Hughes v Western Australian Cricket Association

were identical and the degree of integration of the two proceedings makes it appropriate that the costs of the application and of the cross-claim be treated as one set of costs. In patent litigation there is much scope for a multitude of issues to be presented which rely upon discrete areas of patent law. If pleading of multiple issues is embarked upon as a matter of course, thereby obliging a court to spend considerable time upon those issues, inappropriate use of limited Court resources may result and the delivery of justice to the parties before the Court may be put at risk in so far as that concept relies upon the prompt resolution of a case at minimal cost. "Nine-pin" pleading is not appropriate in modern litigation and parties in suit are obliged to do their best to identify promptly the real issues of the case that will warrant the use of the Court's resources to resolve them. Where that has not occurred the Court may consider making an order for costs that makes appropriate variation to the usual or expected order. In some cases the parties may be required to bear their own costs, or costs on particular issues will be divided between the parties or apportioned. (See: Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company (1996) 33 IPR 461; Rediffusion Simulation Ltd v Link-Miles Ltd [1993] FSR 369; C Van Der Lily NV v Rushton's Engineering Co Ltd [1993] RPC 45; Schindler Lifts Australia Pty Ltd v Debelak (1989) 89 ALR 275.) The respondents/cross-claimants did not abandon until the trial had commenced their claim that Mr Jacek was not the inventor of the invention the subject of the patent. In addition they failed in their claim that the invention lacked the necessary quality of inventiveness under the Act; failed in all but one of the numerous particulars of a claim that the invention was not novel; failed in their claim that the invention lacked an inventive step and was obvious; failed in their claim that the invention did not include a new manner of manufacture; failed in their claim that the claims of the invention were not fairly based on the matter described in the specification and, in consequence, failed on the further issue they had raised as to the priority date of the patent. Although the respondents/cross-claimants may not have raised improperly or unreasonably any of the issues on which they failed, the number of issues litigated by them on which they did not succeed means that the effect those issues had on the conduct of the trial must be considered. I am satisfied that the nature of the cross-claim presented by the respondents/cross-claimants extended unnecessarily the time taken for the trial of the matter and preparation for trial, and did so to a measurable extent. Account of that fact must be reflected in the order for costs. Also on 2 June 1995 the respondents/cross-claimants applied by motion to adjourn the commencement of the trial. The motion was refused on that day with liberty to relist the motion if cause were shown. The motion was not relisted and the reserved costs of that motion should not be borne by the applicants. On 19 July 1996 the respondents/cross-claimants applied for leave to re-open their case to tender further documentary evidence and a further attendance at Court was required for that purpose. That application was refused. The applicants should not be required to bear the costs of that part of the trial process. Mediation conferences were held before the trial commenced and the respondents/cross-claimants seek to have the costs of the time spent in, and preparing for, such conferences included in the costs of the litigation. The applicants submit that each party should bear its own costs in respect of mediation proceedings. I consider that unless there are unusual circumstances which require such an order, for example circumstances to which O62 r36 of the Federal Court Rules apply, no order should be made that the costs of any party incurred in the conduct of mediation proceedings are to be included in the costs of the litigation. Mediation is a consensual proceeding in which the parties are encouraged to resolve or compromise their differences without subjecting themselves to the risks and the costs of a trial. It is in the public interest that parties be encouraged to undertake mediation proceedings without being concerned that additional party and party costs will be incurred if they do so. The respondents/cross-claimants referred to s220 of the Act and sought an order that the costs awarded include an order that the applicants pay disbursements incurred by the respondents/cross-claimants for fees payable to patent attorneys for assistance in preparation for, and attendance at, trial. I do not consider that an order in those terms is necessary. What part of those disbursements are included in party and party costs is a matter for the taxing officer. In so far as s220 of the Act permits an allowance for the attendance of a patent attorney in Court at the hearing of a proceeding under the Act to be included in the costs of a party ordered to be paid, it is a matter for the taxing officer to be satisfied, firstly, as to the fact of that attendance and, secondly, as to the purpose thereof before determining whether any allowance for that attendance is to be included in the taxed costs. It would not be productive or appropriate to attempt to divide the trial, or its preparation, into discrete compartments. The trial occupied more than ten days. Comprehensive written submissions were prepared and filed after the hearing of evidence had been completed. The respondents/cross-claimants were brought to Court by the applicants and succeeded in persuading the Court that the applicants were not entitled to the order they sought. That result brings with it a higher claim to an order for costs. The extent to which time and expense was spent unnecessarily remains a matter of judgment having regard to the conduct of the trial overall and the outcome of the trial. It is better that I exercise that judgment and make an order that will prevent additional costs being incurred in a substantial taxation of costs proceeding that would follow if I left assessments of the costs of the respective issues to be made by the taxing officer. Having considered all of the foregoing matters I have determined that the order which is fit in the circumstances is an order that the applicants pay one half of the respondents/cross-claimants' costs of the application and cross-claim, taxed as one set of costs. There will be an order for costs in those terms. I certify that this and the preceding 6 pages are a true copy of the Reasons for Judgment of his Honour Justice Lee. Associate: Date: