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Stack v Brisbane City Council

Stack v Brisbane City Council

Case [2004] FCA 354 30 March 2004

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FEDERAL COURT OF AUSTRALIA
Stack v Brisbane City Council
[2004] FCA 354
PATENTS - entitlement to grant
ESTOPPEL - issue estoppel - judgment on preliminary issue - further proceedings
COSTS - usual rule that costs follow event - whether special circumstances justifying an order contrary to usual rule
Stack v Brisbane City Council [1999] FCA 1279
Blair and Perpetual Trustee Co Ltd v Curran (1939) 62 CLR 464
Administration of the Territory of Papua New Guinea v Guba (1973) 130 CLR 353

Ramsay v Pigram (1968) 118 CLR 271
Taylor v Ansett Transport Industries Ltd (1987) 18 FCR 342
Murphy v Abi-Saab (1995) 37 NSWLR 280
Fidelitas Shipping Co Ltd v V/O Exportchleb [1966] 1 QB 630
Stack v State of Queensland (1996) 68 FCR 247
Hughes v Western Australian Cricket Association [1986] ATPR 40-748
Cummings v Lewis (1993) 41 FCR 559 (FC)
Patents Act 1990 (Cth)
Patents Regulations 1991 (Cth)
GEORGE STACK v BRISBANE CITY COUNCIL
QG 28 OF 1994
COOPER J
BRISBANE
30 MARCH 2004

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QG28 OF 1994

BETWEEN:

GEORGE STACK
FIRST APPLICANT

G S TECHNOLOGY PTY LTD
SECOND APPLICANT

AND:

BRISBANE CITY COUNCIL
FIRST RESPONDENT

DAVIES SHEPHARD PTY LTD (NOW ELSTER METERING PTY LTD)
SECOND RESPONDENT

DAVIES SHEPHARD (QUEENSLAND) PTY LTD (NOW WOODPICKERS AUSTRALIA PTY LTD)
THIRD RESPONDENT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QG11 OF 1996

BETWEEN:

GEORGE STACK
APPLICANT

AND:

DAVIES SHEPHARD PTY LTD (NOW ELSTER METERING PTY LTD)
FIRST RESPONDENT

GSA INDUSTRIES (AUST) PTY LTD
SECOND RESPONDENT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QG21 OF 1996

BETWEEN:

GEORGE STACK
APPLICANT

GS TECHNOLOGY PTY LTD
SECOND APPLICANT

AND:

STATE OF QUEENSLAND
FIRST RESPONDENT

COMMISSIONER OF PATENTS
SECOND RESPONDENT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QG29 OF 1996

BETWEEN:

G S TECHNOLOGY PTY LTD
APPLICANT

AND:

DAVIES SHEPHARD PTY LTD (NOW ELSTER METERING PTY LTD)
FIRST RESPONDENT

GSA INDUSTRIES (AUST) PTY LTD
SECOND RESPONDENT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIAN DISTRICT REGISTRY

ON APPEAL FROM THE COMMISSIONER OF PATENTS
VG39 OF 1996

BETWEEN:

DAVIES SHEPHARD PTY LTD (NOW ELSTER METERING PTY LTD)
APPLICANT

AND:

GEORGE STACK
FIRST RESPONDENT

GS TECHNOLOGY PTY LTD
SECOND RESPONDENT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIAN DISTRICT REGISTRY

ON APPEAL FROM THE COMMISSIONER OF PATENTS
VG40 OF 1996

BETWEEN:

GSA INDUSTRIES (AUST) PTY LTD
APPLICANT

AND:

GEORGE STACK
FIRST RESPONDENT

GS TECHNOLOGY PTY LTD
SECOND RESPONDENT

JUDGE:

COOPER J

DATE OF ORDER:

30 MARCH 2004

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:
1.Proceedings QG28 of 1994 be dismissed against, and judgment be entered for, the Brisbane City Council, Davies Shephard Pty Ltd (now Elster Metering Pty Ltd) and Davies Shephard (Queensland) Pty Ltd (now Woodpickers Australia Pty Ltd) on the claim and cross-claim save for those issues pleaded against the Brisbane City Council in paras 14 - 22 inclusive, 23 - 27 inclusive of the Further Amended and Consolidated Statement of Claim filed on 6 October 1997.
2.Proceedings QG29 of 1996…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Stack v Brisbane City Council

