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[2019] FCA 1606
plaintiff. Application granted; first respondent restrained by permanent injunction from specified acts of infringement in Australia; first respondent ordered to pay first applicant's costs; leave to...
An American maker of garage-door openers sued a Chinese factory for selling copycat remote controls that infringed three Australian patents. The Chinese company was properly served under international rules but simply ignored the case: no defence, no address for service, no appearances. The judge ruled that, because the court papers set out a clear case of infringement and the company had been given enough time to respond, judgment could be entered without a trial. The Chinese company is now banned from selling the offending remotes in Australia, directly or through others, for the life of the patents, and must pay the successful patent owner's legal costs.
AI-generated legal information, not legal advice. Zoe can make mistakes. Check the cited source, and for advice about your situation consult a qualified Australian lawyer.
2,388 words · generated 24/04/2026
The Chamberlain Group, Inc and its Australian subsidiary sued Giant Alarm System Co, Ltd (a Chinese manufacturer) and several Australian distributors for infringing three patents: Australian Patent No 2006200340, Australian Patent No 2006202850 and Australian Patent No 2007203558. These patents protect a fixed-message encryption system known as the Security +2.0 Algorithm, which allows a receiver in a movable barrier (such as a garage door opener) to authenticate a transmitted code and activate the barrier only if the message decrypts correctly.
2 cited instruments linked from this judgment.
On 8 December 2017 the Court granted leave to serve the originating application and statement of claim on Giant in the People's Republic of China under the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (the Hague Convention). Service was effected on 29 January 2019. A certificate of attestation confirming that service had been carried out in accordance with Article 5 of the Convention by a method prescribed by Chinese domestic law was filed on 4 May 2019.
Giant took no steps in the proceeding. It did not file a defence within the 28 days required by r 16.32 of the Federal Court Rules 2011 (Cth), did not appear at the case management hearing on 31 May 2019, and failed to file a notice of address for service by the date ordered on that day. On 28 June 2019 the applicants filed an interlocutory application seeking default judgment. That application and supporting affidavits were served by the substituted-service method previously ordered. Giant again did not appear at the hearing on 4 September 2019.
Yates J was satisfied that a certificate of service in due form under r 10.66 had been filed, that the requirements of r 10.70 were met, and that Giant was in default within the meaning of r 5.22. His Honour further held that, on the face of the statement of claim, the first applicant had pleaded the elements necessary to establish infringement and its entitlement to an injunction under s 122(1) of the Patents Act 1990 (Cth) and to costs. The second applicant's pleaded case, however, was insufficient to show it had standing to sue. Default judgment was therefore given against Giant, the precise form of injunction sought was made, costs were ordered, and the applicants were given leave to discontinue the remainder of the proceeding with no further order as to costs.
Yates J began from the proposition that the power to enter default judgment is discretionary and must be exercised cautiously because it gives the applicant complete success without any investigation of the merits ([13]). Nevertheless, the discretion does not require proof that the default was intentional or contumelious, nor that it caused inordinate delay. What mattered was that Giant had committed multiple clear defaults: failure to file a defence, failure to appear at two hearings, failure to file a notice of address for service, and failure to appear on the default-judgment application itself ([3], [17]). These steps demonstrated an unwillingness to cooperate with the Court and the other parties ([19]).
The procedural hurdles imposed by r 10.70 because of overseas service were separately addressed. The filed certificate was in accordance with Part 2 of Form 25, had been completed by a Chinese certifying authority, and stated that service had been effected by a method prescribed by Chinese internal law for domestic proceedings. That satisfied r 10.70(2)(a). The certificate also established that service occurred on 29 January 2019; 42 days had therefore elapsed by the time any defence was due, satisfying the “sufficient time” requirement in r 10.70(2)(b) and (3) ([15]-[16]).
Once those gateway conditions were cleared, the substantive test under r 5.23(2)(c) was whether, on the face of the statement of claim, the first applicant was entitled to the relief claimed. Yates J noted that this test does not require the applicant to prove its case by evidence; the pleaded facts are taken as admitted ([14]). The statement of claim pleaded that Giant had manufactured and supplied aftermarket remotes capable of transmitting a fixed message that a Security +2.0 receiver would decrypt and act upon, thereby infringing claim 28 of the 340 patent, claim 21 of the 558 patent and claims 12 and 48 of the 850 patent. It further pleaded that the first applicant was the patentee and entitled to injunctive relief. Those allegations were sufficient. By contrast, the allegations concerning the second applicant were not ([18], [21]).
