James Hardie International Finance BV v CSR Limited [2007] FCA 366

FEDERAL COURT OF AUSTRALIA

James Hardie International Finance BV v CSR Limited [2007] FCA 366

PRACTICE AND PROCEDURE – terms on leave to discontinue part of a claim COSTS – whether appropriate to award indemnity costs as a term of leave to discontinue – special order for costs made instead JAMES HARDIE INTERNATIONAL FINANCE BV AND JAMES HARDIE RESEARCH PTY LTD (ACN 066 114 092) v CSR LIMITED (ACN 000 001 276) AND CSR BUILDING PRODUCTS LIMITED (ACN 008 631 356); CSR LIMITED (ACN 000 001 276) AND CSR BUILDING PRODUCTS LIMITED (ACN 008 631 356) v JAMES HARDIE INTERNATIONAL FINANCE BV AND JAMES HARDIE RESEARCH PTY LTD (ACN 066 114 092) NSD 653 OF 2005

GYLES J

2 MARCH 2007

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 653 OF 2005

BETWEEN: JAMES HARDIE INTERNATIONAL FINANCE BV FIRST APPLICANT JAMES HARDIE RESEARCH PTY LTD (ACN 066 114 092) SECOND APPLICANT

AND: CSR LIMITED (ACN 000 001 276) FIRST RESPONDENT CSR BUILDING PRODUCTS LIMITED (ACN 008 631 356) SECOND RESPONDENT

BETWEEN: CSR LIMITED (ACN 000 001 276) FIRST CROSS-CLAIMANT CSR BUILDING PRODUCTS LIMITED (ACN 008 631 356) SECOND CROSS-CLAIMANT AND: JAMES HARDIE INTERNATIONAL FINANCE BV FIRST CROSS-RESPONDENT JAMES HARDIE RESEARCH PTY LTD (ACN 066 114 092) SECOND CROSS-RESPONDENT

JUDGE: GYLES J DATE OF ORDER: 2 MARCH 2007

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

The Applicants/Cross-Respondents have leave to discontinue the Application, insofar as it relates to the claim (Top Hat Batten Claim) for relief for infringement of Australian Innovation Patent No 2003100891 (Patent), on terms:

(a) that the Applicants/Cross-Respondents pay such of the Respondents/Cross-Claimants' costs of defending the Top Hat Batten Claim as were reasonably and properly incurred. (b) that the Applicants/Cross-Respondents and their successors and assigns (together Applicants), be prohibited from bringing the same or substantially the same action as the Top Hat Batten Claim against the Respondents/Cross-Claimants and the Respondents/Cross-Claimants' related bodies corporate, joint venturers, contractors, customers, licensees and users of the Respondents/Cross-Claimants' products (together Respondents/Respondents' customers) in the future; (c) that the discontinuance of the Top Hat Batten Claim be a defence to any proceedings brought under the Patents Act 1990 (Cth) by the Applicants against the Respondents/Respondents' customers for the same or substantially the same cause of action as the Top Hat Batten Claim; (d) that the Respondents/Cross-Claimants be granted leave to discontinue the Cross-Claim in so far as it relates to the invalidity and/or revocation of the Patent (Top Hat Batten Revocation Claim), on terms that the Applicants/Cross-Respondents pay such of the Respondents/Cross-Claimants' costs of prosecuting the Top Hat Batten Revocation Claim as were reasonably and properly incurred; (e) that the Applicants/Cross-Respondents surrender the Patent; and (f) that the Applicants/Cross-Respondents pay the Respondents/Cross-Claimants' costs of the motion for leave to discontinue as were reasonably and properly incurred on a party and party basis.