IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION No VG 215 of 1994 BETWEEN: WIMMERA INDUSTRIAL MINERALS PTY LTD Applicant -and- RGC MINERAL SANDS LIMITED Respondent -and- RGC MINERAL SANDS LIMITED Cross-Claimant WIMMERA INDUSTRIAL MINERALS PTY LTD First Cross-Respondent THE COMMISSIONER OF PATENTS Second Cross-Respondent Coram: Olney J Place: Melbourne Date: 28 April 1995 MINUTE OF ORDERS THE COURT ORDERS THAT: 1. The second cross-respondent's notice of motion filed on 8 March 1995 be dismissed. 2. The second cross-respondent pay the costs of the respondent/cross-claimant of the motion. 3. To the extent that leave may be necessary, the respondent/cross-claimant have leave to file and serve against the second cross respondent nunc pro tunc the defence and cross-claim filed on 3 November 1994 and the amended defence and amended cross-claim filed on 20 February 1995. 4. There be no order for costs on the respondent/cross-claimant's notice of motion filed on 15 March 1995. NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION No VG 215 of 1994 BETWEEN: WIMMERA INDUSTRIAL MINERALS PTY LTD Applicant -and- RGC MINERAL SANDS LIMITED Respondent -and- RGC MINERAL SANDS LIMITED Cross-Claimant WIMMERA INDUSTRIAL MINERALS PTY LTD First Cross-Respondent THE COMMISSIONER OF PATENTS Second Cross-Respondent Coram: Olney J Place: Melbourne Date: 28 April 1995 REASONS FOR JUDGMENT BACKGROUND By application filed on 30 June 1994 the applicant claimed against the respondent, inter alia: An injunction restraining the respondent, whether by itself, its servants or agents or otherwise howsoever during the term of Australian Petty Patent No 649,946 and any extension thereof from infringing the said patent and in particular, from manufacturing, keeping for sale, advertising for sale, offering for sale, promoting for sale or selling, or supplying or arranging or procuring or authorising the manufacture, keeping for sale, advertising for sale, offering for sale, promoting for sale or selling or supplying of synthetic rutile produced by a process as claimed in any claims of the complete specification of said patent without licence or authority of the applicant. In an amended application filed on 30 November 1994 the claim was extended to include similar relief in respect of Australian Standard Patent No 639,089. The applicant's case is pleaded in a statement of claim filed on 30 June 1994 and subsequently amended. On 3 November 1994 the respondent filed a defence and cross-claim. An amended defence and amended cross-claim was filed on 20 February 1995. The cross-claim names the applicant as the first cross-respondent and the Commissioner of Patents as the second cross-respondent. The respondent asserts that the second cross-respondent is an officer of the Commonwealth within the meaning of s 39B of the Judiciary Act 1903. The respondent's defence pleads that the petty patent and the standard patent are wholly invalid and further, in paragraph 16 pleads: 16. Further or alternatively, in answer to the whole of the allegations relating to the said Petty Patent, it says that the Petty Patent is and has at all times been wholly null and void and of no effect, and it was not lawful to grant, and the Commissioner of Patents had no power to grant, the said Petty Patent by virtue of the provisions of Section 64(2) of the Patents Act 1990 in that - (a) the complete application and specification for the said Petty Patent claimed an invention that was and is the same as an invention that is the subject of the Applicant's Australian patent No 639,089 granted on 11 May 1994; (b) the same inventors made and/or claim and are by the Applicant claimed to have made the invention claimed in the said Petty Patent and each claim thereof and the invention or an invention which is the subject of the said Patent No 639,089 and each claim or one or more claims thereof; and (c) each claim of the said Petty Patent and each claim of the said Patent No 639,089 has and/or is claimed by the Applicant to have the same priority date. In the cross-claim, the respondent claims: (1) Declarations - (a) that Australian Petty Patent No 649,946 and all of the claims of the complete specification thereof are and have at all times been wholly invalid; (b) that Australian Petty Patent No 649,946 is and has at all material times been wholly null and void and of no effect, and that the purported grant thereof was null and void and of no effect; (c) that Australian Standard Patent No 639,089 and all the claims of the complete specification thereof are and have at all times been wholly invalid. (2) An order revoking Australian Petty Patent No 649,946 and each and all of the claims of the complete specification thereof. (3) An order revoking Australian Standard Patent No 639,089 and each and all of the claims of the complete specification thereof. (4) (a) A mandatory injunction compelling, or an order that a writ of mandamus issue commanding, the second cross-respondent to remove Australian Petty Patent No 649,946 from the Register of Patents; (b) An injunction restraining, or an order that a writ of prohibition issue prohibiting, the second cross-respondent from extending the term of the said petty patent or taking any other steps in relation to the said petty patent other than the steps referred to in paragraph (4)(a) above; and (c) An order quashing, or an order that a writ of certiorari issue to bring up and quash, the decision of the second cross-respondent to grant the said petty patent. (As a matter of convenience the applicant/first cross-respondent, the respondent/cross-claimant and the second cross-respondent will hereafter be referred to respectively as the applicant, the respondent and the Commissioner). THE MOTIONS There are two motions presently before the Court. The first in time is the motion of the Commissioner filed on 8 March 1995 seeking orders that: 1. The Commissioner of Patents be removed as a party in this proceeding. 