Law v Razer Industries Pty Limited - [2010] FCA 1058

FEDERAL COURT OF AUSTRALIA
Law v Razer Industries Pty Limited [2010] FCA 1058

Citation: Law v Razer Industries Pty Limited [2010] FCA 1058

Parties: ROBERT ROY LAW v RAZER INDUSTRIES PTY LIMITED (ACN 010 582 313)

File number: NSD 221 of 2010

Judge: BENNETT J

Date of judgment: 29 September 2010

Catchwords: PATENTS – practice and procedure – patent ceased for fixed period – infringement commenced during ceased period – respondent unaware of failure by patentee resulting in ceased period – whether respondent can obtain a licence from Commissioner of Patents pursuant to s 223 Patents Act 1990 (Cth) and reg 22.21 Patents Regulations 1991 (Cth) – whether respondent entitled to a stay of orders for infringement pending determination of licence application – whether applicant entitled to restraining order preventing respondent from infringement pending determination of licence application

Legislation: Patents Act 1990 (Cth) ss 13, 223
Patents Regulations 1991 (Cth) reg 22.21
Federal Court Rules O 35 r 1

Cases cited: Berlei (UK) Ltd v Bali Brassiere Company Inc (1972) RPC 568 cited

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 34

Counsel for the Applicant: Mr J M Ireland QC with Mr J Cooke

Solicitor for the Applicant: Spruson & Ferguson Lawyers

Counsel for the Respondent: Mr N R Murray

Solicitor for the Respondent: Clayton Utz

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 221 of 2010

BETWEEN:
ROBERT ROY LAW
Applicant

AND:
RAZER INDUSTRIES PTY LIMITED (ACN 010 582 313)
Respondent

JUDGE:

BENNETT J

DATE OF ORDER:

29 SEPTEMBER 2010

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.Pursuant to O 35 r 1, the respondent, whether by itself, its directors, officers, servants or agents or otherwise, is restrained from engaging in the following acts within the patent area (as that term is defined in the Patents Act 1990 (Cth)) within the term of Australian Patent No. 784051 (the Patent), without the licence or authority of the Applicant:
(a)making, selling or otherwise disposing of any products claimed in any of the claims of the Patent (collectively, the Infringing Products);

(b) offering to make, sell or otherwise dispose of the Infringing Products;
(c) using or importing the Infringing Products;
(d)keeping the Infringing Products for the purpose of doing any of the acts described in sub-paragraphs (a) to (c) above;
(e)authorising others to engage in any of the acts described in sub-paragraphs (a) to (d) above;
(f)otherwise infringing the patent.

2.Liberty is reserved for the parties to apply to the Court on three days’ notice to dissolve, in whole or in part, the injunction the subject of order 1 above upon showing proper cause.
3.Pursuant to O 29 r 2, the applicant’s claims for pecuniary relief in the proceeding be determined separately.
4.The respondent’s notice of motion dated 21 May 2010 be dismissed.
5.The respondent pay the applicant’s costs of the notices of motion.

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

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: [2010] FCA 1058
Decision Date

CaseChat Overview and Summary

In Law v Razer Industries Pty Limited, the Federal Court of Australia was tasked with determining whether a patent licensee could obtain a licence under section 223 of the Patents Act 1990 (Cth) and regulation 22.21 of the Patents Regulations 1991 (Cth). The primary issue was whether the applicant, Mr. Law, could obtain a restraining order against the respondent, Razer, for patent infringement during a period when the patent had lapsed due to non-payment of renewal fees by Mr. Law. The secondary issue was whether the court should stay the infringement proceedings pending the outcome of the respondent's application for a licence from the Commissioner of Patents.

The court found that Razer was not entitled to a licence under section 223 of the Act and regulation 22.21 of the Regulations because Razer did not exploit the invention due to the patent's ceased status; instead, Razer had manufactured and sold products within the scope of the patent without any knowledge of the patent's existence or its lapsed status. The court reasoned that the provisions in question were designed to protect those who took definite steps to exploit an invention based on the knowledge of the patent's ceased status, which Razer did not do. Therefore, the court ruled that Razer's application for a licence was unlikely to succeed.

Consequently, the court dismissed Razer's notice of motion seeking a stay of the proceedings. It granted Mr. Law's motion for a restraining order, preventing Razer from engaging in acts that would infringe the patent without a licence from Mr. Law. The court also made it clear that the orders should not preclude Razer from prosecuting the licence application before the Commissioner of Patents.

Orders