Capral Aluminium Ltd v G & J Koutsoukos Holdings Pty Ltd [2004] FCA 1199

FEDERAL COURT OF AUSTRALIA

Capral Aluminium Ltd v G & J Koutsoukos Holdings Pty Ltd [2004] FCA 1199

INTELLECTUAL PROPERTY – patents – re-examination of patent during litigation – whether directions should be made by the Court concerning materials and submissions to be provided to the Commissioner of Patents

Patents Act 1990 (Cth) s 97(3) Patents Regulations 1991 reg 9.2 CAPRAL ALUMINIUM LTD (ACN 004 213 692) v G & J KOUTSOUKOS HOLDINGS PTY LTD (ACN 009 449 012) N 850 OF 2004 MOORE J 14 SEPTEMBER 2004 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 850 OF 2004

BETWEEN: CAPRAL ALUMINIUM LTD (ACN 004 213 692)

APPLICANT

AND: G & J KOUTSOUKOS HOLDINGS PTY LTD (ACN 009 449 012)

RESPONDENT

G & J KOUTSOUKOS HOLDINGS PTY LTD (ACN 009 449 012)

CROSS-CLAIMANT

CAPRAL ALUMINIUM LTD (ACN 004 213 692)

FIRST CROSS-RESPONDENT TO THE CROSS-CLAIM

COMMISSIONER OF PATENTS

SECOND CROSS-RESPONDENT TO THE CROSS-CLAIM

JUDGE: MOORE J

DATE OF ORDER: 14 SEPTEMBER 2004

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

UPON the application of the Respondent by its Notice of Motion filed 13 July 2004 and UPON the hearing of Mr D K Catterns QC of counsel for the Applicant and Mr R J L McCormack of counsel for the Respondent and UPON reading the affidavits of Mr Errol John Harwood sworn 11 June, 9 July and 10 August 2004, respectively, it is ordered that: 1. The Respondent is granted leave to file the Amended Particulars of Objection dated 23 August 2004, as handed up to Moore J on 30 August 2004, by 6 September 2004. 2. Any further requirements for filing and service of the Amended Particulars of Objection be dispensed with. 3. The Commissioner of Patents ("Commissioner") is hereby directed to re-examine Australian Patent No. 736536 ("Patent in Suit") in accordance with law and in accordance with these orders and shall provide a written report to the Court as soon as practicable but in any event by no later than 28 October 2004. 4. In re-examining the Patent in Suit, the Commissioner is to have regard to: (i) The documents on which an assertion by the Respondent is based that the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim, is not novel and does not involve an inventive step. (ii) Any statement by the Respondent of the relevance of each of the documents mentioned in 4(i). 5. The Applicant is to elect whether it wishes to proceed with or discontinue its claim, such election to be notified in writing by the Applicant's solicitors to the Respondent's solicitors on or before 17 September 2004. 6. The documents and statement referred to in order 4 are to be provided to the Commissioner by the Respondent by no later than 28 September 2004. 7. The parties have liberty to apply on two days written notice in the event of the Applicant electing to discontinue its application in the within proceedings and/or discontinuance by the Respondent of its cross claim, should either the Applicant or the Respondent wish to make application to have the order referred to in order 3 herein recalled. 8. In the event of the Applicant electing to discontinue its claim against the Respondent, under order of the Court or pursuant to order 5 herein, the Applicant is to pay the Respondent's costs of and incidental to these proceedings save and except for those costs as thrown away by the Applicant by reasons of the Respondent's application for leave to amend its Particulars of Objection, as referred to in order 1 above, if any, for the period between 2 July 2004 and 12 August 2004 inclusive, such costs to be assessed, if not agreed, on a party-and-party basis. 9. The costs of and incidental to the Respondent's Notice of Motion be reserved, pending receipt of the Commissioner's report to the Court, pursuant to order 3 herein. 10. Proceedings be stood over for further directions at 9.30 am on 3 November 2004. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.