Townsend Controls Pty Ltd v Gilead, G

Re: TOWNSEND CONTROLS PTY LIMITED
And: GIDEON GILEAD; JAMES DUNSTONE TOWNSEND; TOWNSEND CONTROLS PTY LTD and
VINIDEX TUBEMAKERS PTY LIMITED
No. G84 of 1988
FED No. 250
Patents
21 IPR 520

COURT

IN THE FEDERAL COURT OF AUSTRALIA

SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Von Doussa J.(1)

CATCHWORDS

Patents - assessment of damages for unjustified threats - whether losses alleged were caused by the threats referred to in the statement of claim - whether losses caused by decision to await the outcome of cross-claim for infringement - claim for damages dismissed.

HEARING

ADELAIDE

#DATE 31:5:1990

Counsel for the applicant: Mr P.A. McNamara

Solicitors for the applicant: Fisher Jeffries

No appearance for respondent.

ORDER

The claim by Townsend Controls for damages pursuant to s.121(1) of the Patents Act 1952 be dismissed.

No order as to costs of the proceedings subsequent to 22 September 1989 in relation to the question of damages.

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

JUDGE1

On 22 September 1989 I delivered judgment on the principal claims for relief made in the application and in two cross-claims. In the result, on the application orders were made under s.121 of the Patents Act 1952 firstly restraining the respondent Gilead from continuing to threaten action for infringement of Australian Letters Patent No. 516536 ("the Gilead Patent") and secondly that the applicant ("Townsend Controls") recover from the respondent damages for the loss sustained by it in consequence of the making of the threats referred to in the statement of claim. The respondent's cross-claim for infringement of the Gilead Patent was dismissed, and on the further cross-claim by Townsend Controls, James Dunstone Townsend ("Mr Townsend") and Vinidex Tubemakers Pty Limited ("Vinidex") an order was made that the Gilead Patent be revoked. Details of the proceedings are contained in the earlier reasons for judgment.

1. The proceedings have now been brought on for further hearing to assess the damages sustained by Townsend Controls in consequence of the threats referred to in the statement of claim.

2. To understand the way in which the claim for damages is formulated, it is necessary to outline the development of a form of drip irrigation tube by Townsend Controls, the manufacture, distribution and sale of which were alleged by the respondent to infringe the Gilead Patent. Since about 1982 Townsend Controls through its managing director, Mr Townsend, has worked on the development of the tube which later became known as "vinitape". On 20 September 1983 Mr Townsend lodged an Australian patent application in respect of the tube entitled "Irrigation Hose", and subsequently Townsend Controls lodged further patent applications in respect of variations and improvements in relation to the development of vinitape. On 18 April 1985 Townsend Controls entered into a licensing agreement with Vinidex for the exploitation of vinitape and the various patent applications. In essence the agreement provided for the grant by Townsend Controls to Vinidex of an exclusive licence of its rights in respect of the patent…