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Federal Court of Australia |
Last Updated: 21 November 2007
FEDERAL COURT OF AUSTRALIA
Uniline Australia Ltd v SBriggs Pty Ltd [2007] FCA 1799
PRACTICE AND PROCEDURE – consideration of the categories of
documents which might be made the subject of a list of documents by each party
in two proceedings
to be heard together – consideration of issues in
relation to an action for threats with a cross-claim for patent infringement
and
a cross proceeding for revocation – consideration of a threats proceeding
for Registered Design infringement – consideration
of infringement
questions
Patents Act 1990 (Cth),
ss 7(1), 7(2) and 7(3), s 18(1)(b)(i) and (ii), s 40(3),
s 120(3)
Trade Practices Act 1974 (Cth)
Designs Act
2003 (Cth), s 156, s 156(2), s 156(3)(a),
s 156(3)(b)
Designs Act 1906 (as amended) (Cth), s 30(1)(a),
(b) and (c)
Evidence Act 1995 (Cth),
s 55
Dunlop Rubber Co. Ltd v Golf
Ball Developments Ltd (1931) 48 RPC 268
Rose v J W Pickawant
& Co. Ltd (1923) 40 RPC 320
Polyaire Pty
Ltd v K-Aire Pty Ltd [2005] HCA 32; (2005) 221 CLR 287
Turbo-Tek Enterprises Inc. v
Sperling Enterprises Pty Ltd (1989) 23 FCR 331
Raleigh Cycle Coy. Ld.
and Another v H. Miller and Coy Ld. (1948) 65 RPC 141
Lockwood
Security Products Pty Ltd v Doric Products Pty Ltd (No. 2) (2007) 235 ALR
202
UNILINE
AUSTRALIA LTD ACN 010 752 057 v SBRIGGS PTY LTD
ACN 007 415 518 AND CARMELO JOSEPH LICCIARDI DI
STEFANO
QUD236 OF 2007
GREENWOOD J
21 NOVEMBER
2007
BRISBANE
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AND:
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1. Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) is the Patentee of Australian Patent No. 706458 and is joined as Second Cross-Respondent pursuant to s 120(3) of the Patents Act 1990 (Cth).2. Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) undertakes to abide by any order of the Court in this Proceeding concerning the said Patent save as to costs (Patents Act 1990 (Cth), s 120(3)).
3. Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) further undertakes not to take any further part in the Proceeding as a party without the further order or direction of the Court.
THE COURT ORDERS THAT
1. On the basis of the above note and undertakings, Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) is excused from further participation in the proceeding until further order.2. On or before 17 December 2007 each party file and serve a list of documents to be discovered.
3. The list of documents to be discovered by Uniline Australia Ltd shall include:
1. Documents evidencing or recording or relating to the research, creation, testing and development of the design of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline or by any third parties or sourcing of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline from third parties, including but not limited to:
(a) memoranda and correspondence, including electronic correspondence, as well as briefs or sets of instructions provided by Uniline; and/or
(b) reports, materials, artwork, drawings, mock ups, prototypes, visual material, presentations or advice.
2. Documents evidencing any change to the design adopted by Uniline Australia Ltd of the UNIdrive Spring Clutch and/or UNIdrive Spring sold in the marketplace.3. Any document recording any comparison between the UNIdrive Spring Clutch and/or UNIdrive Spring of Uniline Australia Ltd with Australian Patent No. 706458.
4. The list of documents to be discovered by SBriggs Pty Ltd shall include:
1. Documents including diary notes, memoranda and correspondence evidencing any representation made on 26 June 2007 by an employee of SBriggs Pty Ltd to a representative of Blackwood Curtains and Blinds of Blackwood, South Australia.
2. Documents including diary notes, memoranda and correspondence evidencing any representation made on 6 July 2007 by an employee of SBriggs Pty Ltd to a representative of Wholesale Blind Supplies of Lonsdale, South Australia.
3. Documents that constitute or record any notes, observations, experimentation, trials, testings, sketches, drawings made:
(a) by or on behalf of the inventor named in Australian Letters Patent No. 706458 (Patent);
(b) by or on behalf of any person on behalf of SBriggs Pty Ltd; and
(c) in relation to the design, development or testing of any spring clutch referred to in the patent the subject of the invention as claimed.
