Guttershield v LBI Holdings

[2009] NSWSC 735

CITATION:	Guttershield v LBI Holdings [2009] NSWSC 735
HEARING DATE(S):	27 July 2009
JUDGMENT DATE :	27 July 2009
JURISDICTION:	Equity
JUDGMENT OF:	Campbell JA
EX TEMPORE JUDGMENT DATE:	27 July 2009
DECISION:	Notice of Motion filed by Plaintiffs dismissed with no orders as to costs. Notice of Motion filed by Defendants dismissed with costs.
CATCHWORDS:	PROCEDURE – judgments and orders – power to set aside and vary orders – whether orders can be varied after four years have passed and a hearing of a reference to an associate justice has occurred – whether variation of orders is a change in the price of equitable relief – whether intention of orders miscarried - PROCEDURE – judgments and orders – liberty to apply – whether an attempt to alter the substance of orders falls under liberty to apply - EQUITY – maxims of equity – he who seeks equity must do equity – whether orders made according to the principles of the maxim should be varied – whether variation of orders is a change in the price of equitable relief
LEGISLATION CITED:	Fair Trading Act 1987 Supreme Court Rules 1970 Trade Practices Act 1974 (Cth) Uniform Civil Procedure Rules 2005
CATEGORY:	Consequential orders
CASES CITED:	Australian Hardboards Limited v Hudson Investment Group Ltd [2007] NSWCA 104, (2007) 70 NSWLR 201 Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 Guttershield Systems Australia Pty Limited v LBI Holdings Pty Limited [2008] NSWSC 747 Guttershield Systems Australia Pty Ltd v LBI Holdings Pty Ltd [2004] NSWSC 901; (2004) 63 IPR 407 Newmont Yandal Operations Pty Ltd v The J Aron Corporation and The Goldman Sachs Group Inc [2007] NSWCA 195; (2007) 70 NSWLR 411 Rockcote Enterprises Pty Ltd v FS Architects Pty Ltd (No 2) [2008] NSWCA 205 Wentworth v Woollahra Municipal Council (1982) 149 CLR 672
PARTIES:	Guttershield Systems Australia Pty Ltd - First Plaintiff/First Cross-Defendant Guttershield Pty Ltd - Second Plaintiff/Second Cross-Defendant LBI Holdings Pty Ltd - First Defendant/First Cross-Claimant Leafbusters Pty Ltd - Second Defendant/Second Cross-Claimant Bruce Wickett - Third Cross-Defendant
FILE NUMBER(S):	SC 5724/02
COUNSEL:	G Grinter - Plaintiffs/Cross-Defendants S Reuben - Defendants/Cross-Claimants
SOLICITORS:	John Brent & Co - Plaintiffs/Cross-Defendants Slater & Gordon - Defendants/Cross-Claimants

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION

CAMPBELL JA

Monday, 27 July 2009

5724/02 Guttershield Systems Australia Pty Ltd v LBI Holdings Pty Limited

JUDGMENT – Ex tempore

1 CAMPBELL JA: There are two Notices of Motion that are listed before me today. The first of them is a Notice of Motion that has been filed by the companies that were the defendants in proceedings that I decided in October and December of 2004. The litigation in question was Guttershield Systems Australia Pty Ltd v LBI Holdings Pty Ltd [2004] NSWSC 901; (2004) 63 IPR 407. I gave the principal judgment in that matter on 25 October 2004. It was a reserved judgment following a five day hearing that had concluded on 5 October 2004.

2 In essence, the issue in the case concerned whether the plaintiffs had a beneficial interest in five particular Australian patents. The plaintiffs in the case are companies associated with a Mr Bruce Wickett, and I will refer to the plaintiffs and Mr Wickett collectively as “The Wickett Interests”. The defendants in the case are companies that are associated with a Mr and Mrs Groom, I will refer to them and Mr and Mrs Groom collectively as “The Groom Interests”.

3 Both the Wickett Interests and the Groom Interests carried on a business of installing on buildings, devices that would keep leaves out of gutters. The plaintiffs carried on their business in New South Wales, the defendants, in Victoria. They entered into a type of joint venture or cooperation agreement they referred to as the “Alliance”, that lasted from 17 March 1999 to 7 July 2002. For the period from the start of the Alliance to 4 September 2000, some companies associated with a Mr De Graaf that carried on business in South Australia were also members of the Alliance.

