University of Sydney v ObjectiVision Pty Ltd

The University of Sydney and ObjectiVision Pty Ltd are parties to a legal dispute concerning patent, copyright, and confidential information claims. The case has proceeded to the Federal Court of Australia, where ObjectiVision has sought leave to file further amended notices of cross-claim and to lift the stay of proceedings against Visionsearch. The University has opposed the application, arguing that the proposed amendments are duplicative and would add unnecessary complexity to the proceedings. The court was required to determine whether leave should be granted in accordance with the purpose outlined in section 37M of the Federal Court of Australia Act 1976 (Cth) and whether the proposed amendments would be struck out. Additionally, the court had to consider whether adequate explanation was provided for the delay in providing security for costs and whether conditions should be imposed on the lift of stay.

The court found that the proposed amendments to the Fourth Cross-Claim contained significant deficiencies, including the lack of articulation of the basis for pleading a continuing representation by the University to honour its obligations under the identified agreements. The court was also concerned that the introduction of the misleading and deceptive conduct case would significantly add to the cost and complexity of the proceedings, as it would duplicate contractual promises that ObjectiVision could have relied upon. The court found that the additional complexity was not warranted given the apparently insignificant additional benefit that the pleading would provide to ObjectiVision. The court also noted that the proposed amendments to the copyright and misuse of confidential information parts of the third further amended cross-claim might clarify ObjectiVision's existing case, and if ObjectiVision wished to persist in making those amendments, it should serve its proposed amendments pleading expeditiously.

In relation to the lift of stay application, the court found that ObjectiVision had failed to make its first payment of $200,000 as security for the costs of Visionsearch, leading to the stay of proceedings against Visionsearch. The court considered the University's contention that the misleading and deceptive conduct amendments would cause prejudice due to the need to investigate factual matters concerning the negotiation and performance of the Heads of Agreement in January 2010 and the performance of that agreement in 2010. The court found that the proposed amendment to plead misleading and deceptive conduct should not be allowed due to the late filing of the amended pleading, the substantial overlap between the contracts entered into by the parties and the misrepresentation case, and the requirement for additional expert evidence going to the scope of the exclusive licence.

The court dismissed the interlocutory application filed by ObjectiVision on 27 July 2016 (amendment application) and ordered that ObjectiVision pay $200,000 into an interest-bearing account operated jointly by the solicitors for ObjectiVision and Visionsearch by way of security for Visionsearch’s costs incurred to date and in respect of costs to be incurred in relation to Visionsearch’s evidence in answer. The court also ordered that the stay of the cross-claim against Visionsearch be lifted upon the making of the payment. Additionally, the court ordered that ObjectiVision pay the University of Sydney’s costs of the amendment application and the lift of the stay application assessed at $90,000, as well as Visionsearch’s costs of the amendment application and the lift of stay application in a lump sum amount to be assessed by the Court or agreed.