BLH Engineering and Construction Pty Ltd v Pro 3 Products Pty Ltd

Case [2015] FCA 833

FEDERAL COURT OF AUSTRALIA

BLH Engineering and Construction Pty Ltd v Pro 3 Products Pty Ltd

[2015] FCA 833

Citation: BLH Engineering and Construction Pty Ltd v Pro 3 Products Pty Ltd [2015] FCA 833
Parties: BLH ENGINEERING AND CONSTRUCTION PTY LTD (ACN 133 867 875) and BLH SAFETY SOLUTIONS PTY LTD (ACN 152 247 792) v PRO 3 PRODUCTS PTY LTD (ACN 147 825 885)
File number: VID 294 of 2012
Judge: JESSUP J
Date of judgment: 14 August 2015
Catchwords:

INTELLECTUAL PROPERTY – Patents – Australian Innovation Patent – Validity – Innovative step – Whether patent was invalid and liable to be revoked on account of lack of novelty and absence of an innovative step – entitlement to a certificate under s 19(1) of the Patents Act 1990 (Cth)

INTELLECTUAL PROPERTY – Patents – Infringement – Whether the acts about which threats were made infringed a claim in the patent

INTELLECTUAL PROPERTY – Patents – Threats to take infringement proceedings within the meaning of s 128 of the Patents Act 1990 (Cth)

TRADE PRACTICES – Whether threats under s 128 of the Patents Act 1990 (Cth) amounted to false and misleading representations in trade and commerce actionable under ss 18 and 29(1)(m) of the Australian Consumer Law

INTELLECTUAL PROPERTY – Patents – Remedies – Whether it was appropriate to grant declarations, an injunction and damages  
Legislation: Civil Dispute Resolution Act 2011 (Cth)
Competition and Consumer Act 2010 (Cth) Sch 2, ss 18, 29(1)(m) of the Australian Consumer Law
Federal Court of Australia Act 1976 (Cth) s 21
Patents Act 1990 (Cth) ss 7, 18, 119, 128, 129A, 138
Cases cited: General Tire & Rubber Company v Firestone Tire and Rubber Company Ltd (1971) 1A IPR 121
Meyers Taylor Pty Limited v Vicarr Industries Ltd (1977) 137 CLR 228
Date of hearing: 20-22, 28-30 April, 1 May 2015
Place: Melbourne
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 116
Counsel for the Applicants: H Rofe QC with C Cunliffe
Solicitor for the Applicants: Stephens Lawyers & Consultants
Counsel for the Respondent: C Golvan QC with T Cordiner
Solicitor for the Respondent: Thomson Geer

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 294 of 2012
BETWEEN:

BLH ENGINEERING AND CONSTRUCTION PTY LTD (ACN 133 867 875)
First Applicant

BLH SAFETY SOLUTIONS PTY LTD (ACN 152 247 792)
Second Applicant
AND:

PRO 3 PRODUCTS PTY LTD (ACN 147 825 885)
Respondent

JUDGE:

JESSUP J

DATE OF ORDER:

14 AUGUST 2015

WHERE MADE:

MELBOURNE

THE COURT DECLARES THAT:

1.By the letter dated 2 September 2011 from the respondent’s patent and trade mark attorneys to the first applicant, the respondent threatened the first applicant with proceedings for the infringement of Australian Innovation Patent No 2011100489.

2.The threat referred to in Declaration 1 above was unjustifiable.

3.By the letter dated 27 January 2012 from the respondent’s patent and trade mark attorneys to the applicants’ patent and trade mark attorneys, the respondent threatened the applicants with proceedings for the infringement of…

Details
AGLC
BLH Engineering and Construction Pty Ltd v Pro 3 Products Pty Ltd [2015] FCA 833
Case
[2015] FCA 833
Decision Date

CaseChat Overview and Summary

BLH Engineering and Construction Pty Ltd filed an originating application against Pro 3 Products Pty Ltd, seeking declarations and injunctive relief to restrain the respondent from making threats to commence infringement proceedings against the applicant in relation to an Australian innovation patent. The dispute was heard in the Federal Court of Australia. The court was required to decide whether the patent was invalid due to lack of novelty and absence of an innovative step, whether the threats made by the respondent amounted to infringement of the patent, and whether the threats constituted false and misleading representations under the Australian Consumer Law.

The court first considered the validity of the patent, specifically whether it lacked novelty and an innovative step. It found that the patent was valid and did not lack novelty or an innovative step. The court then turned to the issue of infringement, determining that the respondent's threats to commence infringement proceedings did not themselves constitute an infringement of the patent. The court also examined whether the threats constituted false and misleading representations under the Australian Consumer Law, concluding that they did not. Finally, the court assessed the appropriate remedies, deciding that it was appropriate to grant the declarations and injunctive relief sought by the applicant, while dismissing the originating application in all other respects.

The court ordered that the respondent be restrained from continuing the threats to commence infringement proceedings against the applicant. It also ordered that the proceeding be listed for the purpose of receiving the parties’ submissions on costs. The court certified that the validity of Claim 1 of Australian Innovation Patent No 2011100489 was questioned in this proceeding.

Orders

Orders of the court

5. The respondent be restrained, whether by itself, it servants or agents, from continuing the said threats or either of them.

6. Save as aforesaid, and save as to costs, the Originating Application be dismissed.

7. The proceeding be listed at 9:30 am on 19 August 2015 for the purpose of receiving the parties’ submissions on costs.

AND THE COURT CERTIFIES THAT:

8. In this proceeding, the validity of Claim 1 of Australian Innovation Patent No 2011100489 was questioned.

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

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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