Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (No 4)

[2021] NSWSC 1618

Supreme Court

New South Wales

Medium Neutral Citation:

Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (No 4) [2021] NSWSC 1618

Hearing dates:

6 December 2021

Decision date:

14 December 2021

Jurisdiction:

Equity - Commercial List

Before:

Ball J

Decision:

(1) Declare that the second, seventh, eighth and ninth defendants have engaged in conduct that is misleading and deceptive in contravention of s 18 of the Australian Consumer Law by falsely representing that one or more of them have rights in relation to one or more of the patents listed in Schedule 1 (the Patents).

(2)       Declare that the second, fifth, eighth and ninth defendants do not have any ownership interest in or in respect of the Patents whether legal or beneficial.

(3)       Declare that the second, fifth, eighth and ninth defendants do not have any licence to use, permit the use of, or otherwise utilise the rights in respect of, the Patents.

(4)       Declare that the second plaintiff is the beneficial and legal owner of the Patents and is exclusively entitled to bring proceedings for past, current and future infringements of the Patents.

(5)       The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that any of them or the ninth defendant have a licence to use, permit the use of, or otherwise utilise any of the rights in respect of, the Patents.

(6)       The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that the second plaintiff does not have a licence to use, permit the use of, or otherwise utilise all of the rights in respect of, the Patents.

(7)       The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that any of them or the ninth defendant have any ownership interest or rights in respect of the Patents.

(8)       The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that the second plaintiff is not the owner of the Patents.

(9)       The second, fifth, seventh, eighth and ninth defendants, by themselves, their servants or agents, be restrained from instructing or purporting to instruct any patent attorneys to communicate with any patent registries or patent regulatory authorities in which they assert or represent that they represent a licensee, owner or registered patent holder of the Patents.

(10)     The cross-claim be dismissed with costs.

(11)     The second, fifth, seventh, eighth and ninth defendants pay the plaintiffs’ costs of and incidental to the relief sought in paragraphs 1 to 4 and 6 to 8 of the Further Amended Summons.

Catchwords:

CONSUMER LAW — Misleading or deceptive conduct — Whether certain of the defendants engaged in misleading or deceptive conduct

EQUITY — Equitable remedies — Injunctions — Whether certain of the defendants ought to be restrained from claiming ownership of certain patents

Legislation Cited:

Australian Consumer Law

Corporations Act 2001 (Cth)

Patents Act 1900 (Cth)

Cases Cited:

Charter Pacific Corporation Ltd v Securicom (NSW) Pty Ltd [2018] NSWSC 1246

Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (in liq) (No 3) [2020] NSWSC 1067

Category:

Principal judgment

Parties:

Charter Pacific Corporation Limted (First Plaintiff)
CPC Patent Technologies Pty Ltd (Second Plaintiff)
Securicom (NSW) Pty Limited (In Liquidation) (First Defendant)
Christopher John Burke (Second Defendant)
Microlatch Pty Ltd ACN 059 640 747 (In Liquidation) (Third Defendant)
Microlatch Limited (UK Company Number 08625097) (Fourth Defendant)
CJ Burke Nominees Pty Ltd (Fifth Defendant)
Gary Fyvie (Seventh Defendant)
Microlatch Technologies Pty Ltd (Eighth Defendant)
Microlatch Limited (HK CR No 0876776) (Ninth Defendant)

Representation:

Counsel:
R Alkadamani with T Krayem (Plaintiffs)

Solicitors:
Patterson Houen & Commins (Plaintiffs)

File Number(s):

2018/56845

Publication restriction:

None

Judgment

Introduction

1. In these proceedings, the plaintiffs, Charter Pacific Corporation Limited (CPC) and CPC Patent Technologies Pty Ltd (CPC Technologies), seek orders against a number of defendants including orders (1) declaring that CPC Technologies is the legal and beneficial owner of the patents listed in Schedule 1 to this judgment (the Patents); (2) declaring that those defendants have engaged in misleading and deceptive conduct by suggesting that they have some interest in, or rights in relation to, the Patents; (3) restraining the defendants from making any such representations in the future.

