Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Federal Court (Australia)
• Judgment Date: 13 September 2019
• Neutral Citation: [2019] FCAFC 162
• Date: 13 September 2019

FEDERAL COURT OF AUSTRALIA

Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162

Appeal from:	Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839
File number:	NSD 98 of 2019
Judges:	KENNY, ROBERTSON AND MOSHINSKY JJ
Date of judgment:	13 September 2019
Catchwords:	PATENTS – construction – where claims in suit comprised method claims and system claims for core sample orientation – where the method in claim 1 involved two timers, one in the downhole device and one on the surface – whether the primary judge erred in his construction of the patent – whether, on the true construction of claim 1, it required both the downhole timer and the surface timer to count with reference to the same initial reference time – whether the word “beyond” meant no more than “after” or “later than” – appeal dismissed
Legislation:	Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) Patents Act 1990 (Cth), s 40 Patents Regulations 1991 (Cth)
Cases cited:	Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 Davies v Lazer Safe Pty Ltd [2019] FCAFC 65 Dincel Construction System Pty Ltd v AFS Systems Pty Ltd (2018) 360 ALR 273 Fei Yu (t/as Jewels 4 Pools) v Beadcrete Pty Ltd (2014) 107 IPR 516 H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 Martin v Scribal Pty Ltd (1954) 92 CLR 17 Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 Ransburg Co v Aerostyle Ltd [1968] RPC 287 Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (2011) 119 IPR 194 Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Date of hearing:	22 and 23 May 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Category:	Catchwords
Number of paragraphs:	149
Counsel for the Appellants:	Ms K Howard SC with Mr A Fox
Solicitor for the Appellants:	Watermark Intellectual Property Lawyers
Counsel for the Respondents:	Mr C Dimitriadis SC with Ms F St John
Solicitor for the Respondents:	Gilbert and Tobin

ORDERS

		NSD 98 of 2019
BETWEEN:	GLOBALTECH CORPORATION PTY LTD (ACN 087 281 418) First Appellant ; GLOBALTECH PTY LTD (ACN 086 012 393) Second Appellant
AND:	AUSTRALIAN MUD COMPANY PTY LTD (ACN 009 283 416) First Respondent ; REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD (ACN 124 204 191) Second Respondent

JUDGES:	KENNY, ROBERTSON AND MOSHINSKY JJ
DATE OF ORDER:	13 SEPTEMBER 2019

THE COURT ORDERS THAT:

1. The appellants’ application for leave to amend their notice of appeal be dismissed.

2. The appeal be dismissed.

3. The appellants pay the respondents’ costs of the appeal (including the costs of the appellants’ interlocutory application for leave to appeal (and an extension of time in which to seek leave to appeal) dated 1 February 2019), as agreed or assessed.

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

REASONS FOR JUDGMENT

THE COURT:

Introduction

1. The first respondent, Australian Mud Company Pty Ltd, is the registered owner of a patent titled, “Core Sample Orientation”, being Australian Standard Patent Application No. 2010200162 C1 (the Patent). The second respondent, Reflex Instruments Asia Pacific Pty Ltd (Reflex Instruments Asia) is the exclusive licensee of the Patent. We will refer to Australian Mud Company Pty Ltd and Reflex Instruments Asia Pacific Pty Ltd together as AMC.

2. In the proceeding at first instance, AMC claimed that the appellants, Globaltech Corporation Pty Ltd and Globaltech Pty Ltd (together, Globaltech), had infringed claims in the Patent. The claims in suit were claims 1-4, 7-10, 16-17, 21-24, 27-28 and 65 (described in the Patent as method claims) and claims 33-40, 46-48, 54 and 65 (described as system claims) (the claims in suit). The Globaltech tools that were alleged to infringe the claims in suit are known as Orifinder tools. They consist of two components, known as an Oritool and an Oripad. There are, and have been, various versions of the Orifinder tool. The versions of the Orifinder tool that were, at first instance, alleged to infringe the claims in suit are known as the Orifinder v3A, the Orifinder v3B and the Orifinder v5 respectively. On appeal, only the Orifinder v5 is relevant.

3. At first instance, Globaltech filed a cross-claim challenging the validity of the claims in suit on a number of grounds.

4. Before trial, the primary judge made an order that issues of liability be heard and determined before issues of the quantum of any relief.

5. The version of the Patents Act 1990 (Cth) and the Patents Regulations 1991 (Cth) that is relevant is that in force prior to the ‘Raising the Bar’ amendments passed in 2012: see the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).

6. The major issues in the infringement action at first instance concerned the construction of the claims in suit. The construction issues were also relevant to certain of the validity arguments. The primary judge resolved the construction issues in AMC’s favour. It followed that Globaltech’s Orifinder tools infringed the claims in suit and that, to the extent that Globaltech’s validity arguments depended on the construction issues, those arguments were rejected. The primary judge also rejected the other grounds upon which Globaltech contended that the Patent was invalid.

7. Globaltech appeals from part of the judgment of the primary judge. Globaltech challenges the primary judge’s approach to construction of the claims in the Patent and his conclusion that the Orifinder v5 infringed the claims in suit. Globaltech contends that, if the primary judge had properly construed the claims, in the manner identified by Globaltech, the primary judge would have found and held that the Orifinder v5 did not infringe the Patent. Globaltech also contends that the primary judge erred in finding and holding that the claims were clear, and in finding and holding that the claims were fairly based.

8. For the reasons that follow, in our view no error is shown in the primary judge’s construction of the claims in suit. It follows that no error is shown in the primary judge’s conclusion that the Orifinder v5 infringed the claims in suit. We also reject the other grounds raised by Globaltech on appeal....