Rescare Ltd v Anaesthetic Supplies P/L

[1992] FCA 954

JUDGMENT No. .5.$2..,13.&,

A * ) )

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 156 of 1992

)

GENERAL DIVISION )

BETWEEN: RESCARE LIMITED

Applicant (Cross-Respondent)

AND:  ANAESTHETIC SUPPLIES PTY LTD Respondent (Cross-Claimant)

CORAM :	GUMMOW J
PLACE :	SYDNEY
DATE :	11 DECEMBER 1992

MINUTE OF ORDERS

THE COURT ORDERS THAT:

1.

The respondent be restrained, by itself its servants and (A) Making, hiring, selling or offering for sale or hire

or otherwise disposing of:

(I) any apparatus which includes the following

devices ("the Devices"):

(a) the nose mask forming part of Exhlbit A;

(b) the outlet means being either the "whisper swivel" forming part of Exhibit A or the Saunders NRV2 forming Exhibit G; and

(c) the tube forming Exhibit H.

2. The operation of Order 1 be suspended untll 15 January

(ii) The REMstar Choice CPAP apparatus described in Exhibit F2 and including the Devices; and

(iii) the BlPAP apparatus described in Exhibit F4, and including the Devices.

(the apparatus identified in (i), (ii) and (iii) are hereinafter called "the Respironic Nasal CPAP

Devices " )

(B) offering to make, sell, hire or otherwise dispose of

any of the Respironic Nasal CPAP Devices;

(C) using or ~mporting any of the Respironic Nasal CPAP

Devices; and

(D) keeping any of the Respironic Nasal CPAP Devices for any of the purposes set out in (A) (B) and (C) above.

3.  The cross-claim be dismissed, save as to any issue arising as to the amendment of claims 9 and 11 of standard patent No. 560360 ("the Patent").

4.   An inquiry be held to ascertain the damages suffered by the applicant resulting from the infringing conduct of the respondent and the respondent pay to the applicant the sum so ascertained within such date as the Court then shall fix.

5.    It be certified that the validity of claims 1, 3, 6, 7 and 8 of the Patent was questioned in this proceeding.

6. The respondent (cross-claimant) pay the costs of the applicant (cross-respondent) of this proceeding to date, including the costs of the interlocutory hearing before Hill J, and an allowance be made pursuant to S. 220 of the Patents Act 1990 in respect of the attendance of a patent attorney at the trial before Gummow J.

7.    The motion filed in Court on 2 December 1992, concerning amendment, be stood over before Gummow J at 9.30am on 3 February 1993, to fix a date for hearing of that motion and that the Commissioner of Patents be notified accordingly by the solicitors for the applicant.

8.   Upon the respondent (cross-claimant) by its counsel undertaking to the Court to pursue the appeal with all proper expedition, the respondent (cross-claimant) be granted leave to appeal against Orders 1, 3, 4 and 6 of these orders.

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IN THE FEDERAL COURT OF AUSTRALIA	)
1
NEW SOUTH WALES DISTRICT REGISTRY )	No. NG 156 of 1992
GENERAL DIVISION	)

BETWEEN: RESCARE LIMITED

Applicant (Cross-Respondent)

AND:  ANAESTHETIC SUPPLIES PTY LTD Respondent (Cross-Claimant)

C O W :	GUMMOW J
PLACE	: SYDNEY
DATE :	11 DECEMBER 1992

SUPPLEMENTARY REASONS FOR JUDGMENT

In Reasons for Judgment delivered 9 November 1992 I

said: -

"The applicant should bring in short minutes for declaratory and injunctive relief in respect of the infringement by the respondent of claims 1, 3, 6, 7 and 8 of the Patent, claims whose validity has been unsuccessfully called into question. I will hear

the parties upon any application for an inquiry as

to damages or an account of profits, as to any

proposed amendment of claims 9 and 11 and as to costs of the proceeding as to date. The cross- claim, save as to any issue arising as to amendment of claims 9 and 11 should be dismissed."

On 2 December 1992 I heard submissions upon these matters, and each side provided a set of suggested short minutes. There was considerable agreement between the parties but a dispute as to several matters.

The orders should provide principally for the following:

(i)       an injunction,

(ii)      dismissal of the cross-claim, save as to any issue arising as to claims 9 and 11,

(iii)     the application for amendment of claims 9 and 11,

(iv)      the conduct of an inquiry as to damages (the applicant having so elected), and

( V )       costs of the proceeding to date.

The applicant does not now seek an order for delivery up.

The applicant does not oppose the grant of leave to appeal, on terms that the respondent pursue the appeal with all due expedition so that it be ready for the call over for the sitting of the Full Court in Sydney in May 1993.

It is quite clear that leave to appeal is necessary: Fisher & Pavkel Healthcare Ptv Ltd v Avion Enaineerina Ptv Ltd (1991) 103 ALR 239 at 242. Therefore, it was surprising to learn on 2 December that on 30 November the respondent had purported to file a Notice of Appeal. Not only would leave have been necessary but at the time this document was filed there were no relevant orders against which any appeal, by leave or otherwise, might be instituted. The only order made when Reasons for Judgment were delivered on 9 November 1992 was that the proceeding stand over to a date to be fixed for the bringing in of short minutes to give effect to those Reasons for Judgment.