4 The Alliance operated under the terms of a document that the parties drafted for themselves. One of its terms was:

“All intellectual and real property developed by the Alliance remains the common property of all members of the Alliance.”

5 There were various improvements during the course of the Alliance to the devices used to keep leaves out of gutters. Some of these improvements were ones to which intellectual property rights attached. The patents that were in dispute in the case were ones that were held by the Groom Interests. The Wickett Interests asserted that those patents had been developed in the course of the Alliance and so were required to be shared with the Wickett Interests.

6 One of the patents related to a type of mesh that was referred to as “2G”, referring to second generation. After the Alliance had come to an end but before the litigation was heard, the Wickett Interests had started using a type of mesh that they called “3G”, that they claimed they had developed, and claimed was different and superior to the 2G mesh.

7 In the litigation, I found that all five of the patents in issue were subject of the obligations concerning the Alliance.

8 In the course of the pre-trial preparation of that case, the Wickett Interests had asserted to the Grooms that the 3G mesh had been invented by Mr Wickett. There was a cross-claim filed by the Grooms in the litigation which sought, in broad terms, a declaration that the Groom Interests had sole beneficial ownership of the five patents, a declaration that the Wickett Interests had infringed various copyrights of the Groom Interests, and passed off goods as being those of the Groom Interests. There was also a claim that a breach of section 52 of the Trade Practices Act1974 (Cth) or section 42 of the Fair Trading Act1987 concerning that alleged passing off. In particular, there was no claim made by the Groom Interests in relation to any rights in the 3G mesh.

9 In the course of the hearing before me in 2004, Mr Grieve QC, counsel for the Groom Interests of the hearing, cross-examined Mr Wickett. The thrust of the presently relevant part of the cross-examination was that since the Alliance had ended, Mr Wickett had concentrated his energies on the development of the 3G product, that Mr Wickett considered that the 3G was quite superior to the 2G, that Mr Wickett first started to develop the 3G product after some court orders had been received, and that that was some time in 2003. The court orders in question were clearly ones that had been obtained after the Alliance had come to an end.

10 In the judgment that I gave in the principal proceedings, I upheld the entitlement of the plaintiffs to share in the intellectual property that the Grooms had developed during the course of the Alliance. I also said, at [96], [98]-[99]:

“96 In my view, it is, however, appropriate that any equitable relief be conditional upon Mr Wickett and his companies undertaking to transfer to such of the Groom companies, or De Graaf companies, as might want them, an appropriate proportionate interest in the intellectual property which he or the Wickett companies hold and to which Clause 3 of the Agreement applies, upon payment to him or the Wickett companies of the appropriate proportion of the cost of development of that intellectual property. It is appropriate to impose this condition on Mr Wickett, even though he was not in his personal capacity a member of the Alliance. Just as LBI holds on constructive trust for the Alliance members intellectual property developed by the Grooms which falls within Clause 3 of the Agreement, so would Mr Wickett hold on constructive trust intellectual property he developed which falls within Clause 3 of the Agreement. That condition should apply in relation to intellectual property developed up to 7 July 2002. …
…
98 Mr Grieve QC thirdly submits that equitable relief should be denied because it has no utility. So far as the patents concerning the 2G Mesh are concerned (the 2G Mesh patent itself, and the Formula patent) the factual foundation for that submission is that the Wickett companies are now predominantly marketing a different mesh, which they call 3G. There is a registered design relating to that new mesh, though not a patent. Mr Wickett has been marketing that new mesh since around 20 August 2003. The Wickett companies obtain supplies of that mesh from a New Zealand company.
99 Mr Wickett agreed, in cross-examination, that the proportion of Nylex product which is now sold by him is less than five percent of his total sales. However, he says he would like to have the Nylex product available for sale, but that when his right to continue access to that product is uncertain, because these proceedings are undecided, he has withdrawn the Nylex product from sale until such time as the legal uncertainties are cleared up. Mr Wickett is of the view that the 3G Mesh is a superior product to the 2G Mesh, but wishes to have access to both products so that he can market one as a premium product, and the other as a mid-range product. In these circumstances, I do not accept that granting the plaintiffs equitable relief concerning those two patents would lack utility.”

