Multisteps Pty Ltd v Source and Sell Pty Ltd

Case [2013] FCA 743

FEDERAL COURT OF AUSTRALIA

Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743

Citation: Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743
Parties: MULTISTEPS PTY LIMITED (ACN 065 425 434) v SOURCE AND SELL PTY LIMITED (ACN 113 852 289
File number: NSD 1273 of 2010
Judge: YATES J
Date of judgment: 31 July 2013
Catchwords:

INTELLECTUAL PROPERTY – registered designs – infringement – whether design of each accused container is substantially similar in overall impression to any relevant registered design – discussion of the standard of the informed user – whether constraints on the freedom of the designer to innovate

INTELLECTUAL PROPERTY – patents – validity – innovation patent – whether invention as claimed is not novel – whether invention as claimed does not involve an innovative step

INTELLECTUAL PROPERTY – patents – infringement – interpretation of omnibus claim

CONTRACTS – whether applicant precluded from suing for patent infringement – whether claim for infringement resolved by contract

Legislation:

Designs Act 2003 (Cth) ss 5, 7, 15(2)(a), 19, 71(1)
Evidence Act 1995 (Cth) ss 57, 80, 136
Patents Act 1990 (Cth) ss 18(1A)(b), 40(2)(a), 43(2), 122(1A), 138(3)(b)

Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs
European Communities Act 1972 (UK) s 2(2)
Registered Designs Act 1949 (UK)
Registered Designs Regulations 2001 (UK)  
Cases cited:

Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019
Commonwealth Industrial Gases Limited v M.W.A. Holdings Pty. Limited and Others (1970) 180 CLR 160
Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239
Dyson Ltd v Vax Ltd [2010] FSR 39
Dyson Ltd v Vax Ltd [2012] FSR 4
Empirnall Holdings Pty Ltd v Machon Paull Partners Pty Ltd (1988) 14 NSWLR 523
Flexible Steel Lacing Company v Beltreco Ltd and Another (2000) 49 IPR 331
Grupo Promer Mon Graphic, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-9/07) [2010] ECR II-981 
J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19
J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd and Another (1989) 90 ALR 288
Keller v LED Technologies Pty Ltd (2010) 185 FCR 449
LED Technologies Pty Ltd (ACN 100 887 474) v Elecspress Pty Ltd (ACN 104 535 597) and Others (2008) 80 IPR 85
LED Technologies Pty Ltd v Roadvision Pty Ltd and Another (2012) 199 FCR 204
Nicaro Holdings Pty Ltd and Others v Martin Engineering Co and Another (1990) 91 ALR 513
Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8
Raleigh Cycle Coy. Ld. and Another v. H. Miller and Coy. Ld. (1948) 65 RPC 141
Review 2 Pty Ltd (in liq) v Redberry Enterprise Pty Ltd (2008) 173 FCR 450
Review Australia Pty Ltd (ACN 122…

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AGLC
Multisteps Pty Ltd v Source and Sell Pty Ltd [2013] FCA 743
Case
[2013] FCA 743
Decision Date

CaseChat Overview and Summary

In the matter of Multisteps Pty Ltd v Source and Sell Pty Ltd, the case revolved around disputes concerning patent and design rights infringement by the respondent, Source and Sell Pty Ltd, against the applicant, Multisteps Pty Ltd. The primary focus was on whether Source and Sell had infringed certain design rights and patents held by Multisteps. The case was heard in the Federal Court of Australia.

The legal issues before the court were multifaceted, encompassing whether Source and Sell had indeed infringed on specific registered designs (RD 3, RD 4, and RD 6) and claims of the first and second patents held by Multisteps. Furthermore, the court had to determine the validity of certain claims of the second patent. The crux of the dispute lay in the interpretation of the design features and technical specifications outlined in the patents and registered designs, as well as the evidence provided regarding the nature and usage of the containers in question.

The court meticulously examined the evidence, which included affidavits from key witnesses such as the applicant's Sales Manager and the respondent's Managing Director. It also considered the visual representations and technical details provided in the patents and registered designs. Ultimately, the court concluded that Source and Sell had not infringed RD 3 or RD 4, but had infringed RD 6. Additionally, the court found that Multisteps was not precluded from pursuing its claim against Source and Sell for infringement of the first patent. The court also ruled that Source and Sell had not infringed claims 1 to 4 of the second patent due to their invalidity, and had not infringed claim 5 of the second patent.

