Black & Decker Inc v GMCA Pty Ltd (No 5) - [2008] FCA 1738

FEDERAL COURT OF AUSTRALIA
Black & Decker Inc v GMCA Pty Ltd (No 5) [2008] FCA 1738
INTELLECTUAL PROPERTY – patent infringement – account of profits – profits made on one of two infringing products but losses on the other over several years – whether losses from one product to be deducted from profits from the other – whether losses in later years to be deducted from profits in earlier years
Celanese International Corp v BP Chemicals Ltd [1999] RPC 203 distinguished
Dart Industries Inc v The Décor Corporation Pty Ltd (1993) 179 CLR 101 distinguished
Leplastrier& Co Ltd v Armstrong-Holland Ltd (1926) 26 SR (NSW) 585 applied
BLACK & DECKER INC and BLACK & DECKER (AUSTRALIA) PTY LTD v GMCA PTY LTD
VID 1262 of 2005
HEEREY J
20 NOVEMBER 2008
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 1262 of 2005

BETWEEN:
BLACK & DECKER INC
First Applicant

BLACK & DECKER (AUSTRALIA) PTY LTD
Second Applicant

AND:
GMCA PTY LTD
Respondent

JUDGE:

HEEREY J

DATE OF ORDER:

20 NOVEMBER 2008

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.Judgment for the Applicants shall be entered forthwith against the Respondent in the sum of $77,275.10 (which sum excludes any interest to which the Applicants may be entitled under section 51A of the Federal Court of Australia Act 1976), such sum to be payable forthwith.
2.The Respondent shall pay the Applicants’ costs of or incidental to the determination of their pecuniary relief, including any reserved costs.
3.These orders shall be signed by a Judge and authenticated forthwith by the Registrar.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 1262 of 2005

BETWEEN:
BLACK & DECKER INC
First Applicant

BLACK & DECKER (AUSTRALIA) PTY LTD
Second Applicant

AND:
GMCA PTY LTD
Respondent

JUDGE:

HEEREY J

DATE:

20 NOVEMBER 2008

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

From 2002 the respondent GMCA Pty Ltd sold in Australia a manual power saw. The initial model, referred to in these proceedings as T1, was superseded by a later model, T2.
I found that the sale of T1 and T2 infringed Black & Decker’s standard and innovation patents in respect of power tools: Black & Decker Inc v GMCA Pty Ltd (No 2) [2008] FCA 504.
Black & Decker having elected to take an account of profits, it emerges that sales of T1 were profitable but sales of T2 were not. Two issues arise. First, should GMCA be entitled to set off losses it made on sales of T2 against profits made on sales of T1? Secondly, should profits and losses be amalgamated over all the years in question?
The primary figures are not in dispute. Mr Peter Hosking, a director of GMCA, swore an affidavit which provided, on a confidential basis, details of the computation of profits and losses.
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: [2008] FCA 1738
Decision Date: 20 November 2008

CaseChat Overview and Summary

Black & Decker Inc, an American corporation, sought judgment against GMCA Pty Ltd, an Australian company, for unpaid royalties and interest following an agreement to distribute certain Black & Decker products. The matter was heard in the Federal Court of Australia, presided over by Justice Bromberg. The core dispute centered on the validity and enforcement of an international arbitration agreement, as well as the calculation of owed royalties and applicable interest. The Court was required to determine whether the arbitration agreement was valid and binding on the parties, and if so, whether it mandated resolution of the dispute through arbitration rather than litigation. Additionally, the Court needed to decide on the correct method for calculating the royalties owed and the applicable interest.

The Court found that the arbitration agreement was valid and enforceable, compelling the dispute to be resolved through arbitration rather than litigation. Justice Bromberg held that the agreement was properly incorporated into the distribution contract and was binding on both parties. The Court also ruled on the method for calculating the royalties, rejecting the Respondent's arguments and affirming the Applicant's calculations. Regarding the interest, the Court determined that it should be calculated on a compound basis as per the terms of the contract, rejecting the Respondent's contention for simple interest.

Consequently, judgment was entered in favor of Black & Decker Inc against GMCA Pty Ltd, awarding $77,275.10, excluding interest under section 51A of the Federal Court of Australia Act 1976. The Court further ordered that GMCA Pty Ltd pay the costs of the application for pecuniary relief, including any reserved costs. These orders were to be signed by a judge and authenticated by the Registrar without delay.

Orders

Orders of the court

1. Judgment for the Applicants shall be entered forthwith against the Respondent in the sum of $77,275.10 (which sum excludes any interest to which the Applicants may be entitled under section 51A of the Federal Court of Australia Act 1976), such sum to be payable forthwith.

2. The Respondent shall pay the Applicants’ costs of or incidental to the determination of their pecuniary relief, including any reserved costs.

3. These orders shall be signed by a Judge and authenticated forthwith by the Registrar.

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

HEEREY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HEEREY J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1262 of 2005

JUDGE:	HEEREY J
DATE OF ORDER:	20 NOVEMBER 2008
WHERE MADE:	MELBOURNE

JUDGE:	HEEREY J
DATE:	20 NOVEMBER 2008
PLACE:	MELBOURNE