GENERAL DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QG 28 of 1994 BETWEEN: GEORGE STACK First Applicant G S TECHNOLOGY PTY LTD Second Applicant AND: THE BRISBANE CITY COUNCIL First Respondent DAVIES SHEPHARD PTY LTD Second Respondent DAVIES SHEPHARD (QUEENSLAND) pTY LIMITED Third Respondent IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QG 29 of 1996 BETWEEN: G S TECHNOLOGY PTY LTD Applicant AND: DAVIES SHEPHARD PTY LTD FIRST Respondent GSA INDUSTRIES (AUST) PTY LTD SECOND RESPONDENT JUDGE: COOPER J DATE OF ORDER: 20 FEBRUARY 1998 WHERE MADE: BRISBANE MINUTES OF ORDER THE COURT ORDERS THAT: 1. The application that the Court entertain and rule on a submission of no case to answer be refused. 2. The costs of and incidental to the application be reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA GENERAL DISTRIBUTION QUEENSLAND DISTRICT REGISTRY QG 28 of 1994 BETWEEN: GEORGE STACK First Applicant G S TECHNOLOGY PTY LTD Second Applicant AND: THE BRISBANE CITY COUNCIL First Respondent DAVIES SHEPHARD PTY LTD Second Respondent DAVIES SHEPHARD (QUEENSLAND) pTY LIMITED third Respondent IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QG 29 of 1996 BETWEEN: G S TECHNOLOGY PTY LTD Applicant AND: DAVIES SHEPHARD PTY LTD FIRST Respondent GSA INDUSTRIES (AUST) PTY LTD SECOND RESPONDENT JUDGE: COOPER J DATE OF ORDER: 20 FEBRUARY 1998 WHERE MADE: BRISBANE REASONS FOR JUDGMENT These proceedings involve two issues. Firstly, whether or not the applicants were entitled to be granted Australian Petty Patent No 645740. Secondly, whether the patent was valid having regard to the requirements of the Patents Act 1990 (Cth) for the grant of a patent. At the commencement of the trial, an issue arose as to whether the applicants or the respondents had the onus of proof in relation to these issues and as to the carriage of the matter. It was submitted by the applicants that the tender of exhibits 2 and 3, being the duplicate deed of letters patent, the assignment and registration of the assignment in the register, evidenced by certified copies of the relevant documents, discharged any onus on the applicants to prove entitlement. It was submitted that the respondents thereafter had the onus to make out any case whereby the applicants were denied entitlement and to make out the grounds of invalidity alleged. The respondents' grounds or particulars of objection to the validity of the petty patent were :- (a) no entitlement because George Stack and G S Technology were not, nor was either of them, the inventor of the invention claimed (paragraph 1 of the particulars of objection); (b) the alleged invention was not a patentable invention in that it was not novel when compared with the prior art base (paragraph 2 of the particulars of objection); (c) the alleged invention was obvious and did not involve an inventive step when compared with the prior art base (paragraph 3 of the particulars of objection); (d) the completed specification did not comply with the requirements of s 40(2) or s 40(3) of the Patents Act 1990 (paragraph 4 of the particulars of objection); (e) the alleged invention is not a patentable invention in that it was not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies (paragraph 5 of the Particulars of Objection); (f) the alleged invention was secretly used in the patent area before the priority date (paragraph 6 of the Particulars of Objection). At the commencement of the proceedings, during a discussion on the question of onus and the carriage of the proceedings, the following exchange occurred :- "HIS HONOUR: I do not have any trouble with your position that the other side have got the onus on validity and they have got to go first. The question is whether or not all of the material should be tendered and then I should direct that the carriage of the case thereafter be the respondents. The issue is the entitlement issue and whether or not, if it was merely an appeal under section 67, you would have to put on your case in relation to entitlement. MR ABAZA: We do not have a problem with making the tender subject to that direction, and if it is convenient to your Honour we would simply tender as two bundles our witness statement that we have prepared in the matter, pointing out to your Honour some parts that - and to my learned friend - we do not particularly rely on. We seek to tender a short affidavit of Mr Stack which was in QG11 filed 12 March. There is clearly irrelevant material in item 2, so we would seek to ‑ ‑ ‑ HIS HONOUR: The objection needs to be sorted out. Mr McMurdo, what is wrong with that: that you both - as you suggested, you both tender all your witness statements, then I will direct that you have the carriage of the matter from then. You can produce your witnesses for cross-examination? MR McMURDO: That is really what I suggested, I think, your Honour. I suggested that on my feet, as it were. I am very confident I will get instructions to formally consent to that, but I would not mind the opportunity of getting those. HIS HONOUR: Do you want me to stand it down