MDS Diagnostics Pty Limited v Inverness Medical Switzerland GmbH

[2010] FCA 1496

FEDERAL COURT OF AUSTRALIA

MDS Diagnostics Pty Limited v Inverness Medical Switzerland GmbH [2010] FCA 1496

Citation:	MDS Diagnostics Pty Limited v Inverness Medical Switzerland GmbH [2010] FCA 1496
Appeal from:	Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108
Parties:	MDS DIAGNOSTICS PTY LIMITED, MDS DIAGNOSTICS LIMITED and PRAKASH APPANNA v INVERNESS MEDICAL SWITZERLAND GMBH
File number:	NSD 1031 of 2010
Judge:	EMMETT J
Date of judgment:	19 November 2010
Date of hearing:	19 November 2010
Place:	Sydney
Division:	GENERAL DIVISION
Category:	No catchwords
Number of paragraphs:	4
Solicitor for the First and Second Appellants:	G. Francis of Douros Jackson Lawyers
Counsel for the Third Appellant:	The Third Appellant did not appear.
Counsel for the Respondent:	P.W. Flynn
Solicitor for the Respondent:	Addisons

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 1031 of 2010

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

MDS DIAGNOSTICS PTY LIMITED
(ACN 090 765 702)
First Appellant

MDS DIAGNOSTICS LIMITED
(New Zealand Company Number 1000571)
Second Appellant

PRAKASH APPANNA
Third Appellant

AND:

INVERNESS MEDICAL SWITZERLAND GMBH
Respondent

JUDGE:	EMMETT J
DATE OF ORDER:	19 NOVEMBER 2010
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The appeal, insofar as it is brought by the second appellant, be dismissed with costs.

2.Within seven days of the date of this order, the first appellant and third appellant provide security for the respondent’s costs of the appeal, in the amount of $60,000 and in a form acceptable to the Registrar.

3.In default of compliance with paragraph 2 above, the appeal be stayed until further order.

4.The appellants pay the respondent’s costs of the notice of motion dated 2 September 2010.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 1031 of 2010

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

MDS DIAGNOSTICS PTY LIMITED
(ACN 090 765 702)
First Appellant

MDS DIAGNOSTICS LIMITED
(New Zealand Company Number 1000571)
Second Appellant

PRAKASH APPANNA
Third Appellant

AND:

INVERNESS MEDICAL SWITZERLAND GMBH
Respondent

JUDGE:	EMMETT J
DATE:	19 NOVEMBER 2010
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The respondent to this appeal seeks security for costs of the appeal.  On 22 February 2010, a judge of the Court gave judgment in favour of the respondent.  On 22 July 2010, orders were made disposing of the liability aspects of the proceeding.  The proceeding involved a claim for infringement of four patents.  The claim was brought by the respondent to the appeal, Inverness Medical Switzerland, against the first appellant MDS Diagnostics Pty Limited, a New Zealand company named MDS Diagnostics Limited and the third appellant, Dr Prakash Appanna.  Dr Appanna is the managing director of the two companies and he was sued on the basis that he was liable for the infringements of the companies as a joint tortfeasor and by authorising their infringements.

2. A cross-claim for revocation of the four patents and for unjustified threats was brought by the companies.  As I have said, Inverness was successful in the proceeding.  Since the commencement of the appeal, MDS Diagnostics Limited has been wound up, and it is appropriate that the appeal be dismissed with costs insofar as it is brought by that company.  There was no opposition to an order for security in respect of the first appellant, however the court was asked to deal with the appeal by Dr Appanna on a different basis.  Dr Appanna is a resident of New Zealand and has no assets in Australia.  There is some evidence that he is acting in a representative capacity in the proceeding.

3. The respondent has asked for an order for security for costs in the sum of $60,000.  Nothing has been said on behalf of the appellants as to the quantum.  It was suggested that if security is not provided by the first appellant, there should be no stay so far as Dr Appanna is concerned in relation to his claim that even if the companies were liable, he was not a joint tortfeasor.  As Dr Appanna is a resident of New Zealand and has no assets in Australia and there is no evidence as to his financial position, I do not consider it is appropriate to deal with him separately.

4. Accordingly, I order that security in the sum of $60,000 be provided on behalf of the first and third appellants in a form acceptable to the Registrar and order that in default of provision of such security, the prosecution of the appeal be stayed until further order.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:        18 January 2011