The court's final orders reflected its findings, affirming that Source and Sell was not liable for certain infringements but had infringed RD 6, thereby necessitating further action in relation to the valid claims and design rights of Multisteps.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

I have concluded that: (a) the respondent has not infringed RD 3 or RD 4; (b) the respondent has infringed RD 6; (c) the applicant is not precluded from maintaining its claim against the respondent for infringement of the first patent; (d) the respondent has not infringed claims 1 to 4 of the second patent because those claims are not valid; and (e) the respondent has not infringed claim 5 of the second patent.The evidenceThe lay witnesses The applicant’s Sales Manager, Ping Ching Tse, made two affidavits, which were read at the hearing. He was cross‑examined. In his first affidavit, Mr Tse gave evidence about the following matters: the nature of the applicant’s business, including its dealings with one of its customers, Moraitis Pty Ltd (Moraitis) – a leading wholesale supplier of fruit and vegetables to supermarkets and other outlets in Australia; details of the first patent and of RD 1 to RD 5; the applicant’s supply of its CJ‑200H, CJ-200HA, CJ-250H, and CJ-250HA containers to Moraitis; the applicant’s discovery of the respondent’s supply of the first Kumato container to Moraitis, and the correspondence which followed with the respondent and its then solicitors; and the applicant’s discovery of the respondent’s supply of the Taste Bomb container to Moraitis. Certain paragraphs of this affidavit were admitted provisionally under s 57 of the Evidence Act 1995 (Cth) (the Evidence Act). I am satisfied that the material in these paragraphs is relevant and should be admitted unconditionally. In his second affidavit, Mr Tse gave evidence about the following matters: details of the second patent and RD 6; the applicant’s exclusive supply of its CJ‑200L container to CostaExchange Limited; the applicant’s discovery of the respondent’s supply and continuing supply of its Kumato container to Moraitis after Moraitis had requested that the applicant supply it with the CJ-200L container; the applicant’s supply of its CJ‑300M container to Moraitis and its discovery of the respondent’s subsequent supply and continuing supply of the Medley Mix container to Moraitis; and the respondent’s continuing supply of the Taste Bomb container. The respondent’s Managing Director, Robert Galombik, made one affidavit, which was read at the hearing. He was cross-examined. Mr Galombik gave evidence about the following matters: the nature of the respondent’s business; the design requirements for containers used for packaging tomatoes; the containers produced for the respondent, including those produced for supply to Moraitis; the respondent’s notice of the applicant’s claims of infringement of the first patent and the correspondence which followed with the respondent and its then solicitors; the steps taken by the respondent as a consequence of this correspondence; certain alleged prior art; and the respondent’s notice of the applicant’s claims of infringement of its design rights. One paragraph of this affidavit was admitted provisionally under s 57 of the Evidence Act. I am satisfied that the material in this paragraph is relevant and should be admitted unconditionally.

Decision

Reasons for decision

Overall, on the confusing state of the evidence, I am certainly not persuaded that I should make a positive finding that exhibit RG-10 represents a container that was supplied in fulfilment of the sales order given on about 8 August 2007, or that it was a container in public use in Australia at any time before any relevant priority date in the proceeding.Conclusion For these reasons, I am not satisfied that either the Tacca punnet represented by exhibit RG‑6 or the Source and Sell container represented by exhibit RG-10 has been shown to be part of the prior art base. The consequence of this finding is that neither the Tacca punnet nor the Source and Sell container can be taken into account when considering the scope of each registered design in suit. RD 3Description The application for RD 3 was filed on 19 February 2008, which is the priority date for the design. As I have noted, the application included a statement of newness and distinctiveness in the following terms: Newness and distinctiveness reside in the features of the design as shown in the representations. As I have also noted, it is apparent from this statement that the applicant relies upon all the visual features of the design, without particular regard to one or more of those features. The design is disclosed in the following filed representations, which are reproduced in Schedule 1 to these reasons:(a)Top perspective view – lid open (representation 1);(b)Top perspective view – lid closed (representation 2);(c)Front view – lid open (representation 3);(d)Front view – lid closed (representation 4);(e)Side view – lid open (representation 5);(f)Side view – lid closed (representation 6);(g)Rear view – lid open (representation 7);(h)Rear view – lid closed (representation 8);(i)Top view – lid open (representation 9);(j)Top view – lid closed (representation 10);(k)Bottom view – lid open (representation 11); and(l)Bottom view – lid closed (representation 12). In general terms, the representations depict a squarish container having a hinged lid and base. The base is deeper than the lid. As a matter of impression, the container appears to be slightly longer from front to back than it is from side to side: see representations 3, 7, and 9 to 12. The base has curved and ribbed corner pillars which converge towards the lower surface of the base to create a soft chamfer between each pillar and the lower surface of the base: see representations 3 to 8. The side walls of the base are substantially perpendicular. They are plain and unribbed: see representations 1 to 8. The lower surface of the base is disposed orthogonally to the side walls. There is a rim with an associated planar lip around the upper part of the base: see representations 3, 5, 7, and 9 to 12. The lip is disposed orthogonally to the side walls. The rim has a particular shape and configuration, best illustrated by representation 1. This particular shape and configuration includes three substantial recessed areas located on the perimeter of the front and two sides of the base: see representations 1 and 5.

Ratio Decidendi

Legal Principle Established

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