Jonker v Platform Solutions Pty Ltd - [2012] FCA 237

FEDERAL COURT OF AUSTRALIA
Jonker v Platform Solutions Pty Ltd [2012] FCA 237

Citation: Jonker v Platform Solutions Pty Ltd [2012] FCA 237

Parties: JOHN JONKER and JONKER PLANT HIRE PTY LTD (ACN 089 112 596) v PLATFORM SOLUTIONS PTY LTD and MITCHELL HERBERT ELY

File number: QUD 112 of 2012

Judge: REEVES J

Date of judgment: 15 March 2012

Catchwords:
PATENTS – claim of infringement of a patent – interlocutory injunctive relief sought – whether strength of the infringement case and the balance of convenience and justice sufficient to sustain the grant of interlocutory injunction – irreparable injury not a separate antecedent factor in determining the balance of convenience and justice

PATENTS – Patents Act 1990 (Cth) s 7(4) – claim of invalidity of a patent for lack of an innovative step – whether any evidence of prior art – interlocutory injunction relief sought – prima facie case for invalidity not made out

PRACTICE AND PROCEDURE – interlocutory injunctions – relevant principles discussed – prima facie case – balance of convenience and justice – irreparable injury

Legislation: Federal Court of Australia Act 1976 (Cth)
Patents Act 1990 (Cth)

Cases cited: Apple Inc. v Samsung Electronics Co. Limited (2011) 284 ALR 309, [2011] FCA 1164
Interpharma Pty Ltd v Commissioner of Patents (2008) 79 IPR 261, [2008] FCA 1498
Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156

Date of hearing: 13 March 2012

Place: Brisbane

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 34

Solicitor for the First and Second Applicants: Mr L Fox of blueFOX Legal

Counsel for the First and Second Respondents: Mr A Ryan SC

Solicitor for the First and Second Respondents: Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

GENERAL DIVISION

QUD 112 of 2012

BETWEEN:
JOHN JONKER
First Applicant

JONKER PLANT HIRE PTY LTD (ACN 089 112 596)
Second Applicant

AND:
PLATFORM SOLUTIONS PTY LTD
First Respondent

MITCHELL HERBERT ELY
Second Respondent

JUDGE:

REEVES J

DATE:

15 MARCH 2012

PLACE:

BRISBANE

REASONS FOR JUDGMENT
INTRODUCTION

This is an application for an urgent interlocutory injunction to prevent an alleged infringement of a patent. The factual context to the application is as follows.
FACTUAL CONTEXT
On 3 May 2011, Mr Jonker, the first applicant, was granted an innovation patent for a mobile lighting apparatus (the Patent). The mobile lighting apparatus is described by the applicants as a “Jonker Mobile Light”.
The Patent contains five claims that define the Jonker Mobile Light as the invention (immediately below referred to as “the JML”). The first four of them can be summarised as follows:
(a)       the JML has its own means of driving the apparatus along the ground;
(b)      the JML has its own separate means of generating electricity;
(c)the JML has a boom that is able to be extended, raised and lowered and pivoted from right to left and vice versa; and
(d)      the JML has lights attached to the end of the boom.
The fifth claim describes the method used…

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: [2012] FCA 237
Decision Date: 15 March 2012

CaseChat Overview and Summary

In the Federal Court of Australia, Jonker sought an interlocutory injunction against Platform Solutions Pty Ltd, alleging infringement of a patent. The plaintiff argued that the defendant's product infringed upon their patented invention. Additionally, the plaintiff sought a declaration that the patent was valid and enforceable. The defendant countered by asserting that the patent was invalid due to a lack of an innovative step and sought to strike out the plaintiff's claim for invalidity as it was not supported by a prima facie case.

The court was required to determine whether the plaintiff had established a prima facie case for patent infringement, and if so, whether the balance of convenience and justice favoured the grant of an interlocutory injunction. The court also had to consider whether the plaintiff had made out a prima facie case for the invalidity of the patent. The primary consideration for granting an interlocutory injunction is the strength of the plaintiff's case and the balance of convenience and justice. The court noted that irreparable injury is not a separate antecedent factor in determining the balance of convenience and justice.

The court found that the plaintiff had established a prima facie case for patent infringement, but the balance of convenience and justice did not favour the grant of an interlocutory injunction. The court further held that the plaintiff had not made out a prima facie case for the invalidity of the patent. The plaintiff's claim for invalidity was struck out as it was not supported by a prima facie case. The court also noted that the defendant had provided evidence of prior art, which suggested that the patent may not be valid due to a lack of an innovative step.

The court dismissed the plaintiff's application for an interlocutory injunction and struck out the claim for invalidity. The plaintiff was ordered to pay the defendant's costs of the application.

Orders