PAC Mining Pty Ltd v Esco Corporation (No 2) [2009] FCAFC 52

FEDERAL COURT OF AUSTRALIA

PAC Mining Pty Ltd v Esco Corporation (No 2) [2009] FCAFC 52 PRACTICE AND PROCEDURE – Costs – Patent infringement proceeding – Respondents resisting allegation of infringement and cross-claiming for revocation on ground of invalidity – Respondents successful on infringement point but unsuccessful on validity point – How costs should be apportioned – Whether respondents entitled to costs generally or only on issues upon which they succeeded.

PAC MINING PTY LTD (ABN 11 007 694 895) and CENTRAL QUEENSLAND MINING SUPPLIES PTY LTD (ABN 11 010 402 990) v ESCO CORPORATION and BRADKEN RESOURCES PTY LTD (ABN 82 098 300 988)

NSD 1076 of 2008

SUNDBERG, JESSUP & MIDDLETON JJ

1 MAY 2009

MELBOURNE (HEARD IN SYDNEY) IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 1076 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: PAC MINING PTY LTD (ABN 11 007 694 895)

First Appellant

CENTRAL QUEENSLAND MINING SUPPLIES PTY LTD (ABN 11 010 402 990)

Second Appellant

AND: ESCO CORPORATION

First Respondent

BRADKEN RESOURCES PTY LTD (ABN 82 098 300 988)

Second Respondent

JUDGES: SUNDBERG, JESSUP & MIDDLETON JJ

DATE OF ORDER: 1 MAY 2009

WHERE MADE: Melbourne (HEARD IN sydney)

THE COURT ORDERS THAT:

1. Order 9 of the orders made by the court on 4 July 2008 be set aside. 2. In place of Orders 8 and 9 made by the court on 4 July 2008 it be ordered that – · the respondents/cross claimants pay the costs of the applicants/cross respondents of the Application and the Cross-claim to the extent that those costs relate to the issues raised by paragraphs 8.1, 8.2, 9.1 and 9.2 of the Cross-claim and to the corresponding issues raised by paragraph 9 of the Defence; · otherwise, the applicants/cross respondents pay the costs of the respondents/cross claimants of the Application and the Cross-claim. 3. The appellants pay the respondents' costs of the appeal to the extent that those costs relate to the issues raised by ground 2 in the Notice of Appeal. 4. Otherwise, the respondents pay the appellants' costs of the appeal. 5. The cross appellants pay the cross respondents' costs of the cross appeal. 6. The appellants pay 75% of the respondents' costs associated with the determination by the Full Court of the parties' entitlement to costs at first instance and on appeal. 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 eSearch on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA