InternationalUSRemember you can easily switch between MIP US and MIP International at any time

Australia: Unjustified threats of patent infringement weakened by courts




Australian courts have recently taken a dim view of competitors claiming that the patentee has made unjustified threats of patent infringement. It is now clear that, in relation to the assessment of damages, it is necessary for the defendant to show any threats made by the patentee were directly the cause of loss or damage to the defendant.

In Mizzi Family Holdings Pty Ltd v Morellini (No 3) [2017] FCA 870, damages relating to the unjustified threats were at issue. Mizzi held a patent for a sugar cane planting machine and sued Morellini for infringement. At first instance, it was found that Morellini's machine did not infringe the patent and that Mizzi had made unjustified threats of patent infringement. (It was later found on appeal that Mizzi's patent was invalid for false suggestion.) Mizzi had caused advertisements to be placed in trade journals, warning off potential customers of being in patent "infringement danger" if they were to buy competitive machinery to that disclosed in Mizzi's patent application.

In light of a recent precedent, Morellini needed to establish causation between the threats and the damages claimed. The judge refused to find any liability even though customers did not want to take up the defendant's machine, and "they were a bit cautious because they were waiting for all this to be over". Although the judge accepted a general reluctance to deal with the invention, there was no finding that the reluctance was attributable to any threats.

The net effect of this decision is that it establishes the need for evidence of actual causation between the threat of patent infringement and the resulting loss by the potential competitor. This is good news for patent holders but sets a high threshold for those wishing to invoke the unjustified threat ground in dealings with a patentee.

Treloar-Peter-100
Peter Treloar

Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000, Australia
Tel: +61 2 9777 1111
Fax: +61 2 9241 4666
email@shelstonip.com
www.shelstonip.com


Comments






profile

Managing IP

ManagingIP

ManagingIP profile

RT @mdloney: Michael Shore, the lawyer behind Allergan’s controversial transfer of patents to a Native American tribe, vowed to "take a wre…

Nov 22 2017 07:33 ·  reply ·  retweet ·  favourite
ManagingIP profile

Our weekly IP news round-up includes stories about Finjan, Blue Coat, Fox Television, design patents, Polaroid, Fuj… https://t.co/dOtK14m74v

Nov 22 2017 02:01 ·  reply ·  retweet ·  favourite
ManagingIP profile

Confidentiality clubs becoming more common in Indian patent disputes https://t.co/VcVqY6V4CY The Delhi High Court r… https://t.co/qkhIzENcAw

Nov 22 2017 10:00 ·  reply ·  retweet ·  favourite
More from the Managing IP blog


null null null

null null null

October 2017

Courts grapple with scope of patent protection

The Supreme Court’s decision in Actavis v Eli Lilly introduced a doctrine of equivalents and arguably also established a doctrine of prosecution history estoppel in the UK. We look at the law across Europe, and the impact the decision might have. Kingsley Egbuonu, Michael Loney and James Nurton set the scene



Most read articles

Supplements