ORION MARINE LTD v SEALEGS INTERNATIONAL LTD [2021] NZHC 3207

ORION MARINE LTD v SEALEGS INTERNATIONAL LTD [2021] NZHC 3207

The strike out application was dismissed: Sealegs did not plainly abandon or deliberately mislead about its patent claim; procedural realities (trial timetable and patent amendment process) and legal distinctions between copyright and patent justified separate proceedings; Sealegs' patent counterclaim and patent-based defences were not so clearly untenable or oppressive as to amount to an abuse of process warranting strike out; striking out would unjustifiably limit Sealegs' right to bring and defend legitimate claims.

Citation
[2021] NZHC 3207
Parties
First Plaintiff/first Counterclaim Defendant: ORION MARINE LIMITED; Second Plaintiff/second Counterclaim Defendant: DARREN PAUL LEYBOURNE; Third Plaintiff: VLADAN ZUBCIC; Fourth Plaintiff/third Counterclaim Defendant: SMUGGLER MARINE LIMITED; Fifth Plaintiff: DAVID JEFFERY PRINGLE; Sixth Plaintiff: PAULINE SIGNA PRINGLE; Defendant/counterclaim Plaintiff: SEALEGS INTERNATIONAL LIMITED
Court
High Court
Jurisdiction
New Zealand
Judgment Date
26 November 2021
Procedural Posture
Civil — Intellectual Property Dispute (copyright, Design Registration and Patent) and Damages on Undertaking / Strike Out Application Under High Court Rules R15.1 (application to Strike Out Counterclaim and Parts of Defence)
Outcome
Application to strike out parts of the defence and the whole of the counterclaim dismissed
Legal Topics
Abuse of Process, Henderson V Henderson Principle, Undertaking as to Damages, Illegality Defence, Cost of Manufacture Defence, Patent Amendment Procedure, Strike Out
Intellectual Property Patent Law Copyright Law Civil Procedure Equitable Remedies Abuse of Process Henderson V Henderson Principle Undertaking as to Damages +4 more

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Parties

ORION MARINE LIMITED

First Plaintiff/first Counterclaim Defendant

DARREN PAUL LEYBOURNE

Second Plaintiff/second Counterclaim Defendant

VLADAN ZUBCIC

Third Plaintiff

SMUGGLER MARINE LIMITED

Fourth Plaintiff/third Counterclaim Defendant

DAVID JEFFERY PRINGLE

Fifth Plaintiff

PAULINE SIGNA PRINGLE

Sixth Plaintiff

SEALEGS INTERNATIONAL LIMITED

Defendant/counterclaim Plaintiff

Procedural Posture

Civil — Intellectual Property Dispute (copyright, Design Registration and Patent) and Damages on Undertaking / Strike Out Application Under High Court Rules R15.1 (application to Strike Out Counterclaim and Parts of Defence)

Legal Issues

  1. 1 Could the patent claim have been brought with the copyright proceedings?
  2. 2 Should the patent claim have been brought earlier (abandonment/misleading/conduct)?
  3. 3 Effect of the 2017 patent amendment on ability to bring proceedings

Ratio Decidendi

The strike out application was dismissed: Sealegs did not plainly abandon or deliberately mislead about its patent claim; procedural realities (trial timetable and patent amendment process) and legal distinctions between copyright and patent justified separate proceedings; Sealegs' patent counterclaim and patent-based defences were not so clearly untenable or oppressive as to amount to an abuse of process warranting strike out; striking out would unjustifiably limit Sealegs' right to bring and defend legitimate claims.

Court Disposition

Application to strike out parts of the defence and the whole of the counterclaim dismissed

Orders

  • Application to strike out dismissed
  • Sealegs entitled to costs; preliminary view costs on a 2B basis event basis