Background

2. The proceedings have a long and complicated history, which is described in judgments delivered by Stevenson J on 10 August 2018 (Charter Pacific Corporation Ltd v Securicom (NSW) Pty Ltd [2018] NSWSC 1246) and by Henry J on 14 August 2020 (Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (in liq) (No 3) [2020] NSWSC 1067). It is not necessary for the purposes of this judgment to repeat that history in detail, although some background is necessary to understand the current application.

3. The Patents, which relate to biometric security such as the use of fingerprint biometric security for accessing mobile telephones, were originally owned by the first defendant, Securicom (NSW) Pty Limited (Securicom) (as to the patents described in paragraphs (a) to (q) of Schedule 1) and the third defendant, Microlatch Pty Ltd (Microlatch) (as to the balance of the patents), both of which are now in liquidation. The second defendant, Mr Christopher Burke, owned all the shares in Securicom. Securicom owned 87 percent of the shares in Microlatch. Mr Burke was also a director and majority shareholder of the fourth defendant, Microlatch Limited (Microlatch UK), a company incorporated in the United Kingdom, which it appears is now deregistered.

4. By a share purchase agreement entered into on 27 September 2016 (the SPA), Mr Burke, Securicom and Microlatch UK agreed to sell to CPC all the shares they respectively owned in Securicom and Microlatch UK in return for the issue by CPC of 1,050,000,000 shares. At that stage, CPC was listed on the Australian Securities Exchange, and the effect of the transaction was to provide a back-door listing for what might be described as the ‘Mircolatch group’.

5. On 31 August 2017 and 1 September 2017, Mr Burke purported to terminate the SPA. Subsequently, between 15 December 2017 and 3 January 2018, Mr Burke caused the registration of certain of the patents owned by Microlatch to be transferred to the fifth defendant, CJ Burke Nominees Pty Ltd (CJ Nominees). Mr Burke is the sole director and shareholder of CJ Nominees, which is the trustee of Mr Burke’s self-managed superannuation fund.

6. In response, on 20 February 2018 CPC commenced these proceedings against Securicom, Mr Burke, Microlatch, Microlatch UK and CJ Nominees seeking orders for specific performance of the SPA and orders that CJ Nominees return the patents assigned to it. Orders to that effect were made by Stevenson J on 4 September 2018.

7. Securicom and Microlatch were placed into liquidation by reasons of insolvency on 11 April 2019 and 26 June 2019, respectively.

8. By a deed dated 31 July 2019, the liquidator of Securicom sold the patents held by it to CPC Technologies.

9. On 30 October 2019, CPC filed a notice of motion seeking orders to give effect to order 7 of the orders made by Stevenson J on 4 September 2018 by which Mr Burke was ordered to “do everything necessary to restore to each of the first defendant, the third defendant and the fourth defendant respectively the Business Intellectual Property …” which included the Patents.

10. In November 2019, Mr Burke and CJ Nominees filed a cross-claim seeking orders, among others, that CJ Nominees was the beneficial owner of the Patents.

11. The issues concerning the ownership of the Patents were heard before Henry J over two days commencing on 2 December 2019. The dispute was resolved in CPC Technology’s favour by the making of consent orders dated 11 December 2019 by which the Court relevantly made the following order:

… on or before 11 December 2019, the Cross Claimants each execute and/or sign Deeds of Assignment of Patent Rights between CJ Burke Nominees Pty Ltd, Microlatch Pty Ltd (in liq) and Securicom (NSW) Pty Ltd (in Liq), in the form annexed to these orders and deliver to the Plaintiff’s solicitors the said documents within 3 business days.

In the event that the Cross Claimants failed to execute those documents, the Registrar was empowered to do so on their behalf.

12. In accordance with the Court orders, in December 2019, Mr Burke and CJ Nominees executed two deeds with each of Securicom and Microlatch which included acknowledgements that “at all times the intellectual property is, has been and continues to be owned by” Securicom and Microlatch.

13. From about 2 December 2019, Mr Burke through a website he managed on behalf of the ninth defendant, Microlatch Limited (HK CR No 0876776), a company incorporated in Hong Kong (Microlatch HK), published statements claiming that he and Microlatch HK had exclusive rights in respect of the Patents. Mr Burke is a majority shareholder and director of Microlatch HK.

