James Hardie International Finance BV v CSR Limited [2007] FCA 366

James Hardie International Finance BV v CSR Limited [2007] FCA 366

Hardie's failure to lead evidence explaining its conduct of the Top Hat Batten Patent claim and its persistent failure to comply with Court orders to file evidence of infringement took the case out of the ordinary and justified a special costs order so that CSR would not be unreasonably out of pocket. However, indemnity costs were not necessary because a patentee has a prima facie title to sue and the Court was not in a position to conduct a mini trial on whether there was reasonable evidence of infringement. The appropriate order was that Hardie pay CSR's costs reasonably and properly incurred, with the general costs of the motion on a party and party basis.

Jurisdiction
Australia
Judgment Date
02 March 2007
Procedural Posture
Patent Infringement Proceeding and Cross Claim for Invalidity And/or Revocation / Motion for Leave to Discontinue Part of the Application and Cross Claim, With Costs in Issue
Outcome
Leave to discontinue the Top Hat Batten Claim and corresponding revocation cross-claim was granted on terms; a special costs order was made, but indemnity costs were not ordered.
Legal Topics
['leave to Discontinue' 'terms of Discontinuance' 'indemnity Costs' 'party and Party Costs' 'patent Infringement' 'patent Invalidity and Revocation']
['practice and Procedure' 'costs' 'patents'] ['leave to Discontinue' 'terms of Discontinuance' 'indemnity Costs' 'party and Party Costs' 'patent Infringement' 'patent Invalidity and Revocation']

Case Brief

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Procedural Posture

Patent Infringement Proceeding and Cross Claim for Invalidity And/or Revocation / Motion for Leave to Discontinue Part of the Application and Cross Claim, With Costs in Issue

Legal Issues

  1. 1 ['Whether leave should be granted to discontinue the Top Hat Batten Claim for infringement of Australian Innovation Patent No 2003100891 on terms.' 'Whether indemnity costs should be ordered as a term of leave to discontinue.' 'Whether a special costs order should be made requiring payment of costs reasonably and properly incurred.']

Ratio Decidendi

Hardie's failure to lead evidence explaining its conduct of the Top Hat Batten Patent claim and its persistent failure to comply with Court orders to file evidence of infringement took the case out of the ordinary and justified a special costs order so that CSR would not be unreasonably out of pocket. However, indemnity costs were not necessary because a patentee has a prima facie title to sue and the Court was not in a position to conduct a mini trial on whether there was reasonable evidence of infringement. The appropriate order was that Hardie pay CSR's costs reasonably and properly incurred, with the general costs of the motion on a party and party basis.

Court Disposition

Leave to discontinue the Top Hat Batten Claim and corresponding revocation cross-claim was granted on terms; a special costs order was made, but indemnity costs were not ordered.

Orders

  • ['The Applicants/Cross-Respondents have leave to discontinue the Application, insofar as it relates to the claim for relief for infringement of Australian Innovation Patent No 2003100891, on terms.' "The Applicants/Cross-Respondents pay such of the Respondents/Cross-Claimants' costs of defending the Top Hat Batten...