FEDERAL COURT OF AUSTRALIA
Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 3) [2020] FCA 515
ORDERS
DATE OF ORDER: |
1. By means of its supply of Solcenic GM20 LD to the Broadmeadow underground coal mine operated at Broadmeadow in Queensland by the BHP Billiton Mitsubishi Alliance (the Broadmeadow Mine) since July 2016, the Respondent has infringed under section 117 of the Patents Act 1990 (Cth):
(a) claims 1, 2, 9, 10, 11, 12, 14, 15 and 16 of Australian Standard Patent 2012304245 (the First Patent); and
(b) claims 1, 2 and 3 of Australian Innovation Patent 2013100458 (the Second Patent).
THE COURT NOTES THAT:
2. The Second Patent expired at the end of its term on 2 February 2020.
THE COURT ORDERS THAT:
3. During the term of the First Patent, the Respondent, whether by itself, its directors, officers, employees or agents, or otherwise, be restrained from supplying or offering to supply Solcenic GM20 LD to the Broadmeadow Mine without the licence or authority of the Applicant.
4. Without limiting order 3 above, during the term of the First Patent, the Respondent, whether by itself, its directors, officers, employees or agents, or otherwise, be restrained from infringing the First Patent without the licence or authority of the Applicant.
5. The Cross-Claim be dismissed.
6. Save as to costs orders already made, the Respondent pay 90% of the Applicant’s costs of the Application and the Cross-Claim, as agreed or taxed.
7. There be an inquiry as to damages or profits in respect of the Respondent’s infringement of the First Patent and the Second Patent by the supply of Solcenic GM20 LD to the Broadmeadow Mine, such inquiry to be listed for directions on a date to be fixed.
8. The matter be stood over to the docket judge for the making of orders for the further progress of the proceeding.
THE COURT CERTIFIES THAT:
9. For the purpose of section 19 of the Act, the validity of claims 1 to 22 of the First Patent and claims 1 to 3 of the Second Patent was questioned unsuccessfully in this proceeding.
THE COURT FURTHER ORDERS THAT:
10. Orders 3, 4, 6 and 7 be stayed until 4.00pm on 26 May 2020.
11. The parties each have until 4.00pm on 19 May 2020 to file any Notice of Appeal and until 4.00pm on 26 May 2020 to file any application for a stay of Orders 3, 4, 6 and 7 pending any appeal together with evidence in support of that application.
12. In the event that either party files a Notice of Appeal and an application for the stay pending appeal pursuant to Order 11, Orders 3, 4, 6 and 7 be stayed until the determination of the stay application.
THE COURT NOTES THE FOLLOWING UNDERTAKING TO THE COURT:
13. The Respondent undertakes to keep documentary records of the volumes and pricing of any Solcenic GM20 LD which it supplies to the Broadmeadow Mine or any other person or entity, during period of the stay provided by Order 10 and, if an application for a stay is made pursuant to Order 11, pending the determination of such stay application.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ROBERTSON J:
Background
1 On 17 March 2020, I gave judgment in Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 2) [2020] FCA 306. These present reasons concern the form of final orders to give effect to the earlier judgment, including costs. They should be read with the earlier judgment.
2 After the exchange of short written submissions between the parties, as directed by me in the event of disagreement, the matters in dispute between the parties as to the form of orders were whether a definition of the Solsenic GM20 LD product should be included, and costs.
Stay
3 An earlier dispute as to a stay of final orders was resolved on the basis that there be a temporary stay of certain orders, as follows:
10. Orders 3, 4, 6 and 7 be stayed until 4.00pm on 26 May 2020.
11. The parties each have until 4.00pm on 19 May 2020 to file any Notice of Appeal and until 4.00pm 26 May 2020 to file any application for a stay of Orders 3, 4, 6 and 7 pending any appeal together with evidence in support of that application.
12. In the event that either party files a Notice of Appeal and an application for the stay pending appeal pursuant to Order 11, Orders 3, 4, 6 and 7 be stayed until the determination of the stay application.
Definition of Solcenic GM20 LD
4 Turning then to the first of the matters in dispute, Fuchs contended that the final orders should contain a definition of Solcenic GM20 LD as follows:
Solcenic GM20 LD Product means Solcenic GM20 LD longwall fluid concentrate containing Uniqua W400X Fluorescent Fluid Additive at the concentration of 180g per 100L of longwall fluid concentrate, to be applied in an emulsion at a ratio of 2 parts longwall fluid concentrate to 98 parts water volume/volume.
5 Quaker submitted that the appropriate form of order would include a reference to “the product Solcenic GM20 LD containing fluorescein”, but no more.
6 In my opinion, neither Fuchs’ definition nor Quaker’s addition is necessary since, as listed at [40] of the earlier judgment, the name of the relevant Fuchs product was Solcenic GM20 LD. It was that product which Fuchs supplied to Broadmeadow. No basis for confusion or uncertainty has been established. I do not accept the definition proposed by Fuchs, nor the additional words suggested by Quaker. In my opinion, the position is quite different to that considered in Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386, to which the parties referred.
7 So far as concerns the identification of the product, the first declaration should therefore be:
1. By means of its supply of Solcenic GM20 LD to the Broadmeadow Mine since July 2016, the Respondent has infringed under section 117 of the Patents Act 1990 (Cth):
a. claims 1, 2, 9, 10, 11, 12, 14, 15 and 16 of Australian Standard Patent 2012304245 (the First Patent); and
b. claims 1, 2 and 3 of Australian Innovation Patent 2013100458 (the Second Patent).
8 Later orders should adopt the same nomenclature in referring to Solsenic GM20 LD as such.
Costs
9 In relation to costs, and leaving aside costs orders already made, Fuchs submitted that, it should pay 70% of Quaker’s costs, as agreed or taxed. Quaker submitted that there should be no such reduction or, in the alternative, if the Court was of the view that some discount to Quaker’s costs was appropriate, that discount should be minimal and, in any event, no more than 10% of Quaker’s overall costs of the proceedings.
10 In my opinion, a global order is appropriate, that is, dealing both with the infringement suit and the invalidity cross-claim.
11 Despite Quaker’s ultimate success in relation to its claim for infringement and Fuchs’ challenge to validity, there should be some discount given the breadth of the evidence led across all mine sites. While I do not accept Fuchs’ contention that the allegations of infringement involved distinct conduct at different locations, Quaker did sue Fuchs to establish that Fuchs infringed its patents at multiple mine sites and it is correct to say that Quaker’s infringement case succeeded only in relation to the Broadmeadow Mine. It did not succeed in relation to the supply of products by Fuchs to a number of mines operated by Glencore and Yancoal.
12 I have taken into account the matters referred to in the affidavit of Robert Anthony Silberstein affirmed 17 April 2020, in particular that Quaker incurred substantially more costs arising from Fuchs’ cross-claim than from Quaker’s infringement claim. I have also taken into account Quaker’s contention that Fuchs’ conduct of the proceedings led to substantial wasted costs in relation to: the abandoned claim for misleading or deceptive conduct; the amendments to the Particulars of Invalidity; and the substantial withdrawal of his evidence by Mr Bate.
13 In my assessment, the appropriate order is that, save as to costs orders already made, Fuchs should pay 90% of Quaker’s costs of the Application and the Cross-Claim, as agreed or taxed.
Conclusion
14 I make final orders accordingly. I do not find it necessary to take up the parties’ offer of oral submissions in addition to their short but comprehensive written submissions.
I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. |
Associate:
