Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Ors [2015] EWHC 3973 (Pat) (18 December 2015)

Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Ors [2015] EWHC 3973 (Pat) (18 December 2015)

BMS is the overall winner of the litigation; therefore, all general costs not attributable to the '336 patent and incurred before 17 February 2015 are to be paid by Merck. Apportionment of general costs is not appropriate as it would be impractical and risk undermining the consent order regarding the '336 patent.

Citation
[2015] EWHC 3973 (Pat)
Parties
Claimant: Merck Sharp & Dohme Limited; Defendant/part 20 Claimant: Ono Pharmaceutical Co. Limited; Defendant/part 20 Claimant: Tasuku Honjo; Part 20 Claimant: Bristol-Myers Squibb Company; Part 20 Defendant: Merck & Co. Inc
Jurisdiction
England and Wales
Judgment Date
18 December 2015
Procedural Posture
Patent Litigation (costs Judgment) / Post Trial, Costs Determination
Outcome
Costs order in favour of BMS; Merck to pay all general costs not attributable to the '336 patent.
Legal Topics
Patent Infringement, Patent Validity, Costs Orders, Apportionment of Costs
Intellectual Property Civil Procedure Patent Infringement Patent Validity Costs Orders Apportionment of Costs

Case Brief

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Parties

Merck Sharp & Dohme Limited

Claimant

Ono Pharmaceutical Co. Limited

Defendant/part 20 Claimant

Tasuku Honjo

Defendant/part 20 Claimant

Bristol-Myers Squibb Company

Part 20 Claimant

Merck & Co. Inc

Part 20 Defendant

Procedural Posture

Patent Litigation (costs Judgment) / Post Trial, Costs Determination

Legal Issues

  1. 1 How should costs be apportioned between parties in complex patent litigation involving multiple patents and outcomes?
  2. 2 Whether general costs incurred prior to the resolution of one patent should be apportioned or paid in full by the losing party.

Ratio Decidendi

BMS is the overall winner of the litigation; therefore, all general costs not attributable to the '336 patent and incurred before 17 February 2015 are to be paid by Merck. Apportionment of general costs is not appropriate as it would be impractical and risk undermining the consent order regarding the '336 patent.

Court Disposition

Costs order in favour of BMS; Merck to pay all general costs not attributable to the '336 patent.

Orders

  • Merck to pay BMS's costs of the infringement action and amendment application.
  • Merck to pay all general costs not attributable to the '336 patent incurred before 17 February 2015.