Upaid Systems Ltd v Telstra Corporation Limited [2013] FCA 1441 (23 December 2013)
Upaid Systems Ltd, a company which some regard as a patent troll, has stumbled at the first hurdle in its infringement case against Telstra (which I first reported back in August). Specifically, a judge of the Federal Court of Australia has found that Upaid has failed to meet its obligations to provide an adequate statement of its case, i.e. to identify, with sufficient particularity, at least one instance of each type of infringement alleged to have been committed by Telstra.
The court has given Upaid until 28 February 2014 to file amended documents, stating its allegations in sufficient detail.
I have said before that I do not consider Australia to be a fertile hunting ground for patent trolls, because the patent litigation system in this country lacks a number of the characteristics that make the trolls’ enforcement-based business models so effective in the US. And while Upaid may not qualify as a classic ‘troll’, the court’s finding that it has failed to plead its case adequately highlights some of the challenges that a true patent troll would face in Australia.
Two things are particularly notable about the court’s decision:
Making this decision even more interesting – and the case worthy of watching from an international perspective – is that the two notable features listed above, i.e. a high standard for pleading a case of infringement, and fee-shifting, are both key elements of the Goodlatte Innovation Act 2013 which was recently passed by the US House of Representatives.
This case suggests that raising the requirements for pleading an infringement case can have a significant impact on the ability of patent trolls – and perhaps on inadequately-prepared non-practising entities (NPEs) in general – to bring unreasonable and disruptive lawsuits.
Upaid Systems Ltd, a company which some regard as a patent troll, has stumbled at the first hurdle in its infringement case against Telstra (which I first reported back in August). Specifically, a judge of the Federal Court of Australia has found that Upaid has failed to meet its obligations to provide an adequate statement of its case, i.e. to identify, with sufficient particularity, at least one instance of each type of infringement alleged to have been committed by Telstra.The court has given Upaid until 28 February 2014 to file amended documents, stating its allegations in sufficient detail.
I have said before that I do not consider Australia to be a fertile hunting ground for patent trolls, because the patent litigation system in this country lacks a number of the characteristics that make the trolls’ enforcement-based business models so effective in the US. And while Upaid may not qualify as a classic ‘troll’, the court’s finding that it has failed to plead its case adequately highlights some of the challenges that a true patent troll would face in Australia.
Two things are particularly notable about the court’s decision:
- Upaid’s particulars were found to be inadequate despite what appears to have been a reasonable effort to describe specific examples of alleged infringement by Telstra, confirming that the court was not willing to ‘bend’ or relax the rules simply because the task of particularising the infringement case might be regarded as difficult; and
- as a result of its failure, Upaid has been ordered to pay Telstra’s costs (i.e. necessary expenses and reasonable attorney fees) of its application to compel Upaid to provide an adequate statement of its case.
Making this decision even more interesting – and the case worthy of watching from an international perspective – is that the two notable features listed above, i.e. a high standard for pleading a case of infringement, and fee-shifting, are both key elements of the Goodlatte Innovation Act 2013 which was recently passed by the US House of Representatives.
This case suggests that raising the requirements for pleading an infringement case can have a significant impact on the ability of patent trolls – and perhaps on inadequately-prepared non-practising entities (NPEs) in general – to bring unreasonable and disruptive lawsuits.
I have become aware that some (former) applicants for Indonesian patents have recently received letters from the Directorate General of Intellectual Property Rights in Indonesia requesting payment of annual maintenance fees relating to abandoned patents dating back to the 1990’s.
Nearly a month after 
I am a fan of 
A panel of five judges of the High Court has decided, by a majority of 4-1, that methods of treating the human body by the administration of a therapeutic drug constitute patent-eligible subject matter in Australia. More particularly, the court ruled in favour of claims directed to a subsequent therapeutic use, i.e. a method of administering a known compound (in this case, leflunomide) for treatment of a condition (psoriasis) for which its efficacy was not previously known.
As regular readers will be aware, 
In the first published decision of the Australian Patent Office relating to the new Raising the Bar regulations on extensions of time during opposition proceedings, an opponent has been denied an extension to file evidence in support of its opposition. The decision confirms that the Office will be taking a hard line on applications for extensions.
