Cook Inc v World Medical Manufacturing Corp
[1999] FCA 1333
•24 SEPTEMBER 1999
FEDERAL COURT OF AUSTRALIA
Cook Inc v World Medical Manufacturing Corp [1999] FCA 1333
PRACTICE AND PROCEDURE – anti-suit injunction – interference in foreign court –exclusive jurisdiction of Federal Court of Australia – accrued jurisdiction of Federal Court of Australia - conflict of interest - waiver of right to prosecute conflict of interest – disclosure of information - associated patent attorney firm of applicant’s solicitors formerly acted for respondent in related matter.
CSR Limited v Cigna Insurance Australia Limited (1997) 189 CLR 345 applied
National Mutual Holdings Pty Ltd v Sentry Corporation (1989) 22 FCR 209 applied
Pioneer Concrete (Vic) Pty Ltd v Trade Practices Commission (1982) 152 CLR 460 cited
Pegasus Leasing Ltd v Cadoroll Pty Ltd (1996) 59 FCR 152 cited
Re Wakim (1999) 163 ALR 270 considered
Prince Jefri Bolkiah v KPMG (1999) 2 WLR 215 cited
Murray v The Macquarie bank Limited (1991) 33 FCR 46 citedCOOK INCORPORATED v WORLD MEDICAL MANUFACTURING CORPORATION & ORS
V 56 of 1999
GOLDBERG J
MELBOURNE
24 SEPTEMBER 1999
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V 56 of 1999
BETWEEN:
COOK INCORPORATED
ApplicantAND:
WORLD MEDICAL MANUFACTURING CORPORATION
First RespondentJEFFREY DEMPSEY MILLER
Second RespondentBIOMEDEX DPTY LTD
(ACN 006 949 152)
Third RespondentJECOLI PTY LTD
(ACN 001 640 982)
Fourth RespondentJUDGE:
GOLDBERG J
DATE OF ORDER:
24 SEPTEMBER 1999
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1. The applicant’s motion filed 14 September 1999 is dismissed.
2.The directions hearing and the first respondent’s motion filed 10 September 1999 are adjourned to a date to be fixed no later than 3 November 1999.
3.The applicant pay the first respondent’s costs of the applicant’s motion and the hearing on 24 September 1999.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V 56 of 1999
BETWEEN:
COOK INCORPORATED
ApplicantAND:
WORLD MEDICAL MANUFACTURING CORPORATION
First RespondentJEFFREY DEMPSEY MILLER
Second RespondentBIOMEDEX DPTY LTD
(ACN 006 949 152)
Third RespondentJECOLI PTY LTD
(ACN 001 640 982)
Fourth Respondent
JUDGE:
GOLDBERG J
DATE:
24 SEPTEMBER 1999
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
Introduction
The applicant by notice of motion filed 14 September 1999 seeks an anti‑suit injunction against the first respondent and its solicitors, Messrs Baker & McKenzie, restraining them from continuing proceeding No 6725 of 1999 commenced by the first respondent by Originating Motion in the Supreme Court of Victoria on 3 September 1999 against the applicant’s solicitors, Phillips Ormonde & Fitzpatrick Lawyers (“the applicant’s solicitors”) and its patent attorneys Phillips Ormonde & Fitzpatrick Patent Attorneys (“the patent attorneys”). In the Supreme Court proceeding the first respondent is seeking orders that the applicant’s solicitors and patent attorneys be restrained from acting or continuing to act for the applicant in this Federal Court proceeding, that the patent attorneys be restrained from using or disclosing to any person any information acquired or obtained during the course of acting for the first respondent in the period from 24 February 1998 to 23 June 1999 and that the applicant’s solicitors be restrained from using or disclosing to any person any information concerning the first respondent acquired or obtained from the patent attorneys. A summons has been filed in the Supreme Court proceeding returnable before a Master on 27 September 1999 seeking an order that the proceeding be referred to a Judge in the Practice Court for hearing and determination. The matter will only be dealt with by a Judge in the Practice Court on that date if the hearing of the matter can be concluded within two hours. It is not in dispute that the hearing will take longer than two hours. At the present time it cannot be said with any degree of certainty when the matter can be heard in the Supreme Court. If an urgent hearing is granted the matter will probably be heard this year. If an urgent hearing is not granted the matter will not be heard until some time in 2000.
