Vald Performance Pty Ltd v Kangatech Pty Ltd [2019] FCA 1880

Vald Performance Pty Ltd v Kangatech Pty Ltd [2019] FCA 1880

Vald was not an exclusive licensee within the meaning of the Patents Act 1990 (Cth) at the time of commencing proceedings, and therefore lacked standing to sue for infringement. Costs incurred by Kangatech as a result must be paid by Vald on an indemnity basis.

Parties
Applicant: Vald Performance Pty Ltd; First Respondent: Kangatech Pty Ltd; Second Respondent: Queensland University of Technology
Jurisdiction
Australia
Judgment Date
13 November 2019
Procedural Posture
Patent Infringement / Case Management Hearing and Costs Order
Outcome
Applicant ordered to pay indemnity costs
Legal Topics
Patents, Patent Infringement, Exclusive Licensee Standing, Costs
Intellectual Property Patents Patent Infringement Exclusive Licensee Standing Costs

Case Brief

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Parties

Vald Performance Pty Ltd

Applicant

Kangatech Pty Ltd

First Respondent

Queensland University of Technology

Second Respondent

Procedural Posture

Patent Infringement / Case Management Hearing and Costs Order

Legal Issues

  1. 1 Whether the applicant is an exclusive licensee for the purposes of the Patents Act 1990 (Cth)
  2. 2 Standing to bring patent infringement proceedings under s 120(1) of the Patents Act 1990 (Cth)
  3. 3 Appropriate costs payable due to amendment and lack of standing

Ratio Decidendi

Vald was not an exclusive licensee within the meaning of the Patents Act 1990 (Cth) at the time of commencing proceedings, and therefore lacked standing to sue for infringement. Costs incurred by Kangatech as a result must be paid by Vald on an indemnity basis.

Court Disposition

Applicant ordered to pay indemnity costs

Orders

  • The applicant pay the costs of the first respondent thrown away by reason of the amendments to the originating application and the statement of claim, due to the lack of standing issue, including the costs of the Case Management Hearing held on 12 November 2019, on an indemnity basis.
  • These orders and reasons for judgment are made and published from Chambers pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), and rules 1.32 and 1.36 of the Federal Court Rules 2011.