N.V. Phillip & Ors v Mirabella International

[1994] HCATrans 110

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
              Sydney           No S73 of 1994

B e t w e e n -

N.V. PHILIPS GLOEILAMPENFABRIEKEN and PHILIPS LIGHTING PTY LIMITED

Appellants

and

MIRABELLA INTERNATIONAL PTY
       LIMITED

Respondent

Directions hearing

MASON CJ

(In Chambers)

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON WEDNESDAY, 23 NOVEMBER 1994, AT 10.18 AM

Copyright in the High Court of Australia

MR R.J. ELLICOTT, QC:   Your Honour, I appear with MR D.E.J. RYAN for the applicant.  (instructed by Sly & Weigall)

MR D.K. CATTERNS, QC:   May it please the Court, I appear with DR A.C. BENNETT, SC, for the respondent, Your Honour.  (instructed by Williams Niblett)

MR ELLICOTT:   Your Honour will remember that special leave was given to my client earlier in the year, in May I think it was, and it raised that question of manner of manufacture and the question of construction of the Act.  At the time of that appeal, my friend said to the Court, “We will be seeking leave to cross appeal on the question of novelty and fair basis”.

HIS HONOUR:   Did he actually say that?  I know he said that he was going to raise points.

MR ELLICOTT:   He said:

No, Your Honour, we would seek leave to cross appeal on the question of novelty and fair basis.

And then there was a discussion about it.

HIS HONOUR:   I think we assumed the correctness of his statement, that he was going to do something and that he was going to do it by seeking leave to cross appeal.

MR ELLICOTT:   That is right.  Now, that is what we thought was going to happen.

HIS HONOUR:   There was no further debate about that.

MR ELLICOTT:   No.  Then there was a notice of contention put on which seeks to raise a number of matters including section 40 of the Patents Act which Your Honour will recall, and the sufficiency points and whether the patent satisfies section 40; issue of novelty; utility; infringement and the meaning of an expression in the specification, in the claim, have all been raised as notices of contention.

Now, it is not our desire today other than to find out what we have to do for the purposes of the appeal because we do not want to have any deep-seated argument of law about it.  It just does not seem to us that a notice of contention is appropriate because what they are seeking to do is to set aside - - -

HIS HONOUR:   I am glad to hear that, Mr Ellicott.  I was inclined to think when I looked at the papers that this was not a matter on which grown men could actually have a deep-seated agreement.

MR ELLICOTT:   That is right.  But there may be a disagreement on that point as to whether it is an appropriate case for a notice of contention but, again, it is not, if I can use the vernacular, “a big deal” so far as we are concerned.

HIS HONOUR:   I would not have thought so.  I wondered whether or not it was some plan on your part to keep me occupied before my retirement.

MR ELLICOTT:   No, Your Honour, I think there will be plenty of things for Your Honour to do. 

If the matter is to be left on a notice of contention and it goes to the Full Court in due course, and - well, I know Your Honour may or may not be sitting - - -

HIS HONOUR:   Highly unlikely.  It will be a sacrifice.  I will not be able to hear your argument and that of Mr Catterns.

MR ELLICOTT:   Yes, Your Honour, it is a sacrifice for us too.  The difficulty that we see is that we may get to the Court and the Court then says, “This is not a matter for a notice of contention, this is a matter for cross appeal”.  In the meantime, the Court may or may not decide, in that process, to grant special leave to my friend if it thinks that that is the appropriate course, in which event considerable costs have been incurred on our part and, for that matter, on their part in preparing a hearing for the purposes of what are not greatly complex - it is not an immensely complex patent but, at the same time, it involves questions of electromagnetic energy, et cetera, and the effect of phosphorus.

HIS HONOUR:   How long did the appeal take in the Full Court of the Federal Court?

MR ELLICOTT:   It took about four days, I think.  It might have been five; but four or five days.

HIS HONOUR:   Together with your grounds of appeal, adding your ground to your grounds of appeal the matters that Mr Catterns wishes to raise in his notice of contention, does that cover the whole span of the issues debated in the Court of Appeal or not?

MR ELLICOTT:   Most of them.

HIS HONOUR:   Most of them?

MR ELLICOTT:   Most of them it would.  If he is to go into issues of the fact involving the effect of documents and the like, how they should be construed et cetera.  I think my friend said at the hearing of the application for special leave it could take three days.  Now, I suppose what we need to - - -

HIS HONOUR:   And he was speaking in the context of raising these other points when he said that.

