NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd

[1992] FCA 259

IN TEE FEDERAL COURT OF AUSTRALIA )

NO. NG 351 of 1991

GENERAL DIVISION

BETWEEN:	N.V. PHILIPS GIX)EILANPENFABRIEKEN
First Applicant
PHILIPS LIGHTING PTY LIMITED
Second Applicant
AND :	MIRABELLA INTERNATIONAL P m LIMITED

corn:	WILCOX J
PLACE :	SYDNEY
DATE :	26 MARCH 1992

EXTEBPORE REASONS FOR ,JUDGMENT

WIXOX J:  I have listened very carefully to the reasons

that have been put in support of M r Ellicott's application for

extent, instructions have to come from that country. However,

an immediate adjournment of these proceedings to a date to be
fixed in the future. That would necessarily be some months
hence. I wish to say immediately that I appreciate the
significance of the case from the point of view of both
parties. I also appreciate its complexity; it involves quite
numerous technical matters. The situation is not made easier,
from the applicants' point of view, by the fact that the

relevant experts are in the Netherlands. To a very large

there are present in Sydney at the moment the two principal

deponents, including Dr Verhaar.

It is most unfortunate that the situation to which

m Ellicott alludes has occurred. I gave directions in this

case on a number of occasions. Those directions were designed
to ensure that, long before the hearing was due to commence,
both parties would have filed all the affidavits upon which
they proposed to rely. For reasons which I have not gone into
and I do not propose to address at this moment, that did not
occur. As recently as last weekend there was a further batch
of affidavits from the applicants and there have been other
affidavits produced by the respondents during the course of
the hearing already. In addition, the respondents sought and
obtained leave to further amend its cross-claim.

It is most unfortunate that this should occur in any

case; particularly so in a lengthy and complex case such as
this. However, that is the situation and the question is,

having regard to that history, whether there should now be an
adjournment.	The view that I have formed is that there

should not be an immediate adjournment of the hearing but that

does not mean that there should never be an adjournment,

between now and the final resolution of the matter. It may be

that, as time goes on, it will be found that there is a real
problem of doing justice to the parties without there being
some significant adjournment. If either party puts that
proposition to me I will listen to it carefully and evaluate
it. One advantage of trial by judge alone is that the hearing
does not have to be continuous; although that is, of course,
desirable, particularly in a matter with complex facts.

I think that the real question which needs to be

addressed today is what degree of prejudice would be suffered
by the applicants if the matter proceeded as envisaged, with
evidence being taken by way of cross-examination of witnesses
but with the possibility of an adjournment at a later stage if
a problem really arises. Mr Ellicott, at my request,
identified two practical problems and it seems to me that the
question I have to decide depends upon whether or not I am
persuaded that they are problems of such magnitude as to

justify the loss of the time which has been set aside and the

delay in final resolution which would occur. In that context
I have to remember that the respondents have given an
undertaking not to import the subject products until the
finalisation of the proceeding, an undertaking which no doubt

involves them in some loss.

The two matters to which Mr Ellicott referred are,

first, an article which is annexed to the affidavit of Dr
Lowke and which is identified as JJL5; and, second, a
paragraph in an affidavit of Dr J.G. Thompson dated 24 March.

So far as the first document is concerned, it is relevant to

note that, until the Further Amended Cross-claim was filed

yesterday, this article was not relied upon by the respondent in support of its challenge to validity on the ground of lack of novelty. However, the article was disclosed in the

affidavit of Dr Lowke dated 25 February; it was put-into
evidence on the question of common general knowledge. So the
article itself does not come as a surprise to the applicants
or their advisers; the question is whether the use of the
article operates to prejudice the applicants. The passage in
the article referred to by Mr Ellicott is set out on page 92.

It is in these terms:

"An advantage of the rare earth-activated

phosphors is their high efficiency at elevated
temperatures. This makes them suitable for
high-loaded lamps in which the mercury pressure

is amalgam-regulated."