14. It is not necessary to set out all the statements published on the website. They are to similar effect. An example is a post made on 2 December 2019, which stated:

Chris Burke owns or exclusively controls and manages the entire mobile biometrics patent portfolio and has the sole ability to litigate, monetise and manufacture under license.

15. Another example is a post on 16 December 2019, which stated:

It is also relevant to remember that the Microlatch Hong Kong company is a beneficiary of two exclusive license agreements which were properly entered into and disclosed in the share purchase agreement. It is not a party to the orders and is not affected by them at any level. The terms of the licence agreements are very clear. They are exclusive and ongoing.

No one, including either of CPC or Patent Technologies may deal with the patents at any level without the consent of Microlatch Limited in Hong Kong.

16. In addition, on 14 February 2020, the seventh defendant, Mr Gary Fyvie, who is, together with Mr Burke, a director of the eighth defendant, Microlatch Technologies Pty Ltd (Microlatch Technologies), sent an email to Mr Kevin Dart, the chairman of CPC, in which he said:

Every time you try to put a deal together using the Securicom Patents, we will be there undoing the deals and taking them oven [sic] with our exclusive Licence.

The ownership of the patents is disputed by Microlatch.

…

PS: we have also contacted many of CPC’s possible targets, including Apple just to name one and explained the Exclusive Licenses.

17. Those matters caused the plaintiffs to seek leave to amend their list statement to join Microlatch Technologies, Mr Fyvie and Microlatch HK as defendants and to seek interlocutory and final relief restraining those entities, Mr Burke and CJ Nominees from making claims to the effect of those contained on the Microlatch HK website and in Mr Fyvie’s email. Following a contested hearing in which Mr Burke represented himself, CJ Nominees and Microlatch HK, interlocutory relief was granted by Henry J on 14 August 2020 in respect of the patents that had been transferred to CPC Technologies by the liquidator of Securicom.

18. In the meantime, by a deed dated 22 July 2020, the liquidator of Microlatch sold the patents held by it to CPC Technologies.

19. The matter was set down on 6 July 2021 for final hearing commencing on 6 December 2021. Notice of that date was given by my Associate to Mr McCartney, the solicitors then appearing for Mr Burke, CJ Nominees, Microlatch Technologies and Mr Fyvie. Notice was also given to an email address used by Mr Burke that had been identified as an address for service for Microlatch HK in accordance with orders made by Hammerschlag J on 8 May 2020.

20. On 14 October 2021, Mr McCartney served a notice of intention to cease to act. He served a notice of ceasing to act for Mr Burke on 25 October 2021.

21. On 1 December 2021, Mr McCartney sent to Mr Commins, the solicitor for the plaintiffs, a letter on behalf of Mr Fyvie and Microlatch Technologies in which he said:

I advise that my clients instruct that they consent to declarations 2, 3, 4, 7 and 8 sought in the Amended Summons filed 1 May 2020.

In addition they consent to proposed order 6 in the Amended Summons.

They do not consent to declaration 1 in the Amended Summons.

They do not accept they have engaged in conduct that is misleading and deceptive or likely to mislead or deceive in contravention of section 18 of the ACL [that is, the Australian Consumer Law]. It follows that order 5 for damages pursuant to the ACL should not apply. They have made no representations in respect of the Patents.

My Fyvie instructs that he will not be appearing nor will he be reading his affidavit material. He will not be available for cross examination.

The effect of the concessions referred to in the first four paragraphs is that Mr Fyvie and Microlatch Technologies consent to all the orders sought by the plaintiffs other than a declaration that they engaged in misleading and deceptive conduct in contravention of s 18 of the Australian Consumer Law (ACL).

22. There was no appearance at the hearing by Mr Burke, CJ Nominees or Microlatch HK, although it is apparent from correspondence between Mr Burke and my Associate that he was aware of the hearing. In particular, in an email dated 17 November 2021, Mr Burke indicated that he wanted the matter adjourned. He was advised that if he wished to vacate the hearing date he would need to file a motion and supporting affidavit. No such motion or affidavit was filed.

Are the plaintiffs entitled to declarations and orders of the type that they seek?