2. Further or alternatively to paragraph 1 above, the cross-claim, insofar as it claims relief against the Commissioner of Patents be dismissed, alternatively struck out, alternatively forever stayed. 3. Further or alternatively to paragraphs 1 and 2 above, orders that paragraphs 16 of the amended defence, 25 of the amended cross-claim and 4 of the prayer for relief in the amended cross-claim herein, all be struck out on the grounds that they disclose no reasonable cause of action or defence, or have a tendency to cause embarrassment or delay in the proceeding. 4. The cross-claimant pay the costs of the second cross-respondent to be taxed. 5. Such further or other orders as the Court deems appropriate. (Paragraph 25 of the amended cross-claim simply refers to and repeats the allegations contained in paragraph 16 of the amended defence). The second motion was filed by the respondent on 15 March 1995 and seeks an order nunc pro tunc for leave to file and serve on the Commissioner the defence and cross-claim filed on 3 November 1994 and the amended defence and amended cross-claim filed on 20 February 1995. Counsel for the respondent says that he does not believe that leave is necessary but makes the application out of an abundance of caution. In the circumstances, this matter will be dealt with following the Commissioner's motion. THE PATENTS ACT The provisions of the Patents Act which are central to the argument raised in support of the Commissioner's motion are ss 20, 64, 138 and 139. Those sections are set out in full: 20. (1) Nothing done under this Act or the PCT guarantees the granting of a patent, or that a patent is valid, in Australia or anywhere else. (2) The Commonwealth, the Commissioner, a Deputy Commissioner, or an employee, is not liable because of, or in connection with doing any act under this Act or the PCT, or any proceedings consequent on doing any such act. 64. (1) Subject to this section, where there are 2 or more applications for patents for identical, or substantially identical, inventions, the granting of a patent on one of those applications does not prevent the granting of a patent on any of the other applications. (2) Where: (a) a patent application claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and (b) the relevant claim or claims in each of the complete specifications have the same priority date or dates; a patent cannot be granted on the application. 138. (1) The Minister or any other person may apply to a prescribed court for an order revoking a patent. (2) At the hearing of the application, the respondent is entitled to begin and give evidence in support of the patent and, if the applicant gives evidence disputing the validity of the patent, the respondent is entitled to reply. (3) After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground: (a) that the patentee is not entitled to the patent; (b) that the invention is not a patentable invention; (c) that the patentee has contravened a condition in the patent; (d) that the patent was obtained by fraud, false suggestion or misrepresentation; (e) that an amendment of the patent request or the complete specification was made or obtained by fraud, false suggestion or misrepresentation; (f) that the specification does not comply with subsection 40(2) or (3). 139. (1) The patentee, and any person claiming an interest in the patent as exclusive licensee or otherwise, are parties to any proceedings under section 133, 134 or 138. (2) In any proceedings under section 133, 134 or 138: (a) the applicant must serve a copy of the application on the Commissioner; and (b) the Commissioner may appear and be heard in the proceedings. THE ISSUES The Commissioner says that insofar as the amended defence and amended cross-claim pleads and claims against the Commissioner, it is defective because no cause of action recognised by law is pleaded and/or it has a tendency to cause prejudice, embarrassment or delay. The provisions of Order 11 rule 16, and Order 20 rule 2 of the Federal Court Rules are relied upon. The main points raised in support of the Commissioner's case are: a) Section 64(2) is not an available ground to void a patent. b) Other statutory mechanisms are in place which make the claim pleaded against the Commissioner unnecessary, namely, the Administrative Decisions (Judicial Review) Act 1977 and the Patents Act 1990 ss 28(1), 97(2)(3), 69(8) and 160. c) No quia timet grounds are pleaded to support the prohibition claim contained in paragraph 4(b) of the prayer for relief. d) The Commissioner does not have an obligation to seal only valid patents nor does he warrant the validity of sealed patents. e) All challenges to the Commissioner's right to apply his seal are provided for in the Act in the opposition and pre-sealing re-examination procedures. After sealing, the revocation and post-sealing re-examination provisions only have operation to avoid a patent. f) The provisions of s 20 of the Patents Act excludes the occasion for prerogative relief against the Commissioner for performing his usual statutory obligations. The Commissioner also raised a number of issues which were said to be based on high policy grounds but which appear either to involve matters of statutory construction already encompassed in the other matters raised or to go to the question of whether relief of the kind sought should be granted rather than to the question of whether such