Resmed Ltd v Respironics Inc

[1996] FCA 529

NOT SUITABLE FOR DISTRIBUTION

IN THE FEDERAL COURT OF AUSTRALIA ) 
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 33 of 1996
  )
GENERAL DIVISION                 )

BETWEEN:RESMED LIMITED

Applicant

AND:RESPIRONICS, INC.

Respondent

CORAM:    Burchett J.
PLACE:    Sydney
DATE:     18 June 1996

REASONS FOR JUDGMENT

BURCHETT J.:

In this matter a couple of short points of procedure have to be determined.  The matter is a so-called appeal from a decision in opposition proceedings in a patent case, where an appeal was lodged under Order 58 rule 4.  The appeal was lodged by the opponent which had succeeded in certain fair basis objections, but otherwise failed.  The respondent to the appeal has taken the view that such an appeal, being a re-hearing, brings before the court the whole of the issues determined in the office, and that no appeal or cross-appeal on its behalf is required.

The first issue to be determined is whether that is so.  I think that the applicant should prevail on this point.  In my view, a party seeking some positive order cannot simply say, "Well the other side has lodged an appeal, and therefore I can obtain relief which I have never sought in a pleading,  simply because my opponent has brought the whole case before the court."  I think the notice of appeal, on its proper construction, although it does bring the whole case before the court, is an appeal against only part of it.

That brings me to the second question, which is whether, that being so, the respondent to the present proceedings should have leave to file its own appeal or cross-appeal out of time.  I will not pause to trouble with the question whether it should be an appeal or a cross-appeal, since an appeal, if that is required, can be consolidated without any problem.  What is put is that under Order 58 rule 4(3) there are here "special circumstances".  Mr Catterns QC, for the applicant, on the other hand, denies that there are any special circumstances, and points to the rule's use of that expression.  As it happens, only yesterday I gave a decision on the scope of this rule, taking the view that the expression "special circumstances" within the rule has a meaning corresponding to that of "special reasons" in the rule that was considered in Jess v Scott (1986) 12 FCR 187: see Hope v Heggies Bulkhaul Limited (unreported, Burchett J, 17 June 1996).  I remain of that view.   Construing special circumstances in that sense, the rule refers to circumstances sufficient to take the case out of the ordinary course,
according to which a party wishing to lodge an appeal must do so within the time laid down.

Circumstances which do take a case outside the ordinary course are not limited by particular categories, and an applicant is not barred inevitably by the lack of a particular feature in the case either.  As to this, see the Full Court decisions in Comcare v A'Hearn (1993) 45 FCR 441 at 444 and Powerflex Services Pty Ltd v Data Access Corporation (Burchett, Heerey and Whitlam JJ, unreported, 4 June 1996) at 4.  It seems to me the decisions, and in particular the decision in Jess v Scott, make it clear that a rule in this form is intended to confer on the court a broad, rather than any sort of tethered, discretion.  To my mind, a case where there is no prejudice to the other side, where the other side is itself bringing related aspects of the decision up for reconsideration, and where the delay is not in all the circumstances excessive, is a case which may be regarded as outside the ordinary run of cases in the appropriate sense.

In all the circumstances of this matter, I think I should exercise my discretion to grant an extension of time for the filing of an appeal against that part of the decision against which the respondent to the present appeal wishes itself to appeal.

I certify that this and the preceding two (2) pages are a true copy of the Reasons for Judgment herein of his Honour Justice Burchett.

Associate:
     Date: 18 June 1996

Counsel for the Applicant:       Mr D.K. Catterns, QC

Solicitors for the Applicant:        Sprusons

Counsel for the Respondent:      Mr J.T. Gleeson

Solicitors for the Respondent:    Griffith Hack & Associates

Date of hearing:                 18 June 1996