FEDERAL COURT OF AUSTRALIA PRACTICE AND PROCEDURE – variation of orders under Federal Court Rules O 35 r 7(1) – where final judgment – where orders have not been entered – where orders delete part of patent specification Federal Court Rules O 35 r 7(1) Wentworth v Rogers (No. 9) (1987) 8 NSWLR 388 applied Wentworth v Woollahra Municipal Council (1982) 149 CLR 672 referred to Smith v New South Wales Bar Association (1992) 176 CLR 256 referred to Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 mentioned GENETICS INSTITUTE, INC v KIRIN-AMGEN, INC (NO 4) NO. VG 868 of 1995 JUDGE: HEEREY J DATE: 23 JULY 1998 PLACE: MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VG 868 of 1995 BETWEEN: GENETICS INSTITUTE, INC APPLICANT AND: KIRIN-AMGEN, INC RESPONDENT AND: KIRIN-AMGEN, INC CROSS-APPLICANT GENETICS INSTITUTE, INC CROSS-RESPONDENT JUDGE: HEEREY J DATE OF ORDER: 23 JULY 1998 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. The application for variation of orders be dismissed. 2. The time for filing and serving notice of any appeal or application for leave to appeal be extended until 20 August 1998. 3. The respondent pay the applicant's costs of the day. 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 VG 868 of 1995 BETWEEN: GENETICS INSTITUTE, INC APPLICANT AND: KIRIN-AMGEN, INC RESPONDENT AND: KIRIN-AMGEN, INC CROSS-APPLICANT GENETICS INSTITUTE, INC CROSS-RESPONDENT JUDGE: HEEREY J DATE: 23 july 1998 PLACE: MELBOURNE REASONS FOR JUDGMENT Kirin-Amgen seeks an order under O 35 r 7(1) of the Federal Court Rules that I should vary the orders made on 25 June 1998 by deleting that part of the orders which removed the passage on page 65 of the specification. Consequent upon a request by Kirin-Amgen shortly after my reasons for judgment were delivered, the orders have not yet been entered. The rule provides as follows: "7. (1) The Court may vary or set aside a judgment or order before it has been entered. (2) The Court, where it is not exercising its appellate or related jurisdiction under Division 2 of Part III of the Act, may if it thinks fit vary or set aside a judgment or order after the order has been entered where: (a) the order has been made in the absence of a party, whether or not the absent party is in default of appearance or otherwise in default and whether or not the absent party had notice of the motion for the order; (b) the order was obtained by fraud; (c) the order is interlocutory; (d) the order is an injunction or for the appointment of a receiver; (e) the order does not reflect the intention of the Court; or (f) the party in whose favour the order was made consents. (3) A clerical mistake in a judgment or order, or an error arising in a judgment order from an accidental slip or omission, may at any time be corrected by the Court. (4) Subrule (2) shall not affect the power of the Court to vary or terminate the operation of an order by a supplementary order." In my opinion the discretion conferred by this rule should be exercised in accordance with the considerations referred to by Kirby P in Wentworth v Rogers (No. 9) (1987) 8 NSWLR 388 at 395 where his Honour said that such a discretion is "to be utilised with extreme care. Although not confined to such cases, it should normally be limited to dealing with technical or incidental changes to the form or content of orders but should not be used as a substitute for an appeal. It is, for example, entirely inappropriate that the finality of a simple order such as was made in the instant appeal should be disturbed by such a beneficial facility." That statement is consistent with what was later said in High Court decisions, in particular Wentworth v Woollahra Municipal Council (1982) 149 CLR 672 and Smith v New South Wales Bar Association (1992) 176 CLR 256 at 265 where Brennan, Dawson, Toohey and Gaudron JJ spoke of the power being discretionary: "… and, although it exists up until the entry of judgment, it is one that is exercised having regard to the public interest in maintaining the finality of litigation. Thus, if reasons for judgment have been given, the power is only exercised if there is some matter calling for review. And there may be more or less reluctance to exercise the power depending on whether there is an avenue of appeal." (Footnotes omitted.) (See also Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 309.) It is contended that those statements were made in the context of rules which refer to the variation of an order which had already been entered. However, for present purposes I see no practical distinction. The present case was an extremely complex one and I delivered a judgment which was in terms a final judgment. That is to say, it was not a case where a judge makes findings and invites further submissions before final orders are pronounced. As a practical aspect of the importance of finality referred to in the judgments of the High Court, I might add the circumstance that today a judgment is almost instantly published on the Internet and available worldwide. It would be self‑evidently undesirable if that judgment were seen as merely a kind of provisional draft which was subject to further discussion by the parties, even successful parties not totally happy with everything that appeared in the judgment. In substance, the arguments put to me in favour of making the order sought are by way of appeal. Indeed, counsel held out as a matter supporting of the exercise of the discretion that Kirin-Amgen would not need to appeal if it obtained the order sought. I am satisfied that that part of the order that I made deleting the passage on p 64 of the specification was inextricably bound up with the findings I made as to claim 39 appearing at pages 30 to 31 of my judgment. If claim 39 goes, and counsel for Kirin-Amgen did not seek to set aside that part of my judgment, then I took the view rightly or wrongly that those parts of the specification which deal with the subject matter of claim 39 ought to go as well, whether or not it might be said that they might provide some other useful information. So the application is dismissed. I will extend the time for filing and serving notice of any appeal or application for leave to appeal until 20 August 1998. There will be an order that Kirin-Amgen pay Genetics' costs of today. I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey Associate: Dated: 29 July 1998 Counsel for the Applicant: Mr B Caine Solicitor for the Applicant: Davies Collison Cave Counsel for the Respondent: Dr A C Bennett SC with Ms K Howard Solicitor for the Respondent: Sprusons Solicitors Date of Hearing: 23 July 1998 Date of Judgment: 23 July 1998