4. Documents containing any record of communication between the Patents Office and the applicant for Australian Patent No. 706458 (or the representatives of the applicant for the Patent) relating to a question of whether the Patent for the invention claimed might fail to reflect a patentable invention by reason of any of lack of novelty, lack of inventive step or obviousness.
5. Each party provide inspection of its discovered documents on or before 28 January 2008.
6. Each party file and serve any affidavits and expert reports containing the evidence in chief upon which that party intends to rely at the trial of this proceeding on or before 8 February 2008.
7. Each party file and serve any affidavits and expert reports in answer on or before 14 March 2008.
8. Each party file and serve any affidavits and expert reports in reply on or before 21 March 2008.
9. The proceeding be set down for trial with QUD306 of 2007 for an estimated seven days from 14 April 2008 until 23 April 2008.
10. The proceeding be adjourned for further directions to 26 March 2008.
11. The parties have liberty to apply to the Court for orders including in respect of discovery on three days notice.
12. The costs of the directions hearings on 12 November 2007, 19 November 2007 and 21 November 2007 be reserved including the costs of and incidental to the application by Uniline Australia Ltd application heard on 12 November 2007 in relation to Order 29, rule 2 of the Federal Court Rules.
Note: Settlement and entry of orders is dealt with
in Order 36 of the Federal Court Rules.
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BETWEEN:
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UNILINE AUSTRALIA LTD ACN 010 752 057
Applicant/First Cross-Respondent/Further Cross-Claimant |
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AND:
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SBRIGGS PTY LTD ACN 007 415
518
Respondent/Cross-Claimant/First Further Cross-Respondent CARMELO JOSEPH LICCIARDI DI STEFANO Second Cross-Respondent/Second Further Cross-Respondent |
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JUDGE:
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GREENWOOD J
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DATE:
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21 NOVEMBER 2007
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PLACE:
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BRISBANE
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REASONS FOR JUDGMENT
1 Two matters were listed for Directions on Monday, 19 November 2007 at 9.30am (Uniline Australia Ltd v SBriggs Pty Ltd & Anor, QUD236 of 2007; and Di Stefano v Uniline Australia Ltd QUD306 of 2007) in the expectation that the parties might be able to reach agreement concerning dates (working back from allocated trial dates) for the completion of interlocutory steps consequent upon the Court allocating, last week, dates for the trial of both actions of seven days from 14 April 2008 to 23 April 2008.
2 Although a number of matters have been agreed, the parties have not reached agreement about the categories of documents that ought to be the subject of discovery. Accordingly, argument has been addressed as to the categories of documents sought by each side from the other.
3 In QUD236 of 2007, the applicant (Uniline) seeks relief arising out of alleged unjustifiable threats of patent infringement and Registered Design infringement (and related relief under the Trade Practices Act 1974 (Cth)) made by the respondent (SBriggs), the exclusive licensee of the registered proprietor (Mr Di Stefano) of Australian Patent No. 706 458 in respect of a ‘spring’. Mr Di Stefano is also the registered proprietor of Registered Design No. 131 578 for a ‘Spring Clutch’.
4 SBriggs cross-claims in that action for relief for patent infringement by Uniline and has joined Mr Di Stefano who undertakes to abide by any order of the Court and who seeks, uncontroversially, to be excused from further participation in the proceeding. Uniline denies infringement of the patent and, in turn, cross-claims for a declaration of invalidity of the relevant claims of the patent and revocation of the patent on grounds of lack of novelty, lack of inventive step (and thus a determination of whether the invention claimed is obvious), lack of clarity (that is, a failure to comply with s 40(3) of the Patents Act 1990 (Cth)) and a contention that the relevant claims are not ‘fairly based’ on matters described in the specification (s 40(3)). The particulars of lack of novelty (s 18(1)(b)(i); s 7(1)) and lack of inventive step (s 18(1)(b)(ii); s 7(2), s 7(3)); identify two published documents namely, Australian Patent No. 557825 and United States Patent No. 5375,643.
