The Court of Appeal has ordered Teva to pay Boehringer’s costs from 20 July 2015 in proceedings challenging a supplementary protection certificate for a tiotropium product, after allowing Boehringer’s appeal against the High Court’s costs order.
The appeal concerned costs only. The High Court had stayed Teva’s challenge because the certificate was due to expire before the case could be heard and decided. That stay was not appealed. The High Court later ordered Boehringer to pay the costs of its stay motion, with no order as to costs for the rest of the proceedings, leaving each side to bear its own costs.
In a judgment delivered on 24 July 2018, Mr Justice Michael Peart said the proceedings were not doomed to become moot when Teva began them in October 2014, about 17 months before the certificate’s expiry. But he concluded that Teva should bear responsibility for costs from 20 July 2015, when it applied to move the trial from November 2015 to February 2016. By then, the hearing was expected to finish only days before expiry.
Teva argued that the delay in obtaining marketing authorisation for its proposed generic product was an external event beyond its control. It also said an early hearing could be useful if it launched the product at risk and Boehringer sought an injunction. Boehringer disputed that account and argued that Teva’s discovery requests and its decision to keep the proceedings alive contributed to the costs and delay.
The Court of Appeal held that the marketing-authorisation delay should not determine responsibility for mootness in this costs appeal. It said the earlier, unappealed ruling had treated a potential at-risk launch as speculative when deciding whether the case should proceed. Teva could have raised the validity issue as a defence and counterclaim if Boehringer later brought separate proceedings seeking an injunction.
The court said Boehringer could have applied sooner to stay the case, but should not be penalised for not doing so. It allowed the appeal and varied the costs order: Teva must pay Boehringer’s costs incurred from 20 July 2015, including the costs of the stay motion. The judgment addressed the allocation of costs; it did not decide the patent certificate’s validity.