Federal Court of Australia

Miele & Cie KG v Bruckbauer (Costs) [2025] FCA 1046

ORDERS

In these orders:

Act means the Patents Act 1990 (Cth);

Bora means the Respondents/Cross-claimants;

Claim means the Originating Application filed by Miele on 7 September 2023;

Cross-claim means the Notice of Cross-claim filed by Bora on 22 September 2023;

Judgment means the reasons delivered by the Court in this proceeding on 27 May 2025, Miele & Cie KG v Bruckbauer [2025] FCA 537;

Miele means the Applicants/Cross-respondents;

Miele Silence Products has the meaning given to it in paragraph 26 of Bora’s Statement of Cross-claim dated 22 September 2023;

Patent means Australian Patent No. 2012247900; and

Rules means the Federal Court Rules 2011 (Cth).

THE COURT NOTES THAT:

Bora provides the following undertakings to the Court during the period of the stay referred to in order 9 below:

A.    to prosecute expeditiously any appeal from the Judgment and these orders;

B.    not to threaten any person with proceedings, or bring any proceedings for interlocutory or final relief in respect of infringement of the claims of the Patent which are the subject of order 1; and

C.    not to seek to amend any claims of the Patent otherwise than in the course of or in connection with this proceeding.

THE COURT DECLARES THAT:

1.    Each of claims 1 to 13 and 15 of the Patent are and have always been invalid.

2.    Exploitation by Miele of the Miele Silence Products does not, and will not, infringe the Patent.

THE COURT ORDERS THAT:

3.    The Patent be amended such that:

(a)    the passage, “a housing for the heating of hob heating and control electronics”, appearing in Claim 1 and on page 2 of the Patent be amended to read, “a housing for the heating or hob heating and control electronics”; and

(b)    the passage, “…through suction in a direction lying vertically…”, appearing on page 2 of the Patent be amended to read, “…through suction in a direction lying vertically…”.

4.    The Cross-claim otherwise be dismissed.

5.    Pursuant to s 138 of the Act, each of claims 1 to 13 and 15 of the Patent be revoked.

6.    Within seven days after the expiry of 28 days after the date of these orders, Bora must serve on the Commissioner of Patents copies of these orders pursuant to s 140 of the Act.

7.    Bora pay 85% of Miele’s taxed or agreed costs of the Claim and Cross-claim:

(a)    on a party and party basis until 11.00 am on 15 July 2024; and

(b)    on an indemnity basis thereafter.

8.    If the parties have not agreed upon an amount for Miele’s costs within three months of the date of these orders:

(a)    pursuant to r 40.02(b) of the Rules, Miele’s costs payable pursuant to order 7 above be awarded in accordance with the lump sum costs procedure set out in the Costs Practice Note (GPN-COSTS); and

(b)    the matter be referred to a Registrar for further directions with respect to the procedure for determining those costs.

9.    In the event that a notice of appeal is filed with respect to the Judgment and these orders (to be filed within 28 days of the date of these orders), orders 1 to 2 and 4 to 8 above be stayed until after determination of the appeal.

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

REASONS FOR JUDGMENT

ROFE J:

1.    INTRODUCTION

1    On 27 May 2025, I published reasons for my substantive findings in this proceeding: Miele & Cie KG v Bruckbauer [2025] FCA 537 (May Judgment or MJ). These reasons assume familiarity with the matters set out in the May Judgment and the terms adopted there will be used herein.

2    In the May Judgment, I found that each of claims 1 to 13 and 15 of the Patent were invalid, and that Miele had not infringed the Patent, including by way of its threatened exploitation of the Miele Silence Products. The task remaining before the Court is the appropriate form of final orders giving effect to the May Judgment, including the award of costs following litigation.

2.    EVIDENCE

3    In support of its position on the appropriate costs award, Miele relies on the two affidavits of its solicitor, Mr Aaron Leigh James Yates of Davies Collison Cave Law, dated 24 June 2025 and 15 July 2025, respectively.

