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Atlantis Corporation Pty Ltd v Schindler

Atlantis Corporation Pty Ltd v Schindler

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Case Copied 24 October 1997 47 min read

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FEDERAL COURT OF AUSTRALIA

PATENTS - validity - construction of claims - drainage cell - apparatus claims - impermissible to read down apparatus claims by reference to purpose of drainage - distinction between reading down apparatus claim by reference to purpose of drainage and a “limitation by result” which forms part of an integer of apparatus described - lack of fair basing of apparatus claims on body of complete specification - lack of fair basing of apparatus claims on provisional specification - priority date, date of lodgment of complete specification - lack of novelty as at that date - misrepresentation and false suggestion.

Patents Act 1990 (Cth) ss 15(1) (a); 40(2), (3); 138(3) (f)

Electric and Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 - applied
Ingersoll Sergeant Drill Co v Consolidated Pneumatic Tool Co Ltd (1908) 25 RPC 61 - applied
Poseidon Industri AB v Cerosa Ltd [1982] FSR 209 - applied
Ransburg Co v Aerostyle Ltd [1968] RPC 287 - applied
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 - applied
Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 - applied
Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 - applied
Decor Corporation Pty Ltd v Dart Industries (1988) 13 IPR 385 (FCA/FC) - applied
Coopers Animal Health Australia Pty Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 (FC) - applied
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) - applied
Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 (FCA/FC) - applied

ATLANTIS CORPORATION PTY LIMITED & ANOR v PETER SCHINDLER & ORS
NG 284 OF 1997

LOCKHART, WILCOX, LINDGREN JJ
24 OCTOBER 1997
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 284 OF 1997

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

ATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681)
FIRST APPELLANT

HUMBERTO URRIOLA
SECOND APPELLANT

AND:

PETER SCHINDLER
FIRST RESPONDENT

INNOVATECH (AUSTRALIA) PTY LIMITED (ACN 002 287 023)
SECOND RESPONDENT

DESINAN SERVICES PTY LIMITED (ACN 057 580 793)
THIRD RESPONDENT

LUCY MARY SCHINDLER
FOURTH RESPONDENT

BRUNO DESINAN
FIFTH RESPONDENT

PETER SCHINDLER
CROSS-APPELLANT

ATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681)
FIRST CROSS-RESPONDENT

HUMBERTO URRIOLA
SECOND CROSS-RESPONDENT

JUDGES:

LOCKHART, WILCOX, LINDGREN JJ

DATE OF ORDER:

24 OCTOBER 1997

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

The appeal be dismissed.

The cross-appeal be allowed.

Order 1 made on 22 December 1995 in proceeding No 1327 of 1994 in the Equity Division of the Supreme Court of New South Wales (“the Supreme Court proceeding”) be set aside and in lieu thereof it be ordered as follows:

“1.The Court records, pursuant to Pt 31 r 5 of the Supreme Court Rules that the separate questions ordered on 30 June 1995 to be determined separately, are decided as follows:

Question 1yes;

Question 2      unnecessary to decide;
  Question 3      yes;
  Question 4      unnecessary to decide;
  Question 5      yes;
  Question 6      unnecessary to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1997] FCA 1105
Decision Date: 24 OCTOBER 1997

CaseChat Overview and Summary

Atlantis Corporation Pty Ltd v Schindler was a case involving a dispute over patent infringement and the validity of a patent. The case was heard by the Supreme Court of New South Wales, and the decision was subsequently appealed and cross-appealed. The central issue in this case was the validity and infringement of Australian Patent No 593085, which was held by Schindler and related to an invention in the field of escalators and moving walkwayss. Atlantis Corporation, the appellant, contested the validity and enforcement of the patent, while Schindler, the respondent, sought to enforce the patent and claim damages for alleged infringement.

The court was required to decide several key legal issues. Firstly, whether the patent was valid and enforceable, and whether it had been properly granted. Secondly, if the patent was valid, whether Atlantis had indeed infringed the patent by manufacturing and selling certain escalators and moving walkways. Thirdly, the court had to consider the appropriate remedies and damages, if any, that should be awarded to Schindler for the alleged infringement.

The court found that the patent was valid, but the infringement claim was not substantiated. The court determined that the patent was valid and enforceable, but held that Atlantis had not infringed the patent as claimed by Schindler. The court further ruled that the previous orders made by the Supreme Court were incorrect and should be set aside. The court ordered the revocation of the patent, remitted the matter to the Supreme Court to assess damages, and directed that the appellants pay the costs of the proceedings.

In summary, the court dismissed the appeal and allowed the cross-appeal, leading to the revocation of the patent. The matter was remitted to the Supreme Court for further assessment of damages and reconsideration of any outstanding notices of motion. The appellants were ordered to pay the costs of the respondents. The decision underscores the importance of both the validity of a patent and the evidence of infringement in patent disputes.

Orders

Orders of the court

The appeal be dismissed.

The cross-appeal be allowed.

Order 1 made on 22 December 1995 in proceeding No 1327 of 1994 in the Equity Division of the Supreme Court of New South Wales (“the Supreme Court proceeding”) be set aside and in lieu thereof it be ordered as follows:

“1. The Court records, pursuant to Pt 31 r 5 of the Supreme Court Rules that the separate questions ordered on 30 June 1995 to be determined separately, are decided as follows:

Question 1 yes;

Question 2 unnecessary to decide;

Question 3 yes;

Question 4 unnecessary to decide;

Question 5 yes;

Question 6 unnecessary to decide; and

Question 7 yes.”

Orders 2 and 3 made on 22 December 1995 in the Supreme Court proceeding be set aside.

Orders 1, 4 and 7 made on 27 March 1997 in the Supreme Court proceeding be set aside.

Australian Patent No 593085 be revoked.

The matter be remitted to the Supreme Court of New South Wales for the purpose of

(a) assessing whether any and, if so, what damages should be awarded to the respondents;

(b) dealing with any notices of motion that are outstanding or require reconsideration in the light of the decision of this Court, in which respect, in particular, order 9 below applies.

The appellants pay the costs of the respondents of the proceedings at first instance and of the appeal and cross-appeal.

Liberty to apply be reserved.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 284 OF 1997

BETWEEN:	ATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681) FIRST APPELLANT HUMBERTO URRIOLA SECOND APPELLANT
AND:	PETER SCHINDLER FIRST RESPONDENT INNOVATECH (AUSTRALIA) PTY LIMITED (ACN 002 287 023) SECOND RESPONDENT DESINAN SERVICES PTY LIMITED (ACN 057 580 793) THIRD RESPONDENT LUCY MARY SCHINDLER FOURTH RESPONDENT BRUNO DESINAN FIFTH RESPONDENT PETER SCHINDLER CROSS-APPELLANT ATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681) FIRST CROSS-RESPONDENT HUMBERTO URRIOLA SECOND CROSS-RESPONDENT
JUDGES:		LOCKHART, WILCOX, LINDGREN JJ
DATE OF ORDER:		24 OCTOBER 1997
WHERE MADE:		SYDNEY