relief is a remedy open to the Court to grant. SECTION 64(2) Notwithstanding that s 64(2) contains an absolute prohibition against the granting of an application in circumstances therein described, the Commissioner argues that a breach of s 64(2) does not render the patent void. In this opinion the Commissioner is supported by the view expressed by Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [unreported; 2 December 1994] in which his Honour said (at p. 64) I do not accept that the consequence of the Commissioner making a grant where he should not have done so by reason of s 64 is to render the patent void. Questions of avoidance are dealt with through the statutory mechanism of revocation. Various grounds of revocation are provided in Chapter 12 of the 1990 Act, ss 133-140. Grounds of revocation for want of compliance with the requirements for grant contained in the Act are spelled out in s 138. Non-compliance with s 64 is not one of them. The respondent acknowledges that these observations are entitled to great respect but nevertheless says that they were obiter to the issues being tried by Gummow J and in the absence of any binding authority, they should not be regarded as foreclosing the issue. The question is one of statutory construction upon which competing views are open, and the respondent does not concede that a breach of s 64(2) is not a ground for revocation. In a literal sense it may well be that if a patent is granted in contravention of s 64(2), the patentee is not entitled to the patent, and if that be so, it may give rise to a ground for revocation pursuant to s 138(3)(a). As the matter has never been authoritatively determined it remains open to argument and the respondent seeks to raise such argument in this proceeding. However, that debate has no real relevance to the Commissioner's application to be dismissed from the suit. If, contrary to the Commissioner's submission, a breach of s 64(2) does raise a ground for revocation under s 138 then the relief available is that provided by that section. Neither s 138 nor s 139 contemplates that any relief would be sought against the Commissioner. But if, on the other hand, (as the Commissioner would have it) the remedy provided by s 138 is not available to an aggrieved party upon the granting of an application in contravention of s 64(2), that party is left to seek whatever other remedies are available, which is what the respondent seeks to do by relying upon the jurisdiction conferred upon this Court by s 39B of the Judiciary Act. AD(JR) ACT The Commissioner concedes that a decision to grant a patent would be susceptible to judicial review pursuant to the provisions of the Administrative Decisions (Judicial Review) Act 1977 and in any such proceedings the Commissioner would of necessity be a party. But the argument advanced on the Commissioner's behalf seems to go one step further suggesting that because of the availability of the statutory right of judicial review, the prerogative remedies that could otherwise be availed of should not be resorted to. I do not understand the Commissioner to argue that the prerogative remedies are ousted by the statutory remedy but rather that in the ordinary course of events the prerogative remedies should not be granted when the statutory remedy is adequate. With respect I do not think that the Commissioner's argument on this point advances his case at all. It is one thing to say that in a particular case when alternative remedies are available a Court may choose not to grant one type of relief but it is another thing to say that it is not open to a litigant to seek all types of relief to which he is entitled. In this case the respondent has not pleaded a claim for judicial review under the AD(JR) Act but that does not disentitle it to plead a case seeking prerogative relief. For the same reason, the availability of other relief under the Patents Act cannot exclude the operation of s 39B of the Judiciary Act unless there is express statutory provision to that effect. PATENTS ACT S 20(2) The Commissioner relies upon s 20(2) of the Patents Act as excluding prerogative relief against the Commissioner for performing his usual statutory obligations. Quite apart from the question of whether the granting of a patent contrary to an express statutory prohibition such as contained in s 64(2) amounts to "doing (an) act" under the Patents Act so as to entitle the Commissioner to the benefit of s 20(2), the protection offered by that subsection extends only to the liability of the Commissioner, which I construe as referring to liability for damages or other compensation, rather than to render the Commissioner immune from the process of the prerogative writs. The original jurisdiction of the Federal Court includes jurisdiction with respect to any matter in which a writ of mandamus or prohibition or an injunction is sought against an officer of the Commonwealth (Judiciary Act 1903, s 39B). In David Jones Finance and Investments Pty Ltd and another v Federal Commissioner of Taxation 91 ATC 4315 the majority of the Full Court of the Federal Court (Morling and French JJ) had occasion to consider the nature of the jurisdiction conferred on the Federal Court by s 39B of the Judiciary Act. Their Honours said (at p 4325): Section 39B was introduced into the Judiciary Act 1903 by the Statute Law (Miscellaneous Provisions) Act (No 2) 1983. Its purpose was explained by the then Attorney-General, Mr Lionel Bowen, in the course of his Second Reading Speech on the Bill in the House of Representatives on 21 September 1983: "Judiciary Act 1903 There are a number of amendments to this Act. The first amendment inserts a new section 39B