4    Similarly, BORA relies of the affidavit of its solicitor, Mr Daniel Andrew McKinley of Gestalt Law, dated 8 July 2025.

3.    PROPOSED ORDERS

5    While the parties appear to be in agreement as to the proposed orders disposing of the litigation in relation to the claims advanced, there is some degree of disagreement on the following issues:

(a)    whether any discount should be applied to Miele’s recoverable costs despite its overall success in the matter;

(b)    whether Miele should be awarded a portion of its recoverable costs on an indemnity basis given its offers to settle the proceedings with BORA prior to trial; and

(c)    whether the any final orders made should be stayed pending the outcome of any appeal of the May Judgment.

6    I will deal with each of these issues in turn.

4.    ANY DISCOUNT TO MIELE’S COSTS?

4.1    Positions advanced by the parties

7    BORA contends that a discount of at least 20% should be applied to Miele’s costs to account for issues on which Miele was not successful, namely the Chinese Amendments.

8    Miele submits that it ought to receive its full costs of the proceeding given its overall success. In the event that its costs are to be discounted, Miele maintains that any such reduction should be limited to a maximum of 10% and confined to the period between 19 April 2024 to 15 July 2024.

9    In apportioning costs, the Court may distil the parties’ arguments into issues on which each enjoyed success: Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2) [2018] FCAFC 7 at [3] (per Nicholas, Beach and Burley JJ). In Hanwha Solutions Corporation v REC Solar Pte Ltd (No 2) [2024] FCA 336, Burley J at [14] explained that an “issue” in this sense “does not mean a precise issue in the technical pleading sense but any disputed question of law or fact”. Moreover, it is “common practice… for costs to be awarded on an issues basis where they can sensibly be separated”: Seiko Epson Corporation v Calidad Pty Ltd [2018] FCA 104 at [15] (per Burley J). A countervailing consideration, however, is the need to avoid creating a situation in which the quantification of costs will be complex, protracted and, by itself, costly: Hockey v Fairfax Media Publications Pty Ltd (No 2) (2015) 237 FCR 127 at [120] (per White J).

10    The Chinese Amendments occupied a significant part of both the pre-trial preparations and the trial time itself. Having regard to the definitions of “issue” as developed in Idenix and Hanwha, it is relevant to consider:

(a)    how the issue of the Chinese Amendments came about; and

(b)    the extent of resources expended on canvassing the issue.

11    The Chinese Amendments formed part of Miele’s novelty case and its strategy to meet BORA’s reliance on s 43(3) of the Act, first raised in BORA’s Amended Defence dated 15 December 2023 which asserted a priority date of 11 November 2015 for the “form of the invention” encompassing a single fan. They were introduced for the first time on 19 April 2024 through material, which on its face were dated 16 October 2015, in reply to the Amended Defence. While Miele succeeded in establishing that the Chinese Amendments disclosed the relevant “form of the invention” (MJ [541]–[542]), it failed to establish that they were publicly available as at the priority date.

12    Ultimately, the Court’s determination of the s 40 grounds of invalidity was dispositive of Miele’s invalidity claim. In BORA’s view, it is apparent that if Miele had not succeeded under s 40 of the Act, its novelty case would have failed if the Court was to rule on it, relying on the following passages of the May Judgment:

(a)    there were two forms of the invention and that s 43(3) applied (at MJ [394]–[403]); and

(b)    the Chinese Amendments were not publicly available (at MJ [522]) and would not have been novelty destroying for a one fan configuration with the Deferred Priority Date (at MJ [548]).

13    On the other hand, Miele maintains that it should not be penalised for raising an issue in reply, relying on the observations of the Full Court in Caffitaly System S.P.A. v One Collective Group Pty Ltd (No 2) [2021] FCAFC 16 at [11] where Yates, Moshinsky and Burley JJ held that it was not appropriate to discount a party’s costs in relation to an unsuccessful issue raised defensively.

