Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 25 June 2021
• Neutral Citation: [2021] FCAFC 114
• Date: 25 June 2021
• Court: Full Federal Court (Australia)

Federal Court of Australia

Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (No 2) [2021] FCAFC 114

Appeal from:	Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 2) [2020] FCA 306 Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 3) [2020] FCA 515
File number:	NSD 556 of 2020
Judgment of:	BEACH, MOSHINSKY AND THAWLEY JJ
Date of judgment:	25 June 2021
Catchwords:	PRACTICE AND PROCEDURE – costs – appeal and cross-appeal – where appeal allowed and cross-appeal dismissed – whether, in relation to the appeal and cross-appeal, any basis to depart from the ordinary rule that costs follow the event – whether, in relation to the proceeding at first instance, it was appropriate to discount costs on account of the parties’ success and failure on certain issues ; PRACTICE AND PROCEDURE – stay – application for stay pending determination of application for special leave and any appeal to the High Court of Australia – where stay largely unopposed – whether power to stay declaration of patent invalidity – whether appropriate to grant stay in circumstances of present case – stay granted
Cases cited:	Arnhem Land Aboriginal Land Trust v Northern Territory of Australia (2007) 157 FCR 255 Bunnings Forest Products Pty Ltd v Bullen (1984) 54 FCR 342 Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (No 2) [2017] FCAFC 158
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Number of paragraphs:	23
Date of last submissions:	18 June 2021
Date of hearing:	Determined on the papers
Counsel for the Appellant/ Cross-Respondent:	Mr C Moore SC with Mr A Fox and Ms A McDonald
Solicitor for the Appellant/ Cross/Respondent:	Shelston IP Lawyers
Counsel for the Respondent/ Cross-Appellant:	Mr C Dimitriadis SC with Mr R Clark
Solicitor for the Respondent/ Cross-Appellant:	Silberstein & Associates

ORDERS

		NSD 556 of 2020
BETWEEN:	FUCHS LUBRICANTS (AUSTRALASIA) PTY LTD (ACN 005 681 916) Appellant
AND:	QUAKER CHEMICAL (AUSTRALASIA) PTY LTD (ACN 000 465 949) Respondent
AND BETWEEN:	QUAKER CHEMICAL (AUSTRALASIA) PTY LTD (ACN 000 465 949) Cross-Appellant
AND:	FUCHS LUBRICANTS (AUSTRALASIA) PTY LTD (ACN 005 681 916) Cross-Respondent

order made by:	BEACH, MOSHINSKY AND THAWLEY JJ
DATE OF ORDER:	25 JUNE 2021

THE COURT DECLARES THAT:

1. Each of claims 1 to 22 of Australian Standard Patent No. 2012304245 and each of claims 1 to 3 of Australian Innovation Patent No. 2013100458 is, and has at all times been, invalid.

THE COURT ORDERS THAT:

2. Pursuant to s 138 of the Patents Act 1990 (Cth) (the Act), claims 1 to 22 of Australian Standard Patent No. 2012304245 and claims 1 to 3 of Australian Innovation Patent No. 2013100458 be revoked.

3. Within 14 days of this order, the respondent/cross-appellant (Quaker) serve on the Commissioner of Patents a copy of these orders pursuant to s 140 of the Act with a request that particulars of declaration 1 and orders 2 and 7 be registered in accordance with s 187 of the Act.

4. Quaker’s amended originating application filed on 24 August 2016 in Proceeding No. NSD 1210 of 2016 be dismissed.

5. Save for the costs orders made on 25 October 2017 and 13 February 2019, Quaker pay 75% of the appellant/cross-respondent’s (Fuchs) costs of and incidental to the claim and cross-claim in Proceeding No. NSD 1210 of 2016.

6. Quaker pay Fuchs’s costs of and incidental to the appeal and cross-appeal.

7. Orders 1, 2 and 4 to 6 be stayed until the determination of Quaker’s application for special leave to appeal dated 2 June 2021 and any further appeal, or until further order.

THE COURT NOTES THAT:

8. Quaker provides the following undertakings to the Court during the period of the stay referred to in order 7:

   1. to prosecute any application for special leave to appeal and any further appeal expeditiously;

   2. not to threaten any person with proceedings for infringement of the claims of the patents which are the subject of order 2; and

   3. not to seek to amend any claims of the patents otherwise than in the course of or in connection with this proceeding or Proceeding No. NSD 1210 of 2016.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1. On 5 May 2021, the Full Court published reasons for judgment and made certain orders in this appeal: Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] FCAFC 65. At that time, the Court made orders that the appeal be allowed, the declaration, orders and certification in orders 1, 3 to 7 and 9 of the orders made by the primary judge on 20 April 2020 be set aside, and the cross-appeal be dismissed. The Court also made orders for the parties to file and serve proposed minutes of orders and submissions on the question of any consequential orders including the costs of the appeal and the cross-appeal, and on the costs of the proceeding below. The parties have now filed submissions (including reply submissions by Fuchs, pursuant to an invitation by the Court) in relation to these matters. We now address the issues of consequential orders and costs.

2. These reasons should be read together with the Court’s reasons for judgment dated 5 May 2021. We will adopt the same abbreviations as used in those reasons.

Consequential orders

3. There is no substantive dispute between the parties as to the form of consequential orders to give effect to the Court’s reasons for judgment of 5 May 2021; the only area of dispute concerns the width of any stay of those orders. The question of a stay arises because Quaker has filed an application for special leave to appeal to the High Court of Australia from the Court’s judgment.

4. In its proposed minutes of orders, Fuchs proposes the following orders:

THE COURT DECLARES THAT:

1. Each of claims 1 to 22 of Australian Standard Patent No. 2012304245 and each of claims 1 to 3 of Australian Innovation Patent No. 2013100458 is, and has at all times been, invalid.

THE COURT ORDERS THAT:

2. Pursuant to s 138 of the Patents Act 1990 (Cth) (Act), claims 1 to 22 of Australian Standard Patent No. 2012304245 and claims 1 to 3 of Australian Innovation Patent No. 2013100458 be revoked.

3. Within 14 days of this Order, [Quaker] serve on the Commissioner of Patents a copy of these orders pursuant to s 140 of the Act with a request that particulars of declaration 1 and order 2 be registered in accordance with s 187 of the Act.

4. [Quaker’s] amended originating application filed on 24 August 2016 in Proceeding No. NSD 1210 of 2016 be dismissed.

5. Paragraphs 5 and 6 of Fuchs’s proposed orders relate to costs and are discussed later in these reasons.

6. Subject to the following, Quaker agrees...