Calidad Pty Ltd v Seiko Epson Corporation (No 2)

• Jurisdiction: Australia Federal only
• Judge: GREENWOOD, JAGOT AND YATES JJ
• Judgment Date: 27 September 2019
• Neutral Citation: [2019] FCAFC 168
• Date: 27 September 2019
• Court: Full Federal Court (Australia)

FEDERAL COURT OF AUSTRALIA

Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168

Appeal from:	Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403; 133 IPR 1
File number:	NSD 348 of 2018
Judge:	GREENWOOD, JAGOT AND YATES JJ
Date of judgment:	27 September 2019
Catchwords:	PATENTS – appropriate form of orders to give effect to the Full Court’s reasons for judgment on appeal – whether a declaration should be granted and the form of that declaration – whether injunctions should be granted and the form of those injunctions – whether it is appropriate to grant an injunction in general form
Legislation:	Copyright Act 1968 (Cth), s 85(1) Federal Court of Australia Act 1976 (Cth), s 21 Patents Act 1990 (Cth), s 125
Cases cited:	Adaptive Spectrum and Signal Alignment, Inc v British Telecommunications plc [2015] FSR 5 Apotex Pty Ltd v ICOS Corporation (No 4) [2018] FCA 1316 Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; 327 ALR 630 Coflexip S.A. v Stolt Comex Seaway MS Ltd [2001] RPC 9 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1920) 180 CLR 160 Fei Yu trading as Jewels 4 Pools v Beadcrete Pty Ltd [2014] FCAFC 117; 107 IPR 516 Hunter Pacific International Pty Ltd v Martec Pty Ltd (No 2) [2016] FCA 1041 Interflora Inc v Marks and Spencer plc (No 2) [2014] FSR 3 Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 K-Aire Pty Ltd v Polyaire Pty Ltd [2003] SASC 41 K-Aire Pty Ltd v Polyaire Pty Ltd [2007] FCAFC 192; 74 IPR 460 Lifestyle Equities CV v Sportdirect.com Retail Limited [2018] EWHC 962 (Ch) Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173 Microsoft Corporation v Marks (No 1) (1996) 69 FCR 117 Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd (No 2) [2019] FCA 1140 QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038 Specsavers International Healthcare Ltd v Asda Stores Ltd (No 2) [2012] FSR 20 Solahart Industries Pty Ltd v Solar Shop Pty Limited (No 2) [2011] FCA 780; 92 IPR 197 Sun Microsystems Inc v Amtech Computer Corp Ltd [2006] FSR 35 Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41; 150 FCR 110 Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 Welcome Real-Time SA v Catuity Inc (No 2) [2001] FCA 785
Date of hearing:	Determined on the papers
Date of last submissions:	26 July 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and Associated Statutes
Category:	Catchwords
Number of paragraphs:	53
Counsel for the Appellants/Cross-Respondents:	Mr D Shavin QC
Solicitor for the Appellants/Cross-Respondents:	Gilbert + Tobin
Counsel for the Respondents/Cross-Appellants:	Mr AJL Bannon SC, Ms CL Cochrane and Mr DB Larish
Solicitor for the Respondents/Cross-Appellants:	Allens

ORDERS

		NSD 348 of 2018
BETWEEN:	CALIDAD PTY LTD First Appellant ; CALIDAD HOLDINGS PTY LTD (ACN 002 105 502) Second Appellant
AND:	SEIKO EPSON CORPORATION First Respondent ; EPSON AUSTRALIA PTY LTD (ACN 002 625 783) Second Respondent
AND BETWEEN:	SEIKO EPSON CORPORATION (and another named in the Schedule) First Cross-Appellant
AND:	CALIDAD PTY LTD (ACN 002 758 312) (and others named in the Schedule) First Cross-Respondent

JUDGES:	GREENWOOD, JAGOT AND YATES JJ
DATE OF ORDER:	27 SEPTEMBER 2019

THE COURT ORDERS THAT:

1. The parties bring in agreed orders in conformity with these reasons.

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

REASONS FOR JUDGMENT

THE COURT:

Introduction

1. On 5 July 2019, orders were made that the appeal in this matter be dismissed and that the cross-appeal be allowed. Orders were also made to the effect that agreed or, if it be the case, competing, draft orders, otherwise reflecting the respective reasons for judgment, be filed.

2. As events have transpired, the parties have been unable to agree on the appropriate additional orders to be made. They have proposed competing draft orders and provided written submissions in support of their respective positions. The parties are content to rely on their written submissions without the need for oral argument on this particular question.

3. The parties (who, for convenience, we will simply refer to as Calidad and Seiko) have identified three significant matters in dispute concerning the form of the additional orders.

The form of declaratory relief

4. The first matter in dispute is the appropriate form of declaratory relief. Calidad accepts that declaratory relief is appropriate. This acceptance is justified given our respective findings (which were contrary to the primary judge’s findings) that the cartridges in categories 1, 2, 3, and A (referred to by the primary judge as Calidad’s current products) infringe claim 1 of Patent No 2009233643 and claim 1 of Patent No 2013219239. The only matter in dispute is whether the Court should declare that these particular infringements occurred “since April 2016”.

5. Calidad submits that this qualification is appropriate because the primary judge held that none of these cartridges were sold before April 2016. In support of this submission, Calidad relies on a table found at [73] of the primary judge’s reasons, which describes Calidad’s current products as “… all cartridges sold after April 2016”. There is a corresponding description of the cartridges in categories 4, 5, 6, 7 and B (referred to by the primary judge as Calidad’s past range of products) as “all cartridges sold before April 2016”.

6. These headings certainly support Calidad’s contention, but we are in some doubt that, by these headings alone, the primary judge was intending to make a finding that excludes the possibility that Calidad’s current products (or some subset of them) were not sold before April 2016 and that Calidad’s past range of products (or some subset of them) were not sold after April 2016.

7. Given this doubt, we see no compelling reason to specify any date range in the declaration itself. However, the categories themselves must be defined with appropriate specificity. Unfortunately, the description proposed by reference to Annexure A to the draft orders does not meet this requirement. We refer, in particular, to descriptions such as “some” Calidad cartridges and “5%” of certain Calidad cartridges. We will return to this question.

The form of injunctive relief

8. The second matter in dispute is the form of the injunctive relief that should be granted. Seiko has proposed two injunctions.

9. The first injunction that Seiko proposes has two limbs. The first limb is directed to restraining the further exploitation, or authorisation of the further exploitation, of Calidad’s current products (referred to in the proposed order as Further Infringing Cartridges). The second limb (Seiko’s...