sesvenecesevess ecnseesecece \ | 2 | 177 JUDGMENT No. .L 26 He, \ < CATCHWORDS 4 Patent - Proceedings remitted from High Court to State Supreme Court - Stay of proceedings in Supreme Court ~ Transfer of proceedings to another Supreme Court. Judiciary Act 1903, s.44; Patents Act 1952; s.147 L. GROLLO & CO. PTY. LTD. and WINCOPE (AUST.) PTY. LTD. v. HAROLD ALBERT SEALEY No. G4 of 1979 Coram: Bowen C.J., Franki and Toohey JJ. Perth ll May 1979. IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIAN REGISTRY No. G4 of 1979 wee we Ow GENERAL DIVISION BETWEEN: L. GROLLO & CO. PTY. LTD. and WINCOPE (AUST.) PTY. LTD. Appellants - and - HAROLD ALBERT SEALEY Respondent ORDER JUDGES MAKING ORDER Bowen C.J., Franki and Toohey JJ. DATE OF ORDER 11 May 1979. ae Perth WHERE MADE THE COURT ORDERS THAT: The appeal be dismissed with costs. IN THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY W.A. No. G4 of 1979 ee Sw GENERAL DIVISION BETWEEN: L. GROLLO & CO. PTY. LTD. and WINCOPE (AUST.) PTY. LTD. Appellarts AND: HAROLD ALBERT SEALEY Respondent CORAM: Bowen C.J. Franki J. Toohey J. il May 1979. REASONS FOR JUDGMENT We have come to the conclusion that this appeal should be dismissed. The reasons which follow are the reasons of the Court. The appeal is from the judgment of a single judge of the Supreme Court of Western Australia. We will refer to L. Grollo and Company Proprietary Limited as the first appellant, Winccpe (Aust.) Proprietary Limited as the second appellant and Harold Albert Sealey as the respondent. oe 0/2 wet - wee eee ne ene ca ee a he i an oe het By a writ dated 9 September 1976 the respondent commenced an action against both appellants in the High Court of Australia for infringement of a patent. The first appellant filed its defence on 20 December 1976. The second appellant filed its defence on 8 August 1977, after a motion seeking judgment against it had been filed on the ground that it had failed to file its defence. Under s. 44 of the Judiciary Act 1903, on 14 September 1977 the Chief Judge of the High Court of Australia, at the time when the respondent's motion for judgment against the second appellant was dismissed by consent, made an order that further proceedings in the action be remitted to the Supreme Court of Western AuStralia. Counsel for the appellants at the time did not disagree with the action being remitted to the Supreme Court of Western Australia. However, 1t is common ground that the appellants appealed against this order of the Chief Justice of the High Court and that one ground of their appeal was that the Supreme Court of Western Australia was an inappropriate court. It is also common ground that the appeal instituted in the High Court was abandoned by the appellants. Subsequently proceedings before a single judge of the Supreme Court of Western Australia were instituted by the appellants seeking a stay of the action in the Supreme Court. It was alleged that the Court was not the natural forum and that the continuation of the action would be an injustice to the appellants, or, alternatively, that the action should be transferred to the Supreme Court of Victoria pursuant to 2.6/3 sub-s. 147(1) of the Patents Act 1952. A further ground then relied upon was that the Supreme Court of Western Australia had no jurisdiction. The learned judge refused to grant a Stay or to transfer the action to the Supreme Court of Victoria. The appeal before us is an appeal against that decision. In the course of the appeal, a question was raised by the respondent, who alleged that the action was not one instituted in the Supreme Court of Western Australia within the meaning of s. 147 of the Patents Act and that the Court lacked jurisdiction to make an order either staying the action on the grounds sought or transferring the action under s. 147. This was referred to by the respondent, as an objection to the competency of the appeal. We think it is not accurately so described. The respondent is saying that the Supreme Court, for reasons appearing in the objection, had no jurisdiction to make the orders sought, but that says nothing about the jurisdiction of this Court to entertain the appeal in the circumstances which have arisen. Had the Supreme Court made either or both of the orders sought, no doubt this Court would be asked to say that it had no power to do so. However the Supreme Court did not make either of those orders and this Court is of the opinion that the order which 1t did make rejecting the application for a stay or transfer was correct. In these circumstances, no question of competency arises. Two affidavits were before the trial judge. One was sworn by the manager of the first appellant on behalf of both appellants and one was sworn by the