Neurizon Pty Ltd v Jupiters Limited [2004] FCA 1278

FEDERAL COURT OF AUSTRALIA

Neurizon Pty Ltd v Jupiters Limited [2004] FCA 1278 NEURIZON PTY LIMITED v JUPITERS LIMITED, JUPITERS MACHINE GAMING PTY LIMITED, EASTERN SUBURBS LEAGUES CLUB LIMITED, WYNNUM MANLY LEAGUES CLUB LIMITED AND QUEENSLAND LIONS SOCCER CLUB Q 44 OF 2003 DOWSETT J 7 SEPTEMBER 2004 BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q 44 OF 2003

BETWEEN: NEURIZON PTY LIMITED

APPLICANT

AND: JUPITERS LIMITED

FIRST RESPONDENT

JUPITERS MACHINE GAMING PTY LIMITED

SECOND RESPONDENT

EASTERN SUBURBS LEAGUES CLUB LIMITED

THIRD RESPONDENT

WYNNUM MANLY LEAGUES CLUB LIMITED

FOURTH RESPONDENT

QUEENSLAND LIONS SOCCER CLUB

FIFTH RESPONDENT

JUDGE: DOWSETT J

DATE: 7 SEPTEMBER 2004

PLACE: BRISBANE

REASONS FOR JUDGMENT 1 The present applicant has now successfully defended its patent on two occasions, each involving a lengthy trial. Yet it is still being denied the monopoly to which it has established its entitlement. None of that excludes the possibility that either or both of the decisions may be incorrect. There is no appeal in respect of the first. However the second, which is relevant for present purposes, is subject to appeal. I will be taking such steps as I can to expedite the hearing of that appeal, hopefully so that it can be heard in November. 2 The applicant's present motion is designed to enforce an undertaking given by the respondents following the judgment in this matter at first instance. The undertaking is to refrain from infringing conduct described by reference to the integers of the patent. The respondents submit that the conduct which the applicant now seeks to restrain reflects a particular proposal which was advanced in the course of evidence at the trial. I will refer to it as "Mr Spencer's proposal". It arose out of the evidence of a witness of that name. It is said that her Honour concluded that such conduct would not infringe. The respondents submit that her Honour's conclusion raises an issue estoppel on that question. They also assert that their conduct does not infringe the patent in any event, and (perhaps more out of courtesy to me than anything else, as I raised the point) that the undertaking should not be construed as extending to conduct which reflects Mr Spencer's proposal. 3 I am not impressed by the respondents' submission that their conduct does not infringe the patent, nor by the assertion of an issue estoppel. Having considered this patent in some detail myself, I hold the tentative view that the respondents' conduct infringes in a way which is, to some extent, concealed. I am also inclined to doubt that there can be an issue estoppel in this case in connection with Mr Spencer's proposal. These views suggest that there is no defence to the applicant's assertion of infringement of the patent and the undertakings. However the presence in the reasons for judgment of the matters addressed at [161] and her Honour's apparent conclusion that Mr Spencer's proposal would not infringe the patent raise doubts about the intended extent of those undertakings. As a matter of common sense it seems most unlikely, speaking objectively, that the parties intended that the undertakings extend to Mr Spencer's proposal, given her Honour's views. If so, the undertaking may not reflect the true intention of the parties. I turn to the balance of convenience. 4 It is important that more than lip-service be paid to the fact that the applicant has vindicated its patent and therefore should be protected against any erosion of the value of its monopoly. On the other hand, the respondents have entered into contracts with third parties, and it would be undesirable to disrupt those contractual arrangements on an interlocutory basis. I consider that the interests of both sides can be adequately accommodated in a way which, in effect, the parties have themselves formulated in the course of argument. The respondents offer an undertaking, the exact form of which has been dictated into the record and should appear in the order in this matter in due course. I will not presently rehearse it. They offer further undertakings to keep appropriate records of moneys derived by them as a result of the licence agreements into which they have already entered, which agreements are said to infringe the patent. The applicant offers the usual undertaking as to damages. That is an appropriate basis for disposing of this matter on an interlocutory basis. The parties should produce a draft order in due course, reflecting the undertakings. I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.