Chamberlain Group, Inc v Giant Alarm System Co, Ltd

Introduction 1 The applicants seek leave pursuant to r 10.43 of the Federal Court Rules 2011 (Cth) (FCR) to serve the originating application filed on 25 May 2017, on the first respondent, Giant Alarm System Co, Ltd, which is a company located in the People's Republic of China (PRC). 2 The first applicant, The Chamberlain Group, Inc., is registered as the owner of three patents: Australian Patent Number 2006200340 (the 340 patent); Australian Patent Number 2007203558 (the 558 patent); and Australian Patent Number 2006202850 (the 850 patent). 3 The second applicant says that it is the exclusive licensee of the rights granted by the patents. 4 The applicants allege that the first respondent has infringed each patent by acts of direct exploitation and by authorising others to exploit the patents. 5 The specification filed in respect of the 340 patent is entitled "Method and apparatus to facilitate transmission of ternary movable barrier operator information". The invention involves the conversion of ternary data into a binary format which is then transmitted to or from a movable barrier operator, such as would be used for a garage door. This conversion is a form of encryption which makes the underlying code more difficult to detect. 6 Claim 28 of the 340 patent is: An apparatus comprising at least one of a moveable barrier operator and a device that communicates with a movable barrier operator, comprising: - a first memory having ternary data to be transmitted as between the movable barrier operator and the device that communicates with a movable barrier operator; - a ternary-to-binary converter being operably coupled to the first memory and having a binary data output; - a transmitter operably coupled to the binary data output configured and arranged to externally transmit a binary-formatted version of the ternary data to one of the movable barrier operator and the device that communicates with the movable barrier operator. 7 The specification filed in respect of the 558 patent is entitled "Method and apparatus to facilitate transmission of an encrypted rolling code". A rolling code is an encryption method which involves the transmission of a code which changes over time, according to a pre-determined plan or algorithm. The benefit of rolling codes is that they prevent third parties using interception to detect the code with a view to using it in the future. 8 Claim 21 of the 558 patent is: An apparatus comprising: a first memory having a fixed value stored therein; a second memory having an encrypted rolling code stored therein; a first lookup table that correlates a first plurality of different encrypted rolling code values with corresponding differing data bit order patterns; a second lookup table that correlates a second plurality of different encrypted rolling code values with corresponding differing data inversion patterns; a processor that is operably coupled to the first and second memory and the first and second lookup table and that is configured and arranged to use the encrypted rolling code to select ones of the particular data bit order patterns and data inversion patterns to provide selected patterns; a transmitter operably coupled to the first and second memory and to the processor and being configured and arranged to transmit at least a part of the encrypted rolling code and the fixed value using the selected patterns as transmission characteristics. 9 The specification filed in respect of the 850 patent is entitled "Method and apparatus to facilitate message transmission and reception using different transmission characteristics". The invention claimed in this patent concerns the encoding of transmission data where a "recovery identifier" identifies for a receiver a set of "transmission characteristics" which are used for an encrypted message. A transmitter sends the recovery identifier in a fixed format, followed by the message content, encoded according to a selected scheme. The recovery identifier can be changed at random before each message or according to a pre-determined plan. 10 Claim 12 of the 850 patent is: An apparatus comprising: a transmitter capable of various selectable types of transmission, wherein the various selectable types of transmission differ from one another as a function, at least in part, of corresponding transmission characteristics, and wherein the transmitter is configured to transmit a joint message comprising a message content transmitted according to a selected at least one of the transmission characteristics, selected based at least in part on at least a portion of the message content, and with at least one specific recovery content indicator transmitted according to at least one different transmission characteristic, the at least one specific recovery identifier configured to allow a receiver to configure itself in response to receipt of the joint message to receive the message content of the joint message, wherein a plurality of recovery content indicators each individually has at least a portion that corresponds to a given corresponding one of the transmission characteristics; and a joint message formatter having an input operably coupled to receive the message content and the plurality of recovery content indicators and having a joint message output operably coupled to the transmitter and configured to output both the message content and the at least one specific recovery content indicator as corresponds to a presently selected at least one of the transmission characteristics. 11 Claim 48 is: A portable movable barrier remote control transmitter comprising: a transmitter configured to communicate with a movable barrier operator, and capable of various selectable types of transmission, wherein the various selectable types of transmission differ from one another as a function, at least in part, of corresponding transmission characteristics, and wherein a plurality of recovery content indicators individually has at least a portion that corresponds to a given corresponding one of the transmission characteristics; and a joint message formatter having an input operably coupled to receive message content and the plurality of recovery content indicators and having a joint message output operably coupled to the transmitter to provide a joint message comprising both the message content and the at least one specific recovery content indicator as corresponds to a presently selected at least one of the transmission characteristics selected based at least in part on at least a portion of the message content, wherein the joint message is configured to allow a receiver to configure itself in response to receipt of the joint message according to the presently selected at least one of the transmission characteristics to allow the receiver to receive the message content of the joint message.