14    Notwithstanding its failure to establish the public availability of the Chinese Amendments, Miele submits that this outcome is ultimately of no significance in the weighing exercise where the Patent was otherwise invalid and the Miele Silence Products were found not to infringe: Caffitaly at [9] and [11].

15    Miele further submits that its reliance on the Chinese Amendments was neither unreasonable nor unmeritorious. Chinese attorneys were able to access amended claims in late September 2015 (MJ [502]), and similar documents were accessible shortly after the Deferred Priority Date (MJ [522]). As accepted, the amendments disclosed the relevant invention.

16    Miele notes that when confronted with evidence that the Chinese Amendments were accessible before the priority date, two of BORA’s witnesses suggested, for the first time at trial, that the documents may have been accessed due to a “glitch” (MJ [507]).

17    Finally, Miele disputes that BORA was successful on novelty. BORA initially denied, but later admitted, that the two-fan invention claimed in the Patent lacked novelty as at the Deferred Priority Date.

18    Turning to costs, it is apparent that this issue will not be an insignificant proportion of the overall costs of the proceedings, having regard both to the volume of written evidence filed and served, and to the Court time expended in hearing evidence on the matter. A substantial amount of preparation was undertaken by the parties in preparing the following 11 affidavits on the question of public availability of the Chinese Amendments:

(a)    As evidence in chief in support of this ground of invalidity, Miele served affidavits of Xinyu Pei affirmed on 26 March 2024 and Ji Liu affirmed on 27 March 2024.

(b)    In answer, BORA served an affidavit of Ting Nan affirmed on 4 June 2024.

(c)    As (unscheduled) evidence in reply, Miele served a further affidavit of Xinyu Pei affirmed on 28 June 2024, a further affidavit of Ji Liu affirmed on 1 July 2024, and an affidavit of Sensen Min affirmed on 1 July 2024.

(d)    In order to respond to new matters raised in Miele’s further evidence, BORA served a further affidavit of Ting Nan affirmed on 19 July 2024 and an affidavit of Jianguo Wang affirmed on 23 July 2024.

(e)    Days before the start of the trial, Miele served yet more affidavit evidence concerning the alleged public availability of the Chinese Amendments, comprising a further affidavit of Ji Liu affirmed on 5 August 2024, a further affidavit of Sensen Min affirmed on 2 August 2024, and an affidavit of Yong Cheng affirmed on 4 August 2024.

19    BORA submits that a significant portion of the trial was devoted to the issue of the public availability of the Chinese Amendments, with the third and fifth days of the trial focussed exclusively on this topic, further compounded by the costs of the interpreter required on both of those days. On balance, BORA notes that this issue occupied approximately one-third of the trial, comparable to the time spent on the concurrent expert evidence. In response, Miele contends that the extended trial time arising from this issue was the result from interpreter-related delays and the uncooperative conduct of witnesses from both sides, and that these are not factors for which it alone should be made to bear the cost. In any event, I consider the time spent on each does not necessarily reflect the proportion of costs associated with it.

20    It is important to note here that the “interpreter related delays” did not arise from the excellent translator who provided interpreting services during the hearing, but rather from the inevitable lengthening of cross examination where both the questions and answers required translation, notwithstanding that the witnesses had sworn their affidavits in English, without translation, which represented to the Court that they were proficient in spoken English.

4.2    Consideration

21    Given the considerable time and expense incurred by both parties in addressing this discrete issue, on which Miele was unsuccessful, BORA contends that it is just and equitable for a discount to be applied to the costs it is otherwise liable to pay Miele. In quantifying that discount, BORA submits that a 20% reduction in Miele’s costs is appropriate. It argues this figure is conservative and fair, particularly in light of the disproportionate amount of written evidence and Court time dedicated to the issue. Miele submits that in the event that it costs are to be discounted, any such reduction should be limited to a maximum of 10% and confined to the period between when the Chinese Amendments were first raised and after which proceedings were unnecessarily prolonged due to BORA’s rejection of the settlement offers addressed below, being 19 April 2024 to 15 July 2024.

