Calidad Pty Ltd & Ors v Seiko Epson Corporation & Anor

The High Court of Australia considered an appeal by Calidad Pty Ltd and others (the appellants) against a decision of the Full Federal Court concerning alleged patent infringement by Seiko Epson Corporation and another (the respondents). The dispute centred on the importation and sale of printer ink cartridges manufactured by the respondents, which the appellants alleged infringed their Australian patents.

The primary legal issue before the High Court was whether the respondents' actions constituted infringement of the appellants' Australian patents, particularly in light of the exhaustion of rights principle. This involved determining the scope of the rights conferred by an Australian patent and whether those rights were exhausted upon the first sale of a patented product within Australia. The court also had to consider the application of international patent law principles, specifically the doctrine of international exhaustion, and whether it had any relevance or application under Australian law.

The High Court held that the doctrine of international exhaustion of patent rights does not apply in Australia. The court reasoned that the rights granted by an Australian patent are territorial and are exhausted only upon the first sale of the patented product within Australia. Therefore, the importation and sale of patented goods manufactured overseas, even if those goods have been sold in their country of origin, do not exhaust the patentee's rights in Australia. The court affirmed that the relevant question for infringement is whether the acts occurred within Australia and whether they fall within the scope of the claims of the Australian patent.

The High Court dismissed the appeal, upholding the decision of the Full Federal Court.