Southern Cross Mining Services Pty Ltd v Mickala Mining Maintenance Pty Ltd [2020] FCA 1064

FEDERAL COURT OF AUSTRALIA

Southern Cross Mining Services Pty Ltd v Mickala Mining Maintenance Pty Ltd [2020] FCA 1064 File number(s): QUD 470 of 2019

Judge(s): GREENWOOD J

Date of judgment: 27 July 2020

Catchwords: INTELLECTUAL PROPERTY – consideration of an application for leave to amend a statement of cross-claim in support of a notice of cross-claim seeking an order for revocation of the patent in suit- consideration of whether the cross-claimant is to have leave to rely upon, as a ground of lack of novelty, a demonstration of an apparatus at a Field Day before the priority date by a third party in circumstances where the cross-claimant cannot say whether the apparatus exists and the patentee does not know whether it will have an opportunity to examine the apparatus to test the claims of disclosure of the essential integers of the patent in suit by reason of the demonstration PATENTS – consideration of whether the cross-claimant is to have leave to rely upon, as a ground of revocation, a claim that the invention as claimed was "secretly used" before the priority date of the claims – consideration of the elements of a claim based on the secret use ground – consideration of whether the ground requires "deliberate concealment" as an essential element of the cause of action – consideration of whether the proposed pleading pleads material facts which if proved give rise to a cause of action

Legislation: Acts Interpretation Act 1901 (Cth) s 15AA Patents Act 1990 (Cth) ss 40, 122 Federal Court Rules 2011 (Cth) r 16.53

Cases cited: Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue (2009) 239 CLR 27 Application by Isentia Pty Limited [2020] ACopyT 2 Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52 Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 Bristol-Myers Co v Beecham Group Ltd [1974] AC 646 CIC Insurance Limited v Bankstown Football Club Limited (1997) 187 CLR 384 Commissioner for Railways (NSW) v Agalianos (1955) 92 CLR 390 Commissioner of Taxation v Consolidated Media Holdings Ltd (2012) 250 CLR 503 Coretell Pty Ltd v Australian Mud Company Pty Ltd (2017) 250 FCR 155 Lacey v Attorney-General for the State of Queensland (2011) 242 CLR 573 Melbourne v Terry Fluid Controls Pty Ltd (1993) 26 IPR 292 Morgan v Seaward (1837) 2 M & W 544; 150 ER 874 Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 SZTAL v Minister for Immigration and Border Protection (2017) 262 CLR 362 Thiess v Collector of Customs (2014) 250 CLR 664 Wilson v Anderson (2002) 213 CLR 401 Windsurfing International Inc v Petit (1983) 3 IPR 449