Additional comfort was drawn from the fact that, when leave to serve out was granted in 2017, the Court had already been satisfied that a prima facie case of infringement existed in respect of the same claims and that Giant had authorised the Australian respondents to exploit infringing products ([20]). While that material was not strictly necessary, it reinforced the conclusion that the pleaded case was not fanciful.
The injunction ultimately granted was framed in conventional terms restraining Giant from entering supply agreements in Australia, authorising others to import, market or sell the “Giant Infringing Remote”, and from otherwise infringing any of the patents. The defined term “Giant Infringing Remote” tied the restraint directly to the pleaded technology, ensuring the order was no wider than the entitlement established on the pleadings.
Prior to this judgment the principles governing default judgment against a foreign respondent served under the Hague Convention were established in a line of Full Court and single-judge decisions, principally Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146; 161 FCR 513 and the earlier first-instance decision in the same matter. Those authorities made clear that r 5.23(2)(c) requires the Court to be satisfied “on the face of the statement of claim” that the applicant is entitled to the relief, that the pleaded facts are taken as admitted, and that no evidentiary proof of the claim is required provided the pleaded case is not altered by additional evidence. The cautious approach to the discretion was emphasised in ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577.
The Hague-specific overlay in r 10.70 had been the subject of comparatively little appellate consideration. This judgment is one of the clearer expositions of how a certificate in due form under r 10.66 operates as prima-facie proof of compliant service and of the temporal requirements in r 10.70(3). It confirms that, once a compliant certificate is filed and the respondent has not appeared, the Court may proceed to default judgment if the other conditions are met.
After the judgment the law remained substantially the same because Yates J applied rather than altered existing doctrine. The decision does, however, illustrate the practical interplay between the patent-specific injunctive power in s 122(1) of the Patents Act 1990 (Cth) and the procedural default rules. It also underscores that a corporate patentee must plead its own standing with sufficient precision; a bare assertion that a related company is “the applicant” will not suffice if the statement of claim does not link that company to the patentee’s rights.
At [14] the Court states: “Rule 5.23(2)(c) requires the Court to be satisfied that the applicant is entitled to the relief claimed in the statement of claim. This requirement has been interpreted as meaning that the Court must be satisfied that ‘on the face of the statement of claim’ the applicant is entitled to the relief that is claimed. It is not a requirement that the applicant prove its claim by way of evidence. Put another way, the facts alleged in the statement of claim are taken to have been admitted.”
Plain-English translation: The judge does not hold a mini-trial. If the court papers tell a coherent legal story that, if true, would entitle the applicant to win, that is enough. Everything the applicant has written in the statement of claim is treated as if the respondent had admitted it.
At [13]: “The power to give judgment against a defaulting party is undoubtedly discretionary. The discretion must be exercised cautiously. Where the defaulting party is a respondent to a pleaded claim, the giving of judgment for final relief on the application will deliver complete success to the applicant without investigation of the merits of the pleaded claim.”
Plain-English translation: Entering judgment without a trial is a serious step. The judge must be careful, but once the procedural boxes are ticked the respondent cannot complain that its side of the story was never heard.
At [16]: “In the absence of evidence to the contrary, the certificate stands as sufficient proof that the originating application and the statement of claim were served on the first respondent on 29 January 2019: see r 10.68.”
Plain-English translation: A properly completed international service certificate is good evidence of service. If the respondent wants to argue it never received the documents it must put on sworn evidence to that effect; otherwise the certificate is accepted at face value.
At [18]: “I am satisfied that the statement of claim pleads, as against the first respondent, the necessary elements to establish that: (a) the first respondent has infringed the patents; and (b) the first applicant is entitled to the injunctions it seeks as well as an award of costs.”
Plain-English translation: The paperwork alleged that Giant made and supplied copycat remotes that worked with Chamberlain’s patented system and that Chamberlain itself owned the patents and could ask for an injunction. That was enough to win on paper.
This decision is triggered whenever an Australian patentee (or exclusive licensee with standing) has served an overseas manufacturer under the Hague Convention, the manufacturer fails to file a defence or appear, and the statement of claim contains clear allegations that the foreign respondent has exploited the patented invention in Australia or authorised others to do so. The precedent is particularly apt where the infringing product is a relatively simple aftermarket device (such as a remote control) whose technical operation can be pleaded by reference to a defined algorithm or protocol.
The case also applies to any situation in which a due-form certificate of service has been filed and more than 42 days have elapsed since service. It is not limited to patent cases; the procedural analysis would apply equally to trade-mark, copyright or consumer-protection claims against foreign entities. However, the patent-specific injunction under s 122(1) makes the decision a useful template for intellectual-property practitioners seeking to restrain ongoing importation or supply.
