Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2002] FCA 282

FEDERAL COURT OF AUSTRALIA

Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2002] FCA 282

PATENTS – order for revocation of a patent – order stayed pending an appeal – whether it should be a condition of the stay that the appealing party undertake to pay damages COSTS – applicant successful on some issues but not successful on others – apportionment of costs – discretion to award costs – costs of preparing evidence not used in the proceedings Atlantis Corporation Pty Ltd v Peter Schindler (unreported, 27 May 1997) considered Amalgamated Carburetters Ltd v Bowden Wire Ltd (1931) 48 RPC 105 distinguished Cincinatti Grinders Inc v BSA Tools Ltd (1931) 48 RPC 33 distinguished Westaflex (Aust) Pty Ltd v Wood (1990) 18 IPR 168 distinguished Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 40-748 applied Australian Trade Commission v Disktravel [2000] FCA 62 referred to Cretazzo v Lombardi (1975) 13 SASR 4 applied Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd [2001] FCA 1624 applied Raychem Corp's Patents [1998] RPC 31 considered Terrell on the Law of Patents 15th ed. 2000 C.I.P.A. Guide to the Patents Acts 5th ed. 2001 DORIC PRODUCTS PTY LTD v LOCKWOOD SECURITY PRODUCTS PTY LTD N 1089 OF 2000 HELY J 19 MARCH 2002 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 1089 OF 2000

BETWEEN: DORIC PRODUCTS PTY LTD

APPLICANT

AND: LOCKWOOD SECURITY PRODUCTS PTY LTD

RESPONDENT

JUDGE: HELY J

DATE OF ORDER: 19 MARCH 2002

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Subject to Order 2 below, claims 1 – 32 (inclusive) of Australian Patent No 702534 ("the Patent") be revoked. 2. Order 1 be stayed: (a) initially for a period of 28 days from the date on which these orders are pronounced; and (b) if an appeal is lodged within that period, until the determination of that appeal, or further order. 3. Note the following undertakings of the respondent to the Court during the period of the stay: (a) to prosecute the appeal expeditiously; (b) forthwith to serve on the Commissioner of Patents copies of these orders pursuant to s 140 of the Patents Act 1990 with a request that particulars of Orders 1 and 2 be registered in accordance with s 187 of that Act; (c) not to threaten any person with proceedings for infringement of claims 1 – 32 of the Patent; (d) not to seek to amend any claims of the Patent otherwise than in the course of or in connection with these proceedings. 4. The first cross-claim be dismissed. 5. To the extent necessary, grant leave to appeal to the respondent against these orders. 6. Lockwood pay 75 per cent of Doric's costs of these proceedings.