23. It is convenient to consider first the position of Mr Burke and Microlatch HK. It is apparent from the postings on the Microlatch HK website and from submissions made by Mr Burke at the time of the interlocutory hearing before Henry J that Mr Burke maintains that the statements made on the website are accurate because he or Microlatch HK have a licence to use the Patents. In my opinion, that contention must be rejected.

24. Clause 8.1(a) of the SPA stated:

Subject to the limitations and exclusions in clause 9, the Substantial Sellers represent and warrant to the Buyer that:

(i)   in respect of each Warranty that is expressed to be given on a particular date, it will be true and correct on that date; and

(ii)   in respect of each other Warranty, it is true and correct on the date of this Agreement and will be true and correct immediately before Completion.

25. Mr Burke fell within the definition of “Substantial Sellers” and consequently gave each of the warranties set out in the agreement.

26. Warranty 7.1(a) stated:

All material contracts have been disclosed in the Disclosure Material.

27. Schedule 8 of the SPA sets out “a brief summary of the only material contract [sic] which has been entered into by the Company [that is, Securicom and Microlatch UK]”. Two relevant contracts are identified. They are:

1.   Microlatch Pty Ltd Patent Licence Deed dated [insert date]

Parties: The Company and Microlatch Limited Hong Kong

Licence to manufacture and sell Biofobs to security industry globally [copy not located]

…

3.   Microlatch Pty Ltd Patent Licence Deed dated 23 August 2013

Parties: Microlatch Pty Limited and Securicom (NSW) Pty Ltd

Dated 23 August 2013 Exclusive Licence from Microlatch Pty Ltd for exploitation of all patents it owns included in a schedule of patents from Spruson and Ferguson for the manufacture of Microlatch Pty Ltd products: RF Keyfobs,and Biometrics devices, including; BIOFOB RF; BIOFOB BT; BIOFOB ID; BIOCARD ID; BIO-14S; BIO-15S by Securicom (NSW) Pty Ltd for a royalty fee of 5% of gross sales received by the Licensee.

The document was prepared by C Burke for a proposed deal with Tyco in regard to supplying key fobs and Biofobs to Tyco to assure them C Burke had the rights to exploit patents. The deal with Tyco did not proceed.

Document executed by C Burke as sole director and secretary for both parties

28. Item 1 is unclear. Its heading describes the contract in a way that suggests that the agreement was a licence granted by Microlatch. However, the parties are said to be “[t]he Company” (which is defined to mean either Securicom or Microlatch UK) and Microlatch HK. Notwithstanding that definition, “Company” in this context must be read as a reference to Microlatch. That is consistent with the heading of item 1.

29. Accordingly, absent any evidence from the defendants, it is reasonable to infer that the licences described in Sch 8 are the only relevant licences that are or were in effect at the time of the SPA and those licences consist of one granted by Microlatch to Microlatch HK and one granted by Microlatch to Securicom.

30. The licence referred to in item 3 (that is, the licence from Microlatch to Securicom) can be put to one side. Any subsisting rights under that licence were sold by the liquidator of Securicom to CBC Technologies.

31. As to item 1, the evidence is that at a meeting on 27 September 2016, just before the SPA was signed, Mr Burke showed Mr Dart and Mr Steven Cole, a director and shareholder of CPC and the Company Secretary of CPC Technologies, a copy of an unsigned and undated document purporting to be a licence agreement between Microlatch and Microlatch HK. Mr Cole did not keep a copy of that document. However, he says that item 1 of Schedule 8 was drafted with that document in mind. Subsequently, Mr Burke did provide Mr Cole with a version of that document executed by him on behalf of both Microlatch and Microlatch HK, which Mr Cole discussed with the ASX in connection with the back-door listing. That licence was relevantly expressed to be in the following terms:

The Licensor grants to the Licensee in perpetuity an, exclusive license for the Term of this Deed to enjoy, commercialise and exploit the IPR [intellectual property rights, including those of the Patents held by Microlatch] and to manufacture, have manufactured, use, market and sell the Products in all the world subject to Clause 10 – termination.

