Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd

[1998] FCA 542

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	QG 182  of  1995

BETWEEN:

SPEEDY GANTRY HIRE PTY LIMITED
ACN 010 593 414
Applicant/Cross Respondent

AND:

PRESTON ERECTION PTY LIMITED
ACN 003 991 662
First Respondent/First Cross Claimant

JOHN CLEMENT PRESTON
Second Respondent/Second Cross Claimant

JUDGE:	EMMETT J
DATE:	13 MAY 1998
PLACE:	SYDNEY

The Court orders that:

1. Australian Patent No. 578,175 be amended as set out in the marked-up schedule which is exhibit 21A.

1A.Further advertisement of the amendments be dispensed with.

1. The operation of Order 1 be suspended until 29 May 1998.

1. If any person has by 21 May 1998 given notice of intention to oppose the amendment to the Patent advertised on 23 April 1998, the operation of Order 1 be suspended until further order.

1. The first respondent be restrained from, whether by itself, its servants or agents, infringing Australian Patent No. 578,176 during the term thereof, by making, hiring, selling or otherwise disposing of, offering to make, sell or hire or otherwise dispose of, use or keep for any of such purposes:

(a)any independently moveable gantry modules of the type depicted in Exhibit 5A;

(b)a gantry assembly for use as a temporary pedestrian thoroughfare adjacent a site such as a construction site, demolition site or the like, said gantry assembly comprising a plurality of independently moveable gantry modules, each said gantry module comprising, a plurality of spaced legs, a roof assembly secured to and supported by the legs and means for changing the length of the legs, said roof assembly having a roof panel extending between the upper ends of the legs, a side wall between adjacent legs and extending from an edge of the roof assembly to adjacent the lower ends of said adjacent legs, a pedestrian passageway extending through each said module adjacent said side wall and beneath said roof panel so that the wall and roof panel provide a protective barrier between the pedestrian passageway and the site, said roof assembly and said side wall being aligned with a roof assembly and side wall of an adjacent module to form a continuous roof assembly and side wall for said gantry.

(c)an independently moveable gantry module adapted for use with substantially identical modules in the construction of a temporary gantry assembly adjacent a site such as a construction site, demolition site or the like to provide a pedestrian thoroughfare, said module comprising a plurality of spaced legs, a roof assembly secured to and supported by the legs and means for changing the length of the legs, said roof assembly having a roof panel extending between the upper ends of the legs, a side wall between adjacent legs and extending from an edge of the roof assembly to adjacent the lower ends of said adjacent legs, a pedestrian passageway extending through the module adjacent said side wall and beneath said roof panel, so that the wall and roof panel provide a protective barrier between the pedestrian passageway and the site, said roof assembly and said side wall being alignable with roof assemblies and side walls of adjacent modules.

1. Within 28 days, the first respondent file and serve an affidavit setting out:

(a)the number of modular gantry units made by it or on its behalf; and

(b)details of all hiring and sales of such units, including, the price of such hire or sale, the date and the name and address of the person to whom the units were hired or sold.

The Court certifies that:

1. Pursuant to section 19 of the Patents Act 1990 (Cth) the validity of each of the clams of Australian Patent No. 578,176 was questioned in these proceedings.

1. The Court orders that:

(a)there be no order as to the costs of 6 May 1998 and of today;

(b)the first respondent pay the costs of the application; and

(c)the respondents otherwise pay the costs of the cross-claim.

The Court orders that:

1. The application be dismissed as against the second respondent.

1. The cross-claim be otherwise dismissed.

1. The respondent’s notice of motion dated 8 April 1998 be dismissed.

The Court grants:

1. Leave to the respondents to appeal.

The Court orders that:

1. The orders in paragraphs 5 and 8 be stayed pending the determination of the appeal or further order.

The Court reserves:

1. To the respondents liberty to apply on any Friday upon 3 days notice for directions in respect of any proposed application for a stay of Order 4.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	QG 182  of  1995

BETWEEN:

SPEEDY GANTRY HIRE PTY LIMITED
ACN 010 593 414
Applicant/Cross Respondent

AND:

PRESTON ERECTION PTY LIMITED
ACN 003 991 662
First Respondent/First Cross Claimant

JOHN CLEMENT PRESTON
Second Respondent/Second Cross Claimant

JUDGE:	EMMETT J
DATE:	13 MAY 1998
PLACE:	SYDNEY

REASONS FOR JUDGMENT

HIS HONOUR: In my reasons for judgment delivered on 13 March 1998 I indicated the conclusion which I had reached concerning the validity of the Patent. I also indicated that it may be appropriate for orders to be made pursuant to section 105 of the Patents Act 1990 (Cth) amending the Patent. I stood the proceedings over to enable the parties to give consideration to my conclusions and for further argument as to the appropriate relief. The matter came before me again on 6 May 1998 at which time counsel for Speedy Gantry indicated that he sought orders pursuant to section 105 amending the Patent. After further argument that question was adjourned to today.