Background
The patent attorneys were first consulted on behalf of the applicant in relation to the patent in suit in this proceeding in June 1997. That patent is Australian Letters Patent No 581,464 for an invention entitled “Percutaneous Endovascular Stent”. The Letters Patent were sealed on 18 July 1989 and the complete specification was published and became open to public inspection on 10 April 1996. In August 1997 the patent attorneys were consulted by the applicant as to possible infringement of that patent by the first respondent’s “Talent” stent grafts. Counsel was first consulted by the applicant’s solicitors in January 1998.
On 10 February 1999 the applicant filed an application pursuant to s 120 of the Patents Act 1990 (Cth) seeking an injunction restraining the respondents from infringing its patent. The applicant also seeks consequential relief by way of damages, delivery up of infringing articles for destruction and all necessary accounts and inquiries. The applicant alleges in its statement of claim that each of the respondents has infringed various of the claims of the patent of stents including “Talent” stent‑grafts and “Talent” stent‑graft extensions. It is alleged that the first respondent, a United States corporation, is the manufacturer and that the second, third and fourth respondents are its agents in Australia for the importation into Australia of these stents which are being promoted and offered for sale in Australia.
On 25 February 1999 I granted leave to the applicant to serve the application, statement of claim and particulars of infringement on the first respondent in the United States of America. Subsequently on or about 21 May 1999 agreement was reached between the solicitors for the parties as to the directions to be given as to pleadings and discovery and an issue for security of costs by the applicant was also resolved. On 29 May 1999 I ordered by consent that the respondents file and serve their defences and any cross‑claims on or before 15 July 1999 and made consequential orders for pleadings and discovery. No defences or cross-claims have been delivered.
The patent attorneys were first instructed by United States attorneys on behalf of the first respondent by letter dated 21 March 1998 to enter the national phase of the first respondent’s International Patent Application PCT/US96/17233 which relates to “Talent” stent-grafts. The patent attorneys ceased to act for the first respondent and transferred its file on the first respondent’s application to other patent attorneys in mid‑June 1999 after the conflict of interest issue was raised. The international filing date of the application was 28 October 1996 claiming a priority date of 30 October 1995. The specification of that application had an international publication date of 9 May 1997 and it became open to public inspection in Australia at the Patent Office Library in Canberra on 22 May 1997.
On or about 19 or 20 April 1999 Baker & McKenzie solicitors, informed the applicant’s solicitors that they were acting for the first respondent and claimed that the applicant’s solicitors had a conflict of interest in acting for the applicant in this matter on the ground that the patent attorneys had acted for the first respondent in relation to the Australian national phase of the first respondent’s International Patent Application PCT/US96/17233. Baker & McKenzie subsequently informed the applicant’s solicitors that they were also acting for the other respondents in this proceeding.
After the initial contact by Baker & McKenzie, correspondence passed between the solicitors which dealt with the interlocutory steps in this proceeding which have occurred to date and the conflict of interest issue which had been raised by Baker & McKenzie. It is not necessary to refer to all that correspondence in detail but certain points should be noted. By letter dated 26 April 1999 the applicant’s solicitors informed Baker & McKenzie that the patent attorneys had received instructions from a United States agent to enter the National Phase of International Application No PCT/US96/17233 in March 1998, that no instructions were received from the United States agent directly from the first respondent by the patent attorneys, that the only instructions received were administrative in nature and that no confidential information of any kind had been received by the patent attorneys from the first respondent’s agent. The letter went on to say that the patent attorneys were arranging for the transfer of the case to other Australian representatives and that the applicant’s solicitors had no conflict in the present proceeding.