5 SBriggs joins issue with Uniline on the cross-claim for invalidity.
6 QUD306 of 2007 is a claim by Mr Di Stefano against Uniline for relief arising out of alleged infringement of a Registered Design which has a priority date of 18 September 1996. The applicant claims that a ‘Unidrive Spring Clutch assembly’ incorporated within window blinds imported and/or made and sold by Uniline, ‘embodies’ the applicant’s Registered Design. Uniline denies embodiment of the applicant’s design in its Uniline Spring Clutch assembly.
7 Uniline makes no claim for the previously foreshadowed revocation of the Registered Design.
8 Each action is to be heard together.
9 As to the design infringement proceedings, Uniline concedes that it ought to give discovery of:
1. Documents evidencing or recording or relating to the research, creation, testing and development of the design of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline or by any third parties or sourcing of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline from third parties, including but not limited to:
(a) memoranda and correspondence, including electronic correspondence as well as briefs or sets of instructions provided by Uniline; and/or
(b) reports, materials, artwork, drawings, mock ups, prototypes, visual material, presentations or advice.’
10 Uniline seeks no discovery from the applicant as no cross-claim for revocation is now made. The applicant says Uniline’s discovery should go further and extend not only to category 1 documents but also documents evidencing or recording knowledge on the part of Uniline of the Registered Design at the time the Unidrive Spring and/or Unidrive Spring Clutch assembly was sourced or created or designed including instructions to the designers, manufacturer or importer of the Unidrive Spring or Unidrive Spring Clutch which make reference to the Registered Design (category 2 documents) or which make reference to the SBriggs Spring Clutch (category 3 documents). The applicant also seeks discovery from Uniline of documents evidencing or recording any knowledge on the part of Uniline of the existence of similarities or alleged similarities between the design of the features of the Unidrive Spring and the design or features of the Registered Design (category 4 documents) and knowledge of similarities between the design of the Unidrive Spring and/or Unidrive Spring Clutch and the design or features of the SBriggs Spring Clutch (category 5 documents).
11 Uniline says the infringement case simply pleads embodiment of the Registered Design and embodiment is an objective question of fact for the eye of the Judge in the assessment of the essential features of the design, perhaps aided by expert evidence and that knowledge of the Registered Design (or knowledge of the matters the subject of categories 2, 3, 4 and 5) is not relevant to the case pleaded. In any event, Uniline says discovery of the category 1 documents is likely to reveal documents going to knowledge. The applicant says that although the test is an objective one for the Judge, Uniline’s knowledge of the Registered Design, the SBriggs Spring Clutch and similarities of features as earlier described, is an element of infringement by embodiment and thus the documents (categories 1 to 5) are all relevant.
12 The action is brought under the Designs Act 2003 (Cth) having a commencement date of 17 June 2004. Section 156 of that Act provides that if the design was registered under the Designs Act 1906 (as amended) (Cth) (and has not been expunged) and a person engages in conduct that would have infringed the monopoly in the design under the 1906 Act if that Act had been in force (as contended here; and perhaps conduct prior to the commencement date of the 2003 Act), an action may be brought under the 2003 Act (s 156(2)) although the 1906 Act continues to apply for the purposes of determining whether the person’s conduct infringes the monopoly in the design; and the 2003 Act does not apply for the purposes of determining infringement (s 156(3)(a) and (b)). That being so, s 30(1)(a) of the 1906 Act provides that a person infringes the monopoly in a Registered Design if without the licence or authority of the owner, that person (i) applies the design to an article; or, (ii) applies an obvious imitation of it to an article; or (iii) applies a fraudulent imitation of it to an article. Section 30(1)(b) and (c), address importation for sale (or trade use) of such articles and selling or offering such articles for sale.
