Costin v Duroline Products Pty Limited [2013] FCA 501

Costin v Duroline Products Pty Limited [2013] FCA 501

The prospective applicant established a reasonable belief that he may have a right to relief for patent infringement against OGI and Duroline concerning OX gauge tape and against Duroline concerning Axis gauge tape, but he already had sufficient information to decide whether to commence proceedings, so r 7.23 discovery was not warranted. He did not establish a reasonable belief or reasonable inquiries sufficient to obtain r 7.23 discovery against OGG. However, he established the requirements of r 7.22 because exploitation of the tapes in Australia may give him a right to relief and OGI and Duroline knew or were likely to know the descriptions of relevant manufacturers, suppliers, and...

Jurisdiction
Australia
Judgment Date
27 May 2013
Procedural Posture
Application for Preliminary Discovery Pursuant to Rr 7.22 and 7.23 of the Federal Court Rules 2011 (cth) in Relation to a Possible Proceeding for Patent Infringement / Originating Application Heard and Determined
Outcome
Application under r 7.23 refused; alternative application under r 7.22 allowed in part against OGI and Duroline; prospective applicant ordered to pay costs of the application and of providing affidavits or discovery.
Legal Topics
['preliminary Discovery' "prospective Respondent's Description" 'patent Infringement' 'retractable Measuring Tape for Brick Laying']
['civil Procedure' 'intellectual Property' 'patents'] ['preliminary Discovery' "prospective Respondent's Description" 'patent Infringement' 'retractable Measuring Tape for Brick Laying']

Case Brief

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Procedural Posture

Application for Preliminary Discovery Pursuant to Rr 7.22 and 7.23 of the Federal Court Rules 2011 (cth) in Relation to a Possible Proceeding for Patent Infringement / Originating Application Heard and Determined

Legal Issues

  1. 1 ['Whether the prospective applicant should obtain preliminary discovery under r 7.23 of the Federal Court Rules 2011 (Cth) against the prospective respondents in relation to possible patent infringement by OX gauge tape and Axis gauge tape.' 'Whether the prospective applicant should obtain preliminary discovery under r 7.22 of the Federal Court Rules 2011 (Cth) to ascertain the description of manufacturers, suppliers, and persons supplied with OX gauge tape or Axis gauge tape.' 'Whether the prospective applicant had sufficient information to decide whether to commence infringement proceedings.' 'Whether the prospective applicant had made reasonable inquiries in respect of Ox Group Global Pty Ltd.']

Ratio Decidendi

The prospective applicant established a reasonable belief that he may have a right to relief for patent infringement against OGI and Duroline concerning OX gauge tape and against Duroline concerning Axis gauge tape, but he already had sufficient information to decide whether to commence proceedings, so r 7.23 discovery was not warranted. He did not establish a reasonable belief or reasonable inquiries sufficient to obtain r 7.23 discovery against OGG. However, he established the requirements of r 7.22 because exploitation of the tapes in Australia may give him a right to relief and OGI and Duroline knew or were likely to know the descriptions of relevant manufacturers, suppliers, and...

Court Disposition

Application under r 7.23 refused; alternative application under r 7.22 allowed in part against OGI and Duroline; prospective applicant ordered to pay costs of the application and of providing affidavits or discovery.

Orders

  • ['In the event that Ox Group International Pty Ltd (OGI) by its proper officer does not by 11 June 2013 make, file and serve on the prospective applicant an affidavit giving a description of: (a) the manufacturer of; (b) the person or persons who have supplied it with; and (c) the person or persons to whom it has...