International Business Machines Corp v Commissioner of Patents

[1991] FCA 625

!	IN THE FEDERAL COURT-OF AUS-TRALIA )
!

No. G339 of 1987

I	NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION )

BETWEEN:	BURGUNDY ROYALE INVESTMENTS PTY LTD & ORS
Applicants/Cross Respondent
AND:	WESTPAC BANKING CORPORATION LIMITED & ORS
Respondents/Cross Claimants

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY )	No. NG167 of 1991
GENERAL DIVISION	1

ON APPEAL FROM A JUDGE OF THE

FEDERAL COURT OF AUSTRALIA

BETWEEN:  TAN SRI DATUK WONG CHIK LIM

Appellant

AND:  MICHAEL C AHERNS & ORS

Respondent

dismissed.

JUDGES MAKING ORDER:	LOCKHART, PINCUS & GUMMOW JJ.
DATE ORDER KADE:	9 OCTOBER 199 1
WHERE ORDER MADE:	SYDNEY

! MINUTE OF ORDER

In proceeding NG 339 of 1987 THE COURT ORDERS THAT:

1.    The motion for leave to appeal dated 9 October 1991 be

2.    The applicant pay the costs of the respondents of the motion.

In proceeding NG 167 of 1991, THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    There be no order as to the costs of the appeal.

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 ) NO. G339 of 1987

)

GENERAL DIVISION 1

BETWEEN	:	BURGUNDY ROYALE INVESTMENTS PTY LTD & ORS
~pplicants/Cross Respondent

I

AND:	WESTPAC BANKING CORPORATION LIMITED & ORS
Respondents/Cross Claimants

IN THE FEDERAL COURT OF AUSTRALIA	)
1
NEW SOUTH WALES DISTRICT REGISTRY )	No. NG167 of 1991
GENERAL DIVISION

ON APPEAL FROM A JUDGE OF THE

FEDERAL COURT OF AUSTRALIA

BETWEEN:  TAN SRI DATUK WONG CHIK LIM

Appellant

AND :	MICHAEL C AHERNS & ORS
Respondent

COURT	:	Lockhart, Pincus & Gummow JJ.
DATE :	9 October 1991

PLACE :  Sydney

REASONS FOR JUDGMENT

THE COURT:

This is a motion for leave to appeal from an order of a

Judge of the Court made today ( ~ n proceeding NG339 of 1987) whereby his Honour declared that the Court had jurisdiction

!

and power to make the orders sought in an amended notice of	l
motion dated 5 October 1990 and filed by the respondents in	I
I .
proceeding NG 167 of 1991. The moving parties are the	i
I
respondents, a firm of solicitors practising in this country,	l ,
!.
and they seek, amongst other things, a declaration that	i
between October 1986 and May 16, 1990, the applicant M r Tan	i
Sri Datuk Wong Chik Lim and others jointly and severally
retained the respondents to act as solicitors for a number of
companies who were parties to the proceedings brought by those

.

companies in this Court in proceeding NG 339 of 1987 and in

relation to matters incidental thereto.

The respondents also seek a declaration that it was a

term of their retainer that the applicant and others would be
jointly and severally liable for the costs of the respondents
of the proceedings; they also seek a declaration that it was
expressly agreed between the applicant and the respondents
that he would pay the costs and disbursements of the

respondents in respect of their retainer in the proceedings by

the companies referred to in the notice of motion.

The motion for leave is opposed by the respondents.

There has been a deal of argument before us today touching the '. question which is sought to be agitated on the appeal if leave I. be given, namely, whether the Court has jurisdiction and power ,/

< :.

to make the orders which the respondents wish the Court to	I
make in the amended notice of motion of 5 October 1990. What j	i'
the discussion has revealed is that those questions of	I

jurisdiction and power raise difficult questions of law and

certain of the questions were not the subject of submissions

to the learned primary Judge yet may be at the heart of the

questions. We need not mention all the matters that do not

-

appear to have been put to his Honour. But one such question
is whether the Jurisdiction of Courts (Cross Vesting) Act
1987, which became operative on 1 July 1988, applies to the

matters sought to be raised in this appeal if leave be given.

The questions to be agitated on the appeal are questions

which may, of course, be argued fully before a single Judge in due course when the matter proceeds to trial. It appears from what has been said that the trial will involve many complex

issues of both fact and law and it is plainly conceivable that
the questions that are sought to be argued in the appeal, the
subject of today's motion, may not even arise if findings of

fact render that course unnecessary.

We wish to make it clear that we are not deciding today

made by him or in the orders and declarations made by him. We	if the primary Judge was right or wrong in any of the findings
have and express no views on that question.

In all the circumstances we are of the view that thls is

not an appropriate case for the grantlng of leave to appeal
and the order of the Court is that the motion for leave to
appeal be dismissed.

In the opinion of the Court the applicant should pay the

costs of the respondents of the motion for leave. The Court

therefore orders that the applicant pay the costs of the

respondents of today's motion

-

The motion for leave which we have just heard and

disposed of arose in circumstances that became apparent during in effect declared that the Court had jurisdiction and power to make the orders sought in the amended notice of motion of 5 October 1990 to which reference has already been made.

argument today and which are unfortunate. The Court convened
this morning to hear an appeal by Mr Lim from orders of a

As the argument proceeded on the appeal it became

apparent that, not only had no order been taken out and
included in the appeal book, but that there had been no order

or declaration made at all in the matter at first instance so

that the appeal was incompetent.

ensuring that orders are made by the Court rests with the The responsibility for

parties; but the attention of the Court was not drawn to the

fact that formal orders and declarations had not in fact been

made. This did not become apparent until argument this

morning and steps were taken to correct the matter by an order

being made by his Honour today.

The Court is of the view that the appeal must be

dismissed. As it seems to us that all parties are equally
responsible for what occurred there should be no order as to
the costs of the appeal.

I certify that this and the

preceding four (4) pages are a
true copy of the reasons for

judgment herein of the Court.

Associate h&f&l-	F
Dated: 9 October 1991

Counsel for Mr Lim	A . Robertson
Solicitors for M r Lim	Blake Dawson Waldron
Counsel for Baker & McKenzie :	R. McKeard, J. Svehla
Solicitors for Baker & McKenzie:	Baker & McKenzie
Date of Hearing	9 October 1991

Date of Judgment : 9 October 1991