Baygol Pty Ltd v Huntsman Chemical Co Australia Pty Ltd t/a RMAX

Security for costs principles 6 Assessment of the quantum of costs likely to be incurred in the litigation process can only be accurately approached with the benefit of hindsight, in light of what has actually transpired. Obviously, hindsight is not available at this stage. It is therefore necessary to base cost estimates upon the reasonable likelihood of certain events occurring during what is a contingent and variable process that encompasses the interlocutory stages through to the final hearing. 7 The starting point is s 56 of the Federal Court of Australia Act 1976 (Cth) ("the Federal Court Act"), which relevantly provides: "(1) "The Court or a Judge may order an applicant in a proceeding in the Court or an appellant in an appeal to the Court to give security for the payment of costs that may be awarded against him or her. … (5) This section does not affect the operation of any provision made by or under any other Act or by the Rules of Court for or in relation to the furnishing of security." 8 Order 28 rule 3(1)(b) of the Federal Court Rules provides that, when considering an application by a respondent for an order for security under s 56 of the Federal Court Act, the Court may take into account: "that an applicant is suing, not for the applicant's own benefit, but for the benefit of some other person and the Court has reason to believe that the applicant will be unable to pay the costs of the respondent if ordered to do so". 9 It is common ground that the Court's discretion is broad and unfettered and that the Court must have regard to all the circumstances of each particular case. The discretion must be exercised judicially. An order for security for costs is interlocutory in nature and the rules of Court do not delimit the Court's discretion. The purpose of an order for costs in a case such as the present is to ensure the effective enforcement of any order the Court may make in favour of a successful respondent in circumstances where the applicant company is without any substantial assets to meet such order. 10 Some of the principles often applied by the Court when considering security for cost issues have been collected and stated by Beazley J in KP Cable Investments Pty Limited v Meltglow Pty Limited (1995) 56 FCR 189 at 196-198. These principles have been approved and applied in subsequent decisions of this Court: see Olbers Co Ltd v Commonwealth of Australia [2002] FCA 1269; Gartner v Ernst & Young (No 3) [2003] FCA 1437. 11 These principles in relation to security for costs applications can be summarised into the following considerations:

• whether the application was brought promptly;
• the strength and bona fides of the applicant's case;
• whether the applicant's impecuniosity was caused by the respondent's conduct which is the subject of the claim;
• whether the respondent's application for security is oppressive, in the sense that it is being used merely to deny an impecunious applicant a right to litigate;
• whether there are any persons standing behind the company who are likely to benefit from the litigation and are willing to provide the necessary security,
• whether persons standing behind the company have offered any personal undertaking to be liable for costs, and if so the form of any such undertaking;
• whether the party against whom the security for costs order is sought is a plaintiff. The last consideration is relevant in view of the principle often referred to in the authorities that an order for security for costs is not generally to be made against parties who are defending themselves, and are thus forced to litigate. 12 In this case, some but not all of the above factors are relevant and will be considered in examining Huntsman's claim. Baygol does not rely upon delay as a basis for resisting the claim. There is no need to consider this factor. Nor is there a submission that the amount claimed will stifle the litigation, or that Baygol's impecuniosity is caused by Huntsman's conduct. I now turn the principal questions raised by Huntsman.