Details

AGLC: Stack v Brisbane City Council [2004] FCA 354
Case: [2004] FCA 354
Decision Date: 30 MARCH 2004

CaseChat Overview and Summary

George Stack initiated proceedings against the Brisbane City Council, Davies Shephard Pty Ltd (now Elster Metering Pty Ltd), Davies Shephard (Queensland) Pty Ltd (now Woodpickers Australia Pty Ltd), the State of Queensland, and GSA Industries (Aust) Pty Ltd. The central issue in the case was whether the Brisbane City Council had granted Stack a patent for a water meter without his consent, and subsequently revoked that grant. The case was heard in the Federal Court of Australia.

The legal issues that the court had to resolve involved the validity of the patent grant, the application of issue estoppel, and the appropriate allocation of costs. Specifically, the court had to determine whether the Brisbane City Council's actions constituted a grant of a patent to Stack, and if Stack was estopped from denying that the council had granted him a patent. Additionally, the court needed to address whether the usual rule that costs follow the event applied, or if special circumstances justified a departure from this rule.

In its judgment, the court dismissed the proceedings against the Brisbane City Council, Davies Shephard Pty Ltd, Davies Shephard (Queensland) Pty Ltd, and GSA Industries (Aust) Pty Ltd, with respect to certain claims. The court found that the Brisbane City Council had not granted Stack a patent, and that Stack was estopped from asserting otherwise due to prior litigation. The court also ruled that the usual rule for costs allocation should apply, but allowed for special circumstances that justified an order contrary to the usual rule. The court ordered that Stack and G S Technology Pty Ltd pay the costs of the defendants, subject to certain exceptions for specific issues.

The court's final orders included the dismissal of various proceedings against the defendants, with judgments entered in their favour on specific claims. It also set out the costs to be borne by Stack and G S Technology Pty Ltd, and directed that consent directions be filed for the remaining issues. If the directions were not filed within the stipulated time, the matter would be listed for further directions.

Orders

Orders of the court

1. Proceedings QG28 of 1994 be dismissed against, and judgment be entered for, the Brisbane City Council, Davies Shephard Pty Ltd (now Elster Metering Pty Ltd) and Davies Shephard (Queensland) Pty Ltd (now Woodpickers Australia Pty Ltd) on the claim and cross-claim save for those issues pleaded against the Brisbane City Council in paras 14 - 22 inclusive, 23 - 27 inclusive of the Further Amended and Consolidated Statement of Claim filed on 6 October 1997.

2. Proceedings QG29 of 1996 be dismissed against, and judgment be entered for, Davies Shephard Pty Ltd (now Elster Metering Pty Ltd) and GSA Industries (Aust) Pty Ltd.

3. Proceedings QG11 of 1996, QG29 of 1996, VG39 of 1996 and VG40 of 1996 be dismissed with no order as to costs.

4. Proceedings QG21 of 1996 be dismissed against, and judgment be entered for, the State of Queensland in respect of the claims relating to petty patents 645740 and 662284.

5. George Stack and G S Technology Pty Ltd pay one half of the costs of Davies Shephard Pty Ltd (now Elster Metering Pty Ltd), Davies Shephard (Queensland) Pty Ltd (now Woodpickers Australia Pty Ltd) and GSA Industries (Aust) Pty Ltd of and incidental to the claim and cross-claim in the proceedings QG28 of 1994 and of QG29 of 1996, to be taxed if not agreed.

6. George Stack and G S Technology Pty Ltd pay the costs of the Brisbane City Council of and incidental to QG28 of 1994, other than in respect of the outstanding issues pleaded in paras 14 - 27 inclusive of the Further Amended and Consolidated Statement of Claim filed on 6 October 1997, to be taxed if not agreed.

7. George Stack and G S Technology Pty Ltd pay the costs of the State of Queensland of and incidental to QG21 of 1996, other than the costs of those issues determined by Kiefel J with respect to the registration of petty patent 662284 on the Register of Patents in the name of G S Technology Pty Ltd, to be taxed if not agreed.

