Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (No 2) [2012] FCA 1478

Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (No 2) [2012] FCA 1478

Because Lynx succeeded on most major substantive issues but Bradken succeeded or was put to unnecessary expense on some substantial matters, including the priority date issue, Lynx's abandonment of original claims, and the Notice of Objection to Competency, a modest 15% reduction from Lynx's party and party costs was appropriate under s 43(2). Indemnity costs were not appropriate for Bradken's late prior art abandonment because the abandonment was ultimately a responsible step to minimise trial time and cost.

Jurisdiction
Australia
Judgment Date
21 December 2012
Procedural Posture
Appeal and Cross Appeal From a Delegate of the Commissioner of Patents; Costs and Final Orders Following Substantive Reasons / Determined on the Papers After Delivery of Substantive Reasons
Outcome
Final declarations and orders made; appeals dismissed; WAD 212 of 2009 cross-appeal allowed except as to priority date; NSD 439 of 2007 cross-appeal dismissed; Bradken ordered to pay 85% of Lynx's party and party costs in both proceedings.
Legal Topics
['patent Application Sealing' 'priority Date' 'appeal and Cross Appeal From Commissioner of Patents Delegate' 'party and Party Costs' 'costs Discretion Under S 43(2) of the Federal Court of Australia Act 1976 (cth)']
['intellectual Property' 'patents' 'civil Procedure' 'costs'] ['patent Application Sealing' 'priority Date' 'appeal and Cross Appeal From Commissioner of Patents Delegate' 'party and Party Costs' 'costs Discretion Under S 43(2) of the Federal Court of Australia Act 1976 (cth)']

Case Brief

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Procedural Posture

Appeal and Cross Appeal From a Delegate of the Commissioner of Patents; Costs and Final Orders Following Substantive Reasons / Determined on the Papers After Delivery of Substantive Reasons

Legal Issues

  1. 1 ['What final declarations and orders should be made following the substantive reasons in Bradken No 1.' 'Whether Lynx should receive its party and party costs in full or subject to a discount to reflect issues on which Bradken succeeded and conduct in the proceedings.' "Whether indemnity costs should be awarded to Lynx for costs thrown away by Bradken's late abandonment of prior art."]

Ratio Decidendi

Because Lynx succeeded on most major substantive issues but Bradken succeeded or was put to unnecessary expense on some substantial matters, including the priority date issue, Lynx's abandonment of original claims, and the Notice of Objection to Competency, a modest 15% reduction from Lynx's party and party costs was appropriate under s 43(2). Indemnity costs were not appropriate for Bradken's late prior art abandonment because the abandonment was ultimately a responsible step to minimise trial time and cost.

Court Disposition

Final declarations and orders made; appeals dismissed; WAD 212 of 2009 cross-appeal allowed except as to priority date; NSD 439 of 2007 cross-appeal dismissed; Bradken ordered to pay 85% of Lynx's party and party costs in both proceedings.

Orders

  • ["Australian Patent Application No. 749848 ('the Patent') proceed to sealing with the priority date of its claims being 30 March 1999." 'The Patent should proceed to sealing and the Commissioner should so direct.' 'The appeal in proceedings number WAD 212 of 2009 is dismissed.' 'The Notice of Objection to Competency...