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Successful patentee not required to amend patent to reflect adverse findings in respect of certain claims before obtaining relief for infringement

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.

Solicitors acting for financers and lenders in financing transactions must take care to avoid nasty surprises after settlement

Co-authored by Andrew Kirby and Kieran Hickie: The Court of Appeal has affirmed the importance of solicitors acting for mortgagees to ensure payout figures and settlement instructions provided to settlement agents are accurate. Following settlements of refinancing transactions, an outgoing mortgagee will not necessarily be prevented from asserting that settlement funds are insufficient to finalise settlement. Rather, they may demand the return of a discharge of mortgage handed over at settlement on the basis the borrower has not complied with its obligation to pay out the registered mortgagee in full.

Guarantors as ‘privies’ of a principal debtor – can they be bound by a decision of a Court in circumstances where they are not a party to litigation?

Co-authored by Andrew Kirby and Kieran Hickie: Guarantors commonly have some association or relationship with a principal debtor. If proceedings are taken against a principal debtor, but not a guarantor, resulting in a binding judgment, the Victorian Supreme Court has recently held that in subsequent proceedings against a guarantor, the guarantor is not a ‘privy’ of the principal debtor and therefore is not bound by the determination of issues in the earlier proceeding.

Western Australia Senate election declared void

In Australian Electoral Commission v Johnston [2014] HCA 5, the High Court, sitting as the Court of Disputed Returns, answered questions of law in a way which led to the election of WA Senators to the Commonwealth Parliament being declared void.

Automatic set-off is not that automatic

The decision is significant because it confirms that a payment of a dividend to a creditor does not necessarily extinguish the company’s claim for the balance in fact owing to it.

Administrators establish power of sale over patent rights held in trust, but not without Court supervision

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from Neobev Pty Ltd v Bacchus Distilleries Pty Ltd (Administrators Appointed) [2014] FCA 4, where the assignee of certain rights to an invention used to manufacture clean skin spirits obtained a declaration in the Federal Court that the registered proprietor of the corresponding patent held that patent on trust for itself and the applicant as co-owners in equity.

Pre-action discovery application difficult to stomach for potential respondent to patent infringement action

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. AstraZeneca is the patentee of a proton pump inhibitor marketed in Australia as NEXIUM as a treatment for gastric reflux and other stomach acid problems. In late 2013, it sought and obtained pre-action discovery of certain documents submitted by Alphapharm to the Therapeutic Goods Administration in relation to a product, NOXICID, that treats similar conditions. By the present application, AstraZeneca sought pre-action discovery of other documents submitted to the TGA and supporting documentation, and delivery of samples of various NOXICID products.

Respondent’s prior product demonstrations of a competing article sufficient to destroy novelty of most of the claims in the patent in suit

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. The applicants (Damorgold) were the owner and exclusive licensee of a patent for a spring assisted blind mechanism, which had a priority date of 25 August 1999. The issue of the licensee’s right to relief was stayed. Damorgold claimed that JAI Products had infringed a suite of claims of the patent and JAI Products asserted the patent was invalid. In the end, Middleton J found two claims infringed and valid.

Swimwear manufacturer’s use of prior copyright works for “inspiration” steps over the line into infringement.

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. This was a claim of copyright infringement brought by Seafolly in respect of three artistic works printed on fabric used to manufacture various of Seafolly’s swimwear and beachwear. It alleged that certain artwork of a similar nature used by the respondent (trading as City Beach) on its products reproduced a substantial part of those works and that reproduction was not the result of independent creation.