Vald Performance Pty Ltd v Kangatech Pty Ltd

FEDERAL COURT OF AUSTRALIA

Vald Performance Pty Ltd v Kangatech Pty Ltd [2019] FCA 1880

File number(s):

QUD 440 of 2019

Judge(s):

GREENWOOD J

Date of judgment:

13 November 2019

Catchwords:

PATENTS – consideration of the question of costs payable on the reconstitution of the proceeding having regard to the question of whether the applicant is an exclusive licensee of the patentee for the purposes of the Patents Act 1990 (Cth)

Legislation:

Federal Court of Australia Act 1976 (Cth), s 43

Patents Act 1990 (Cth), s 3, s 120(1), Schedule 1

Cases cited:

Actavis Pty Ltd v Orion Corporation [2016] FCAFC 121

Date of hearing:

12 November 2019

Date of last submissions:

12 November 2019

Registry:

Queensland

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Patents and Associated Statutes

Category:

Catchwords

Number of paragraphs:

35

Counsel for the Applicant:

Mr A Crowe QC

Solicitor for the Applicant:

Holding Redlich

Counsel for the First Respondent:

Ms H Rofe QC

Solicitor for the First Respondent:

Griffith Hack Lawyers

ORDERS

QUD 440 of 2019

BETWEEN:

VALD PERFORMANCE PTY LTD (ACN 603 446 171)

Applicant

AND:

KANGATECH PTY LTD (ACN 609 070 340)

First Respondent

QUEENSLAND UNIVERSITY OF TECHNOLOGY (ABN 83 791 724 622)

Second Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	13 NOVEMBER 2019

THE COURT ORDERS THAT:

1.The applicant in the principal proceeding pay the costs of the first respondent thrown away by reason of the amendments to the originating application and the statement of claim, due to the lack of standing issue, including the costs of the Case Management Hearing held on Tuesday, 12 November  2019, on an indemnity basis. 

2.Pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), rule 1.32 and rule 1.36 of the Federal Court Rules 2011, these orders and the reasons for judgment in support of these orders are made and published from Chambers. 

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

GREENWOOD J:

1. These proceedings are concerned with a short point which arises out of a Case Management Hearing held in the matter yesterday morning. 

2. In the proceeding, the applicant (“Vald”) seeks relief against the first respondent (“Kangatech”) in the form of a declaration that Kangatech has infringed particular claims of the patent in suit; injunctions in relation to contended infringing conduct; damages and other relief.  All relief is sought against Kangatech. 

3. The second respondent is the Queensland University of Technology (“QUT”).  At the commencement of the proceeding, the QUT was the registered proprietor of the patent in suit. 

4. By its statement of claim, Vald asserts that by a Licence Agreement dated 16 December 2014, the QUT granted an entity called QUTbluebox Pty Ltd (“QUTBB”) an exclusive licence to commercialise the patent, and by a licence dated 19 December 2014, QUTBB granted Vald an exclusive licence to commercialise the patent in suit for a period of 20 years from 19 December 2014. 

5. By its defence,…