22    The Chinese Amendments were raised at a late stage in the proceeding and ultimately added nothing to Miele’s existing invalidity case. In my view, there should be a reduction of Miele’s costs to reflect this. While I consider the 20% reduction proposed by BORA to be excessive, a reduction of 15% is appropriate. Not all of the cost and delay associated with the Chinese Amendments and the involvement of the Chinese patent attorneys can be attributed solely to Miele, given the inevitably extended time arising from the need for interpretation and translation. Nevertheless, those costs would not have been incurred had the issue of the Chinese Amendments not been raised, and had Miele proceeded only with its original invalidity and infringement case.

5.    INDEMNITY COSTS

23    On Thursday 11 July 2024, after the completion of the evidence and the JER, Miele served BORA with a Notice of Offer to Compromise (the Notice), together with a letter extended without prejudice, save as to costs, in accordance with the principles of Calderbank v Calderbank [1975] 3 All ER 333 and Hazeldene’s Chicken Farm Pty Ltd v Victorian WorkCover Authority (No 2) (2005) 13 VR 435 (the Calderbank Offer). The Notice stated the following:

To the Respondents / Cross-Claimants (Bora)

The Applicants / Cross-Respondents (Miele) offer to compromise these proceedings on the following terms:

1.    Australian Patent No. 2012247900 (Patent) be amended in the manner set out in paragraph 1 of Bora’s Notice of Cross-claim dated 22 September 2023 (Cross-claim).

2.    The Cross-claim is otherwise dismissed.

3.    Miele’s Application dated 7 September 2023 (Application) be dismissed.

4.    Bora pay Miele costs in the sum of $AU250,000.

5.    The parties are to take all necessary steps to facilitate orders being made in the proceeding in accordance with paragraphs 1 to 4 above as efficiently as possible.

6.    Bora release and forever discharge Miele from any claim they have or may in the future have against Miele concerning any alleged infringement of the Patent by the exploitation or authorisation of exploitation of a hob with a device for operating the hob and downwardly removing cooking vapours by suction that together with the hob forms an assembly unit, wherein the device encompasses only one radial fan (whether single or dual inlet).

This offer of compromise is open to be accepted for 14 days after service of this offer of compromise

This offer is inclusive of costs.

This offer is made without prejudice save as to costs.

24    The Notice and the Calderbank Offer, together the Offer, set out, in Miele’s view, the parties’ respective positions following the completion of evidence and the production of the JER. The Calderbank Offer provided context to the matters proposed in the Notice and explained the basis for the proposed compromise.

25    Having extended this Offer, Miele contends that r 25.14 of the Rules is engaged as the May Judgment was more favourable to it than the proffered Offer. Accordingly, Miele submits that it is entitled to indemnity costs from 11.00 am onwards on Monday 15 July 2024.

5.1    Principles

26    Rule 25.14(3) of the Rules provides:

25.14    Costs where offer not accepted

(3)    If an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment that is more favourable than the terms of the offer, the applicant is entitled to an order that the respondent pay the applicant’s costs:

(a)    before 11.00 am on the second business day after the offer was served—on a party and party basis; and

(b)    after the time mentioned in paragraph (a)—on an indemnity basis.

27    In JMC Pty Ltd v Commissioner of Taxation (Costs) [2023] FCAFC 95, the Full Court explained the breadth of this provision at [6] (per Bromwich, Thawley and Hespe JJ):

Rule 25.14 does not expressly or implicitly turn on whether a rejection of an offer was “reasonable”. Rather, it turns on the question whether the judgment “is more favourable than the terms of the offer”. Where the judgment “is more favourable than the terms of the offer” the applicant “is entitled” to indemnity costs in accordance with the terms of r 25.14(3)…

28    Once an applicant has engaged r 25.14 by obtaining a judgment more favourable than its offer, it follows that, unless r 25.14(3) is disengaged, the applicant is entitled to indemnity costs.

