Datadot Technology Ltd v Alpha Microtech Pty Ltd

REASONS FOR JUDGMENT 1 I have before me an application under O 62 r 4(2)(c) of the Federal Court Rules for an order that the applicant be entitled to a gross sum in respect of costs. Rule 4(2)(c) provides that, where the Court orders that costs be paid to any person, the Court may further order that, as to the whole or any part of the costs specified in the order, instead of taxed costs, that person should be entitled to a gross sum specified in the order. 2 On 5 August 2003, I made final orders in respect of infringement of the applicant's patent by the respondent. I also ordered the respondent to pay the applicant's costs of the proceeding. The proceeding was the first in this Court to consider the application of the Patents Act 1990 (Cth) to innovation patents and it was therefore entirely appropriate that the proceeding be brought in this Court. Accordingly, even if I were not to make an order under r 4, it would be inappropriate that there be any reduction in the costs to which the applicant is entitled by the operation of O 62 r 36A(1). Rule 36A(1) provides that, where a party is awarded judgment for less than $100,000 on a claim for a money sum or damages, any costs ordered to be paid will be reduced by one-third of the amount otherwise allowable unless the Court otherwise orders. As I am of the view that it is appropriate to make an order under r 4, that provision would not come into play. 3 The respondent was represented at one stage in the proceeding but there has been no appearance for the respondent on the last few times when the matter has been before the Court. I am satisfied from the evidence of the affidavit of Chantel Imogen Savage sworn 23 October 2003 that the respondent has been given ample opportunity to appear and to contest the orders now sought under r 4. 4 I have considered the affidavit of Michael John Williams sworn 14 October 2003 in support of the application. Mr Williams is an experienced solicitor and a partner of the firm acting for the applicant. In particular, he has had experience in the investigation, conduct and proof of intellectual property infringements and conduct of proceedings relating to such infringements. He has also been involved in a number of cases in this Court where costs have been taxed following completion of substantive proceedings. It is Mr Williams' experience that the amount of professional costs and disbursements have been allowed at something between 50 per cent and 60 per cent of the costs and disbursements actually incurred. 5 Mr Williams has compiled schedules of the total costs incurred in relation to this proceeding. From those costs, he has deducted significant portions of the costs actually charged by the firm to the applicant representing first, costs incurred prior to the commencement of the proceeding, secondly, costs associated with a claim under s 52 of the Trade Practices Act 1974 (Cth) that was not pressed at the final hearing and, thirdly, other costs not directly referable to the proceeding. Mr Williams arrived at a figure of $217,123.21. 6 That figure is calculated as follows: Professional legal costs $151,263.70 Total disbursements $38,580.70 Total goods and services tax $18,509.50 Work in progress including goods and services tax $8,769.31 Total $217,123.21