Wimmera Industrial Minerals Pty Ltd (ACN 004 302 139) v RGC Mineral Sands Limited (ACN 008 763 666) and RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Limited and the Commissioner Of Patents - [1997] FCA 693

FEDERAL COURT OF AUSTRALIA

PATENTS - Infringement proceeding - Application to court to amend specification - Notice to produce documents - Application to set aside - Patentee's duty of disclosure on application to amend - Relevance of non-disclosure to exercise of court's discretion to allow amendment - Documents relevant to duty of disclosure - Privileged documents - Disclosure on application to amend - Whether notice to produce an abuse of process - Subpoenas to non parties to produce documents - Whether to be set aside.

Patents Act, 1990 ss40(2), (3), 114, 115, 200.

Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561
Chevron Research Company's Patent [1970] RPC 58
Hsiung's Patent [1992] RPC 497
Bentley Engineering Co Ltd's Patent [1981] RPC 361
Terrell on Patents 14th ed (1994)
Commissioner for Railways v Small (1938) 38 SR (NSW) 564
Finnie v Dalglish [1982] 1 NSWLR 400
Re Excel Finance Corporation (1993) 41 FCR 346
Lucas Industries Ltd v Hewitt (1978) 45 FLR 174
Universal Press Pty Ltd v Provest Ltd (unreported, 14 July 1989)

WIMMERA INDUSTRIAL MINERALS PTY LTD (ACN 004 302 139) v RGC MINERAL SANDS LIMITED (ACN 008 763 666) and RGC MINERAL SANDS LIMITED v WIMMERA INDUSTRIAL MINERALS PTY LIMITED and THE COMMISSIONER OF PATENTS
VG 215 of 1994

SUNDBERG J
MELBOURNE
30 JULY 1997

IN THE FEDERAL COURT OF AUSTRALIA )
)

VICTORIA DISTRICT REGISTRY ) No VG 215 of 1994
)

GENERAL DIVISION )

BETWEEN:WIMMERA INDUSTRIAL MINERALS PTY LTD (ACN 004 302 139)
Applicant

and

RGC MINERAL SANDS LIMITED (ACN 008 763 666)
Respondent

AND:RGC MINERAL SANDS LIMITED

Cross-Claimant

and

WIMMERA INDUSTRIAL MINERALS PTY LIMITED
First Cross-Respondent

and

THE COMMISSIONER OF PATENTS
Second Cross-Respondent

JUDGE:SUNDBERG J
PLACE:MELBOURNE
DATED:30 JULY 1997

MINUTES OF ORDER

THE COURT ORDERS THAT:

The motions notices of which are dated 26 and 27 June 1997 be dismissed.

The applicant pay the respondent's taxed costs of the applicant's motion notice of which is dated 26 June 1997 in so far as it pertains to the notice to produce.

Chemistry Centre of Western Australia, the Mineral Processing Laboratory and Brian O'Brien pay the respondent's taxed costs of their motions notices of which are dated 27 June 1997.

Griffith Hack & Co and Michael Hollitt pay the respondent's taxed costs of their motions notices of which are dated 27 June 1997.

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

IN THE FEDERAL COURT OF AUSTRALIA )
)

VICTORIA DISTRICT REGISTRY ) No VG 215 1994
)

GENERAL DIVISION )

BETWEEN:WIMMERA INDUSTRIAL MINERALS PTY LTD (ACN 004 302 139)
Applicant

and

RGC MINERAL SANDS LIMITED (ACN 008 763 666)
Respondent

AND:RGC MINERAL SANDS LIMITED

Cross-Claimant

and

WIMMERA INDUSTRIAL MINERALS PTY LIMITED
First Cross-Respondent

and

THE COMMISSIONER OF PATENTS
Second Cross-Respondent

JUDGE:SUNDBERG J
PLACE:MELBOURNE
DATED:30 JULY 1997

REASONS FOR JUDGMENT

APPLICATION TO AMEND SPECIFICATION

In the course of this infringement proceeding the applicant has applied to amend…

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 Wimmera Industrial Minerals Pty Ltd (ACN 004 302 139) v RGC...

Details

AGLC: Wimmera Industrial Minerals Pty Ltd (ACN 004 302 139) v RGC Mineral Sands Limited (ACN 008 763 666) and RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Limited and the Commissioner Of Patents [[1997]] FCA 693
Case: [1997] FCA 693
Decision Date: 30 JULY 1997

CaseChat Overview and Summary

The proceedings involved two parties, Wimmera Industrial Minerals Pty Ltd and RGC Mineral Sands Limited, which engaged in a dispute over patent infringement. The case was heard in the Federal Court of Australia. The dispute centred around several motions, including an application by Wimmera to amend the specification of a patent, a notice to produce documents, and applications to set aside these notices. The central legal issues for the court to determine were whether Wimmera's duty to disclose relevant information on an application to amend the patent specification extended to privileged documents, and whether the notice to produce documents was an abuse of process. Additionally, the court had to decide if subpoenas issued to non-parties to produce documents should be set aside.

The court held that Wimmera had a duty to disclose all documents relevant to the amendment of the patent specification, including those that were privileged. This duty was not limited to documents that would be relevant to the merits of an infringement action. The court reasoned that the duty of disclosure was broad and aimed to ensure that the patent specification accurately reflected the invention. The non-disclosure of privileged documents was relevant to the exercise of the court's discretion to allow the amendment. The court found that the notice to produce documents was not an abuse of process, as it was reasonably necessary to determine the validity of the patent. Regarding the subpoenas to non-parties, the court determined that they should not be set aside as they were necessary to obtain relevant information.

The court dismissed the motions related to the application to amend the patent specification, the notice to produce documents, and the applications to set aside. The court ordered Wimmera to pay the costs of the motion notice dated 26 June 1997, and ordered several parties to pay the costs of their respective motions notices dated 27 June 1997. This decision underscored the importance of the duty of disclosure in patent proceedings and the court's willingness to enforce it rigorously.

Orders

Orders of the court

1. The motions notices of which are dated 26 and 27 June 1997 be dismissed.

2. The applicant pay the respondent's taxed costs of the applicant's motion notice of which is dated 26 June 1997 in so far as it pertains to the notice to produce.

3. Chemistry Centre of Western Australia, the Mineral Processing Laboratory and Brian O'Brien pay the respondent's taxed costs of their motions notices of which are dated 27 June 1997.

4. Griffith Hack & Co and Michael Hollitt pay the respondent's taxed costs of their motions notices of which are dated 27 June 1997.

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

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.