Austshade Pty Ltd v Boss Shade Pty Ltd [2016] FCA 287

Austshade Pty Ltd v Boss Shade Pty Ltd [2016] FCA 287

The applicants failed to establish infringement of the 2003 Patent as the modified umbrellas were not 'tilt adjustable' and thus did not fall within the claims. For the Innovation Patent and Registered Design, although prima facie there was infringement, the respondents were protected by the doctrine of exhaustion...

Source-derived case information.

Parties
Applicant: Austshade Pty Ltd; Applicant: Ekkehard Siegfried Hartmut Koehn; Respondent: Boss Shade Pty Ltd; Respondent: Bauer Investments Pty Ltd; Respondent: Holger Bauer; Respondent: Bernhel Pty Ltd trading as Roll-a-Shade; Respondent: Stefan Bauer
Jurisdiction
Australia
Judgment Date
23 March 2016
Procedural Posture
Intellectual Property Infringement and Breach of Contract / Judgment
Outcome
Application dismissed. Orders to be made following further submissions on outstanding factual matters, costs and possible royalties.
Legal Topics
Patent Infringement, Registered Design Infringement, Copyright Infringement, Breach of Settlement Deed, Royalty Payments, Exhaustion of Patent Rights
Intellectual Property Contract Law Patent Infringement Registered Design Infringement Copyright Infringement Breach of Settlement Deed Royalty Payments Exhaustion of Patent Rights

Source-derived case record

Summary, issues, holding and outcome

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Parties

Austshade Pty Ltd

Applicant

Ekkehard Siegfried Hartmut Koehn

Applicant

Boss Shade Pty Ltd

Respondent

Bauer Investments Pty Ltd

Respondent

Holger Bauer

Respondent

Bernhel Pty Ltd trading as Roll-a-Shade

Respondent

Stefan Bauer

Respondent

Procedural Posture

Intellectual Property Infringement and Breach of Contract / Judgment

Legal Issues

  1. 1 Whether sale and modification of umbrellas infringed the 2003 Patent, Innovation Patent or Registered Design
  2. 2 Whether copyright in photographs was infringed
  3. 3 Effect of the doctrine of patent exhaustion (National Phonograph)

Ratio Decidendi

The applicants failed to establish infringement of the 2003 Patent as the modified umbrellas were not 'tilt adjustable' and thus did not fall within the claims. For the Innovation Patent and Registered Design, although prima facie there was infringement, the respondents were protected by the doctrine of exhaustion under National Phonograph as the sale to Bernhel was valid, with no express limitations communicated to the purchaser restricting resale. The sale was not found to be a sham, and the applicants failed to prove copyright infringement on the available evidence. No breach of the settlement deed was established with respect to the sale or subsequent on-sales. Accordingly, there was...

Court Disposition

Application dismissed. Orders to be made following further submissions on outstanding factual matters, costs and possible royalties.