FEDERAL COURT OF AUSTRALIA Aristocrat Technologies Australia Pty Ltd v IGT (Australia) Pty Ltd [2007] FCA 1529 ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD v IGT (AUSTRALIA) PTY LTD AND ACRES GAMING, INC NSD 1345 OF 2004 ALLSOP J 2 JULY 2007 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NSD 1345 OF 2004 BETWEEN: ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD Applicant AND: IGT (AUSTRALIA) PTY LTD First Respondent ACRES GAMING, INC Second Respondent JUDGE: ALLSOP J DATE OF ORDER: 2 JULY 2007 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. Leave be granted to the Applicant to re-open its case in respect of the validity of claims 8 and 16 of Australian Patent Number 748263 by making further submissions. 2. Leave be granted to the respondents to make further submissions on said claims. 3. The notice of motion filed in Court on 12 April 2007 by the applicant be otherwise dismissed. 4. The costs of the said motion 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 NEW SOUTH WALES DISTRICT REGISTRY NSD 1345 OF 2004 BETWEEN: ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD Applicant AND: IGT (AUSTRALIA) PTY LTD First Respondent ACRES GAMING, INC Second Respondent JUDGE: ALLSOP J DATE: 2 JULY 2007 PLACE: SYDNEY REASONS FOR JUDGMENT 1 I have before me in this matter a notice of motion filed in Court today by the applicant seeking various orders, but relevantly for these reasons, seeking orders that it be entitled to re-open the evidence in this case by the tendering of a document and by the reading of a further affidavit of Mr Culley. If I were to have granted that re-opening, which I do not propose to allow, there would have also been the necessity for an affidavit of Mr Daley and thereafter either or both consultation between the experts and cross-examination of both experts. I do propose to allow the parties to address the Court further on the question of claims 8 and 16 and claims 20 and 21. 2 Claims 20 and 21 are omnibus claims and claims 8 and 16 were claims that I dealt with in [93] and [94] of my reasons for judgment dated 7 February 2007 (reported at 71 IPR 259). In dealing with those claims in [94], I am persuaded by the diplomatic submissions of both sides that I expressed a misunderstanding of principle and that the claims are not invalid for the reasons I there expressed. I have been shown some of the submissions that were before me in making my decision in February 2007 and the submissions put by the applicant in relation to claims 8 and 16 are described by the applicant itself as "terse". That is an apt description. I do not say that as a reason why I took the course that I did, but it may or may not have had something to do with it. 3 In any event, in my reasons at [99], I ordered that the applicant bring in short minutes and I said, in the last sentence of my reasons: If there is any aspect that I have overlooked referable to the way the various claims fall out, this can be taken up in any debate on the form of orders. 4 There has been a practice in this Court for as long as I can recall in relation to intellectual property matters, except in urgent cases where immediate orders are required, for the Court to direct the parties to bring in short minutes of order in relation to the reasons for decision. 5 By and large, this is a salutary and wise course, given the complexities of many intellectual property cases, including patent cases, and the possibility of complex multi-claimed specifications and patents not being adequately, or fully, dealt with by substantive reasons. With skilled counsel, the quickest and most efficient way of dealing with orders is to provide reasons with or without draft orders and for counsel to attend to the appropriate form of orders to be brought to Court. 6 The danger that lurks in that salutary practice is that, without orders being made, it might be seen that the case has not finished and if parties win or lose, for reasons that may or may not be such as to be helped by further evidence, there may be a temptation to add to evidence and/or submissions to remedy what are perceived as errors or lack of attention in the reasons. 7 The balance between obtaining the correct orders with the assistance of counsel and dealing with matters truly overlooked and simply having another go may at times be difficult to assess. However, I think it is necessary to be vigilant to ensure that the hearing of the matter and the provision of reasons with a call for the bringing in of short minutes is not viewed as the first stage of the debate, to be continued by ever reducing iterations of analysis and evidence. This is especially so in relation to appeals from the Office and the Commissioner which, for the reasons I expressed in paragraphs [5] and following of my reasons of 7 February 2007, should be understood as not ultimate final hearings as to the validity of the patent. These hearings should be, as far as the complexity of a matter allows, dealt with as expeditiously as possible. 