FEDERAL COURT OF AUSTRALIA Vringo Infrastructure, Inc. v ZTE (Australia) Pty Ltd [2013] FCA 1152 Citation: Vringo Infrastructure, Inc. v ZTE (Australia) Pty Ltd [2013] FCA 1152 Parties: VRINGO INFRASTRUCTURE, INC. v ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428) File number: NSD 1010 of 2013 Judge: YATES J Date of judgment: 4 November 2013 Catchwords: PATENTS – application to amend patent – clerical errors introduced into claims in course of earlier application to amend patent Legislation: Patents Act 1990 (Cth) ss 102, 104, 105 Date of hearing: 4 November 2013 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 6 Counsel for the Applicant: Mr D Shavin QC with Ms CL Cochrane Solicitor for the Applicant: Allens Counsel for the Respondent: Mr NR Murray Solicitor for the Respondent: Davies Collison Cave Law IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1010 of 2013 BETWEEN: VRINGO INFRASTRUCTURE, INC. Applicant AND: ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428) Respondent JUDGE: YATES J DATE OF ORDER: 4 NOVEMBER 2013 WHERE MADE: SYDNEY BY CONSENT, THE COURT ORDERS THAT: 1. Under s 105(1) of the Patents Act 1990 (Cth), leave be granted to the applicant to amend Patent No. 2005212893 in accordance with Annexure A to the interlocutory application dated 17 July 2013. 2. The applicant pay the costs of the respondent of and incidental to the interlocutory application. 3. Paragraph 5 of the orders made on 22 August 2013 be vacated. 4. The parties serve any lists of proposed categories of documents for discovery by 25 November 2013. 5. The parties agree on categories of documents for discovery or, to the extent that they do not agree, file any application for discovery in relation to the disputed categories, by 16 December 2013. 6. By 31 March 2014 or 15 weeks after any applications made pursuant to paragraph 5 of these orders are finally determined by the Court, whichever is later, the parties make discovery of all documents in the categories agreed or ordered. 7. Time be extended to the respondent to 18 November 2013 to respond to the applicant's notice to admit dated 28 October 2013. 8. The proceeding be fixed for further directions on a date no earlier than the date for compliance with paragraph 6 of these orders. The parties are to approach the Associate to Yates J for the purpose of fixing the date and time of the next directions hearing. Note: 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 1010 of 2013 BETWEEN: VRINGO INFRASTRUCTURE, INC. Applicant AND: ZTE (AUSTRALIA) PTY LTD (ACN 110 578 428) Respondent JUDGE: YATES J DATE: 4 NOVEMBER 2013 PLACE: SYDNEY REASONS FOR JUDGMENT (REVISED FROM TRANSCRIPT) 1 By interlocutory application dated 17 July 2013, the applicant has applied to amend Patent No. 2005212893. The amendments relate to claims 9 and 20. The applicant relies on the affidavits of Christopher John Bird affirmed 9 August 2013, Christopher John Bird affirmed 17 July 2013, and Sarah Louise Matheson sworn 17 July 2013. 2 The present application is made to correct clerical errors introduced into claims 9 and 20 in the course of an earlier application for leave to amend the complete specification of the patent under s 104 of the Patents Act 1990 (Cth) (the Act). Those amendments were allowed by the Commissioner on 17 May 2013. Subsequent to those amendments being allowed, it came to Mr Bird's attention that those amendments included certain clerical errors. On 11 June 2013, the applicant commenced this proceeding. Prior to that time, the applicant informed the Commissioner of the clerical errors that had been made. It made a further request for leave to amend the patent under s 104 of the Act. On 31 May 2013, the Commissioner informed the applicant that its amendment request to correct the clerical errors was valid and would be allowed. 3 However, because of the intervention of the commencement of this proceeding, the application for amendment before the Commissioner could not proceed to completion and the applicant has been required to approach the Court under s 105 of the Act to permit the amendment. In making this application, the applicant has complied with s 105(3) of the Act, which requires notice of the application to be given to the Commissioner who is entitled to appear and be heard. The Commissioner stated in a letter dated 25 July 2013 that she does not intend to exercise any right to appear and be heard. 4 The respondent has been informed of the amendment and does not oppose the amendment. Indeed, it has consented to an order being made allowing the amendment. There has been no third party opposition to the present application. 5 I am satisfied on the material before me that the errors sought to be corrected are truly clerical errors. So far as claim 9 is concerned, the error was to incorporate an integer of claim 10 into claim 9 in lieu of the correct paragraph which commenced with the same opening words. So far as claim 20 is concerned, the error is trivial and simply relates to the capitalisation of the first word of the first integer of that claim. 6 In the present case, s 102(3)(a) of the Act applies, namely, that the preceding provisions of s 102 of the Act do not apply for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification. I am satisfied that it is appropriate that the complete specification be amended as sought by the applicant. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. Associate: Dated: 5 November 2013