Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd & Anor [1997] FCA 1337

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 215 of 1994

BETWEEN: WIMMERA INDUSTRIAL MINERALS PTY LTD (ACN 004 302 130)

Applicant

AND: RGC MINERAL SANDS LIMITED (ACN 008 763 666)

First Respondent

RGC MINERAL SANDS LIMITED

cross-claimant

WIMMERA INDUSTRIAL MINERALS PTY LTD

FIRST CROSS-CLAIMANT

THE COMMISSIONER OF PATENTS

SECOND CROSS-RESPONDENT

JUDGE: SUNDBERG J

DATE: 12 NOVEMBER 1997

PLACE: MELBOURNE

EX‑TEMPORE REASONS FOR JUDGMENT According to Terrell on the Law of Patents (14th ed) at 245, irrespective of whether the amendments sought are allowed or refused, it is the normal practice that the applicant be required to pay the respondent's costs. However, in the exercise of its discretion the Court might refuse costs or award reduced costs to a respondent who has made unnecessary or trivial objections. The respondent took numerous objections under s 102 and relied on many matters going to the exercise of the discretion to disallow amendments. Although I rejected all the discretionary matters, most of them were seriously arguable. Some, however, such as the petty patent and catching the infringer points, were not of that character. It will be apparent from my reasons for judgment of 15 October 1997 that in my view many of the s 102 non‑disclosure grounds were not seriously arguable. The discretionary non‑disclosure grounds related mainly to other amendment applications made by the applicant. None of the grounds was made out. I have taken into account that these grounds amounted at least to complaints of lack of candour on the part of the applicant. On the other hand I have taken into account, as I said in my judgment, that the applicant could have been more forthcoming in its affidavits in relation to the other applications. I regard this as neutralising the respondent's failure to make out its lack of candour claims. In all the circumstances I think the appropriate order is that the applicant pay three‑quarters of the respondent's costs of the application.