By letter dated 3 May 1999 Baker & McKenzie sought security for costs. The exchange of correspondence continued in relation to directions proposed for the filing of pleadings and discovery. In particular on 20 May 1999 Baker & McKenzie wrote to the applicant’s solicitors in relation to the proposed directions and security for costs which it had sought. On the conflict of interest issue the letter said:
“Our client has noted carefully the contentions in your letter dated 26 April 1999 concerning your firm’s conflict of interest. Our client disagrees in the strongest terms with your conclusion that there is no conflict. We will be raising this matter again in the appropriate manner shortly. In the meantime we merely foreshadow the strongly expressed concerns on behalf of our client, which reserves entirely its position on this issue.”
On 25 May 1999 the applicant’s solicitors wrote to Baker & McKenzie with their client’s instructions as to the amount agreed to be provided for security for costs.
On 18 June 1999 Baker & McKenzie wrote to the applicant’s solicitors raising again the conflict of interest issue. The letter set out the view that there was a conflict of interest in that at the same time as the patent attorneys were acting for the first respondent in prosecuting its patent application, the applicant’s solicitors commenced a proceeding on behalf of the applicant in relation to the subject‑matter of that patent application. The letter raised other matters and noted that failing a satisfactory reply or confirmation within five business days that the applicant’s solicitors had ceased acting for the applicant, Baker & McKenzie were instructed to commence proceedings against the applicant’s solicitors and the patent attorneys seeking orders to remove them from the record and restrain them from acting for the applicant in the present proceeding.
On 24 June 1999 the applicant’s solicitors wrote to Baker & McKenzie asking them to identify clearly the communications provided to the patent attorneys said to contain confidential information. The letter noted that the applicant’s solicitors had not acted for the first respondent and that the patent attorneys were no longer acting in respect of the first respondent’s Australian patent application.
On 30 June 1999 Baker & McKenzie replied to the applicant’s solicitors’ letter of 24 June 1999 setting out a number of aspects in respect of which it sought clarification of matters relating to the conflict of interest issue. In particular they sought information as to which persons from the applicant’s solicitors and the patent attorneys had carried out work for the first respondent or had been involved with the prosecution of its patent application. On 7 July 1999 Baker & McKenzie sought an immediate reply to its earlier letter. That reply came on 12 July 1999 in which the applicant’s solicitors said that no confidential information of any kind had been received by the patent attorneys and that there was no substance in the complaint or allegations. On 15 July 1999 Baker & McKenzie sought further information from the applicant’s solicitors and on 21 July 1999 that firm responded to the questions raised.
There is an issue between the parties as to whether the applicant’s solicitors and the patent attorneys have disclosed fully which of their respective personnel have been involved in this proceeding and in the prosecution of the first respondent’s patent application and whether any, and if so which, personnel of the patent attorneys have been assisting in this proceeding. The first respondent says there has been a failure in this respect whereas the applicant contends that this issue has been resolved by the applicant’s solicitors’ letter of 21 July 1999. It is not necessary to resolve this issue on the present application.
On 30 July 1999 Baker & McKenzie wrote to the applicant’s solicitors stating that their clients’ pleading was in an advanced state of preparation but that it was inappropriate to file and serve the defence and cross‑claim until the conflict of interest issue had been resolved.
On 2 September 1999 Baker & McKenzie notified the applicant’s solicitors by letter that the first respondent had instructed them to commence proceedings in the Supreme Court of Victoria against the applicant’s solicitors and the patent attorneys in relation to what was said to be the unresolved conflict issue.
A directions hearing was held on 8 September 1999 when I was informed of the issue of the Supreme Court proceeding. At that hearing the respondents foreshadowed an application for orders that this proceeding be adjourned or stayed pending the determination of the Supreme Court proceeding. That application was made by notice of motion filed on 10 September 1999.
In the correspondence from Baker & McKenzie to which I have referred information is sought and a number of issues are raised concerning the relationship between the applicant’s solicitors and the patent attorneys, the identity of persons from each of those firms involved in acting for the applicant in relation to this proceeding and acting for the first respondent in relation to the prosecution of its patent application. The applicant’s solicitors have responded to the matters raised and have asserted in the correspondence that the first respondent has been unable to establish that the patent attorneys ever received any confidential information of the first respondent or any information of any kind having any relevance to the Federal Court proceeding. Baker & McKenzie has contended in the correspondence that the questions it has asked have not been answered satisfactorily and further information has been sought. The applicant’s solicitors contend that it has supplied the required information and that no conflict of interest exists.
