Assa Abloy New Zealand Limited v Allegion (New Zealand) Limited

[2015] NZHC 1859

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV 2013-404-4178 [2015] NZHC 1859

BETWEEN

ASSA ABLOY NEW ZEALAND

LIMITED First Plaintiff

ASSA ABLOY IP AB Second Plaintiff

AND

ALLEGION (NEW ZEALAND) LIMITED

Defendant

Hearing:	6 August 2015
Counsel:	C Elliott QC for Plaintiff M Sumpter for Defendants
Judgment:	6 August 2015

(ORAL) JUDGMENT OF HEATH J

Solicitors:

Tery IP, Auckland Chapman Tripp, Auckland Counsel:

C Elliott QC, Auckland

ASSA ABLOY NEW ZEALAND LIMITED v ALLEGION (NEW ZEALAND) LIMITED [2015] NZHC 1859 [6 August 2015]

[1]      Assa Abloy  New  Zealand  Ltd  and Assa Abloy  IP AB  (the Assa Abloy companies) sue Allegion (New Zealand) Ltd (Allegion) for infringement of New Zealand Patent No. 526262, in respect of a latching mechanism.  As a result of a judgment given by Brewer J on 30 July 2015,1 Allegion was permitted to amend its Statement of Defence and to file amended particulars of objection.  The amendments related  to  a  question  of  validity  which  had  been  raised  by Allegion  in  earlier

pleadings. The particulars go to alleged prior art.

[2]      The trial is due to begin on 17 August 2015.  Initially, today’s hearing was convened for the purpose of hearing an adjournment application made by Allegion. That had been opposed by the Assa Abloy companies on the basis that the question of infringement could be tried during the one week available, leaving “validity” and remaining issues to be determined later.  That is not the standard way in which issues of that type are resolved as the question of invalidity logically would precede any

question of infringement.2    However, there is no need for me to consider that issue

now.  As a result of advice provided earlier today of a potential hearing date in April

2016, when all questions of liability and relief can be addressed, the Assa Abloy companies have withdrawn their objection to the adjournment.

[3]      The trial scheduled for 17 August 2015 is vacated.   Instead, a trial date is fixed to commence on 18 April 2016 for 14 days.3     Counsel have indicated that provided close case management is undertaken, the trial should be capable of being completed within that time.

[4]      A number of directions have already been made to ready the proceeding for hearing during the week of 17 August.  They were made by Asher J on 25 February

2015.  He also directed that the trial be split between liability and quantum.  Having regard to the availability of time to deal with all issues, I vacate that direction.  I also vacate  all  directions  in  relation  to  trial  matters  contained  in  para  [2](d)–(h)  of Asher J’s Minute of that date.   Those directions are superseded by those I make

today.

1      Assa Abloy New Zealand Ltd v Allegion (New Zealand) Ltd [2015] NZHC 1775.

2      For example, see British Gas Services Ltd v Vanclare [2015] EWHC 2087 at paras [29] and [33] (Arnold J).

3      One of the days within those three weeks is a public holiday, Anzac Day.

[5]      A number of the issues raised will need to be addressed further by Asher J in the course of the case management process.  That Judge will have carriage of case management issues, and I confirm his assignment for that purpose.   The question whether Asher J will be the trial Judge will need to be determined closer to the time. There is no guarantee that that will occur.

[6]      So far as case management processes at the present time are concerned, I have  heard  today  from  Mr  Elliott  QC,  for  the  Assa  Abloy  companies,  and Mr Sumpter, for Allegion.  The issues that will require some attention in the period leading up to trial are these: discovery, inspection, any further interlocutory applications, close of pleadings, “responsive” evidence and pre-trial timetabling in relation to bundles of documents and the like.

[7]      Following exchanges with counsel, it has been agreed that the preferable course is to timetable discovery issues for resolution and to have a further case management conference before Asher J at 9am on the first available date after 18

September 2015.  One hour should be allocated for that.  Counsel anticipate that any contested application for targeted discovery could be dealt with at that time.

[8]      There are three aspects to the discovery issues that require consideration. The first concerns discovery in relation to the “Sentry” lock which is the alleged prior art that led to amendments being made by Brewer J.  So far as that discovery is concerned, a verified list shall be filed and served on behalf of the plaintiffs on or before 21 August 2015.

[9]      The second concerns possible further discovery that the plaintiffs may seek against Allegion, as a result of the amendments made to the Statement of Defence and particulars of objection.

[10]     The third is a likely application by Allegion for targeted discovery against the Assa Abloy companies, in connection with locks (other than the “Sentry” lock) which may have been associated with the Assa Abloy companies in the past.

[11]     So far as targeted discovery is concerned:

(a)       Any application by either party shall be filed and served on or before

4  September  2015,  together  with  any  affidavits  in  support  and  a synopsis of submissions in support.

(b)Any notice of opposition, together with affidavits in opposition and a synopsis of submissions in opposition shall be filed and served on or before 11 September 2015.

(c)   Supplementary  submissions  may  be  filed  and  served contemporaneously, no later than two working days prior to the allocated hearing date.

[12]     The Registrar is directed to allocate a 9am hearing before Asher J on the first available date after 18 September 2015.  Given the need to manage this proceeding through to trial in April 2016 in an efficient manner, should there be any difficulties in finding time before Asher J, the hearing can be set down before me.

[13]     I anticipate that further case management directions will be made at that hearing.  Counsel are invited to file memoranda in advance indicating the directions that they seek.

[14]     All questions of costs are reserved.

P R Heath J