Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) - [2013] FCA 170

FEDERAL COURT OF AUSTRALIA
Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) [2013] FCA 170

Citation: Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) [2013] FCA 170

Parties: TRAMANCO PTY LTD (ACN 010 101 872) v BPW TRANSPEC PTY LTD (ACN 006 645 272)

File number: QUD 114 of 2009

Judges: DOWSETT J

Date of judgment: 6 March 2013

Catchwords: COSTS – whether successful party should have costs of an issue not ultimately decided – indemnity costs – whether Calderbank letter rejected – whether rejection unreasonable

Legislation: Patents Act 1990 (Cth) s 40

Cases cited: Calderbank v Calderbank [1975] 3 All ER 333 cited
Facton Ltd v Seo (2011) 91 IPR 135 applied

Date of hearing: Determined on the papers

Dates of submissions: 5 July 2012, 1 August 2012, 10 August 2012

Place: Brisbane

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 21

Counsel for the Applicant and Cross Respondent: Mr A Franklin SC

Solicitor for the Applicant and Cross Respondent: Bennett & Philp Lawyers

Counsel for the Respondent and Cross Applicant: Mr P Collinson SC with Ms S Gatford

Solicitor for the Respondent and Cross Applicant: Madgwicks Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

QUD 114 of 2009

BETWEEN:
TRAMANCO PTY LTD (ACN 010 101 872)
Applicant/Cross Respondent

AND:
BPW TRANSPEC PTY LTD (ACN 006 645 272)
Respondent/Cross Applicant

JUDGE:

DOWSETT J

DATE OF ORDER:

6 MARCH 2013

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:
1.the applicant pay the respondent’s costs of the proceedings, including reserved costs; and
2.there be no order as to costs incurred on the question of costs.

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

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

QUD 114 of 2009

BETWEEN:
TRAMANCO PTY LTD (ACN 010 101 872)
Applicant/Cross Respondent

AND:
BPW TRANSPEC PTY LTD (ACN 006 645 272)
Respondent/Cross Applicant

JUDGE:

DOWSETT J

DATE:

6 MARCH 2013

PLACE:

BRISBANE

REASONS FOR JUDGMENT

The applicant (“Tramanco”) holds Australian Patent No 2004264997 (the “Patent”). In these proceedings it sought to establish that the respondent (“BPW”) had infringed the Patent. By cross claim BPW sought revocation of the Patent upon the grounds of lack of novelty, lack of inventiveness, failure to disclose the best method of performing the invention and that the patent was not clear, succinct and fairly based on the specification. After a lengthy trial I held that the claims in the Patent lacked novelty and that the specification did not comply with ss 40(2)(a) and 40(3) of the Patents Act 1990 (Cth) (the “Patents Act”). I found that the invention was anticipated by a patent described in the reasons as the “Tal patent” and two publications described therein as “Sweatman 1983” and “Sweatman 1994”. Although I was satisfied that the invention lacked novelty I did not reach any conclusion as to inventiveness.
Tramanco’s case was based upon a construction of the claims which, in my view,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] FCA 170
Decision Date

CaseChat Overview and Summary

In the case of Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) [2013] FCA 170, the Federal Court of Australia was tasked with determining the appropriate costs incurred by the parties in the patent infringement proceedings between Tramanco Pty Ltd, the applicant, and BPW Transpec Pty Ltd, the respondent. The primary legal issues before the court were whether the successful party should receive costs for an issue that was not ultimately decided, the applicability of indemnity costs, and the assessment of the reasonableness of the rejection of a Calderbank offer.

The court addressed these issues by first considering whether BPW should be awarded costs for the issue of inventiveness, which was not decided in the judgment. The court concluded that although BPW did not succeed on the issue of inventiveness, it did not fail, as the court had examined the matter in detail. The court held that in such cases, where the successful party has not failed on a particular issue but the court decides not to reach a conclusion, the unsuccessful party should be awarded costs for that issue. As for indemnity costs, the court examined BPW's Calderbank letter and Tramanco's response to determine whether the rejection of the offer was unreasonable. The court found that the rejection was not unreasonable, as the offer contained ambiguities and required further negotiation before acceptance. Consequently, the court decided that BPW's costs should be taxed on a party-and-party basis.

In conclusion, the Federal Court of Australia held that BPW should be awarded its costs of the proceedings, including reserved costs. However, no order was made as to the costs incurred in connection with the question of costs. This decision demonstrates the importance of considering the principles of reasonableness and negotiation when assessing the costs of patent litigation, particularly in relation to Calderbank offers.

Orders