A critical trigger is the absence of any contradictory evidence from the respondent. Once the certificate is filed and defaults are proven by affidavit, the Court will not speculate about possible defences the respondent might have raised had it appeared.
Although the source judgment itself does not record subsequent treatment, it has been cited for the orthodox propositions that default judgment requires satisfaction “on the face of the statement of claim” and that a Hague Convention certificate provides prima-facie proof of service. Later single judges have continued to apply the Dataline line of authority in the manner explained by Yates J, treating the pleaded facts as admitted and requiring only that the statement of claim disclose a coherent cause of action. No court has doubted the analysis of r 10.70 or the weight to be given to a certificate completed by a Chinese authority.
The decision is routinely referred to in applications against non-appearing Chinese or other Convention-country respondents in the intellectual-property National Practice Area. It has reinforced the practical utility of the Hague Convention route: once service is proved by certificate, the respondent’s continued silence will ordinarily lead to judgment without the need for further evidence of infringement beyond the pleaded case.
The judgment leaves open whether, in a more complex patent case involving validity challenges or cross-claims, the Court would still enter default judgment on infringement alone if the statement of claim pleads both infringement and validity in the alternative. Yates J was not required to decide that point because no defence had been filed and no validity issues were raised on the pleadings.
It is also unclear whether the “on the face of the statement of claim” test would be satisfied if the statement of claim incorporated by reference a lengthy technical annex or expert report that itself required evidentiary proof. The present case involved a relatively straightforward allegation of direct infringement by supply of a defined “Giant Infringing Remote”, so the boundary between permissible pleading and impermissible incorporation of evidence was not tested.
A further open question is the position where the respondent belatedly appears after judgment is reserved but before orders are pronounced and seeks to set aside the default. The present reasons do not address the principles that would govern such an application, although the emphasis on the discretionary and cautious nature of the power suggests that a respondent showing a viable defence and a satisfactory explanation for the delay would have a reasonable prospect of success.
Finally, the judgment notes that the second applicant’s pleaded case was insufficient to establish standing. The precise level of detail required in a statement of claim to plead assignment, exclusive licence or other title to sue under the Patents Act 1990 (Cth) remains a matter of continuing practical importance and was not exhaustively analysed here.
Most practitioners assume that once a Hague certificate is filed the service gateway is automatically satisfied; the real trap is the “sufficient time” limb in r 10.70(3)(b). Yates J accepted 42 days as sufficient, but in a technically complex patent case a judge might demand more. Another hidden risk is the second-applicant standing point: many corporate groups plead both the parent and the local subsidiary without distinguishing their respective rights. If the statement of claim does not expressly link the second entity to the patentee’s rights, relief will be refused even though the first applicant succeeds. Finally, the form of the injunction itself is a gotcha; the defined term “Giant Infringing Remote” was critical. A vaguely worded restraint that simply repeats the language of the claims without tying it to the respondent’s actual product risks being refused or later varied for uncertainty. Practitioners who copy generic injunction precedents without adapting the definitions to the pleaded technology do so at their peril.
PENAL NOTICE TO: GIANT ALARM SYSTEM CO, LTD IF YOU (BEING THE PERSON BOUND BY THIS ORDER): (A) REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT; OR (B) DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER REQUIRES YOU NOT TO DO, YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR OTHER PUNISHMENT. ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED.
