Stanway Oyster Cylinders Pty Ltd v Marks, Clement Rex

[1996] FCA 526

FEDERAL COURT OF AUSTRALIA                  )          No. NG 85 of 1994

NEW SOUTH WALES DISTRICT REGISTRY   )

GENERAL DIVISION  )

BETWEEN:   STANWAY OYSTER CYLINDERS PTY LTD
  (A.C.N. 003 320 232)

Applicant

AND:             CLEMENT REX MARKS

Respondent

MINUTES OF ORDERS

JUDGE MAKING ORDER:  Drummond J
DATE OF ORDER:  26 June 1996
WHERE MADE:  Brisbane

THE COURT:

1. DECLARES that the respondent has infringed claims 1, 2, 4, 6 and 7 of Australian Letters Patent No. 556338 (“the patent”).

2. ORDERS that the respondent by himself, his servants and agents or otherwise be restrained from importing, manufacturing or having manufactured for him, hiring, selling, offering for sale, by way of trade distributing or using any apparatus for growing molluscs, being an infringement of the patent.

3. ORDERS that the respondent by himself, his servants and agents or otherwise be restrained from importing, manufacturing or having manufactured for him, hiring, selling, offering for sale, by way of trade distributing or using the apparatus:

   (a)an example of which is Exhibit CRM-1; and

   (b)examples of which are depicted in the photographs and drawings being Exhibits “NJA-2”, “NJA-2A”, “NJA-3” and

“NJA-4” to the affidavit of Neville John Anderson sworn on 7 June 1994.

1. ORDERS that the respondent deliver up on oath to the applicant for destruction all materials and articles in the possession, custody or power of the respondent the making, use or sale of which by the respondent would constitute an infringement of the patent, including all examples of the apparatus referred to in Order 3.

2. STANDS OVER the proceedings before a Judge of the Court in Sydney for the giving of directions in relation to damages or an account of profits.

3. ORDERS that the time allowed to the respondent by the Rules for appealing or for seeking leave to appeal from this judgment and orders be extended by seven days.

4. ORDERS that the respondent pay the applicant’s costs of and incidental to the proceedings, including the cross-claim.

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

FEDERAL COURT OF AUSTRALIA                  )          No. NG 85 of 1994

NEW SOUTH WALES DISTRICT REGISTRY   )

GENERAL DIVISION  )

BETWEEN:   STANWAY OYSTER CYLINDERS PTY LTD
  (A.C.N. 003 320 232)

Applicant

AND:             CLEMENT REX MARKS

Respondent

Coram:          Drummond J
Date:              26 June 1996
Place:            Brisbane

REASONS FOR JUDGMENT

The applicant seeks its costs of the claim and the cross-claim on an indemnity basis.

This application is founded on my finding that the respondent and his son (with Mr Mudford’s assistance) put up a concocted defence on the issue of novelty.

But this particular defence, which was based on their having devised and used oyster tumblers before the priority date of the patent, involved only some of the issues litigated.  Although the applicant was ultimately successful, the respondent had considerable success on a number of the other matters canvassed

in the proceedings, eg, whether the Mohr device in evidence was capable of being an anticipation of the applicant’s patent and whether the evidence of Mr Cole and other witnesses established non-user by the respondent and by Mr Mudford of tumblers before the priority date.

There is no sufficient reason, in my opinion, to depart from the ordinary rule that the applicant should have its costs of and incidental to the proceedings, including the cross-claim, but on a party-and-party basis only.

The short minutes of orders brought into Court by the applicant in accordance with my direction provide for an injunction restraining, inter alia, the importation of infringing apparatus; they also permit of a deferral by the applicant of its election between damages and an account of profits.  There is no objection to orders being made in accordance with these short minutes.  I will therefore make a declaration and orders in those terms, together with the order for costs which I have indicated.

The respondent seeks a stay of the judgment for seven days on the assumption that it is a final judgment and that, with the stay, he will have 28 days to decide whether to file an appeal.  The applicant is prepared to consent to a seven day stay, but points out that the judgment that I will now pronounce is interlocutory because it leaves undetermined the amount of damages or the amount that may be due on an account of profits, according to the election the applicant ultimately makes.

The purpose of the stay that is sought is to give the respondent additional time to consider whether to appeal.  Neither a stay of execution under O 37, r 10 of the Federal Court Rules nor an order postponing the date on which the judgment shall take effect under O 35, r 3 would appear to achieve that.  Since, however, the applicant is prepared to agree to the respondent having an additional seven days to the time allowed by the rules to decide whether to institute an appeal, I will extend, by seven days, the time affixed by the rules within which the respondent must file his notice of appeal or his application for leave to appeal, whichever be appropriate.

I certify that this and the preceding 2 pages
are a true copy of the reasons for judgment
herein of the Honourable Justice Drummond.

Associate:

Date:              26 June 1996