JUDGE USES COSTS BUDGET TO ASSESS COSTS AT THE END OF A TRIAL: THE RELEVANCE OF THE BUDGET & WHEN SHOULD THE COURT GO OUTSIDE IT?

In Sony Communications International AB -v- SSH Communications Security Corporation [2016] EWHC 2985 (Pat) Mr Roger Wyand QC (sitting as a Deputy High Court Judge) used the costs budget to carry out an assessment of the costs at the end of case.   The judgment is interesting in that it (i) considers  the role of the costs budget generally; (ii) considers circumstances in which a party can, and cannot, go outside its costs budget; (iii) considers issues of apportionment on issues. It is an example of the costs budget being used (with the consent of the parties) to avoid a detailed assessment.

THE CASE

The claimants had, largely,  in a case for revocation of a patent.  The counterclaim was put at more than £10 million.  There is an irony in this case in that the claimants had resisted an order for costs budgeting (the case fell outside the automatic cost budgeting requirement) but Arnold J ordered that budgeting take place, stating:

“But even on the assumption that Sony is proposing to spend only a proportionate amount on its costs, it seems to me that the cost management discipline has value to the opposing party (SSH) in enabling the party to understand what it being done and what it is going to cost. Furthermore, it seems to me that it is of value to the court when it comes to questions of costs, most particularly, obviously, at the stage of detailed assessment, but it can also be of utility prior to that point.”

THE DECISION TO LET THE TRIAL JUDGE ASSESS COSTS

  1. The parties have agreed that as the Cost Budgets were drawn up and accepted on the basis that the costs identified therein were reasonable and proportionate, there is no need for a detailed assessment and they have asked me to make a summary assessment on the basis of the relevant Cost Budget.
  2. It is accepted by SSH that Sony is the commercial winner and is entitled to its costs subject to a deduction in respect of the issues on which Sony lost. Rather than seeking to identify the issues on a micro scale, the parties are agreed that a fair result can be achieved by identifying the issues at a high level and accordingly treating Sony as having lost on infringement in general and not trying to identify individual arguments on which they were successful. Equally, there are validity arguments on which Sony failed but the parties do not ask me to identify the costs associated with those issues. I believe that this is a sensible approach. Any more detailed assessment would not be practical as part of a summary assessment.

THE APPROACH OF THE JUDGE: GENERAL PRINCIPLES

 

10.The first stage of the assessment is to assess Sony’s costs against its cost budget. The budget is divided into the various phases of the action as identified in Precedent H. It is necessary to look at the budget for each phase and to compare that with Sony’s actual expenditure for that phase. Sony is entitled to the lower of the two figures.
  1. Whilst this approach is agreed, Sony seeks to be allowed to increase the budget figure for some of the phases in respect of which it has exceeded the budget by a relatively large margin. SSH opposes this.
  2. SSH refers specifically to the following provisions of the CPR:
i) CPR 3.15(3) provides that:
If a costs management order has been made, the court will thereafter control the parties’ budgets in respect of recoverable costs
ii) CPR 3PDE 7.6 provides that Sony was under an obligation to keep its budget up to date:
Each party shall revise its budget in respect of future costs upwards or downwards, if significant developments in the litigation warrant such revisions. Such amended budgets shall be submitted to the other parties for agreement. In default of agreement, the amended budgets shall be submitted to the court together with a note of (a) the changes made and the reasons for those changes and (b) the objections of any other party. The court may approve, vary or disapprove the revisions, having regard to any significant developments which have occurred since the date when the previous budget was approved or agreed.
iii) When assessing costs for a cost managed case, CPR 3.18 provides:
In any case where a costs management order has been made, when assessing costs on the standard basis, the court will –

(a) have regard to the receiving party’s last approved or agreed budget for each phase of the proceedings; and

(b) not depart from such approved or agreed budget unless satisfied that there is good reason to do so. …

