Lucent Technologies Inc v Krone Aktiengesellschaft (No 2) - [1999] FCA 1462

FEDERAL COURT OF AUSTRALIA
Lucent Technologies Inc v Krone Aktiengesellschaft (No 2) [1999] FCA 1462
PATENTS – experiment carried out for party to opposition proceeding before Commissioner of Patents in absence of other party – first party not present when experiment carried out – party seeks to tender evidence of the experiment and its results again on hearing of appeal to Court from Commissioner’s decision – whether O 58 r 31 of Federal Court Rules applies – possibility of repeating experiment so as to allow other party to be present.
EVIDENCE – experiment carried out for party to opposition proceeding before Commissioner of Patents in absence of other party - first party seeks to tender evidence of the experiment and its results again on hearing of appeal to Court from Commissioner’s decision – whether O 58 r 31 of Federal Court Rules applies – possibility of repeating experiment so as to allow other party to be present.
Federal Court Rules, O 58 r 31
LUCENT TECHNOLOGIES INC v KRONE AKTIENGESELLSCHAFT
NG 566 OF 1997
LINDGREN J
19 OCTOBER 1999
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 566 OF 1997

ON APPEAL FROM THE COMMISSIONER OF PATENTS

BETWEEN:

LUCENT TECHNOLOGIES INC
Applicant

AND:

KRONE AKTIENGESELLSCHAFT
Respondent

JUDGE:

LINDGREN J

DATE:

19 OCTOBER 1999

PLACE:

SYDNEY

REASONS FOR JUDGMENT (No 2)
(ex tempore ruling on objection to evidence)

Lucent appeals to the Court under s 60(4) of the Patents Act 1990 (Cth) against a decision of the Delegate of the Commissioner of Patents (“the Delegate”). The Delegate upheld Krone’s opposition to an application for a patent by American Telephone and Telegraph Company of which Lucent is an assignee. Senior counsel for Lucent objects to para 111 of an affidavit of George Georgevits sworn 5 February 1998. Shortly, para 111 supports Krone’s case of anticipation based on an “Archer RS-232 jumper box (model or item No. 276 1403)”. The evidence objected to is intended to show that the Archer jumper box, like the supposed invention, is effective to reduce “crosstalk” of electrical signals between conductors in electrical connectors.
Paragraph 111 reads as follows:
“In April 1995, I conducted tests on the Archer jumper box (my former exhibit GG-14) in order to determine the crosstalk performance of crossed and uncrossed pairs of conductors. Now produced and shown to me marked GG-60 is a true copy of my Test Report No. 9538 dated 6 April 1995. The test showed that:
(i)crosstalk between adjacent pairs which are not crossed, or which are crossed in an identical manner, is at a level of about 35dB below the transmitted signal;
(ii)crosstalk between adjacent crossed and uncrossed pairs is at a level of about 43dB below the transmitted signal; and
(iii)accordingly, putting a single half-twist in one pair in order to cross them reduces crosstalk by about 8dB at 100MHz.
I conclude from the test that the provision of the crossed conductor pairs in the jumper box in fact reduced overall crosstalk, thus…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1999] FCA 1462
Decision Date: 19 OCTOBER 1999

CaseChat Overview and Summary

Lucent Technologies Inc initiated legal proceedings against Krone Aktiengesellschaft. The dispute involved the admissibility of certain experimental evidence presented by Krone. The matter was heard in the Federal Court of Australia. The primary legal issue was whether the Federal Court Rules' provisions concerning experimental evidence applied to evidence proposed to be submitted after the commencement of proceedings, even if the experiment or test itself was conducted before the proceedings began.

The court considered whether the rule limiting the admissibility of experimental evidence without leave applied in situations where the experiment was proposed to be submitted after the commencement of the proceeding, but was conducted before the proceedings began. The court ruled that the rule applied regardless of when the evidence was proposed to be submitted, as long as it was experimental proof. The court further held that the fact that the experiment could still be repeated did not render the rule inapplicable. The court determined that the rule could be circumvented if parties conducted all necessary experiments before proceedings began, which was not the intention of the rule. Factors such as the timing of the experiment, the availability of the physical object, the dispute over the results, and the cost of repetition were relevant to the grant of leave but did not affect the applicability of the rule itself.

Ultimately, the court ruled that Order 58 Rule 31(2) applied, making the evidence inadmissible unless leave was granted. The court agreed to hear the parties on the question of leave at a later time. Subsequently, by mutual consent, leave was granted for the experimental evidence to be admitted.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

In my opinion, the rule is not limited in the manner suggested and does apply in the present case. I think the rule applies wherever, after the commencement of a proceeding, a party proposes to submit experimental proof of a matter as evidence, not only where, after the commencement of a proceeding, a party proposes to obtain the experimental proof by conducting the experiment or test in question. Since the commencement of this proceeding, Krone has proposed to submit on this hearing experimental proof of the matters referred to in subparas (i), (ii) and (iii) of para 111 of Mr Georgevits’ affidavit set out earlier. Therefore, in my opinion, the rule operates. The rule is not rendered inapplicable merely by the fact that it can be given effect only if the experiment or test is one that can yet be carried out. After all, many experiments or tests carried out prior to the commencement of a proceeding could be repeated easily and inexpensively after it. I see nothing untoward in the fact that in the absence of a grant of leave under subrule (2) a party who conducted an experiment or test prior to the commencement of the proceeding in the absence of the other party, should, in effect, be required to repeat it after that commencement. According to the alternative construction, the purpose of the rule could be easily circumvented, at least by an applicant: the applicant could simply ensure that all experiments or tests to be relied on were carried out prior to commencing the proceeding. No doubt, many factors might suggest a granting of leave under subr (2) of r 31. The experiment or test may have been carried out long before the parties were in dispute; a physical object on which it was conducted may have been destroyed in the process or lost, and so be no longer available for a repetition of the experiment or test; the result of the experiment or test may not be seriously in dispute; repetition of the experiment or test may involve undue expense and inconvenience. But such considerations do not go to the applicability of the rule in the first place. I rule that O 58 r 31(2) operates to make para 111 not admissible unless leave is given pursuant to that subrule. I will hear the parties on the question of leave at a convenient time. [There was preliminary discussion of some of the factors relevant to a grant of leave including the fact that Mr Georgevits’ affidavit had been filed as long ago as 6 February 1998 and the objection to para 111 had been notified only yesterday at the commencement of the hearing. Subsequently, by consent, leave was granted.]

Decision

Reasons for decision

LINDGREN J

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Ratio Decidendi

Legal Principle Established

Established by: LINDGREN J

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IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 566 OF 1997

BETWEEN:	LUCENT TECHNOLOGIES INC Applicant
AND:	KRONE AKTIENGESELLSCHAFT Respondent

JUDGE:	LINDGREN J
DATE:	19 OCTOBER 1999
PLACE:	SYDNEY