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The Federal Court of Australia has clarified when a successful patentee must make an election for pecuniary relief in Vehicle Monitoring Systems Pty Ltd (VMS) v SARB Management Group Pty Ltd (SARB) (No 13) [2025] FCA 1078.
Under Australian patent law, a person who establishes patent infringement is entitled to either damages (compensation for losses suffered) or an account of profits (compensation for profits made), but not both.1 However, the legislation is silent on when the election must be made.
In 2024, the Full Federal Court held that SARB infringed various claims of VMS's patents relating to sensor-based systems for timing parked vehicles. The City of Melbourne was a customer of VMS's devices and a respondent to the proceedings.
On the issue of pecuniary relief, the City of Melbourne filed evidence setting out the number of infringing devices that it had used or kept in use, as well as revenue and expenses information, and the basis of estimates given. Despite this, VMS did not make an election. VMS submitted that the evidence was insufficient to enable an election and sought to make an election at a later point in the proceedings, possibly after lay and expert evidence had been filed.
In considering when VMS should be directed to make an election, Justice Burley said: "...a successful party has a right to information before an election, but that this is not at large. It is limited to what is required to put the party in a position whereby an informed and meaningful decision can be made, and is also constrained by the dictates of practicality, costs and the principles of case management".2
Justice Burley held that the evidence provides VMS with sufficient information to make an election. Allowing VMS to delay such an election would not accord with the overarching purpose of civil procedure – to facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible.3 Justice Burley gave VMS 21 days from the date of the decision to make an election between damages and an account of profits.
The decision is a reminder that once a patentee has sufficient evidence to quantum, it will likely need to make a timely call between damages or an account of profits.
Footnotes
1 Section 122 of the Patents Act 1900 (Cth).
2 Vehicle Monitoring Systems Pty Ltd (VMS) v SARB Management Group Pty Ltd (SARB) (No 13) [2025] 3 FCA 1078 at [37] (our emphasis).
3 Section 37M of the Federal Court of Australia Act 1976 (Cth).
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