13 Application of a design or application of an obvious imitation of a design (that is, something which is very close to the Registered Design and immediately apparent to the eye looking at the two (Dunlop Rubber Co. Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268)) to an article results in liability even though the respondent did not know nor had reason to suspect the existence of the design (Rose v J W Pickawant & Co. Ltd (1923) 40 RPC 320; Dunlop Rubber). The application of a fraudulent imitation of a design to an article requires that the application be made with knowledge of the existence of the design or with reason to believe or strongly suspect the fact of registration of the design; absence of consent to use; and, use of the design produces an ‘imitation’ within the meaning of s 30(1)(a) (Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32; (2005) 221 CLR 287 at [17] and [18], per McHugh, Gummow, Hayne, Callinan and Heydon JJ; Turbo-Tek Enterprises Inc. v Sperling Enterprises Pty Ltd (1989) 23 FCR 331 at 347-348). Fraudulent imitation does not require proof of an actual intention to cheat (Polyaire [35]) nor is it necessary (although to do so may make out application of a fraudulent imitation) to prove that changes to the applied design resulting in an imitation only satisfies the test of fraudulent imitation if the changes were adopted to disguise or obfuscate copying. The question is whether the differences are so substantial that no ‘imitation’ arises (Polyaire [28] and [36]).
14 The pleading of an embodiment of the applicant’s design in the respondent’s articles is more consistent with the test identified in s 71(1)(a) of the 2003 Act. It seems to me that if the applicant seeks to rely upon a cause of action based upon infringement by reason of the application of a fraudulent imitation of the applicant’s design, the applicant must specifically set up that case. The pleading more accurately seems to me to set up a case of application of the design to an article by embodiment of the design in the respondent’s article. I propose to limit the category of documents in the design proceeding to category 1 recognising, of course, that documents produced might reveal a basis for an amendment which might in turn give rise to further discovery in the context of a pleaded case of fraudulent imitation, or might not.
15 In the threats, patent infringement and invalidity proceedings (QUD236 of 2007) the applicant, Uniline, relies upon four threats: a letter of 4 April 2007 by the lawyers for SBriggs to Uniline alleging infringement of both the patent and Registered Design; a letter of 16 July 2007 by the lawyers for SBriggs to Uniline’s patent attorneys in respect of both the patent and Registered Design; an oral threat of infringement of the ‘intellectual property rights’ of SBriggs by an employee of SBriggs to a third party; and another oral threat on the same basis to another third party.
16 The defence to the threats action comprises denials in part and contentions that ‘any threat was not unjustified by reason of the applicant’s infringement of the Registered Design and Patent’ (paras 8, 9 and 11, SBriggs, Defence, 14 September 2007). Uniline in the cross proceedings denies infringement and says the patent (or at least the relevant claims of the patent) is invalid on the four identified grounds which is, no doubt, why Uniline says the ‘threats’ are unjustifiable.
17 Uniline seeks from SBriggs all documents relating to the two letters and two oral threats (categories 1, 2, 3 and 4). Those categories are criticised as being unnecessarily broad. Uniline says that documents going beyond the letter in each case would be relevant to whether each threat is unjustified, that is, documents going to assessments, leading to the letters, by SBriggs of whether the Uniline article infringes the patent and documents going to invalidity of the patent, as the source of the rights upon which the threat depended. Documents going to invalidity are the subject of other categories of documents. It seems to me that two questions are alive. First, whether each letter constitutes a threat of infringement proceedings and secondly, whether the threat is unjustified because the conduct does not infringe and/or the patent is invalid. The first is to be determined by assessment of the letter and the second by reference to a consideration of the integers comprising the claims and the extent to which those integers are to be found in Uniline’s article; and the challenge to validity on the grounds identified.
18 Categories 1 and 2 seem to me too broad. Categories 3 and 4 concern documents relating to oral representations. It seems to me that diary notes and memoranda in relation to the oral representations are relevant and those categories are not too broad. Category 5 has been abandoned by Uniline. Category 6 concerns all documents relating to ‘Sbriggs’ decision to commercialise, sell or offer for sale, or not commercialise, sell, or offer to sell, spring clutches having a unitary spring’. This category is said to be relevant on a ground going to the ‘improver question’. That question normally goes to whether an infringer has adopted a variation or change to one of the essential integers defining the monopoly comprised by the claims; whether that variation falls outside the monopoly defining the claims; and whether in substance an infringement has occurred notwithstanding a textual construction of the claims defining the monopoly.
