FEDERAL COURT OF AUSTRALIA

Becton Dickinson Pty Ltd v B. Braun Melsungen AG (No 2) [2018] FCA 1987

ORDERS

THE COURT ORDERS THAT:

The respondent pay 75% of the applicant’s costs of this proceeding.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

NICHOLAS J:

1    On 9 November 2018 I delivered judgment in this proceeding: Becton Dickinson Pty Ltd v B. Braun Melsungen AG [2018] FCA 1692 (“the principal judgment”). The parties were given an opportunity to file written submissions in relation to the issue of costs which they have done. These are my reasons for decision on that issue. I have adopted the same abbreviations and definitions in these reasons as were used by me in the principal judgment.

2    In the principal judgment I found that none of the claims of the 163, 164 and 814 Patents on which Braun sued Becton is infringed by the BD Device. It was on that basis that Braun’s amended notice of cross-claim was dismissed. Further, I held that a number of claims in each of those patents was invalid for lack of novelty, or because they were not fairly based on the matter described in the specifications. However, I rejected Becton’s contention that the relevant claims did not involve an inventive step.

3    Both parties accept that Becton is entitled to some proportion of its party/party costs of the proceeding. The only issue is how much Becton’s costs should be reduced by to take account of its lack of success on inventive step. Becton submitted that it would be appropriate to discount its costs by 20% to reflect that lack of success. Braun submitted that a discount of 50% was appropriate.

4    The relevant principles are not in dispute. They were summarised succinctly by the Full Court in EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Ltd [2011] FCAFC 92 as follows at [9]:

Costs are in the discretion of the Court (Federal Court of Australia Act 1976 (Cth) s 43). The discretion is broad but is to be exercised judicially. The fundamental purpose of the discretion is to compensate the successful party, not to punish the unsuccessful party. The furtherance of the goal of compensation means that, in general, a successful party will obtain an order for costs in its favour (Oshlack v Richmond River Council (1998) 193 CLR 72; [1998] HCA 11 at [65]-[68]). However, “a successful party who has failed on certain issues may not only be deprived of the costs of those issues but may be ordered as well to pay the other party’s costs of them…” (Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 40-748 at 48,136). If apportionment of costs is appropriate, the object is not mathematical precision (Dodds Family Investments Pty Ltd (formerly Solar Tint Pty Ltd) v Lane Industries Pty Ltd (1993) 26 IPR 261 at 272) but a result that best reflects the interests of justice in the overall circumstances of the case.

5    As I have said, it is accepted by both parties in the present case that the costs of the proceeding should be awarded to Becton subject to a discount that takes account of its lack of success on the issue of inventive step.

6    Braun submitted that Becton’s claim of invalidity based on lack of inventive step was independent of its other claims for invalidity and raised substantial but discrete issues which were otherwise unnecessary for the parties and the Court to deal with. I did not understand Becton to dispute this proposition which is consistent with Becton’s acceptance that the costs to be awarded in its favour should be reduced by a factor of 20%.

7    In support of its submission that Becton’s costs should be reduced by a factor of 50%, Braun relied upon an analysis of the contents of the court book, including the affidavits, the joint expert report, the transcript and the written closing submissions that were said to be devoted to the issue of inventive step. Becton did not accept that Braun’s “rough and ready” analysis of the court book and other materials was accurate or that it provided a reliable indication as to the time and cost involved in dealing with Becton’s inventive step case.

8    It is clear that there was a substantial amount of material which, on any view, need not have been prepared, deployed and tested had Becton not challenged the validity of the relevant claims on the ground that they did not involve an inventive step. However, I do not think the time and cost devoted to the issue was as great as Braun’s analysis suggests. My own impression is that a far greater amount of time and costs was devoted to understanding the background to the invention, the proper characterisation of the invention as described in the three specifications in suit, and the proper construction of the relevant claims. These matters are relevant to not only to inventive step but also to infringement and fair basis.

9    Both parties accept that it is not possible to be mathematically precise in assessing an appropriate discount factor in a case such as this. My assessment as to the appropriate discount figure will necessarily be based on a judicial estimation of the amount of time and cost devoted to particular issues which itself is largely based upon impressions formed by me when hearing and deciding the case.

10    In all the circumstances, I am satisfied that it is appropriate to reduce Becton’s costs by 25% to take account of its lack of success on the issue of inventive step.

11    There will be an order requiring Braun to pay 75% of Becton’s costs of the proceeding.

Associate:

Dated:    13 December 2018