respondent. One of the two main grounds relied upon by the appellants was that in the opinion of the manager it was proposed to call some 25 to 30 witnesses and the balance of oe e/4 convenience required transfer to the Supreme Court of Victoria. He deposed: "The majority of these witnesses are resident tn Melbourne except for two restdent in the Australtan Capital Territory and two restdents of Mtant tn the United States of America. The Melbourne wttnesses consist of certain experts, namely certain patent attorneys and consulting engineers". However, nowhere is it said what evidence these Melbourne witnesses would give or in what way their evidence would be material. The portion of the affidavit dealing with these witnesses may indeed be contrasted with the later portions of the affidavit of the manager wherein he says that the appellants' solicitors have informed him and he verily believes that it would be difficult to join a certa2z Mr. Deiberts as a third party. This brings us to the second main argument in favour of transfer to Victoria, which was that Mr. Deiberts could not be joined as a third party in the Supreme Court of Western Australia but could be joined as a third party if the proceedings were transferred to the Supreme Court of Victoria. Mr. Deiberts was a person who, apparently, had agreed with the first appellant, for valuable consideration, that the first appellant might uSe a certain so-called "secret" process in the erection of certain houses. The appellants desired to clain indemnity from him. No evidence was before the trial judge of the details of the alleged agreement, nor was there sufficient material from which any conclusion could be drawn as to the likelihood of any court permitting the issue of a third party notice or its service abroad. We are not prepared to say that his Honour was wrong in his conclusion on the question of joinder of the third party, if for 12. /5 wee no other reason than that we do think the appellants have not demonstrated with sufficient particularity the basis of any action proposed against Mr. Deiberts. We have reservations about the operation and applicability of paragraph 24(3) (b) of the Supreme Court Act 1935 of Western Australia and Order 10 rule l(a) and ({e) of the Supreme Court Rules, but we do not find it necessary to reach any conclusion on that question. Order 17 rule 2 of the High Court Rules, which was applicable until the transfer of the action to the Supreme Court of Western Australia, provides, unless otherwise ordered, for the service of a third party notice within the time limited for delivering the defence. It was argued by the appellants that no third party notice could be issued from the Supreme Court of Western Australia against the proposed third party but, as we have mentioned above, that such a notice could be issued from the Supreme Court of Victoria. Two possibilities emerge. If an effective third party notice could have been issued from the High Court then it ought to have been issued within the time prescribed by the High Court Rules, or at least before the matter was remitted to the Supreme Court of Western Australia. If no effective third party notice could have been issued by the High Court, then the appellants are in no worse position than they would have been if the proceedings had continued in the High Court. We are not persuaded that even if the appellants had produced satisfactory evidence concerning the third party claim, it would necessarily have been appropriate in the circumstances of this case to order a transfer of the action to the Supreme Court of Victoria in order to enable the appellants to gain an opportunity which they did not have when the action was commenced in the High Court. ---/6 We find the evidence concerning the number of witnesses which the manager of the first appellant says it is proposed to call so uninformative that 1t 1s difficult to attach importance to it. Weighing all the circumstances, including the position of the respondent, we have come to the conclusion that neither an order for transfer to the Supreme Court of Victoria should be made nor that an order staying the proceedings should be made. Having arrived at these conclusions it becomes unnecessary for us to decide any questions concerning jurisdiction or power of the Supreme Court of Western Australia or to decide whether tne learned trial judge was in error in any way in the exercise of his discretion. The order of this Court will be: Appeal dismissed with costs. I certify thet thisenithe fwe ; PORES &IY rue 5 h preceding pages ere & tree copy of it e Reasons for Jurégur.t hsivuen cl bes Honours the Chief Judge, Sir Nigel Lowen, Me lust Teel Freanles cmd Me Neha ged Allary Associate \ Dated: '| & 7%