Siemens Water Technologies Corp v GE Betz Pty Ltd (No 2)

[2012] FCA 1115

FEDERAL COURT OF AUSTRALIA

Siemens Water Technologies Corp v GE Betz Pty Ltd (No 2) [2012] FCA 1115

Citation:		Siemens Water Technologies Corp v GE Betz Pty Ltd (No 2) [2012] FCA 1115
Parties:		SIEMENS WATER TECHNOLOGIES CORP and MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566) v GE BETZ PTY LTD (ACN 001 221 941), ZENON AUSTRALIA PTY LTD (ACN 111 935 114) and GE BETZDEARBORN CANADA COMPANY
File number:		NSD 601 of 2010
Judge:		JAGOT J
Date of judgment:		12 October 2012
Legislation:		Federal Court Rules 2011 (Cth)
Cases cited:		Novartis AG v FH Faulding & Co Ltd (2004) 62 IPR 530; [2004] FCA 1002
Date of hearing:	12 October 2012
Place:	Sydney
Division:	GENERAL DIVISION
Category:	No catchwords
Number of paragraphs:	6
Counsel for the Applicants:	Ms C L Cochrane
Solicitor for the Applicants:	Shelston IP Lawyers
Counsel for the Respondents:	Mr R Niall SC
Solicitor for the Respondents:	Corrs Chambers Westgarth Lawyers

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 601 of 2010

BETWEEN:

SIEMENS WATER TECHNOLOGIES CORP
First Applicant

MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566)
Second Applicant

AND:

GE BETZ PTY LTD (ACN 001 221 941)
First Respondent

ZENON AUSTRALIA PTY LTD (ACN 111 935 114)
Second Respondent

GE BETZDEARBORN CANADA COMPANY
Third Respondent

JUDGE:	JAGOT J
DATE OF ORDER:	12 OCTOBER 2012
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The interlocutory application of the respondent be dismissed.

2.The respondent is to pay the applicant’s costs of that interlocutory application as agreed or taxed.  

Note:Settlement and entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 601 of 2010

BETWEEN:

SIEMENS WATER TECHNOLOGIES CORP
First Applicant

MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566)
Second Applicant

AND:

GE BETZ PTY LTD (ACN 001 221 941)
First Respondent

ZENON AUSTRALIA PTY LTD (ACN 111 935 114)
Second Respondent

GE BETZDEARBORN CANADA COMPANY
Third Respondent

JUDGE:	JAGOT J
DATE:	12 OCTOBER 2012
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. This is an interlocutory application seeking that two questions of construction of certain claims of the patent be heard and determined separately pursuant to rule 30.01 of the Federal Court Rules 2011 (Cth).

2. For present purposes, it is sufficient to say that the headnote to the decision in Novartis AG v FH Faulding & Co Ltd (2004) 62 IPR 530; [2004] FCA 1002 adequately summarises the principles. The principles are: – (i) “the ordinary course is that all issues in a proceeding should be dealt with at the one time”, and (ii) “that position should not be disturbed unless it can be clearly seen that determination of a separate question will facilitate the quicker and cheaper resolution of the proceedings”. The onus is on the party seeking the separate determination to establish that such a determination will meet that threshold.

3. Other cases to which I need not refer caution that, in assessing whether or not it can be clearly seen that determination of a separate question will facilitate the quicker and cheaper resolution of the proceedings, care must be taken to ensure that the perceived benefits of quickness and cheapness are not illusory, as experience in the determination of separate questions shows they often are. 

4. In the present case it seems to me that what is proposed, particularly in relation to the questions to be determined here, is fraught with the risk that any short-term benefits will be subject to long-term disadvantage to both parties.  This is not only a result of the reality that any resolution of the issues of construction of the claims will be subject to appeal, and accordingly any benefit is dependent upon the outcome of the construction questions both at first instance and on appeal, but also that there is a real risk in this case of an overlap of evidence between the two proposed phases of the hearing.

5. The mere fact that this interlocutory application seems to have been triggered by another interlocutory application which seeks extensive discovery, inspection and arguably experimentation seems to me to demonstrate that the perceived benefits, which I accept the respondent genuinely does perceive, may ultimately turn out to be illusory once the benefit of resolution of all of the issues has arisen.  It seems to me that if I accede to this application, I will be committing the Court and the parties to a course which, with the benefit of hindsight, would not be desirable in the interests of justice and in the interests of the parties. 

6. Accordingly, not having been persuaded by the submissions of the respondent on the interlocutory application, the order I will make is that the interlocutory application be dismissed.

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot.

Associate:

Dated:       24 October 2012