MR ELLICOTT:   Yes, that is right, those two points, but there are a number of them and on two of them, novelty and not useful, there are concurrent findings of fact already and there may be some argument he has that if we are right, he is still right.  That is an argument that was ventilated on the application for special leave but, again, if that argument is to be looked at, then it seems to us that it needs an understanding of the facts so that, ultimately, the Court may well have to go into the facts. 

We raise the issue simply to get some direction from the Court.  Is the notice of contention to be the appropriate basis upon which these matters are to be raised?  If so, should there not be some procedure, because I am thinking of the Court’s reluctance to go into patent matters in great depth in terms of the factual matters.  If so, are there to be written submissions which will be detailed?  And what sort of timetable should we have in relation to that?  If my friend is to obtain special leave before he can go into these matters, then should that occur when the matter is set down for hearing, whenever that will be?  I understand there is a tentative date for March which is not quite acceptable from our point of view but, nevertheless.

HIS HONOUR:   Yes, I understand that is so.  Mr Ellicott, could I raise two questions with you:  one, it has always been my understanding that whether a notice of contention in a particular case is the appropriate way of raising a point rather than raising it by way of cross appeal is a matter determined by the Court before whom the appeal comes on for hearing.  Never, to my knowledge, has it ever been determined by a single Justice in advance of the hearing of the appeal and, what is more, if it were to be so determined then it seems to me that it would lend itself to an appeal, that is an application for leave to appeal from the decision of the single Justice, and I would have thought that that was profoundly undesirable.

MR ELLICOTT:   It is not what we want, Your Honour.

HIS HONOUR:   No.  Therefore, I would shy away, I would have thought, from the notion that I ought to be affirmatively and positively deciding whether this matter ought to be raised by way of notice of contention or cross appeal. 

MR ELLICOTT:   We originally asked that the matter be sat down at the hearing so that we raise the point when it came on for hearing in due course.  I think the Registry thought it ought to come before a single Judge ahead of that and that is why it is before Your Honour.

HIS HONOUR:   I see.

MR ELLICOTT:   I would not want to contend otherwise because we do not want an interlocutory appeal in the matter.

HIS HONOUR:   No, exactly.  The second thing I was going to say to you was, I had a very quick look at the provisions of the Judiciary Act and the High Court Rules.  It did seem to me that there was some basis for Mr Catterns’ contention that these matters could be raised by way of notice of contention rather than by way of cross appeal.  The starting point, I think, is the use of the word “judgment” in the relevant provisions of the Judiciary Act and the definition of “judgment” in the definition section, which seems to indicate that “judgment” is used in what I would call a technical sense, that is a judgment in favour of A against B for a particular sum of money.  Then, when you come to look at the provisions of the Rules in terms of cross appeals, is there not one rule which specifically provides that an application for special leave to appeal by way of cross appeal can be made at the hearing of the appeal?

MR ELLICOTT:   Yes, there is.  The rule says:

A respondent who desires to appeal from a part of the judgment below, or who seeks a variation of a part of that judgment, may.....file a notice of cross-appeal.

A notice of cross-appeal shall -

be numbered et cetera.  Then there is a provision:

A cross-appellant will be entitled to proceed with the cross-appeal only if special leave, which may be sought when the appeal is called on for hearing, is granted.

That is the rule Your Honour is referring to. 

It is not necessary to give notice of cross-appeal if a respondent contends that some matter of fact or law has been erroneously decided and does not seek a discharge or variation of a part of the judgment, decree, order or sentence actually pronounced -

I appreciate the force of what Your Honour says in relation to the meaning of the words “judgment, decree” et cetera under the Judiciary Act.  But when it uses the words, “a part of”, it seemed to us that that was open to the construction that if there was, as part of the judgment, a decision that, for instance, the patent was infringed - that was a very important part of the judgment - then, in effect, it is not just seeking that:

some matter of fact....has been erroneously decided and does not seek a discharge or variation of a part of the judgment -

it is certainly saying that some matter of fact or law has been erroneously decided but does seek a variation  of part of the judgment.  On that basis, we also had the thought this Court is probably not going to be inclined to allow a notice of contention to be a way of enabling a respondent to have, in effect, a cross appeal without special leave.  In other words, the wider the definition of “judgment” et cetera, the wider of that interpretation, the greater the loophole for respondents to get in.  Whereas the appellant has had the task of being one of the 10 per cent,
the respondent has a free ride.

