Keyword scorecard; Costs in part-won, part lost patent case

Australian intellectual property strategy ace Duncan Bucknell has struck again! He has set up an online scorecard so that we can all discover quickly and easily the countries in which the use of someone else's trade mark as an internet keyword is an infringement of the trade mark right or not. If you want to help Duncan in this exciting adventure, email him here with news of the litigation in your jurisdiction.

Right: chocks away, as Duncan "Biggles" Bucknell" flies off around the world to service his clientele's international interests

Other scorecards on Duncan's website list the current state of play in the US v Czech Budweiser dispute (here), Ranbaxy's battle with Pfizer over Lipitor (here) and the Eli Lilly/Teva/Dr Reddy's fight over Zyprexa (Olanzapine) here.


On Tuesday Mr Justice Warren gave judgment in Actavis UK Ltd v Merck & Co Inc, a decision picked up so far only on the LexisNexis Butterworth subscription-only service.

Actavis successfully applied to revoke Merck's patent for the treatment of androgenic alopecia in humans (see IPKat post here). Actavis then asked for its costs, which Merck was reluctant to pay. Merck conceded that it had lost on the issue of the 'method of medical treatment' attack which, the judge held, was sufficient ground upon which to revoke the patent - but it did succeed in its defence against the claim of lack of inventive step. The judge thus had to decide whether a percentage reduction of Actavis's total costs was appropriate, or whether an issue-based approach was more appropriate to accommodate the fact that the defendant had been successful on an issue which was not determinative of the case, but which might bear fruit on an appeal.

Warren J ruled that a single order would be made, reflecting the fact that Merck had won on the obviousness issue:

* It was settled law that a successful party would generally be entitled to its costs; any reduction, to reflect one or more issues that had been lost or conceded, could be achieved by the exercise of judicial discretion.

* A costs order on an issue-based approach would be made only if it was appropriate to justify the winner being deprived from recovering all of its costs - but there was nothing exceptional in this case for an issue-based costs order to be made.

The IPKat thinks this is right on the facts. Merpel adds, this ruling is unlikely to discourage applicants in revocation proceedings from throwing as many grounds of invalidity at the patent as they can find, since the partial loss of costs is unlikely in most cases to be significant in relation to the value to the applicant of the death of the assaulted patent.

More on Actavis here