Welcome Real-Time SA v Catuity Inc (No 2)

Welcome Real-Time SA (the applicant) brought proceedings against Catuity Inc and others (the respondents) in the Federal Court of Australia, claiming infringement of claims in Australian Patent 712925, which relates to a smart card system. The applicant sought declarations of infringement and an injunction against the respondents from continuing their infringing activities. The respondents did not oppose the declarations but argued for a narrower injunction than that proposed by the applicant. The primary issue before the court was the appropriate form of the injunction to be granted in a patent infringement case.

The court held that the applicant was entitled to an injunction restraining all acts of infringement, not just those specifically proven at trial. It emphasised that a patent owner, having established the validity of their patent and its infringement, is generally entitled to an injunction in the usual form, which restrains the defendant from infringing the patent. The court referenced the English Court of Appeal decision in Coflexip SA v Stolt Comex Seaway MS Ltd, which supported the view that the standard form of injunction in patent cases is appropriate. The court concluded that the injunction should be broad enough to protect the patentee’s statutory monopoly as defined in the patent claims, as construed by the court.

Consequently, the court granted the applicant’s requested declarations of infringement and ordered an injunction against the respondents from infringing the patent, effective from specific dates. The injunction against the CiT Transcard system was to commence on 17 October 2001, allowing the respondents time to wind down that system. The court also ordered the respondents to provide financial details to assist the applicant in electing between damages and an account of profits. The cross-claim was dismissed, and the respondents were ordered to pay the applicant’s costs.