Rakman International Pty Limited v Boss Fire & Safety Pty Ltd

In Rakman International Pty Limited v Boss Fire & Safety Pty Ltd, the primary judge adjudicated on multiple claims involving allegations of misleading and deceptive conduct under the Australian Consumer Law, unjustified threats under the Patents Act 1990, and questions of patentability, alongside an ancillary costs dispute. Rakman, the appellant, was engaged in a dispute with Boss, the respondent, regarding the alleged infringement of a patent held by Rakman. The court had to determine if representations made by Rakman to Boss and others were misleading or deceptive, whether certain communications constituted unjustified threats, and if the patent in question was novel and involved an innovative step. Additionally, the court considered whether the primary judge erred in his handling of costs, particularly regarding offers of compromise.

The legal issues before the court encompassed whether the representations made by Rakman constituted misleading or deceptive conduct under s 18 of the Australian Consumer Law, whether certain communications were unjustified threats under s 128(1) of the Patents Act, and whether the primary judge erred in his determination of patent novelty and innovative step under s 7(4) of the Patents Act. Furthermore, the court had to consider whether the primary judge erred in his assessment of costs, specifically whether he failed to properly apply the discretion under r 1.35 of the Federal Court Rules 2011 to make an order inconsistent with the consequences of r 25.14(2), and whether he should have considered the House v The King principles in evaluating an offer to discontinue proceedings.

The court held that the representations made by Rakman, although ultimately found to be incorrect, were not misleading or deceptive conduct because they were expressed as a firm belief and not as statements of fact. The court also found no error in the primary judge's determination that the communications did not constitute unjustified threats. Regarding the patentability, the court upheld the primary judge's finding that the invention did not involve an innovative step despite being novel. Finally, the court found no error in the primary judge's handling of costs, affirming that the primary judge appropriately exercised his discretion under the Federal Court Rules and the Federal Court of Australia Act 1976.

In summary, the appeal was partially allowed, with specific orders set aside and replaced. The appellant was required to pay the respondent's costs of the Patent Proceeding, subject to potential reduction on remittal to the primary judge. The appeal was otherwise dismissed, and costs were awarded in favour of the respondents and cross-respondents. The time for any application to the High Court for special leave to appeal from these orders was set to commence on 5 February 2024.