The Legal Framework 27 Rule 10.43 of the FCR provides that service of an originating application on a person in a foreign country is effective for the purpose of a proceeding if the Court has given leave under r 10.43(2) before the application is served. Rule 10.43(2) provides that a party may apply to the Court for leave to serve an originating application on a person in a foreign country in accordance with a convention, the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters done at the Hague on 15 November 1965 (the Hague Convention), or the law of the foreign country. Here, service under the Hague Convention is sought. Rule 10.43(3) sets out certain procedural requirements: see below at [37]. 28 Rule 10.43(4) provides: For subrule (2), the party must satisfy the Court that: (a) the Court has jurisdiction in the proceeding; and (b) the proceeding is of a kind mentioned in rule 10.42; and (c) the party has a prima facie case for all or any of the relief claimed in the proceeding. Note 1: The law of a foreign country may permit service through the diplomatic channel or service by a private agent - see Division 10.5. Note 2: Rules 10.63 to 10.68 deal with service of local judicial documents in a country, other than Australia, that is a party to the Hague Convention. Note 3: The Court may give permission under subrule (4) on conditions - see rule 1.33. 29 Rule 10.42 sets out, in tabular form, the kinds of proceeding for which an originating application may be served on a person in a foreign country. In the present case, the applicants rely on the following items of the table: 1 (proceeding based on a cause of action in Australia); 4 (proceeding based on a tort committed in Australia); 5 (proceeding based, or seeking the recovery of damage, suffered wholly or partly in Australia caused by a tortious act or omission wherever occurring); 15 (proceeding for any relief or remedy under an Act); 20 (proceeding properly brought against a person who is served in Australia if properly joined as a party); 21 (proceeding in which the subject matter is property in Australia); and 23 (proceeding seeking an injunction ordering a person to refrain from doing something in Australia). 30 In Australian Competition and Consumer Commission v Yellow Page Marketing BV [2010] FCA 1218 at [25], Gordon J said: 25 The requirement to demonstrate a prima facie case in this context is not particularly onerous. The question is whether on the material before the Court, inferences were open which, if translated into final findings of fact, would support the relief claimed. A prima facie case exists, provided there is such evidence, even on a hearsay basis, as to sufficient elements of the proceeding leading to any (and not necessarily all) of the relief sought: Bray v F Hoffman-La Roche Ltd (2003) 130 FCR 317 at [39], [55], [58] and [97]. 31 In Ho v Akai Pty Ltd (in liq) [2006] FCAFC 159 ; (2006) 247 FCR 205 at [10], the Full Court said: 10 As has been observed on many occasions, the prima facie case requirement has to be met at the outset, usually on an ex parte basis, and without the advantage of discovery and other procedural aids to the making out of a case: see e.g. Merpro Montassa Ltd v Conoco Specialty Products Inc (1991) 28 FCR 387 at 390. It "should not call for a substantial inquiry": WSGAL Pty Ltd v Trade Practices Commission (1992) 39 FCR 472 at 476; see also Sydbank Soenderjylland A/S v Bannerton Holdings Pty Ltd (1996) 68 FCR 539 at 549. For present purposes it is sufficient to say that a prima facie case for relief is made out if, on the material before the court, inferences are open which, if translated into findings of fact, would support the relief claimed: Western Australia v Vetter Trittler Pty Ltd (in liq) (1991) 30 FCR 102 at 110. Or, to put the matter more prosaically as Lee J did in Century Insurance (in provisional liquidation) v New Zealand Guardian Trust [1996] FCA 376: "What the Court must determine is whether the case made out on the material presented shows that a controversy exists between the parties that warrants the use of the Court's processes to resolve it and whether causing a proposed respondent to be involved in litigation in the Court in Australia is justified." 32 These observations were adopted by Collier J in Bell v Steele [2011] FCA 1390; (2011) 198 FCR 291 at [21] when considering r 10.43(4)(c). 33 In Vringo at [41], I observed that: 41 In considering whether a prima facie case has been established, it is not the task of the Court to reach a definitive conclusion as to the accuracy of the facts advanced by the parties or to express any preference for competing accounts. The question is whether the evidence supports the facts for which the party seeking leave contends: Caterpillar Inc v John Deere Ltd (1999) 48 IPR 1 at [31].

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