//
© 2026 Zoe. All rights reserved.
Zoe is a legal information platform. Always consult the Federal Register of Legislation for authoritative text.
[2019] FCA 1264
Federal Court of Australia
2019-08-12
Greenwood J
Original judgment source is linked above.
The applicant's position 24 The applicant says that leave should not be granted to the respondents to file the ASOCC because: First, the proposed amendments are susceptible to being struck out for failing to disclose reasonable causes of action (at least for want of novelty) and are likely to cause prejudice, embarrassment or delay in the proceeding; Second, prejudice to the applicant following from the proposed amendments; and Third, unexplained delay in pleading this information. 25 With respect to the first matter, the applicant points to the requirements of r 34.46 of the Rules and Reg 12.4 of the Patents Regulations 1991 ("the Regulations"). Rule 34.46 provides: Dispute of validity of patent -- particulars of invalidity (1) A party who disputes the validity of a patent under the Patents Act must include in the pleading or other document in which the party disputes the validity, particulars of the grounds of invalidity on which the party relies. (2) If a ground mentioned in subrule (1) is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act or thing, the particulars must specify: (a) for a document -- the time when, and the place where, the document is alleged to have become publicly available; and (b) for an act or thing: (i) the name of the person alleged to have done the act; and (ii) the period within which, and the place where, the act is alleged to have been done publicly; and (iii) a description that is sufficient to identify the act; and (iv) if the act relates to apparatus or machinery -- whether the apparatus or machinery exists and, if so, where it can be inspected. (3) If a ground mentioned in subrule (1) is that the invention, to the extent that is alleged in the complete specification of the patent, is not useful, and it is intended for that ground to rely on the fact that an example of the invention that is the subject of the claim cannot be made to work at all or as described in the specification, the particulars must: (a) identify each claim; and (b) state that fact; and (c) include particulars of each such example, specifying the respect in which it is alleged that it does not work at all or as described. (4) A party is not entitled to tender any evidence in, or make any submissions in support of, a ground for revocation or rectification not stated in the application. 26 Regulation 12.4 provides: Applications to revoke patents (1) An applicant to a prescribed court for an order to revoke a patent under subsection 138(1) of the Act must include, in the pleading or another document disputing the validity of the patent: (a) particulars of the grounds on which the applicant relies; and (b) for an innovation patent -- the date on which the patent was certified. (2) If 1 of those grounds is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act, the particulars must specify: (a) in the case of a document--the time when, and the place where, the document is alleged to have become publicly available; and (b) in the case of an act: (i) the name of the person alleged to have done the act; and (ii) the period in which, and the place where, the act is alleged to have been done publicly; and (iii) a description that is sufficient to identify the act; and (iv) if the act relates to apparatus or machinery--whether the apparatus or machinery exists and, if so, where it can be inspected. (3) Except by leave of the court: (a) evidence is not admissible to prove a ground of invalidity that has not been disclosed in the particulars in relation to that ground; and (b) evidence as to apparatus or machinery that exists at the date of lodgment of the particulars is not admissible unless it is proved that the party relying on the evidence: (i) if the apparatus or machinery is in his or her possession--has offered the opportunity to inspect it; or (ii) in any other case - has used reasonable endeavours to obtain its inspection; to, or by, each other party to the hearing of the application. (4) The court may: (a) extend the time for giving particulars; and (b) allow the amendment of particulars. 