FEDERAL COURT OF AUSTRALIA Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd [2004] FCA 1179 Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd N662 of 2003 JACOBSON J 1 SEPTEMBER 2004 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 662 of 2003 BETWEEN: Synthetic Turf Development Pty Ltd APPLICANT AND: Sports Technology International Pty Ltd RESPONDENT JUDGE: Jacobson J DATE OF ORDER: 1 SEPTEMBER 2004 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The respondent is granted leave to amend the cross-claim in the manner set forth in draft paragraph 7. 2. The respondent is to pay the costs thrown away by the amendment. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 662 of 2003 BETWEEN: Synthetic Turf Development Pty Ltd APPLICANT AND: Sports Technology International Pty Ltd RESPONDENT JUDGE: Jacobson J DATE: 1 SEPTEMBER 2004 PLACE: SYDNEY REASONS FOR JUDGMENT 1 The respondent seeks to amend its cross-claim to add further particulars for the grounds of invalidity. The ground which it wishes to add is the ground of false suggestion, which is set out in a draft as follows: "If, which is denied, the methods described at page 3 line 18 to page 3a line 2, page 4 lines 2 to 3 and 17 to 22 and page 8 line 24 to page 9 line 21 of the specification of the Patent are incapable of producing a playing surface or playing field as claimed in any one or more of claims 1 to 8 and 10 of the Patent, then the Patent was obtained by false suggestion or misrepresentation, in that the specification falsely represents that such methods are capable of producing such playing surfaces or playing fields." 2 I have been taken to some authorities on the law for false suggestion. They are set out in [138.5] of Bucknell et al., Australian Patent Law, Butterworths, Sydney 2004 and are well known. In order to succeed in the claim, the false suggestion must be misrepresentation which is so material that it can be said that the Crown has been deceived. The authorities establish that the court may make a finding of false suggestion even without evidence from the Commissioner of Patents as to whether he or she was, in fact, misled. 3 The amendment is one which is put only in the alternative and the respondent submits that the question turns purely upon the construction of the specification and points to disconformity between the results which are said to have been achieved in the evidence filed in support of the applicant's case, and the terms of the specification itself. 4 Mr Franklin SC, for the applicant, however, says that the authorities support an argument that in a claim of false suggestion, it is open to the patentee to lead evidence of everything which took place during the examination and opposition process. There have been two opposition proceedings. The applicant says that it will be necessary to consider whether evidence of what took place in those proceedings ought to be filed to resist the claim of false suggestion. 5 It seems to me that the proposed pleading raises an arguable ground and I did not understand Mr Franklin to say otherwise although, of course, he submitted that the false suggestion claim will fail on a full and final consideration of the matter. 6 The only prejudice to which Mr Franklin pointed was that the proposed amendment has been sought very late in the proceedings. In fact, the draft amendment was only handed up in court on the second day of the hearing, and it will be necessary for Mr Franklin to consider whether further evidence will need to be filed. Nevertheless, the authorities establish that in the exercise of my discretion as to whether to permit an amendment to be granted, I ought to consider that the issue is one of doing justice between the parties. 7 The prejudice to which Mr Franklin points can be cured by a costs order, and that can be dealt with when the proceedings have been determined, and argument can be heard on costs. In the meantime, it seems to me that the respondent will have to pay the costs thrown away by the amendment, but I propose to grant leave to amend the cross-claim in the manner set forth in the draft. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson. Associate: Dated: 9 September 2004 Counsel for the Applicant: Mr J Nicholas SC Mr C Dimitriadis Solicitor for the Applicant: Phillips Fox Counsel for the Respondent: Mr ABS Franklin SC Mr M Vincent Solicitor for the Respondent: Griffin Vincent IT and IP Lawyers Date of Hearing: 1 September 2004 Date of Judgment: 1 September 2004