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Carpark Saga Reaches Finale

by , | Jun 3, 2024

 

Date:

Body:

Adjudicator:

 

1 May 2024

Federal Court of Australia – Full Court

BURLEY, JACKSON AND DOWNES JJ

This is the second Federal Court decision of 2024 stemming from a dispute between the parties dating back to 2019. The earlier decision was reported here. This case revolves around two patents AU2005243110 (AU110) and AU2011204924 (AU924) owned by Vehicle Monitoring Systems Pty Ltd (VMS), which claim a method designed to detect vehicle overstay.  In March 2023, Justice Besanko held that both of these patents were infringed by SARB’s vehicle detection system Pinforce Versions 1 and 2, while Pinforce Version 3 only infringed AU110.  SARB appealed this decision and in February 2024, the Full Federal Court partially overturned Justice Besanko’s decision on the basis that Version 3 was not covered by AU110’s claims.

The Full Court has now made final orders to give effect to its February 2024 decision.

Setting Aside Previous Orders

The Full Court in its decision of February 2024 held that Version 3 did not infringe AU110.  In view of this, SARB applied to the Court to lift the permanent injunctions which the primary judge had originally put in place in June 2023.

The permanent injunctions prevented SARB from selling Version 1 and Version 2, and also:

  1. stopped SARB from manufacturing and selling Version 3; and
  2. stopped Melbourne City (who was also a party to the proceedings) from using Version 3.

The Full Court amended these orders by removing all references to Version 3.

Despite SARB’s request, the Court did not lift the permanent injunctions in respect of Version 1 and Version 2.  SARB had argued that the permanent injunctions should be lifted in respect of all versions including Version 1 and Version 2 for the following reasons:

  1. Negligible Infringement Risk

SARB argued that Versions 1 and 2 posed negligible infringement risk so the permanent injunctions had no utility. The Court considered it not was in a position to determine this issue on the material before it, and considered that this issue should have been (but was not) raised during the appeal.

  1. Patents Lapsing

Both AU110 and AU 924 had lapsed as they were not renewed in time.  However, VMS had already filed an extension of time to pay the renewal fees and was anticipating that its request would be granted in 2-3 months’ time. The Court noted that once the extension of time request had been determined, it was open to the parties to approach the Court for a variation of the permanent injunction orders.

Costs

As SARB had won the substantive appeal, it argued that costs should follow the event, and that in this case, both VMS and its litigation funder, Balance Rev Ltd, should be held liable for SARB’s costs.  The Court agreed, and ordered that costs be paid on a lump sum basis.

 

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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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Helen is a member of the Intellectual Property Committee of the Law Council of Australia, as well as a member of the Intellectual Property Society of Australia and New Zealand.

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