Surgibit IP Holdings Pty Limited v Ellis [2016] NSWSC 359

Surgibit IP Holdings Pty Limited v Ellis [2016] NSWSC 359

The defence that the United States judgment's triple damages and attorney's fees were penal in nature was reasonably arguable and not shown to be doomed to failure, particularly because the United States judgment linked enhanced damages and attorney's fees to the defendant's lack of respect for the judicial process and findings as to wilful patent infringement. Leave to file an amended defence was therefore granted. However, because the defendant conceded that ordinary damages of $US 205,905.00 and recoverable costs of $US 3,610.00 were not disputed as penal, those portions were severable and the plaintiff was entitled to partial default judgment for the undisputed amount once precise...

Jurisdiction
Australia
Judgment Date
01 April 2016
Procedural Posture
Application for Leave to File an Amended Defence in Proceedings Seeking Registration or Enforcement of a United States Judgment / Notice of Motion Heard on 30 March 2016; Procedural Ruling on Leave to Amend Defence and Severance for Partial Default Judgment
Outcome
Leave granted to the defendant to file an amended defence; plaintiff held entitled to partial default judgment for severed undisputed parts of the foreign judgment after calculation; each party to pay its or his own costs of the 30 March 2016 proceedings.
Legal Topics
['enforceability of Foreign Judgment' 'penal Nature of Foreign Judgment' 'severance of Part of Claim' 'default Judgment' 'leave to File Amended Defence' 'triple Damages' "attorney's Fees"]
['civil Procedure' 'private International Law' 'foreign Judgments' 'patents'] ['enforceability of Foreign Judgment' 'penal Nature of Foreign Judgment' 'severance of Part of Claim' 'default Judgment' 'leave to File Amended Defence' 'triple Damages' "attorney's Fees"]

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Procedural Posture

Application for Leave to File an Amended Defence in Proceedings Seeking Registration or Enforcement of a United States Judgment / Notice of Motion Heard on 30 March 2016; Procedural Ruling on Leave to Amend Defence and Severance for Partial Default Judgment

Legal Issues

  1. 1 ['Whether the defendant should be granted leave to file an amended defence alleging that parts of the United States judgment are penal in nature and unenforceable in New South Wales.' 'Whether the triple damages ordered by the United States District Court are reasonably arguable to be penal in nature.' "Whether the attorney's fees ordered by the United States District Court are reasonably arguable to be penal in nature." 'Whether undisputed portions of the foreign judgment should be severed and default judgment entered for those amounts.']

Ratio Decidendi

The defence that the United States judgment's triple damages and attorney's fees were penal in nature was reasonably arguable and not shown to be doomed to failure, particularly because the United States judgment linked enhanced damages and attorney's fees to the defendant's lack of respect for the judicial process and findings as to wilful patent infringement. Leave to file an amended defence was therefore granted. However, because the defendant conceded that ordinary damages of $US 205,905.00 and recoverable costs of $US 3,610.00 were not disputed as penal, those portions were severable and the plaintiff was entitled to partial default judgment for the undisputed amount once precise...

Court Disposition

Leave granted to the defendant to file an amended defence; plaintiff held entitled to partial default judgment for severed undisputed parts of the foreign judgment after calculation; each party to pay its or his own costs of the 30 March 2016 proceedings.

Orders

  • ['Within one week of today, the parties are to provide me, if possible, with agreed calculations and agreed draft orders reflecting the precise sum in which default judgment should be entered against the defendant in accordance with the severance discussed in this judgment.' "If such agreement is not forthcoming,...