• INTELLECTUAL PROPERTY RIGHTS

Federal Court of Australia

Acohs Pty Ltd v. Ucorp Pty Ltd (Decided on 02.09.2010 )

Indemnity costs - Offer of compromise - Whether rejection of offer of compromise by Applicant entitled Respondents to award of indemnity costs - Whether Applicant acted unreasonably?

Held, the level of compensation which it would be just to require the Applicant to pay Respondent for the circumstance that the former obtained interlocutory restraints which obliged the latter to carry on business differently, and in a more restricted way, than would otherwise have been the case. In order to observe that restraint, Respondent found it necessary to deploy its staff (whether directly employed or contractors) on tasks which would not otherwise have been performed. Court found no reason not to value the hours thus occupied by the staff of Respondent by reference to the remuneration which they were paid. Court said no need to consider whether they would, in other circumstances, have been carrying out productive work of value to Respondent, or possibly might have been idle. The fact is that Respondent was spending part of his time performing tasks which, absent the interlocutory restraints obtained by the Applicant, would not have been done. The cost of that time, in Court's view, should be to the Applicant's account. Court allowed this item. As the Respondent claims the sums of $6,380 and $2,300 for work undertaken by staff, in connection with Respondent's compliance with the undertakings and order. They too are independent contractors engaged by Respondent, but work full-time in its business. It was submitted on behalf of the Applicant that there was no evidence that the Infosafe MSDSs scanned by Respondent were received by Respondent as HTML files. With respect to those involved, I consider this to be a somewhat disingenuous submission. The whole point of affidavit was to set out the respects in which Respondent had been subjected to exceptional costs by reason of having to comply with the undertakings and order. Court could think of no reason why Respondent would have engaged in the unnecessary step of scanning files that might otherwise have been placed into the Collection directly, by electronic means. If there were any such reason, it was not put to Respondent at the time when she was briefly cross-examined with respect to another aspect of her evidence. For the reasons given above, Court proposed to order that the Applicant pay Respondent the sum of $38,322.84 by way of compensation for the steps which it took in compliance with its obligations under the interlocutory undertakings .

Abbott GMBH & Co. KG v. Apotex Pty Ltd (Decided on 02.09.2010)

Suit for Patent  -  Whether amendments made to satisfy examiner, and represented as making a material difference to previous meaning of claims and specification, made no difference at all ?

Held, in the present proceeding, it was common ground that, as a matter of chemical definition, the words inserted by the amendment to the patent added nothing to the naming of the compound as a monohydrate. That is to say, by definition, a monohydrate is one in which one molecule of water is present for each molecule of the basic compound. The Respondent's false suggestion point proceeds from an acceptance of that proposition. It says that the letter of 14th  June 1990, by stating that, if the specification and claims were amended as proposed, "the invention is now clearly distinguishable over the admitted prior art", implied that the amendment would make a difference. The letter implied, in other words, that, whereas the previous terms of the specification and claims would not have sufficiently distinguished the invention from the British patent, the amended form would do so. The Applicants made no representation about the existence, absence or scope of the prior art, or about the nature or characteristics of the compound the subject of the proposed patent. Accepting that the Applicants claimed to have invented a monohydrate which was "substantially free of other hydrated forms", the examiner merely required a form of words in the specification and claims that would make that clear. The examiner appeared to take the view that the British patent disclosed a "hygroscopic variety" of sibutramine hydrochloride, and that this might have involved "other hydrated forms". The amendment proposed by the Applicants merely expressed in words the essence of what they had invented, such as to make it clear that the compound was free of other hydrated forms (which it was). The suggestion that this made the invention "now clearly distinguishable" over the British patent was not, in Court's view, a false one. Court rejected the Respondent's application for revocation under Section138 of the Patents Act.