The University of Sydney v ResMed Ltd (No 3) [2009] FCA 527

The University of Sydney v ResMed Ltd (No 3) [2009] FCA 527

The proposed SFASOC sufficiently made clear that the University alleged pre-1 January 1991 disclosure of all integers of the invention called the Membrane Mask, so further pleading of the progression of disclosure was unnecessary, although the University had to identify any para 11B Information said to lie outside those integers. The proposed Annexures A and B also sufficiently informed ResMed and the Court of the alleged connections between the improvements and the Intellectual Property to enable pleading and management of evidence and discovery. Leave to file and serve the SFASOC was therefore granted, subject to the identification direction.

Jurisdiction
Australia
Judgment Date
21 May 2009
Procedural Posture
Federal Court Civil Proceeding Concerning Proposed Second Further Amended Statement of Claim in a Patent/licensing Dispute / Interlocutory Hearing on Objections to Proposed Pleading and Leave to File and Serve Second Further Amended Statement of Claim
Outcome
The University was granted leave to file and serve the second further amended statement of claim, with a direction to identify certain Information, and liberty to raise costs.
Legal Topics
['patent Licensing' 'pleadings and Particulars' 'amendment of Statement of Claim' 'pre Agreement Information' 'improvements Connected With Intellectual Property']
['intellectual Property' 'civil Procedure' 'contract Law'] ['patent Licensing' 'pleadings and Particulars' 'amendment of Statement of Claim' 'pre Agreement Information' 'improvements Connected With Intellectual Property']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Federal Court Civil Proceeding Concerning Proposed Second Further Amended Statement of Claim in a Patent/licensing Dispute / Interlocutory Hearing on Objections to Proposed Pleading and Leave to File and Serve Second Further Amended Statement of Claim

Legal Issues

  1. 1 ["Whether the University's proposed pleading in respect of pre-Agreement Information adequately made clear its case about information supplied before the commencement date of the Licensing Agreement." "Whether the University's proposed pleading in respect of improvements sufficiently identified the connection between alleged discoveries or improvements and the particular aspects of the Intellectual Property." 'Whether any order as to costs should be made or costs should be reserved.']

Ratio Decidendi

The proposed SFASOC sufficiently made clear that the University alleged pre-1 January 1991 disclosure of all integers of the invention called the Membrane Mask, so further pleading of the progression of disclosure was unnecessary, although the University had to identify any para 11B Information said to lie outside those integers. The proposed Annexures A and B also sufficiently informed ResMed and the Court of the alleged connections between the improvements and the Intellectual Property to enable pleading and management of evidence and discovery. Leave to file and serve the SFASOC was therefore granted, subject to the identification direction.

Court Disposition

The University was granted leave to file and serve the second further amended statement of claim, with a direction to identify certain Information, and liberty to raise costs.

Orders

  • ['The applicant have leave to file and serve the second further amended statement of claim (SFASOC) in the form that was before the Court on 13 May 2009.' 'By 29 May 2009, the applicant identify in writing to the respondent those items of the Information referred to in para 11B of the SFASOC that it will contend lie...