FEDERAL COURT OF AUSTRALIA

Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [2000]

FCA 407

INTELLECTUAL PROPERTY – application to amend patent – costs – whether usual rule that the applicant bears the costs should be applied – where respondent had unsuccessfully pursued additional allegations against the applicant at the hearing of the amendment application

Autodesk Inc v Dyason No 2 (1993) 176 CLR 300

Wimmera Industrial Minerals Pty Limited v RGC Mineral Sands Limited (12 November 1997, Sundberg J, unreported)

Terrell on the Law of Patents 14^th ed 1994

GAMBRO PTY LTD & GAMBRO AB v

FRESENIUS MEDICAL CARE SOUTH EAST ASIA PTY LTD

NG 474 OF 1997

TAMBERLIN J

SYDNEY

10 MARCH 2000

THE COURT ORDERS THAT:

1.         The respondents be granted leave to re-open the question of costs.

2          The applicants pay seventy per cent of the respondent’s costs of the amendment application on a party party basis

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

REASONS FOR JUDGMENT

1                     In this matter an application is made by the respondent (“FMC”) to re-open the question of costs.  It has been drawn to my attention that at the conclusion of the hearing it was foreshadowed that argument in relation to costs ought to await the reasons for the substantive judgment.  A costs order adverse to FMC was made with that judgment.  Having heard the submissions of the parties I am satisfied that the requirements of Autodesk Inc v Dyason No 2 (1993) 176 CLR 300 have been met and that it is appropriate to allow the question of costs to be argued.

2                     It is submitted for FMC that the normal rule in relation to costs in applications to amend patents is that because an indulgence is being granted as a result of the amendment application the Court normally awards costs to the party opposing the application for amendment: Terrell on the Law of Patents 14^th ed 1994 at par 7.52.  I am satisfied that that principle applies in the present case and it is simply a question as to whether any discount should be allowed in relation to those costs.

3                     I have considered the decision of Sundberg J in Wimmera Industrial Minerals Pty Limited v RGC Mineral Sands Limited (12 November 1997, unreported) where his Honour considered this question in a brief ex tempore judgment.  The present case is not dissimilar to the facts in Wimmera however there is one significant difference which, I think, weighs against FMC.  That is that there was a long and sustained attack in the present case on the applicant (“Gambro”) relating to non-disclosure, and the maintenance of the claim which was said to be too wide.  This attack was eventually resolved in favour of Gambro.

4                     Having regard to this consideration, which I think distinguishes the present case from Wimmera, but also taking into account that several of the amendments were not of a substantial nature and that at the hearing Gambro abandoned the amendment in relation to claims 88 to 94, I think on a fair balance I ought to award costs in favour of FMC in an amount of 70 per cent of its costs assessed on a party/party basis.

5                     I grant leave to the respondent to re-open the question of costs and I order the applicant to pay seventy per cent of the respondent’s costs of the amendment application on a party party basis.

Associate:

Dated:              31 March 2000