VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd - [2009] FCA 593

FEDERAL COURT OF AUSTRALIA
VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2009] FCA 593
PATENTS – standard patent – whether a direction should be given to the Commissioner under s 97(3) of the Patents Act 1990 (Cth) to re-examine the patent in suit – whether Commissioner’s report under s 100 of the Act will reduce cost of proceeding and expedite its determination – application dismissed
Patents Act 1990 (Cth) ss 97, 98, 99, 100, 101
Emperor Sports Pty Ltd v Commissioner of Patents (2005) 146 FCR 159 cited
Termite Tite (NZ) No 2 Ltd v Term-Seal (Aust) Pty Ltd (2007) 74 IPR 16 cited
VIP PLASTIC PACKAGING PTY LTD v B.M.W. PLASTICS PTY LTD; and B.M.W. PLASTICS PTY LTD (ACN 006 358 934); VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705)
VID 680 of 2008
KENNY J
2 JUNE 2009
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 680 of 2008

BETWEEN:
VIP PLASTIC PACKAGING PTY LTD
Applicant

AND:
AND BETWEEN:
AND:

B.M.W. PLASTICS PTY LTD
Respondent

B.M.W. PLASTICS PTY LTD (ACN 006 358 934)
Cross-Claimant

VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705)
Cross-Respondent

JUDGE:

KENNY J

DATE OF ORDER:

2 JUNE 2009

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.The motion, notice of which was originally dated 8 May 2009, be dismissed.
2.The respondent/cross-claimant pay the costs of the motion of the applicant/cross-respondent.

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

The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 680 of 2008

BETWEEN:
VIP PLASTIC PACKAGING PTY LTD
Applicant

AND:
AND BETWEEN:
AND:

B.M.W. PLASTICS PTY LTD
Respondent

B.M.W. PLASTICS PTY LTD (ACN 006 358 934)
Cross-Claimant

VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705)
Cross-Respondent

JUDGE:

KENNY J

DATE:

2 JUNE 2009

PLACE:

MELBOURNE

REASONS FOR JUDGMENT
INTRODUCTION

VIP Plastic Packaging Pty Ltd commenced this original proceeding by an application and statement of claim filed on 28 August 2008, claiming to be the registered owner of Australian Standard Patent No 2001235262, entitled “Variable-length dip tube for a fluid transfer container”. The complete specification for the patent was published and became open for inspection on 3 September 2001. VIP Plastic alleged that B.M.W. Plastics Pty Ltd has infringed the patent in suit.
In an amended defence and cross-claim filed on 26 February 2009, B.M.W. Plastics denied infringement and, in its cross-claim, alleged that the patent in suit was invalid. B.MW. Plastics sought an order that the patent be revoked pursuant to s 138 of the Patents Act1990 (Cth). In its particulars of grounds of invalidity, B.M.W. Plastics alleged that the patent in suit and its claims were invalid on the grounds of lack of novelty and lack of inventive step, as well as various other grounds.
VIP Plastic denied that the patent in suit was invalid.
This is an application by the respondent/cross-claimant, B.M.W.…

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.

Continue reading VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd

Details

AGLC: VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd [2009] FCA 593
Case: [2009] FCA 593
Decision Date: 2 June 2009

CaseChat Overview and Summary

In the Federal Court of Australia, VIP Plastic Packaging Pty Ltd (VIP Plastic) initiated legal proceedings against B.M.W. Plastics Pty Ltd (B.M.W. Plastics), challenging the validity of certain patents held by B.M.W. Plastics. The dispute centred around issues of patent infringement and validity, with VIP Plastic asserting that the patents were invalid due to lack of novelty and inventive step. B.M.W. Plastics, in response, sought to expedite the resolution of these issues by requesting a re-examination of the patents by the Commissioner under section 100 of the relevant legislation, arguing that this process would be more efficient and cost-effective.

The primary legal issue before the court was whether it should order a re-examination of the patents by the Commissioner, as requested by B.M.W. Plastics, or proceed directly with the existing proceedings. VIP Plastic opposed the re-examination, contending that it would not necessarily expedite the resolution of the case and could potentially introduce additional complexities. The court had to weigh the potential benefits of a re-examination against the uncertainties and possible additional costs it might entail.

The court considered the arguments presented by both parties and concluded that the re-examination by the Commissioner would not necessarily expedite the proceedings or reduce costs. It highlighted that the Commissioner’s report is not binding and would require the court to still make independent determinations on the issues of novelty and inventive step. Moreover, the court noted that both parties anticipated the need for additional evidence and expert testimony on various other issues, irrespective of the Commissioner's findings. Given these considerations, the court was not persuaded that a re-examination would be the most efficient or cost-effective approach. Consequently, the court declined to make the order sought by B.M.W. Plastics and dismissed the motion.

The court ordered that B.M.W. Plastics pay the costs of the motion, reflecting its decision that the re-examination request was not warranted under the circumstances. This outcome underscores the importance of carefully considering the potential impact of re-examination on the overall efficiency and cost of patent litigation.

Orders

Orders of the court

1. The motion, notice of which was originally dated 8 May 2009, be dismissed.

2. The respondent/cross-claimant pay the costs of the motion of the applicant/cross-respondent.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

KENNY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: KENNY J

VIP Plastic submitted that the Commissioner’s report on re-examination would be likely to raise further issues for debate and resolution. Moreover, the Commissioner’s report would not be apt to resolve the remaining claims of invalidity and infringement.CONSIDERATION I agree with the applicant/cross-respondent that Termite Tite does not support the view that a report after re-examination necessarily provides litigation economies: see Termite Tite 74 IPR at 27-28 [50]-[51]. I doubt that the provision of a report by the Commissioner after re-examination would reduce the cost of this proceeding and expedite its determination. First, the Commissioner’s report after re-examination is not binding on the Court. In the absence of an undertaking of the kind sought by B.M.W. Plastics from VIP Plastic, the provision of a report under s 100 will not necessarily relieve the Court of the task of deciding the issues of novelty and lack of inventive step by reference to the admissible evidence. If the Commissioner’s report were unfavourable to VIP Plastic, it would desire to put on evidence and dispute the report. There may be additional issues for the Court to determine if it receives such a report. Further, both parties said that, regardless of the lack of novelty and inventive step grounds, there will be a need for evidence, including expert evidence, to be adduced before the Court on various other issues. In the circumstances, I am not persuaded that re-examination by the Commissioner would be most expeditious or reduce costs. Moreover, it does not seem that the anticipated trial will be a particularly lengthy or complex one. In these circumstances, I decline to make the order sought by B.M.W. Plastics. I would order that B.M.W. Plastics pay the costs of the motion.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 680 of 2008

JUDGE:	KENNY J
DATE OF ORDER:	2 JUNE 2009
WHERE MADE:	MELBOURNE

JUDGE:	KENNY J
DATE:	2 JUNE 2009
PLACE:	MELBOURNE