32. The reference to cl 10 appears to be an error. Clause 14 permitted either party to terminate the agreement if a breach by the other went unremedied for 90 days after notice of the breach was given. Clause 3 provided:

Term. Licensee's rights hereunder remain in effect until the earlier of (i) written notice of termination from Licensor to Licensee and (ii) ten (10) days after Licensor's receipt of a written notice from Licensee of the occurrence of a Change in Control of Licensee if Licensor has not consented to such Change in Control in writing. In the event that there is an occurrence of Change in Control of Licensee, Licensee shall give Licensor written notice within ten (10) days of such occurrence. Licensee's obligations hereunder shall remain in effect for so long as Licensee possesses Products and Patents, in whole or in part.

33. Two points may be made about this licence.

34. First, following discussions between Mr Dart and Mr Burke, Mr Burke sent Mr Dart an email dated 31 March 2017 which said:

Following our discussion and with regard [sic] the License Arrangement with Microlatch Hong Kong, it is considered that the agreement is no longer required and that it therefore will be terminated as of today.

There is no reason to think that that did not happen. Moreover, on 4 September 2017, Mr Burke sent an email to Mr Dart in which he said:

I'm open to completing this opportunity together but it is important you allow some options for me, specifically a non-exclusive license agreement, plus the full payment of 6 months budget and then I'm not waiting for you to send money each week. I need to go forward with the business and I'm not sure you will sell the patents from under me, nor am I sure what deals you are doing.

…

Important you are willing to operate with consideration for me and my determination to continue with production and developments in China. These are only keyfobs but important I have non-exclusive license agreement in order to keep everything ongoing and future proof.

That email is inconsistent with Microlatch HK having an exclusive licence to any of the Patents at that time. In addition, when Mr Burke purported to assign a number of the Patents to CJ Nominees, the deeds of assignment contained a warranty in cl 8(1)(f) that “the Assignor has not granted any licences or other user rights to any person in relation to any rights, title or interest in the Patents or the Inventions in the Territory, other than as specified in Schedule 2 …” The “Territory” is defined to be all countries shown on the relevant patent. Schedule 2 contains the entry “N/A”. Again, that warranty is inconsistent with any suggestion that the licence referred to in item 3 remained on foot.

35. Second, the licence states in cl 3 that “Licensee’s obligations hereunder shall remain in effect for so long as Licensee possesses Products and Patents, in whole or in part”. The reference to “Licensee” in that sentence must be read as a reference to the “Licensor”. The sentence makes no sense otherwise. It is the Licensor that “possesses” the Patents and it is the Licensor that has obligations under the agreement that depend on its continued possession of the Patents. Accordingly, the licence came to an end when the liquidator of Microlatch sold those of the Patents owned by it to CPC Technologies. In any event, by notice dated 30 January 2020, the liquidator disclaimed “the Patent Licence Deed dated 23 August 2013 purportedly entered into between the Company and Microlatch Limited …” under s 568(1)(f) of the Corporations Act 2001 (Cth). There has been no objection lodged by Microlatch HK against that disclaimer.

36. In their List Response, the Active Defendants rely on two licences dated 23 August 2013. One is allegedly between Securicom and Microlatch HK. The other is between Microlatch and Microlatch HK. Those two licences are in substantially the same terms and both mirror the licence between Microlatch and Microlatch HK already referred to, except that the latter licence begins with the words “THIS AGREEMENT is made and entered into between: …” and is dated in hand at the end whereas the former two begin with the words “THIS AGREEMENT is made on 23^rd August 2013 and entered into between: …” and the formatting is slightly different. Mr Cole says he was not provided with any of those agreements prior to 28 July 2019, when he was provided with copies by the liquidator of Microlatch and Securicom.

37. Absent any evidence from Mr Burke disputing the evidence given by Mr Cole and explaining the genesis of the two documents referred to in the list response and the reasons why they were not disclosed in the SPA or until 2019, I am not prepared to accept that those documents are genuine. It makes no sense that Mr Burke would have executed on behalf of Microlatch two licences in more or less identical terms on the same day. Nor does it make any sense why the two documents that the defendants now apparently rely on were not disclosed in the SPA or at least at the time Mr Burke did disclose the document listed as item 1 in Schedule 8 to the SPA. In any event, as I have explained, the liquidator of Microlatch disclaimed any licence entered into on 23 August 2013. The liquidator of Securicom made a disclaimer in similar terms on 30 January 2020. Microlatch HK has not sought to challenge either disclaimer. Consequently, any licence came to an end at least by that time.

