Recent Cases

Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (12 November 2020) (Kiefel CJ, Bell, Gageler, Keane, Nettle, Gordon and Edelman JJ)


Patents – Infringement – Where printer ink cartridges embodied inventions claimed in two patents – Where used cartridges acquired by third party and modified for re-use – Where modified cartridges imported into Australia for sale to public – Where patentee alleged infringement of patent rights – Where s 13(1) of Patents Act 1990 (Cth) provides patentee has exclusive rights to exploit invention – Where “exploit” includes make, hire, sell or otherwise dispose of product and to use it – Whether modifications to cartridges constituted impermissible “making” of new product – Whether doctrine that patentee’s exclusive rights with respect to product are exhausted on first sale (“exhaustion doctrine”) should be accepted – Whether doctrine that implied licence arises on sale of patented goods to purchaser (“implied licence doctrine”) should continue to be applied.

Words and phrases – “conditions as to use”, “embodying the claimed invention”, “essential features”, “exclusive statutory rights”, “exhaustion doctrine”, “exhaustion of rights”, “exploit”, “implied licence”, “implied licence doctrine”, “infringement”, “invention”, “make, hire, sell or otherwise dispose of”, “make, use, exercise, and vend”, “making”, “manufacture”, “modifications”, “monopoly”, “monopoly rights”, “patent”, “patent rights”, “personal property”, “product”, “repair”, “re-use”, “single use”, “use”.