while you have a discussion? MR McMURDO: If that would be convenient. It will only take 10 minutes. HIS HONOUR: All right. MR McMURDO: Thank you, your Honour. SHORT ADJOURNMENT HIS HONOUR: Yes, Mr McMurdo? MR McMURDO: Thank you, your Honour. We have taken instructions and we would ask your Honour to follow that course; that is, we propose that we would tender our witness statements, Mr Abaza would tender the statements that he has opened and any other statements he wishes to rely upon, then we would call the various witnesses who have given statements on our side who are required for cross-examination. There are objections which have been foreshadowed by one side to the other in respect of witness statements. We would respectfully suggest it would be convenient to deal with those one by one; in other words, as a statement is about to be the subject of evidence, oral evidence, the admissibility or otherwise of parts of that statement could be debated then. HIS HONOUR: Would you propose that the statements go in just as a bundle as one exhibit, or did you propose to tender them separately? MR McMURDO: It would be better to do it separately. HIS HONOUR: I think that is probably right. MR McMURDO: There are - the statements have been filed and, by way of opening, we should, as Mr Abaza did, read the names of the witnesses, and we will do that now if that is convenient." After the tender of the respondents' witness statements and on the second day of the trial, the following occurred :- "MR McMURDO: Your Honour, before we call the first witness, there is the matter of the witness statements for Mr Stack and GS Technology. ..... MR ABAZA: If the court pleases, there is a two-volume set of material which is tendered by the company as a bundle of documents. HIS HONOUR: Does that include separate statement? MR ABAZA: No. It includes separate documents which are principally referred to in the witness statement of Mr Stack which I will come to in a moment. HIS HONOUR: Subject to all proper objections, the two volumes of documents will be admitted. EXHIBIT 24 - TWO VOLUMES OF DOCUMENTS MR ABAZA: Might those that have been filed stand as the tender, or would your Honour prefer the original documents? MR McMURDO: Either course would be appropriate, your Honour. MR ABAZA: I am happy to hand up the ‑ ‑ ‑ MR McMURDO: In due course, your Honour will want another set perhaps to mark. HIS HONOUR: I think that is probably right. MR ABAZA: Is it possible for me to hand up these originals and perhaps have it copied and the file uplifted? HIS HONOUR: Yes, we will do that then. Do you need them uplifted now? MR ABAZA: For Mr McMurdo's benefit, yes, if your Honour pleases. I haves supplied a copy to his solicitors but her perhaps does not have ‑ ‑ ‑ MR McMURDO: Your Honour, we had assumed that what has been supplied to us is identical with what is already filed in the court, and in turn with what has just been handed to your Honour's associate. HIS HONOUR: You do not need a copy then? MR McMURDO: So, unless that is not so, I do not need to see them. MR ABAZA: If I could have then the filed copies for my witness records. HIS HONOUR: The filed copies, all right. They will be got out now. MR ABAZA: If the court pleases, I tender two bundles of documents, but for the purpose of the record, it is best that I should read each of the statements which are incorporated in those bundles. There is a statement of Mr George Stack which was filed on 8 September 1997; there is an affidavit of Mr Stack filed 12 March 1996; there is - and I read only paragraphs 10 and 11 of an affidavit of Mr George Stack filed on 11 April 1994. I read only paragraphs 1 and 8 of an affidavit of Mr George Stack filed 28 November 1996, and I read an affidavit of Mr George Stack filed 22 November 1996. I then read a statement of Alan Joseph Grieves filed 16 October 1997. I read a declaration of Gordon Lambert Miles; this is a declaration which was filed in the Canberra proceedings before the Commissioner. HIS HONOUR: What date? MR ABAZA: That was declared on 24 January 1996. If the court pleases, I further read an affidavit of Mr Keith Baker which was filed on 23 October 1997. I read an affidavit of John Kingston Pizzey filed on 17 March 1994. I read a further affidavit of John Kingston Pizzey, the filing date I believe to be 10 November, but on checking the court file it either has not arrived there or there is some mix-up with that. A copy has been delivered - and I could just mention that. Mr Pizzey has advised me of two minor typing errors. HIS HONOUR: Is that 10 November 1997? MR ABAZA: Yes. In that affidavit and when is called to give evidence, I propose to take Mr Pizzey to that. Mr Pizzey has also instructed me that there is an amendment to paragraph 6.8.1, for the purpose of the record, on page 29 of his further affidavit. So that there can be no confusion about that, it is to the effect that Mr Pizzey prefers the view that Dargie does not disclose a back-flow prevention including a cylindrical-like housing having tandemly arranged non-return false