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Economy of court procedures primary factor in refusal to consider summary judgment application

Deco Australia Pty Ltd v Aliwood Pty Ltd [2021] FCA 1159

by | Sep 22, 2021

Date: 22 September 2021
Court:  Federal Court of Australia
Judge: Perram J

Background

Deco Australia Pty Ltd (Deco) alleged infringement by Aliwood Pty Ltd (Aliwood) of Innovation Patent 2019101244 (Patent). Aliwood asserted that the Patent was not entitled to its claimed priority date, and lacked novelty in light of an Deco publication dated after the claimed priority date but before the date Aliwood asserted was the true priority date. Aliwood contended that both parties’ experts agreed that one specific embodiment of the claims of the patent was disclosed in a set of figures in the relevant Deco publication, and that the same set of figures also appeared in the priority document. It argued that this set of figures was not sufficient in the priority document to establish priority, but did deprive the claims of novelty when appearing in the Deco publication. According to Aliwood, the issue of the entitlement to priority was therefore case dispositive.

Aliwood had previously sought to have this issue decided as a separate question, which Perram J had refused to do. He had indicated on that occasion that he could not prevent Aliwood from filing a summary judgment application. Aliwood did so. By that stage, the evidence in the case was complete and all preparatory steps for trial had been taken other than the expert conclave and joint expert report.

Key Issues

The focus of the Court was primarily, and in the simplest terms, a consideration of whether the application would waste the Court’s time. Perram J noted that the case was ready, and set down, for trial in April 2022, but that should summary judgment be granted, Deco would surely appeal. If the appeal were successful, the matter would come back before him for trial, and by his calculations, this would mean that the trial currently set down for early 2022 would likely not take place until 2023.

Aliwood’s arguments that the summary judgment application would save costs were not persuasive since the issues were complex, particularly as they involved an application of s40 of the Patents Act 1990 (Cth) that was “new and not yet subject to appellate authority”, and the case was ready for trial but for the experts’ conclave and the joint report. Accordingly, without delving into the merits of the summary judgment application, Perram J stood the hearing of the application over to the trial. In reality, this meant that the summary judgment application would not be dealt with separately from final determination.

Implications

Australian Courts are generally reluctant to decide discrete issues ahead of trial in intellectual property cases, as this case illustrates. There are numerous examples of refused applications for preliminary questions, and US-style Markman hearings on claim construction are rare. Generally, the Court has concluded that the splitting of issues tends to prolong, rather than facilitate early determination of, IP cases.

In patent cases, reliance on expert evidence to determine most issues is further considered to make such issues unsuitable for determination without oral evidence, and multiple hearings involving oral evidence are undesirable for many reasons.

In this case, the fact that the case was already well advanced also counted against Aliwood, even though it was the filed evidence which Aliwood relied upon as establishing the basis for summary judgment.

As a general rule, summary judgment applications are unlikely to succeed in patent cases, but in any event, should be made as soon as possible during proceedings to maximise the potential time and cost savings.

Naomi Pearce

Naomi Pearce

CEO, Executive Lawyer, Patent & Trade Mark Attorney

Naomi is the founder of Pearce IP, and is one of Australia’s leading IP practitioners.   Naomi is a market leading, strategic, commercially astute, patent lawyer, patent attorney and trade mark attorney, with over 25 years’ experience, and a background in molecular biology/biochemistry.  Ranked in virtually every notable legal directory, highly regarded by peers and clients, with a background in molecular biology, Naomi is renown for her successful and elegant IP/legal strategies.

Among other awards, Naomi is ranked in Chambers, IAM Patent 1000, IAM Strategy 300, is a MIP “Patent Star”, and is recognised as a WIPR Leader for patents and trade marks. Naomi is the 2023 Lawyers Weekly “IP Partner of the Year”, the 2022 Lexology client choice award recipient for Life Sciences, the 2022 Asia Pacific Women in Business Law “Patent Lawyer of the Year” and the 2021 Lawyers Weekly Women in Law SME “Partner of the Year”.  Naomi is the founder of Pearce IP, which commenced in 2017 and won 2021 “IP Team of the Year” at the Australian Law Awards.

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