You may have read the title of this article and wondered, ‘what, exactly, is a “springboard injunction”?’ If so, I am sure you are not alone. I encountered the term for the first time myself this past week, when I read a recent decision of the Federal Court of Australia, Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (No 2) [2015] FCA 140.The background to this decision, very broadly speaking, is as follows. Streetworx is the proprietor of two innovation patents relating to street lighting assemblies (also known as ‘luminaires’). In a judgment handed down on 18 December 2014 (Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366), Justice Beach found that Artcraft had infringed the Streetworx patents by the supply of its own luminaires, which it had manufactured in China, and imported for sale in Australia.
Artcraft has pre-existing contracts to provide luminaires to the Monash City Council and Moonee Valley City Council (which cover significant areas of Melbourne’s South East and North West, respectively).
After the December judgment was handed down, Artcraft determined that it was able to modify its existing stocks of luminaires such that they would no longer infringe the Streetworx patents, and could therefore be used to meet its obligations to supply luminaires under the council contracts.
Not surprisingly – considering its success in establishing the validity and infringement of its patents – Streetworx was not impressed by Artcraft’s ‘solution’ to its infringement problem. Among other relief, Streetworx therefore sought an injunction restraining Artcraft from supplying its modified, non-infringing, luminaires to the Monash and Moonee Valley Councils. It also sought orders requiring Artcraft to hand over all infringing luminaires in its possession for destruction by Streetworx. The court has now denied both of these requests.
The so-called ‘springboard injunction’ is the requested order restraining Artcraft from supplying non-infringing products, on the basis that they have been produced by way of the importation and use of infringing products. Acquisition of the infringing products may thus be regarded as a ‘springboard’ from which the non-infringing products are made and supplied.