There is clearly an issue between the parties as to whether the relevant conflict of interest exists but that is not a matter that I can determine on this application. Not only is it inappropriate for me to do so but I do not have all relevant material before me on the issue which would enable me to form a considered view on the matter. I therefore proceed on the basis that there is a serious issue to be tried as to whether the applicant’s solicitors and the patent attorneys have a conflict of interest in acting for the applicant in the present proceeding and that it is necessary for that issue to be resolved by way of court proceeding.
The submissions
The applicant made the following submissions:
(a)The Supreme Court proceeding constitutes an undue interference with the process in this Court which generates in the applicant the necessary equity to entitle it to an interlocutory anti‑suit injunction.
(b)Where a party to a proceeding in the Federal Court seeks in another court to restrain the solicitors for the other party in this Court from acting as such solicitors, the resort to the other court constitutes interference with the conduct of the proceeding in this Court sufficient to attract the Court’s jurisdiction to grant an interlocutory anti‑suit injunction.
(c)The Federal Court has exclusive jurisdiction in respect of interference with or abuse of its own process and over the question whether the solicitor for a party should be permitted to represent that party: CSR Limited v Cigna Insurance Australia Limited (1997) 189 CLR 345, 398; National Mutual Holdings Pty Ltd v Sentry Corporation (1989) 22 FCR 209, 232; Pioneer Concrete (Vic) Pty Ltd v Trade Practices Commission (1982) 152 CLR 460, 472‑473. It follows, said the applicant, that the Supreme Court has no jurisdiction to entertain the proceeding brought by the first respondent.
(d)The Supreme Court proceeding is vexatious and oppressive because the Federal Court has exclusive jurisdiction over the subject matter and the Supreme Court has no jurisdiction in respect of it.
(e)The applicant’s rights may be affected by the Supreme Court proceeding but it is not a party to that proceeding and has no right to intervene in it.
(f)The applicant has to face two sets of proceedings in order to pursue its claim for patent infringement, the Federal Court is the most appropriate and best place for it to decide the merits of the first respondent’s complaint because the decision will involve matters of patent law which are the subject of the proceeding in this Court.
It was then submitted that the matters set out in sub‑pars (d), (e) and (f) throw doubt on the bona fides of the first respondent’s Supreme Court proceeding and that if there was any confidential information given by the first respondent to the patent attorneys it must be irrelevant to any issue in this proceeding.
It was also submitted by the applicant that the determination of the Supreme Court proceeding will cause significant delay in the prosecution of this proceeding and that in any event the first respondent has waived its right to make the complaint about the conflict of interest by seeking and negotiating security for costs, consenting on 21 May 1999 to orders for directions and serving a notice to produce on 23 June 1999 and obtaining production of documents referred to in the applicant’s particulars of infringement. The applicant contended that the Supreme Court proceeding is not properly constituted in accordance with the Rules of the Supreme Court: Rules 4.04, 4.05 and 4.05. That is a matter which should be dealt with by the Supreme Court as the defect may be cured under Rule 4.07
The first respondent did not challenge the jurisdiction of this Court to grant the anti‑suit injunction sought by the applicant but submitted that the Court should exercise its discretion against granting the injunction because it is not demanded by the administration of justice and is not necessary for the protection of the Court’s own proceedings or processes: CSR Limited v Cigna Insurance Australia Limited (supra) at 392; Pegasus Leasing Ltd v Cadoroll Pty Ltd (1996) 59 FCR 152, 156. The first respondent further submitted that:
(a)there is a live issue in relation to the conflict of interest matter and that it has not received an adequate response to the matters raised by it in relation to the personnel involved in this proceeding and on the prosecution of the first respondent’s patent application;
(b)it has not waived its rights to raise and prosecute the conflict of interest matter by the procedural steps taken in this proceeding because in Baker & McKenzie’s letter of 20 May 1999 the first respondent reserved its position on the conflict of interest issue;
(c)there is no interference as such in the proceedings or processes of this Court as a court, which ever it may be, will have to determine the conflict of interest issue before the patent infringement proceeding continues.
