PAC Mining Pty Ltd v Esco Corporation (No 2) [2009] FCAFC 52

PAC Mining Pty Ltd v Esco Corporation (No 2) [2009] FCAFC 52

The appellants succeeded on infringement but failed on discrete validity issues of novelty and obviousness, which challenged the basic validity of the patents and required the respondents to meet a substantial separate case that resulted in certificates of validity. Costs should therefore be apportioned by issue: the appellants should recover costs for infringement and fair basis issues, while the respondents should recover costs for novelty and obviousness issues. The offer of compromise was not taken into account because it was a composite proposal that did not give the respondents an opportunity to accept only the infringement outcome and did not represent an outcome no less favourable...

Jurisdiction
Australia
Judgment Date
01 May 2009
Procedural Posture
Patent Infringement Proceeding; Appeal and Cross Appeal Costs Determination / Full Court Determination of Costs After Judgment on Appeal From a Single Judge of the Federal Court of Australia
Outcome
Costs orders made apportioning first instance and appeal costs by issue; cross-appeal costs ordered to follow the event; appellants ordered to pay part of the respondents' costs of the costs determination.
Legal Topics
['apportionment of Costs by Issue' 'patent Infringement' 'patent Validity' 'cross Claim for Revocation' 'offer of Compromise' 'federal Court Costs Discretion']
['practice and Procedure' 'costs' 'patent Law'] ['apportionment of Costs by Issue' 'patent Infringement' 'patent Validity' 'cross Claim for Revocation' 'offer of Compromise' 'federal Court Costs Discretion']

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Procedural Posture

Patent Infringement Proceeding; Appeal and Cross Appeal Costs Determination / Full Court Determination of Costs After Judgment on Appeal From a Single Judge of the Federal Court of Australia

Legal Issues

  1. 1 ['Whether the appellants should receive their costs of the proceeding before the primary Judge generally despite failing on invalidity issues.' 'Whether the costs of the application and cross-claim should be apportioned by reference to infringement issues and validity issues.' "Whether the appellants' offer of compromise made under O 23 of the Federal Court Rules should affect the costs disposition." 'How costs of the appeal, cross-appeal and costs submissions should be ordered.']

Ratio Decidendi

The appellants succeeded on infringement but failed on discrete validity issues of novelty and obviousness, which challenged the basic validity of the patents and required the respondents to meet a substantial separate case that resulted in certificates of validity. Costs should therefore be apportioned by issue: the appellants should recover costs for infringement and fair basis issues, while the respondents should recover costs for novelty and obviousness issues. The offer of compromise was not taken into account because it was a composite proposal that did not give the respondents an opportunity to accept only the infringement outcome and did not represent an outcome no less favourable...

Court Disposition

Costs orders made apportioning first instance and appeal costs by issue; cross-appeal costs ordered to follow the event; appellants ordered to pay part of the respondents' costs of the costs determination.

Orders

  • ['Order 9 of the orders made by the court on 4 July 2008 be set aside.' 'In place of Orders 8 and 9 made by the court on 4 July 2008, the respondents/cross claimants pay the costs of the applicants/cross respondents of the Application and the Cross-claim to the extent that those costs relate to the issues raised by...