  1. The only case to which I was referred which considered the court’s power to depart from the budget is Henry v News Group Newspapers Ltd [2013] EWCA Civ 19 where Moore-Bick LJ said:
24 I would accept that costs estimates fall at one end of a scale that runs through costs budgets to cost caps. Clearly the very fact that the court has responsibility for approving budgets as a means of managing costs is an indication that budgets are intended to provide some constraint. On the other hand, the budget is not intended to act as a cap, since the court may depart from it when there is good reason to do so. The question in the present case is whether there was indeed good reason to depart from the approved budget. In my view it is open to a costs judge when answering that question to take into account all the circumstances of the case. However, it will rarely, if ever, be appropriate to depart from the budget if to do so would undermine the essential object of the scheme. As I have already pointed out, the failure of the appellant’s solicitors to comply with paragraph 5.5 of the practice direction or to apply for a costs management conference with a view to obtaining the court’s approval of a revised budget did not lead to an inequality of arms. Moreover, it is strongly arguable that it did not result in the appellant’s incurring costs that were disproportionate to what was at stake in the proceedings. Accordingly, it was open to the costs judge to find that the essential objects of the scheme had not been frustrated. In those circumstances he was obliged to consider all the circumstances of the case, including the extent to which the parties and the court had exercised their respective responsibilities under the scheme, the way in which the proceedings had developed, the response of the appellant’s solicitors to the demands imposed by the way in which the respondent’s case developed and the respondent’s agreement to pay the appellant’s costs as part of the compromise of the claim.
25 In the rather unusual circumstances of this case the preliminary issue should in my view be answered in the affirmative for several inter-related reasons. First, because unless the court departs from the budget the appellant will not be able to recover the costs of the action. That alone would not be enough; if it were the scheme would be otiose, but it is an important factor to the extent that on examination the court is persuaded that the costs actually incurred were reasonable and, most importantly, proportionate to what was at stake in the litigation. Allied to that is the fact that the failure of the appellant’s solicitors to observe the requirements of the practice direction did not put the respondent at a significant disadvantage in terms of its ability to defend the claim, nor does it seem likely that it led to the incurring of costs that were unreasonable or disproportionate in amount. In other words, the objects which the practice direction sought to achieve were not undermined. In those circumstances a refusal to depart from the budget simply because the appellant had not complied with the practice direction would achieve nothing beyond penalising her. That might encourage others to be more assiduous in complying with the practice direction in the future, but to penalise the appellant for that reason alone would be unreasonable and disproportionate. That is all the more so in the context of proceedings which were constantly changing in ways that, in the words of the judge below, could not be passed off as no more than a minor inconvenience. Then there is the fact that the appellant’s solicitors were not alone in failing to comply with the requirements of the practice direction. The respondent’s solicitors also exceeded their budget (admittedly not to so large an extent) and the court itself was less active than it should have been in monitoring the parties’ expenditure when the matter came before it on the procedural applications in April 2011. The failure of the respondent’s solicitors to register any protest when they were finally informed of the amount of costs incurred by the appellant suggests to me some recognition of the extent to which the development of the litigation had affected the appellant’s preparation.
28 In the light of the experience gained from those pilots the Rule Committee decided to adopt Sir Rupert Jackson’s recommendation that the management of costs by the court should in future form an integral part of the ordinary procedure governing claims allocated to the multi-track. Those rules, which will become effective from 1st April 2013, differ in some important respects from the practice direction with which this appeal is concerned. In particular, they impose greater responsibility on the court for the management of the costs of proceedings and greater responsibility on the parties for keeping budgets under review as the proceedings progress. Read as a whole they lay greater emphasis on the importance of the approved or agreed budget as providing a prima facie limit on the amount of recoverable costs. In those circumstances, although the court will still have the power to depart from the approved or agreed budget if it is satisfied that there is good reason to do so, and may for that purpose take into consideration all the circumstances of the case, I should expect it to place particular emphasis on the function of the budget as imposing a limit on recoverable costs. The primary function of the budget is to ensure that the costs incurred are not only reasonable but proportionate to what is at stake in the proceedings. If, as is the intention of the rule, budgets are approved by the court and revised at regular intervals, the receiving party is unlikely to persuade the court that costs incurred in excess of the budget are reasonable and proportionate to what is at stake.
  1. From this I take the following propositions:
i) The budget is not a cap but a guideline which the court has the power to depart from;
ii) Each phase of the budget is to be considered separately and it is not legitimate to combine two phases where one is overspent and the other is underspent;
iii) The court will only depart from the budget where it is satisfied that there is a good reason to do so;
iv) The parties have a duty to revise their budgets if significant developments in the litigation warrant such revisions;
v) The court can depart from the budget even if the parties have not revised their budgets as the litigation proceeds. The passage in the judgment of Moore-Bick LJ set out above could be read as suggesting that it would be more difficult to establish ‘good reasons’ for departing from the budget if the parties have been assiduous in updating their budgets, however, that would be encouraging parties to ignore their duty to update;
vi) In considering whether there are good reasons for departing from the budget the court should take into account all the circumstances of the case;
vii) A particular consideration is the function of the budget in ensuring that the costs incurred are proportionate and reasonable. If the budget is being considered before the result of the trial is known, both parties have an interest in trying to ensure that both their own and the other side’s costs are reasonable and proportionate. Once the result is known, the two parties have conflicting interests in that the winning party will seek to recover as much of their costs as possible and the paying party will seek to reduce the costs it has to pay. This makes it much more difficult for the court to assess what costs are reasonable and proportionate;
viii) A further function of the budget to be considered is the value to the opposing party to understand what is being done and what it is going to cost. Accordingly, a factor in the assessment is whether any requested increase in the budget, post-trial, will be whether the increase would take the paying party by surprise.

