Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd

FEDERAL COURT OF AUSTRALIA

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 428

File number(s):

NSD 236 of 2012

Judge(s):

JAGOT J

Date of judgment:

4 May 2017

Catchwords:

COSTS – damages for patent infringement – offer of compromise made – whether respondent sufficiently informed whether the offer represented a genuine compromise – indemnity basis  

Legislation:

Patents Act 1990 (Cth) s 115

Federal Court Rules 2011 (Cth) rr 1.35; 25.14

Cases cited:

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2012] FCA 1510; (2012) 99 IPR 59

Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd [2009] FCAFC 40

Date of hearing:

20 April 2017

Registry:

New South Wales

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Patents and associated Statutes

Category:

Catchwords

Number of paragraphs:

10

Counsel for the Applicants:

D Shavin QC with H Rofe QC

Solicitor for the Applicants:

Davies Collison Cave Law

Counsel for the Respondents:

I Jackman SC with DB Larish

Solicitor for the Respondents:

Bird & Bird

ORDERS

NSD 236 of 2012

BETWEEN:

BAYER PHARMA AKTIENGESELLSCHAFT

First Applicant

BAYER AUSTRALIA LTD (ACN 000 138 714)

Second Applicant

AND:

GENERIC HEALTH PTY LTD (ACN 110 617 859)

First Respondent

LUPIN AUSTRALIA PTY LTD (ACN 112 038 105)

Second Respondent

JUDGE:	JAGOT J
DATE OF ORDER:	4 MAY 2017

THE COURT ORDERS THAT:

1.Subject to paragraph 11 of the orders made on 8 May 2013, the respondents pay the applicants’ costs of the proceedings:

(a)on a party-party basis up to 11.00am on 11 May 2015; and

(b)on an indemnity basis thereafter.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

JAGOT J:

1. These reasons for judgment relate to costs, the only outstanding issue in this matter. 

2. On 16 March 2017 I published reasons for judgment explaining why Bayer should succeed in its claim for damages for infringement of its patent (Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250). Subsequently, I ordered the respondents to pay Bayer $25,437,966 in damages plus interest. This amount exceeds the amount of $19,891,858 for which Bayer offered to settle the proceedings in an offer of compromise served on 6 May 2015.

3. Bayer seeks orders for costs in its favour on a party-party basis up to 11 May 2015 and an indemnity basis thereafter under r 25.14(3) of the Federal Court Rules 2011 (Cth). The rule, and the various statements of principle about its operation are clear, but that does not mean that the application of the rule and the principles to any particular set of factual circumstances is necessarily straightforward. In the present case, a number of factors have persuaded me that I should not make an order under r 1.35 of the Rules inconsistent with r 25.14(3), with the consequence that orders as sought by Bayer for indemnity costs ought to be made. Those factors are as follows:

   (1)It is…