HIS HONOUR:   Yes.  I must say I would have thought that was a strong argument 12 months ago.  I am not so sure I see it quite so strongly now, Mr Ellicott.

MR ELLICOTT:   Yes, Your Honour.  So, in any event, it really is a matter, obviously, for the Court but it just seemed to us that it raised a significant matter that may come up at the hearing.  From our point of view, we would like some direction from the Court as to how the Court would like the matter prepared for hearing because we do not want to get there, nor does my friend, I would think, and find that the Court is upset because it is presented with issues of fact.  If the Court wants written submissions, well, that will be done but we will need a timetable for it, so that the matter can be brought on, and if you want it in greater detail than 10 pages, then that would need to be indicated.  I would say that this is a case where the written submissions could be quite voluminous.  I do not mean volumes; I simply mean they would go into 100 pages or something of that description once each side gets into these issues of novelty.

HIS HONOUR:   When you say they could be, are you suggesting that you would think it is a case where the Court’s consideration of the issues would be assisted by very lengthy submissions?

MR ELLICOTT:   If the Court is going to consider the issue of novelty, on my friend’s application, then although the parties - my client, certainly, would want to be able to address the Court orally on the matter, and the matter may still take a day or two.

HIS HONOUR:   Yes.

MR ELLICOTT:   I imagine that the written submissions would ventilate what the real issues are so that they can be pinpointed and then the subject of the oral submissions.

HIS HONOUR:   I should say, too, that generally speaking, when parties estimate that a hearing might last two days or more, it has been my practice in more recent times to direct that comprehensive written submissions be filed and served with a view to ensuring that the hearing does not last too long.

MR ELLICOTT:   Yes.  That is probably what the Court would desire in this case, I should imagine.  But our concern at the outset was to make it clear that we take the view that, ultimately, my friends do not have any right to raise these issues.

HIS HONOUR:   No, I follow that.

MR ELLICOTT:   But we do not want to have an interlocutory squabble about it.  If the Court thinks it is the appropriate way for us to put on some submissions and then for my friend to put on his and us to reply, well, we will do that and come back to the Court in due course.  That is our approach.

HIS HONOUR:   An aura of sweet reasonableness emanates from your end of the bar table.

MR ELLICOTT:   Yes, Your Honour.  The real fight is at the appeal.

HIS HONOUR:   Yes.  Now, Mr Catterns, what do you say about all this?  Now, you have heard the view I have expressed that I would regard it as inappropriate for me to decide the question whether these matters you want to raise should be raised by way of cross appeal or notice of contention.

MR CATTERNS:   Yes, Your Honour.  I will not canvass that.  Your Honour, as a matter of practicality, of course we agree to whatever timetable is convenient to the Court for submissions.  We will abandon a couple of the points of the notice of contention, and if Your Honour has that, it is annexed to my friend’s affidavit.

HIS HONOUR:   Yes, I have it here.  It is just a matter of putting my hands on it.

MR CATTERNS:   Your Honour, Mr Warburton’s affidavit annexed it, or it is in the volume if Your Honour would prefer that.

HIS HONOUR:   Yes.  Now, which are the - - -

MR CATTERNS:   Your Honour, we would abandon ground 1(a)(i) which is the sufficiency point.  That would leave 1(a)(ii) which is the fair basis point which is, in many ways, the mirror image of the “manner of manufacture” argument.

HIS HONOUR:   Yes, and it is also a point on which special leave has been sought in at least two cases.

MR CATTERNS:   Yes, Your Honour, and despite my most valiant efforts.

HIS HONOUR:   Despite your most valiant efforts, yes.

MR CATTERNS:   Yes.  So, it is an important issue in patent law, as I have submitted before, Your Honour.

Your Honour, the novelty we would continue to press if permitted.  We are not as pessimistic as our friend on that.  It really is a matter of looking at three specific articles.  Of course, the Court would need to understand the technology.  But the question is whether those three articles - this is in our paragraph 2, Your Honour. 

Your Honour, we would not press 3 which is utility; 4 and 5 are the same question.

HIS HONOUR:   That is infringement and construction.

MR CATTERNS:   Yes, the infringement depends on the construction solely and it is whether a luminescent material can include more than one.  Well, that would not take this Court more than a few minutes, the argument, on that either way, Your Honour.  It involves going back to the patent.

HIS HONOUR:   I am not sure that I agree with that.  Now, tell me, in the light of that, how long do you think the appeal is going to take?