THE JUDGE’S APPROACH IN THIS CASE

The judge considered the competing arguments:-

  1. In the present case, Sony submit that the following factors are relevant to the exercise of the court’s discretion:
i) That this is one of the cases which is normally regarded as too large for costs management and the court should be more indulgent to errors in estimating the costs to be incurred;
ii) That Sony did get ‘impressively close’ to a correct prediction of its anticipated costs;
iii) That Sony is not seeking a total award above its total budget so SSH is not being asked to pay more costs than it agreed were reasonable and proportionate for this litigation.
  1. SSH submit that the following factors should be taken into account:
i) The cost budget is a very important consideration. SSH sought the cost management order because it was concerned that Sony, with its greater resources, might make the litigation very expensive;
ii) Sony failed in its duty to keep the court informed as to variations from the agreed budget;
iii) Sony has exceeded its budget and is seeking to recover costs as though there was no cost management order;
iv) Sony has failed to put forward any good reason for departing from the budget.
  1. I agree with both parties that these are relevant considerations and I take them into account in the following assessment.
  2. There are three phases where Sony has overspent (or has potentially overspent), expert reports, trial preparations and trial.
  3. On expert reports, Sony has spent £580,906.16 when the budget was £215,425.75. Dr Laakkonen, the solicitor with conduct of the case for Sony gives three reasons for this overspend:
i) He blames SSH’s expert for failing to accept in his Expert Reports, matters that he had to accept eventually in cross-examination. This, he says, forced Sony to do more work than would have been required had he accepted these matters at an early stage;
ii) He blames SSH’s expert for listing results of searches for the first references to NAPT in the literature and then claiming that they showed that the earliest references were after the priority date of the Patent. Sony, says Dr Laakkonen, was forced to go through all these documents with its expert to find that, contrary to SSH’s Expert Report, there were references in many documents in the list from before the priority date. He says that this was necessary and increased the anticipated costs of Sony’s Expert Reports;
iii) He explained how difficult it was to split out time spent with the expert discussing SSH’s proposed amendments from discussions of other aspects of the case.
  1. Counsel for Sony also pointed to the fact that SSH’s budget for expert reports was £323,268.98, over £100,000 more that Sony’s budget. He submitted that a reasonable and proportionate figure would be half way between Sony’s budget figure and the actual spend, i.e., £398,165.96.
  2. Counsel for SSH also pointed to the fact that SSH’s budget for expert reports was more than Sony’s and said that this should have alerted Sony to the fact that its budget for that phase was too low.
  3. Mr Barron, the solicitor with conduct of the case for SSH, refutes Dr Laakkonen’s criticisms of SSH’s expert and says that much of the overspend seems likely to have been incurred in dealing with common general knowledge, particularly in relation to the attack based on obviousness over the common general knowledge, on which Sony failed. In any event, Mr Barron points out that, whatever the reason for the overspend, Dr Laakkonen fails to give any explanation as to why the overspend was not anticipated and brought to the attention of the court and SSH earlier.
  4. There is some force in the arguments on both sides. Sony have clearly failed in its duty to seek to vary its cost budget when it became aware of the overspend. On the other hand, it is not suggested that SSH were taken by surprise that there was an overspend since SSH’s budget for the same phase was higher. I was not told what SSH’s actual spend on expert reports was.
  5. Taking all the factors of the case into account, I find that this is a case where there is a good reason to depart from the budget on the Expert Report phase. I accept that the case involved scrutiny by the experts of a rather larger number of documents than might have been anticipated. I do not ascribe blame for this to either party, it was just the way the case developed. Bearing in mind the functions of the budget to limit costs to those that are reasonable and proportionate and to avoid catching the opposing party by surprise I believe that it is fair to increase Sony’s budget for expert witnesses to the level of SSH’s budget for the same phase. As I have said above, at this stage of the proceedings it is difficult to get a dispassionate view as to what are reasonable and proportionate costs. The best indication is what SSH thought would be reasonable and proportionate for their own costs at the budget stage. Accordingly I shall increase Sony’s budget for expert reports to £323,270.