REPRESENTATION 13 Baygol contends that Huntsman is only entitled to an order for security for costs that is calculated on the retention of senior counsel without junior counsel. Baygol contends that junior counsel will not be required because the case is relatively simple, will be heard in a short period, and can be adequately presented by an experienced senior counsel who is a specialist in the field. In support of this submission, Baygol says that the issue on infringement "is crisp and, on the facts of this matter, really couldn't be more simple" - namely, whether concrete, as material for the spacer, is unessential. Baygol says that the issue is not made more complex simply because, as Huntsman points out, no previous Australian case has examined the position in relation to one only of the several components of s 117 of the Act, particularly since the wording of s 117 is clear. In relation to the other issues, Baygol notes that there is authority, albeit obiter dicta, to the effect that the question of issue estoppel is not part of Australian law. The anticipation issue is said to be a simple factual one. The issue of obviousness is said to be straightforward in the context of this engineering patent, and it is said that none of the attacks on the validity of patent under s 40 of the Act will be particularly complicated. 14 Baygol also submits that its costs expert considers Huntsman's litigation team to be "top heavy", involving excessive legal representation and a failure to make proper use of paralegal assistance. 15 I note that I do not think that any significant weight should be given to the fact that the respondent to the Foamex matter has only retained one counsel at this stage, or that they have agreed to accept a lesser amount of security. This application for security has been fully ventilated on the facts and law and there is adequate material on which to make an informed assessment in relation to this matter. 16 I am persuaded, having regard to the arguments advanced on this application regarding the unsettled state of some of the law, and the consideration of important questions of law and fact that will be required in relation to a number of the grounds for revocation, that this case warrants a costs assessment on the basis that senior and junior counsel will be retained. On a conservative view of the material presently before me, given the proposed duration of the hearing (which is discussed further below) and the nature of the work involved, the assistance of junior counsel cannot be considered inappropriate. In this regard it is worth noting that if senior counsel undertake large amounts of work that could have been done by junior counsel, the costs will be significantly enhanced, having regard to the substantially higher fees that are usually paid to senior counsel. 17 In weighing the submissions advanced on behalf of Baygol, I have taken into account the fact that if Huntsman's costs are eventually taxed, issues such as the "top heavy" litigation team will be taken into account at that point, and any security found to be excessive will not be required to be paid. On the other hand, if the amount of security provided is inadequate, Huntsman will be unable to recover its costs from what is conceded to be, for present purposes, an impecunious applicant.

duration of hearing 18 A second issue raised is the likely duration of the hearing, with the parties disputing whether it is reasonable to estimate that it will last for five days or ten days. As noted above, this question impacts on the question of the appropriate number of counsel, because the longer a hearing is expected to take, the more reasonable it becomes to employ junior counsel. 19 I consider it is appropriate to estimate the time period on the assumption that the proceeding will be conducted efficiently, that there will be little or no wastage in the preparation process, and that every step will be taken to lessen the hearing time required by proper organisation of the evidence and written outlines of factual and legal submissions. In light of the common factual elements and considerations between this matter and the Foamex matter, an estimate of seven days as a basis for estimating costs is not unreasonable.

