Costs
5 The respective positions of the parties can be summarised as follows.
6 UbiPark and Mr Howell contend that there should be orders that:
(a) the TMA parties pay the costs of Mr Howell; and
(b) the TMA parties pay 90% of UbiPark's costs of the claim and cross-claim.
7 In the alternative, UbiPark and Mr Howell contend that the appropriate orders are:
(a) TMA Capital pay the costs reserved pursuant to paragraphs 4 and 5 of the Court's orders made on 14 February 2022 (which relate to two applications for interlocutory injunctive relief);
(b) the TMA parties pay UbiPark's costs of the cross-claim;
(c) the TMA parties pay Mr Howell's costs of the cross-claim; and
(d) UbiPark pay 50% of TMA Capital's costs of the revocation claim.
8 The TMA parties contend that there should be orders that:
(a) UbiPark pay TMA Capital's costs of the claim for revocation;
(b) each party pay its own costs of the claim for unjustified threats; and
(c) the TMA parties pay UbiPark's costs of the proceeding save as provided in paragraphs (a) and (b).
9 The principles relating to costs are well established. In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (No 2) [2017] FCAFC 158, the Full Court summarised the principles at [9]-[11]. See also GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited (No 2) [2018] FCAFC 100 (GlaxoSmithKline) at [5]-[8].
10 In the present case, if the claims are analysed separately, the outcomes were as follows (following the order in which they were dealt with in the August 2023 Reasons):
(a) In relation to the Infringement Claim, UbiPark and Mr Howell were successful: see [16(a)], [173].
(b) In relation to the Australian Consumer Law Claim, UbiPark and Mr Howell were successful: see [16(b)], [175].
(c) In relation to the Unjustified Threats Claim, UbiPark was successful against TMA Capital but not against TMA Technology and Zipby: see [16(c)], [183]-[184], [194].
(d) In relation to the Invalidity Claim, TMA Capital was successful: see [16(d)], [239].
11 I note the following additional facts and matters that are relevant to the question of costs:
(a) In relation to UbiPark's application for an interlocutory injunction (the costs of which were reserved by paragraph 4 of the orders made on 14 February 2022), UbiPark's position that the threats of infringement proceedings were unjustifiable has been vindicated.
(b) The TMA parties did not press their application for an interlocutory injunction. The costs of that application were reserved by paragraph 5 of the orders made on 14 February 2022. In circumstances where the TMA parties did not press their application, and in light of the outcome of the Infringement Claim, it is appropriate for the TMA parties to bear these costs.
(c) TMA Capital sued for infringement on 11 claims, and filed an infringement position statement on 6 June 2022 addressing those allegations. UbiPark's evidence-in-chief on invalidity addressed those 11 claims (Mr Elliott's affidavit of 30 June 2022). When Mr Sizer's 21 July 2022 affidavit and report were served, they only addressed claims 1, 4, 11 and 16. Accordingly, UbiPark then confined its invalidity case to those asserted claims.
(d) The Invalidity Claim was made in response to the Infringement Claim. Had the Infringement Claim not been made, the Invalidity Claim would not have been brought.
(e) The TMA parties cross-claimed against Mr Howell in addition to UbiPark. It was appropriate in these circumstances for Mr Howell to take steps to protect his personal interests, including by obtaining indemnity under a directors and officers liability insurance policy. Mr Howell and the insurer instructed Clyde & Co to represent Mr Howell to protect their combined interests that were separate to those of UbiPark. The TMA parties opened their case against Mr Howell, but did not address that case in any detail in closing submissions.
12 In my opinion, in the circumstances of this case, it is not appropriate to make a percentage-based order in relation to the costs of the proceedings as a whole, because I do not have sufficient information to make an assessment of the appropriate percentage. I note also that in GlaxoSmithKline, the Full Court stated at [8] that a claim for patent infringement and a cross-claim for patent invalidity are typically treated as separate events upon which the ordinary rule applies as to costs.
13 In the circumstances, I consider it appropriate to make orders that:
(a) In relation to UbiPark's claim for revocation of the 335 Patent: UbiPark pay TMA Capital's costs.
(b) In relation to the balance of the proceeding (including all reserved costs): the TMA parties pay UbiPark's costs and Mr Howell's costs.
14 Broadly, and subject to the comments that follow, these costs orders reflect the outcome of the various claims; in other words, they reflect the usual rule that "costs follow the event".
15 Insofar as the two interlocutory applications are concerned, for the reasons indicated above, it is appropriate for the TMA parties to pay UbiPark's and Mr Howell's costs of those applications. This is reflected in paragraph (b) of the costs orders that I propose, as set out above.
16 There were a significant number of case management hearings in the proceeding at which costs were reserved. These case management hearings involved both the claim and the cross-claim. In circumstances where, overall, UbiPark and Mr Howell have been successful in the proceeding, and for the sake of simplicity, I consider it appropriate that the TMA parties pay such costs (rather than them being apportioned as between the claim for revocation and the other claims). This is reflected in paragraph (b) of the costs orders I propose, as set out above.
17 As already indicated, Clyde & Co was retained to represent the interests of Mr Howell. I consider that it was appropriate for him (and his insurers) to retain separate lawyers. (At the trial, the same barrister represented both UbiPark and Mr Howell, but they had separate instructing solicitors.) Accordingly, it is intended that the costs payable by the TMA parties under paragraph (b) of the costs orders outlined above include the separate costs incurred by or on behalf of Mr Howell.
18 While it is true that TMA Capital initially alleged infringement in relation to 11 claims and that, as a result, UbiPark alleged invalidity in relation to 11 claims and prepared expert evidence on this basis, I do not consider it necessary to reduce the costs payable to TMA Capital in respect of the claim for revocation on this basis. Having reviewed Mr Elliott's affidavit of 30 June 2022, I am not persuaded that the wasted costs were of such significance as to justify a reduction in the costs otherwise payable to TMA Capital. Also, the narrowing of issues in dispute is to be encouraged as this reduces the overall costs of the proceeding as well as the burden on the Court's resources.
19 In relation to the Unjustified Threats Claim, while it is true that UbiPark did not succeed against TMA Technology and Zipby, in my opinion it is fair to say that UbiPark was largely successful in this claim, in that it succeeded against TMA Capital. The aspect of this claim that involved TMA Technology and Zipby was (in my view) subsidiary, and added little in terms of time and expense to the claim. I therefore consider it appropriate that UbiPark have its costs of this claim. This is reflected in the proposed costs orders set out above.
20 For these reasons, I will make costs orders as set out in [13] above.
21 UbiPark has requested that the costs be determined on a lump sum basis. This is not opposed in the TMA parties' responding submissions. I will therefore include an order that the costs be determined on a lump sum basis by a Registrar. I will also make directions to facilitate that occurring.