MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd

In the matter of MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd, the Federal Court of Australia was called upon to address disputes surrounding patent infringement, validity, and allegations of misleading conduct under Australian consumer law. The plaintiff, MSA, sought relief for infringement of its patent for an apparatus for storing or holding items, while the defendant, Clearview, contested the validity of the patent and denied infringement. Additionally, Clearview raised counterclaims that MSA had made misleading announcements to customers and prospective customers in relation to the patent, in breach of section 18 of the Australian Consumer Law (ACL).

The court was required to interpret the patent claims and assess whether Clearview’s products infringed these claims. The court determined that Clearview’s products did not infringe the patent claims as they had not met the specific requirements of the patent. Furthermore, the court examined the validity of the patent by considering whether prior publications anticipated the claimed invention and whether the invention lacked an inventive step. The court found that while the invention was not novel due to prior publications, it was not lacking an inventive step. However, the court did find that the patent was not supported by a fair basis as the patentee’s construction of a disputed term was deemed correct.

In its reasoning, the court also examined whether Clearview had made unjustified threats in breach of section 128 of the Patents Act 1990 (Cth), and whether Clearview had contravened section 18 of the ACL by making false and misleading allegations of copying in its announcements. The court excluded expert evidence on the obviousness of the invention as the expert had not been informed of the meaning of a disputed term. The court concluded that Mr Miles, the sole director and secretary of MSA, was knowingly involved in the misleading conduct by MSA, as he was the controlling mind of the company and had approved the announcements.

The court ordered that the parties were to confer and provide an agreed form of order reflecting the findings of the court, with directions for further proceedings. Should the parties be unable to agree, they were to submit their proposed orders and directions for the court's consideration. The matter was then listed for a case management hearing to address any remaining issues and to assess the quantum of damages.