inclusion of cross-claim 20 A third issue raised is whether the costs of the cross-claim for revocation of the patent should be treated separately from the costs of the defence, and so not included in the calculation of recoverable costs. This involves the question of whether, in the circumstances of this case, Huntsman's assertion of invalidity should properly be taken into account as part of the defence for the purpose of determining the proper security, or whether it is in effect a separate proceeding, and therefore irrelevant in estimating the relevant estimation of security for costs. 21 In relation to this aspect, the remarks of Zeeman J in Weily's Quarries v Devine Shipping Pty Limited (1994) 14 ACSR 186 at 188 should be borne in mind. His Honour there stated: "The general proposition that security ought not to be ordered where the proceedings are defensive in the sense of directly resisting proceedings already brought or seeking to halt self-help procedures is no more than that, a general proposition. It ought not to be elevated to being a rule of law. In many cases of that nature it could be considered oppressive to require security and that in itself may be sufficient to refuse to make an order." (Emphasis added) 22 In support of its submission that the cross-claim should be ignored, Baygol submits that the word "plaintiff' in the context of a security for costs application is generally given a wide meaning, and that a defendant corporation which advances a cross-claim or counter claim is often in substance to be treated as a plaintiff. 23 It is generally accepted that where a cross-claim is in substance a defence to an action, the defendant will not be regarded as the moving party for the purposes of a security for costs application, and will therefore be entitled to security from the plaintiff in relation to both the defence and cross-claim. There is no clear authority that a defendant to patent litigation is entitled to security in respect of both the claim and the cross-claim. Baygol submits that the most relevant authorities are said to be to the effect that a cross-claim is not to be treated as a defence for the purpose of a security for costs application. 24 Baygol relies on the observations by von Doussa J in Townsend Controls Pty Ltd v Gilead (1989) 14 IPR 443, where his Honour disallowed security in relation to a cross-claim for revocation of a patent, and ordered security only in relation to the defence to the infringement claim. At 449 his Honour said: "The cross-respondents propose not merely to defend the cross-claim [for infringement] but to seek revocation. That is a relief which may raise issues not raised by the cross-claim. I do not think that the order for security for costs should extend to issues peculiar to the claim for revocation." (Emphasis added) 25 As counsel for Baygol points out, this statement was made in relation to a case in which the pleadings had not closed at the time of the security application, and his Honour observed that a decision had not yet been made as to whether the trial would be confined to questions of liability. His Honour ordered security only in relation to the defence to the infringement action. 26 Heerey J took a different approach in Farmitalia Carlo Erba SrL v Delta West Pty Ltd (1994) 28 IPR 336. In that case, his Honour ordered the applicant to provide security in relation to a respondent's cross-claim for revocation of a patent. Baygol seeks to distinguish this decision on the basis that the cross-claim for revocation in Farmitalia was the only defence that was raised to the infringement action. 27 In my view, the distinction that Baygol seeks to draw lacks cogency precisely because the cross-claim for revocation in the present case is in nature, substance, and effect a defence to the infringement action. If the cross-claim succeeds and the patent is revoked then the claim for infringement does not succeed. It goes to the heart of Baygol's claim that there is a valid patent that has been infringed. There could not be a more effective defence. 28 In Farmitalia, Heerey J looked to the "substance" of the application for revocation and at [339], under the heading "Is Farmitalia's Proceeding Essentially Defensive?" answered in the affirmative: "… the Court will always look at the substance of the dispute. There may be circumstances where a party who is formally applicant on the record is in reality not the instigator of the litigation. The proceeding may be essentially defensive; it may, for example, be in substance a defence against 'self-help' measures taken by the respondent …" (Emphasis added) At [341] his Honour continued: "Secondly, Delta West's case on invalidity is in any event a matter of defence. The counter-claim for revocation is really no more then the procedural consequence which will follow if Delta-West is successful in defending Farmitalia's claim by showing that the patent in suit is invalid. Delta-West's assertion of invalidity is, in substance as well as in form, a defence to the claim. … Invalidity is a defence to an essential part of Farmitalia's claim, pleaded as such in its statement of claim." (Emphasis added) 29 It does not appear that von Doussa J in Townsend Controls was referred to Heerey J's decision and comments in Farmitalia. 30 Counsel for both parties have examined the legislative history concerning the relation between a cross-claim and a defence, and referred me to the previous versions of the Act and legislation in other countries in an attempt to throw some light on the correct characterisation of the revocation or counter-claim proceeding in relation to security. 31 Section 121 of the Act provides that a defendant in infringement proceedings may apply by way of counter-claim for revocation of the patent. Counsel for Baygol has referred to provisions in earlier legislation where there is express provision for invalidity to be raised as a defence in an infringement proceeding. It is submitted on the basis of these earlier and different provisions that since there is no such express provision for a counter-claim to be a defence in the current version of the Act, the revocation proceedings should not be characterised as defensive in character. 32 Counsel for Huntsman reviewed the earlier provisions, textual commentaries and other legislation, and submitted that in light of the form of previous provisions and comments in decided cases, it was considered unnecessary in the present Act to expressly characterise a revocation proceedings as a defence. Counsel refers to s 129 of the Act which provides that where an application is made for relief from unjustified threats in respect of a patent, the Court may give relief unless the respondent satisfies the Court that the acts about which the threats were made infringed a claim that is not shown by the applicant to be invalid. 33 The history referred to points to a pattern of provisions indicating that a revocation proceeding can be instituted as a defence to an infringement action. To enable a defendant to bring a revocation action in the same proceeding reinforces the conclusion that such a claim is both related and defensive in character. 34 It must be borne in mind that the Court is presently considering a discretionary security for costs application. Express legislative references in the Act to the procedural ability to counter claim for revocation cannot be determinative of the substantive character of a revocation suit brought consequent on an infringement application. In my view, the substance and effect of the revocation suit in this matter is defensive in character, because if successful the infringement action will be defeated. Accordingly, security for costs should be provided on the basis that Baygol is the attacking party and that the revocation response is defensive in character to the infringement claims. Therefore, the quantum of security should include the amount attributable to the anticipated reasonable party-party costs likely to be incurred in the revocation claim.