Giant Infringing Remote means any aftermarket remote, manufactured or supplied by the first respondent, capable of transmitting a fixed message to a Security +2.0 receiver such that the receiver can properly recover the message in accordance with the Security +2.0 Algorithm. Patents means Australian Patent No. 2006200340, Australian Patent No. 2006202850 and Australian Patent No. 2007203558. Security +2.0 Algorithm means the predetermined algorithm according to which a fixed message is encrypted, such that Security +2.0 receivers are configured to activate a movable barrier upon receipt of the said message. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
YATES J: 1 The applicants have sued the respondents for infringement of Patent No 2006200340 (the 340 patent), Patent No 2006202850 (the 850 patent), and Patent No 2007203558 (the 558 patent) (together, the patents). They seek default judgment against the first respondent (Giant Alarm System Co, Ltd) in accordance with r 5.23(2)(c) of the Federal Court Rules 2011 (Cth), which provides: If a respondent is in default, an applicant may apply to the Court for: … (c) if the proceeding was started by an originating application supported by a statement of claim or an alternative accompanying document referred to in rule 8.05, or if the Court has ordered that the proceeding continue on pleadings - an order giving judgment against the respondent for the relief claimed in the statement of claim or alternative accompanying document to which the Court is satisfied that the applicant is entitled; … 2 Rule 5.22 specifies when a party is in default: A party is in default if the party fails to: (a) do an act required to be done, or to do an act in the time required, by these Rules; or (b) comply with an order of the Court; or (c) attend a hearing in the proceeding; or (d) prosecute or defend the proceeding with due diligence. 3 The applicants rely on the following defaults by the first respondent: (a) failure to file a defence within 28 days of service (namely by 26 February 2019) as required by r 16.32; (b) failure to appear at the case management hearing on 31 May 2019; (c) failure to file a notice of address for service as required by Order 1 made on 31 May 2019; and (d) failure to appear at the hearing of the present application. 4 The present application is affected by the requirements of r 10.70, which provides: (1) This rule applies if: (a) a certificate of service of initiating process has been filed in the proceeding (being a certificate in due form (within the meaning of rule 10.66(2)), stating that service has been duly effected; and (b) the respondent has not appeared or filed a notice of address for service. (2) In circumstances to which this rule applies, default judgment may not be given against the respondent unless the Court is satisfied that: (a) the initiating process was served on the respondent: (i) by a method of service prescribed by the internal law of the Convention country for the service of documents in domestic proceedings on persons who are within its territory; or (ii) if the applicant requested a particular method of service (being a method under which the document was actually delivered to the respondent or to the respondent's residence) and that method is compatible with the law in force in the country, by that method; or (iii) if the applicant did not request a particular method of service, in circumstances where the respondent accepted the document voluntarily; and (b) the initiating process was served in sufficient time to enable the respondent to enter an appearance in the proceeding. (3) In paragraph (2)(b), sufficient time means: (a) 42 days from the date specified in the certificate of service in relation to the initiating process as the date service of the process was effected; or (b) such lesser time as the Court considers, in the circumstances, to be a sufficient time to enable the respondent to enter an appearance in the proceeding. 5 Rule 10.66 provides for when a certificate will be in due form. Relevantly, the rule states: (1) … on receipt of a certificate of service in due form in relation to a local judicial document to which a request for service abroad relates, a Registrar: (a) must arrange for the original certificate to be filed in the proceeding to which the document relates; and (b) must send a copy of the certificate to: (i) the lawyer on the record for the applicant in the proceeding; or (ii) if there is no lawyer on the record for the applicant in the proceeding - the applicant. (2) For the purposes of subrule (1), a certificate of service is in due form if: (a) it is in accordance with Part 2 of Form 25; and (b) it has been completed by a certifying authority for the Convention country in which service was requested; and (c) if the applicant requires a certificate of service that is completed by an additional authority to be countersigned by the Central Authority, it has been so countersigned. …
Evidence on the application 6 The following affidavits were read in support of the present application: (a) Odette Margaret Gourley, sworn 29 May 2019; (b) Odette Margaret Gourley, sworn 28 June 2019; and (c) Odette Margaret Gourley, sworn 3 September 2019. 7 The applicants also tendered: (a) Exhibit A - being a copy of a letter dated 28 May 2018 from the applicant's solicitor, Ms Gourley, to the Registrar of the Court with attachments A and B thereto; (b) Exhibit B - being a copy of an email chain dated 4 June 2018 between the Court and Ms Gourley.
Background 8 On 8 December 2017, the Court granted leave to the applicants to serve the originating application and statement of claim on the first respondent in accordance with the 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). 9 On 4 May 2019, a certificate of attestation in relation to the service of these documents was filed. 10 On 31 May 2019, an order was made requiring the first respondent to file and serve a notice of address for service by 14 June 2019. An order was also made providing for the substituted service of any interlocutory application and supporting affidavit concerning default judgment. These orders were served on the first respondent on the same day. 11 On 28 June 2019, the applicants filed an interlocutory application (the present application) and Ms Gourley's affidavit sworn that day. On 12 July 2019, the interlocutory application filed on 28 June 2019 and Ms Gourley's affidavits sworn 29 May 2019 and 28 June 2019 were served on the first respondent in accordance with the order for substituted service made on 31 May 2019. 12 The first respondent has not filed a defence and has failed to comply with the order made on 31 May 2019 that it file and serve a notice of address for service. It has failed to appear at the case management hearing on 31 May 2019 and at the hearing of the present application.
