Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 5) [2024] FCA 58

FEDERAL COURT OF AUSTRALIA

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd (No 5) [2024] FCA 58 File number: NSD 1089 of 2016

Judgment of: BESANKO J

Date of judgment: 20 February 2024

Catchwords: PATENTS — where liability heard and determined before relief — where respondents found to have infringed patent — determination of the quantum of pecuniary relief — where applicants elected to claim damages for Orifinder Tools used in Australia and elected to claim an account of profits for Orifinder Tools exported from Australia — whether the "split" election is valid — where s 122(1) of the Patents Act 1990 (Cth) refers to the option of either damages or an account of profits — whether the right to elect arises in relation to each and every infringement — held that the "split" election is valid DAMAGES — where experts agree on the overall methodology for approaching calculation of damages but where there are specific contested issues that relate to the underlying assumptions — whether contingencies identified by the respondents mean there should be a discount — consideration of Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183; (2018) 267 FCR 428 — consideration of the appropriate utilisation threshold which triggers the manufacture of additional ACT Tools — whether the cost of manufacturing additional ACT Tools should include optional components — whether 80 converted tools should be taken into account in assessing the lost profits claim by way of lost rental opportunities in 2015 — whether the 80 tools form part of or are in addition to the 412 tools for the purpose of assessing the lost profits claim by way of rental opportunities from 1 January 2016 to April 2019 — whether the manufacture and supply of Orifinder v3B Tools in 2012 were lost opportunities PATENTS — account of profits — whether losses made by respondents in periods should be excluded from profit calculations — whether there are profits earned by the respondents in Laos, Indonesia and New Zealand which should be taken into account — whether discount should be made to take account of tax related contingencies — whether interest should be calculated on the profits minus amounts paid by way of taxation