FEDERAL COURT OF AUSTRALIA Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (trading as Database Consultants Australia) [2012] FCA 420 Citation: Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (trading as Database Consultants Australia) [2012] FCA 420 Parties: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 v SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 File number(s): NSD 395 of 2011 Judge: YATES J Date of judgment: 24 April 2012 Catchwords: PRACTICE AND PROCEDURE – patent infringement suit – validity of claims in dispute – application for adjournment in the course of the trial to adduce additional evidence Held: application refused Cases cited: Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 Date of hearing: 24 April 2012 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 15 Counsel for the Applicant: Mr R Cobden SC and Mr JS Cooke Solicitor for the Applicant: Spruson & Ferguson Lawyers Counsel for the Respondent: Mr NR Murray and Ms K Beattie Solicitor for the Respondent: Norton Rose Australia IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 395 of 2011 BETWEEN: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Applicant AND: SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 Respondent JUDGE: YATES J DATE OF ORDER: 24 APRIL 2012 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The respondent's application for an adjournment be refused. Note: Settlement and entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 395 of 2011 BETWEEN: VEHICLE MONITORING SYSTEMS PTY LIMITED ACN 107 396 136 Applicant AND: SARB MANAGEMENT GROUP PTY LTD (T/A DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 Respondent JUDGE: YATES J DATE: 24 APRIL 2012 PLACE: SYDNEY REASONS FOR JUDGMENT (REVISED FROM TRANSCRIPT) 1 This is the second day of the hearing of a patent infringement suit in which the issue of the validity of the claims is a substantial, and in some respects the principal, issue. 2 The patent relates to methods and apparatus for identifying the overstay of a vehicle in a parking space. The respondent's product, which is said to infringe certain of the claims of the patent, is identified as the PinForce Sentinel VDU product (the Sentinel product). The applicant supplies a competing product as the Parking Overstay Detection System (the PODS product). 3 The respondent alleges that the claims of the patent are invalid on a number of grounds, one of which is that the invention as claimed is not a patentable invention because it is not novel. 4 A significant issue in the proceeding is the correct priority date of the claims. The applicant's patent was filed on 2 December 2010 as a divisional application under s 79B of the Patents Act 1990 (Cth). The patent claims priority from a provisional patent application filed on 17 May 2004. The applicant claims that that is the correct priority date at which the validity of the claims must be determined. The respondent claims that the correct priority date is 2 December 2010, being the date on which the application for the patent was made. 5 In its particulars of invalidity dated 7 June 2011, the respondent pleads in paragraph 3(c) that if the priority date of the patent is 2 December 2010 then, in relation to its challenge to validity on novelty grounds, it relies on information made publicly available through the doing of a number of acts. 6 One of those acts is the manufacture, sale and offering for sale of the Sentinel product in Australia from about October 2007, and the use of that product from about that date. It makes that allegation on the premise, which it does not accept, that the Sentinel product infringes claims 2, 4 and 5 of the patent, and that its use infringes claims 1 and 3. 7 The respondent also relies on the fact that the applicant has manufactured, sold and offered for sale the PODS product in Australia from at least 2004, and that that product has been used in a method for identifying overstay of a vehicle in a parking space, at least from that year. 8 It is apparent from the foregoing that it has been an aspect of the respondent's case from at least 7 June 2011 that the disclosure of the Sentinel product from October 2007 and the disclosure of the PODS product from 2004 are important features of its case on invalidity. 9 During the course of opening yesterday I was addressed on the issue of the correct priority date. There is an issue between the parties as to who bears the onus of proving that date. I can put that particular matter to one side for present purposes. It was suggested yesterday by counsel for the applicant that I be provided with a note on the applicant's position as to the determination of the correct priority date. That note was provided to me this morning. 10 Paragraphs 25 and 26 of the note are the cause for an adjournment application now made by the respondent. The substance of paragraphs 25 and 26 of the note is that the applicant will submit that, regardless of the precise priority date of claims, on the presently anticipated state of the evidence, the respondent will not establish that the use of the Sentinel product from October 2007 and the use of the PODS product from 2004 will amount to "enabling disclosures". 11 In that connection the applicant submits that the respondent will not establish that any such disclosure would "enable the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery without the need to carry out further experiments in order to arrive at that point": Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581-582; Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 at [124]. 12 I leave aside the question whether it is necessary to establish an "enabling disclosure" in order to show that the claims lack novelty. That requirement is clearly a matter of dispute between the parties. The point of present significance is that the respondent says that it was not aware that the question of "enabling disclosure" would be an issue in the proceeding. It seeks an adjournment of approximately one week in order to adduce evidence of what was disclosed by the manufacture, sale and offering for sale of the Sentinel product and its use from about October 2007. 13 The present proceeding was set down for hearing some considerable time ago. It has been set down for the present week, which will occupy four hearing days, in light of the public holiday tomorrow. It is important that the case conclude in a timely way in light of other commitments of the Court, which have also been in place for some considerable time, based on the anticipated length of hearing of the current case. It is absolutely critical to my mind that the evidence conclude in the course of this week. If that is not done, then it will be, in a practical sense, necessary for the matter to stand over for a significant period of time. I do not propose to allow that to happen. I am not inclined to grant the adjournment that is sought. 14 It is clear from the particulars that were filed on 7 June 2011 that it was an important aspect of the respondent's case that information was made publicly available through the manufacture, sale and offering for sale of the Sentinel product and its use from about October 2007, and the manufacture, sale and offering for sale of the PODS product and its use from 2004. The burden of proof of those matters has at all times rested on the respondent. Whatever assumptions it may have made about what would be necessary for it to discharge that burden, the fact is that at no time has it received any concession from the applicant that the case, as sought to be made by the respondent in that regard, would result in invalidity of the claims on the ground of lack of novelty. Thus, if it has proceeded on any misapprehension, it is not one that can be put at the feet of the applicant. Therefore, I refuse to grant the adjournment that has been sought. 15 Having said that, I am aware that Mr Toal from the respondent will be giving evidence on Friday. At that time I will entertain whatever application the respondent may seek to make to lead evidence from Mr Toal as to what was made available publicly through the manufacture, sale or offering for sale of the Sentinel product or its use from about October 2007. I should indicate that, on the basis that that evidence would be reasonably confined, I would be favourably disposed to allow it to be given. However, I do not have a final view on the matter, and whether such leave would be granted will depend on the circumstances existing at the time any such application might be made and after hearing further from the parties on that matter. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. Associate: Dated: 24 April 2012