assemblies therein as defined by feature 8 of the patent in suit. He has reviewed that and, in evidence, with your Honour's leave, he will explain on his further examination of that particular valve what is involved. That is the Dargie valve; it is a retro-fit type of patent specification. Then as a separate bound bundle, if the Court pleases, a statement verified by Arthur Chaseling C-h-a-s-e-l-i-n-g filed 14 November '97. Then there is a statement of Ian Saunders S-a-u-n-d-e-r-s and the filing date of that is 16 October 1997. Then there is a witness statement of Dr Frank W. Grigg G-r-i-g-g, filed on 29 October 1997. Then there is an affidavit of Brian James Donovan, D-o-n-o-v-a-n filed on 24 November 1997 and whilst I read the affidavit of Dom D-o-m C-e-r-n-e-a-z ‑ ‑ ‑ HIS HONOUR: Sorry, spell that again. MR ABAZA: C-e-r-n-a-e-z. I read his affidavit filed on 28 November 1997 but I indicate that if discovery is what we expect it will not be necessary for us to rely on it. It was an affidavit simply recording RMC to be a NATA testing laboratory which as at last Friday was not available to us by way of the usual process, so it is really filed as a formal affidavit to cover a point of proof that might otherwise have been in dispute. In addition to that, there were two commercial embodiments of the patent which came from Canberra and we seek to read those as well. They are mounted, your Honour. I understand them to be in the Court but I have not seen them in the court room. If your Honour's associate might make inquiry in the exhibit room of the Court. They are - one is mounted on a - each is mounted on a small wooden platform and a machined cut has been made into the side of the manifold so that the Court witnesses might be able to refer to the operation of the valve, the back flow prevention assembly in the operating position. HIS HONOUR: Was this before the Deputy Commissioner, was it? MR ABAZA: Yes. HIS HONOUR: Do you know that the Deputy Commissioner sent them up? MR ABAZA: Yes, there was litigation about it. HIS HONOUR: All right. Well, I will have inquiries made after we rise at 11.15. MR ABAZA: For convenience I might hand up to your Honour as the bundle that I have read. HIS HONOUR: Well, I will give them exhibit numbers again, subject to all proper objections. EXHIBIT 25 - STATEMENT OF MR STACK EXHIBIT 26 - AFFIDAVIT OF MR STACK OF 12 MARCH 1996 EXHIBIT 27 - PARAGRAPHS 10 AND 11 OF MR STACK'S AFFIDAVIT OF 11 APRIL 1994 EXHIBIT 28 - PARAGRAPHS 1 AND 8 OF MR STACK'S AFFIDAVIT OF 28 NOVEMBER 1996 EXHIBIT 29 - AFFIDAVIT OF MR STACK OF 22 NOVEMBER 1996 EXHIBIT 30 - STATEMENT OF MR GRIEVES OF OCTOBER 1997 EXHIBIT 31 - DECLARATION OF MR MILES EXHIBIT 32 - AFFIDAVIT OF MR BAKER EXHIBIT 33 - FIRST AFFIDAVIT OF MR PIZZEY EXHIBIT 34 - SECOND AFFIDAVIT OF MR PIZZEY EXHIBIT 35 - STATEMENT OF MR CHASELING EXHIBIT 36 - STATEMENT OF MR SAUNDERS EXHIBIT 37 - STATEMENT OF DR GRIGG EXHIBIT 38 - AFFIDAVIT OF MR DONOVAN EXHIBIT 39 - AFFIDAVIT OF MR CERNAEZ MR McMURDO: Your Honour, when it is convenient, could we see exhibit 25 please? MR ABAZA: If the Court pleases, that is the material." I have, for reasons which will become apparent, set out at some length the circumstances surrounding the reception of witness statements and the basis upon which the trial proceeded. The trial has proceeded for twenty-eight days. During that time the respondents' witnesses were called. Where objection was taken to the evidence contained in the witness statements of any witness which statement had been earlier tendered into evidence, the objection was ruled upon and if necessary the evidence, or parts of it, was excluded. The respondents' witnesses were cross-examined and numerous documents were tendered into evidence in the course of the cross-examination and in consequence of documents being called for by Mr Abaza on behalf of the applicants. At the conclusion of the respondents' case, the applicants submitted that substantial parts of the respondents' particulars of objection be struck out and not receive further consideration. The basis of the application was that there was no evidence tendered in support of substantial parts of the particulars of objection or that, on the evidence tendered, certain particulars could not be made out, or that the evidence is so unsatisfactory that it would be unsafe to make any of the findings or draw any of the inferences necessary for the respondents to discharge the onus of proof which they bear. The submissions were put on the basis that to allow the issues to be further litigated would be an abuse of process. In essence, what was sought was to non-suit the respondents in respect of a substantial number of issues because there was no case to answer on the state of the evidence at the conclusion of the respondents' case. When counsel for the respondents submitted that the respondents were entitled to rely upon the tendered witness statements of the applicants to overcome any alleged deficiencies in the respondents' evidence, it was contended for the applicants that those statements were