19 It seems to me that the category 6 documents are not relevant.
20 SBriggs concedes that the category 7 documents are relevant and Uniline agrees that the scope of the documents ought to be narrowed in this way:
All documents that constitute or record any notes, observations, experimentation, trials, testings, sketches, drawings made:
1. by or on behalf of the inventor named in Australian Letters Patent No. 706458 (Patent);2. by or on behalf of any person on behalf of SBriggs Pty Ltd; and
3. in relation to the design, development or testing of any spring clutch referred to in the patent the subject of the invention as claimed.
21 Uniline seeks discovery from SBriggs of all documents, including documents disclosing the prior art base which formed part of the research undertaken by or on behalf of the inventor named in the patent or by or on behalf of any other person, in relation to the design, development and testing of any spring clutch referred to in the patent. SBriggs says that this category is too broad; amounts to a fishing expedition in the documents of SBriggs to try and find any document within the prior art base that might be useful in relation to the claimed lack of novelty and lack of inventive step (obviousness), and in any event should be confined to any spring clutch referred to in the patent the subject of the invention claimed in the patent as the specification describes a number of clutch mechanisms.
22 I accept the submissions of SBriggs in relation to these documents.
23 By paragraph 9, Uniline seeks discovery from SBriggs of all documents that constitute or record any communications between the Patents Office on the one hand and the applicant for the patent on the other which refer or relate to the patent. It seems to me that documents passing between the Patents Office and the applicant for the patent which go to lack of novelty, lack of inventive step or obviousness may be ‘evidence that, if it were accepted, could rationally affect (directly or indirectly) the assessment of the probability of the existence of a fact in issue in the proceeding’ in terms of s 55 of the Evidence Act 1995 (Cth) in which event the identified category of documents ought to be the subject of discovery. Category 10 is not pressed.
24 SBriggs seeks discovery from Uniline of documents in the same terms as the category 1 documents described at [9]. Uniline agrees to give discovery of that category of documents. SBriggs also seeks discovery by categories 2, 3, 4 and 5 of documents going to the knowledge of Uniline of the patent in the same terms (rather than the Registered Design) identified at [10]. The questions alive on the pleadings are whether the Uniline product exhibits the essential integers of the relevant claims defining the monopoly and whether the patent (or the relevant claims) is invalid by reason of the four grounds of challenge. The question of direct infringement by Uniline would ordinarily be determined without regard to the knowledge or intention of Uniline. The question is an objective one to be determined having regard to the orthodoxy of the approach to construction of the claims and the tests of infringement. SBriggs says that knowledge is relevant to infringement having regard to Raleigh Cycle Coy. Ld. and Another v H. Miller and Coy Ld. (1948) 65 RPC 141 at 160 and Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No. 2) (2007) 235 ALR 202 at [115]. Raleigh was a case in which, on the facts, the primary Judge, Vaisey J, found that the respondents had adopted and copied the appellant’s device ‘in every essential particular’ resulting in the House of Lords observing, Lord Morton, ‘I cannot imagine a more complete and clear finding of infringement and deliberate copying by a defendant’. Raleigh does not seem to me to alter the general principle described above.
25 Uniline’s knowledge of the patent in the context of the development of the article made, imported, sold or offered for sale may be relevant to issues of novelty, inventive step and obviousness. Although on the pleadings it is difficult to see how Uniline’s knowledge of the patent informs the question of whether the SBriggs’ patent lacked novelty, an inventive step or was obvious at the priority date of that patent. It may be that upon a proper application, SBriggs might be able to demonstrate a basis for further discovery of documents going to the knowledge of Uniline at the relevant date.
26 It seems to me that orders in terms of categories 3, 4 and 5 as sought by SBriggs are not appropriate.
27 SBriggs seeks discovery from Uniline of all documents ‘containing information provided to, or made available to, potential purchasers and/or purchasers promoting or describing or depicting the UNIdrive Spring Clutch and/or UNIdrive Spring, including without limitation, marketing and promotional material, demonstrations and displays’. Uniline says that an obligation to disclose all promotional material is too broad and onerous and in any event the pleaded case of infringement is that a particular form of the Unidrive Spring Clutch infringes the patent and if a broader case is to be made that other forms of the Spring Clutch infringed the patent that case should be pleaded. Uniline seems willing to accept an obligation to disclose documents evidencing any change to the design of the Unidrive Spring Clutch sold in the marketplace. SBriggs says that it needs to know what changes occurred so that, should it be successful, an injunction might be properly framed which addresses the particular form or forms of the infringing article. That being so, documents which disclose changes to the design of the Unidrive Spring Clutch sold in the marketplace as proposed by Uniline would accommodate that concern.