11 I set out in the reasons for judgment (at [107]) a draft of the form of orders that then seemed to me to be appropriate, but without having received the benefit of submissions from counsel. However, the orders were not made at the time the principal judgment was delivered on 25 October 2004. Rather, the parties were given the opportunity to consider the form of orders and make submissions about the form that they submitted the order should take.

12 A second hearing occurred on 17 December 2004. I gave an ex tempore judgment that, to some extent, clarified the basis upon which the orders had initially been proposed. That judgment included (at [4]-[5]):

“Mr Grinter, for the plaintiff, opposed there being a reference to the Master to determine what patents, registered design or intellectual property were ones developed by the plaintiff and that fall within the expression I have earlier quoted. He submits that the only items of intellectual property developed by the plaintiff which the defendants ought be able to have an interest in are the items which were referred to in evidence at the hearing. He points out, correctly, that there would need to be a hearing to establish what other items of intellectual property were developed by the plaintiff, and that that hearing might involve some extensive evidence. He points out that there has never been a claim by the defendants to intellectual property, design and patents that was developed by the plaintiff. All of that is true. None of it provides a reason for not having a reference to the Master.
The basis upon which the reference was proposed in the draft orders contained in my judgment, was that the Equity court would not grant equitable relief to the plaintiff, unless he did equity. In the present context, that means that he cannot enforce the contract by equitable remedy against the defendants, unless he is prepared to offer to perform his side of that same contract. This is a matter which was raised clearly in cross-examination, and in submission, by Mr Grieve of Queens Counsel at the hearing. I have no intention of granting relief on a basis which excuses the plaintiff from doing equity.”

It will be seen that the requirement that, "he who seeks equity must do equity" was very much the guiding principle.

13 On 17 December 2004, I made orders that differed in some significant respects from the draft that I had proposed. I shall annex to these reasons, a copy of the orders then made.

14 The purpose of order 2(a) was to require the Wickett Interests to pay one-third of the cost of development of the five patents in question, if they were to obtain a one-third propriety right to them. The purpose of clauses 2(b) and (c) was to require the Wickett Interests to do equity by giving the Groom Interests the opportunity to acquire upon payment of the appropriate proportion of the costs of development, a proportionate interest in any intellectual property that the Wicketts had developed while the Alliance was on foot. The difference between clause 2(b) and clause 2(c) concerned how to ascertain the quantum of the appropriate proportion of the costs of development. While the De Graaf Interests were part the Alliance, the cost of development were to be shared one-third each. After the De Graaf Interests had ceased to be part of the Alliance, the costs were to be shared one half each.

15 The purpose of clause 2(d) was to give the De Graaf Interests the option of having equity done to them by acquiring a proportionate interest in those items of intellectual property that were developed while they were part of the Alliance upon payment of an appropriate proportion of the cost of development. Clause 5 imposed a requirement for the De Graaf Interests to be notified of the orders, so that they would have a practical opportunity of taking advantage of that option.

16 The defendant’s Notice of Motion now before me, as modified slightly in oral submissions, sought to vary those orders as follows:

“1 That the Orders made by Campbell J on 17 December 2004 be varied:
(a) With respect to Order 3(ii) to include:
3(ii) What patents, registered designs or other items of intellectual property were developed during the course of the Alliance and held in the name of the Wickett interests.
(b) With respect to Order 6, an order extending the time provided for therein until 28 days after the determination of the reference referred to in Order 3(ii) as varied.
(c) The addition of an order 8A as follows:
8A.1 To the extent that it is determined by the Associate Justice that there were patents, registered designs or other items of intellectual property developed during the course of the Alliance during the period 17 March 1999 to 4 December 2000 and held in the name of the Wickett interests, then the Plaintiffs will cause Leafbusters Pty Limited and Polymesh Australasia Group Pty Limited to become registered as holder as tenant in common of a one-third interest in the said patents, registered designs or other items of intellectual property.
8A.2 To the extent that it is determined by the Associate Justice that there were patents, registered designs or other items of intellectual property developed during the course of the Alliance during the period 4 December 2000 to 7 July 2002 and held in the name of the Wickett interests, then the Plaintiffs will cause Leafbusters Pty Limited and Polymesh Australasia Group Pty Limited to become registered as holder as tenant in common of a one-half interest in the said patents, registered designs or other items of intellectual property.
2 Further or other orders or directions.
3 Costs.”