Upon the grant of leave to appeal the respondent should institute an appellate proceeding in proper fonn. I will not order that defective Notice of Appeal stand as if regularly prepared and filed.

The parties are agreed that the application seeking to amend the claims 9 and 11 should be heard, if possible, in advance of the hearing of the appeal. The respondent does not oppose any order by which the applicant seeks to dispense with the requirement to advertise before the amendment application is heard. It also agrees that the inquiry as to damages should not proceed before the hearing of the appeal.

The respondent also accepts that the Court should certify

pursuant to S. 19 of the Patents Act 1990 ("the 1990 Act")

patent No. 560360 ("the Patent") was questioned in this	that the validity of claims 1, 3, 6, 7 and 8 of standard
proceeding.
The parties are in disagreement as to the appropriate costs order. The applicant seeks the inclusion of an allowance in respect of the attendance at the trial of its patent attorney. Section 220 of the 1990 Act states: -

"Where, at the hearing of proceedings under this Act, a patent attorney attends in court for the purpose of assisting a party in the conduct of the hearing and an order is made for payment of the costs of that party, those costs may include an allowance for that attendance."

The respondent submits that no such allowance should be made and that, in any event, it should be reduced in view of the adverse findings in respect of claims 9 and 11.

This trial involved significant questions of patent law and practice in this country. The attendance in Court of a patent attorney assisted the presentation of the case, even allowing for the engagement of experienced solicitors and counsel. The case is an appropriate one for the making of an allowance pursuant to S. 220. I would not reduce the allowance by reason of what befell the applicant's reliance upon claims 9 and 11. A number of issues were before the Court and upon the great majority of them the applicant

succeeded. For the guidance of the taxing officer I should	indicate that the allowance under S. 220 should be no greater
than that allowed to the solicitor for the applicant attending in Court at the trial.
The parties are in disagreement as to the terms of the injunctive relief.
Claim 1, and the dependent claims 3, 6, 7 and 8, have been infringed. They are for an apparatus comprising a combination of particular integers. They are product claims, not method or process claims.
I referred to the distinction between "exploitation" in relation to product claims and to method or process claims, on pp. 82-89 of the Reasons for Judgment delivered 9 November
1992.
Paragraph (a) of the definition of "exploit" in Schedule 1 to the 1990 Act states: -

"where the invention is a product - make, hire, sell or otherwise dispose of the product, offer , to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those

things " .

The applicant puts forward a draft injunction which fixes upon any apparatus which includes specified integers, defines

those apparatus as "the Respironic Nasal CPAP Devices" and

enjoins the respondent from activities in relation to them, in terms of the definition of "exploit" which I have set out above.

The respondent seeks the attachment of a proviso that the enjoining of the making, hiring, selling or otherwise disposing of these Devices does not impose a restraint in respect of the REMstar Choice CPAP machine or the BLPAP or any other machine without the attachment of the specified integers.

In terms, the injunction proposed by the applicant is directed only to the making, hiring, selling or otherwise disposing of machines which include the nose mask, the "whisper swivel" or the Saunder NRV2, and the tube which is Exhibit H. On the face of the injunction there would be no infringement by that for which the respondent seeks the insertion of a proviso. No such proviso should be attached to the injunction.

The respondent also seeks the attachment of a proviso that the activities otherwise restrained do not enjoin any sale or hire which is subject to a condition that the product will not be used to alleviate OSA.

The act of hiring or selling apparatus which falls within the area claimed by Claim 1 and the dependent claims, is	itself an exploitation within the meaning of the definition,
these being part of the exclusive rights given the patentee by
S. 13 of the 1990 Act. Sub-S. 13(1) reads: -

"Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention."

It may be that a sale or hiring of apparatus subject to a condition that the buyer or hirer will not operate the apparatus in such fashion as to infringe would not amount to an authorisation (within the meaning sub-S. 13(1)) of the exploitation of the invention by the buyer or the hirer. It is unnecessary to resolve that question. Nor is it necessary to resolve any issue which may arise under S. 117. There is, as the applicant submitted, a primary or direct infringement by the party selling or hiring the apparatus to another party. This is because those activities fall within the first paragraph of the definition of "exploit" and thus within the first branch of sub-S. 13(1) of the 1990 Act.