not in evidence. Mr Abaza said :- "MR ABAZA: That may be another point of dispute for your Honour's consideration. Our understanding, at the commencement of this case, when there was quite extensive argument, was that each side would tender their evidence, and the respondents tendered theirs first, and we then handed up a bundle - not as an emphatic tenderer [sic] of all of the evidence upon which we would rely on the case, but subject to objections and to admissibility questions. There was no unconditional tender of Mr Grieves' statement by us, nor would we in fact seek, on the point, to persist with the paragraphs on which they choose to rely. We would simply not read those. Mr McMurdo has not sought to tender any evidence about the secret use. ..." In my view, the evidence contained in the applicants' witness statements was tendered and was received as part of the applicants' case, subject only to its possibly being struck from the record if proper objection was taken to it by the respondents, or if a deponent was not made available for cross-examination when required. So much is clear from the lengthy extracts from the transcript which I have set out above. I was advised on the resumption of the application that if I should rule, as I do, that the witness statements and exhibits thereto form part of the body of evidence available to the respondents to make out their case at this stage of the proceedings, the applicants nonetheless wish to continue to advance the application. However, the applicants having given the matter further consideration now seek that I entertain a submission of no case to answer which goes to the entirety of the respondents' case as particularised in the particulars of objection. The application is thus one for a finding that there is no case to answer and for dismissal of the proceedings on those issues where the respondents bear the onus of proof. The applicants do not make an election to call no evidence and, it was submitted they should not be put to such an election as a requirement of my ruling on the submission of no case to answer. Mr Abaza submitted that where no evidence has been offered or where recourse to the evidence is only necessary to demonstrate that no evidence has been tendered, no question of election arises: Residues Treatment & Trading Co Ltd v Southern Resources Ltd (1989) 52 SASR 54 at 60; Protean (Holdings) Ltd v American Home Assurance Co [1985] VR 187 at 237. Mr Abaza further submitted that where the quality of the evidence was such that the evidence could not support the finding sought, or that it was unsafe to rely upon it for that purpose, the requirement of whether or not to put the parties to an election was a matter of discretion. There was no invariable rule, it was submitted, that an election would be required in those circumstances: Rasomen Pty Ltd v Shell Company of Australia Ltd (1997) 144 ALR 497 at 504 - 505. The principles applicable to the present application are contained in the judgment of a Full Court of this Court in Rasomen. I have applied them in coming to a decision on the present application. The first question is whether or not the court will entertain the application at this stage of the proceedings. Central to that question is whether, in the particular circumstances, to hear and determine the application is likely to save the litigants expense, time and trouble and whether the course proposed would be a just and convenient disposition of the litigation: Rasomen at 504. The second question is whether the party seeking the ruling should be put to an election to call no evidence or further evidence to enable the matter to be finally determined on the complete evidence. The answer to the second question may in particular circumstances play a decisive part in the answer to the first question. Although the applicants have tendered evidence, that does not disentitle them to a ruling on a submission of no case in appropriate circumstances: Rasomen at 505. The applicants submit that, having regard to the long history of the litigation and their insistence both before the trial and during it that much of the pleaded prior art base was irrelevant, to rule on the no case submission now would save the applicants the time, expense and trouble of calling witnesses to rebut an irrelevant case which has not been made out. It was, the applicants submitted, a just and efficient way to dispose of the litigation. The proceedings before me have now gone on for twenty-eight hearing days. The breadth of the issues raised in the points of objection would require that I determine on the evidence the entirety of the issues raised. This would require that I make findings of fact in relation to each issue or make findings of fact necessary to support any inference sought to be drawn in order to resolve any issue of fact or law. If I were to conclude that the application failed in any respects, those findings would become provisional in the sense that they would be subject to displacement by the ultimate body of admissible evidence if no election