Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judgment Date: 11 March 2008
• Neutral Citation: [2008] FCA 314

FEDERAL COURT OF AUSTRALIA

Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314

PATENTS – application claiming infringement of patent – whether respondent infringed the applicant’s patent – where respondents manufactured and sold road safety barriers – whether the guard member on the road barrier is “mounted on” the barrier elements – where guard member is not connected flush to the barrier elements – where guard members are connected to barrier elements by use of brackets – where guard members are mounted on the barrier elements notwithstanding that they are proud of the surfaces of the barrier elements – where guard member need not be in direct contact with the side walls of the barrier elements – where applicant’s patent is infringed if the patent is valid

PATENTS – application claiming infringement of patent – whether respondent infringed the applicant’s patent – where respondents manufactured and sold road safety barriers – whether the guard member connected to the barrier elements “overlies the side walls of at least two adjacent barrier elements” – where guard member is not connected flush to the barrier elements – where guard member extends longitudinally over at least two barrier element side walls – where guard member need not be in direct contact with the side walls of the barrier elements – where applicant’s patent is infringed if the patent is valid

PATENTS – cross-claim claiming applicant’s patent is invalid – whether applicant’s patent is invalid by virtue of lack of novelty due to prior publication – where a US patent is identified as substantially similar – whether US patent is similar enough to constitute lack of novelty – whether there is a physical connection between reinforcing metal pipes and barrier elements – where the frame structure is securely mounted to the barrier – where the US patent anticipates the applicant’s patent – where the applicant’s patent is invalid for want of novelty

PATENTS – cross-claim claiming applicant’s patent is invalid – whether applicant’s patent is invalid by virtue of lack of inventive step – whether the applicant’s patent is invalid on the grounds that it is not a patentable invention – where the incorporation of an additional guard member to inhibit or prevent damage to interlocking barrier elements results in an invention – where the applicant’s patent is a patentable invention

PATENTS – cross-claim claiming applicant’s patent is invalid – whether applicant’s patent is invalid by virtue of lack of clarity in the patent claims – where the patent claim is sufficiently clear

TRADE PRACTICES – claim under section 52 of the Trade Practices Act – whether actions of the respondents breached section 52 – where claim deferred until determination of patent claims

Patents Act 1990 (Cth) ss 18, 40(3), 138

Trade Practices Act 1974 (Cth) ss 52, 82

Federal Court Rules Order 29 rule 2

Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 cited

Austral Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 followed

Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331 cited

Flour Oxidising Co Ltd v Carr & Co Ltd (9108) 25 RPC 428 discussed

General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) 1A IPR 121 cited

Imperial Chemicals Industries Pty Ltd v Cmr of Patents (2004) 213 ALR 399 cited

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 followed

Minnesota Mining and Manufacturing Co and 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 followed

NSI Dental Pty Ltd v University of Melbourne [2006] FCA 1216 cited

N.V. Philips Gloeilampenfabrieken v Mirabella International Pty limited (1995) 183 CLR 655 followed

Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 68 IPR 1 discussed

Ryan v Lum (1989) 14 IPR 513 followed

Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 cited

Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 followed

KINABULU INVESTMENTS PTY LTD (ACN 001 469 718) v BARRON & RAWSON PTY LTD (ACN 000 065 636), ANTHONY J CAREY AND WAY TO GO AUSSINDO PTY LTD (ACN 080 761 511)

QUD 217 OF 2005

SPENDER J

11 MARCH 2008

BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD 217 OF 2005

BETWEEN:	KINABULU INVESTMENTS PTY LTD (ACN 001 469 718) Applicant
AND:	BARRON & RAWSON PTY LTD (ACN 000 065 636) First Respondent ANTHONY J CAREY Second Respondent WAY TO GO AUSSINDO PTY LTD (ACN 080 761 511) Third Respondent

JUDGE:	SPENDER J
DATE OF ORDER:	11 MARCH 2008
WHERE MADE:	BRISBANE

THE COURT DECLARES THAT:

1. Australian Patent 774224 A barrieris, and has been at all material times, invalid,

THE COURT ORDERS THAT:

1. Australian Patent 774224 A barrier, and each and all of the claims of the complete specification thereof, be revoked.

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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD 217 OF 2005

