Microsoft Corporation v Intertrust Technologies Corporation [2003] FCA 656

Microsoft Corporation v Intertrust Technologies Corporation [2003] FCA 656

Although the Court had power to make an order of the kind sought, it was premature and inappropriate to require Intertrust to identify the alleged inventive step, relevant art, or skilled addressee before Microsoft had filed evidence or provided more than sparse particulars of obviousness. Microsoft, as the party seeking revocation and bearing the onus of invalidity, had to make its own position clear before any question arose of compelling Intertrust, whose defence was a bare denial and whose forensic position was entitled to be respected, to provide such particulars.

Jurisdiction
Australia
Judgment Date
01 July 2003
Procedural Posture
Application Under S 138 of the Patents Act 1990 (cth) for a Declaration That Australian Patent No 728776 Is Invalid and an Order That It Be Revoked / Applicants' Notice of Motion for Orders Requiring the Respondent to Identify the Alleged Inventive Step, Relevant Art, and Qualifications and Experience of the Hypothetical Person Skilled in the Relevant Art
Outcome
The applicants' motion was dismissed with costs.
Legal Topics
['revocation of Patent' 'inventive Step' 'particulars' 'case Management' 'onus of Proof' 'person Skilled in the Relevant Art' 'prior Art Base']
['intellectual Property' 'patents' 'practice and Procedure'] ['revocation of Patent' 'inventive Step' 'particulars' 'case Management' 'onus of Proof' 'person Skilled in the Relevant Art' 'prior Art Base']

Case Brief

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Procedural Posture

Application Under S 138 of the Patents Act 1990 (cth) for a Declaration That Australian Patent No 728776 Is Invalid and an Order That It Be Revoked / Applicants' Notice of Motion for Orders Requiring the Respondent to Identify the Alleged Inventive Step, Relevant Art, and Qualifications and Experience of the Hypothetical Person Skilled in the Relevant Art

Legal Issues

  1. 1 ['Whether, in a patent revocation proceeding with no cross-claim for infringement, the respondent-patentee should be ordered to provide particulars or a statement identifying the alleged inventive step, relevant art, and qualifications and experience of the hypothetical person skilled in the relevant art.' 'Whether the Court should exercise its case management powers to require such particulars before the applicants for revocation have filed evidence and where their particulars of invalidity for lack of inventive step are sparse.']

Ratio Decidendi

Although the Court had power to make an order of the kind sought, it was premature and inappropriate to require Intertrust to identify the alleged inventive step, relevant art, or skilled addressee before Microsoft had filed evidence or provided more than sparse particulars of obviousness. Microsoft, as the party seeking revocation and bearing the onus of invalidity, had to make its own position clear before any question arose of compelling Intertrust, whose defence was a bare denial and whose forensic position was entitled to be respected, to provide such particulars.

Court Disposition

The applicants' motion was dismissed with costs.

Orders

  • ["The applicants' motion brought by notice of motion filed on 20 May 2003 be dismissed." "The applicants pay the respondent's costs of the motion."]