Mizzi Family Holdings Pty Ltd v Morellini (No 2) [2014] FCA 807

Mizzi Family Holdings Pty Ltd v Morellini (No 2) [2014] FCA 807

Because Mizzi and Mr Mizzi made unjustifiable threats and there was some evidence that those threats adversely affected Mr Morellini, there was no reason to deprive him of a declaration even though damages were abandoned. Costs should be allocated by reference to the parties' success and failure on the distinct issues: Mizzi failed on infringement, Mr Morellini failed on validity, and Mr Morellini succeeded on unjustifiable threats. In light of the costs orders made, an interim costs order was neither appropriate nor possible.

Jurisdiction
Australia
Judgment Date
01 August 2014
Procedural Posture
Patent Infringement Proceeding With Cross Claim for Invalidity and Unjustifiable Threats / Determination of Declaration and Costs After Substantive Findings
Outcome
Declaration made that the threats were unjustifiable; application and cross-application otherwise dismissed; issue-based costs orders made; liberty to apply granted.
Legal Topics
['patent Infringement' 'patent Validity' 'unjustifiable Threats' 'costs' 'interim Costs Orders']
['intellectual Property' 'patents' 'practice and Procedure'] ['patent Infringement' 'patent Validity' 'unjustifiable Threats' 'costs' 'interim Costs Orders']

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Procedural Posture

Patent Infringement Proceeding With Cross Claim for Invalidity and Unjustifiable Threats / Determination of Declaration and Costs After Substantive Findings

Legal Issues

  1. 1 ['Whether a declaration should be made that the threats of patent infringement proceedings were unjustifiable' 'What costs orders should be made where the applicant failed on infringement, the cross-claimant failed on invalidity, and the cross-claimant succeeded on unjustifiable threats' 'Whether an interim payment of costs should be ordered before taxation']

Ratio Decidendi

Because Mizzi and Mr Mizzi made unjustifiable threats and there was some evidence that those threats adversely affected Mr Morellini, there was no reason to deprive him of a declaration even though damages were abandoned. Costs should be allocated by reference to the parties' success and failure on the distinct issues: Mizzi failed on infringement, Mr Morellini failed on validity, and Mr Morellini succeeded on unjustifiable threats. In light of the costs orders made, an interim costs order was neither appropriate nor possible.

Court Disposition

Declaration made that the threats were unjustifiable; application and cross-application otherwise dismissed; issue-based costs orders made; liberty to apply granted.

Orders

  • ['The threats made by the first and second cross-respondents of proceedings for infringement of Australian innovation patent AU2010100955 by the specified Canegrowers Magazine publication and statement to Mr Charles Girgenti were unjustifiable.' "The applicant pay the respondent's costs of and incidental to the...