaimed against the Lord Ordinary's interlocutor and lodged grounds of appeal challenging his decision on infringement and validity. At the conclusion of the hearing on evidence before the Lord Ordinary no date had yet been fixed for the hearing of the defenders' appeal to the Board of Appeal, but it was expected to be in late 2003. In the event the hearing did not take place until 17 February 2004 when, as we have stated, the Board revoked the patent. Thereafter the defenders lodged an additional ground of appeal in the Inner House, in which they maintained that, as a consequence of the revocation, the patent fell to be regarded as void ab initio, and withdrew all of the original grounds of appeal. For the reasons given in its opinion of 19 November 2004 the court held that, in the light of the decision of the Board of Appeal, the reclaiming motion should be allowed. In these circumstances the court did not require to hear any submissions as to the soundness or otherwise of any aspect of the decision of the Lord Ordinary. [3] For the pursuers Mr Campbell moved for the expenses of the proceedings prior to 17 February 2004. He emphasised that before the Lord Ordinary the pursuers had been successful on every point. The process in the European Patent Office was entirely separate, and the Board of Appeal was not concerned with a review of the decision of the Lord Ordinary. He also pointed out that, in order to avoid expense, the pursuers had moved in January 2003 for the discharge of the proof. However, the defenders had opposed this motion. The expenses incurred in the proof represented about 75-80% of the total expenses incurred prior to 17 February 2004. The court had a broad discretion as to where the burden of expenses should lie as between the parties. [4] For the defenders Mr Currie emphasised that, following the allowing of the reclaiming motion, the decision of the Lord Ordinary had no standing. Moreover it had been challenged radically in the original grounds of appeal. The fact that the pursuers had been successful before the Lord Ordinary was neither here nor there. A patentee whose patent was under attack sued at his own risk. In the present case the pursuers' patent was under challenge from the outset. There was a real risk that the patent would be held by the European Patent Office to be void ab initio. The main object of the pursuers' action in the Court of Session was to obtain an account of profits in respect of the defenders' alleged infringement in connection with a specific project. The defenders' opposition to the pursuers' motion for the discharge of the proof, which was heard on 15 January 2003, was on a number of grounds, one of which was the expense which the defenders had incurred in preparing for the proof. In opposing that motion, the defenders had also pointed out that an expert witness, whose availability was very limited, had set aside a period of three weeks in order to be able to attend at the proof. At the end of the proof there was a prospect that proceedings before the European Patent Office might take up to two years to resolve, if account was taken of the possibility of a remit to the Opposition Division. [5] The revocation of the patent by the Board of Appeal provided the defenders with a conclusive answer to the pursuers' action and an unanswerable basis for their counterclaim. In the ordinary course the expenses of the proceedings are awarded in favour of the successful party. Is there any reason why there should be any other result? The pursuers rely on the fact that they were entirely successful before the Lord Ordinary. However, this is not a true situation of divided success. The defenders reclaimed against the merits of the decision of the Lord Ordinary in a number of respects. The grounds of appeal which they tabled for this purpose were not abandoned but, in the unusual circumstances which had occurred, withdrawn and superseded by a new ground founding on the decision of the Board of Appeal. In these circumstances the court is not in a position to say whether the decision of the Lord Ordinary would have been affirmed or reversed. The pursuers chose to raise the action against the defenders - mainly, it seems, with a view to recovering an account of profits - at a time when they knew that the defenders were insisting on challenging the validity of the patent. There is no question of their having been misled by the defenders into raising the action. They took the risk that the action might come to grief if the proceedings in the European Patent Office went against them, as is illustrated by their unsuccessful attempt to obtain the discharge of the proof. [6] For these reasons we are satisfied that it is appropriate that the defenders be awarded the expenses of the whole proceedings. The solicitors will be held entitled to an additional fee, as is common ground between the parties, under reference to heads (a), (b), (c), (e) and (f) of Rule of Court 42.14.