I should add that, in my view, there is, in relation to a product or apparatus claim infringement by the making, hiring, selling or otherwise disposing of apparatus (within the meaning of para (a) of the definition of "exploit"), even though the apparatus in question might, by the user, be put to what is a non-infringing use. I appreciate that some of the

v Nicaro Holdinas Ptv Ltd [l9911 AIPC 90-799 at 37,582-3 were	authorities referred to by Burchett J in Martin Enaineerina CO
concerned particularly with machines which contained an infringing device which was capable of being brought into operation; the point was made that it was no answer to a claim of infr~ngement that the machine was susceptible of use without bringing into operation that device. But the reasoning exemplified in these decisions is that the charge of infringement cannot be escaped by apparatus, which is capable of an infringing use, by the circumstance that it also is capable of a non-infringing use.
The second proviso sought by the respondent should not be attached to the injunction.
The respondent also seeks permission, despite what would otherwise be the effect of the injunctive relief, to continue to perform any obligations arising out of existing hiring of Respironic Nasal CPAP Devices until the expiry of the terms of such arrangements and upon the footing that any rental received after the date of these orders be brought into account on the inquiry as to damages. In my view the applicant is entitled to an injunction free of such qualification. I will however, suspend the operation of the injunction until 15 January 1993.
Further, the respondent seeks a qualification to the injunction which would leave it free to supply nose masks and
whom Respironic Nasal CPAP Devices have been provided before "whisper swivels" and other "spare parts" to third parties to
the date of the orders. No such proviso should be attached to the injunction. I say nothing as to whether in any event, such an activity would amount on the part of the respondent to exploitation or authorisation within the meaning of S. 13, or to infringement by reason of S. 117. Much might depend upon the particular facts as events came to pass.
There was some debate also as to the position regarding repairs to the Respironic Nasal CPAP Devices. Here the respondent is upon ground which is more clearly marked out by the legislation. The range of activit~es falling within the definition of "exploit" in relation to product or apparatus claims does not include the repair of the product. In that respect the 1990 Act resembles S. 60 of the Patents Act 1977
(UK) . On that provision it is said ("Terrell on the Law of Patents", 13th ed, para 6.89): -

"Accordingly repairing is not an infringement but difficulty will still arise over determining what is or is not a repair."

I would not attach any proviso to the injunction excepting therefrom "repair". It must be a question in each particular case for the respondent to assess whether the proposed activity in question would fall within that concept.

The respondent contended that even under the old law exercising or selling the invention. These were the terms in

"repair" would fall outside the concept of making, using,

which the ambit of the monopoly was defined by S. 69 of the Patents Act 1952. I accept the submission by the applicant that the authorities to which the respondent referred, notably Solar Thomson Enqineerina CO Ltd v Barton [l9771 RPC 537 at 554, were concerned with the terms of an implied licence permitting repair to prolong the life of a licensed article and proceeded upon the footing that without the implied licence there would be infringement.

Accordingly, I will make orders in the following terms: -

1.

The respondent be restrained, by itself its servants and (A) Making, hiring, selling or offering for sale or hire

or otherwise disposing of:

(i)  any apparatus which includes the following

devices  ("the Devices"): 

(a) the nose mask forming part of Exhibit A;

(b) the outlet means being either the "whisper swivel" forming part of Exhibit A or the Saunders NRV2 forming Exhibit G; and

(c) the tube forming Exhibit H.

(ii) The REMstar Choice CPAP apparatus described in Exhibit F2 and including the Devices; and

(iii)the BIPAP apparatus described in Exhibit F4,

and including the Devices.

(the apparatus identified in (i), (il) and (iii) are hereinafter called "the Respironic Nasal CPAP

Devices " )

(B) offering to make, sell, hire or otherwise dispose of

any of the Respironic Nasal CPAP Devices;

(C) using or importing any of the Resplronic Nasal CPAP

Devices; and

(D) keeping any of the Respironic Nasal CPAP Devices for any of the purposes set out in (A ) (B) and (C) above.

2.   The operation of Order 1 be suspended until 15 January 1993.

3.   The cross-claim be dismissed, save as to any issue arising as to the amendment of claims 9 and 11 of standard patent No. 560360 ("the Patent").

4.   An inquiry be held to ascertain the damages suffered by

the applicant resulting from the infringing conduct of the respondent and the respondent pay to the applicant the sum so ascertained within such date as the Court then shall fix.

5.    It be certified that the validity of claims 1, 3, 6, 7 and 8 of the Patent was questioned in this proceeding.

6. The respondent (cross-claimant) pay the costs of the applicant (cross-respondent) of this proceeding to date, including the costs of the interlocutory hearing before Hill J, and an allowance be made pursuant to S. 220 of the 1990 Act in respect of the attendance at the trial before Gummow J of a patent attorney.

7.    The motion flled in Court on 2 December 1992, concerning amendment, be stood over before me at 9.30am on 3 February 1993, to fix a date for hearing and that the Commissioner of Patents be notified accordingly by the solicitors for the applicant.

8.  Upon the respondent (cross-claimant) by its counsel undertaking to the Court to pursue the appeal with all due expedition, grant leave to the respondent (cross- claimant) to appeal against Orders 1, 3, 4 and 6 of these orders.

I certify that this and the preceding eleven (11) pages are a true copy of the Reasons for Judgment herein of the Honourable Mr Justice Gummow.

Associate: f iLu

Date: 11 December 1992 V

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Counsel and solicitors	Mr D K Catterns
for the applicant:	instructed by Williams Niblett
Counsel and solicitors	B W Rapent QC
for the respondent:	Mr J T Gleeson instructed by Freehill, Hollingdale and Page
Date of Hearing:	2 December 1992
Date of Judgment:	11 December 1992