AMHC, Inc. v Australian Securities and Investments Commission

• Jurisdiction: Australia Federal only
• Judgment Date: 29 July 2022
• Neutral Citation: [2022] FCA 896
• Date: 29 July 2022
• Court: Federal Court

Federal Court of Australia

AMHC, Inc. v Australian Securities and Investments Commission [2022] FCA 896

File number(s):	NSD 503 of 2022
Judgment of:	CHEESEMAN J
Date of judgment:	29 July 2022
Date of publication of reasons:	2 August 2022
Catchwords:	CORPORATIONS – application for reinstatement of a deregistered company under s 601AH(2) of the Corporations Act 2001 (Cth) – where plaintiffs seek reinstatement for the purpose of clarifying and, if necessary, confirming chain of title to intellectual property the subject of two US patents – where deregistered company held the relevant property at an early point in time – where issue has arisen as to whether deregistered company transferred the property prior to deregistration – where separate proceedings in the US seek to challenge plaintiffs claim to title – whether the plaintiffs are persons “aggrieved” by deregistration – whether the reinstatement of the deregistered company is just – Held: application successful.
Legislation:	Corporations Act 2001 (Cth), ss 601AD, 601AH(2), 601AH(5)
Cases cited:	Amon v Raphael Tuck & Sons Ltd [1956] 1 QB 357 Bradvica v Radulovic [1975] VR 434 Corin v Patton (1990) 169 CLR 540 Deputy Commissioner of Taxation; Re James Hardie Australia Finance Pty Ltd (Deregistered) (2008) 170 FCR 545; [2008] FCA 1181 Hancock Prospecting Pty Ltd v Wright Prospecting Pty Ltd (2012) 45 WAR 29 Hogan (Liquidator) v Australian Securities and Investments Commission, in the matter of NetiveEdu Pty Ltd (Deregistered) [2021] FCA 730 In the Matter of Richards Contracting Co Management Pty Ltd (2021) 104 NSWLR 385; [2021] NSWCA 34 Lee v Parker [2020] FCA 1453 Miltonbrook Pty Ltd v Westbury Holdings Kiama Pty Ltd [2008] NSWCA 38 Olsson v Dyson (1969) 120 CLR 365 Re Garfox Pty Ltd [2019] NSWSC 442 Re Great Eastern Cleaning Services Pty Ltd [1978] 2 NSWLR 278 Workcover Authority of New South Wales v Picton Truck and Trailer Repairs Pty Ltd [2004] NSWCA 371; (2004) 51 ACSR 102 Yeo v Australian Securities and Investments Commission, in the matter of Ji Woo International Education Centre Pty Ltd (deregistered) [2017] FCA 1480
Division:	Appeal Division
Registry:	New South Wales
National Practice Area:	Commercial and Corporations
Sub-area:	Corporations and Corporate Insolvency
Number of paragraphs:	59
Date of hearing:	29 July 2022
Counsel for the Plaintiffs	Mr A Bannon SC
Solicitors for the Plaintiffs	MinterEllison
Counsel for the Defendant	The Defendant did not appear

ORDERS

		NSD 503 of 2022
BETWEEN:	AMHC, INC. First Plaintiff ; MEDIAPOINTE, INC. Second Plaintiff
AND:	AUSTRALIAN SECURITIES AND INVESTMENTS COMMISSION Defendant

order made by:	CHEESEMAN J
DATE OF ORDER:	29 July 2022

THE COURT ORDERS THAT:

1. Pursuant to s 601AH(2) of the Corporations Act 2001 (Cth), the Defendant reinstate the registration of Streaming Media Australia Pty Limited ACN 091 189 776.

2. Pursuant to s 601AH(3)(d) of the Corporations Act 2001 (Cth), that upon the reinstatement of the registration of Streaming Media Australia Pty Limited ACN 091 189 776 by the Defendant, Alfred John Stamp be removed as a director of Streaming Media Australia Pty Limited ACN 091 189 776.

3. No order as to costs.

THE COURT NOTES THAT:

1. Order 1 is made on the basis that the following resignations as directors will be effective immediately upon the reinstatement of the registration of Streaming Media Australia Pty Limited ACN 091 189 776 by the Defendant:

1. resignation as director of Streaming Media Australia Pty Limited ACN 091 189 776 of Ms Tiffany Fuller dated 14 December 2021; and

2. resignation as director of Streaming Media Australia Pty Limited ACN 091 189 776 of Mr Paul Andrew Zuber dated 12 April 2022.

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

REASONS FOR JUDGMENT

CHEESEMAN J: INTRODUCTION

1. By amended originating process filed on 21 July 2022, the plaintiffs, AMHC, Inc. (AMHC) and MediaPointe, Inc. (MediaPointe), seek an order pursuant to section 601AH(2) of the Corporations Act 2001 (Cth) that the defendant, the Australian Securities and Investments Commission (ASIC), reinstate the registration of Streaming Media Australia Pty Limited, formerly known as Notron (No 325) Pty Limited (SMA).

2. The context in which the reinstatement order is sought is as follows. The plaintiffs each lay claim (as an assignee and as a licensee respectively) to the intellectual property the subject of two United States of America patents relating to methods for distributing streamed media content over the internet, namely US 8,559,426 (First US Patent) and US 9,426,195 (Second US Patent) (together, the US Patents). The US Patents share the title “System and Method for Distribution of Data Packets Utilizing an Intelligent Distribution Network”. The US Patents take their priority date from a Patent Co-operation Treaty application filed on 11 January 2001 (PCT Application), which relied on an Australian provisional patent application titled “A Method for Distribution of Streamed Data Packets on a Switched Network Utilising an Intelligent Distribution Network”, filed on 11 January 2000 (AU Application). The plaintiffs trace their respective claims to the relevant intellectual property back to SMA, which was deregistered on 21 December 2003. There is, as will be seen below, some opacity in the early part of the chain of title relevant to the US Patents. The plaintiffs seek to reinstate SMA for the purpose of addressing that issue.

BACKGROUND

3. In two current legal proceedings in the United States, one in the District Court for the West District of Texas, and the other in the District Court of California, Microsoft Corporation (Microsoft) and Akamai Technologies Inc (Akamai) respectively have challenged the plaintiffs’ title to the US Patents (together, the US Legal Proceedings). It appears that the challenge to the plaintiffs’ title is based on the contention that SMA failed to transfer title to the relevant inventions prior to being deregistered. Microsoft and Akamai seek declaratory and injunctive relief. In the US Legal Proceedings, Microsoft and Akamai do not claim that either of them, or any other entity, have a proprietary interest in the intellectual property that is the subject of the US Patents. Rather, they seek declaratory relief to the effect that the plaintiffs do not have title to the relevant property and/or that their use does not constitute an infringement of the US Patents.

4. As mentioned, the plaintiffs seek reinstatement of SMA in order to confirm and remove any doubt as to their respective claims of title. It is proposed that upon reinstatement, SMA will execute a deed of assignment between SMA...