Esco Corporation v PAC Mining Pty Ltd - [2008] FCA 1018

FEDERAL COURT OF AUSTRALIA
Esco Corporation v PAC Mining Pty Ltd [2008] FCA 1018
PRACTICE AND PROCEDURE – orders – stay of execution pending appeal – balance of convenience in light of undertakings given.
Federal Court Rules O 52 r 17
Esco Corporation v PAC Mining Pty Ltd [2008] FCA 640 related
Bowen Investments Pty Ltd v Tabcorp Holdings Ltd (No 2) [2008] FCAFC 107 cited
Hughes v Western Australian Cricket Association Inc (1986) ATPR 40-748 cited
Powerflex Services Pty Ltd v Data Access Corporation (1996) 67 FCR 65 cited
Re Middle Harbour Investments Ltd (In liq) (unreported, New South Wales Court of Appeal, 15 December 1976) cited
ESCO CORPORATION and BRADKEN RESOURCES PTY LTD (ABN 82 098 300 988) v PAC MINING PTY LTD (ABN 11 007 694 895) and CENTRAL QUEENSLAND MINING SUPPLIES PTY LTD (ABN 11 010 402 90)
NSD 1084 OF 2006
TAMBERLIN J
4 JULY 2008
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 1084 OF 2006

BETWEEN:

ESCO CORPORATION
First Applicant/First Cross-Respondent

BRADKEN RESOURCES PTY LTD (ABN 82 098 300 988)
Second Applicant/Second Cross-Respondent

AND:

CENTRAL QUEENSLAND MINING SUPPLIES PTY LTD (ABN 11 010 402 90)
First Respondent/First Cross-Claimant

PAC MINING PTY LTD (ABN 11 007 694 895)
Second Respondent/Second Cross-Claimant

JUDGE:

TAMBERLIN J

DATE OF ORDER:

4 JULY 2008

WHERE MADE:

SYDNEY

In the following orders:
·“Hensley System” means the wear assembly for the digging edge of various excavating equipment comprising a shroud, a weld base, and a lock and an adjustment assembly, and as further defined and particularised at paragraphs 11 to 14 of the Statement of Claim dated 6 June 2006.
·“CQMS System” means the wear assembly for the digging edge of various excavating equipment comprising a shroud, a weld base, and a lock and an adjustment assembly, and as further defined and particularised at paragraphs 17 to 18 of the Statement of Claim dated 6 June 2006.
·“PAC Mining System” means the wear assembly for the digging edge of various excavating equipment comprising a shroud, a weld base, and a lock and an adjustment assembly, and as further defined and particularised at paragraphs 15 to 16 of the Statement of Claim dated 6 June 2006.
·“CQMS Lower Wing System” means the wear assembly for the digging edge of various excavating equipment comprising a lower wing shroud, a weld base, and a lock and an adjustment assembly, and as further defined and particularised at paragraphs 19 to 20 of the Statement of Claim dated 6 June 2006.
·“Jones II” means Australian patent no 696,335.
·“Jones III” means Australian patent no 743,348.
·“Infringing Articles” means the Hensley System, the PAC Mining System, the CQMS System and the CQMS Ldower Wing System.

THE COURT:
1DECLARES that each of the First and Second Respondents has infringed claim 1 of Jones III by making, selling, supplying, offering to make, offering to sell, offering to supply, and keeping for the purpose of doing the aforementioned things:
(a)the Infringing Articles;…

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: [2008] FCA 1018
Decision Date: 4 July 2008

CaseChat Overview and Summary

The Federal Court of Australia dealt with a case involving Esco Corporation and Bradken Resources Pty Ltd (the applicants) against Central Queensland Mining Supplies Pty Ltd and PAC Mining Pty Ltd (the respondents). The applicants alleged that the respondents had infringed on patent rights related to specific wear assemblies for excavating equipment. The applicants sought various orders, including declarations of infringement, injunctions, and damages. The respondents contested the allegations and sought a stay of certain orders pending an appeal.

The central legal issues revolved around the interpretation of patent claims, the definition of "infringing articles", and the appropriate scope of the orders concerning the delivery or destruction of infringing components. Additionally, the court had to consider whether certain orders for cost apportionment and damages were appropriate at that stage of the proceedings. The respondents also sought a stay of specific orders pending the determination of an appeal.

The court agreed with the respondents that the definition of "infringing articles" should be limited to the specific systems mentioned in the respondents' proposal. The court also found that the declaration should encompass both the "infringing articles" themselves and their component parts that have no reasonable use other than as component parts. The court rejected the applicants' proposed order for an immediate calculation of damages or profits, opting instead for an inquiry to be conducted later. The court decided that certain procedural orders for detailed affidavits were premature and thus should not be made at that stage. Regarding costs, the court awarded 80% of the applicants' costs to the respondents, considering that the applicants had only partially succeeded in their claims.

The court granted a stay of certain orders pending the determination of an appeal, considering the balance of convenience favoured the respondents. The court was persuaded by the respondents' undertakings to keep accurate records, not destroy business records, and not dispose of or encumber assets otherwise than in the ordinary course of business. The respondents also agreed to execute any application for leave to appeal and appeal with due expedition, and to compensate the applicants for any damages resulting from the stay, with a bank guarantee as security. The applicants were ordered to bear the costs of the current proceedings.

Orders