Collins v Northern Territory

Case [2007] FCAFC 152


FEDERAL COURT OF AUSTRALIA

Collins v Northern Territory [2007] FCAFC 152

INTELLECTUAL PROPERTY – patents – infringement – contributory infringement – supply of a product – what constitutes supply – reason to believe that person supplied would put product to infringing use – criteria of reason to believe – staple commercial product exclusion – statutory licence to enter and remove timber of particular species – timber used to produce oil according to patented process – whether grant of statutory licence constituted supply for purposes of contributory infringement – whether mere permission to collect constitutes supply – whether statutory licence confers realty interest in the nature of profit a prendre – whether grant of realty interest constitutes supply – whether unmilled standing timber the subject of the licence constituted a staple commercial product – timber commercially useable for non-infringing purposes – relevant product class – unmilled timber 

PROPERTY LAW – licence – profit a prendre – interest in the nature of profit a prendre – statutory licence to cut and remove timber – contractual licences compared

WORDS AND PHRASES – “supply” – “staple commercial product” – “reason to believe”

Crown Lands Act 1992 (NT)
Income Tax Assessment Act 1936(Cth) s 26(f)
Patent Act 1977 (UK) s 60
Patents Act 1952 (US) s 271
Patents Act 1990 (Cth) ss 65, 117

European Economic Community Council Agreement Relating to Community Patents (Luxembourg, 15 Dec 1989) Art 26

Adhesive Dry Mounting Co Ltd v Trapp & Co (1910) 27 RPC 341 cited
Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 considered

Aro Manufacturing Co Inc v Convertible Top Replacement Co Inc (1964) 377 US 476 cited
Ashgrove Pty Ltd v Deputy Commissioner of Taxation (1994) 124 ALR 315 cited
Australian Softwood Forests Pty Ltd v Attorney General (NSW) (1981) 148 CLR 121 cited

Belegging-en Exploitatiemaatschappij Lavendeer v Witten Industrial Diamonds Ltd (1979) 5 FSR 59 cited
Beloit Canada Ltd v Valmet Oy (1988) 21 CPR (3d) 1 FCA cited
BEST Australia Ltd v Aquagas Marketing Pty Ltd (1988) 83 ALR 217 cited

Bristol‑Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 considered
Carbice Corporation of America v American Patents Development Corporation 283 US 27 (1931) cited
Caterpillar Inc v John Deere Ltd (1999) 48 IPR 1 cited
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 cited
Chemical Company v Rohm and Haas Company 448 US 917 (1980) cited
Corporate Affairs Commission v ASC Timber Pty Ltd (1989) NSWLR 577 cited
Dawson Chemical Co v Rohm & Haas Co 448 US 176 (1980) cited
Dow Chemical AG v Spence Bryson & Co Ltd (1982) 8 FSR 397 cited
Dunlop Pneumatic Tyre Co Ltd v David Moseley & Sons Ltd [1904] 1 Ch 612 cited
Faurecia Automotive Seating Canada Ltd v Lear Corp Canada (2004) FC 421 cited
George v Rockett (1990) 170 CLR 104 cited
Gibson and Campbell v Brand (1841) 1 WPC 631 cited
Harper v Minister for Sea Fisheries (1989) 168 CLR…

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AGLC
Collins v Northern Territory [2007] FCAFC 152
Case
[2007] FCAFC 152
Decision Date

CaseChat Overview and Summary

In the case of Collins v Northern Territory, the dispute arose between Collins and the Northern Territory regarding the contributory infringement of a patent. The matter was heard and decided by the court of appeal. The primary legal issue before the court was whether the primary judge's orders were correct in addressing the alleged contributory infringement of the patent by the Territory without extending the hearing into issues regarding the validity of the patent and its infringement by ACOC. The court had to determine if the primary judge's assumption of the patent's validity and ACOC's alleged actions were appropriate for the present purposes of the case.

The court found that the primary judge's orders were not in line with the court's reasons for judgment. The court held that the primary judge should not have assumed the validity of the patent and ACOC's alleged actions without properly addressing the issues of patent validity and infringement by ACOC. Consequently, the court concluded that the primary judge's orders should be set aside and the matter should be remitted to the primary judge for further hearing and determination in light of the court's reasons for judgment.

Following the court's reasoning and conclusion, the appeal was allowed, and the orders made by the primary judge were set aside. Furthermore, the respondent was ordered to pay the appellants' costs of the appeal. The matter, including the question of the costs of the first instance hearing to date, was remitted to the primary judge for such further hearing as his Honour deemed necessary and determination in light of the joint reasons for judgment of Branson and Sundberg JJ.

Orders

Orders of the court

1. The appeal be allowed.

2. The orders made by the primary judge on 8 December 2006 be set aside.

3. The respondent pay the appellants’ costs of the appeal.

4. The matter, including the question of the costs of the first instance hearing to date, be remitted to the primary judge for such further hearing as his Honour deems necessary and determination in the light of the joint reasons for judgment of Branson and Sundberg JJ.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

FRENCH, BRANSON AND SUNDBERG JJ
In his reasons, immediately after setting out the separate questions, the primary judge said:‘That order was made to address the alleged contributory infringement of the patent by the Territory without extending the hearing into issues as to the validity of the patent, and its infringement by ACOC. As I have said, for present purposes I have assumed the validity of the patent, and that ACOC’s alleged actions have infringed it.’CONCLUSION Having regard to our above conclusions, the orders made by the primary judge should be set aside and the matter remitted to his Honour to be further heard and determined in the light of these reasons for judgment.

Ratio Decidendi

Legal Principle Established

Established by: FRENCH, BRANSON AND SUNDBERG JJ

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