Court awards 50% net costs to Bristol-Myers Squibb after partial success on patent validity appeal.

THE COURT OF APPEAL

CIVIL

[approved]

Neutral Citation Number: [2025] IECA 68

[2024 No. 34]

The President

Allen J

O’Moore J

IN THE MATTER OF IRISH PATENT NUMBER EUROPEAN PATENT (IE) 1 427

415 “LACTAM-CONTAINING COMPOUNDS AND DERIVATIVES THEREOF AS

FACTOR Xa INHIBITORS” AND REGISTERED IN THE NAME OF BRISTOL-

MYERS SQUIBB HOLDINGS IRELAND UNLIMITED COMPANY

AND

IN THE MATTER OF THE PATENTS ACTS 1992 TO 2019

BETWEEN

BRISTOL-MYERS SQUIBB HOLDINGS IRELAND UNLIMITED COMPANY

PLAINTIFF/APPELLANT

AND

NORTON (WATERFORD) LIMITED T/A TEVA PHARMACEUTICALS IRELAND

DEFENDANT/REPSONDENT

COSTS RULING of Ms Justice Costello delivered on the 21st day of March 2025

1. For the reasons given in a judgment delivered on 28th November, 2024 [2024] IECA

287 the Court decided that the judgment and order of the High Court, insofar as it held that the patent and SPC the subject of these proceedings, was invalid, should be overturned and the challenge to the validity of the patent on grounds of plausibility be remitted for rehearing to the High Court before a different judge.

2. This ruling concerns the costs of the appeal. The Court has received two written legal submissions from each of the parties and has had the benefit of an oral hearing on 20th February 2025 on the issue.

3. In my judgement, BMS cannot be described as having been “entirely successful” within the meaning of s. 169 of the Legal Services Regulations Act, 2015, as, while it has succeeded in overturning the judgment and order of the High Court, it has not succeeded in upholding the validity of the patent. The question of the validity of the patent remains to be decided at the rehearing in the High Court. Accordingly, the provisions of s. 169 of the 2015 Act do not apply. On the other hand, it has been partially successful in the proceedings within the meaning of s. 168 of the Act.

4. Section 168(2) of the 2015 provides: “(2) Without prejudice to subsection (1), the order [for costs] may include an order that a party shall pay—

(a) a portion of another party’s costs,

...

(d) where a party is partially successful in the proceedings, costs relating to the successful element or elements of the proceedings”.

5. BMS was successful in its argument that the judgment should be set aside on the grounds that the trial judge had failed to make essential findings of fact and had failed to give reasons for his essential conclusions. It also succeeded in its argument that the trial judge erred in his application of the law of comity in respect of decisions of various European courts on the validity of the 415 patent. The appeal has resulted in the overturning of the

decision of the High Court and the net result is, pending the rehearing, the validity of the patent is restored. The Court therefore may make an order that Teva pay a portion of BMS’s costs of the appeal (s. 168(2)(a)) or the costs relating to the “elements of the proceedings” in which it succeeded (s. 168(2)(d)).

6. However, a significant portion of the four days of the appeal was taken up with an argument upon which BMS was unsuccessful: namely, whether the Court could decide the appeal by reference to the decision of the Enlarged Board of Appeal in Case G2/21 Sumitomo. The Court held that it was not open to BMS to argue this point in the appeal, having failed to run the case in the High Court on the basis that Case G2/21 Sumitomo established the applicable test as to plausibility. Accordingly, the Court should deduct a portion of the total costs incurred by BMS in the appeal to reflect the fact that it was unsuccessful in relation to this “element” of the proceedings.

7. Taking all of this into account and the amount of work done and time spent on the applicability of the test in G2/21, in my judgement, BMS is entitled to an award of 75% of the costs of the appeal, to be adjudicated in default of agreement.

8. Section 168(2)(a) entitles a court to order that a party shall pay a portion of another party’s costs. Teva resisted BMS’s argument that the Court should apply the test established by the Enlarged Board of Appeal in G2/21 to resolve the appeal in this case. While the Court has directed that the High Court, retrying the issue, should apply the test established in G2/21, the Court has not resolved the issue of plausibility by reference to that test on the appeal. To that extent, Teva has been partially successful on an element in the proceedings, even though it has not been successful in the appeal. It is therefore appropriate to reflect this degree of success by awarding Teva a portion of its costs of the appeal. In my judgement, it is appropriate to award Teva 25% of its costs of the appeal, to reflect the work done and time spent in dealing with the applicability of the test in G2/21 to the appeal.

9. Thus, the appropriate order in respect of the costs of the appeal in these proceedings is:

(a) BMS will recover as against Teva 75% of the costs of the appeal.

(b) Teva will recover against BMS 25% of the costs of the appeal.

(c) There should be a set off of the costs awarded to Teva against the costs awarded to BMS leaving a net award of 50% of the costs of BMS in the appeal to be paid by Teva, such costs to be adjudicated in default of agreement.

10. As the High Court has not yet been asked to rule in relation to the costs of the trial, the issue of the costs of the trial before Barrett J do not form part of the appeal.

11. Allen and O’Moore JJ have indicated their agreement with this ruling.