Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (No 4) [2021] NSWSC 1618

Supreme Court New South Wales

Medium Neutral Citation: Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (No 4) [2021] NSWSC 1618 Hearing dates: 6 December 2021 Decision date: 14 December 2021 Jurisdiction: Equity - Commercial List Before: Ball J Decision: (1) Declare that the second, seventh, eighth and ninth defendants have engaged in conduct that is misleading and deceptive in contravention of s 18 of the Australian Consumer Law by falsely representing that one or more of them have rights in relation to one or more of the patents listed in Schedule 1 (the Patents). (2) Declare that the second, fifth, eighth and ninth defendants do not have any ownership interest in or in respect of the Patents whether legal or beneficial. (3) Declare that the second, fifth, eighth and ninth defendants do not have any licence to use, permit the use of, or otherwise utilise the rights in respect of, the Patents. (4) Declare that the second plaintiff is the beneficial and legal owner of the Patents and is exclusively entitled to bring proceedings for past, current and future infringements of the Patents. (5) The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that any of them or the ninth defendant have a licence to use, permit the use of, or otherwise utilise any of the rights in respect of, the Patents. (6) The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that the second plaintiff does not have a licence to use, permit the use of, or otherwise utilise all of the rights in respect of, the Patents. (7) The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that any of them or the ninth defendant have any ownership interest or rights in respect of the Patents. (8) The second, fifth, seventh, eighth and ninth defendants, whether by themselves, their servants or agents, be restrained from representing or asserting that the second plaintiff is not the owner of the Patents. (9) The second, fifth, seventh, eighth and ninth defendants, by themselves, their servants or agents, be restrained from instructing or purporting to instruct any patent attorneys to communicate with any patent registries or patent regulatory authorities in which they assert or represent that they represent a licensee, owner or registered patent holder of the Patents. (10) The cross-claim be dismissed with costs. (11) The second, fifth, seventh, eighth and ninth defendants pay the plaintiffs' costs of and incidental to the relief sought in paragraphs 1 to 4 and 6 to 8 of the Further Amended Summons. Catchwords: CONSUMER LAW — Misleading or deceptive conduct — Whether certain of the defendants engaged in misleading or deceptive conduct EQUITY — Equitable remedies — Injunctions — Whether certain of the defendants ought to be restrained from claiming ownership of certain patents Legislation Cited: Australian Consumer Law Corporations Act 2001 (Cth) Patents Act 1900 (Cth) Cases Cited: Charter Pacific Corporation Ltd v Securicom (NSW) Pty Ltd [2018] NSWSC 1246 Charter Pacific Corporation Limited v Securicom (NSW) Pty Limited (in liq) (No 3) [2020] NSWSC 1067 Category: Principal judgment Parties: Charter Pacific Corporation Limted (First Plaintiff) CPC Patent Technologies Pty Ltd (Second Plaintiff) Securicom (NSW) Pty Limited (In Liquidation) (First Defendant) Christopher John Burke (Second Defendant) Microlatch Pty Ltd ACN 059 640 747 (In Liquidation) (Third Defendant) Microlatch Limited (UK Company Number 08625097) (Fourth Defendant) CJ Burke Nominees Pty Ltd (Fifth Defendant) Gary Fyvie (Seventh Defendant) Microlatch Technologies Pty Ltd (Eighth Defendant) Microlatch Limited (HK CR No 0876776) (Ninth Defendant) Representation: Counsel: R Alkadamani with T Krayem (Plaintiffs)