Black & Decker Inc v Sunaone Pty Ltd [2008] FCA 1827

Black & Decker Inc v Sunaone Pty Ltd [2008] FCA 1827

The appropriate gross sum for the Applicants' costs was $825,000 after reducing the court expert's assessment by $33,000 for expert witness fees that were very much in excess of the scale rate. The Court otherwise ordered against the O 62 r 36A one-third reduction because the proceeding was substantial, concerned patent and design infringement and validity, involved a seven-day trial, substantial expert evidence and extensive prior art, was required in practical terms to be brought in a prescribed court, and resulted in significant injunctive and non-monetary relief in addition to the account of profits.

Jurisdiction
Australia
Judgment Date
28 November 2008
Procedural Posture
Costs in Patent and Design Infringement Proceeding With Cross Claim for Revocation / Gross Sum Costs Assessment on Applicants' Notice of Motion Filed 31 October 2008 After Judgment and Account of Profits
Outcome
Applicants obtained a gross sum costs order of $825,000 payable forthwith by the Respondent, with no reduction under Federal Court Rules O 62 r 36A.
Legal Topics
['gross Sum Costs Assessment' 'expert Witness Fees' 'federal Court Rules O 62 R 36 A' 'patent and Design Infringement' 'revocation Cross Claim']
['costs' 'patent Law' 'design Infringement'] ['gross Sum Costs Assessment' 'expert Witness Fees' 'federal Court Rules O 62 R 36 A' 'patent and Design Infringement' 'revocation Cross Claim']

Case Brief

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Procedural Posture

Costs in Patent and Design Infringement Proceeding With Cross Claim for Revocation / Gross Sum Costs Assessment on Applicants' Notice of Motion Filed 31 October 2008 After Judgment and Account of Profits

Legal Issues

  1. 1 ['Whether the costs ordered on 19 June 2008 should be specified in a gross sum under Federal Court Rules O 62 r 4(2)(c) and (d).' 'Whether expert witness fees paid in excess of the scale rate should be deducted from the gross sum assessment.' 'Whether costs should be reduced by one-third under Federal Court Rules O 62 r 36A because the account of profits was less than $100,000, or whether the Court should otherwise order.']

Ratio Decidendi

The appropriate gross sum for the Applicants' costs was $825,000 after reducing the court expert's assessment by $33,000 for expert witness fees that were very much in excess of the scale rate. The Court otherwise ordered against the O 62 r 36A one-third reduction because the proceeding was substantial, concerned patent and design infringement and validity, involved a seven-day trial, substantial expert evidence and extensive prior art, was required in practical terms to be brought in a prescribed court, and resulted in significant injunctive and non-monetary relief in addition to the account of profits.

Court Disposition

Applicants obtained a gross sum costs order of $825,000 payable forthwith by the Respondent, with no reduction under Federal Court Rules O 62 r 36A.

Orders

  • ['The costs ordered by the Court on 19 June 2008 to be paid by the Respondent to the Applicants are specified in a gross sum of $825,000.00, pursuant to Order 62 Rules 4(2)(c) and (d) of the Federal Court Rules.' 'Such sum shall be paid forthwith by the Respondent to the Applicants.' 'Such sum shall not be reduced...