Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia

• Jurisdiction: Australia Federal only
• Court: Federal Court (Australia)
• Judge: YATES J
• Judgment Date: 10 January 2020
• Neutral Citation: [2020] FCA 6
• Date: 10 January 2020

FEDERAL COURT OF AUSTRALIA

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia [2020] FCA 6

File number:	NSD 200 of 2019
Judge:	YATES J
Date of judgment:	10 January 2020
Catchwords:	PRACTICE AND PROCEDURE – application for permanent stay of patent infringement proceedings – where earlier proceeding was brought by the applicant against the first respondent for infringement of a particular but now expired patent – where current proceeding is for infringement of another patent in force at the time of the earlier proceeding – whether it was unreasonable for the applicant not to have raised claims in the earlier proceeding of infringement of the patent in suit in the current proceeding – where there is no possibility of conflicting judgments – where subject matter in the current proceeding differs in some respects from that of the earlier proceeding – where there are reasonable explanations for the applicant’s failure to raise the current allegations of infringement in the earlier proceeding – where the first respondent entered into a settlement agreement preserving the applicant’s right to bring a claim on matters related to those litigated in the earlier proceeding – no Anshun estoppel – no abuse of process – application for permanent stay dismissed ; PRACTICE AND PROCEDURE – application for permanent stay of part of proceedings – whether claims of infringement are statute-barred – where the most appropriate course is that the respondents plead a limitation defence at trial – application for permanent stay of part of proceedings dismissed ; PRACTICE AND PROCEDURE – application to strike out certain paragraphs of statement of claim – application for strike out dismissed
Legislation:	Federal Court of Australia Act 1976 (Cth), s 37AF Federal Court Rules 2011 (Cth), rr 16.21, 26.14, 34.42(3) Patents Act 1990 (Cth), s 120(4)
Cases cited:	Baxter v Obacelo Pty Ltd [2001] HCA 66; 205 CLR 635 Boles v Esanda Finance Corporation Ltd (1989) 18 NSWLR 666 Brunsden v Humphrey (1884) 14 QBD 141 Champerslife Pty Ltd v Manojlovski [2010] NSWCA 33; 75 NSWLR 245 Ford Motor Company of Australia Limited v Tristar Steering & Suspension Australia Limited [2003] FCA 596 Gibbs v Kinna [1998] VSCA 52; [1999] 2 VR 19 Henderson v Henderson (1843) 3 Hare 100; 67 ER 313 Hytera Communications Corporation Limited v Motorola Solutions, Inc [2019] FCAFC 210 Johnson v Gore Wood & Co [2002] 2 AC 1 Port of Melbourne Authority v Anshun Pty Limited (1981) 147 CLR 589 Securum Finance Ltd v Ashton [2001] 1 Ch 291 SZFOG v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1374 Tomlinson v Ramsey Food Processing Pty Limited [2015] HCA 28; 256 CLR 507 UBS AG v Tyne [2018] HCA 45; 360 ALR 184 Upaid Systems Ltd v Telstra Corporation Ltd [2013] FCA 1441; 220 FCR 182 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; 101 IPR 496
Date of hearing:	16 May 2019
Date of last submissions:	17 May 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Delete these rows - not required
Sub-area:	Delete these rows - not required
Category:	Catchwords
Number of paragraphs:	113
Counsel for the Applicant:	Mr R Cobden SC and Mr C Burgess
Solicitor for the Applicant:	Johnson Winter & Slattery
Counsel for the First Respondent:	Mr AJ Bannon SC and Ms C Cunliffe
Solicitor for the First Respondent:	Norton Rose
Counsle for the Second Respondent:	Mr A McRobert

Table of Corrections
25 August 2020	In the second sentence of paragraph 60, “from” has been inserted before “the 110 patent”.

ORDERS

		NSD 200 of 2019
BETWEEN:	VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Applicant
AND:	SARB MANAGEMENT GROUP PTY LTD TRADING AS DATABASE CONSULTANTS AUSTRALIA ACN 106 549 722 First Respondent ; CITY OF MELBOURNE Second Respondent

JUDGE:	YATES J
DATE OF ORDER:	10 JANUARY 2020

THE COURT ORDERS THAT:

1. The first respondent’s amended interlocutory application dated 6 May 2019 be dismissed.

2. The first respondent pay the costs of the applicant of and incidental to the amended interlocutory application.

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

REASONS FOR JUDGMENT

YATES J:

Introduction

1. The applicant, Vehicle Monitoring Systems Pty Limited (VMS), sues SARB Management Group Pty Limited (SARB) and the City of Melbourne (Melbourne) for patent infringement.

2. VMS alleges that, since at least October 2007, SARB has exploited vehicle detection sensor units (the PinForce Sensors) and vehicle detection systems (the PinForce Systems). The pleaded forms of exploitation are: making; offering to make; selling or otherwise disposing of; offering to sell or otherwise dispose of; supplying; using; offering to use; keeping for the purposing of doing all the aforementioned acts; and authorising local government councils (including Melbourne) to use, the PinForce Sensors and the PinForce Systems.

3. It also alleges that, amongst other things, SARB has, since at least 2009: used; offered to use; and authorised others (including Melbourne) to use the PinForce Sensors and the PinForce Systems in methods for identifying overstay of a vehicle in a parking space (the PinForce Methods).

4. VMS alleges that, since at least August 2011, Melbourne has used, and kept for the purpose of using, the PinForce Sensors and the PinForce Systems, and used them in the corresponding PinForce Method.

5. VMS alleges that these various acts infringe Patent No 2005243110 (the 110 patent), the complete specification of which was published and became open to public inspection on 24 November 2005, and Patent No 2011204924 (the 924 patent), the complete specification of which was published and became open to public inspection on 11 August 2011. Each specification is entitled “Method, apparatus and system for parking overstay detection”. In relation to SARB, VMS also alleges that it has procured, induced or joined in a common design with others to exploit the invention as claimed in the 110 patent and the invention as claimed in the 924 patent.

6. This proceeding arises against the background of proceeding NSD 395 of 2011 (the first proceeding) in which VMS sued SARB for infringement of an innovation patent, Patent No 2010101354 (the 354 patent). One of the infringing acts alleged against SARB in that proceeding was that it had exploited a product referred to as the PinForce Sentinel VDU Product, including by supplying the product to Melbourne, and had authorised Melbourne to use the product in a method for identifying the overstay of a vehicle in a parking space (referred to as the PinForce Sentinel Method).

7. The complete application for the 354 patent was filed on 2 December 2010 as a divisional application of Patent Application No 2008200089 (the parent application). The parent application was filed on 8 January 2008 as a divisional application of Patent Application No 2005243110 (the grandparent application), but lapsed on 31 July 2011. The grandparent...