FEDERAL COURT OF AUSTRALIA Preston Erection Pty Ltd v Speedy Gantry Hire Pty Ltd [1999] FCA 122 PRACTICE – Application to Full Court after delivery of judgment to vary costs orders made by it - Matter not raised at hearing of the appeal – No exceptional circumstances. PRESTON ERECTION PTY LTD (ACN 003 991 062) and JOHN CLEMENT PRESTON v SPEEDY GANTRY HIRE PTY LTD (ACN 101 593 414) NG485 of 1999 WILCOX, HEEREY and LINDGREN JJ 23 APRIL 1999 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG485 OF 1999 BETWEEN: PRESTON ERECTION PTY LTD (ACN 003 991 062) First Appellant JOHN CLEMENT PRESTON Second Appellant/Cross-Respondent AND: SPEEDY GANTRY HIRE PTY LTD (ACN 101 593 414) Respondent/Cross-Appellant JUDGES: WILCOX, HEEREY and LINDGREN JJ DATE OF ORDER: 23 APRIL 1999 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The application to vary the Court's orders be refused. 2. The costs of the application for variation be costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG485 OF 1999 BETWEEN: PRESTON ERECTION PTY LTD (ACN 003 991 062) First Appellant JOHN CLEMENT PRESTON Second Appellant/Cross-Respondent AND SPEEDY GANTRY HIRE PTY LTD (ACN 101 593 414) Respondent/Cross-Appellant JUDGES: WILCOX, HEEREY and LINDGREN JJ DATE: 23 APRIL 1999 PLACE: SYDNEY REASONS FOR JUDGMENT 1 THE COURT: When judgment was delivered in this case, the Court made orders, including orders in respect of costs. This was in accordance with the standard practice of the Court, of which practitioners are well aware. The usual situation is that costs follow the event. In the case of a successful appeal, this ordinarily signifies a costs order in favour of the appellant on the trial as well as on the appeal. Sometimes there is an argument for a different result. Where it is thought this may be the situation in a particular case, the matter should be addressed during the hearing of the appeal. 2 In the present case, after delivery of judgment the respondent asked us to vary the costs orders we had made. Notwithstanding our view that this subject should have been raised earlier, we have read the submissions of the respondent and the appellants and the respondent's submissions in reply. 3 We do not see any proper basis for setting aside our order that the respondent pay the costs of the appeal and the costs of the trial. 4 It was open to the respondent on the hearing of the appeal to advance argument that, in the event of the appeal succeeding, the appellants should not receive all their costs of the trial. Or the respondent could have requested that, in the event of the appeal succeeding, it be given leave to put further submissions as to costs. Neither course was adopted. As we have said, a respondent is at risk of having to meet the appellant's costs of the appeal and the trial, should the appeal succeed. We do not accept that patent cases are in a special category in this respect. In the present case the appellants explicitly sought an order for the costs of the appeal and the trial. 5 Accordingly, we do not consider it appropriate to take the exceptional course of an appeal court setting aside an order to enable a party to advance an argument which was open to it, but not advanced on the hearing of the appeal itself. 6 In any event there are strong reasons of convenience against the course the respondent seeks. It frequently happens in patent litigation that a number of issues arise. Some, while discrete, have much evidence in common, for example novelty and obviousness. A court, either at first instance or on appeal, will often find it convenient to dispose of the case by resolving one of a number of contested issues. It would be very wasteful if, as a matter of course, courts had to make findings on other issues, or make findings as to whether the successful party was acting reasonably in raising them. 7 We refuse the application to vary our orders. The costs of the application are to be costs of the appeal. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Wilcox, Heerey and Lindgren JJ. Associate: Dated: 16 April 1999 Counsel for the Appellants: M R Ellicott Solicitor for the Appellants: Hazan Counsel for the Respondent/Cross Appellant: D A Mullins SC Solicitor for the Respondent/Cross Appellant: Bennett & Philp Written submissions