MR CATTERNS:   Your Honour, I said two days at the application for special leave.  The hearing of the appeal took four days, that is counting some half days - aggregating half days.  With full written submissions, I still think it could be two days.  It could be three, Your Honour, I have to say.

HIS HONOUR:   But you would have no objection to comprehensive written submissions being filed and served?

MR CATTERNS:   No, Your Honour, and we would be happy to file ours in parallel, in-chief, as it were.  We could file ours on the notice of contention at the same days as our friends on the appeal because that is a case in-chief, as it were, in other words, cut a step out of it.

HIS HONOUR:   Yes.  Can I just ask Mr Ellicott what he thinks about that.  You may have no objection to that, in a sense, but may that not involve the possibility of two ships passing in the night because, to some extent, the matters relied upon by Mr Catterns cross the submissions you would want to make?

MR ELLICOTT:   Yes, I think, in view of what he says about 1(a)(ii), certainly, Your Honour, because, to some extent, he is trying to pick his own ground for novelty.  Well, he cannot do that, obviously.  He can put his argument as he wishes but we would have to canvass the whole area of novelty so far as we wanted to.

HIS HONOUR:   It seems to me that we ought to plan on the footing that we fix first of all a date by which you file and serve comprehensive written submissions and then, following that, we fix a date for Mr Catterns to do so.

MR ELLICOTT:   Yes, Your Honour.  Your Honour, we have a difficulty and it is relevant to this.  Both counsel below, and that includes myself, are not available in March for various reasons.  That is a difficulty which

our client faces, in one sense, simply because we were at both hearings below and - well, patent counsel do not sort of spring out of the air in the country.  I have as a junior, Dr Emmerson, who is available, I should tell Your Honour.  I am instructed to seek a later date than that.  Now, the Court may not appreciate that but I have raised it and it is not a matter of personal - - -

HIS HONOUR:   Well, personal, in one sense, but the client wants you to appear.

MR ELLICOTT:   That is right, and Mr Ryan who has been living with it for two or three years.  That is one matter I would mention.

HIS HONOUR:   Can I ask Mr Catterns what his attitude is to that.  What is your attitude about that, Mr Catterns?

MR CATTERNS:   Your Honour, we have accommodated our friend’s clients desire to have him a couple of times at the special level and, I think, at the appeal level.  We did take instructions and our client does oppose it for commercial reasons.  We did not realise there was going to be an application today otherwise we could have filed an affidavit if necessary but our client had difficulty selling the product because of this.  The patent has now expired, I should say.

HIS HONOUR:   In view of the fact that you have not had notice of this, I do not think I should rule on that today and I will proceed, Mr Ellicott, therefore, on the footing that the appeal will come on for hearing around about the tentative date in March.

MR ELLICOTT:   Yes.  Well, if we put on our submissions, I would suggest, by 18 December, Your Honour, sometime like that, and then my friend, by the end of January, and we will put - - -

HIS HONOUR:   Is that acceptable to you, Mr Catterns?

MR CATTERNS:   Yes, certainly, Your Honour.

MR ELLICOTT:   And we will put ours on towards the end of February, Your Honour.

HIS HONOUR:   Very well, I will direct then that the appellant file and serve comprehensive written submissions on or before 18 December; that the respondent file comprehensive written submissions by way of answer and in support of its notice of contention on or before 31 January 1995 with the appellant’s submissions in reply to be filed and served on or before the end of February.  I would have thought that would do.

MR ELLICOTT:   If Your Honour pleases.

HIS HONOUR:   Are you happy with that, Mr Catterns?

MR CATTERNS:   Yes, certainly, Your Honour.

MR ELLICOTT:   Yes, Your Honour, that is all.  If Your Honour just reserves the costs of the motion and notes that we do propose to content at the hearing that the notice of contention has no force or effect.

HIS HONOUR:   That is understood.  Mr Catterns, although the notice of motion seems to point in another direction, it does seem to me that, in the circumstances, I should order that the costs be costs in the appeal.

MR CATTERNS:   May it please the Court.

HIS HONOUR:   Because I have no doubt that the orders I have made are matters that, once the Registry had drawn my attention to the fact that there was an estimate of two or three days, I would have required a summons for direction or something like that to be taken out.

MR CATTERNS:   May it please the Court.

HIS HONOUR:   Very well, I will make the order:
costs of the parties be costs in the appeal.  The Court will now adjourn and resume at 11 o’clock.

AT 10.41 AM THE MATTER WAS ADJOURNED SINE DIE