Prospects of success 35 Baygol submits that the prospects of success on the revocation are insubstantial, and that there is a strong prima facie case of infringement. At this stage, without the benefit of documentary evidence, cross-examination, argument or analysis, it is extremely difficult to predict either party's prospects of success. Suffice it to say that the issues of infringement and revocation are far from clear-cut, and I am not persuaded that I should readily accede to the suggestion that the amount of security for costs should be based on the assumption that Huntsman's case is weak. The material presently before me does not persuade me, prima facie, that either side has a greater probability of success. There may be some submissions that are stronger than others, as counsel for Baygol has urged, but there is clearly no sufficient basis for the conclusion at this point that the revocation claim is without foundation and should be struck out. Nor has any application been made to that effect. Accordingly, I do not place any significant weight to the prospects of success of either party in this matter.

funding 36 This is "funded" litigation. Australian Litigation Fund Pty Limited ("the Litigation Fund") owns the shares in Sunblock Pty Limited, which is in turn the majority shareholder of Baygol. The Litigation Fund invests in litigation by funding an applicant's legal costs in return for a percentage of the proceeds. There is no dispute that Baygol is a company without any substantial assets and would be unable to meet a substantial costs order made against it. Hence, the application for security for costs. 37 Apart from the Litigation Fund, other shareholders of Baygol include PS Kane Nominees Pty Limited, the shares in which are owned by the inventor of the patent, Mr Peter Koukourou and his wife, Mrs Patricia Koukourou. It is obvious that someone is funding this case and the related litigation being brought by Baygol in the Foamex matter at considerable expense. As Bryson J said in Maronis Holdings Ltd v Nippon Credit Australia Limited [2000] NSWSC 994 at [11]-[12]: "[11] Counsel referred me to several other authorities in which the relationship between impecuniosity and the defendants' conduct has been referred to. It is I think clear that any such relationship is a relevant discretionary consideration, but in the present circumstances it does not have any real force in my view. To my mind the most important consideration in relation to the supposed impecuniosity is that the plaintiffs appear in court, evidently with resources which are not accessible; it must be the case that the litigation is being conducted with the object of assisting the economic position of some persons who are not within the range of any order for costs which the court can make, and it is not just that those persons should pursue their own interests in this way without making some provision for the risk imposed on the defendants. [12] If the plaintiffs' decisions on whether the proceedings should be continued and on how they should be conducted really were shown not to have been influenced by the burden and risk of costs imposed on defendants, that fact would be a further discretionary consideration in favour of ordering security. The court should not endorse a sense of immunity from risk as to costs." (Emphasis added) 38 These remarks are apposite to the present circumstances. See also KP Cable Investments; Chartspike Pty Limited v Chahoud [2001] NSWSC 585 at [5], Rickard Constructions Pty Limited v Allianz Australia Insurance Ltd [2002] NSWSC 1162 at [22]. 39 Huntsman contends that because the litigation is funded by a third party, the Court should favour a greater provision by way of security for costs than would be the case where litigation is not so funded. Baygol submits that the funding source for the litigation is irrelevant, because it has accepted that security should be given, and therefore the only dispute between the parties is the amount of security that is reasonable in the circumstances. While this assertion has some force, I consider that weight should be given to the fact that the litigation is being funded as an investment, which, in my view, weighs on balance in favour of a more liberal provision, especially given the consequences of having inadequate security. In the event that Huntsman is successful, it could be out of pocket by a large sum. If Huntsman is not successful, then Baygol will have the amount of security discharged. I do not consider this to be a controlling consideration, and I do not consider that it should be given great significance, but it ought be taken into account in assessing the quantum of the security and I have taken it into account.