29    Rule 1.35 confers a discretionary power to make an order that is “inconsistent” with the Rules, which states:

1.35    Orders inconsistent with Rules

The Court may make an order that is inconsistent with these Rules and in that event the order will prevail.

30    Where r 25.14 is engaged, an order that the respondent pay the applicant’s costs of the trial on an ordinary basis rather than an indemnity basis would be “inconsistent” with r 25.14. Once an applicant has established that r 25.14 is engaged, the respondent bears the onus of establishing that an inconsistent order should be made under r 1.35.

31    The discretion in r 1.35 is confined by the requirement that it be exercised judicially, having regard to the purpose for which it was conferred. The Full Court in JMC observed at [10] that “[i]t has been said that the discretion to make an order inconsistent with the [Rules] must ‘be exercised for proper reasons which will generally only arise in exceptional circumstances’”, citing Lodestar Anstalt v Campari America LLC (No 2) [2016] FCAFC 118 at [27] (per Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ). The purpose of the broad power in a provision such as r 1.35 is to relieve against injustice: FAI General Insurance Company Limited v Southern Cross Exploration NL (1988) 165 CLR 268 at 283 (per Wilson J, with whom Brennan, Deane, and Dawson JJ agreed).

32    In Sydney Equine Coaches Pty Ltd v Gorst [2017] FCAFC 34, the Full Court explained the relationship between r 1.35 and instruments governing the overarching purpose principles of litigation. Relevantly, their Honours observed at [14] (per Rares, Flick and Bromwich JJ):

The power conferred by r 1.35 is discretionary and is expressed in general terms. It is, however, subject to the overarching purpose of the civil practice and procedure provisions of the Rules and any legislation with respect to the Court’s practice and procedure, including under Pt VB of the Federal Court of Australia Act 1976 (Cth) (the “Federal Court Act”). That overarching purpose is to facilitate the just resolution of disputes according to law, as quickly, inexpensively and efficiently as possible: s 37M(1). The civil practice and procedure provisions (including all of the Rules) must be interpreted and applied, and any power that they confer must be exercised, in the way that best promotes the overarching purpose: s 37M(3). Moreover, s 37N(1) of the [Federal Court] Act imposes a duty on the parties to a civil proceeding in this Court to conduct proceedings, “including negotiations for settlement of the dispute to which the proceeding relates”, in a way that is consistent with the overarching purpose.

33    Reasonableness is another pertinent consideration. As the Full Court explained in JMC at [11]:

In exercising the discretion under r 1.35 to make an order inconsistent with r 25.14, the reasonableness of the rejection of the offer will be relevant. It is most unlikely that an order inconsistent with r 25.14 would be made where the rejection of an offer was not reasonable. On the other hand, merely establishing that the rejection of an offer was reasonable at the time of rejection is not necessarily sufficient.

34    The Full Court found that the Commissioner’s rejection of the offer of compromise was entirely reasonable. However, in the circumstances of that case, the rejection was not sufficient of itself to deny JMC’s entitlement to indemnity costs in accordance with r 25.14(3). It is well recognised that the object of r 25.14 is to promote the early settlement of disputes. Their Honours were satisfied that JMC had acted consistently with this object and with the overarching purpose referred to in s 37M of the Federal Court of Australia Act 1976 (Cth). At [23], their Honours further observed that “[t]he intended effect of r 25.14(3) is substantially negated if inconsistent orders are routinely made under r 1.35 on the basis only that the rejection was entirely reasonable”.

5.2    Consideration

35    BORA disputes whether r 25.14 is properly engaged. It submits that the position achieved by Miele under the May Judgment is not, in substance, more favourable than what was proposed in the Offer. In the event that Miele establishes that r 25.14 is engaged, BORA submits that it was reasonable for it to have rejected the Offer.

36    I consider that Miele has achieved a judgment that is more favourable to it than the terms of the Offer. Following the May Judgment, the Patent will be revoked, whereas under the Offer, Miele’s application for revocation would be dismissed. Miele will receive the benefit of declarations, including that the Miele Silence Products do not infringe the Patent. In contrast, the Offer proposed only that the cross-claim be dismissed, and that BORA release Miele from infringement claims in respect of the Miele Silence Products. Further, as Miele emphasised in its submissions, it is now entitled to recover a substantially greater amount of legal costs, whereas the costs it sought as at the date of the Offer were significantly lower than its costs actually incurred as at that date.

