Patents—Groundless threats of legal proceedings—When threat regarded as made—Threat made in England—Not justiciable in Australia—Strict territoriality of patents—Threat allegedly made in Australia—Established to satisfaction of Court—Whether remedy discretionary or as of right—Patents Act 1952-1955 (Cth), s. 121.

Decisions

November 8.
FULLAGAR J. delivered the following written judgment:-
In this action the plaintiff claims a declaration and an injunction in respect of certain alleged threats to institute legal proceedings for the infringement of letters patent. The cause of action asserted is that which is given by s. 121 of the Patents Act 1952-1955 (Cth). Section 121 (1) provides: "Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a patent, or some other like proceeding, then, whether the person making the threats is or is not entitled to or interested in a patent, or is or is not interested in an application for a patent, a person aggrieved may bring an action against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the acts in respect of which the proceedings were threatened constitute, or, if done, would constitute - (a) an infringement of a patent in respect of a claim in the specification which is not shown by the plaintiff to be invalid; or (b) an infringement of rights arising from the publication of the complete specification of a claim in the specification which is not shown to be one which would be invalid if a patent had been granted in respect of the complete specification." (at p441)

2. The plaintiff is a company incorporated in the United Kingdom. The individual defendant, Max Meth, of Atlantic City, New Jersey in the United States, is the owner of Australian patent No. 204989 and of a number of other patents in various countries. It is sufficient at the moment to refer to the general nature of the invention the subject of patent No. 204989, which is, I think, the only patent ultimately relevant in this case. The complete specification on which that patent was granted states: "This invention relates to an improved method of applying a layer of metallic copper to a surface or base and more particularly to an improved galvanic method of applying a protective copper coating to the silvered reflecting surface of a mirror in such manner that the copper will be hardened with resultant improved protective and appearance qualities." The application for that patent was lodged on 14th September 1955, but it was a "convention application", and it was granted with 9th December 1954 (the date of application in the United States) as the priority date of all the claims. This…

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.

Continue reading Norbert Steinhardt and Son Ltd v Meth

Details

AGLC: Norbert Steinhardt and Son Ltd v Meth [1961] HCA 33
Case: [1961] HCA 33
Decision Date: 6 June 1961

CaseChat Overview and Summary

Norbert Steinhardt and Son Ltd (the plaintiff) brought an action against Meth (the defendant) seeking damages for breach of contract. The dispute concerned the defendant's failure to deliver a quantity of timber as agreed.

The central legal issue before the court was whether the plaintiff had waived its right to insist on strict performance of the contract regarding the time of delivery. The court was required to determine if the plaintiff's conduct had indicated an intention to accept late delivery, thereby estopping them from claiming damages for the delay.

Fullagar J. found that the plaintiff had, through its conduct, waived its right to strict performance. His Honour reasoned that the plaintiff's actions, particularly their continued engagement with the defendant and their failure to protest the delay promptly, demonstrated an acceptance of the late delivery. The legal principle applied was that a party to a contract can, by their conduct, waive a condition of the contract, and once waived, that condition cannot be subsequently enforced without reasonable notice to the other party.

The plaintiff's claim for damages was therefore dismissed.

Orders