In the case of Monsanto v Cargill [2007] EWHC 3113 (Pat), the English High Court had to apportion costs in light of its earlier judgement in a patent infringement action brought by Monsanto against Cargill. In that action, Monsanto had won on all issues, except on a relatively small construction issue involving the word “isolated”, and on the validity of claim 6 of the patent under dispute. It is to be noted that both Monsanto and Cargill had spent significant amounts on the case: Monsanto incurred costs £2.2 million, while faced costs of up to £1.9 million.

Before embarking on apportioning the costs, the Court held the following principles:

1. Prior to Civil Procedure Rules (CPR), the Court exercised a general control on costs through a process of certification. Once the CPR was enacted, the requirement of certification was abolished and the Court was obliged to identify the overall winner of the proceedings.

2. Where the costs incurred by the overall winner could not be allocated to a particular issue, as a general principle, the overall winner is likely to be entitled to recover them, unless there are exceptional reasons to make a contrary decision.

3. In relation to costs that could properly be identified with issues on which the overall winner had nevertheless lost, two questions had to be asked: (1) should the winner recover his costs of that issue?; and (2) should he pay the otherwise unsuccessful party's costs incurred in respect of that issue?

4. The first question can simply be answered by the old process of certification. However, in answering the second question, not only does one have to give regard to the reasonableness in raising the issue by the party, but also to the fact as to whether there was something more than the mere conduct of the action that would justify his being deprived of the costs of the issue.

5. There should be very strong justifications before one can depart from the general rule that the unsuccessful party should pay the costs of the successful party. In cases where such justifications do exist, it would be convenient to treat both parties' costs on that issue as being equal to and double the deduction. Thus, where a party failed to recover the costs of an issue amounting to 15 per cent of his total costs, he would be deducted 30 per cent of his costs if the court concluded that he should also pay the costs of that issue to the other side.

After applying these principles to the case, the Court ordered Cargill, which had won the infringement issue only on construction, to pay half of Monsanto’s costs on that issue. Cargill was not entitled for its own costs on the issue as per the decision of the Court. On the issue of validity, Monsanto was found to be entitled to its costs, subject to a deduction for the single claim 6 on which it failed.