FEDERAL COURT OF AUSTRALIA Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [No 2] [2018] FCAFC 210 Appeal from: Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250; 124 IPR 23 Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 428 File number: NSD 717 of 2017 Judges: ALLSOP CJ, YATES AND BEACH JJ Date of judgment: 27 November 2018 Catchwords: COSTS – costs of the appeal Date of last submissions: 7 November 2018 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 8 Counsel for the Appellants: I Jackman SC with A Fox and D Larish Solicitor for the Appellants: Bird & Bird Counsel for the Respondents: D Shavin QC with H Rofe QC Solicitor for the Respondents: Davies Collison Cave Law ORDERS NSD 717 of 2017 BETWEEN: GENERIC HEALTH PTY LTD (ACN 110 617 859) First Appellant LUPIN AUSTRALIA PTY LTD (ACN 112 038 105) Second Appellant AND: BAYER PHARMA AKTIENGESELLSCHAFT First Respondent BAYER AUSTRALIA LIMITED (ACN 000 138 714) Second Respondent JUDGES: ALLSOP CJ, YATES AND BEACH JJ DATE OF ORDER: 27 NOVEMBER 2018 THE COURT ORDERS THAT: 1. The appeal be allowed in part. 2. In Order 1 of the orders of the Court made on 4 April 2017: (a) the sum of $25,437,966 be replaced by $24,929,207; and (b) the sums of $5,923,735 and $5,300 be replaced respectively by $5,805,260 and $5,194. 3. The Respondents pay to the Appellants the amount of $634,653 by way of reimbursement for the amount overpaid to the Respondents by the Appellants pursuant to Order 1 of the orders made by the Court on 4 April 2017. 4. The Respondents pay the Appellants the sum of $49,972 by way of interest on the amount referred to in Order 3 above up to 31 October 2018 (and a further $130 per day thereafter). 5. The Appellants pay 40% of the Respondents' costs of the appeal as agreed or taxed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT THE COURT: 1 We refer to our principal judgment on appeal: Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183. 1 The parties are at issue as to the proper order for costs of the appeal, but are otherwise agreed on the form of orders. 2 Neither party wishes to disturb the orders for costs made by the primary judge. 3 Generic Health submitted that it was successful in part and that, as a consequence, Bayer should pay a significant part of its costs, identifying 50%. In the alternative, the submission was put that each party bear its own costs of the appeal. 4 Bayer sought an order for 95% of its costs. 5 As is often the case in debates about costs, the appropriate and fair burden of costs lies somewhere between the parties' submissions. 6 Whilst Generic Health was successful and will, by the orders, recover some of the judgment it has paid, an examination of the issues and costs of the whole appeal reveals that Bayer was substantially successful. It is unnecessary to consider other cases in which costs have been awarded, or not as the case may be, by reference to issues. Much depends in each case on the relationship of the issues in dispute. Ultimately, it is a question of the interests of justice and the fair and just resolution of the dispute that is to be determined. It is sufficient to say here that it would be unjust and unfair for Bayer not to receive a not insignificant proportion of its costs, given the broad success that it had over the whole of the appeal. We consider that Generic Health should pay 40% of Bayer's costs. 7 Thus, with that addition, the orders will be as agreed by the parties to reflect our principal reasons. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Allsop, and Justices Yates and Beach. Associate: Dated: 27 November 2018