Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd [2020] FCA 1835

Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd [2020] FCA 1835

The Court held that while the respondents/cross-claimants had failed on some minor issues, these did not cause significant additional expenditure of time or resources, making a major apportionment inappropriate; a 5% reduction of respondents' costs on the infringement claim was warranted for prior use issues. No reduction was appropriate for the cross-claim. No order for indemnity costs was made as the Calderbank offer was presented too early for meaningful consideration. Factoring the parties' protracted dispute and the guidance in the Practice Note, costs were ordered on a lump sum basis to be determined by a Registrar if not agreed.

Parties
Applicant/cross Respondent: Axent Holdings Pty Ltd t/a Axent Global; First Respondent/first Cross Claimant: Compusign Australia Pty Ltd; Second Respondent/second Cross Claimant: Hi-Lux Technical Services Pty Ltd; Third Respondent: Compusign Systems Pty Ltd
Jurisdiction
Australia
Judgment Date
22 December 2020
Procedural Posture
Intellectual Property Litigation (patent Infringement and Revocation) / Post Trial Costs Judgment and Final Orders
Outcome
Orders made for revocation of the patent (stayed pending appeal), dismissal of the infringement claim, and that the applicant pay 95% of the respondents' costs of the infringement claim and all the cross-claimants' costs of the cross-claim on a party and party basis, to be determined on a lump sum basis.
Legal Topics
Patent Revocation, Patent Infringement, Court Costs, Apportionment of Costs, Lump Sum Costs, Indemnity Costs, Calderbank Offer
Intellectual Property Patent Revocation Patent Infringement Court Costs Apportionment of Costs Lump Sum Costs Indemnity Costs Calderbank Offer

Case Brief

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Parties

Axent Holdings Pty Ltd t/a Axent Global

Applicant/cross Respondent

Compusign Australia Pty Ltd

First Respondent/first Cross Claimant

Hi-Lux Technical Services Pty Ltd

Second Respondent/second Cross Claimant

Compusign Systems Pty Ltd

Third Respondent

Procedural Posture

Intellectual Property Litigation (patent Infringement and Revocation) / Post Trial Costs Judgment and Final Orders

Legal Issues

  1. 1 Whether costs should be apportioned between the parties according to their respective success on the issues
  2. 2 Whether any party is entitled to indemnity costs following a Calderbank offer
  3. 3 Whether costs should be ordered on a lump sum basis or by taxation

Ratio Decidendi

The Court held that while the respondents/cross-claimants had failed on some minor issues, these did not cause significant additional expenditure of time or resources, making a major apportionment inappropriate; a 5% reduction of respondents' costs on the infringement claim was warranted for prior use issues. No reduction was appropriate for the cross-claim. No order for indemnity costs was made as the Calderbank offer was presented too early for meaningful consideration. Factoring the parties' protracted dispute and the guidance in the Practice Note, costs were ordered on a lump sum basis to be determined by a Registrar if not agreed.

Court Disposition

Orders made for revocation of the patent (stayed pending appeal), dismissal of the infringement claim, and that the applicant pay 95% of the respondents' costs of the infringement claim and all the cross-claimants' costs of the cross-claim on a party and party basis, to be determined on a lump sum basis.

Orders

  • Australian patent no. 2003252764 be revoked.
  • Order 1 (revocation) stayed for 28 days and, if appeal lodged, then until final determination of the appeal or further order.