Binder, J.V. v Vane, G.

[1992] FCA 583

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JUDGMENT No.	... S&? .,,,,, .X&-	I.
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IN THE FEDERAL COURT OF AUSTRALIA	)
QUEENSLAND DISTRICT REGTSTRY	1 No. QG 9 of 1990
GENERAL DIVISION	1

BETWEEN: JOHANN VINCENZ BINDER

Applicant

AND: GARY VANE

Respondent

MINUTES OF ORDER

JUDGE MAKING ORDER:	SPENDER J.
DATE OF ORDER:	14 AUGUST 1992
WHERE MADE:	BRISBANE
THE COURT ORDERS THAT:

The applicant pay the respondent one half of the respondent's costs, to be taxed if not agreed.

NOTE:  Settlement and entry of orders is dealt with in Order 36
of the Federal Court Rules.

REOISTRY

RECE\VED

17 RUG 1992

FEDERAL COUm OF

PRINCIPAL

IN THE FEDERAL COURT OF AUSTRALIA 1

I	QUEENSLAND DISTRICT REGISTRY	I	NO. QG 9 of 1990
GENBRAL DIVISION	1

BETWEEN: JOHANN VINCENZ BINDER

Applicant

AND:  GARY VANE

Respondent

CORAM:	Spender J.
PLACE :	Brisbane
DATE :
-	14 August 1992

REASONS FOR JUDGMENT ON COSTS

On 29 July 1992 I gave judgment, dismissing a claim by the applicant alleging infringement of his patent for an improved sugar cane planter, and dismissing the cross-claim by the respondent for revocation of that patent.

As I indicated in the final paragraph of the reasons hearing was concerned with the question of infringement. I	for judgment given on 29 July 1992, the majority of the
indicated then that:

" . . .my present view in all the circumstances is

that it would be a fair order if, rather than order the application be dismissed with costs and the cross-claim be dismissed with costs, I were to order the applicant pay the respondent one half of the respondent's costs to be taxed, if not agreed".

I did indicate, however, that I would hear the parties concerning that proposed order as to costs and I received submissions from the applicant and the respondent on the issue of costs.

On behalf of the applicant it was submitted that:

" Notwithstanding t h a t a g r e a t e r ' par t o f t h e

hearing was taken up w i t h t h e ques t ion o f

infringement i t i s c l e a r from the hearing t h e

ques t ion o f r evoca t ion was a very subs tan t ia l

i s s u e between t h e p a r t i e s . "

I accept that this is so.

It was then submitted by the applicant that what occurred at the hearing does not necessarily reflect the time and effort which each party expended in preparing this matter for hearing on the question of revocation. Once revocation becomes an issue a great deal of investigation of prior art becomes necessary. It was therefore submitted that it may cause significant injustice to the applicant to deal with the

whole of the cost of the action on the basis of the relevant	time which was taken up at the hearing by the issues of
infringement and revocation. In particular, it was submitted that, in the light of the general rule that costs should follow the event, it would not be just for the respondent to be entitled to recover from the applicant one half of the costs incurred by the respondent in researching and preparing to litigate the issue of revocation when the respondent failed on that issue. There is weight in these submissions.
On the other hdnd, it is submitted by Lhe respondent that the costs incurred by the parties cannot easily be divided between the question of infringement or invalidity, as there is an interweaving of costs between both issues. It was said that it could be argued by each party that costs incurred related to either issue or both. It was submitted that on taxation of costs where the application had been dismissed with costs and the counter-claim dismissed with costs, there would be costly and protracted argument as to which costs related to which issue. I accept that this is so, particularly with regard to costs associated with the evidence of the patent attorneys on each side.
There is an alternative submission on behalf of the applicant, namely, that the applicant pay to the respondent one half of the costs of the hearing (including counsel's fee on brief but excluding any qualifying or preparation fees paid to expert witnesses), and that in respect of all other costs the applicant recover his costs from the respondent on the issue of revocation, and the respondent recover his costs from
the applicant on the issue of the infringement.
As the suggested exclusion relating to expert witnesses indicates, there is an inherent difficulty in separating the costs associated with the patent attorneysJ dealing with the issue of revocation and with the issue of infringement. The problem is less acute in relation to the expert engineering witnesses.
At the time of the costs order that I proposed on 29 July 1992, I was conscious of the difficulties that have been referred to in the subsequent submissions by the parties. It was in the light of those difficulties that I made that proposal as to costs.
Having considered the submissions of the parties, I am of the opinion that the order that I proposed is in all the circumstances both fair and efficient. The order that I make is as I earlier indicated, namely, that the applicant pay the respondent one half of the respondent's costs, to be taxed if not agreed.

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I c e r t i f y t h a t th i s and the

preced ing three (3) pages a r e a	i
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t r u e c o p y o f the reasons f o r : 1

judgment hereppAe -

Honourable I&.	J u s t i e S	e d e	I
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Assoc ia !

Date:  1 4

Counsel	f o r	the a p p l i c a n t	Mr B.	O'Donnell
i n s t r u c t e d by	:	Mi ghel l , Lee-Bryce	&

Vande leur	(now
Vande l eur s )

Counsel f o r the responden t	M r A. Crowe
i n s t r u c t e d by	Barry , Beaver &
S t e n s o n
Dates o f h e a r i n g	4-7 June 1991, 18 June i
1991 1'.

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