Apotex Pty Ltd v Les Laboratoires Servier (No 5)

In the case of Apotex Pty Ltd v Les Laboratoires Servier (No 5), Apotex challenged the validity of a patent held by Servier. Apotex was successful on only one issue, the best-method issue, at the conclusion of a lengthy trial in which it had challenged the validity of the patent on numerous grounds. The court was required to determine the appropriate costs order, given that Apotex, though ultimately successful, lost on nearly all issues litigated. The court's discretion under section 43 of the Federal Court of Australia Act 1976 (Cth) and the principles established in Calderbank v Calderbank [1976] Fam 93 were central to the decision. The court considered the nature of the litigation, the timing of the offers of compromise, and the appropriateness of the costs order in light of the unsuccessful issues pursued by Apotex.

The court emphasised the discretionary nature of costs orders and the factors that may influence the exercise of this discretion, such as the unsuccessful issues pursued by the party that ultimately prevailed. It noted that while the general rule is for the successful party to be awarded costs, this is not an absolute rule. The court concluded that the offers of compromise made by Apotex did not affect the appropriate costs order, given the nature and outcome of the litigation. The court exercised its discretion to order costs in a way that reflected the extent to which significant sums of costs had been expended on unsuccessful issues, aligning with the principles of justice and the discretion afforded by section 43 of the Federal Court of Australia Act.

Following its reasoning, the court ordered that Apotex and Actavis pay 60% of Servier's costs of the application to amend and that Apotex pay 66.67% of Servier's costs of the proceedings. This order was intended to reflect the significant resources spent on the unsuccessful issues pursued by Apotex during the litigation. The court's decision was based on a broad evaluative judgment of what justice required in the circumstances of the case, taking into account the unsuccessful issues and the overall conduct of the litigation.

The final orders of the court were as follows: (1) Apotex and Actavis pay 60% of Servier’s costs of the application to amend. (2) Apotex pay 66.67% of Servier’s costs of the proceedings. These orders were intended to ensure that the costs order reflected the reality of the litigation and the unsuccessful issues pursued by Apotex.