BETWEEN:	KINABULU INVESTMENTS PTY LTD (ACN 001 469 718) Applicant
AND:	BARRON & RAWSON PTY LTD (ACN 000 065 636) First Respondent ANTHONY J CAREY Second Respondent WAY TO GO AUSSINDO PTY LTD (ACN 080 761 511) Third Respondent

JUDGE:	SPENDER J
DATE:	11 MARCH 2008
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1 This is a proceeding commenced in the Court by Application and a Statement of Claim filed on 25 July 2005, wherein the applicant claims that the respondents have infringed Patent 774224 A barrier (the Patent), which was registered by the applicant as patentee under the Patents Act 1990 (Cth) (the Act) on 10 August 2000, and having priority from 10 August 1999. The Patent is for a term of 20 years.

2 The applicant’s Patent “relates to a barrier”, primarily for application as a traffic barrier. The function of a traffic barrier, the evidence shows, is to redirect or arrest an errant vehicle safely and prevent the errant vehicle from passing through it. The purpose for doing so may be to protect the occupants of the vehicle from colliding with a roadside or other hazard or may separately or also be to prevent the errant vehicle from colliding with people working or otherwise positioned in the area behind the traffic barrier.

3 The applicant also seeks relief under s 82 of the Trade Practices Act 1974 (Cth) (the TP Act) for an alleged breach by the first and second respondents of s 52 of the TP Act.

4 In its Amended Application, filed 3 April 2006, the applicant seeks the following relief:

1 A declaration that the Respondents have infringed Australian Patent 774224 A barrier (the Patent).

2 An order that the Respondents, whether by themselves, their servants or agents, be restrained from during the term of the Patent, and any extension of it, without the licence of the Applicant, importing, manufacturing, selling, hiring or offering to sell or hire the Guardliner road safety barrier system described in the Statement of Claim (the “infringing system”).

3 Damages for infringement of the Patent or, at the Applicant’s election, an account of profits.

4 All necessary enquiries into such damages or an account of profits.

5 Delivery up to the Applicant’s Solicitors or, alternatively, destruction on oath of:-

(a) all of the components of the infringing system in the possession, custody or power of the Respondents or either of them.

(b) all brochures, flyers, catalogues, price lists and other materials promoting or marketing for sale or hire the infringing system.

6 A declaration that the conduct of the First Respondent in publishing the Guardliner advertisements in the June/July 2005 edition of ROADS magazine contravened Section 52 of the Trade Practices Act.

7 An order that the First Respondent, whether by itself, its servants or agents, be restrained from representing that the Guardliner road safety barrier system is the subject of any pending patent application.

8 An order that the First Respondent issue a public announcement to the effect that the Guardliner road safety barrier is not the subject of any pending patent application and publish corrective advertising to the same effect, such announcement and advertising to be in the form and manner directed by the Court.

9 Damages pursuant to Section 82 of the Trade Practices Act.

10 Interest under Section 51A of the Federal Court Act 1976.

11 Costs.

12 Such further or other orders as the court thinks fit.

5 The first and second respondent, in the Further Amended Defence and Cross-Claim, filed 24 August 2006, cross-claim against the applicant (cross-respondent) for:

1 A declaration that the Patent is and has been at all material times invalid.

2 An order that the Patent and each and all of the claims of the complete specification thereof be wholly revoked.

3 Costs.

4 Such further or other orders as the Court sees fit.

6 The applicant is a corporation incorporated in Australia and the Patent in question identifies an invention, described in claim 1 of the Patent as:

1. … a barrier system including:

a plurality of hollow, ballast-fillable, demountable barrier elements that are arranged end to end so as to form a barrier, each of said barrier elements having opposing side walls and opposing end portions, said end portions being adapted to combine with an opposing end portion of an adjacent barrier element to form a joint connecting adjacent barrier elements together, and

at least one thin walled, longitudinally extending, guard member that is mounted on and overlies the side walls of at least two adjacent barrier elements.

(Emphasis added)

7 The specification of the applicant’s patent acknowledges that:

Demountable traffic barriers typically include a plurality of hollow, water fillable, barrier elements which are arranged end to end and are linked by a plurality of pin joints or by interlocking end portions.

8 The specification continues:

Often the connection means...