27 Mr Logan QC says that (excluding subparas 4(ii) and (iii) as they are not pressed by the respondents), subparas 4(iv), (v) and (vi) of the ASOCC are "so seriously flawed and likely to be struck out" that "leave to file it should not be granted". As to subpara 4(iv) (the "Reybanpac device"), the applicant says that this particular "fails to provide the name of the person alleged to have done the act" as required by r 34.46(2)(b)(i) of the Rules. The applicant says that the "vague reference" to the "Reybanpac Company in Ecuador" is "insufficient and embarrassing". The applicant says that the respondents have ignored the applicant's written request for particulars (see the affidavit of Benjamin Meredith deposed 11 February 2019: "BPM4" p 19). The applicant also says that there is no pleading of the use having being made of the Reybanpac device. Nor is there "relevant retention information". The applicant says that there is "real prejudice" to it because the evidence is not available for inspection: see the affidavit of Alison McMillan deposed 11 February 2019 at [6] and [10]. The applicant restates this complaint for subpara 4(v) ("Espumas Device 1"). 28 As to subpara 4(vi), the applicant says that while the device is available for inspection, the allegation "must fail" because there is no disclosure of a use of a device for protecting fruit growing on a stem or branch. Mr Logan QC asserts that "we are not told anything about what these devices were used for (or suitable for), but simply that they were available for sale and sold" (see the McMillan affidavit referred supra at [7(d)]. 29 The applicant also says that the delay by the respondents in identifying relevant prior art (in circumstances where the statement of claim was filed on 9 July 2018; the first case management hearing was on 23 July 2018; the statement of cross-claim was filed on 22 August 2017; further particulars were filed on 21 September 2018; the pleadings were closed on 28 September 2018; and the matter went to mediation in November 2018), is not adequately explained (although the respondents have filed an affidavit of Mr Kempton on 18 January 2019 for this purpose, which will be discussed later in these reasons) such that the Court should refuse to allow the ASOCC to be filed.
Disposition 30 In the context of providing particulars in a patent infringement suit, Yates J has explained in UPaid Systems Ltd v Telstra Corp Ltd (2013) 220 FCR 182 at [27] that "one function of such particulars is to point out to the alleged infringer the specific acts relied upon, so as to prevent surprise at trial. … Importantly, however, such particulars define the scope of the proceeding, including the scope of discovery". 31 In Woodbridge Foam Corporation v AFCO Automotive Components Pty Ltd (2002) 58 IPR 56, Finkelstein J emphasised at [3]-[4] the "well established" principles of pleadings and particulars and decried at [5] "a sloppy approach to pleadings" which "simply will not do if the result is to undermine or compromise their function". His Honour went on at [20]-[21] to conclude that: [20] The want of novelty claim also relies on acts of prior use. The use is particularised in paragraph 2C of the Particulars of Invalidity. It is alleged that the use was by five named corporations and some examples are given. However, O 58 r 15 and reg 12.4(2) require the respondent to specify for each alleged act the name of the person who did the act, the period in which, and the place where, the act was done publicly, a description that is sufficient to identify the act and, if the apparatus exists, where it can be inspected. [21] Mr Hess acknowledged that these particulars have not been provided but complains that to do so is a difficult task. I accept that may well be so but that is not a proper basis for ignoring the rules. If the respondent wishes to persist with this part of its defence the particulars must be given. 32 As regards the Reybanpac device (subpara 4(iv), the respondents have not provided particulars in accordance with r 34.46(2)(b)(i) as they have failed to state the "name" of the company which is said to have used the Reybanpac devices in Ecuador since at least 2002. Further, no particulars are provided as to the use of this piece of prior art and, unless and until the required particulars are given, reliance on the asserted prior art is liable to be struck out as embarrassing and for failing to comply with the Rules and the Regulations. 33 The Espumas Device 1 suffers from the same difficulties. In circumstances where the applicant cannot test the device for its use with respect to securing fruit, it too is liable to be struck out. 34 Reliance on the Espumas Device 2 would prejudice the applicant's ability to plead in response because, again, the prior art is not sufficiently particularised as to what the particular devices were used for and what they may be suitable for. 35 The respondents seek to address the delay in pleading this prior art in an affidavit of Mr Kempton, filed 18 January 2019. Mr Kempton deposes that on 14 November 2018 he travelled with counsel to Lakeland to the respondents' banana farm to take instructions. During the course of taking instructions, Mr Kempton says that the respondents showed him, for the first time, an example of a banana protection device which "they knew to have been used in many overseas countries". 