2.6.6 Summary proceedings (summary adjudication)
2.6.6.1 Availability of summary adjudication
In the Federal Court of Australia summary adjudication is available both to applicants (i.e., the party alleging infringement of a patent) and respondents (i.e., the party defending an allegation of infringement of a patent).
The procedural rules relating to summary adjudication are set out in Rule 26.01 of the Federal Court Rules 2011 (Cth). An application for summary adjudication requires an affidavit stating the grounds of the application and the facts and circumstances relied on to support those grounds.84
2.6.6.2 Basis for summary adjudication – “no reasonable prospect” of success
The power of the court to give summary adjudication is provided by Section 31A of the Federal Court of Australia Act 1976 (Cth). The court may give summary judgment in favor of an applicant if the court is satisfied that the respondent “has no reasonable prospect of successfully defending the proceeding,”85 and it may summarily dismiss a proceeding if it is satisfied that the applicant “has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding.”86
Section 31A(3) specifies that a defense or proceeding need not be “hopeless” or “bound to fail” for it to have “no reasonable prospect of success.” This is because the “no reasonable prospect of success” standard was adopted in Section 31A to make it easier for a party to obtain summary adjudication, in comparison with the common-law standard that previously applied, which required a proceeding or defense to be “hopeless” or “bound to fail” before summary judgment or summary dismissal could be ordered. A “reasonable prospect of success” is a “real,” rather than “fanciful,” prospect.87
The court’s power to make orders for summary judgment or summary dismissal is discretionary.88 The court will exercise its powers in relation to summary adjudication with caution.89 This is particularly so where an application for summary judgment or summary dismissal requires consideration of apparently complex questions of fact, law, or mixed law and fact.90 Where there are factual issues capable of being disputed and in dispute, the summary disposition of the proceeding would not be appropriate.91 A proceeding will not be determined summarily unless it is clear that there is no real question to be tried.
The party bringing the application for summary determination bears the onus of persuading the court that the proceedings should be determined summarily prior to a full hearing (and prior to other court processes that may not yet have occurred, such as discovery). That onus is “heavy.”92 If a prima facie case in support of summary determination is established, the onus shifts to the opposing party to point to some issue that makes a trial necessary.93
2.6.6.3 Summary adjudication in patent litigation
A summary judgment application could be brought by a patentee on the basis that the respondent has “no reasonable prospect” of defending the allegation that its product or method infringes the patent. For example, the respondent may admit to the factual allegations of making, using or selling the relevant product or method, with the only issue needing to be determined by the court being whether that product or method infringes the patent. In these circumstances, the applicant could consider its case on infringement to be so clear that the respondent has “no reasonable prospect of successfully defending” the allegations of infringement.
By the same token, a respondent who is alleged to have infringed a patent could bring a summary dismissal application on the basis that its product or method plainly does not infringe the patent such that the applicant has “no reasonable prospect of successfully prosecuting the proceeding.”
A respondent could also bring a summary dismissal application on the basis that the patent is invalid. For example, if there is a publication that disclosed all of the integers of the invention claimed in the patent, but there is a dispute about the priority date of the patent and therefore a dispute about whether the publication is relevant prior art, then the respondent may decide to make an application for summary dismissal on the basis that the priority date issue can be determined without extensive evidence.94 In such a case, determination of the priority date issue would effectively determine the issue of patent validity.
In practice, however, summary adjudication is rarely sought in patent litigation in Australia, either by applicants or by respondents. This is likely due to the fact that patent proceedings generally involve complex questions of fact and law, which are generally not appropriate for summary determination.95