17 There were events of some relevance to the present application that occurred after judgment had been delivered. In 2006, the parties were preparing for a reference to the Associate Justice, and were preparing some affidavits to that end. On 30 August 2006, the Grooms’ solicitor wrote to the Wickett’s solicitor referring to the absence of a reference to the 3G mesh in Mr Wickett’s affidavit, and saying that the 3G mesh:

“… falls within the ‘intellectual property’ contemplated by his Honour’s orders.”

18 Mr Wickett’s solicitor replied on the same day, saying:

“There is no reference to the ‘3G mesh’ in the affidavit of Mr Wickett as it was not developed within the time frame as set out within his Honour’s Orders.”

19 The Grooms’ solicitors replied to that contention on 21 September 2006, saying:

“Our clients do not accept your clients’ assertion that the 3G mesh was developed outside the timeframe set by his Honour’s orders. There is clear evidence that the initial work in the development of this mesh occurred prior to the Thredbo conference in September 2000 and therefore falls within the period of ‘development work’ as set out in his Honour’s orders.
Our clients will be asserting its right for an interest in the 3G mesh...”

20 On 13 October 2006, Mr Groom made an affidavit that deposed to both similarities and differences between the 2G and the 3G mesh. That affidavit included (at paras 7-9):

“Between 15 and 18 September 2000 there was a meeting in Thredbo attended by Mr Wickett, Mr De Graaf, Thea Groom and me. On one evening during the meeting we all had dinner and there was a discussion regarding Nylex and the manufacture of the 2G mesh. During that dinner there was a conversation to the following effect:
[Groom]: ‘I don’t feel comfortable with the fact that Kinnears mucked us around, and I don’t want to handle the diamond mesh. I spoke with Donaghys a few years ago, remember Jerry?’
[De Graaf]: ‘Yes, I do, I remember you talked to them about a square mesh.’
[Groom]: ‘That’s right, around the time I was speaking with Kinnears with regard to a square mesh, I also bumped into the Donaghys rep at the Elmore Field Days. He knew about us, and was really interested in taking us on and wanted to produce mesh for us. I went to their office to find out what machinery they had, and if they had the capabilities of the mesh I wanted to produce. The only problem I foresaw was that the longitudinal strand could be thickened up, but the transverse will be thin. We can reduce the aperture down from the 10mm to a 3mm x 4mm. The other possible problem is that the top will be really smooth, so I asked them if they could deepen the strands underneath so that it would direct the water down into the gutter. And they could. They can do very similar to the specs I have given to Nylex.’
I then drew up the design on my pad and showed everyone the diagrams of what the mesh would look like. A copy of my handwritten notes are annexed hereto & marked ‘A’.
[Groom]: ‘Look they are really still very keen to do business with us. I think I’ll ring them up again when we get back to start producing me some samples.’
[Wickett]: ‘No Paul, I don’t think we should teach another manufacturer the gutter protection business.’
[De Graaf]: ‘Look, I would still like to keep taking the diamond mesh, I don’t really want to lose the heavy weight, because it is ours. It is the LeafShield mesh and I want to keep the rights.’
[Groom]: ‘I didn’t promise them anything, so for now, I won’t do anything, but at least we know, we have another manufacturer who can do a square mesh for us. At any time in the future, if we need to, I can open up the negotiations with them again.’
The design that I drew and explained at the Thredbo meeting. It is exactly what is now produced by Gale Pacific for Mr Wickett and which he now calls ‘3G’. A copy of the respective designs of the Leafbusters 2G mesh and the 3G is annexed hereto and marked ‘B’.
In my opinion, the 3G is the same as the Leafbusters 2G mesh except that the 3G is made on a different machine which gives it a heavier appearance. It is also stiffer to fit as only HDPE is used. In the 3G only every fifth or sixth strand has a heavy underneath strand, and otherwise the 3G has only thinner underneath strands. On the other hand, every strand in the 2G has underneath thick and ‘directional’ underneath strand. This is due to the fact that I was able to do a mix of LDPE & HDPE so we could have the thicker longer strand underneath.”

