Marconi's Wireless Telegraph Co Ltd v The Commonwealth

[1912] HCA 93

15 CLR 685

THE MARCONI'S WIRELESS TELEGRAPH

APPELLANTS;

COMPANY LIMITED

THE COMMONWEALTH

RESPONDENTS. DEFENDANTS.

ON APPEAL FROM A JUSTICE OF THE HIGH COURT. Practice-Inspection-Patent-Infringement-Applicatio - for patent for alleged in-

fringing apparatus-Publication of specification-Rules of the High Court 1911, Part 1., Order XLIII., r. 1.

In an action against the Commonwealth for infringement of patent it was alleged that an apparatus used by the Commonwealth for wireless telegraphy was an infringement of certain patents of the plaintiffs for improvements in wireless telegraphy. After the statement of claim was filed and before defence the plaintiffs applied for inspection of the apparatus used by the Commonwealth. An application for a patent in respect of the apparatus used by the Commonwealth was subsequently made, and the specification was made public.

Held, that no order for inspection should be granted at that stage of the proceedings.

APPEAL from Higgins J.

The Marconi's Wireless Telegraph Co. Ltd. brought an action in the High Court against the Commonwealth, alleging an infringement by the defendants of six patents of the several States of the Commonwealth, each being for improvements in

15 CLR 686

OF A. wireless telegraphy, and claiming an injunction and damages. In

giving particulars of infringement the plaintiffs alleged that the defendants had erected, and were using, at the Domain, Mel- bourne, at Pennant Hills, New South Wales, and at Hobart, Tas- mania, apparatus for wireless telegraphy made in accordance with or only colourably differing from the specifications of the [No. 1.]

said several letters patent, and they further said that they were unable to give further particulars of infringement before discovery.

The plaintiffs then, before any defence was delivered, applied by summons, dated 12th March 1912, for inspection of the plant or apparatus used or contained in any station for wireless tele- graphy erected or to be erected by the defendants in Australia.

It was stated in one of the affidavits filed on behalf of the defendants that the system of wireless telegraphy used at the defendants' wireless telegraph station at Melbourne was entirely different from that of the plaintiffs, and was invented by John Graeme Balsillie, an officer of the Postmaster-General's Depart- ment, and that he had assigned his rights to the inventions com- prised in such system to the defendants.

Another affidavit was one sworn by Justinian Oxenham, Secre- tary to the Postmaster-General's Department, under the direction of the Postmaster-General, containing the following paragraph "The Postmaster-General has authorized me to inform the Court that he is of opinion that it would be prejudicial to the public interest of the Commonwealth of Australia for the system of wireless telegraphy now being employed at the wireless station at Melbourne to be discovered at the present stage of the action."

The summons was heard by Higgins J., who made an order, dated 15th April 1912, that, the plaintiffs by their counsel " refusing to accept an order for inspection by some impartial expert on lines substantially similar to those laid down in Plat- ing Co. v. Farquharson 1, I make no order on the application except that the costs of the said summons, which are hereby fixed at £5 5s., be paid by the plaintiffs to the defendants."

From this decision the plaintiffs appealed to the Full Court. During the hearing of the appeal a further affidavit was sworn

11 Griff. P.C., 187. 15 CLR 687

by Mr. Oxenham, in which it was stated that he was directed by the Postmaster-General to inform the Court that the Minister was of opinion that it would be prejudicial to the public interest and welfare of the Commonwealth to allow inspection of the wireless telegraph stations or the plant and apparatus therein, and also that the Postmaster-General had directed him to inform the Court that the Postmaster-General's opinion was not based upon the pecuniary or commercial interests of the Postal Department of the Commonwealth, or upon any desire to defeat the plaintiffs' claim in the action, but solely in the interests of the public welfare and the naval and military defence of the Commonwealth.

It was also stated on behalf of the defendants that it was intended to apply for patents in respect of the apparatus used by the defendants at their wireless telegraph stations and that the specifications would be published. The hearing of the appeal was thereupon adjourned. Subsequently applications were made by J. G. Balsillie, for patents for a wireless telegraphic trans- mitter" and for "improvements in wireless telegraphic receivers," and the complete specifications for these inventions were accepted and made public. It was sworn that the apparatus used by the defendants was in strict accordance with those specifications.