The issue of jurisdiction to entertain the matters raised in the Supreme Court proceeding was central to the first respondent’s submissions. The first respondent submitted that the Supreme Court has jurisdiction to entertain the whole of the matter raised in the Originating Motion in the Supreme Court including the conflict of interest issue. It was said that the relief sought in the Supreme Court proceeding went beyond merely seeking that the applicant’s solicitors no longer act for the applicant in the Federal Court proceeding as relief was also sought in relation to the disclosure of information.
The first respondent did not contend that the Federal Court does not have jurisdiction to determine the issues raised in the Supreme Court proceeding but rather submitted that there is doubt as to the jurisdiction of the Federal Court to deal with and resolve those issues as part of its accrued jurisdiction having regard, in particular, to the observations of Gummow and Hayne JJ in Re Wakim (1999) 163 ALR 270, 310‑314; see also Fencott v Muller (1983) 152 CLR 570, 608. The first respondent submitted that this Court should exercise extreme caution when considering interfering with another superior court’s process, by way of anti‑suit injunction, and should only do so where the reasons were compelling: CSR Limited v Cigna Insurance Australia Limited (supra) at 395‑396, and contended that the reasons were not compelling in the present proceeding.
Reasoning
As I have observed earlier, I proceed on the basis that the issue of the applicant’s solicitors and the patent attorneys’ conflict of interest is a serious issue to be tried and is to be determined in a court of law. In its written submissions the applicant submitted that there was doubt as to the bona fides of the Supreme Court proceeding but did not go so far as to say that the proceeding was hopeless. In the course of oral submissions Mr Lyons QC, who appeared for the applicant, submitted that the scope of the Supreme Court proceeding was illusory and that the proceeding was hopeless. I do not accept this submission. Although Mr Lyons QC submitted that the claimed confidential information could not have any relevance to the issues of patent infringement in the present proceedings, I do not have sufficient material before me to determine that issue. It is inappropriate at the present time, and certainly premature, to determine that issue.
I accept for present purposes that in order for the first respondent in the Supreme Court proceeding to obtain an injunction restraining the applicant’s solicitors and the patent attorneys from acting for the applicant in this proceeding, it must show that the confidential information is relevant to issues in this proceeding: Prince Jefri Bolkiah v KPMG (1999) 2 WLR 215 at 217, 224; Murray v The Macquarie bank Limited (1991) 33 FCR 46 at 50. I do not have the relevant material before me to form a view upon the matter and its determination would involve a consideration of what the first respondent claims is the confidential information communicated on its behalf to the patent attorneys.
The principal issue before me is whether there is an interference with the process of this Court which is an abuse or which ought to be the subject of restraint. It was not challenged that this Court has the jurisdiction in the circumstances before me to grant the relief sought. In National Mutual Holdings Pty Ltd v Sentry Corporation (supra) Gummow J said at 232:
“However, as their Lordships in Aerospatiale indicate, one tendency manifest in the decisions which indicate what provides sufficient equity to found the injunction, is a concern with the protection of the integrity of the processes of the domestic court. The conduct of foreign proceedings which have a tendency to interfere with the due process of the domestic court may, in the circumstances of a particular case, generate the necessary equity to enjoin those foreign proceedings as vexatious or oppressive: South Carolina Insurance Co v Assurantie Maatschappij ‘De Zeren Provincien’ NV [1987] AC 24 at 41.”
Gummow J continued at 233:
“In my view, prima facie, there is an interference with the conduct of litigation in this Court where, as is the present case, one party seeks in the courts of another country to enjoin its former solicitors from acting as solicitors for an opposing party in the litigation in this Court. It is a procedure apt to bring about a situation whereby that other party changes his solicitor, a step of primary and paramount concern to this Court. And it has a tendency to interfere with the procedures of this Court, of a character and degree quite above that of the United States pre‑trial discovery procedures with which the House of Lords was concerned in the South Carolina case (supra).”
