Aspirating IP Limited v Vision Systems Limited (No 2) [2011] FCA 249

Aspirating IP Limited v Vision Systems Limited (No 2) [2011] FCA 249

The respondent was substantially successful because the patent application was not to proceed to grant unless claims 1 to 18 were deleted and the respondent succeeded on the major issues of novelty, inventive step and claim construction. However, the respondent failed on entitlement, an issue on which it bore the onus and which involved separate factual material and evidence from England, so the applicant should receive its costs of that issue. The respondent's failures on priority date, some novelty and inventive step matters, and delayed narrowing of pleaded prior art did not warrant separate costs orders but justified reducing the respondent's recoverable costs by 25 per cent. Alleged...

Jurisdiction
Australia
Judgment Date
22 March 2011
Procedural Posture
Applications for Costs in Appeals in Opposition Proceedings Under S 60 of the Patents Act 1990 (cth) / Costs After Final Orders in Appeals and Cross Appeal
Outcome
The Court proposed costs orders requiring the applicant to pay 75 per cent of the respondent's costs except for the entitlement issue, and requiring the respondent to pay the applicant's costs of the entitlement issue; the parties were to be heard as to the form of those proposed orders.
Legal Topics
['costs' 'patent Opposition Proceedings' 'entitlement Under S 59(a) of the Patents Act 1990 (cth)' 'novelty' 'inventive Step' 'priority Date' 'indemnity Costs']
['intellectual Property' 'patents' 'civil Procedure'] ['costs' 'patent Opposition Proceedings' 'entitlement Under S 59(a) of the Patents Act 1990 (cth)' 'novelty' 'inventive Step' 'priority Date' 'indemnity Costs']

Case Brief

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Procedural Posture

Applications for Costs in Appeals in Opposition Proceedings Under S 60 of the Patents Act 1990 (cth) / Costs After Final Orders in Appeals and Cross Appeal

Legal Issues

  1. 1 ['Whether the respondent was substantially successful and entitled to costs despite failing on some issues.' 'Whether the entitlement issue under s 59(a) of the Patents Act 1990 (Cth) warranted a separate costs order in favour of the applicant.' "Whether the priority date issue and unsuccessful novelty or inventive step arguments warranted separate costs orders or only a reduction in the respondent's costs." 'Whether the applicant should receive indemnity costs for preparing and filing evidence in respect of prior art pleaded but abandoned or not relied upon at trial.' 'Whether the applicant should receive costs for preparing evidence responsive to evidence filed but not read by the respondent.' 'What costs scale applied to costs of the opposition proceedings before the delegates.']

Ratio Decidendi

The respondent was substantially successful because the patent application was not to proceed to grant unless claims 1 to 18 were deleted and the respondent succeeded on the major issues of novelty, inventive step and claim construction. However, the respondent failed on entitlement, an issue on which it bore the onus and which involved separate factual material and evidence from England, so the applicant should receive its costs of that issue. The respondent's failures on priority date, some novelty and inventive step matters, and delayed narrowing of pleaded prior art did not warrant separate costs orders but justified reducing the respondent's recoverable costs by 25 per cent. Alleged...

Court Disposition

The Court proposed costs orders requiring the applicant to pay 75 per cent of the respondent's costs except for the entitlement issue, and requiring the respondent to pay the applicant's costs of the entitlement issue; the parties were to be heard as to the form of those proposed orders.

Orders

  • ['The parties are to be heard as to any matters relevant to the form of the proposed orders set out in paragraph 8 of these reasons.' "Save and except for the issue of entitlement under s 59(a) of the Patents Act 1990 (Cth), the applicant pay 75 per cent of the respondent's costs of the proceedings before this Court...