conflicting costs estimates 40 The expert costs assessor called for Huntsman, Ms Pattison, suggests that a figure of $418,570, less the $75,000 previously provided for security for costs, is an appropriate amount. The expert cost assessor called for Baygol, Ms Ashe, suggests that the appropriate amount, less the $75,000 already provided, is $105,000 if the costs of the cross-claim are excluded, and $210,000 in the event that they are included. 41 Both experts have substantial experience and expertise. The disparity in these figures is mainly due to the different instructions that the parties gave them concerning the assumptions that they should make regarding the complexity of the matter, the number and seniority of counsel to be retained, the necessity for a junior counsel, the relevant strengths of the case, and the number of persons appropriate to be engaged in the preparation and conduct of the case apart from counsel. As a result, for example, Ms Ashe contends that there has been luxury preparation or over-abundant caution exhibited by Huntsman's solicitors in the conduct of the proceedings to this point, and Ms Pattison disagrees. 42 Ms Ashe was not required for cross-examination but there was detailed cross-examination of Ms Pattison. The force of Ms Pattison's evidence was not significantly diminished in cross-examination and in my view she has approached the matter in a methodical and careful manner. In particular, I consider from the oral testimony and the affidavit material that she has approached the assessment with a more specific focus than Ms Ashe on the nature and contingencies of patent litigation. I am also satisfied that she has taken a conservative approach in not including in her estimate, for example, contingencies such as additional applications to the court and further interlocutory disputes which may arise as to discovery. There was some emphasis in her evidence on the relatively minor aspect of a visit to Adelaide to obtain evidence. I do not consider that the travel and time costs associated were either premature or excessive to the point where the evidence should have been provided via long distance electronic or televised communication. It is a small amount and does not add any support to the suggestion of "top-heavy" preparation. It is also important to bear in mind that the more preparation is done at the level of the paralegals, solicitors and junior counsel, the less preparation needs to be done by senior counsel, which, on the evidence, is likely to be charged at a considerably higher rate. 43 There is some criticism of the inadequacy of Ms Pattison's reduction of elements of the claim to party-party costs, on the basis that it is not in accord with usual practice. However, I am satisfied that the approach taken by Ms Pattison is within a reasonable range and is not excessive. 44 Counsel for Baygol refers to the possibility of the case collapsing through settlement. Although this is a relevant consideration, the prospect of settlement is, in my view, having regard the history of this matter, a remote possibility. There seems little prospect of settlement, notwithstanding Baygol's assertion that if ever there was a patent case likely to settle, this is it. 45 I note that in Farmitalia, Heerey J referred to the fact that costs estimates can often be optimistic, and his Honour considered that in the circumstances of that case it was fair to discount the cost estimate by about ten per cent. I consider that allowance should be made for this in the present case, and that a reduction of ten per cent to Huntsman's figure is appropriate by way of discount. I also consider that the security should be provided in tranches at appropriate times, and that liberty to apply should be reserved. 46 Since Huntsman has been successful on this application I consider that Baygol should pay Huntsman's costs in relation to this application. I make no formal order at this stage, but I direct the parties to bring in short minutes of appropriate orders to give effect to these reasons, and to bring the matter back before me for determination, if necessary, in respect of any matters which may be not be agreed upon. I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.

Counsel for the Applicant/Cross-respondent: A.B.S. Franklin, SC

Solicitor for the Applicant/Cross-respondent: Griffin Vincent Lawyers

Counsel for the Respondent/Cross-claimant: A.H. Bowne, SC

Solicitor for the Respondent/Cross-claimant: Freehills

Date of Hearing: 12 July 2004

Date of Judgment: 24 September 2004