This decision and the principles upon which it was based were approved by the High Court in CSR Limited v Cigna Insurance Australia Limited (supra). The majority of the Court (Dawson, Toohey, Gaudron, McHugh, Gummow and Kirby JJ) said at 391‑392:
The counterpart of a court’s power to prevent its processes being abused is its power to protect the integrity of those processes once set in motion. And in some cases, it is that counterpart power of protection that authorises the grant of anti‑suit injunctions. … as Gummow J pointed out in National Mutual Holdings Pty Ltd v Sentry Corporation [(1989) 22 FCR 209 at 232)], a court may grant an injunction to restrain a person from commencing or continuing foreign proceedings if they, the foreign proceedings, interfere with or have a tendency to interfere with proceedings pending in that court.
The inherent power to grant anti‑suit injunctions is not confined to the examples just given. As with other aspects of that power, it is not to be restricted to defined and closed categories. Rather, it is to be exercised when the administration of justice so demands or, in the context of anti‑suit injunctions, when necessary for the protection of the court’s own proceedings or processes.
Quite apart from the inherent power of a court to protect its own processes, a court may, in the exercise of the power deriving from the Chancery Court, make orders in restraint of unconscionable conduct or the unconscientious exercise of legal rights. If the bringing of legal proceedings involves unconscionable conduct or the unconscientious exercise of [a legal right, an injunction may be granted by a court in the exercise of] its equitable jurisdiction in restraint of those proceedings no matter where they are brought.”
Their Honours continued at 393:
“One well established category of case in which an injunction may be granted in the exercise of equitable jurisdiction is that involving proceedings in another court, including in a foreign court, which are, according to the principles of equity, vexatious or oppressive. Thus, it was said in Carron Iron Co v Maclaren [(1855) 10 ER 91] that ‘[w]here [there is] … pending a litigation here, in which complete relief may be had, [and] a party to the suit institutes proceedings abroad, the Court of Chancery in general considers that act as a vexatious harassing of the opposite party, and restrains the foreign proceedings’.”
(See also The Sentry Corporation v Peat Marwick Mitchell & Co (1989) 24 FCR 463; Allstate Life Insurance Co v Australia and New Zealand Banking Group (No 1) (1996) 64 FCR 1).
The question for determination is whether the Supreme Court proceedings are vexatious or oppressive, whether the administration of justice demands the injunction or whether the injunction is necessary for the protection of this Court’s own proceedings or processes. Although the present issue does not arise in the context of a proceedings in a foreign court in the political sense of the term “foreign”, the jurisdiction is still available to be exercised: Pegasus Leasing Ltd v Cadoroll Pty Ltd (supra) 156‑158. Although Gummow J said in National Mutual Holdings v Sentry Corporation (supra at 233) that prima facie there is an interference with the Court’s process where one party seeks in the courts of another country to restrain the other party’s solicitors from acting in the proceeding, he accepted that that was a prima facie view. His reasons and the reasoning of the majority in CSR Limited v Cigna Insurance Australia Limited (supra) allow for an explanation or justification for such interference which is not vexatious or oppressive. In my opinion, the present circumstances contain an explanation for the proceeding in the “other” court which should not be characterised as vexatious, oppressive or the unconscientious exercise of legal rights.
The difficulty which has arisen is brought about essentially by doubt about the jurisdiction of the Federal Court to entertain the issues in the Supreme Court proceeding and, in particular, the conflict of interest issue as a result of the decision of the High Court in Re Wakim (supra). It may be accepted that once this Court starts to exercise judicial power in relation to a matter before it, it has the exclusive right to exercise or control the functions which form part of the power or are incidental to it: Pioneer Concrete (Vic) Pty Ltd v Trade Practices Commission (supra) at 472‑473. It is still necessary to determine whether the issues raised in the Supreme Court form part of the “matter” for the purpose of attracting the exercise of Federal jurisdiction. In CSR Limited v Cigna Insurance Australia Limited (supra) the majority of the court said at 398:
“In cases where anti‑suit injunctions are sought to protect the proceedings or processes of a court, no question arises whether that court is an appropriate forum for the resolution of that issue: it is the only court with any interest in the matter.”
