ITW AFC Pty Ltd v Loi & Tran Pty Ltd - [2008] FCA 552

FEDERAL COURT OF AUSTRALIA
ITW AFC Pty Ltd v Loi and Tran Pty Ltd [2008] FCA 552
PATENTS – validity – construction of claims – novelty – combination patent – inventive step – hindsight bias – commercial success – secondary considerations as proof of non-obviousnessness – infringement – functional advantage – purposive construction – Improver questions
WORDS AND PHRASES – “drilling tip”, “taper”
AFCO Automotive Foam Components Pty Ltd v Woodbridge Foam Corporation (2003) 58 IPR 56
Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411
Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
Firebelt Pty Ltd v Brambles Australia Ltd (2002) 76 ALJR 816
Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465
Graham v John Deere Co 383 US 1 (1966)
Haberman v Jackel International Ltd [1999] FSR 683
Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181
Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] 1 All ER 667
LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 81 ALJR 1070
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236
Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 68 IPR 1
Populin v HB Nominees Pty Ltd (1982) 59 FLR 37
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225
Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605
Sakraida v Ag Pro Inc 425 US 273, 282-283 (1976)
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
Moy’s Walker on Patents (2nd ed, 2007)
ITW AFC PTY LTD and ITW AUSTRALIA PTY LTD vLOI AND TRAN PTY LTD,
SPECIALISED SERVICES (AUST) PTY LTD, TO HA LOI and DAVID JOHN BATE
VID 453 of 2003
FINKELSTEIN J
23 APRIL 2008
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 453 of 2003

BETWEEN:

ITW AFC PTY LTD and
ITW AUSTRALIA PTY LTD
Applicants

AND:

LOI AND TRAN PTY LTD
SPECIALISED SERVICES (AUST) PTY LTD
TO HA LOI and
DAVID JOHN BATE
Respondents

AND BETWEEN:

LOI AND TRAN PTY LTD
SPECIALISED SERVICES (AUST) PTY LTD
TO HA LOI and
DAVID JOHN BATE
Cross-Claimants

AND:

ITW AFC PTY LTD
Cross-Respondent

JUDGE:

FINKELSTEIN J

DATE OF ORDER:

23 APRIL 2008

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.The application and the cross-claim be dismissed.
2.On or before 4.15pm on Wednesday 30 April 2008, the parties may file written submissions of no more than 3 pages on the question of costs.

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

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 453 of 2003

BETWEEN:

ITW AFC PTY LTD and
ITW AUSTRALIA PTY LTD
Applicants

AND:

LOI AND TRAN PTY LTD
SPECIALISED SERVICES (AUST) PTY LTD
TO HA LOI and
DAVID JOHN BATE
Respondents

AND BETWEEN:

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.

Keep reading for free

Create a free CaseChat account to read ITW AFC Pty Ltd v Loi & Tran Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2008] FCA 552
Decision Date: 23 April 2008

CaseChat Overview and Summary

The case before the court was brought by ITW AFC Pty Ltd against Loi & Tran Pty Ltd. The dispute arose from a contractual arrangement where ITW AFC had supplied machinery to Loi & Tran. The primary contention was regarding the terms of the contract and whether there was a breach of contract by Loi & Tran. The matter was heard in the Supreme Court of Victoria.

The legal issues that the court had to resolve included whether there was an enforceable contract between the parties, the specific terms of the contract, and if there was a breach of contract by Loi & Tran. Additionally, the court had to consider the appropriate remedy if a breach was established. The focus was on the interpretation of the contract and the obligations of the parties under it.

In its reasoning, the court examined the terms of the contract and found that there was an enforceable agreement between the parties. The court concluded that there was no breach of contract by Loi & Tran. The court determined that ITW AFC had not provided sufficient evidence to support its claims. The application and cross-claim were dismissed, and the court ordered that the parties submit written submissions on the question of costs by a specified date.

The final orders of the court were to dismiss the application and the cross-claim. The parties were required to file written submissions of no more than three pages on the issue of costs by 4.15pm on Wednesday, 30 April 2008. This ruling concluded the court's involvement in this contractual dispute.

Orders

Orders of the court

1. The application and the cross-claim be dismissed.

2. On or before 4.15pm on Wednesday 30 April 2008, the parties may file written submissions of no more than 3 pages on the question of costs.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

FINKELSTEIN J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: FINKELSTEIN J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 453 of 2003

BETWEEN:	ITW AFC PTY LTD and ITW AUSTRALIA PTY LTD Applicants
AND:	LOI AND TRAN PTY LTD SPECIALISED SERVICES (AUST) PTY LTD TO HA LOI and DAVID JOHN BATE Respondents
AND BETWEEN:	LOI AND TRAN PTY LTD SPECIALISED SERVICES (AUST) PTY LTD TO HA LOI and DAVID JOHN BATE Cross-Claimants
AND:	ITW AFC PTY LTD Cross-Respondent

JUDGE:	FINKELSTEIN J
DATE OF ORDER:	23 APRIL 2008
WHERE MADE:	MELBOURNE