Embertec Pty Limited v Energy Efficient Technologies Pty Limited - [2013] FCA 1010

FEDERAL COURT OF AUSTRALIA
Embertec Pty Limited v Energy Efficient Technologies Pty Limited (No. 3) [2013] FCA 1010

Citation: Embertec Pty Limited v Energy Efficient Technologies Pty Limited [2013] FCA 1010

Parties: EMBERTEC PTY LIMITED ACN 110 367 809 v ENERGY EFFICIENT TECHNOLOGIES PTY LIMITED ACN 123 181 439 and STAVROS PAPPAS

File number(s): NSD 1167 of 2012

Judge(s): ROBERTSON J

Date of judgment: 9 October 2013

Catchwords:
PRACTICE AND PROCEDURE – amendment – discretion to grant leave

PRACTICE AND PROCEDURE – discovery – proceedings under Patents Act 1990 (Cth) – where pleadings raise claims for infringement of two of applicant’s patents by respondents – where defence raises invalidity of patents and Crown use – where cross-claim raises invalidity of patents on grounds that claims do not claim a patentable invention; insufficiency of claims; claims lack clarity; claims not fairly based; claims not novel and did not involve an innovative step when compared with the prior art base as it existed before the priority date; claims not useful

Legislation: Patents Act 1990 (Cth)

Cases cited: F Hoffman-La Roche AG v Chiron Corporation (2000) 171 ALR 295
Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235
Lubrizol Corporation Inc v Imperial Chemical Industries Plc (2000) 50 IPR 526
Trade Practices Commission v International Technology Holdings Pty Ltd (1995) 31 IPR 466

Date of hearing: 13 September 2013

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 83

Counsel for the Applicant: Mr A Harding

Solicitors for the Applicant DibbsBarker

Counsel for the Respondents: Dr CS Ward

Solicitors for the Respondents: Fox Tucker Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1167 of 2012

BETWEEN: EMBERTEC PTY LIMITED ACN 110 367 809
Applicant

AND:
ENERGY EFFICIENT TECHNOLOGIES PTY LIMITED ACN 123 181 439
First Respondent

STAVROS PAPPAS
Second Respondent

JUDGE:

ROBERTSON J

DATE OF ORDER:

9 OCTOBER 2013

WHERE MADE:

SYDNEY

THE COURT DIRECTS THAT:
1.The parties forward to my associate short minutes to give effect to these reasons for judgment within 13 days.
2.The proceedings be listed for directions at 9.00 am on 23 October 2013.

THE COURT ORDERS THAT:
3.The respondents pay 60% of the applicant’s costs of the respondents’ interlocutory applications filed on 10 September 2013 and 9 August 2013.

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

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1167 of 2012

BETWEEN: EMBERTEC PTY LIMITED ACN 110 367 809
Applicant

AND:
ENERGY EFFICIENT TECHNOLOGIES PTY LIMITED ACN 123 181 439
First Respondent

STAVROS PAPPAS
Second Respondent

JUDGE:

ROBERTSON J

DATE:

9 OCTOBER 2013

PLACE:

SYDNEY

REASONS FOR JUDGMENT

Before the Court are two interlocutory applications brought by the respondents. They concern a proposed amendment to the defence and discovery by the applicant. In respect of one proposed category of discovery the amendment and discovery are linked.
There are two patents in issue, generically known as…

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: [2013] FCA 1010
Decision Date

CaseChat Overview and Summary

In the Federal Court of Australia, Embertec Pty Limited filed a patent infringement claim against Energy Efficient Technologies Pty Limited and Stavros Pappas. The applicants sought relief on the basis of the alleged infringement by the respondents of two patents held by Embertec. The respondents challenged the validity of the patents and sought leave to amend their defence. They also sought discovery of documents. The Court considered the relevance of the documents to the issues in dispute, the utility of the proposed amendment, and the oppressiveness of the discovery applications. Robertson J found that the amendment to the defence should be permitted in a more formal way and the discovery applications were oppressively broad. The Court made orders for the respondents to pay 60% of the applicant's costs of the interlocutory applications.

Orders