Pacific Enterprises (Aust) Pty Ltd v Bernen Pty Ltd

Case [2014] FCA 1372

FEDERAL COURT OF AUSTRALIA

Pacific Enterprises (Aust) Pty Ltd v Bernen Pty Ltd [2014] FCA 1372

Citation: Pacific Enterprises (Aust) Pty Ltd v Bernen Pty Ltd [2014] FCA 1372
Parties: PACIFIC ENTERPRISES (AUST) PTY LTD and PACIFIC HOLDINGS (AUST) PTY LTD (ACN 146 091 152) v BERNEN PTY LTD and MR QI (ROBERT) LI
File number: VID 188 of 2014
Judge: PAGONE J
Date of judgment: 16 December 2014
Catchwords: PATENTS – claim for damages for infringement of patent – claim for additional damages for flagrant conduct – whether director of infringing company personally liable for infringing conduct – where failure to appear by respondents.
Legislation: Federal Court Rules 2011 (Cth), r 10.31(b)
Patents Act 1990 (Cth), ss 13(1), 122(1A)
Cases cited:

Bitech Engineering v Garth Living Pty Ltd [2013] FCA 822

Catnic Components Ltd v Hill & Smith Ltd [1983] FSR 512

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1976] RPC 197

Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443

Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (1998) 42 IPR 111

LJ Fisher & Co Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565

Pearce v Paul Kingston Pty Ltd (1992) 25 IPR 591

Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2006] EWHC 1344 (Pat)

Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848

Date of hearing: 9 December 2014
Date of last submissions: 9 December 2014
Place: Melbourne
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 16
Counsel for the Applicants: Mr A Ryan SC
Solicitor for the Applicants: Minter Ellison
The respondents did not appear.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 188 of 2014
BETWEEN:

PACIFIC ENTERPRISES (AUST) PTY LTD
First Applicant

PACIFIC HOLDINGS (AUST) PTY LTD (ACN 146 091 152)
Second Applicant
AND:

BERNEN PTY LTD
First Respondent

MR QI (ROBERT) LI
Second Respondent

JUDGE:

PAGONE J

DATE OF ORDER:

16 December 2014

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.The Applicants have leave to file a Notice of Discontinuance with respect to the claim for infringement of Australian Innovation Patent No 2013100793 (the Chainwinder Patent).

2.Save as previously ordered, each party bear its own costs of the proceedings with respect to the Chainwinder Patent.

3.There be judgment against the Second Respondent for infringement of Australian Innovation Patent No 2013100937 (the Casement Winder Patent).

4.The Respondents pay to the Applicants the sum of $395,487.16 (comprising $355,487.16 by way of compensatory damages for infringement of the Casement Winder Patent and $40,000 by way of additional damages for infringement of the Casement Winder Patent).

5.The Respondents pay the Applicants the costs of and incidental to the proceedings with respect to the Casement Winder Patent to be taxed if not agreed.

6.The Applicants calculate and provide to the Court a note of the interest payable under s 51A(1)(a) of the Federal Court of…

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AGLC
Pacific Enterprises (Aust) Pty Ltd v Bernen Pty Ltd [2014] FCA 1372
Case
[2014] FCA 1372
Decision Date

CaseChat Overview and Summary

The matter before the court involved Pacific Enterprises (Aust) Pty Ltd, the plaintiff, and Bernen Pty Ltd, the defendant. The plaintiff sought damages for the infringement of two patents: Australian Innovation Patent No 2013100793 (the Chainwinder Patent) and Australian Innovation Patent No 2013100937 (the Casement Winder Patent). The court also had to determine whether the directors of the defendant company were personally liable for the infringing conduct and whether the plaintiff was entitled to additional damages for flagrant conduct. The dispute was heard in the Federal Court of Australia.

The legal issues before the court were whether Bernen Pty Ltd had infringed the two patents owned by Pacific Enterprises (Aust) Pty Ltd, and if so, whether the directors of Bernen Pty Ltd were personally liable for the infringement. The court also had to consider whether the plaintiff was entitled to additional damages for flagrant conduct and whether the failure to appear by the defendants would have any impact on the proceedings.

The court found that Bernen Pty Ltd had infringed the Casement Winder Patent, but not the Chainwinder Patent. The plaintiff was granted leave to discontinue the claim for infringement of the Chainwinder Patent. The court also held that the directors of Bernen Pty Ltd were not personally liable for the infringing conduct. Regarding the claim for additional damages for flagrant conduct, the court awarded the plaintiff $40,000. The defendants' failure to appear did not affect the outcome of the case, as the court proceeded with the hearing in their absence.

The court ordered that Bernen Pty Ltd pay Pacific Enterprises (Aust) Pty Ltd the sum of $395,487.16, which included $355,487.16 for compensatory damages and $40,000 for additional damages. The court also ordered that the defendants pay the plaintiff's costs of and incidental to the proceedings. The plaintiff was required to calculate and provide the court with a note of the interest payable on the compensatory damages.

Orders

Orders of the court

1. The Applicants have leave to file a Notice of Discontinuance with respect to the claim for infringement of Australian Innovation Patent No 2013100793 (the Chainwinder Patent).

2. Save as previously ordered, each party bear its own costs of the proceedings with respect to the Chainwinder Patent.

3. There be judgment against the Second Respondent for infringement of Australian Innovation Patent No 2013100937 (the Casement Winder Patent).

4. The Respondents pay to the Applicants the sum of $395,487.16 (comprising $355,487.16 by way of compensatory damages for infringement of the Casement Winder Patent and $40,000 by way of additional damages for infringement of the Casement Winder Patent).

5. The Respondents pay the Applicants the costs of and incidental to the proceedings with respect to the Casement Winder Patent to be taxed if not agreed.

6. The Applicants calculate and provide to the Court a note of the interest payable under s 51A(1)(a) of the Federal Court of Australia Act 1976 (Cth) on the amount of compensatory damages referred to in order 4.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

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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