The first sentence is one which is to be found in

other literature already in evidence. As I understand the facts of the matter and the scientific evidence, it is not controversial. The second sentence, according to Mr Ellicott,

creates problems for him.	He refers to the use of the word
"high-loaded". But I note that this term is used in a number
of the articles and in numerous passages of evidence.	I do

not see any problem about Dr Verhaar giving expert evidence as
to what he understands by the term "high-loaded" and what he
understands the learning in the relevant scientific area on
this term would have been in 1977. Then there is the
reference to mercury pressure being amalgam-regulated. I
confess that I do not presently understand just what this
means or what its significance may be, but I am not persuaded
that Dr Verhaar would have any problem in addressing that part
of the sentence or in explaining its meaning and his
understanding of its meaning in 1977.

I have not excluded affidavit evidence by experts

relating to general scientific knowledge at a point of time
prior to the date of their own scientific qualifications.
This material falls within that category. As I have
mentioned, the article is one which has been in evidence for
some time. I think that I am entitled to assume that it has
been carefully read by the experts retained on behalf of the
applicants and that anything in the article which is

significant would have been pointed out by them to the

applicantsf legal advisers. But I point out that, even if

this is not a sufficient assumption, the case will not finish

today or even next week.	There will be an opportunity for
instructions to be given about this matter.	If it really

turns out that the experts who are presently in Sydney cannot

deal with it, I will listen to any further application which

might be made.

In relation to para 21 of Dr Thompson's affidavit,

M r Ellicott says that this is evidence in chief. I am not

persuaded that this is so. When one reads the paragraph in
its context, it will be found that it is part of a series of

paragraphs which respond to the affidavit of Dr Verhaar sworn

on 18 December last. In para 21, Dr Thompson makes a

statement of fact in the first sentence, which he regards as
so axiomatic that he includes the words "of course". I do not
understand that statement of fact to be in dispute; He then
immediately turns to the subject patent, quotes some words
from it and sets out an argument of construction. Dr Thompson
then refers to paragraph 6 of Dr Verhaar's affidavit of 18
December and goes on to indicate why he does not agree with
what he calls the argument contained therein. He develops his
view on that matter for the remainder of the paragraph, except
that in the last two lines he reverts to the terms of the
patent and a distinction which is there made, which he
categorises as purely arbitrary and without demonstrated
theoretical basis.

As Mrs Bennett has pointed out, Dr Thompson does not introduce evidence of any experimentation or tests. He simply takes a basic document in the case, namely the patent, and

discusses it with reference to what he regards as an
uncontestable scientific statement and Dr Verhaar's affidavit.

I suppose it would always be possible for additional experts

to be retained, on one side or both sides; but at the end of	the day the question will be whether, in relation to para. 21,
I am persuaded that Dr Verhaar's approach is correct or Dr Thompsonfs approach is correct. It may not matter. There are numerous issues joined between the technical experts which may be unnecessary to determine.

One clear impression I have about the case is that

the real issues between the experts, and the questions of law
which depend upon the expert evidence, will only become
obvious when there is some joinder between counsel and the

experts on the other side by cross examination. It would be

possible to proliferate paper in this case almost
indefinitely. We will all be a lot wiser after a few days of
hearing the experts give their evidence. If I am persuaded
that one party or other has a genuine difficulty because of

material coming late, then I will listen very sympathetically

to any application which may be made. In the meantime, I

think the case should proceed and that the first deponent who

is to be cross-examined should be called.

I certify that this and the preceding six (6) pages
are a true copy of the Reasons for Judgment

of the Honourable Justice Wilcox.

Associate: PG k Dated: 26 arch 1992

APPEARANCES

Counsel for the Applicant:	R Ellicott QC and
D Ryan

Solicitors for the Applicant:	Sly & Weigall
Counsel for the Respondent:	A Bennett
Solicitors for the Respondent:	Williams Niblett
Date(s) of hearing:	23, 25, 26 March (and continuing)