36 As a result of these discussions, Mr Kempton made further enquiries. Because of apparent "difficulties of making contact with people in South America", this took some time but Mr Kempton says his enquiries "showed" that "these protection devices have been used in Colombia, Costa Rica and Ecuador" before the priority dates of the patents in suit. 37 As Perram J has explained in Stewart v Deputy Commissioner of Taxation (2010) 76 ATR 66 at [35]: Pleadings are succinct statements of a case designed to inform court and foe alike of what is said and how it will be put. Properly done, they promote the identification of the issues in dispute and, by so doing, their more prompt and efficient resolution. So much has always been so. The enactment of provisions such as s 37M of the Federal Court of Australia Act 1976 (Cth) with its injunction to the expeditious and inexpensive resolution of proceedings gives added impetus to these considerations. It follows that a pleading which departs from its principal purpose of affording procedural fairness to the opposing party is a pleading which confounds the ends of justice. It engenders expense, delay and the wastage of public resources; it is not to be countenanced 38 It is not in keeping with s 37M of the Federal Court of Australia Act 1976 (Cth) (the "FCA Act") for a party to plead prior art without the required particulars of what exactly is alleged and then assert, as the respondents do, that any lack of specificity in argument will be cured by evidence that will be led at trial. This is not an acceptable way of conducting patent litigation and is inconsistent with the principles governing the overarching purpose: see ss 37M and 37N of the FCA Act. 39 Accordingly, leave is refused to file the ASOCC. The parties are to put on submissions as to the costs of the interlocutory application within ten days. I certify that the preceding thirty-nine (39) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.
SCHEDULE OF PARTIES QUD 462 of 2018 Respondents Second Respondent/Cross-Claimant PETER JOSEPH INDERBITZIN Third Respondent/Cross-Claimant FRANZISKA MARIA MARGARET INDERBITZIN Fourth Respondent/Cross-Claimant SHARPROCK PTY LTD (ACN 128 361 348) Fifth Respondent/Cross-Claimant RED VALLEY PTY LTD (ACN 126 185 788)
Global Fruit Protection Pty Ltd
Mount Sommerset Pty Ltd
The respondents' position 21 Mr Gardiner of Counsel (for the respondents) contends that each of the devices is said to anticipate the relevant claims of the applicant's patents. Alternatively, Mr Gardiner contends that each of the relevant claims in the applicant's patents were obvious in light of common general knowledge together with knowledge of one or more of these devices. 22 Mr Gardiner submits that these are the grounds on which this Court should exercise its discretion under r 16.53 of the Federal Court Rules 2011 ("the Rules") to grant leave to amend. They say that the amendments: (a) are very important to their case and may be determinative of it. They raise new prior art that goes directly to the validity of the Applicant's patents; (b) will not cause any delay to the proceeding or result in any undue or wasted costs. They do not add any new cause of action or even any new ground of invalidity. There is no substantial change in the nature, content or structure of the case which is put against the Applicant (c.f. Clarke v Sandhurst Trustees Ltd [2017] FCA 401 at [127]. (c) will result in no undue prejudice to the Applicant or to any third party. There is no reason to conclude that the amendments will result in any additional costs and certainly will not result in any wasted costs. (d) are late due to the recent discovery of the relevant information as explained in the affidavit of Mr Kempton. The Applicant was put on notice of the proposed amendments at the earliest possible opportunity. 23 In the course of oral argument, Mr Gardiner conceded that he must abandon sub-paras (2) and (3) (meaning reliance on (a) and (b) of the pieces of prior art described at [20] of these reasons): eg, the Devices at para 4(ii) and the devices mentioned in the Jackson Paper; 4(iii).
(2013) 220 FCR 182
(2002) 58 IPR 56