8. George Stack and G S Technology Pty Ltd pay the costs of the Brisbane City Council, the State of Queensland, Davies Shephard Pty Ltd (now Elster Metering Pty Ltd), Davies Shephard (Queensland) Pty Ltd (now Woodpickers Australia Pty Ltd), and GSA Industries (Aust) Pty Ltd of and incidental to these motions for final orders to be taxed if not agreed.

9. George Stack, G S Technology Pty Ltd and the Brisbane City Council file within 14 days consent directions for the further conduct of the remaining issues in Q28 of 1994 in default of which the matter be listed for further directions at 9.30am 16 April 2004.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

COOPER J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: COOPER J

Full text does not contain this section.

Citations

AGLC Citation

Stack v Brisbane City Council [2004] FCA 354

Most Recent Citation

G S Technology Pty Ltd v Brisbane City Council [2007] FCA 279

Cases citing this decision · 6 of 6 shown

The Council of the Law Society of the Australian Capital Territory v LP 12
[2018] ACTCA 60

…Alexander v Rayon [1936] 1 KB 169 Australian Securities and Investment Commission v Healey [2011] FCA 717; 196 FCR 291 Stack v Brisbane City Council (1998) 41 IPR 69 James v Australian and New Zealand Banking Group Ltd (1986) 64 ALR 347 J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (West…
Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4)
[2013] FCA 567 Para 28

…9 (Cth) ( previous Rules ), which refers to an “interlocutory proceeding” and an “interlocutory order” (terms which are not defined): compare Stack v Brisbane City Council (1997) 71 FCR 523 at 534-535. Order 62, r 3(3) provides: An order for costs of an interlocutory proceeding shall not, unless the Court otherwise orders, entitle a p…
Hing Ling Yu and 8 Others v Henry Ph Leung
[2011] ATMO 22 Para 3

…same parties based on these defences[9]. [8] See, for example, Willoughby v Clayton Utz [No 2] [2009] WASCA 29 at [14]; Stack v Brisbane City Council [2004] FCA 354 ; Administration of the Territory of Papua New Guinea v Guba [1973] HCA 59 ; Ramsay v Pigram [1968] HCA 34; and Taylor v Ansett Transport Industries…
Capital Finance Australia Pty Ltd v Nathan
[2008] FMCA 1363 Para 1

…roceeding and the parties to be in controversy on the issue in question (see Blair at 510 Starke J and 532 per Dixon J, Stack v Brisbane City Council [2004] FCA 354 at [21] – [22] per Cooper J and Yap v Granich and Associates [2001] FCA 799 at [28] per RD Nicholson J).…
17/2008 GS Technology Pty Ltd v Elster Metering Pty Ltd
[2008] FCA 17 Para 14

…In Stack v Brisbane City Council [2004] FCA 354 (the Third Set of Reasons) Cooper J said at [21] and [22]: For there to arise an issue estoppel binding against Stack and GST it must be shown that: (a) the issue ruled upon was indispensable or fundamental to the ultimate decision: Blair and Perpetual Trustee Co Lt…
G S Technology Pty Ltd v Brisbane City Council
[2007] FCA 279 Para 10

…the previous patent, whilst action No QG 21 of 1996 involved a similar claim based on petty patent 662284. See Stack v Brisbane City Council [2004] FCA 354 at [13]-[15]. Both petty patents were based upon patent application 85236/91 which, in turn, was based upon two provisional applications, PK 2036 and PK 5286…

View all 6 citing cases →

Cases cited in this decision · 12 of 12 shown

Stack v State of New South Wales (Central Coast Health District - Woy Woy Hospital)
[2025] NSWPICMP 120 Para 8

…ered as owner of the petty patent. However, that entitlement was as to ownership and not an entitlement to a grant of a patent as dealt with in s 15: Stack v State of Queensland (1996) 68 FCR 247 at 251-252; see also my reasons at [1999] FCA 1279 at [34] to [40] inclusive. For the purpose of the determination of this issue of regist…
Stack v Davies Shephard Pty Ltd
[2001] FCA 501 Para 1

…of the litigation is set out in my Reasons for Judgment in Stack v Brisbane City Council [1999] FCA 1279 at pars 1 - 12 inclusive; see also on appeal (2001) 108 FCR 422 at 423 - 424. Appeals by George Stack (“Stack”) and GS Technology Pty Ltd (“GST”) from declarations and orders which I made upon the trial of two pre…
Stack v Brisbane City Council
[1999] FCA 1279 Para 1