38. It is plain from what I have said that Mr Burke made representations to the effect that Microlatch HK had rights in respect of the Patents, when plainly Microlatch HK and Mr Burke had none. Those representations were made by Mr Burke on behalf of Microlatch HK. Accordingly, both Mr Burke and Microlatch HK engaged in misleading and deceptive conduct in contravention of s 18 of the ACL. There is no evidence that Mr Burke engaged in that conduct on behalf of CJ Nominees. The rights were said to be those of Microlatch HK. CJ Nominees was not mentioned in any of the posts about which the plaintiffs complain.

39. In my opinion, Mr Fyvie, by his own admission, engaged in misleading and deceptive conduct by saying in his email dated 14 February 2020 “we have also contacted many of CPC’s possible targets, including Apple just to name one and explained the Exclusive Licenses”. Particularly in the context of what had gone before, that statement must mean that “we” told many of CPC’s possible targets that CPC Technologies did not have the rights to exploit the Patents because those rights had been licensed to Microlatch HK. It is reasonable to interpret “we” in Mr Fyvie’s email of 14 February 2020 as a reference to at least Mr Fyvie and Microlatch Technologies.

Orders

40. As I have said, by their Further Amended Summons, the plaintiffs seek a number of declarations and permanent injunctions.

41. First, they seek a declaration that Mr Burke, CJ Nominees, Microlatch HK, Mr Fyvie and Microlatch Technologies (together, the Active Defendants) “have engaged in conduct that is misleading and deceptive or likely to mislead or deceive in contravention of section 18 of the [ACL] …” Second, they seek a declaration that the Active Defendants “do not have any ownership interest in, or in respect of, the Patents, whether legal or beneficial”. Third, they seek a declaration that the Active Defendants “do not have any licence to use, permit the use of or otherwise utilise the rights in respect of the Patents”. Fourth, they seek a declaration “that the Second Plaintiff is the beneficial and legal owner of the Patents and is exclusively entitled to bring proceedings for past, current and future infringements of the Patents”. Fifth, they seek a declaration “that the Second Plaintiff is the patentee of the Patents”. Lastly, they seek a declaration “that Burke, Burke Nominees and Microlatch HK have made unjustified threats to bring infringement proceedings or similar proceedings against the Plaintiffs”.

42. In my opinion, it is appropriate to make a declaration concerning the contravention of s 18 of the ACL. It is plain that the relevant representations are directed to, among others, potential customers of the plaintiffs with a view to discouraging those customers from entering into contracts with the plaintiffs in relation to the Patents. Unless corrected those representations run the risk of damaging the plaintiffs’ business. A declaration to the effect that the representations are misleading and deceptive therefore serves some utility. However, the declaration sought by the plaintiffs is too vague. Moreover, for the reasons I have given, there is no basis for making the declaration in relation to CJ Nominees. The declaration set out below takes account of those matters.

43. None of the Active Defendants have raised an objection to the second declaration. Mr Burke (and it may be assumed the entities associated with him) object to the third declaration. However, in view of the findings I have made, there is no reason not to make that declaration.

44. Nor does there seem to be any reason not to make the fourth declaration. That declaration is in effect the converse of the second declaration. On the other hand, the fifth declaration is otiose. It is unclear what it is supposed to convey in addition to the fourth declaration. Accordingly, I am not prepared to make it.

45. The last declaration relies on the allegation in the plaintiffs second further amended list statement that a number of representations made in the posts on Microlatch HK’s websites amounted to unjustified threats to bring patent infringement proceedings and on correspondence sent in late 2019 by Mr Burke and his then solicitors to the plaintiffs’ patent attorneys and others asserting that CJ Nominees was the legal owner of a number of the patents. However, that case was not advanced in submissions made on behalf of the plaintiffs. The plaintiffs do not seek any damages. The case, therefore, adds nothing to the one based on a contravention of s 18 of the ACL. Accordingly, in my opinion it is unnecessary to make that declaration.