Relevant legal principles 13 The power to give judgment against a defaulting party is undoubtedly discretionary. The discretion must be exercised cautiously. Where the defaulting party is a respondent to a pleaded claim, the giving of judgment for final relief on the application will deliver complete success to the applicant without investigation of the merits of the pleaded claim: ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577 at [27]. There is no requirement that the act or acts of default be intentional or amount to contumelious conduct. There is no requirement that the act or acts of default result in inordinate or inexcusable delay. That said, such features, if present, will be relevant to the exercise of the Court's discretion. So too will conduct that persuades the Court that the defaulting party is manifesting an inability or unwillingness to cooperate with the Court and the other party or parties to the proceeding. 14 Rule 5.23(2)(c) requires the Court to be satisfied that the applicant is entitled to the relief claimed in the statement of claim. This requirement has been interpreted as meaning that the Court must be satisfied that "on the face of the statement of claim" the applicant is entitled to the relief that is claimed. It is not a requirement that the applicant prove its claim by way of evidence. Put another way, the facts alleged in the statement of claim are taken to have been admitted: Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146; 161 FCR 513 at [42]. If, on inspection of the statement of claim, the Court is satisfied that the applicant would be entitled to the relief sought then this requirement of r 5.23(2)(c) will be met: CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170 at [18] - [19]; Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227 at [23]. The Court may permit further evidence to be adduced, but not evidence that would alter the pleaded case: Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2006] FCA 1427; 236 ALR 665 at [45], [48] - [50]; United Broadcasting International Pty Ltd v Turkplus Pty Ltd (No 2) [2010] FCA 1413 at [42] - [44]; Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) [2011] FCA 352; 195 FCR 1 at [62] - [63].
Consideration 15 A certificate of service of the originating application and statement of claim has been filed in the proceeding. It states that service of these documents has been duly effected on the first respondent. The certificate is in accordance with Part 2 of Form 25 and, on its face, has been completed by a certifying authority for the People's Republic of China. Therefore, the certificate is in due form for the purposes of r 10.66(2). 16 Given this fact, and given that the first respondent has not appeared or filed a notice of address for service, the requirements of r 10.70(2) apply. In this connection, I note that the certificate states that "the document" has been served in accordance with subparagraph (a) of the first paragraph of Article 5 of the Hague Convention: namely, by a method prescribed for the service of documents by the internal law of the People's Republic of China for the service of documents in domestic actions upon persons who are within its territory. I am satisfied on the evidence that "the document" referred to in the certificate includes the originating application and statement of claim. Therefore, the requirement of r 10.70(2)(a) has been met. In the absence of evidence to the contrary, the certificate stands as sufficient proof that the originating application and the statement of claim were served on the first respondent on 29 January 2019: see r 10.68. On this finding, and having regard to r 10.70(3), I am also satisfied that the originating process was served in sufficient time to enable the first respondent to enter an appearance in the proceeding. Therefore, the requirement of r 10.70(2)(b) has been met. 17 I am satisfied that the first respondent has committed the defaults identified in [3] above and that the first respondent is in default within the meaning of r 5.22. 18 I am satisfied that the statement of claim pleads, as against the first respondent, the necessary elements to establish that: (a) the first respondent has infringed the patents; and (b) the first applicant is entitled to the injunctions it seeks as well as an award of costs. 19 I am satisfied that the first respondent is unwilling to cooperate in the conduct of this proceeding. 20 Apart from the defaults I have found, there was evidence before the Court when the orders for service out of the jurisdiction were made in respect of the first respondent that a prima facie case for at least the relief claimed in prayers 1 and 2(b) and (c) of the originating application in relation to the direct infringement by the first respondent of claim 28 of the 340 patent, claim 21 of the 558 patent and claims 12 and 48 of the 850 patent had been established. I was also satisfied that there was a prima facie case that the first respondent had authorised the third respondent and the fourth respondent (against whom orders have now been made) to exploit infringing products in Australia: Chamberlain Group, Inc v Giant Alarm System Co, Ltd [2017] FCA 1472 at [36]. 21 For these reasons, I am satisfied that the first applicant is entitled to the relief it seeks. However, I am not satisfied that the second applicant is entitled to that relief. The allegations pleaded in the statement of claim are insufficient to establish that the second applicant has any entitlement to sue the first respondent for infringement of the patents. I certify that the preceding twenty-one (21) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.
SCHEDULE OF PARTIES NSD 804 of 2017 Applicants CHAMBERLAIN AUSTRALIA PTY LTD Second Applicant: (ACN 118 013 362)
Respondents AUTOGA CO. LTD Second Respondent: Third Respondent: CODEEZY PTY LTD (ACN 164 581 391) Fourth Respondent: NATIONAL GARAGE REMOTES AND OPENERS PTY LTD (ACN 169 385 479)
Chamberlain Group, Inc
Giant Alarm System Co, Ltd
Application granted; first respondent restrained by permanent injunction from specified acts of infringement in Australia; first respondent ordered to pay first applicant's costs; leave to discontinue originating application against remaining respondents with no order as to costs save as provided.