21 At a time that is not established by the evidence, but before the hearing before the Associate Justice began, written objections to evidence were exchanged. The objections that came from the Wickett side objected to Mr Groom’s evidence about his having done development work on the 3G mesh during the Alliance period, on the ground that such work was not performed by the Wickett interests during the Alliance period.

22 On 5 September 2007, the hearing of the reference started before McLaughlin AsJ. The hearing lasted in all for some six days.

23 In written submissions made to the Associate Justice in that hearing, the submissions of the Wickett Interests said clearly, indeed repeatedly, that any questions of similarities between the 2G and the 3G mesh and whether the 3G mesh was in substance developed by Mr Groom during the period of the Alliance were outside the scope of the reference.

24 On 23 July 2008, McLaughlin AsJ gave his judgment concerning the reference: Guttershield Systems Australia Pty Limited v LBI Holdings Pty Limited [2008] NSWSC 747. In the course of his judgment, the learned Associate Justice said (at [58]-[65]):

“It was the case for the Defendants that the 3G mesh was so closely connected to the created work in relation to the 2G mesh (one of the patents in suit), of which Mr Groom was the inventor and which was developed during the period of the Alliance, that it appears on a prima facie basis, at least, that the 3G mesh was developed on the back of the creative work done during the Alliance period in relation to the 2G mesh.
It was the submission of the Defendants that there was identicality between the 3G mesh and the 2G mesh, with the consequence that the development of the 3G mesh was effected during the course of the Alliance, and thus that the 3G mesh falls within the ambit of the reference contained in order 3 (ii) and that the costs incurred in relation to the development of the 3G mesh fall within the ambit of the reference contained in order 3 (iii).
The foregoing asserted identicality was denied by the Plaintiffs. In this regard the Plaintiffs relied upon various differences between the two meshes which differences were, in the main, conceded by Mr Groom himself.
Nevertheless, I am satisfied that the 3G mesh was substantially identical with the 2G mesh.
It will be appreciated, however, that the similarity of the 3G mesh to the 2G mesh is of no relevance to my present determination unless the Plaintiffs or Mr Wickett performed development work concerning the 3G mesh within either of the specified periods.
There is no evidence that the 3G mesh was developed by the Plaintiffs (or, for practical purposes, by Mr Wickett). Indeed, Mr Groom’s evidence of the meetings at Thredbo over the weekend, 15-18 September 2000, and his handwritten note made during the course of those meetings suggest that it was Mr Groom, and not the Plaintiffs or Mr Wickett, who developed the 3G mesh.
Further, the Plaintiffs have put forward no evidence of the cost of development of the intellectual property in the 3G mesh.
I am not satisfied that the Plaintiffs or Mr Wickett performed any development work in respect to the intellectual property in the 3G Mesh, either during the period 17 March 1999 to 4 December 2000 or in the period 4 December 2000 to 7 July 2002. In any event, even if (contrary to the conclusion which I have just expressed) some development work had been performed by the Plaintiffs or Mr Wickett in respect to the 3G mesh, there is no evidence of any cost incurred therein by the Plaintiffs or Mr Wickett.”

25 On 14 August 2008, the Wickett Interests gave an undertaking that the parties treat as being an undertaking of the type referred to in paragraph 4 of the order made on 17 December 2004.

26 On 12 December 2008, there was an application for leave to appeal from the Associate Justice to the Court of Appeal. It was at that stage that there was the first mention of the Groom interests wanting to vary the orders that I had made on 17 December 2004.

27 In his helpful written submissions, Mr Reuben, counsel for the defendants, identified three separate bases upon which the present application is made. One of them was that the orders made on 17 December 2004 had reserved liberty to apply.

28 The scope of what can be done under a reservation of liberty to apply was considered in Australian Hardboards Limited v Hudson Investment GroupLimited [2007] NSWCA 104; (2007) 70 NSWLR 201, in particular, at 213-5 [50]-[57].

29 The policy of the orders was that the plaintiffs could obtain the benefit of equitable relief to give effect to their right to the five patents only if they did equity by paying an appropriate proportion of the costs of development of the patented inventions and by giving their co-venturers proportionate rights in any intellectual property that had been developed by the Wickett Interests during the term of the Alliance. That much was expressed in the orders.

