Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd [1995] FCA 271

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION No VG 215 of 1994

BETWEEN: WIMMERA INDUSTRIAL MINERALS PTY LTD Applicant -and- RGC MINERAL SANDS LIMITED Respondent -and- RGC MINERAL SANDS LIMITED Cross-Claimant WIMMERA INDUSTRIAL MINERALS PTY LTD First Cross-Respondent THE COMMISSIONER OF PATENTS Second Cross-Respondent

Coram: Olney J Place: Melbourne Date: 28 April 1995

MINUTE OF ORDERS THE COURT ORDERS THAT: 1. The second cross-respondent's notice of motion filed on 8 March 1995 be dismissed. 2. The second cross-respondent pay the costs of the respondent/cross-claimant of the motion. 3. To the extent that leave may be necessary, the respondent/cross-claimant have leave to file and serve against the second cross respondent nunc pro tunc the defence and cross-claim filed on 3 November 1994 and the amended defence and amended cross-claim filed on 20 February 1995. 4. There be no order for costs on the respondent/cross-claimant's notice of motion filed on 15 March 1995.

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

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION No VG 215 of 1994

BETWEEN: WIMMERA INDUSTRIAL MINERALS PTY LTD Applicant -and- RGC MINERAL SANDS LIMITED Respondent -and- RGC MINERAL SANDS LIMITED Cross-Claimant WIMMERA INDUSTRIAL MINERALS PTY LTD First Cross-Respondent THE COMMISSIONER OF PATENTS Second Cross-Respondent Coram: Olney J Place: Melbourne Date: 28 April 1995 REASONS FOR JUDGMENT BACKGROUND By application filed on 30 June 1994 the applicant claimed against the respondent, inter alia: An injunction restraining the respondent, whether by itself, its servants or agents or otherwise howsoever during the term of Australian Petty Patent No 649,946 and any extension thereof from infringing the said patent and in particular, from manufacturing, keeping for sale, advertising for sale, offering for sale, promoting for sale or selling, or supplying or arranging or procuring or authorising the manufacture, keeping for sale, advertising for sale, offering for sale, promoting for sale or selling or supplying of synthetic rutile produced by a process as claimed in any claims of the complete specification of said patent without licence or authority of the applicant. In an amended application filed on 30 November 1994 the claim was extended to include similar relief in respect of Australian Standard Patent No 639,089. The applicant's case is pleaded in a statement of claim filed on 30 June 1994 and subsequently amended. On 3 November 1994 the respondent filed a defence and cross-claim. An amended defence and amended cross-claim was filed on 20 February 1995. The cross-claim names the applicant as the first cross-respondent and the Commissioner of Patents as the second cross-respondent. The respondent asserts that the second cross-respondent is an officer of the Commonwealth within the meaning of s 39B of the Judiciary Act 1903. The respondent's defence pleads that the petty patent and the standard patent are wholly invalid and further, in paragraph 16 pleads: 16. Further or alternatively, in answer to the whole of the allegations relating to the said Petty Patent, it says that the Petty Patent is and has at all times been wholly null and void and of no effect, and it was not lawful to grant, and the Commissioner of Patents had no power to grant, the said Petty Patent by virtue of the provisions of Section 64(2) of the Patents Act 1990 in that - (a) the complete application and specification for the said Petty Patent claimed an invention that was and is the same as an invention that is the subject of the Applicant's Australian patent No 639,089 granted on 11 May 1994; (b) the same inventors made and/or claim and are by the Applicant claimed to have made the invention claimed in the said Petty Patent and each claim thereof and the invention or an invention which is the subject of the said Patent No 639,089 and each claim or one or more claims thereof; and