Federal Court Orders Respondents to Provide Particulars in Patent Infringement Case

OUTCOME: Allowed

FEDERAL COURT OF AUSTRALIA

[APPELLANT] v [COMPANY] [2000] FCA 716

PATENTS – particulars of non-infringement

Federal Court Rules O 10 r 1(1), O12 r (1)(b) [APPELLANT] v [COMPANY] NO VG 739 OF 1997 HEEREY J 23 MAY 2000 [APPELLANT]

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 739 OF 1997

[APPELLANT]: [APPELLANT]

Applicant

AND: [COMPANY]

Respondent

[APPELLANT] OF ORDER: 23 MAY 2000

[APPELLANT]

THE COURT ORDERS THAT:

1. The respondents within 28 days file and serve particulars of non-infringement identifying which of the matters identified in pars 1 to 115 of the affidavit of [NAME] sworn 18 April 2000 the respondents will dispute at trial.

2. The respondents pay the applicant's costs of the motion by notice dated 18 April 2000. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 739 OF 1997

[APPELLANT]

Applicant

AND: [COMPANY]

Respondent

JUDGE: HEEREY J

DATE: 23 MAY 2000

PLACE: [APPELLANT] FOR

JUDGMENT 1 The applicant claims that the respondents have infringed its patent for a tractor. The respondents deny infringement and allege invalidity. 2 The applicant by a notice of motion dated 18 April 2000 seeks an order that the respondents deliver particulars of non-infringement, alternatively that the applicant have leave to administer interrogatories. This application has been precipitated by the applicant's delivery of a notice to admit which sought admission of some 115 features of the respondents' vehicle: for example, (1) that the [NAME] tractor is a belt-laying vehicle, (2) the [NAME] tractor is a work vehicle. The respondents have declined to provide any admissions. Their case in response to the notice of motion is set out in the affidavit of Mr [NAME], sworn 18 May 2000, and has been supplemented by the arguments of counsel. 3 In par 10 of his affidavit Mr [COUNSEL], in referring to examples given by Mr [APPELLANT] in his affidavit on behalf of the applicant of simple facts which the respondents have refused to admit, says: "Subject to obtaining all necessary expert assistance and instructions the respondents do not presently anticipate disputing these facts at trial. However, it is not appropriate given the technical nature of the admissions sought, particularly when it is anticipated that many of them may be the subject of serious dispute, to seek now to compel such admissions from the respondents." 4 As expanded by senior counsel for the respondents in the course of argument, that really amounted to an assertion that the respondents could not and should not be required to provide any particulars at all. The applicant had to "prove everything". If this resulted in unnecessary cost, senior counsel for the respondents said, they would have to wear that by way of a costs order. I do not think this stand is acceptable in the context of the case management which this Court has adopted for many years. It is in everybody's interests, not least the Court itself, to ensure that the issues really in dispute are identified as early as possible. 5 The preferred remedy which the applicant seeks is particulars. I am satisfied the Court has jurisdiction to make such an order, either under the general power conferred by O 10 r 1(1), or under O 12 r 5(1)(b) which enables particulars to be ordered of "a statement of the nature of the case on which (a party) relies." 6 It is said that some of the claims in the applicant's patent are ambiguous. If that be so, I see no reason why the particulars could not state what the respondents assert to be the meaning of the claim in question and the grounds on which it is said that their vehicle does not infringe. The construction of the claims is not a matter for expert evidence although evidence can be given as to particular terms. Thus it is not a reason for delaying proper particulars to say that there has to be expert evidence as to the construction of the claims. 7 So I will make an order that the respondents within 28 days file and serve particulars of non‑infringement identifying which of the matters identified in pars 1 to 115 of the notice to admit, being exhibit SMS1 to the affidavit of [NAME] sworn 18 April 2000, that the respondents will dispute at trial.

I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.

Associate: Dated:

Counsel for the Applicant: [redacted]

Solicitor for the Applicant: [redacted]

Counsel for the Respondents: [redacted]

Solicitor for the Respondents: [redacted]

Date of Judgment: 23 May 2000