Two GPS tracking patents at the heart of a David vs. Goliath battle between Domino’s and a Sydney-based startup were foreshadowed by a patent owned by Uber, the pizza chain giant told a court Friday.
Domino’s is challenging the validity of Precision Tracking’s patents and has accused the small tech company of breaching confidentiality agreements after a three-year partnership between the companies broke down. In a counterclaim, Precision says the patents are valid and Domino’s is infringing them.
The pizza chain argued at a hearing before Federal Court Justice Alan Robertson on Friday that a patent owned by Uber in Australia and the US for a “system and method for arranging transport amongst parties through use of mobile devices” was a forerunner to the invention behind Precision Tracking’s patents and invalidated them for lack of novelty.
The Uber claim was first made in October last year by Domino’s, but Judge Robertson struck it down, saying it was made too close to the scheduled November trial in the case. The trial was adjourned until October this year, after Precision failed to meet discovery deadlines, and Domino’s barrister Tom Cordiner, QC, told the court the company sought to resurrect it.
“Now we say we’re in a very different timing scenario,” Cordiner told Judge Robertson. “There is a lot of time between now and trial.”
Pushing back, Precision Tracking’s barrister, Ron Webb, SC, said the lack-of-novelty claim based on the Uber patent was dismissed on grounds more broad than tardiness. In any case, the claim was being made too late again, Webb said.
“What has been fixed is a regime to prepare for final hearing … not to allow parties to reopen and have another go at all the issues,” he said.
Domino’s is also seeking to add a claim of rightful ownership in the two contested patents. The company claims that the technology behind the patents was developed using information gleaned as a result of the partnership between Domino’s and Precision Tracking.
The GPS tracking system developed from the partnership helps customers locate pizza delivery drivers in real time.
“We say an entitlement arises by reason of the collaboration between Precision Tracking and Domino’s,” Cordiner said.
He added that this unacknowledged claim of entitlement would lead to revocation of Precision Tracking’s two patents under Section 34 of the Patents Act because Domino’s is not listed on the patents.
Webb shot back, arguing the new claim presupposed Precision Tracking’s entitlement to the patents.
“It necessarily carries within it the acknowledgement that [Precision Tracking] also has a joint interest and therefore an entitlement of the patent,” he told the court.
He questioned why Domino’s was raising the allegation so late in the litigation.
“It simply can’t be said that Domino’s, as part of a joint undertaking, only realised it was part of a joint undertaking when it saw material from the other side,” Webb said.
In its cross-claim, Precision Tracking is also suing Navman Wireless, saying a system later developed by Domino’s and Navman, after the Precision Tracking agreement had broken down, substantially copied its own systems.
The directors of Precision Tracking, Vladimir Lasky, Nathan Parrott, and Dr Alexander Green, are also listed as respondents in Domino’s case.
Domino’s is represented by DLA Piper and Navman by Clayton Utz.
Precision is now represented by Allens, which took over from Corrs Chambers Westgarth in February this year. Precision has also enlisted the assistance of funder Litigation Capital Management to cover its legal costs.
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