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CCOM P/L v Jiejing P/L

CCOM P/L v Jiejing P/L

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Case Copied 22 June 1994 54 min read

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CCOM PTY LTD and RONALD HOWARD THOMAS v. JIEJING PTY LTD, PARAVET INSTRUMENTS
PTY LTD, JEFFREY JOHN YATES and ERIC RUSSELL CHAPPELL
No. QG13 of 1994
FED No. 396/94
Number of pages - 39
Patents
(1994) 122 ALR 417, (1994) AIPC 91-079
(1994) 51 FCR 260

COURT

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
SPENDER, GUMMOW AND HEEREY JJ

CATCHWORDS

Patents - Petty Patent - Computer Program - Word Processing of Chinese Language Characters - Whether Manner of Manufacture - Novelty - Fair Basing - Infringement - Anticipation by Alleged Infringement.

Patents Act 1990, ss. 18, 40.

Patents Regulations, reg. 3.12

National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252.
Coopers Animal Health Australia Limited v Western Stock Distributors Pty Limited (1987) 15 FCR382
Tate v Haskins (1935) 53 CLR 594.
International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR218.

HEARING

BRISBANE, 26, 27 and 28 April 1994
#DATE 22:6:1994

Counsel and Solicitors Mr P.W. Hackett
for the Appellants: instructed by Mr Paul Pattison

Counsel and Solicitors Mr D.K. Catterns QC and Mrs D.A. Mullins
for the Respondents: instructed by Bennett and Philp

ORDER

THE COURT:
1. Orders that the declaration and orders 1 and 2 made 24 December

1993 on the revocation application be set aside.

Declares that, without prejudice to the effect of any order which

may be made upon an amendment application made pursuant to order 3 hereof, Petty Patent No. 616, 154 is and always has been invalid.

Orders that the appellants have liberty to make to a Judge of the

Court, within 21 days of the making of these orders, such application under s. 105 of the Patents Act 1990 to amend Petty Patent No. 616154, as they may be advised, and that the parties have liberty to apply to a Judge of the Court for further orders to give effect to the Reasons for Judgment delivered today and to any Reasons for Judgment upon any such amendment application.

Orders that otherwise the appeal be dismissed.

Orders that the appellants pay the costs of the respondents of the

appeal.

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

JUDGE1

SPENDER, GUMMOW AND HEEREY JJ The Chinese language is a symbolic or ideographic language. On the other hand, English is an alphabetic language, in the writing of which a set of letters is used to represent the sounds of the language. Chinese uses many thousands of ideographic characters. Some 6,000 characters are listed in a commonly used Chinese-English dictionary; a vocabulary of about 3,000 characters will account for about 95% of those in everyday use. Alone or in combination the characters symbolise a particular concept or thing. Characters are composed of strokes written in a particular order. Each character comprises a particular number of strokes.

Technical advances, first the typewriter and then the computer, were readily adapted to the representation and then the storage and printing…

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: [1994] FCA 396
Decision Date: 22 JUNE 1994

CaseChat Overview and Summary

CCOM P/L, the plaintiff, sought to enforce its Petty Patent No. 616,154 against Jiejing P/L, the defendant, for alleged infringement of a computer program designed to word process Chinese language characters. The dispute was heard in the Federal Court of Australia. The plaintiff claimed that the defendant's software infringed upon their patent through similar functionality and method of manufacture, arguing for the validity and enforceability of their patent rights.

The court was tasked with determining several key legal issues. These included whether the plaintiff's patent covered a manner of manufacture as required by Australian patent law, the novelty of the claimed invention, and whether the defendant's software anticipated the plaintiff's invention, potentially rendering the patent invalid. Additionally, the court had to consider whether the plaintiff's patent was unfairly obtained and thus unenforceable.

In its judgment, the court found that Petty Patent No. 616,154 was invalid due to a lack of novelty and an absence of an inventive step. The court held that the plaintiff's patent did not meet the legal criteria for a manner of manufacture, as it did not sufficiently describe a physical process or apparatus. Furthermore, the court determined that the defendant's software anticipated the plaintiff's invention, meaning that the defendant's product already existed in the public domain prior to the patent filing. Consequently, the patent was deemed invalid. The court also dismissed the plaintiff's claims regarding the defendant's unfair conduct in obtaining the patent.

As a result of the judgment, the court set aside the previous declaration and orders made in 1993 on the revocation application. It declared that Petty Patent No. 616,154 was and always had been invalid, and granted the plaintiff liberty to apply for an amendment to the patent within 21 days. The court also ordered that the appeal be otherwise dismissed and that the plaintiff pay the defendant's costs. The settlement and entry of orders were addressed under Order 36 of the Federal Court Rules.

Orders

Orders of the court

THE COURT:

1. Orders that the declaration and orders 1 and 2 made 24 December

1993 on the revocation application be set aside.

Declares that, without prejudice to the effect of any order which

may be made upon an amendment application made pursuant to order 3 hereof, Petty Patent No. 616, 154 is and always has been invalid.

Orders that the appellants have liberty to make to a Judge of the

Court, within 21 days of the making of these orders, such application under s. 105 of the Patents Act 1990 to amend Petty Patent No. 616154, as they may be advised, and that the parties have liberty to apply to a Judge of the Court for further orders to give effect to the Reasons for Judgment delivered today and to any Reasons for Judgment upon any such amendment application.

Orders that otherwise the appeal be dismissed.

Orders that the appellants pay the costs of the respondents of the

appeal.

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

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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