Vald Performance Pty Ltd v Kangatech Pty Ltd (No 4) [2022] FCA 557

Vald Performance Pty Ltd v Kangatech Pty Ltd (No 4) [2022] FCA 557

Although the respondent's delay of over two years in identifying the proposed s 40 invalidity grounds was unexplained and inconsistent with its obligations under the overarching purpose, no trial date had been allocated. Refusing leave would prejudice the respondent by denying it the opportunity to rely on potentially meritorious grounds of invalidity. Leave to amend was therefore granted, with Kangatech ordered to pay Vald's costs of and incidental to the leave application and costs lost, wasted or rendered inutile by the amendment.

Jurisdiction
Australia
Judgment Date
13 May 2022
Procedural Posture
Intellectual Property Proceeding Concerning Patents, Including a Cross Claim for Invalidity and Revocation / Respondent's Application for Leave to Amend Particulars of Invalidity
Outcome
Leave granted to the respondent to amend the particulars of invalidity; costs ordered in favour of the applicant; applicant directed to submit proposed orders within seven days.
Legal Topics
['amendment of Particulars of Invalidity' 'revocation of Patent' 'support for Claims by Matter Disclosed in the Specification' 'clear and Complete Disclosure' 'overarching Purpose' 'costs of Amendment']
['intellectual Property' 'patents' 'civil Procedure'] ['amendment of Particulars of Invalidity' 'revocation of Patent' 'support for Claims by Matter Disclosed in the Specification' 'clear and Complete Disclosure' 'overarching Purpose' 'costs of Amendment']

Case Brief

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Procedural Posture

Intellectual Property Proceeding Concerning Patents, Including a Cross Claim for Invalidity and Revocation / Respondent's Application for Leave to Amend Particulars of Invalidity

Legal Issues

  1. 1 ['Whether the respondent should be granted leave to amend its particulars of invalidity to remove a lack of novelty ground, amend aspects of the lack of inventive step ground, and add grounds under s 40(2)(a) and s 40(3) of the Patents Act 1990 (Cth).' "Whether the respondent's delay of over two years in identifying the proposed s 40 grounds and the prejudice to the applicant should lead to refusal of leave to amend." 'How to approach the question whether claims defining the invention are supported by matter disclosed in the specification for the purposes of s 40(3) of the Patents Act 1990 (Cth).' 'What costs orders should be made if leave to amend is granted.']

Ratio Decidendi

Although the respondent's delay of over two years in identifying the proposed s 40 invalidity grounds was unexplained and inconsistent with its obligations under the overarching purpose, no trial date had been allocated. Refusing leave would prejudice the respondent by denying it the opportunity to rely on potentially meritorious grounds of invalidity. Leave to amend was therefore granted, with Kangatech ordered to pay Vald's costs of and incidental to the leave application and costs lost, wasted or rendered inutile by the amendment.

Court Disposition

Leave granted to the respondent to amend the particulars of invalidity; costs ordered in favour of the applicant; applicant directed to submit proposed orders within seven days.

Orders

  • ['The applicant submit proposed orders within seven days giving effect to these reasons.' 'Pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), rule 1.32 and rule 1.36 of the Federal Court Rules 2011, these orders and the reasons for judgment in support of these orders are made and published...