46. The plaintiffs also seek permanent injunctions which are largely the same as the interlocutory injunctions made by Henry J, except that they extend to cover the patents acquired from the liquidator of Microlatch. In light of the findings I have made and the history of the matter, there can be no question that those injunctions are appropriate. Unless restrained, there is a real risk that one or more of the Active Defendants will continue to claim some interest in the Patents.

47. By paragraphs 5 and 9 of the Further Amended Summons, the plaintiffs sought damages under the ACL and under the Patents Act 1900 (Cth). As I have said, those claims are not pressed.

48. Finally, it is appropriate that the cross-claim be dismissed and that the Active Defendants pay the costs of and incidental to that cross-claim and the relief sought in paragraphs 1 to 4 and 6 to 8 of the Further Amended Summons (which relate to the declarations and injunctions sought by the plaintiff).

49. One last point should be made about the orders sought by the plaintiffs. The list of patents in respect of which orders are sought appears to contain duplications. In particular, item (g) appears to duplicate item (e) and item (l) appears to duplicate item (i). Those duplications have been removed from the final orders.

50. Accordingly, the orders of the Court are:

1. Declare that the second, seventh, eighth and ninth defendants have engaged in conduct that is misleading and deceptive in contravention of s 18 of the Australian Consumer Law by falsely representing that one or more of them have rights in relation to one or more of the patents listed in Schedule 1 (the Patents).

2. Declare that the second, fifth, eighth and ninth defendants do not have any ownership interest in or in respect of the Patents whether legal or beneficial.

3. Declare that the second, fifth, eighth and ninth defendants do not have any licence to use, permit the use of, or otherwise utilise the rights in respect of, the Patents.

4. Declare that the second plaintiff is the beneficial and legal owner of the Patents and is exclusively entitled to bring proceedings for past, current and future infringements of the Patents.

5. The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that any of them or the ninth defendant have a licence to use, permit the use of, or otherwise utilise any of the rights in respect of, the Patents.

6. The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that the second plaintiff does not have a licence to use, permit the use of, or otherwise utilise all of the rights in respect of, the Patents.

7. The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that any of them or the ninth defendant have any ownership interest or rights in respect of the Patents.

8. The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that the second plaintiff is not the owner of the Patents.

9. The second, fifth, seventh, eighth and ninth defendants, by themselves, their servants or agents, be restrained from instructing or purporting to instruct any patent attorneys to communicate with any patent registries or patent regulatory authorities in which they assert or represent that they represent a licensee, owner or registered patent holder of the Patents.

10. The cross-claim be dismissed with costs.

11. The second, fifth, seventh, eighth and ninth defendants pay the plaintiffs’ costs of and incidental to the relief sought in paragraphs 1 to 4 and 6 to 8 of the Further Amended Summons.

**********

SCHEDULE 1

a.   Publication/Patent Number 2535434, Canada;

b.   Publication/Patent Number 1711402, China;

c.   Publication/Patent Number 1836399, China;

d.   Publication/Patent Number ZL201110037781 8, China;

e.   Publication/Patent Number EP1661298, Europe;

f.   Publication/Patent Number 1839273, Germany;

g.   Publication/Patent Number EP1661298, UK, Belgium, France, Germany, Netherlands;

h.   Publication/Patent Number 7,472,934, United States of America;

1. Publication/Patent Number 9,269,208 United States of America;

j.   Publication/Patent Number 20170249476, United States of America;

k.   Publication/Patent Number 9,665,705 United States of America;

1. Publication/Patent Number 9,269,208 United States of America;

m.   Publication/Patent Number 8,266,442 United States of America;

n.   Publication/Patent Number 8,112,278 United States of America;

o.   Publication/Patent Number 8,620,039 United States of America;

p.   Publication/Patent Number 2004301168, Australia;

g.   Publication/Patent Number 2009201293, Australia;

r.   Publication/Patent Number 2008316289, Australia;

s.   Publication/Patent Number 2014240323, Australia;

t.   Publication/Patent Number EP3270540 Europe;

u.   Publication/Patent Number 10,685,353 United States of America;

1. Publication/Patent Number 16/717,270 United States of America;

w.   Publication/Patent Number 2009200408 Australia;

1. Publication/Patent Number 8,458,484 United States of America;

(the Patents)

Decision last updated: 14 December 2021