FEDERAL COURT OF AUSTRALIA Firebelt Pty Ltd v Brambles Australia Ltd [1999] FCA 187 FIREBELT PTY LIMITED v BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY AND COOLOOLA SHIRE COUNCIL QG 92 OF 1995 DOWSETT J 26 FEBRUARY 1999 BRISBANE IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QG 92 OF 1995 BETWEEN: FIREBELT PTY LIMITED ACN 054 417 739 Applicant AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY ACN 000 164 938 First Respondent COOLOOLA SHIRE COUNCIL Second Respondent BY ORIGINAL ACTION BETWEEN: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY ACN 000 164 938 AND: Cross-Claimant FIREBELT PTY LIMITED ACN 054 417 739 Cross-Respondent BY FURTHER CROSS ACTION BETWEEN: FIREBELT PTY LIMITED ACN 054 417 739 AND: Second Cross-Claimant AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY ACN 000 164 938 AND: Second Cross-Respondent COOLOOLA SHIRE COUNCIL Third Cross-Respondent STATE OF QUEENSLAND Fourth Cross-Respondent JUDGE: DOWSETT J DATE OF ORDER: 26 FEBRUARY 1999 WHERE MADE: BRISBANE THE COURT ORDERS THAT: 1. The applicant pay the respondent's costs of the cross-claim, including reserved costs, but with the costs of the trial limited to four days. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QG 92 OF 1995 BETWEEN: FIREBELT PTY LIMITED ACN 054 417 739 Applicant AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY ACN 000 164 938 First Respondent COOLOOLA SHIRE COUNCIL Second Respondent BY ORIGINAL ACTION BETWEEN: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY ACN 000 164 938 Cross-Claimant AND: FIREBELT PTY LIMITED ACN 054 417 739 Cross-Respondent BY FURTHER CROSS ACTION BETWEEN: FIREBELT PTY LIMITED ACN 054 417 739 Second Cross-Claimant AND: BRAMBLES AUSTRALIA LIMITED TRADING AS CLEANAWAY ACN 000 164 938 AND: Second Cross-Respondent AND; COOLOOLA SHIRE COUNCIL Third Cross-Respondent STATE OF QUEENSLAND Fourth Cross-Respondent JUDGE: DOWSETT J DATE: 26 FEBRUARY 1999 PLACE: BRISBANE REASONS FOR JUDGMENT 1 As can be seen from the reasons for judgment which I have already published in this matter, the parties ventilated numerous issues at a trial which lasted for seven days. Had counsel not reduced their submissions to writing, it would have gone much longer. The respondent, although entirely successful in obtaining the relief which it sought, ventilated a number of issues in respect of which it was unsuccessful. 2 Some of these were largely questions of construction of the relevant legislation and of the patent documents. That exercise took up a large amount of my time, but did not take up a lot of court time. It undoubtedly took up a lot of time in preparation of the various written submissions. The issues on which the respondent was successful were firstly, as to the absence from the petty patent application of the best method known to the applicant of performing the invention, and secondly, as to the question of obviousness or inventive step. I found that there was no inventive step involved in the claimed invention. The first issue, obviously enough, was decided largely by reference to the patent document as explained in the course of the evidence. The second issue was decided largely by reference to expert evidence as to matters known to them at the relevant date and as to their professional judgment concerning the obviousness of the additional step taken by the applicant in its claimed invention. 3 The other grounds, as I have said were numerous. It was complained that the invention was not fully described in the patent application, which complaint was rejected. It involved considerations closely associated with those relating to the question of best known method of performance. It was said that the application was not clear and succinct. This also involved similar considerations. There was a further complaint that the claims in the petty patent were not fairly based on the matter described in the specification. Resolution of that matter depended substantially upon an interpretation of the document as explained in the course of the evidence. There was a quite substantial argument about the priority date of the petty patent. This was determined by reference to the documents and to the Act. There was argument about whether the alleged invention was an invention or manner of manufacture for the purposes of section 18 of the Act and section 6 of the Statute of Monopolies. This was very much a matter of construction. Finally, there was a complaint of want of novelty, namely that all of the integers of the claim had previously been disclosed in that combination. This attack failed. It involved an examination of the evidence, much of which was also relevant to the issue of inventive step, although the emphasis was somewhat different. In the course of the evidence, this dichotomy of relevance was reflected in the way in which the witnesses gave their evidence-in-chief and/or affidavits and were cross-examined. The two issues were, to some extent, addressed separately. 4 This very brief examination of the issues suggests that much of the evidence was really designed to provide background, explaining the invention, explaining similar earlier inventions, and seeking to identify the extent to which the claimed invention went beyond prior knowledge in the industry. It is not easy to categorise much of the evidence as relating to one issue rather than another. Even in respect of the issues which depended primarily upon construction of documents, much of the evidence appears to have been useful in explaining what was meant by many of the terms contained in the documents. It would be very difficult to construe the patent without a detailed understanding of the industry and of the terminology of the industry. That accounted for quite a large amount of the evidence in this case. 5 Nonetheless I have formed the clear view that the ventilation of the issues in respect of which the respondent was unsuccessful extended the trial in a significant way. This was, to some extent, as a result of the need to explain to me, in the course of the trial as well as in submissions, the different aspects of those issues and the way in which the evidence related to them. As I have already observed, additional time was also consumed in having the witnesses address the issues separately. It is not easy to identify the extent to which the trial was extended by the ventilation of these issues, all of which, in my view, were fairly clearly doomed to failure. Had they not been raised it is likely that the trial on the other issues would have been completed in no more than about a week. 6 The respondent should not recover its costs of having prosecuted unsuccessfully the issues to which I have referred and should meet the additional costs incurred by the applicant as a result of the litigation of those issues. I do not, for a moment, suggest that my estimate of a week is likely to be accurate. It is only a very broad assessment, and I use it in a very general way in formulating the order which I am about to make. In the circumstances it seems appropriate to order that the applicant pay the respondent's costs of the cross-claim, but with the costs of the trial limited to four days. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett. Associate: Dated: 26 February 1999 Counsel for the Applicant: Mr J Garnsey QC and Mr C Carrigan Solicitor for the Applicant: Xavier Kelly & Co Counsel for the Respondent: Mr A Crowe and Mr R Lilley Solicitor for the Respondent: Deacons Graham & James Date of Hearing: 26 February 1999 Date of Judgment: 26 February 1999