Autronic Plastics Inc v DRM Trading Pty Limited

[2006] FCA 861

FEDERAL COURT OF AUSTRALIA

Autronic Plastics Inc v DRM Trading Pty Limited [2006] FCA 861

AUTRONIC PLASTICS INC v DRM TRADING PTY LIMITED
NSD 1082 of 2005

ALLSOP J
28 JUNE 2006
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1082 of 2005

BETWEEN:	AUTRONIC PLASTICS INC APPLICANT
AND:	DRM TRADING PTY LIMITED RESPONDENT
JUDGE:	ALLSOP J
DATE OF ORDER:	28 JUNE 2006
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.Grant leave to the Applicant to file and serve a Notice to Answer Interrogatories on the Respondent in the form of Annexure A to the Short Minutes of Order handed up in Court on 28 June 2006.

2.Direct the Respondent to file and serve its verified answers to the Notice to Answer Interrogatories within 14 days of service of the Notice to Answer Interrogatories.

3.Grant leave to the Applicant to file and serve its Amended Statement of Claim in the form provided to the Respondent on 26 June 2006.

4.Direct the Respondent to file and serve its Defence to the Amended Statement of Claim within 14 days of service of the Amended Statement of Claim.

5.Order the Applicant to pay the Respondent’s costs thrown away by reason of the amendment to the Statement of Claim.

6.Grant leave to the Applicant to file further affidavit evidence in chief, such affidavits to be filed and served by 7 July 2006.

7.Direct that the Respondent file and serve any further affidavit evidence in answer on infringement by 4 August 2006.

8.Reserve for further consideration at or after the next directions hearing the question of any further discovery by the Respondent on the infringement issues.

9.In relation to the motion filed on 3 May 2006 dealing with issues other than the Defence to Cross-claim, the Respondent’s costs be its costs in the cause.

10.In relation to the motion filed on 3 May 2006 dealing with issues other than the Defence to Cross-claim, 75% of the Applicant’s costs be its costs in the cause.

11.The parties have liberty to apply on 3 days notice.

12.Stand over the matter for further directions to 2.15 pm on 26 July 2006.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1082 of 2005

BETWEEN:	AUTRONIC PLASTICS INC APPLICANT
AND:	DRM TRADING PTY LIMITED RESPONDENT

JUDGE:	ALLSOP J
DATE:	28 JUNE 2006
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. In this matter the parties after the last occasion have been able to reduce the disputes on procedural matters to some very short minutes.  The only matter in dispute is the question of orders 8 and 10 of the short minutes of order. 

2. As to order 8, I propose to allow that direction to stand.  It merely reserves the position of the applicant and in a sense does not advantage or disadvantage any party in the proceedings but flags for the memory a potential issue that Mr Gleeson has indicated may conceivably arise, depending upon the answers to the interrogatories that I propose to grant leave to administer.

3. As to paragraph 10, the question is whether the applicant should have its costs.  The orders that I made on 16 June 2006 and settled in chambers include an order that each party's costs of that part of the motion dealing with the defence to the cross-claim be costs in the cause.  What was intended by that was the costs in relation to that part of the motion dealing with the amendment.  That should have been perhaps made clearer and I hope I have done so now.  That leaves in effect a debate as to what should happen to the applicant's costs in relation to paragraphs 3, 4, 5, 6 and 7 of the motion which was filed on 3 May 2006.  The respondent's submissions are that the result of the motion reflects sufficient failure by the applicant and an over-reaching attempt to ask for too much in the motion such that it should not have its costs in the cause.  Thus the costs of the applicant in relation to preparing and arguing the motion reflected in paragraphs 3 to 7 should be paid by itself, win, lose or draw.

4. Without wishing to lengthen these reasons beyond what is absolutely necessary may I just say the following.  The profession and the Court have been engaged for some time in the pursuit of appropriate mechanisms to shorten and limit interlocutory procedures for the benefit of litigants.  It is not an easy task in patent litigation and some other types of litigation undertaken by this Court, for instance under Part IV of the Trade Practices Act.

5. Litigants want their rights vindicated to the best possible advantage and complain if that is not done.  The procedure and interlocutory preparation is a necessary part of the protection and vindication of those rights. 

6. One particular aspect of the costs of litigation and interlocutory procedures that has received considerable attention in terms of discussion both formal and informal by the Court and practitioners is discovery.  An attempt was made in orders 3, 4, 5 and 6 to deal with two different types of problems in discovery.  Paragraphs 3 and 4 dealt with the issue of the Sabre order, that is an order contemplated and as discussed in the Sabre Corporation Pty Limited v Russ Calvins Haircare Co (1993) 46 FCR 428 in which the problem of the parent or related company's presence offshore and the lack of amenability of that party to the compulsory process of discovery was dealt with. Not quite the same issue arises here but there is a third party offshore who is beyond the reach and processes of this Court otherwise than through invocation of procedures in the United States of America which might invoke the Hague Convention, or through requests of this Court for the assistance of the American court system.

7. The end result of what was done in relation to the Sabre order I think sufficiently reflects that which was asked for by the applicant to entitle it to at least its costs in the cause in relation to paragraphs 3 and 4.   

8. Paragraphs 5 and 6 deal with the difficult issue as to substitutes for discovery and whether or not affidavits being ordered against the party who would be subject to the discovery of it, or who might be subject to the discovery obligation should be ordered in lieu of discovery.  I think with the utmost respect to the practitioners who drew up 5 and 6 there may have been a degree of ambition in what was sought.  Nevertheless the argument which took place on the last occasion, if I may say so with respect, was dealt with efficiently and succinctly by senior counsel on both sides.  Through that discourse an alternative procedure was fashioned though not without some hesitation.

9. I think it probably would be an injustice to deny once and for all the applicant's costs for all time for the preparation of the motion 5 and 6, not by way of judicial horse trading but in a legitimate attempt to give a reflection to the view that I have expressed today and on the last occasion that there was perhaps a degree of ambition in the paragraphs, I propose to make an order in place of paragraph 10 of the short minutes of order that in relation to the motion filed on 3 May 2006 dealing with issues other than the defence to cross-claim 75 per cent of the applicant's costs be costs in the cause.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Allsop.

Associate:

Dated:             17 July 2006

Counsel for the Applicant:	Mr D Shavin QC with Mr N Murray
Solicitor for the Applicant:	Mallesons Stephen Jacques
Counsel for the Respondent:	Mr J Gleeson SC
Solicitor for the Respondent:	Freehills
Date of Hearing:	28 June 2006
Date of Judgment:	28 June 2006