FEDERAL COURT OF AUSTRALIA
Hood v Bush Pharmacy Pty Ltd (No 2) [2021] FCA 138
File numbers: NSD 1267 of 2017
NSD 1271 of 2017
NSD 1272 of 2017
NSD 2175 of 2017
NSD 2176 of 2017Judge: NICHOLAS J Date of judgment: 26 February 2021 Catchwords: COSTS – applications for costs orders in five proceedings brought by the applicant for patent infringement and trade mark infringement and contravention of Australian Consumer Law – where proceedings heard together – where applicant wholly unsuccessful against some respondents and partially successful against others – where cross-claims filed in each of the five proceedings challenging validity of claims were successful in relation to some claims but not others – costs orders made in respect of five applications and five cross-claims Legislation: Australian Consumer Law
Federal Court of Australia Act 1976 (Cth) s 43
Federal Court Rules 2011 (Cth) r 25.03
Patents Act 1990 (Cth) s 105(1) and s 105(2)
Cases cited: Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (2012) 99 IPR 59
Colgate Palmolive Co v Cussons Pty Ltd (1993) 46 FCR 225
Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (No 2) [2000] FCA 602
EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Ltd [2011] FCAFC 92
Gray v Richards (No 2) (2014) 315 ALR 1
Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686
J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (No 2) (1993) 46 IR 301
Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) (2019) 139 IPR 424
PAC Mining Pty Ltd v Esco Corporation (No 2) [2009] FCAFC 52
Ruddock v Vadarlis(No 2) (2001) 115 FCR 229
Date of hearing: 8 December 2020 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 71 Counsel for the Applicant/Cross-Respondent: Ms B Oliak Solicitor for the Applicant/Cross-Respondent: LJ Sharpe & Co Lawyers Counsel for the Respondent/Cross-Claimant in Proceedings NSD 1267, 1271 and 1272: Mr A Fox with Mr SJ Hallahan Solicitor for the Respondent/Cross-Claimant in Proceedings NSD 1267, 1271 and 1272: Gadens Lawyers Counsel for the Respondents/Cross-Claimant in Proceedings NSD 2175 and 2176: Mr S Reuben with Ms J Whitaker Solicitor for the Respondents/Cross-Claimant in Proceedings NSD 2175 and 2176: Malcolm McDonald & Co Solicitors ORDERS
NSD 1267 of 2017 BETWEEN: JOHN JAMES DAVID HOOD
Applicant
AND: BUSH PHARMACY PTY LTD (ACN 149 740 741)
Respondent
AND BETWEEN: BUSH PHARMACY PTY LTD (ACN 149 740 741)
Cross-Claimant
AND: JOHN JAMES DAVID HOOD
Cross-Respondent
JUDGE:
NICHOLAS J
DATE OF ORDER:
26 FEBRUARY 2021
THE COURT DECLARES THAT:
1.The respondent/cross-claimant has, by reason of sections 117(1) and 117(2)(c) of the Patents Act 1990 (Cth), infringed claim 5 of expired Standard Patent No 721156 (“the Patent”).
2.By publishing the text “Listed under Therapeutic Goods Australia” on the website hosted at the respondent/cross-claimant has represented that the Kunzea ambigua oil products sold by it were listed on the Australian Register…
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- Case
- [2021] FCA 138
- Decision Date
CaseChat Overview and Summary
The court found that some of Hood's patent claims were valid and infringed by Bush Pharmacy, while others were invalid. Hood was successful in some of the proceedings but not others. Bush Pharmacy's cross-claims challenging the validity of Hood's patent claims were partially successful. The court carefully considered the evidence and arguments presented by both parties and made detailed findings on the validity and infringement of the patent claims, the validity of the trade mark claims, and the contravention of the Australian Consumer Law. In relation to costs, the court found that Hood was entitled to a costs order in respect of some of the proceedings but not others, and that Bush Pharmacy was liable for some of Hood's costs but not others.
In summary, the court revoked certain patent claims, amended others, and found that some trade mark claims were valid and infringed. The court also found that Bush Pharmacy had contravened the Australian Consumer Law. The court made detailed costs orders, finding that Hood was entitled to some costs but not others, and that Bush Pharmacy was liable for some of Hood's costs but not others. The court also listed the proceeding for a Case Management Hearing to consider Hood's claim for pecuniary relief.
The court's orders included the revocation of certain patent claims, the amendment of others, and the dismissal of Hood's trade mark infringement claim and application for orders under the Patents Act. The court also ordered that Bush Pharmacy pay 60% of Hood's costs of the application, and that Hood pay certain costs of Bush Pharmacy. The court further ordered that Bush Pharmacy pay 14% of Hood's costs of defending the cross-claims, and listed the proceeding for a Case Management Hearing to consider Hood's claim for pecuniary relief.
Orders
Orders of the court
2. Claims 1, 2, 3, 4 and 8 of the Patent be revoked.
3. Pursuant to s 105 of the Patents Act 1990 (Cth), and upon the applicant/cross-respondent agreeing to submit to order 4 below revoking claims 14, 15, 16, 17 and 18 of the Patent, the Court directs that the claims 5, 6, 7, 9, 10, 11, 12 and 13 of the Patent be amended as set out in Annexure A to these orders.
4. Claims 14, 15, 16, 17 and 18 of the Patent be revoked.
5. The notice of cross-claim dated 2 May 2018 be otherwise dismissed.
6. The respondents/cross-claimant pay 60% of the applicant/cross-respondent’s costs of the application dated 7 March 2018 on a party/party basis but excluding such costs as are referable to the claims addressed in Order 7.
7. The applicant/cross-respondent pay the respondents/cross-claimant’s costs:
(a) referable to the applicant/cross-respondent’s claim of trade mark infringement on an indemnity basis;
(b) referable to the applicant/cross-respondent’s application for orders under s 105 of the Patents Act 1990 (Cth) on a party/party basis.
8. The first respondent/cross-claimant pay 14% of the applicant/cross-respondent’s costs of defending the cross-claims filed in this proceeding and in proceedings NSD1267/2017, NSD1271/2017, NSD2175/2017 and NSD1272/2017 on a party/party basis.
9. The proceeding be listed for a Case Management Hearing on 14 April 2021 at 9.30am for the making of any orders or directions in respect of the applicant’s claim for pecuniary relief under s 122(1) of the Patents Act 1990 (Cth).
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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