28 By category 7, SBriggs seeks disclosure from Uniline of any documents evidencing or recording any comparison of the Unidrive Spring Clutch and/or Unidrive Spring to the claims of the patent. Uniline says category 7 is too broad and in any event, is comprehended by category 1 which Uniline accepts. That may be so. However, it seems to me that any document recording any comparison of the Unidrive Spring Clutch and/or Unidrive Spring with SBriggs’ patent is relevant in the sense contemplated by s 55 of the Evidence Act and whether forming part of category 1 or not, ought to be disclosed.
29 Accordingly, in QUD236 of 2007 I propose to make the following orders.
THE COURT NOTES
1. Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) is the Patentee of Australian Patent No. 706458 and is joined as Second Cross-Respondent pursuant to s 120(3) of the Patents Act 1990 (Cth).2. Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) undertakes to abide by any order of the Court in this Proceeding concerning the said Patent save as to costs (Patents Act 1990 (Cth), s 120(3)).
3. Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) further undertakes not to take any further part in the Proceeding as a party without the further order or direction of the Court.
THE COURT ORDERS THAT
1. On the basis of the above note and undertakings, Carmelo Joseph Licciardi di Stefano (Second Cross-Respondent/Second Further Cross-Respondent) is excused from further participation in the proceeding until further order.
2. On or before 17 December 2007 each party file and serve a list of documents to be discovered.
3. The list of documents to be discovered by Uniline Australia Ltd shall include:
1. Documents evidencing or recording or relating to the research, creation, testing and development of the design of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline or by any third parties or sourcing of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline from third parties, including but not limited to:
(a) memoranda and correspondence, including electronic correspondence, as well as briefs or sets of instructions provided by Uniline; and/or
(b) reports, materials, artwork, drawings, mock ups, prototypes, visual material, presentations or advice.
2. Documents evidencing any change to the design adopted by Uniline Australia Ltd of the UNIdrive Spring Clutch and/or UNIdrive Spring sold in the marketplace.3. Any document recording any comparison between the UNIdrive Spring Clutch and/or UNIdrive Spring of Uniline Australia Ltd with Australian Patent No. 706458.
4. The list of documents to be discovered by SBriggs Pty Ltd shall include:
1. Documents including diary notes, memoranda and correspondence evidencing any representation made on 26 June 2007 by an employee of SBriggs Pty Ltd to a representative of Blackwood Curtains and Blinds of Blackwood, South Australia.
2. Documents including diary notes, memoranda and correspondence evidencing any representation made on 6 July 2007 by an employee of SBriggs Pty Ltd to a representative of Wholesale Blind Supplies of Lonsdale, South Australia.
3. Documents that constitute or record any notes, observations, experimentation, trials, testings, sketches, drawings made:
(a) by or on behalf of the inventor named in Australian Letters Patent No. 706458 (Patent);
(b) by or on behalf of any person on behalf of SBriggs Pty Ltd; and
(c) in relation to the design, development or testing of any spring clutch referred to in the patent the subject of the invention as claimed.
4. Documents containing any record of communication between the Patents Office and the applicant for Australia Patent No. 706458 (or the representatives of the applicant for the Patent) relating to a question of whether the Patent for the invention claimed might fail to reflect a patentable invention by reason of any of lack of novelty, lack of inventive step or obviousness.
5. Each party provide inspection of its discovered documents on or before 28 January 2008.
6. Each party file and serve any affidavits and expert reports containing the evidence in chief upon which that party intends to rely at the trial of this proceeding on or before 8 February 2008.
7. Each party file and serve any affidavits and expert reports in answer on or before 14 March 2008.
8. Each party file and serve any affidavits and expert reports in reply on or before 21 March 2008.
9. The proceeding be set down for trial with QUD306 of 2007 for an estimated seven days from 14 April 2008 until 23 April 2008.
