Nichia Corporation v Arrow Electronics Australia Pty Ltd (No 5) [2017] FCA 1013

Nichia Corporation v Arrow Electronics Australia Pty Ltd (No 5) [2017] FCA 1013

The respondent's early admissions did not fully engage with paragraphs 1 to 6 of the notice to admit, and those paragraphs sought admissions of factual matters concerning elements and characteristics of the accused products rather than matters dependent on claim construction. The applicant was put to unnecessary proof of uncontroversial facts, so r 22.03 required the respondent to pay the applicant's costs of proving those facts. No qualification should be made to the applicant's costs of the cross-claim for the fair basis issue because that issue was not decided, it did not necessarily follow that the respondent would have succeeded had the applicant's construction been adopted, and the...

Jurisdiction
Australia
Judgment Date
30 August 2017
Procedural Posture
Patents Proceeding Concerning Costs and Other Orders / Post Judgment Orders Following Reasons on Infringement and Invalidity
Outcome
Originating application dismissed; notice of cross-claim dismissed; costs orders made; certificate issued that validity of claim 1 and claim 3 of Patent No. 720234 was questioned.
Legal Topics
['costs of Originating Application' 'costs of Cross Claim' 'notice to Admit' 'notice of Dispute' 'certificate That Validity of Patent Claims Was Questioned']
['intellectual Property' 'patents' 'civil Procedure' 'costs'] ['costs of Originating Application' 'costs of Cross Claim' 'notice to Admit' 'notice of Dispute' 'certificate That Validity of Patent Claims Was Questioned']

Case Brief

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Procedural Posture

Patents Proceeding Concerning Costs and Other Orders / Post Judgment Orders Following Reasons on Infringement and Invalidity

Legal Issues

  1. 1 ["Whether the respondent should pay the applicant's costs of proving facts identified in paragraphs 1 to 6 of the applicant's notice to admit dated 17 October 2014." "Whether the applicant's entitlement to costs of the cross-claim should be qualified to exclude costs relating to the fair basis issue." 'Whether a certificate should issue under s 19 of the Patents Act 1990 (Cth) that the validity of claim 1 and claim 3 of Patent No. 720234 was questioned in the proceeding.']

Ratio Decidendi

The respondent's early admissions did not fully engage with paragraphs 1 to 6 of the notice to admit, and those paragraphs sought admissions of factual matters concerning elements and characteristics of the accused products rather than matters dependent on claim construction. The applicant was put to unnecessary proof of uncontroversial facts, so r 22.03 required the respondent to pay the applicant's costs of proving those facts. No qualification should be made to the applicant's costs of the cross-claim for the fair basis issue because that issue was not decided, it did not necessarily follow that the respondent would have succeeded had the applicant's construction been adopted, and the...

Court Disposition

Originating application dismissed; notice of cross-claim dismissed; costs orders made; certificate issued that validity of claim 1 and claim 3 of Patent No. 720234 was questioned.

Orders

  • ['The originating application be dismissed.' 'The notice of cross-claim be dismissed.' "The applicant pay the respondent's costs of the originating application, other than the respondent's costs of disputing the truth of the facts identified in paragraphs 1 to 6 of the applicant's notice to admit dated 17 October...