37    With r 25.14 engaged, the inquiry turns to whether BORA has discharged its onus of establishing the existence of exceptional circumstances which justify an order inconsistent with r 25.14. BORA relies on two matters: (a) that it was not unreasonable for BORA to have rejected the Offer, (b) and that the Offer was not a genuine compromise.

38    The Calderbank Offer set out six matters which Miele’s lawyers said followed from a review of the evidence, and which gave Miele confidence that it would succeed at trial. Without exhaustively listing each of the matters, they included:

(1)    the failure of the Patent to disclose a form of the invention that operates using only one radial fan;

(2)    that a person skilled in the art would not be able to make the alleged invention claimed in the Patent that operated with a fan housing containing only one radial fan, without engaging in significant and prolonged research and development; and

(3)    that the Miele Silence Products did not contain several of the claimed integers including the vapour stream to be vertically aspirated upwardly.

39    As at the date of the Offer, Miele submits that the agreement between the experts in the JER meant that the Miele Silence Products could not be found to infringe the Patent. In particular:

(a)    the experts had agreed that the entire vapour stream must be vertically aspirated upwardly (MJ [269]); and

(b)    Mr McLindin’s evidence at the time was that the vapour stream must move “upwardly as a first direction” (MJ [238]), which did not occur on his (or any) understanding of the operation of the Miele Silence Products (MJ [271]–[276]).

40    Miele submits that it should have been apparent to BORA, both on the face of the Patent and from Mr McLindin’s evidence, that there was no disclosure in the Patent of a hob assembly incorporating a single radial fan. At its highest, BORA’s case relied on an implied disclosure of one fan “by reason of silence, or no express rejection of one fan”: MJ [419].

41    Miele maintains that it made reasonable offers that involved genuine compromise and ultimately, in light of its success in the litigation, obtained a result that was better than those offers. Miele estimates that its costs to prepare and file pleadings, a product description and two rounds of detailed evidence (i.e., up to the filing of evidence in answer) were in excess of $500,000. It offered to accept $250,000 in costs, a figure that would be much smaller than the total costs incurred by Miele in running the trial.

42    Further, Miele submits that there are no special circumstances justifying a departure from the position in r 25.14(3). Miele contends that the policy underpinning r 25.14 and the broader Calderbank principles should be given effect by awarding indemnity costs. Otherwise, Miele argues that the incentive to settle would be undermined.

43    BORA submits that whilst Miele’s offer of a discount on its costs may be sufficient — albeit, “barely” — to constitute a compromise, the state of affairs under the May Judgment are not more favourable to Miele as a matter of substance than what was proposed in the Offer. BORA characterises Miele’s offer as requiring a complete capitulation on its part. The continued registration of the Patent and the absence of declaratory relief in Miele’s favour would have been of little consequence to Miele, given the breadth of the release it sought. In particular, the release proposed at paragraph 6 of the Offer would have allowed Miele to continue importing, offering for sale and selling all of the products that were in issue in the proceedings, unaffected by the continued registration of the Patent.

44    BORA submits that the only element of compromise in the Offer, if any existed, was a discount on costs. The Offer did not concede any substance to its cross-claim for infringement. Given that the Patent was inherently invalid, foregoing revocation orders would not have represented a “significant benefit” for BORA and would have had no impact on Miele’s interests, especially considering the release proposed as part of the offer.

45    Regarding Miele’s claims about what aspects of the expert evidence should have been apparent to BORA following the completion of the JER, BORA contends these matters are merely hindsight assertions based on the May Judgment. BORA argues that if these points had been truly clear, they would have been reflected in the Offer however, that was not the case. Further, Miele ignores the fact that the Court relied upon apparent concessions by Mr McLindin in his oral evidence (for example, see MJ [446]−[447]).