30 Now the Groom Interests seek to say that more than that was needed to do equity. They say that if the Wickett Interests now have intellectual property rights that were developed by the Grooms during the term of the Alliance, in addition to the rights the orders require the Wicketts to make available to the Grooms, the plaintiffs should allow the Grooms a proportionate propriety interest in those other intellectual property rights. It seems to me that that is altering the substance of an order already made. That is more than working out an order already made, and is not possible under cover of liberty to apply: Hardboards at 214 [52] and cases there cited.

31 Another basis that is relied upon is Uniform Civil Procedure Rules 2005 (“UCPR”) rule 36.16. It provides, relevantly:

“(1) The court may set aside or vary a judgment or order if notice of motion for the setting aside or variation is filed before entry of the judgment or order.
…
(4) Nothing in this rule affects any other power of the court to set aside or vary a judgment or order.”

32 The orders that I made on 17 December 2004 were made before the Uniform Civil Procedure Rules came into operation. Under the provisions then applicable, an order was entered when a formal process was gone through that involved the sealing of a signed minute of the order: Supreme Court Rules 1970 Part 41, rule 13. In the present case, the solicitors for the Wickett Interests submitted a minute of order to the registry, but the registry raised a requisition concerning it. It appears that a revised minute of order was submitted by the Wickett Interests, but there is no record of it ever having been formally entered by the court, and there is no record of any enquiry on the part of the Wickett Interests about what had happened concerning the revised minute.

36.11 now provides:

“(2) Unless the court orders otherwise, a judgment or order is taken to be entered when it is recorded in the court’s computerised court record system.”

34 In the present case, the orders I have made on 17 December 2004 were entered in the court’s computer system, and were entered there on 17 December 2004. Mr Reuben submits, however, that UCPR 36.11(2) is not taken to be retrospective in its operation, and thus the provision that it makes does not apply to orders that were both made and entered in the court’s computer system before the coming into operation of UCPR. I propose to assume, without deciding, that that submission is correct. Thus, the relevant statutory power is, now, that contained in UCPR 36.16(1).

35 In exercising powers to set aside orders that have been made, but not entered, the court is guided by the sort of considerations that were referred to in Autodesk Inc v Dyason (No2) (1993) 176 CLR 300 at 302. There, Mason CJ said that:

“… the jurisdiction is to be exercised with great caution, having regard to the importance of the public interest in the finality of litigation.” (citation omitted)

36 And (quoting from Wentworth v Woollahra Municipal Council (1982) 149 CLR 672 at 684):

“Generally speaking, it will not be exercised unless the applicant can show that by accident without fault on his part, he has not been heard.”

37 Mason CJ went on at 303 to say:

“However, it must be emphasized that the jurisdiction is not to be exercised for the purpose of re-agitating arguments already considered by the Court; nor is it to be exercised simply because the party seeking a rehearing has failed to present the argument in all its aspects or as well as it might have been put. What must emerge, in order to enliven the exercise of the jurisdiction, is that the Court has apparently proceeded according to some misapprehension of the facts or the relevant law and that this misapprehension cannot be attributed solely to the neglect or default of the party seeking the rehearing. The purpose of the jurisdiction is not to provide a backdoor method by which unsuccessful litigants can seek to re-argue their cases.”

38 I applied those principles, with the agreement of McColl JA and Handley AJA, in Rockcote Enterprises Pty Ltd v FS Architects Pty Ltd (No 2) [2008] NSWCA 205 at [9].

39 Mr Reuben also relies upon the inherent jurisdiction of the court. UCPR 36.16(4) preserves the inherent jurisdiction of the court to set aside orders. The inherent jurisdiction in that respect has been explained in Newmont Yandal Operations Pty Ltd v The J Aron Corporation and The Goldman Sachs Group Inc [2007] NSWCA 195; (2007) 70 NSWLR 411. The inherent power is one that is to be sparingly exercised, but can be used to vary any order or judgment when the interests of justice so require, even if the order has been entered.