In National Mutual Holdings Pty Ltd v Sentry Corporation (supra) Gummow J said at 232‑233:
“In Australia, there is the further consideration that where a court has begun to exercise the judicial power of the Commonwealth in relation to a particular matter, it has the exclusive right to exercise or control the exercise of the functions which form part of that power or are incidental to it: cf Pioneer Concrete (Vic) Pty Ltd v Trade Practices Commission (1982) 152 CLR 460 at 471‑473, 474.
…
No specific provision is made whereby, on the application of one party, the Court may enjoin his former solicitor from continuing to act as solicitor for the other party to current proceedings on the footing of breach of contract or fiduciary obligation. However, such proceedings, whether founded in contract or apprehended breach of fiduciary duty, no doubt would arise in the course of and form part of the matter which attracted the jurisdiction of the Court: cf Darling Downs Investments Pty Ltd v Ellwood (1988) 18 FCR 510. Whether such an application would succeed obviously would depend not only upon the content of the law, but upon the state of the evidence; in particular, if interlocutory injunctive relief were sought, the balance of convenience would require consideration.”These decisions must now be considered in the light of Re Wakim (supra). In particular Gummow and Hayne JJ considered the extent and scope of the accrued jurisdiction of a federal court where the subject matter of a proceeding goes beyond a federal claim. Their Honours said at 310‑311:
“It must now be regarded as established that the jurisdiction of a federal court having jurisdiction in a matter arsing under a law made by the parliament is not ‘restricted to the determination of the federal claim or cause of action in the proceeding, but extend[s] beyond that to the litigious or justiciable controversy between parties of which the federal claim or cause of action forms part’. In Stack v Coast Securities (No 9) Pty Ltd [(1983) 154 CLR 261 at 294] the majority said:
In this, as in other cases, the recurrent problem is to identify what it is that falls within the Federal Court’s accrued jurisdiction. The majority judgment in Fencott v Muller [(1983) 152 CLR 570] provides this assistance in reaching an answer:
What is and what is not part of the one controversy depends on what the parties have done, the relationships between or among them and the laws which attach rights or liabilities to their conduct and relationships. The scope of a controversy which constitutes a matter is not ascertained merely by reference to the proceedings which a party may institute, but may be illuminated by the conduct of those proceedings and especially by the pleadings in which the issues in controversy are defined and the claims for relief are set out. But in the end, it is a matter of impression and of practical judgment whether a non‑federal claim and a federal claim joined in a proceeding are within the scope of one controversy and thus within the ambit of a matter.”
Their Honours then considered how one identifies the justiciable controversy and said at 311‑312:
“In Fencott it was said that:
in the end, it is a matter of impression and of practical judgment whether a non‑federal claim and a federal claim joined in a proceeding are within the scope of one controversy and thus within the ambit of a matter.
The references to ‘impression’ and ‘practical judgment’ cannot be understood, however, as stating a test that is to be applied. Considerations of impression and practical judgment are relevant because the question of jurisdiction usually arises before evidence is adduced and often before the pleadings are complete. Necessarily, then, the question will have to be decided on limited information. But the question is not at large. What is a single controversy ‘depends on what the parties have done, the relationships between or among them and the laws which attach rights or liabilities to their conduct and relationships’. There is but a single matter if different claims arise out of ‘common transactions and facts’ or ‘a common substratum of facts’, notwithstanding that the facts upon which the claims depend ‘do not wholly coincide’.”
In the light of the observations in Re Wakim (supra) to which I have referred, I consider that there is doubt as to the jurisdiction of the Federal Court to entertain the whole of the issues raised in the Supreme Court proceeding. Although the catalyst which crystallised the need for that proceeding was the commencement of the patent infringement action in this Court, the circumstances and facts to be considered in the Supreme Court proceeding relate to the activities and conduct of the patent attorneys and their inter‑relationship with the applicant’s solicitors in relation to the prosecution of the first respondent’s patent application. I am not satisfied that it can be said that there is no doubt that this Court has jurisdiction to entertain the application made in the Supreme Court because it is part of the justiciable controversy or the “matter” which is before this Court and can be entertained as part of the Court’s accrued jurisdiction.