not to call evidence was required and further evidence was called. To embark upon the course of hearing detailed submissions from all parties, and writing a considered judgment, would have the effect of terminating the present hearing and would cause the trial to be adjourned until late this year. There is no single issue, the determination of which would be decisive of the matter. The submissions of the parties will take time to prepare and deliver and a judgment will add to the time and cost of the litigation unless the outcome is decisive in favour of the applicants. Would the course proposed lessen the length of the trial reduce the cost and expense of its ultimate determination, and would it be a just and efficient disposition of the proceedings? In my view, the answer must be that such a result is unlikely. The likelihood is that there will be issues remaining for determination with the consequence that the trial will have to be commenced on certain issues later in the year, with all the attendant problems associated with such a course. If no election is made, additional evidence is likely to be called. In these circumstances, there is a real risk that a not insignificant part of the matters in issue will only be resolved in a provisional way. That is a circumstance which weighs heavily in favour of not ruling on the submission until I have heard all of the evidence. To put the applicants to their only election in respect of those matters where the sufficiency or quality of the evidence is in issue, imposes a burden of dissecting and isolating the issues to which the election must apply. In the event that the applicants fail wholly or in part on the no case submission, limiting the evidence on a reconvened trial to those issues not subject to the election introduces unnecessary complication in what is already a complex trial. Not least in determining the breadth and application of the election and in determining which precise issues particular evidence is called upon. What is proposed is neither just nor efficient, nor is it likely to save the parties time, expense and trouble. The extent of the issues in what is a complex patent case, which has been aggressively conducted by both the applicants and the respondents makes this case an unsuitable one in which to entertain a submission of no case. This is so whether or not the applicants are put to an election not to call evidence in respect of the issues where the sufficiency or quality of the evidence, as offered by the respondents, is challenged by the applicants. For the above reasons, I decline to entertain the submission of no case to answer or to rule upon it at this stage of the proceedings. I am fortified in that view by the observation in Alexander v Rayson [1936] 1 KB 169 at 178 (cited with approval in James v Australian and New Zealand Banking Corporation Ltd (1986) 64 ALR 347 at 400) :- "Where an action is being heard by a jury it is, of course, quite usual and often very convenient at the end of the case of the plaintiff ... for the opposing party to ask for the ruling of the judge whether there is any case to go to the jury, who are the only judges of fact. It also seems to be not unusual in the Kings Bench Division to ask for a similar ruling in actions tried by a judge alone. We think, however, that this is highly inconvenient. For the judge in such cases is also the judge of fact and we cannot think it right that the judge of fact should be asked to express any opinion upon the evidence until the evidence is completed. Certainly no one would ever dream of asking a jury at the end of a plaintiff's case to say what verdict they would be prepared to give if the defendant called no evidence, and we fail to say why a judge should be asked such a question in cases where he and not a jury is the judge that has to determine the facts. In such cases we venture to think that the responsibility for not calling rebutting evidence should be upon the other party's counsel and upon no one else." If the applicants and their legal adviser are satisfied that no case has been made out by the respondents on any issue, then they may themselves call no evidence or limit the evidence which they call on that issue. The ability to limit expense, time and trouble to the applicants lies in their choice as to how to further conduct the proceedings. By limiting the evidence, if they so decide, the final submissions and determination will not be duplicated and the trial will not be further delayed by consideration of the no case application. I certify that this and the preceding ten (10) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper Associate: Dated: 20 February 1998 Solicitor for the Applicants: A Abaza Counsel for Davies Shephard Pty Ltd and Davies Shephard (Queensland) Pty Limited and GSA Industries (Aust) Pty Ltd P D McMurdo QC and G A Thompson Solicitor for Davies Shephard Pty Ltd and Davies Shephard (Queensland) Pty Limited and GSA Industries (Aust) Pty Ltd Minter Ellison Date of Hearing: 19 February 1998 Date of Judgment: 20 February 1998