  6. The next two phases in issue are Trial Preparation and Trial. I shall consider these two phases together with Sony’s claim for Post-trial costs outside the budget.
  7. Sony overspent on Trial Preparation by some £53,000 (£164,793.40 actual as compared to £111,448.75 budget) but claim to have underspent on Trial by some £44,000 (£336,273.62 actual compared to £380,325 budget). Sony suggest lumping the two phases together which would mean that their overspend would be some £9,000 and they would not seek to vary the budget from the total of the two phases. Sony points to the arbitrary nature of the split between trial preparation and trial depending on whether work is done by counsel or by solicitors during the period immediately before trial and the first day of the trial.
  8. SSH resist this on two grounds. The first is that the rules are clear that each phase is to be considered separately. The second is that the guidance notes to Precedent H expressly state that the Trial phase includes “Dealing with draft judgment and related applications”. Therefore, say SSH, the post trial costs of £80,675.40 should be added to the Trial costs giving a total of £416,949.02 which is an overspend of £36,624.02. I agree with this analysis. I am not prepared to treat Trial Preparation and Trial as one phase and I can see no good reason to depart from the budget for Trial Preparation.
  9. So far as the Trial phase is concerned, properly considered with the inclusion of the post trial costs, there is an overspend identified above. I do believe that the post trial costs are greater than could have been foreseen and this is the reason for the overspend. SSH say that Sony have only themselves to blame as Dr Laakkinen’s first witness statement dealing with costs approached the issue on the wrong basis in that he did not give proper consideration to the role played by the budget. There is some force in this criticism but I think that it is too simplistic. I find that there is a good reason to depart from the budget on the Trial phase. A number of difficult issues on the assessment of the costs developed which I do not think either party anticipated. So far as I am aware, this is the first time an exercise of this type has been undertaken in patent proceedings.
  10. Sony accepts that the £80,675.40 post trial costs has not been assessed as proportionate and reasonable and suggest that I might make a modest reduction in that figure. I agree with that approach and bearing in mind the criticism of Dr Laakkanen’s first post trial witness statement, I will reduce the figure to £70,000 leaving an overspend of £25,948.62. I shall increase the budget for the Trial phase by that amount to £406,273.62. I bear in mind that there will be a deduction from this figure to take account of the fact that Sony lost on the infringement issue although the post trial costs do not concern the infringement issue at all. This is a consequence of the general approach to the issues on which Sony won and lost.
  11. Before I deal with the appropriate deduction from the budget figures to take into account the fact that Sony lost on the infringement issue, there is one further substantive issue in relation to the PPD phase with which I must deal. SSH served a notice of discontinuance in respect of its claim that Sony’s PlayStation 4 device infringed the Patent. CPR 38.6(1) provides: “Unless the court orders otherwise, a claimant who discontinues is liable for the costs which a defendant against whom the claimant discontinues incurred on or before the date on which notice of discontinuance was served on the defendant.”
  12. Sony does not seek all the costs that it incurred in respect of the PlayStation 4 claim but it asks for its costs of producing the PPD for that device which it says amounts to £40,739.43. It says that there is no reason for the court to ‘order otherwise’.
  13. SSH submits that the division of costs of validity going to Sony and the costs of infringement being deducted involves give and take on both sides. There are issues on infringement that Sony could be said to have won and there are issues on validity that SSH could be said to have won. It is not feasible to be more precise in the division than at the level of generality of infringement and validity. Moreover, SSH points out that Sony abandoned several pieces of prior art during the course of preparation of the case. Technically it should have served notice of discontinuance in respect of those aspects of its case, but it didn’t. Why should SSH be penalised for complying with the formality of discontinuing?
  14. I agree with SSH. In fact, this is the line that was taken in Sony’s skeleton argument:

