Damorgold Pty Ltd v Blindware Pty Ltd (No 2) [2018] FCA 364

Damorgold Pty Ltd v Blindware Pty Ltd (No 2) [2018] FCA 364

The correct costs outcome was to treat the infringement claim and the validity cross-claim as separate events. Blindware succeeded in defending the Originating Application, but Damorgold succeeded in defeating the Cross-claim, which raised distinct issues and required substantially more time and complexity than the infringement construction issue. Damorgold did not act unreasonably in rejecting the offers of compromise because the construction issue was arguable, evidence had not yet been filed, the cross-claim would have been discontinued under the offers, and Damorgold ultimately obtained dismissal of the cross-claim and a s 19 certificate. Although Damorgold held a prior s 19...

Jurisdiction
Australia
Judgment Date
19 March 2018
Procedural Posture
Costs Judgment in Patent Infringement and Invalidity Proceeding / Determined on the Papers After Liability Judgment and Final Orders
Outcome
The Court confirmed costs orders requiring the Applicants to pay Blindware's party-party costs of the Originating Application and Blindware to pay the Applicants' party-party costs of the Cross-claim, with lump sum costs to be determined by a Registrar.
Legal Topics
['costs Following the Event' 'apportionment of Costs Between Originating Application and Cross Claim' 'offers of Compromise' 'indemnity Costs' 'certificate Under S 19 of the Patents Act 1990 (cth)' 'direction Under S 19(3) of the Patents Act 1990 (cth)' 'overarching Purpose and Genuine Steps Obligations']
['costs' 'patents' 'intellectual Property' 'practice and Procedure'] ['costs Following the Event' 'apportionment of Costs Between Originating Application and Cross Claim' 'offers of Compromise' 'indemnity Costs' 'certificate Under S 19 of the Patents Act 1990 (cth)' 'direction Under S 19(3) of the Patents Act 1990 (cth)' 'overarching Purpose and Genuine Steps Obligations']

Case Brief

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Procedural Posture

Costs Judgment in Patent Infringement and Invalidity Proceeding / Determined on the Papers After Liability Judgment and Final Orders

Legal Issues

  1. 1 ['Whether costs should be determined globally or separately for the infringement claim and invalidity cross-claim.' 'Whether Blindware was entitled to indemnity costs because Damorgold rejected offers of compromise.' "Whether Damorgold acted unreasonably in rejecting Blindware's offers of compromise." 'Whether the Court should make a direction under s 19(3) of the Patents Act 1990 (Cth) affecting the operation of s 19(2).' 'Whether any conduct concerning admissions, pre-litigation steps or litigation conduct should alter the ordinary costs orders.']

Ratio Decidendi

The correct costs outcome was to treat the infringement claim and the validity cross-claim as separate events. Blindware succeeded in defending the Originating Application, but Damorgold succeeded in defeating the Cross-claim, which raised distinct issues and required substantially more time and complexity than the infringement construction issue. Damorgold did not act unreasonably in rejecting the offers of compromise because the construction issue was arguable, evidence had not yet been filed, the cross-claim would have been discontinued under the offers, and Damorgold ultimately obtained dismissal of the cross-claim and a s 19 certificate. Although Damorgold held a prior s 19...

Court Disposition

The Court confirmed costs orders requiring the Applicants to pay Blindware's party-party costs of the Originating Application and Blindware to pay the Applicants' party-party costs of the Cross-claim, with lump sum costs to be determined by a Registrar.

Orders

  • ['The Originating Application be dismissed.' 'The Notice of Cross-claim be dismissed.' 'The Court certifies pursuant to s 19 of the Patents Act 1990 (Cth) that the validity of claims 1-25 of the Patent was unsuccessfully questioned in this proceeding.' "The Applicants pay the Respondent's costs of and incidental to...