into the Act. Paragraph 75(v) of the Constitution confers original jurisdiction on the High Court of Australia in matters in which a writ of mandamus or prohibition or an injunction is sought against an officer of the Commonwealth. The High Court has a heavy work load and one way of reducing that work load would be to confer jurisdiction in paragraph 75(v) matters on the Federal Court of Australia. The High Court cannot be divested of its jurisdiction in this area. Section 44 of this Act empowers the High Court to remit matters pending before it to any Federal court, or court of a State or Territory where that Court has jurisdiction in respect of the subject matter and the parties. The proposed amendment will not only confer jurisdiction so that proceedings under paragraph 75(v) may be commenced in the Federal Court but will also allow the High Court to remit to the Federal Court matters commenced before it. The proposed amendment will also close in part a gap which has been left by section 9 of the Administrative Decisions (Judicial Review) Act 1977. Section 9 has had the effect of depriving State courts of some jurisdiction which those courts formerly possessed to review decisions and actions of officers of the Commonwealth. But the whole of the jurisdiction so taken away was not conferred on the Federal Court under that Act. As a consequence some parties who might formerly have obtained relief in a State court were confined to seeking relief only in the High Court. Following the amendment they will be able to seek relief also in the Federal Court. The Federal Court will not initially have jurisdiction under the proposed new legislation in relation to matters arising before the Australian Conciliation and Arbitration Commission, the Public Service Arbitrator, the Coal Industry Tribunal or the Family Court of Australia. However, further consideration is being given to extending the capacity of the High Court to remit matters under section 44 in relation to these areas". Subject to the exceptions relating to persons holding office under the Industrial Relations Act and the Coal Industry Act, and Judges of the Family Court of Australia, it is apparent from the language of s 39B, its identity with that of para 75(v) and the Second Reading Speech, that the intention of the legislature was to confer on the Federal Court the full amplitude of the original jurisdiction of the High Court under para 75(v). Consistently with that intention, and the case law, the jurisdiction so conferred will not be displaced, qualified or limited by privative provisions in statutes pre-dating the amendment. And for statutes which post-date it, there will be a powerful presumption, in the absence of clear words to the contrary, that no such displacement, qualification or limitation is intended. Statutory erosion of the jurisdiction will effectively return it, contrary to the legislative intention, to the exclusive province of the High Court. With respect, I adopt their Honour's comments and conclusions. Section 20(a) does not contain any indication of an intention to displace the jurisdiction conferred on this Court by s 39B. CONCLUSION In my opinion to the extent that the respondent in its cross-claim seeks relief by way of mandamus and prohibition, the Commissioner is a necessary and proper party. The question of whether certiorari is an available remedy in the Federal Court has not been the subject of detailed argument. It is true that certiorari is not referred to in s 39B of the Judiciary Act. Even if it is not available, the Commissioner is nevertheless an appropriate party to the cross-claim by which other remedies are sought against him. The Commissioner has failed to demonstrate that he is not a proper party to the cross-claim. The relief sought in paragraphs 1 and 2 of the Commissioner's motion will be refused. For the reasons outlined above I am of the opinion that the paragraphs referred to in paragraph 3 of the motion do disclose a reasonable cause of action and do not have the tendency to cause embarrassment or delay. The Commissioner's motion of 8 March 1995 will be dismissed. The Commissioner should pay the respondent's costs of the motion. Although the applicant appeared on the hearing of the motion I do not believe that it had any interest in the matter and there should be no order for the applicant's costs. Whether or not the Commissioner chooses to take an active part in the proceedings and incur the normal risks of litigation or merely to abide the decision of the Court, is a matter for the Commissioner's judgment. The Commissioner did not advance any separate argument against the respondent's motion of 15 March 1994. The question of whether leave was required was not addressed in any detail but in the circumstances of the case it is my opinion that it is appropriate that to the extent that leave may be necessary, the respondent should have leave nunc pro tunc to file and serve against the Commissioner the defence and cross-claim filed on 3 November 1994 and the amended defence and amended cross-claim filed on 20 February 1995. There will be no order for costs on the respondent's motion. I certify that this and the preceding 12 pages are a true copy of the Reasons for Judgment of the Honourable Justice Olney Associate: Dated: Heard: 13 April 1995 Place: Melbourne Date: 28 April 1995 Appearances: Mr J. Beach (instructed by Arthur Robinson & Hedderwicks) appeared for the applicant/first cross-respondent. Mr J. Lyons QC and Mr B. Caine (instructed by Allen Allen & Hemsley) appeared for the respondent/cross claimant. Mr G. McGowan (instructed by Australian Government Solicitor) appeared for the second cross-respondent.