12. Third, there should be a deduction from Sony’s recoverable costs to reflect that it lost on the issue of infringement. The parties have agreed that this is the appropriate level of generality for an issue-based costs order. One could in theory attempt to be more precise: Sony has not actually lost on the issue of infringement of VoLTE or WiFi Calling and has actually won on the issue of infringement by the PlayStation 4, since that was discontinued. On the other hand, not all of Sony’s invalidity allegations succeeded, albeit those allegations were closely related and it is questionable whether any of them amount to “a suitably circumscribed issue” for this purpose. So this approach is realistic and fair to both parties. It is consistent with the principle that “the estimation of costs … is more of an art than a science” (SmithKline Beecham plc v Apotex Europe Ltd (Costs) (No. 2) [2005] FSR 559, [27] (Jacob LJ)).

  1. The costs of the PPDs all relate to the issue of infringement and although Sony won on this particular case, in accordance with the level of generality adopted by the parties and which I regard as being appropriate in this case, Sony cannot recover those costs from SSH.
  2. That brings me on to the question as to how to apportion the costs of the infringement issues in the other phases in order to make the appropriate deduction from Sony’s costs.
  3. This case raises an unusual issue. Sony’s cost budget contained two extra columns on page one of Precedent H. They were under a heading “Apportionment” and were individually labelled “Infringement” and “Validity”. For each phase there is an apportionment between infringement and validity by percentage. The total of the two figures in each case totals 100%. For instance, the entry for CMC for which the costs had already been incurred, is apportioned as to 50% for each of infringement and validity.
  4. Sony seeks 100% of its costs for the CMC on the basis that these cannot be apportioned and represent general costs which go to the overall winner. SSH submits that Sony is bound by the apportionment it entered on Precedent H, even though apportionment is not required in Precedent H.
  5. Practice Direction 3E relates to Cost Management. Paragraph 7.3 provides:
If the budgets or parts of the budgets are agreed between all parties, the court will record the extent of such agreement. In so far as the budgets are not agreed, the court will review them and, after making any appropriate revisions, record its approval of those budgets. The courts approval will relate only to the total figures for each phase of the proceedings, although in the course of its review the court may have regard to the constituent elements of each total figure. When reviewing budgets, the court will not undertake a detailed assessment in advance, but rather will consider whether the budgeted costs fall within the range of reasonable and proportionate costs.
  1. Sony relies on this as an indication that it is only the total figure for each phase that is important for present purposes and that the apportionment was added as a guide and is not binding on it. It says that if the apportionment were to be binding then so would the other workings identifying the solicitors expected to do the work, the hours taken by each of them and their charging rates.
  2. SSH accepts that the courts approval only relates to the total figures for each phase but says that this is a case where the budgets were agreed between the parties and that the wording of the practice direction distinguishes between budgets which are agreed and those which are approved. It submits that where, as here, there is agreement of the budgets between the parties, that is a contract and cannot be unilaterally varied.
  3. SSH points out that by varying the percentages to increase the validity percentage, Sony are actually increasing their budget in respect of validity. I do not believe that the Practice Direction intended any such distinction to be drawn between budgets which have been agreed and those which have been approved. The consequence of SSH’s submission would be that if Sony’s solicitors realised that their apportionment was wrong they would have to seek SSH’s approval to change it and failing approval would have to apply to the court for approval. However, the court’s approval only relates to the total figure for each phase. If it is only the apportionment that is being changed, that is outside the remit of the court’s approval.
