Successful patentee not required to amend patent to reflect adverse findings in respect of certain claims before obtaining relief for infringement
Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia
Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.
Damorgold Pty Ltd v JAI Products (No 2)  FCA 377 (14 April 2014)
Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.
Damorgold had not made an application pursuant to section 105 of the Act to amend the patent and indicated that it had no intention of doing so. It asserted that certain claims had been found valid and infringed and that was enough for it to be entitled to injunctive relief. Middleton J agreed and so ordered.
His Honour observed that there has been no suggestion that the two claims had, by incorporating by reference the preceding claims, lacked sufficient clarity so as to make them invalid. He concluded that those claims “were and will still be able to be read and understood in conjunction with the claims which have been held to be invalid. No interested party reading the public Register, with notification of the Court orders, will have any doubt as to the claim of the monopoly in claims 23 and 27, which they will still be able to read in conjunction with the wording of the other claims.”
Turning to costs, JAI Products asserted that it had been successful in invalidating a majority of the claims and only found to infringe two valid claims and therefore it should pay 20 percent of the Damorgold’s costs on infringement and Damorgold should pay 80 percent of JAI Product’s costs. Middleton J found that effective resistance to the infringement claim was essentially JAI asserting invalidity and that, while it received a favourable outcome in relation to all but four claims, it failed in its ultimate endeavour in to avoid being found to have infringed. Further, Damorgold had not unreasonably contested the invalidity case. As such, JAI Products was ordered to pay Damorgold’s costs.