8 I have had regard to the careful submissions of the applicant filed on 10 May 2007 and, in particular, [15] through [44]. The principles governing re-opening are set out in the cases there identified and I have had particular regard to what was said by Hill J in Hyster Australia Proprietary Limited v Anti-Dumping Authority (1993) 41 FCR 259; Wentworth v Rogers [2002] NSWSC 921; Twenty-First Australia Inc v Shade NSWSC (unreported, New South Wales Supreme Court, Equity Division, Young J, 31 July 1998), AB v Federal Commissioner of Taxation (1998) 157 ALR 510, and Smith v New South Wales Bar Association (1992) 108 ALR 55. 9 The questioning of re-opening is, as Hill J said in Hyster 41 FCR 259, a question of a general judicial discretion which has bearing down on it various considerations: s 22 of the Federal Court of Australia Act 1976 (Cth), the interests of justice in all the circumstances of the case between the parties, the importance of finality of litigation, the importance of the public register kept by the Commissioner for Patents being correct and public confidence in the prompt despatch of the business of this Court. 10 Mr Catterns, in putting forward the submissions for the tender of the relevant document and the reading of the affidavit of Mr Cully, also put the submission that the evidence, as it currently existed, was adequate to maintain the point, and that the evidence that he wished to lead would put the matter beyond doubt. 11 In those circumstances, bearing in mind the matters that I have identified, in particular the interests of the parties and the public, I do not think that I should allow the record to be re-opened with further expense and time, and the involvement of the experts in circumstances where the parties had the issue before them, addressed it in the evidence and now want to improve on that evidence. 12 This is so, in particular, in circumstances where the Court has employed the usual practise to which I refer. I think, if I were to allow the evidence to restart in this respect, it would be reducing the first hearing to a preliminary and introductory one, able to be improved upon by any party who thought, after reading the reasons of the trial judge, that they could do better by a bit more evidence. I do not say that disrespectfully in the slightest of counsel or solicitors, but it seems to me that for the hearing to have legitimacy as a once and for all hearing, subject to proper judicial discretion, I should not allow evidence to be reopened in circumstances where it is not said to be absolutely necessary. 13 In these circumstances, and considering all the matters set out in those paragraphs of Mr Catterns' and Ms Goddard's submissions, together with the cases to which I have referred, I do not propose to allow reopening of the evidence in this case, and, thus, I will dismiss [3] and [4] of the notice of motion filed in Court today. 14 Then, there is another matter which I wish to take this opportunity to deal with. I indicated to the parties on the prior occasion the need to deal with this issue, and this is as convenient place as any to deal with it. I refer to my reasons published on 7 February 2007. 15 As is apparent, I am yet to make orders. In [66] of my earlier reasons, I sought to interpolate into a passage taken from Hill v Evans (1862) 31 LJ Ch 457, relevant material from the case at hand. On re-reading the third interpolation, I have come to the view that it is confusing. The material third appearing in brackets should have been based, also, on what Lord Westbury said in Betts v Menzies (1862) 10 HCC 117 referred to in Olin Corporation v Super Cartridge (1977) 180 CLR 236 (also referred to in [66] of my reasons) as the "practical mode of producing the result which is the effect of the subsequent discovery". 16 In this case, this is the two-phased system in the patent application, with a prize awarded in a manner disclosed by the phrase used in the Bennett patent "to attain a pre-determined objective". Thus the interpolation of the third bracket should simply read, [The patent application]. This explanation should be taken as a clarification or correction of my reasons given on 7 February 2007. 17 Also, the parties have directed my attention to a typographical error in [98] of my reasons. The number "12" should be understood as the number "16". 18 Returning to the notice of motion filed in Court today, it is appropriate, in my view, to allow further submissions on the question of claims 8 and 16, not least because of the approach that I, on reflection, incorrectly took to it in my reasons in February. This will require the applicant and respondent being entitled to rely upon the submissions which they have filed, and an opportunity in court today for the applicant and the respondent to direct me to any part of the evidence which is already in to support their submissions. 19 Thus, I would make orders 1 and 2 of the motion, and the costs of the motion will be dealt with in my reasons on claims 8 and 16. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Allsop. Associate: Dated: 9 October 2007 Counsel for the Applicant: Mr D K Catterns QC with Ms S Goddard Solicitor for the Applicant: Freehills Counsel for the Respondents: Mr C Dimitriadis Solicitor for the Respondent: Spruson & Ferguson Lawyers Date of Hearing: 2 July 2007 Date of Judgment: 2 July 2007