FEDERAL COURT OF AUSTRALIA

Arico Trading International Pty Ltd v Kimberly-Clark Australia Pty Ltd

[1999] FCA 275

ARICO TRADING INTERNATIONAL PTY LIMITED, ARIE KLIGER and FRANCISCO MARTIN OTERO t/as KOALA NAPPY EXPRESS v KIMBERLEY-CLARK AUSTRALIA PTY LIMITED

NG1051 of 1998

WILCOX, BRANSON and TAMBERLIN JJ

SYDNEY

20 OCTOBER 1999

THE COURT ORDERS THAT:

1.                  The application to vary the costs orders made on 30 August 1999 be refused.

2.                  The respondent, Kimberley-Clark Australia Pty Limited, pay the costs incurred by the appellants, Arico Trading International Pty Limited, Arie Kliger and Francisco Martin Otero, in connection with this application.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT OF APPLICATION CONCERNING COSTS

1                     THE COURT:  Judgment in this appeal was delivered on 30 August.  By majority, (Wilcox and Branson JJ, Tamberlin J dissenting) the Court upheld the appeal on the ground that the subject patent failed to comply with s40(2)(a) of the Patents Act 1990.  The majority did not find it necessary to deal with other grounds of invalidity advanced by the appellants.

2                     Judgment was delivered by Wilcox J.  He made orders, on behalf of the Court, that included orders that the unsuccessful respondent pay the appellants’ costs in relation to the appeal and also their costs of the hearing at first instance before Burchett J.  Immediately after the orders were announced, junior counsel for the respondent indicated her client wished to put the submission that it should not be required to pay all those costs.  Wilcox J responded that the submission ought to have been made at the hearing; however he said the Court would consider any application to vary the costs order that might be made in writing.  The Court has now received and considered written submissions from both parties.

3                     In the usual course, costs follow the event.  In the case of a successful appeal, it is commonplace for the costs order made by the Full Court to extend to costs of the trial.  Where a party wishes to put the submission that an order to that effect ought not be made, if that party is unsuccessful in the appeal, the party ought to indicate this during the hearing of the appeal.  The Court might decide to defer consideration of the submission until the outcome is known, but at least it will be aware of the point and will refrain from making orders on the assumption that no special submission is intended to be put.

4                     The respondent does not resist an order that it pay the costs of the appeal.  At issue are the costs of the trial.  The respondent seeks to dissect these by reference to issues on which the appellants have not been held (on appeal) entitled to succeed.

5                     We do not think it is appropriate to make that dissection.  The respondent embarked on litigation to restrain infringement of a patent which the Court has held to be invalid.  We do not see why the successful opponents ought not to have the general costs of the litigation, notwithstanding that some issues were left unresolved in the Full Court.  This is not a case in which the successful party unreasonably raised a discrete, substantial issue upon which it failed.  The most that can be said is that time was spent at the trial on issues ultimately left open.

6                     We reject the application to vary the orders made on 30 August.

Associate:

Dated:              20 October 1999