  4. SSH relies particularly on the fact that the CMC costs had already been incurred by the time the budget was drawn up so that Sony would have been in a position to be able to assess the proportions at that stage. However, I see a stated apportionment of 50/50 as being no more than that these costs are general costs of the action.
  5. Where it is apparent that the allocated apportionment is wrong I believe it would be invidious if the court could not, with the assistance of the parties, make its own assessment.
  6. There are five phases where the apportionment appearing in Sony’s budget is sought to be varied by Sony and I shall consider each one individually.
  7. CMC: The budget apportionment is 50/50. I agree with Sony’s submission that this phase is part of the general costs of the action and Sony should have 100%.
  8. Witness statements: Sony’s approved budget is £86,108.25 and its incurred cost is £50,656.85. The budget apportionment is 50/50. This is stated to be on the assumption that each party would have up to two witnesses on discrete issues. In fact, Sony only had one witness to prove publication of the prior art successfully relied on to invalidate the patent. Publication was denied by SSH until after the witness statement had been procured. The cost of obtaining this evidence clearly relates 100% to validity. SSH suggests that the cost is excessive for getting one witness statement. However, the agreed budget allowed an average of some £43,000 per witness statement. I am not satisfied that the actual figure is excessive and I will allow it in full.
  9. Expert Reports: The budget apportionment is 75/25 in favour of validity. Sony estimates that this should be 85/15. SSH make the point that, having regard to the overspend on expert reports, this amounts to quite a substantial increase in the costs sought to be allocated to validity. This is a relevant factor which I take into account. SSH point out that the size of Sony’s validity attack shrank considerably after the presentation of Sony’s budget. However, so did the size of the validity case. In all the circumstances, I think an apportionment of 80% is appropriate.
  10. Trial Preparation and Trial: The budget apportionment for both of these is 50/50. This is clearly wrong. Far more of the trial was taken up with validity rather than infringement and I cannot believe that the same was not true of the preparation. Sony suggests a split of 75/25. I regard this as a conservative estimate and I accept it.
  11. Annexed to this judgment is a spreadsheet which identifies the relevant phases in column 1 and the incurred costs and budget figures for each phase in columns 2 and 3. It then identifies the proposals of SSH and Sony respectively as to what the recoverable figure should be for each phase (columns 4 and 5) and what I allow for each phase (column 6). It then sets out the proportions that the parties propose Sony should recover and the monetary figure resulting (columns 7 to 10) and finally what I have determined is allowable (columns 11 and 12). The figure at the bottom of column 12, £876,347.28, is the sum I find that SSH has to pay Sony in respect of the costs of the action and counterclaim. The parties competing proposals are set out in red and my determinations are set out in green highlighted boxes.
  12. The parties agreed that interest should be paid at the rate of 1% above base rate on any payments in respect of these costs made by Sony prior to the date of this order from the date of such payment but, at the hearing SSH objected to an order requiring them to pay that since Sony had not provided the figures as to when the client had paid the invoices so that the amount of interest could be calculated. SSH objected to the order saying that it did not want to be in contempt for not paying the interest when it couldn’t pay it as it didn’t know how much it was. That can easily be cured by providing that the time to pay does not run until the interest has been agreed or determined by the court

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