Upaid Systems Ltd v Telstra Corporation Ltd - [2013] FCA 1441

FEDERAL COURT OF AUSTRALIA
Upaid Systems Ltd v Telstra Corporation Limited [2013] FCA 1441

Citation: Upaid Systems Ltd v Telstra Corporation Limited [2013] FCA 1441

Parties: UPAID SYSTEMS LTD v TELSTRA CORPORATION LIMITED (ACN 051 775 556)

File number: NSD 1698 of 2013

Judge: YATES J

Date of judgment: 23 December 2013

Catchwords: PATENTS – practice and procedure – application for originating application, statement of claim, and particulars of infringement to be struck out or for further and better particulars – whether adequate particulars of patent infringement given – consideration of the requirement under the Rules to provide at least one instance of each type of infringement alleged – discussion of the meaning of “type” of infringement

Legislation: Federal Court of Australia Act 1976 (Cth) s 37M
Federal Court Rules 2011 (Cth) r 34.42(3)

Cases cited:
Aktiengesellschaft Für Autogene Aluminium Schweissung v. London Aluminium Company, Limited. [1919] 2 Ch 67
Belegging-en Exploitatiemaatschappij Lavender B.V. v. Witten Industrial Diamonds Limited [1979] FSR 59
Bitech Engineering v Garth Living Pty Ltd(ACN 111 145 432) and Another (2011) 279 ALR 121
Cleveland Graphite Bronze Coy. Ld. and Another v. Glacier Metal Coy. Ld. (1951) 68 RPC 181
Coflexip SA v Stolt Offshore MS Ltd(No. 2) [2004] FSR 708
General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited and Others [1975] RPC 203
MMI Research Limited v Cellxion Limited [2009] EWHC 1938
National Broach and Machine Co. v. Churchill Gear Machines Ltd. [1965] 1 WLR 1199
Nokia Corporation v Liu (2009) 179 FCR 422
Poulton v. Adjustable Cover and Boiler Block Company. [1908] 2 Ch 430
Salopian Engineers Limited v. The Salop Trailer Company Limited. (1954) 71 RPC 223
Unilin Beheer BV v Berry Floor NV and Others [2008] 1 All ER 156
Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] 4 All ER 715

Richard M, Burkill G, Birss C, and Campbell D, Terrell on the Law of Patents (17^th ed, Sweet & Maxwell, 2011)

Date of hearing: 3 December 2013

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 81

Counsel for the Applicant: Mr AJL Bannon SC with Mr C Dimitriadis

Solicitor for the Applicant: Allens

Counsel for the Respondent: Mr RC Macaw QC with Ms CL Cochrane

Solicitor for the Respondent: King & Wood Mallesons

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1698 of 2013

BETWEEN:
UPAID SYSTEMS LTD
Applicant

AND:
TELSTRA CORPORATION LIMITED (ACN 051 775 556)
Respondent

JUDGE:

YATES J

DATE OF ORDER:

23 DECEMBER 2013

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The amended particulars of infringement filed on 8 November 2013 be struck out.
2.The applicant file further amended particulars of infringement by 4.00 pm on 28 February 2014.
3.The applicant pay the respondent’s costs of the interlocutory application filed on 16 October 2013.
4.The proceeding be listed for directions at 9.30 am on 17 March 2014.

Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] FCA 1441
Decision Date

CaseChat Overview and Summary

The Federal Court of Australia was asked to decide if particulars of patent infringement provided by Upaid Systems Ltd were adequate or if they needed to be further defined. Upaid had alleged that Telstra Corporation Limited infringed several of its patents related to convergent communications platforms and methods for mobile and electronic commerce. The central legal issue was whether Upaid had complied with the Federal Court Rules requiring at least one instance of each type of infringement to be particularised in the statement of claim. The Court found that Upaid's particulars were insufficient as they did not specify the acts by Telstra that constituted an infringement of the claims in the patents. The particulars were too general and did not descend to the specific acts that would constitute infringements. The Court held that the particulars did not comply with the requirements of Rule 34.42(3) of the Federal Court Rules 2011 (Cth). Consequently, the Court ordered that the amended particulars of infringement be struck out and gave Upaid until 28 February 2014 to file further amended particulars of infringement. The Court also ordered Upaid to pay Telstra's costs of the interlocutory application and listed the proceeding for further directions on 17 March 2014. The Court noted that Upaid had advanced a large number of claims and suggested that this might lead to special costs orders if found to be superfluous.

Orders