46    Other than the limited nature of the proposed compromise, and the reasonableness of its rejection of the offer, BORA did not identify any other matter which should be taken into account in exercising the discretion under r 1.35 to make an order inconsistent with r 25.14.

47    In the proceeding, Miele sought revocation of claims 1 to 13 and 15 of the Patent and a declaration to that effect. BORA cross-claimed alleging that the Current Miele Products and the Miele Silence Products infringed the claims 1, 3 and 11 of the Patent, and sought amendment of the Patent pursuant to s 105 of Act. Miele had admitted that the Current Miele Products have the features claimed in claims 1 and 11 of the Patent.

48    Notwithstanding, in the circumstances of this case, I consider that the Offer involved a genuine element of compromise. Apart from offering not to pursue the revocation claim, not to oppose the amendment to the Patent, and to forgo a portion of its recoverable costs, there was little else available to Miele to offer by way of compromise.

49    The Offer was extended fairly late in the proceeding, and given the matters set out at [39] above, it should have been apparent to BORA at the time of receipt of the Offer that its infringement case was weak.

50    With regard to the findings in JMC at [23], even if it were reasonable for BORA to reject the Offer, that, in and of itself, would not be sufficient to deny Miele’s entitlement to indemnity costs in accordance with r 25.14(3). The intended effect of r 25.14(3) would be undermined if the Court’s discretion under r 1.35 were routinely invoked solely on the basis that rejections of offers to compromise were reasonable.

51    Miele faced a proceeding in which the difference between party and party costs, per r 40.01 of the Rules, and its actual costs was likely to be substantial. Miele sought to take advantage of r 25.14 to protect itself from this commercially undesirable outcome by serving an offer of compromise which contained a real compromise.

52    BORA has not discharged its onus of establishing the existence of circumstances which justify an order inconsistent with r 25.14. Thus, BORA should pay 85% of Miele’s costs from 11.00 am onwards on Monday 15 July 2024 on an indemnity basis.

6.    STAY ON FINAL ORDERS

53    Bora has indicated its intention to appeal the May Judgment and, accordingly, seeks a stay of any final orders arising from that judgment pending the determination of the appeal.

54    In circumstances where no injunction currently restrains Miele from importing, offering for sale, or selling the Miele Silence Products (and where Miele has continued to do so despite acknowledging that those products embody each of the integers of claims 1 and 11 of the Patent), and where BORA offers an undertaking not to commence or threaten infringement proceedings during the stay period, BORA submits that: (a) the stay will not cause prejudice to Miele; and (b) an undertaking as to damages is not warranted.

55    Miele does not oppose the grant of a stay but seeks certain amendments to BORA’s proposed undertaking, as marked below.

Bora provides the following undertakings to the Court during the period of the stay…:

A.    to prosecute expeditiously any appeal from the judgment delivered by her Honour Justice Rofe on 27 May 2025 and these orders;

B.    not to threaten any person with proceedings, or bring any proceedings, for interlocutory or final relief in respect of infringement of the claims of the Patent which are the subject of order 1; and

C.    not to seek to amend any claims of the Patent otherwise than in the course of or in connection with this proceeding.

56    I will grant the stay in accordance with the usual practice: Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2002) 54 IPR 495 at [4] (per Hely J). Further, given that Miele’s proposed amendments are not overly burdensome, they will be incorporated into BORA’s undertaking in the notation to the orders to be made.

7.    DISPOSITION

57    For the reasons given above, I will make orders in the form largely proposed by the parties, disposing of the litigation.

58    With respect to costs, I will order that BORA pay 85% of Miele’s costs of the proceeding:

    on a party and party basis until 11.00 am on 15 July 2024; and

    on an indemnity basis thereafter.

59    In light of the pending appeal, the final orders will be stayed until 28 days after the determination of any appeal arising from this proceeding.

Associate:

Dated:    28 August 2025

SCHEDULE OF PARTIES