10. The proceeding be adjourned for further directions to 26 March 2008.
11. The parties have liberty to apply to the Court for orders including in respect of discovery on three days notice.
12. The costs of the directions hearings on 12 November 2007, 19 November 2007 and 21 November 2007 be reserved including the costs of and incidental to the application by Uniline Australia Ltd application heard on 12 November 2007 in relation to Order 29, rule 2 of the Federal Court Rules.
30 In relation to QUD306 of 2007, I propose to make the following orders:
1. The applicant file and serve a Reply (if any) and a Defence to any Cross-Claim of the respondent on or before 3 December 2007.2. The respondent file and serve any Reply to any Defence to the Cross-Claims on or before 10 December 2007.
3. On or before 17 December 2007, each party file and serve a list of documents to be discovered.
4. The list of documents to be discovered by Uniline Australia Ltd shall include the following documents:
1. Documents evidencing or recording or relating to the research, creation, testing and development of the design of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline or by any third parties or sourcing of the UNIdrive Spring and/or UNIdrive Spring Clutch by Uniline from third parties, including but not limited to:
(a) memoranda and correspondence, including electronic correspondence, as well as briefs or sets of instructions provided by Uniline; and/or
(b) reports, materials, artwork, drawings, mock ups, prototypes, visual material, presentations or advice.
5. Each party provide inspection of its discovered documents on or before 18 January 2008.6. The applicant file and serve evidence in chief on or before 8 February 2008.
7. The respondent file and serve evidence in chief on or before 8 February 2008.
8. Each party file and serve evidence in answer on or before 14 March 2008.
9. Each party file and serve affidavits and expert reports in reply on or before 21 March 2008.
10. The proceeding be set down for trial with QUD236 of 2007 for an estimated seven days from 14 April 2008 to 23 April 2008.
11. Pursuant to Order 29, rule 2 of the Federal Court Rules, the issue of liability shall be decided separately and prior to the issue of quantum in the proceeding.
12. The proceeding shall be adjourned for further directions to 26 March 2008.
13. The parties have liberty to apply to the Court for orders including orders in respect of discovery on three days notice.
14. The costs of the directions hearings on 12 November 2007, 19 November 2007 and 21 November 2007 be reserved including the costs of and incidental to the application by Uniline Australia Ltd heard on 12 November 2007 in relation to Order 29, rule 2 of the Federal Court Rules.
31 For the purposes of the Orders in each action, the following terms (where relevant) bear the following meaning:
‘Di Stefano’ means Carmelo Joseph Licciardi Di Stefano.‘Documents’ has the same meaning as is applicable for Order 15 of the Federal Court Rules 1979 (Cth).
‘Registered Design’ means the Australian Design Registration No. AU-131578 for a Spring in the name of Carmelo Joseph Licciardi Di Stefano and having a registration date of 1 October 1997.
‘SBriggs Spring Clutch’ means any spring clutch sold by SBriggs (including under its trading name ‘Acmeda’) that includes:
(i) a multidirectionally wound spring, or(ii) multiple springs wherein at least two of the springs are wound in opposite directions.
‘SBriggs Pty Ltd’ means SBriggs Pty Ltd ACN 007 415 518.‘UNIdrive Spring’ means springs for use in the UNIdrive Spring Clutch.
‘UNIdrive Spring Clutch’ means the spring clutch known by the name ‘UNIdrive’ and sold in Australia by Uniline Australia Ltd or its predecessors in title and includes:
(a) the UNIdrive Spring Clutch which is the subject of paragraph 7(a) of the Statement of Claim in these proceedings, or(b) the UNIdrive Spring Clutch which is the subject of Exhibit A tendered as evidence during the Directions Hearing on 12 November 2007.
‘Uniline’ means Uniline Australia Ltd (ACN 010 752 057) or its predecessors in title.
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I certify that the preceding thirty-one (31) numbered paragraphs are a true
copy of the Reasons for Judgment herein of the Honourable
Justice
Greenwood.
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Associate:
Dated: 21
November 2007
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Solicitor for the Applicant:
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Counsel for the Respondent:
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Solicitor for the Respondent:
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Date of Hearing:
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Date of Judgment:
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