40 The orders that were made on 17 December 2004 were ones that gave the plaintiffs a particular kind of relief on condition that they pay a particular price. The application of the defendant is that I should now, well over four years after the event, change the price. It is, in my view, a change of price because it, if granted, would put the Wickett Interests at risk of having to part with a right that they were not required to part with under the terms of the order as originally made. That right is a part of their rights in the patent relating to the 3G mesh. If the orders were changed so as to extend (on the basis of McLaughlin AsJ’s findings) to the 3G mesh, the Wickett Interests would not lose all rights to the 3G mesh, but they would lose exclusivity.

41 Changing the price of equitable relief, concerning an equitable order that has been moulded to the circumstances of the case by discretionary considerations, is the sort of thing that, in my view, should rarely, if ever, happen. Particularly is that so when the orders in question were settled after counsel had the opportunity to consider and debate their terms.

42 There are some other matters as well. One is that if it is correct that the 3G mesh is in substance identical to the 2G mesh, in the sense that matters in patent law, the Groom Interests will have, by virtue of their rights in the 2G patent, the right to make, use, exercise and vend any invention that is involved in the 2G patent, and is also manifested in the 3G mesh.

43 Further, Mr Reuben submitted that there was a miscarrying of the intention expressed in my principal judgment by the orders that were actually made. He points to the section set out above (at para [10]) from paragraph [96] of my reasons for judgment, and emphasises there the words “which he or the Wickett companies hold and to which Clause 3 of the Agreement applies”.

44 I am not persuaded that there was any miscarrying of intention. At the time of the trial, the 3G mesh appeared, on the only evidence before the court, and in accordance with propositions that had been put to Mr Wickett by the Grooms’ counsel, to have been developed after the end of the Alliance. Mr Reuben said today in the course of submissions that at the time of the trial, it could not have been appreciated that there was any dichotomy between the intellectual property that had been developed by Mr Wickett to which clause 3 of the Agreement applied, and that which was held by him. I think that that is right. What it means is that the orders were made on the basis of an assumption adopted by the parties and myself that the 3G mesh was something developed by Mr Wickett when the Alliance was over.

45 The passage from paragraph 4 of my reasons for judgment of 17 December 2004 (that I have set out at para [12] above) supports, it seems to me, that the parties were conducting the case on the assumption to which I have referred, and that I was making the assumption also. There is no miscarrying of a judge’s intention when an assumption on which orders have been made turns out to be wrong. In saying that, I am not making a finding that my assumption has turned out to be wrong.

46 It is relevant to whether the interests of justice require the orders to be varied that Mr Groom would presumably have known at the time of the trial before me, of the role of the Thredbo meeting in designing a different type of mesh, and there is no evidence that his comparison of the 2G and 3G meshes was first made only after the principal judgment.

47 Another relevant matter in deciding whether to set aside or vary the orders is that the orders were made well over four years ago now, and it was very nearly four years after they were made that there was the first indication from the Groom Interests that they wanted to amend the orders. Mr Groom had been alleging that the 3G mesh was in substance developed by Mr Groom during the time the Alliance was on foot from at least 13 October 2006. A difference of opinion about whether it would be within the scope of the inquiry before McLaughlin AsJ to argue about whether the 3G mesh had been developed by Mr Groom during the term of the Alliance was alive between counsel by September 2006, and unmistakably articulated in written objections to Mr Groom’s evidence before the hearing before McLaughlin AsJ began. There is authority that an application to set aside orders should be made as soon as possible after it comes to the applicant’s knowledge: see Taylor et al, Ritchie’s Uniform Civil Procedure NSW para [36.16.30].

48 There has been a six-day hearing since this difference of opinion first came to light, and an application for leave to appeal against the outcome of that hearing. That all these events have occurred also tends against making any alteration to the orders.

49 For those reasons, I decline to make the orders sought in the Grooms’ Notice of Motion. That Notice of Motion is dismissed with costs.

50 There was also listed today a Notice of Motion from the Wickett Interests filed 5 June 2009 that sought some relief against the possibility that the Notice of Motion of the Grooms succeeded. In light of the reasons I have given, Mr Grinter, counsel for the Wickett Interests, does not press that Notice of Motion.

51 In the circumstances, the appropriate course is to dismiss the Notice of Motion of the Wickett Interests with no order as to costs. I so order.

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Annexure