A3/2003/1074 
Neutral Citation Number: [2004] EWCA Civ 522
IN THE SUPREME COURT OF JUDICATURE 
IN THE COURT OF APPEAL (CIVIL DIVISION) 
ON APPEAL FROM THE CHANCERY DIVISION
PATENTS COURT
(MR JUSTICE LADDIE)
Royal Courts of Justice 
Strand 
London, WC2 

Tuesday, 6 April 2004
 
B E F O R E:

LORD JUSTICE PILL 
 
LORD JUSTICE MUMMERY 
 
LORD JUSTICE JACOB 
 
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ROCKWATER LTD
Claimant/Part 20 Defendant 
-v-
 
TECHNIP FRANCE SA and Another 
Defendants/Part 20 Claimants 
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(Computer-Aided Transcript of the Stenograph Notes of
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MR ANDREW WAUGH QC and MR JUSTIN TURNER (instructed by Bristows of London) appeared on behalf of the Appellant
MR  SIMON THORLEY QC and MR THOMAS MITCHESON (instructed by Hammonds of London) appeared on behalf of the Respondent
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JUDGMENT
1.	LORD JUSTICE JACOB:  A number of points arise on the order following our judgment.  First, as to the form of the injunction: should it or should it not be limited to claims 3 to 9?  It is suggested that because there was in the end no allegation of infringement of claims 1 and 2, and that there is no extant threat to infringe claims 1 and 2, that the injunction should expressly exclude claims 1 and 2.  In my judgment, that submission fails.  Claim 3 is wider than claims 1 and 2.  Necessarily therefore limiting the injunction to claim 3 is pointless.  In any event, the fact is that an attempt was made to invoke claims 1 and 2 and it is appropriate that the injunction should cover the carrying out of the process of those claims. 
2.	Next, there is no exceptional reason why there should be a stay of either the injunction, any financial inquiry or of the process of assessment of costs.  It is common ground there has to be an exceptional reason if there is to be a stay.  There is none there.  In particular, so far as the injunction is concerned, the current position is that Rockwater do not have a vessel within the jurisdiction of this court and have no particular project in mind.  There is no appropriate ground for a stay.  
3.	The proposal for a special proviso giving liberty to apply to the High Court in various ways is a proposal which is not usual.  We were told Lord Justice Aldous made it in a particular case, but we were not taken to the details.  The concrete basis for the suggestion was that Rockwater may have some variant which they think does not infringe, and they would like to apply directly to the High Court for a declaration.  That would mean by-passing the statutory procedure for a declaration of non-infringement.  I see no reason why that should be allowed. 
4.	An order for delivery up was sought.  There is no vessel within the jurisdiction of the court.  Delivery up is in an aid of an injunction.  It is not appropriate to make an order for delivery up, in effect, of future goods, which is what is being sought here.  I see no reason for an order for delivery up.  The injunction will suffice to protect Coflexip.
5.	As regards the question of costs, it is suggested that because Coflexip alleged for some time infringement of claims   1 and 2 - an allegation which was dropped shortly before trial - that Rockwater should have their costs concerning that issue.  At first, I was impressed with that, but on reflection it seems to me those costs must have been trivial.  This is because the issue of the scope and validity of claims 1 and 2 was always in play as part of the consideration of claim 3.  The only remaining point on claims 1 and 2 is whether or not the actual process had or had not been carried out.  The question was simply whether or not accessories had been passed using the process of claim 1.  That was a pure question of fact.  Rockwater said they had not done it.  For some time they were, in effect, put to proof of that and then the allegation was dropped.  It is slightly odd that Rockwater were being asked to prove a negative.  But, in any event, the costs incurred were not solicitors' costs according to the evidence we have before us, so I see no reason why there should be a reduction in costs because of the unpursued allegations of infringement of claims 1 and 2.
6.	As to whether the costs should be on a higher scale, as provided for in the Act, it is accepted that there has to be an exceptional reason why that rule should not be applied when there has been a second challenge in second proceedings to the validity to the patent, I see nothing exceptional here.  In particular the prior art was very similar to the prior art that had been raised before and the issues were very much the same as the issues raised before.  Parliament has provided that when a patent has successfully survived a challenge, if someone else wants to have a challenge the patentee is to have a special order for costs if he wins.  That is, I think, a salutary rule and should be applied here.
7.	Finally there is the question of the amount of the interim payment of costs.  It is conceded that there should be an interim payment.  £1.5 million is asked for as to the costs of the court below and here, being 80 per cent of the costs actually incurred.  As always with a figure like this, it is a provisional figure that may go up or down and, to some extent, the court must take something of a guess as to what the ultimate figure reached by the costs judge will be. This is a very rough and ready process.  In my judgment, the appropriate figure would be £1.25 million, bearing in mind it will be a case in which there will be indemnity costs.  
8.	So far as permission to appeal is concerned, I do not see that this is an appropriate case for permission to appeal. 
 (Minute of order to be lodged with court)