FEDERAL COURT OF AUSTRALIA Fisher & Paykel Healthcare Limited v ResMed Limited [2017] FCA 977 Appeal from: Fisher & Paykel Healthcare Ltd v ResMed Ltd [2016] APO 48 File number: NSD 1283 of 2016 Judge: ROBERTSON J Date of judgment: 21 August 2017 Catchwords: PATENTS – orders allowing cross-appeal and setting aside the decision of the Delegate of the Commissioner of Patents – orders not opposed by the cross-respondent or by the Commissioner Legislation: Patents Act 1990 (Cth) s 60 Cases cited: Daiichi Sankyo Company, Ltd v Alethia Biotherapeutics Inc [2016] FCA 1540 Date of hearing: 21 August 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 20 Counsel for the Appellant/Cross-Respondent: The Appellant/Cross-Respondent did not appear Counsel for the Respondent/Cross-Appellant: Mr AR Lang Solicitor for the Respondent/Cross-Appellant: DLA Piper Australia ORDERS NSD 1283 of 2016 BETWEEN: FISHER & PAYKEL HEALTHCARE LIMITED Appellant AND: RESMED LIMITED Respondent AND BETWEEN: RESMED LIMITED Cross-Appellant AND: FISHER & PAYKEL HEALTHCARE LIMITED Cross-Respondent JUDGE: ROBERTSON J DATE OF ORDER: 21 AUGUST 2017 THE COURT ORDERS THAT: 1. The Commissioner of Patents be joined as the Second Respondent. 2. The cross-appeal be allowed. 3. The Appellant pay the Respondent's costs of the cross-appeal up to and including 8 August 2017. 4. The decision of the Delegate of the Commissioner of Patents given on 15 July 2016 insofar as it concerns claims 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19 and 20 of Australian Patent Application No 2009221630 be set aside. 5. The Appellant's opposition to Australian Patent Application No 2009221630 be dismissed. 6. Australian Patent Application No 2009221630 proceed to grant. 7. The dates for final hearing, commencing on 4 September 2017, be vacated. 8. There be no order as to the costs of today. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT ROBERTSON J: 1 These proceedings under the Patents Act 1990 (Cth) concern what is described as a mask useful in the treatment of sleep disordered breathing. 2 The proceedings were commenced on 9 August 2016 by a notice of appeal from part of the decision of the Delegate of the Commissioner of Patents given on 15 July 2016 at Canberra whereby it was decided to reject the opposition brought by the appellant to the grant of Standard Patent Application No 2009221630 by finding that the invention as disclosed in claims 5, 13 and 21 of the patent application were entitled to proceed to grant. 3 The Delegate found that all other claims of the Patent Application, claims 1-4, 6-12 and 14-20, were invalid on the ground of lack of inventive step. 4 On 4 October 2016 an amended notice of appeal was filed, giving amended particulars as to the priority date in light of the enumerated prior art. On 21 February 2017 the appellant was granted leave to file a further amended notice of appeal. The 5 On 31 August 2016 a notice of cross-appeal was filed, cross appealing from that part of the decision that found the claims 1-4, 6-12 and 14-20 were invalid on the grounds of lack of inventive step. 6 In summary, the appellant's appeal concerned that part of the Delegate's decision dismissing the opposition, and the respondent/cross-appellant's appeal concerned the part of the Delegate's decision allowing it. 7 Affidavit evidence was filed on both sides. 8 On 13 February 2017, the appeal and the cross-appeal were set down for hearing, commencing on 4 September 2017. 9 Such an appeal is a hearing de novo: see s 60 of the Patents Act. 10 On 8 August 2017, I granted leave to the appellant to file a notice of discontinuance of its appeal. Such a notice, discontinuing the whole of the appeal, was filed on 9 August 2017. The orders of the Court noted that the appellant did not apply for an order that it was not liable to pay the costs of the other party. 11 The further consideration of the cross-appeal was listed for today, 21 August 2017. 12 On 9 August 2017 the cross-respondent submitted to any order the Court may make in the cross-appeal. By that notice the cross-respondent also stated that it wished to be heard on the question of costs. 