Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (No 4) [2022] FCA 1501

Federal Court of Australia

Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (No 4) [2022] FCA 1501 File number: NSD 1429 of 2011

Judgment of: NICHOLAS J

Date of judgment: 15 December 2022

Catchwords: COSTS – whether applicant's costs should be reduced on account of lack of success on particular issues – offer of compromise – proper approach to consideration of offer of compromise and pre-judgment interest

Legislation: Federal Court of Australia Act 1976 (Cth) s 51A Patents Act 1990 (Cth) s 122(1) Federal Court Rules 2011 (Cth) rr 1.34, 25.14(3), 36.03(b)

Cases cited: Hockey v Fairfax Media (No 2) (2015) 237 FCR 127 Sandoz Pty Ltd v H. Lundbeck A/S (No 2) [2021] FCAFC 47 Westpac Banking Corporation v Wittenberg (2016) 242 FCR 505

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: Patents and associated Statutes

Number of paragraphs: 19

Date of hearing: 12 December 2022

Counsel for the Applicant: Mr ADB Fox SC and Mr WH Wu

Solicitor for the Applicant: Gilbert + Tobin

Counsel for the Respondent: Mr HPT Bevan SC and Ms ARP Spies

Solicitor for the Respondent: Thomson Geer

ORDERS NSD 1429 of 2011

BETWEEN: ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD (ACN 001 660 715) Applicant

AND: KONAMI AUSTRALIA PTY LTD (ACN 076 298 158) Respondent

order made by: NICHOLAS J DATE OF ORDER: 15 December 2022

THE COURT ORDERS THAT:

1. The respondent pay to the applicant, by way of an account of its profits under s 122(1) of the Patents Act 1990 (Cth), the amount of $16,248,116 plus interest pursuant to s 51A of the Federal Court of Australia Act 1976 (Cth) in the amount of $11,642,730. 2. The respondent pay to the applicant damages under s 122(1) of the Patents Act 1990 (Cth) in the amount of $4,995,000 plus interest pursuant to s 51A of the Federal Court of Australia Act 1976 (Cth) in the amount of $3,014,008. 3. Pursuant to r 1.34 of the Federal Court Rules 2011 (Cth), the time for compliance with r 39.02 for the payment of the amounts referred to in orders 1 and 2 be extended to 31 January 2023. 4. The respondent pay 80% of the applicant's costs of this proceeding from 6 August 2015 calculated as follows: (a) from 6 August 2015 up to 11.00am on 26 August 2019, on a party/party basis; and (b) from 11.00am on 26 August 2019 on an indemnity basis. 5. The second further amended originating application otherwise be dismissed. 6. Pursuant to r 1.34 and r 36.03(b) of the Federal Court Rules 2011 (Cth), the time for the filing of any notice of appeal be extended to 28 February 2023. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.