Because there is doubt as to the jurisdiction of this Court to hear the application brought in the Supreme Court I do not consider that the Supreme Court proceeding is such an interference with the process of this Court as to warrant the grant of an injunction restraining the continuation of the Supreme Court proceeding. I do not consider that in the circumstances of the doubt as to the jurisdiction of this Court to hear the proceeding brought in the Supreme Court that it should be said that the Supreme Court proceeding is vexatious or oppressive or constitutes an abuse of the process of this Court. The circumstances are not such that the administration of justice or the interests of justice demand or require the grant of the injunction; nor are the circumstances such that the injunction is necessary for the protection of this proceeding or the Court’s processes. I also bear in mind the observation of the majority in CSR Limited v Cigna Insurance Australia Limited (supra) at 396 that the cases concerned with anti-suit injunctions:
…also emphasise that the power to grant injunctions in restraining of foreign proceedings should be exercised with caution. And that is so whether the information is sought in the exercise of the inherent or equitable jurisdiction.
Viewing the application for the anti-suit injunction through the filter of the principles applicable to interlocutory injunctions, I am satisfied that there is a serious question to be tried as to whether this Court has jurisdiction to entertain the issues presently before the Supreme Court. I am also satisfied that there is a serious question to be tried as to whether a conflict of interest does exist sufficient to entitle the first respondent to have the applicant’s solicitors and the patent attorneys restrained from acting further in this proceeding. Although there is an issue raised as to whether the relief claimed in the Supreme Court proceeding may be an interference with the process of this Court I am not satisfied, having regard to the jurisdictional issue raised, that there is a serious question to be tried as to whether the Supreme Court proceeding is vexatious, oppressive, an unconscionable exercise of rights or an abuse of process.
I am satisfied that the balance of convenience is against the granting of the injunction. It is preferable that the issues raised in the Supreme Court proceeding be resolved as soon as possible in a court where there is undoubted jurisdiction rather than have the matter proceed in a court where there is doubt as to jurisdiction. Although the determination of the Supreme Court proceeding will inevitably result in the delay of the present proceeding, such delay will occur to some extent no matter in which court the issues presently before the Supreme Court are raised. Although there is some doubt as to when the matter may be heard in the Supreme Court there is an opportunity to seek and obtain, subject to the discretion of the relevant Master or Judge, a speedy hearing in the Supreme Court. At the present time there would also be some delay if the matter were brought before the Federal Court.
I turn to the applicant’s remaining submissions. I do not accept the submission that the first respondent has waived its right to raise the conflict of interest issue. It expressly reserved its position on this matter in the Baker & McKenzie letter of 20 May 1999. Although the applicant is not a party to the Supreme Court proceeding it is open to it to apply to be added as a party so as to protect its interests. There will be two sets of proceedings but they will consider different issues. That is a consequence of the doubt as to the jurisdiction of this Court.
Accordingly the application by the applicant for an injunction to restrain the first respondent from continuing the proceeding in the Supreme Court will be dismissed. Having regard to the imminent application before the Master on 27 September 1999 and the intention of the first respondent to apply for an urgent hearing, I propose at this stage to adjourn the present proceeding and the respondents’ motion filed 10 September 1999 for an adjournment of the proceeding to a date to be fixed but no later than 3 November 1999. I will hear the parties on the issue as to costs.
I certify that the preceding thirty‑four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Goldberg. Associate:
Dated: 24 September 1999
Counsel for the Applicant: Mr J F Lyons QC Solicitor for the Applicant: Phillips Ormonde & Fitzpatrick Lawyers Counsel for the Respondent: Mr J E Middleton QC and Mr A J Maryniak Solicitor for the Respondent: Baker & McKenzie Date of Hearing: 22 September 1999 Date of Judgment: 24 September 1999
2
12
0