Minnesota Mining & Manufacturing Co. v C Jeffries P/L - [1992] FCA 589

Re: MINNESOTA MINING AND MANUFACTURING CO.
And: C. JEFFRIES PTY. LIMITED trading as SEIBULITE OF AUSTRALIA; SEIBULITE
INTERNATIONAL INC. and SEIBU POLYMER CHEMICAL INDUSTRY CO. LIMITED
No. G638 of 1989
FED No. 589
Patents
(1992) 24 IPR 413
(1992) 37 FCR 294

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Sheppard J.(1)

CATCHWORDS

Patents - infringement established and injunctions granted - claim for damages or an account of profits - applicant uncertain for which to elect - whether applicant entitled to limited discovery prior to making election.

HEARING

SYDNEY

#DATE 18:8:1992

Counsel for the Applicant: Mr D.M. Yates

Solicitors for the Applicant: Freehill, Hollingdale and Page

Solicitor for the Second: Mr P.J. Kerr of Allen Allen and Hemsley
and Third Respondents

ORDER

THE COURT ORDERS THAT:-

1. On or before 9 September 1992 the second and third

respondents provide discovery of all documents relating to supply and sale in Australia by the second and third respondents, or either of them, of Seibulite Ultralite grade retroreflective sheeting.

2. The second and third respondents pay to the applicant its

costs of this application.

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

JUDGE1

In this matter the applicant has sought an order against the second and third respondents in the following terms:-

"The second and third respondents provide discovery by 21 August 1992 of all documents relating to supply and sale in Australia by the second and third respondents, or either of them, of Seibulite Ultralite grade retroreflective sheeting."

The action is one for infringement of a patent. The second and third respondents are outside the jurisdiction of the Court but have appeared in the proceedings. The matter was fixed for hearing earlier this year but, prior to the commencement of the hearing, the second and third respondents indicated that they did not propose to contest the proceedings. I directed that a motion for judgment taken out by the applicant against all the respondents be placed in the list in advance of the date fixed for hearing. When the matter was called on, the solicitor for the second and third respondents said that he proposed to offer no evidence in opposition to the claim but would make submissions about the orders which were to be made. After some short argument, I decided that I should accede to the application of counsel for the applicant that orders be made restraining the second and third respondents from engaging in conduct which would involve them in infringing the patent. The first respondent was separately represented and the matter is proceeding against that respondent.
The present problem arises as a result of the applicant's decision to pursue the second and third respondents either for damages or for an account of profits. The making of the order above set out is opposed on the grounds that the applicant has not yet elected whether it will seek damages or an account of profits. The…

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: [1992] FCA 589
Decision Date: 18 AUGUST 1992

CaseChat Overview and Summary

In the Federal Court of Australia, the case of Minnesota Mining & Manufacturing Co. v C Jeffries P/L revolved around an allegation of patent infringement involving the manufacture and sale of retroreflective sheeting. The plaintiff, Minnesota Mining & Manufacturing Co., claimed that the defendants had infringed on its patents for the production of Seibulite Ultralite grade retroreflective sheeting. The defendants, C Jeffries P/L, disputed these claims and the matter was brought before the court to resolve the infringement allegations and associated legal issues.

The primary legal issues before the court involved determining whether the defendants had indeed infringed the plaintiff's patents and, if so, the appropriate remedies to be granted. Additionally, the court had to address the plaintiff's request for limited discovery prior to electing between a claim for damages or an account of profits, as the plaintiff was uncertain which course to pursue. This request was pivotal in ensuring the plaintiff had sufficient information to make an informed decision regarding its claim.

The court, in its reasoning, found that the defendants had indeed infringed the plaintiff's patents. Consequently, the court granted an injunction against the defendants to prevent further infringement. The court also addressed the plaintiff's request for limited discovery, acknowledging the importance of this information for the plaintiff to make an informed choice between a claim for damages or an account of profits. The court ruled in favour of the plaintiff's request, allowing limited discovery before the election was made. The court ordered the defendants to provide all relevant documents relating to the sale and supply of the contested retroreflective sheeting and to pay the plaintiff's costs associated with the application.

The final orders of the court mandated that the defendants provide the requested documents by a specified date and pay the plaintiff's costs for the application. This decision underscored the importance of timely and adequate discovery in patent infringement cases, ensuring that the plaintiff could make an informed decision about the appropriate legal action to pursue.

Orders

Orders of the court

THE COURT ORDERS THAT:-

1. On or before 9 September 1992 the second and third

respondents provide discovery of all documents relating to supply and sale in Australia by the second and third respondents, or either of them, of Seibulite Ultralite grade retroreflective sheeting.

2. The second and third respondents pay to the applicant its

costs of this application.

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

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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