The University of Sydney v ResMed Ltd (No 2) [2008] FCA 1969

The University of Sydney v ResMed Ltd (No 2) [2008] FCA 1969

The University's proposed pleading was not wholly liable to be struck out and ResMed did not establish that the challenged claims had no reasonable prospect of success, because many issues concerning construction of the Licensing Agreement, the Confidential Disclosure Agreement, confidentiality, improvements and patent applications were arguable and should not be finally determined on the interlocutory motions. However, the pleading required clarification and amendment in specified respects, including the timing and basis of supply of Information under the agreements, the pleaded connection between alleged improvements and particular Intellectual Property, causation facts for development...

Jurisdiction
Australia
Judgment Date
23 December 2008
Procedural Posture
Practice and Procedure; Pleadings; Motion to Strike Out and Motion for Leave to Amend Statement of Claim / Interlocutory Motions
Outcome
The University was granted leave to file and serve a second further amended statement of claim consistent with the reasons; the applicant's motion and the respondent's motion were otherwise dismissed; no order was made for costs on either motion.
Legal Topics
['strike Out of Pleadings' 'summary Judgment' 'leave to Amend Pleadings' 'patent Licensing Agreement' 'confidential Information' 'equitable Obligation of Confidence' 'constructive Trust Over Patent Applications']
['civil Procedure' 'intellectual Property' 'contract' 'equity'] ['strike Out of Pleadings' 'summary Judgment' 'leave to Amend Pleadings' 'patent Licensing Agreement' 'confidential Information' 'equitable Obligation of Confidence' 'constructive Trust Over Patent Applications']

Case Brief

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Procedural Posture

Practice and Procedure; Pleadings; Motion to Strike Out and Motion for Leave to Amend Statement of Claim / Interlocutory Motions

Legal Issues

  1. 1 ['Whether paragraphs of the further amended statement of claim should be struck out under O 11 r 16 of the Federal Court Rules or judgment given under s 31A(2) of the Federal Court of Australia Act 1976 (Cth).' 'Whether the proposed second further amended statement of claim adequately pleaded the Membrane Mask, the Information, contractual obligations under the Licensing Agreement and Confidential Disclosure Agreement, equitable confidentiality obligations, improvements, and claims concerning patent applications.' 'Whether the University should have leave to file and serve a second further amended statement of claim, and on what terms.' 'What costs order should be made where both parties had a measure of success on the motions.']

Ratio Decidendi

The University's proposed pleading was not wholly liable to be struck out and ResMed did not establish that the challenged claims had no reasonable prospect of success, because many issues concerning construction of the Licensing Agreement, the Confidential Disclosure Agreement, confidentiality, improvements and patent applications were arguable and should not be finally determined on the interlocutory motions. However, the pleading required clarification and amendment in specified respects, including the timing and basis of supply of Information under the agreements, the pleaded connection between alleged improvements and particular Intellectual Property, causation facts for development...

Court Disposition

The University was granted leave to file and serve a second further amended statement of claim consistent with the reasons; the applicant's motion and the respondent's motion were otherwise dismissed; no order was made for costs on either motion.

Orders

  • ['The applicant have leave to file and serve a second further amended statement of claim consistent with reasons for judgment delivered on 23 December 2008.' 'Any second further amended statement of claim be filed and served by 30 January 2009.' 'The proceeding be stood over to Friday 6 February 2009 at 9:30am for...