13 In evidence before me is a letter dated 10 August 2017 from the solicitors for the cross-appellant to the Commissioner providing to her the evidence in the proceeding from both parties relevant to the cross-appeal, identifying particular findings in the Delegate's decision concerning the piece of prior art referred to as Matula which was essential to the finding of lack of inventive step, and identifying in the evidence those parts which addressed that finding. 14 There is also in evidence before me a letter dated 17 August 2017 to the effect that the Commissioner does not intend to be heard in relation to the cross-appeal. The letter stated that the Commissioner was comfortable with the Court making orders that the cross-appeal succeed, that the original decision of the delegate in Fisher & Paykel Healthcare Ltd v ResMed Ltd [2016] APO 48 be set aside, and that the application proceed to grant. 15 Also in evidence before me is a letter dated 18 August 2017 from the solicitors for Fisher & Paykel Healthcare Ltd to the solicitors for the respondent/cross-appellant. Draft consent orders had been sent to the solicitors for Fisher & Paykel Healthcare Ltd, I infer, by letter dated 17 August 2017. 16 Those draft orders were in the following form: THE COURT, BY CONSENT, ORDERS THAT: 1. The cross-appeal be allowed. 2. The Appellant pay the Respondent's costs of the cross-appeal up to and including 8 August 2017. 3. The decision of the Delegate of the Commissioner of Patents given on 15 July 2016 insofar as it concerns claims 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19 and 20 of Australian Patent Application No 2009221630 be set aside. 4. The Appellant's opposition to Australian Patent Application No 2009221630 be dismissed. 5. Australian Patent Application No 2009221630 proceed to grant. 17 The letter dated 18 August 2017 from the solicitors for Fisher & Paykel Healthcare Ltd, to which I have referred, stated that Fisher & Paykel Healthcare Ltd did not consider it appropriate for it to provide its consent to the form of orders I have set out. Insofar as proposed orders 1, 3, 4 and 5 were concerned, the letter stated: "having filed a Submitting Notice in relation to the cross-appeal, we consider that it is a matter for your client to seek such orders from the Court." In relation to proposed order 2, dealing with costs, the letter of 18 August 2017 said that although Fisher & Paykel Healthcare Ltd in its submitting notice reserved its position in relation to costs: "our client does not wish to be heard in relation to the form of order sought." The letter concluded by stating that "Our client does not propose to appear at Monday's hearing." 18 I raised with counsel for the cross-appellant whether or not the Commissioner should be made a party to the proceedings. In my view, such an order should be made in the circumstances, at least so that proposed order 3 is formally binding on the Commissioner. 19 In the present circumstances the cross-appellant has succeeded on its cross-claim and there is no reason why it should not have its costs. The cross-respondent has not consented to these orders but the orders are not opposed. The relevant authorities have recently been reviewed by Burley J in Daiichi Sankyo Company, Ltd v Alethia Biotherapeutics Inc [2016] FCA 1540. 20 The orders I make are as follows: THE COURT ORDERS THAT: 1. The Commissioner of Patents be joined as the Second Respondent. 2. The cross-appeal be allowed. 2. The Appellant pay the Respondent's costs of the cross-appeal up to and including 8 August 2017. 3. The decision of the Delegate of the Commissioner of Patents given on 15 July 2016 insofar as it concerns claims 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19 and 20 of Australian Patent Application No 2009221630 be set aside. 4. The Appellant's opposition to Australian Patent Application No 2009221630 be dismissed. 5. Australian Patent Application No 2009221630 proceed to grant. 6. The dates for final hearing, commencing on 4 September 2017, be vacated. 7. There be no order as to the costs of today. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate: Dated: 21 August 2017