A schedule has now been tendered which sets out amended claims (“the Schedule”).  A copy is set out in Appendix 1 to these reasons.  The amendments take account of the concessions made by counsel for Speedy Gantry in the course of the trial.  The amendments are also designed to ensure that the language of claims 7 and following is consistent with the language of claims 1 to 6. 

Speedy Gantry advertised proposed amendments to the claims on 23 April 1998.  The form of claims in the Schedule varies from the form of claims which were the subject of the advertisement in respects which are not, in my opinion, material.  The Australian Government Solicitor, who sought leave to appear for the Commissioner of Patents, has indicated that the Commissioner of Patents has no objection to the amendments as shown in the Schedule.  I have also been informed by counsel for Speedy Gantry that the Australian Government Solicitor has indicated that the Commissioner does not wish to be heard in relation to the question of further advertisement in respect of the further amendments which have been made since the advertisement on 23 April 1998.

Section 112 of the Patents Act provides that:

A complete specification relating to a patent must not be amended, except under section 105, while relevant proceedings in relation to the patent are pending.

Section 105 provides that:

In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent, … or the complete specification in the manner specified in the order.

Section 102 provides that:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

(a)  a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)  the specification would not comply with subsection 40(2) or (3).

I am satisfied that section 102 would not preclude the amendments which are made by the Schedule.  No opposition to the amendment has been advanced on behalf of Preston Erection and Mr Preston.  However, without demur from counsel for Speedy Gantry, they have reserved their right, to the extent that that is permissible, to argue, on the hearing of any appeal, against the appropriateness of the amendments.

I am satisfied that it is appropriate that orders should be made amending the Patent as set out in the Schedule.  Because the time for notifying any intention to oppose the amendments which have been advertised has not expired it is appropriate that any order permitting amendment be suspended until 29 May 1998, by which date the time for objection or notification of opposition will have expired. 

I consider that it is appropriate to dispense with advertisement of the amendments except to the extent that they were the subject of advertisement on 23 April 1998.

In the course of the hearing today, the solicitor for Preston Erection and Mr Preston sought a stay of any final injunction ordered in accordance with my reasons.  The basis of the application for a stay was that, if any appeal were successful, Preston Erection may suffer damage by being restrained in terms of the order.  After some argument, the application was not persisted at this stage.

I am satisfied that any appeal which might be brought from my decision could not be characterised as being futile, frivolous or manifestly doomed to fail.  Nevertheless, if a stay were to be granted, it would be necessary for Preston Erection to adduce evidence to show that some damage is likely.  That, of course, is not the only matter but, in the absence of any such evidence, it was considered inappropriate to prosecute any application today.  Accordingly, I propose to reserve to Preston Erection liberty to apply for directions in respect of any proposed application for stay of the final injunction which I propose to order.

The orders which I am now proposing to make do not finally resolve all questions between the parties since there will be a question of taking of accounts or damages at the election of the applicant.  However, since a desire to appeal has been foreshadowed, it is appropriate that I give leave, at this stage, to appeal from the orders which I propose. 

Apart from the matters to which I have referred above, as I understand it, the parties accept that the orders which I am about to pronounce are appropriate to give effect to the reasons which I expressed in my judgment of 13 March 1998.  Accordingly, I now make orders in accordance with the short minutes which I have initialled and dated and will now be placed with the papers.

I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett

Associate:

Dated:             13 March 1998

Counsel for the Applicant:	D. K. Catterns QC
Mrs D. A. Mullins
Solicitor for the Applicant:	Bennett & Philp
Counsel for the Respondent:	M.R.J. Ellicott
Solicitor for the Respondent:	Hazan Solicitors
Dates of Hearing:	13 May 1998
Date of Judgment:	13 May 1998