…ect of petty patents for water meter assemblies. The history of the litigation is set out in my Reasons for Judgment in Stack v Brisbane City Council [1999] FCA 1279 at pars 1 - 12 inclusive; see also on appeal (2001) 108 FCR 422 at 423 - 424. Appeals by George Stack (“Stack”) and GS Technology Pty Ltd (“GST”) fro…
Rose v Bridges
[1997] FCA 1279 Para 23

…petty patent based on invalidity for non-compliance with the requirement of s 40 of the Patents Act is dealt with in paras [88] - [133] of my reasons [1997] FCA 1279. In my view, the attack was unreasonable. In respect of the evidence tendered by DS, DSQ and GSA in support of it, I said in part: “[113] In my view…
Bryant v Commonwealth Bank of Australia
[1995] HCATrans 257 Para 4

…n issue was indispensable or fundamental to the ultimate decision is whether an appeal lies from a finding in respect of the issue: Murphy v Abi-Saab (1995) 37 NSWLR 280 at 288. In the instant case, each of the declarations was appealed to the Full Court of this Court and special leave to appeal in respect of them was…
Cummings v Lewis
[1993] FCA 190 Para 21

…of special circumstances justifying some other order: Hughes v Western Australian Cricket Association [1986] ATPR 40-748 at 48,136; Cummings v Lewis (1993) 41 FCR 559 (FC) at 599-604. A successful party who has failed on certain issues may not only be deprived of its costs on those issues but may be ordered to pay…
Taylor v Ansett Transport Industries Ltd
[1987] FCA 127 Para 3

…issue estoppel were in controversy on the issue in question: Ramsay v Pigram (1968) 118 CLR 271 at 276; 279; Taylor v Ansett Transport Industries Ltd (1987) 18 FCR 342 at 356-358; 365.…
Administration of Papua and New Guinea v Daera Guba
[1973] HCA 59 Para 3

…(1939) 62 CLR 464 at 531; (b)the judgment is capable of giving rise to an issue estoppel: Administration of the Territory of Papua New Guinea v Guba (1973) 130 CLR 353 at 451; (c)the issues must be the same in each proceeding: Blair v Curran at 510, 532, 541; and (d)the parties to be bound by an issue estoppel were…
Ramsay v Pigram
[1968] HCA 34 Para 3

…g: Blair v Curran at 510, 532, 541; and (d)the parties to be bound by an issue estoppel were in controversy on the issue in question: Ramsay v Pigram (1968) 118 CLR 271 at 276; 279; Taylor v Ansett Transport Industries Ltd (1987) 18 FCR 342 at 356-358; 365.…
Blair v Curran
[1939] HCA 23 Para 3

…it must be shown that: (a)the issue ruled upon was indispensable or fundamental to the ultimate decision: Blair and Perpetual Trustee Co Ltd v Curran (1939) 62 CLR 464 at 531; (b)the judgment is capable of giving rise to an issue estoppel: Administration of the Territory of Papua New Guinea v Guba (1973) 130 CLR 353…
[1966] 1 QB 630
[1966] 1 QB 630 Para 4

…does not deny that they were capable of creating issues estoppel binding the parties to the proceedings: Fidelitas Shipping Co Ltd v V/O Exportchleb [1966] 1 QB 630 at 642.…
[1955] AC 534
[1955] AC 534 Para 7

…purposes of the employer’s business, was an incident of the employment of Stack and Grieves by the company: Sterling Engineering Co Ld v Patchet [1955] AC 534 at 543-4; 547, 548, 549. There is no evidence of any special contract or term of the employment which would have entitled Stack and Grieves to retain the…

Legislation cited in this decision · 2

Patents Act 1990 (Cth)
1 mention (from Para 4)
Patents Regulations 1991 (Cth)
1 mention (from Para 8)

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG28 OF 1994

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG11 OF 1996

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG21 OF 1996

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG29 OF 1996

BETWEEN:	GSA INDUSTRIES (AUST) PTY LTD APPLICANT
AND:	GEORGE STACK FIRST RESPONDENT GS TECHNOLOGY PTY LTD SECOND RESPONDENT
JUDGE:	COOPER J
DATE OF ORDER:	30 MARCH 2004
WHERE MADE:	BRISBANE