Mitchell K.C. (with him Irvine K.C. and Mann), for the appel- lants, referred to Terrell on Patents, 2nd ed., p. 246; Seton on Decrees, 4th ed., vol. I., p. 351; Frost on Patents, 3rd ed., vol. p. 451; 4th ed., vol. I., p. 226; Batley v. Kynock 1: Cheetham V. Oldham 2; Edler v. Victoria Press Manufacturing Co. 3; Marconi v. British Radio Telegraph and Telephone Co. Ltd. 4; Potter's Sulphide Ore Treatment Ltd. v. Sulphide Corporation Ltd. 5.

Duffy K.C. and Starke, for the respondents, referred to Com- monwealth v. Miller 6 Robertson's Civil Proceedings by and against the Crown, p. 606; Rylands v. Ashley's Patent (Machine Made) Bottle Co. 7.

1.R. 19 Eq., 90, at p. 92. 25 R.P.C., 617, at p. 620. 327 R.P.C., 114. 428 R.P.C., 181, at p. 199. 513 C.L.R., 101, at p. 107. 610 C.L.R., 742. 77 R.P.C., 175, at p. 181. 15 CLR 688

GRIFFITH C.J. This matter comes before this Court in form as an appeal from an order of our brother Higgins dismissing a summons for inspection. He offered the plaintiffs an order for inspection on terms which they would not accept, and with which both parties were dissatisfied. As the plaintiffs would not accept them, he dismissed the summons with costs. Now the [No. 1.]

matter comes before us in form as an appeal, but really as a re-hearing on fresh evidence, and we must now make the order that is proper to-day, not the order that should have been made in March last. The plaintiffs have delivered their statement of claim, and the defendants have not delivered their defence, but have asked the plaintiffs for particulars of infringement. The plaintiffs said, We are not in a position to give particulars." But, now, at the last moment the plaintiffs are in possession of the specification of the apparatus sought to be patented by the defendants, which is sworn to contain a full disclosure of the nature of the apparatus alleged to be an infringement of the plaintiffs' patent. The complaint in the statement of claim is of an apparatus-that the apparatus used by the defendants is substantially the same as the apparatus which has been patented by the plaintiffs. Under those circumstances, remembering that this is a matter within the discretion of the Court, I think that the Court will exercise its discretion wisely by not making any order at the present time. It may turn out at a later stage that it will be proper and necessary to make an order for inspection, and I am disposed to think that no objection will be offered then to the limited inspection which Mr. Irvine says the plaintiffs desire. Certainly the defendants will not be in a position to object to such particulars as the plaintiffs can give with this specification before them.

Under all the circumstances, it seems to me the proper thing for the Court to do is to make no order on the application-as our brother Higgins did, but for a different reason-except that the order should be varied in SO far as it orders payment of costs, and by ordering that the costs of the application and of this appeal should be plaintiffs' costs in the action. This order is to be without prejudice to any application that may hereafter be made.

15 CLR 689

BARTON J. concur. [ISAACS J. was not present on the last day of the hearing, and took no part in the judgment.]

Order varied by ordering that the costs of

the application and of the appeal be plaintiffs' costs in the action. Solicitors, for the appellants, Blake &Riggall. Solicitor, for the respondents, C. Powers, Crown Solicitor for the Commonwealth.

[HIGH COURT OF AUSTRALIA.]

THE KING AGAINST WHITFELD AND OTHERS.

Ex PARTE QUON TAT. Courts of General Sessions (Tax.)-Appellate jurisdiction-Federal - matters-Pro.

hibited immigrant-Conviction-Refusal to hear appeal-Mandamus-Judica- - ture Act 1903 (No. 6 of 1903), sec. 39 (2)-Immigration Restriction Act 1901 (No. 17 of 1901), sec. 7.

By virtue of sec. 39 (2) of the Judicature Act 1903 Courts of General Sessions of the State of Tasmania are, within the limits of their jurisdiction, invested with federal jurisdiction,

As the Courts of General Sessions in Tasmania have no general appellate jurisdiction, but have merely particular appellate jurisdiction conferred upon them in several cases by particular Statutes, such Courts have no general jurisdiction to hear appeals from justices in matters of federal jurisdiction.

Held, therefore, that a Court of General Sessions in Tasmania has no jurisdiction to hear an appeal from a conviction by a magistrate of a person for an offence under sec. 7 of the Immigration Restriction Act 1901