FEDERAL COURT OF AUSTRALIA Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd (No 4) [2017] FCA 1264 File number: NSD 516 of 2016 Judge: ROBERTSON J Date of judgment: 27 October 2017 Catchwords: PRACTICE AND PROCEDURE – application for leave to amend pleadings – whether leave should be granted Legislation: Federal Court of Australia Act 1976 (Cth) s 37M(1) Patents Act 1990 (Cth) s 7(1)(a) Cases cited: University of Sydney v ObjectiVision Pty Limited [2016] FCA 1199 Date of hearing: 26 October 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 18 Counsel for the Applicant: Mr A Coleman SC with Ms F St John Solicitor for the Applicant: DLA Piper Australia Counsel for the First Respondent: Mr RJ Webb SC with Dr A Hughes Solicitor for the First Respondent: Corrs Chambers Westgarth Counsel for the Cross-Claimant: Mr RJ Webb SC with Dr A Hughes Solicitor for the Cross-Claimant: Corrs Chambers Westgarth Counsel for the Second Cross-Respondent: Ms L Thomas Solicitor for the Second Cross-Respondent: K&L Gates ORDERS NSD 516 of 2016 BETWEEN: DOMINO'S PIZZA ENTERPRISES LIMITED (ACN 010 489 326) Applicant AND: PRECISION TRACKING PTY LTD (ACN 133 616 369) First Respondent VLADIMIR LASKY Second Respondent NATHAN PARROTT (and another named in the Schedule) Third Respondent AND BETWEEN: PRECISION TRACKING PTY LTD (ACN 133 616 369) Cross-Claimant AND: DOMINO'S PIZZA ENTERPRISES LTD (and another named in the Schedule) First Cross-Respondent JUDGE: ROBERTSON J DATE OF ORDER: 27 OCTOBER 2017 THE COURT ORDERS THAT: 1. By 4 PM on 1 November 2017, Domino's Pizza Enterprises Limited and Navman Wireless Australia Pty Ltd file and serve amended pleadings, as notified on 9 October 2017, but excluding the three amendments in respect of which leave to amend has not been granted. 2. By 4 PM on 6 November 2017, Precision Tracking Pty Ltd file amended pleadings in response. 3. Domino's Pizza Enterprises Limited and Navman Wireless Australia Pty Ltd pay the costs thrown away by reason of the unopposed amendments. 4. Domino's Pizza Enterprises Limited's and Navman Wireless Australia Pty Ltd's interlocutory applications to amend be otherwise dismissed. 5. Domino's Pizza Enterprises Limited and Navman Wireless Australia Pty Ltd pay Precision Tracking Pty Ltd's costs of the contested interlocutory applications to amend. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT ROBERTSON J: 1 These reasons concern an application by Domino's Pizza Enterprises Limited (Domino's) and Navman Wireless Australia Pty Ltd (Navman) for leave to amend their pleadings. 2 The terms of the proposed amendments were notified to Precision Tracking Pty Ltd (Precision Tracking) on 9 October 2017. 3 For the most part, the proposed amendments were not opposed and I grant leave to amend in relation to the unopposed amendments on the footing that Domino's and Navman pay the costs thrown away by reason of those amendments. Two sets of proposed amendments were however opposed by Precision Tracking. 4 The relevant considerations have been summarised recently by Burley J in University of Sydney v ObjectiVision Pty Limited [2016] FCA 1199 at [61]-[67]. 5 In my opinion, given the imminence of the three-week trial, commencing on 27 November 2017, the dominant consideration is the question of prejudice to Precision Tracking. It was not suggested on any side that the final hearing should be adjourned. 6 The proposed amendments which were opposed fall into two categories. 7 The first proposed amendments are that Domino's and Navman wish to add to their lack of novelty ground, in relation both to the First Innovation Patent and the Second Innovation Patent, the disclosure made publicly available before the earliest priority date in a US patent published on 8 December 2011. It was explained in the course of submissions that these proposed amendments were referable to s 7(1)(a) of the Patents Act 1990 (Cth) and not to s 7(1)(b) as Precision Tracking had understood. 8 The second proposed amendment is that the same parties wish to add in relation to the First Innovation Patent, in respect to claims 1-4, the following uses or documents: (xi) further or alternatively, in relation to claims 1 to 4: (A) the documents comprising a proposal from Precision Tracking to Domino's Pizza Inc dated 27 March 2013 and an email from Precision Tracking to Domino's Pizza Inc dated 29 August 2013; and/or (B) the use constituted by Precision Tracking's offer to supply Domino's Pizza Inc in the United States with an integrated customer pizza tracker as disclosed in those documents, both of which the recipient was free in equity and law to disclose to any person. 9 Besides the commencement of the three-week hearing, the other aspect of the current timetabling to which I should refer is that the time for the relevant technical experts to commence their conclave and thereafter their joint report is set to start on 2 November 2017 and to conclude by 11 November 2017. It is, I understand, common ground that an important element of the patent component of the proceedings will be the parties' respective expert evidence. 10 With respect to the two classes of amendment the reason given for the notification and application at this time is that the points did not occur to Domino's legal team until very recently. 11 As to the first category, the Domino's and Navman parties submit the claims in the respective applications, that is in the Australian patent application presently pleaded and in the US patent application sought to be included, "are not in identical terms but are in substantively similar terms." They also submit that the US patent application is referred to in the first expert report of Mr Wilson dated 28 July 2017 but that the technical expert for Precision Tracking, Mr Sizer, did not respond to that paragraph nor otherwise address that US patent application. 12 Precision Tracking submitted in this respect that the amendment would require further evidence from the experts as the US specification differs from the Australian. Also, Mr Wilson's evidence contained no separate comparative analysis of the US patent application sought to be included. It was clear from the affidavit of Mr Wilson that Domino's had identified the US document as relevant independently of its preparation of Mr Wilson's affidavit and had provided it to him well before the affidavit was sworn on 28 July 2017. 13 In my opinion, leave to amend in this respect should not be granted so as to rely on the additional US document. This is complex litigation. The trial is imminent. It has been subject to extensive case management. No comparison has been done between the US document and either the First Innovation Patent or the Second Innovation Patent: the reference to this proposed US document in Mr Wilson's affidavit, sworn on 28 July 2017, at [192] stands in contrast to the other Australian and US documents which were the subject of a detailed comparison between those documents and the First Innovation Patent and the Second Innovation Patent in Mr Wilson's Annexures CKW-7 and CKW-8. 14 I do not accept the submission that, in effect, Precision Tracking should be able to deal in the time available with any evidence it wants to adduce in relation to the additional US document. I do not accept the submission that Mr Wilson has dealt with it for Domino's and that Precision Tracking should be able to have its expert Mr Sizer equally deal with it very briefly. I also take into account, of course, the overarching purpose set out in s 37M(1) of the Federal Court of Australia Act 1976 (Cth). 15 As to the second amendment, which I have set out above, I adopt the same analysis. The documents were discovered in April 2017. In my opinion whether or not "the recipient was free in equity and law to disclose to any person" the documents or their contents requires a factual enquiry which at this late stage in the litigation Precision Tracking should not be required to undertake. Precision Tracking submits that it would wish to explore the context in which the emails were sent. I accept this. 16 A significant point is that the offer by Precision Tracking on which Domino's and Navman now wish to rely, was to supply to Domino's Pizza Inc, a United States company, in the United States. Another factual matter which Precision Tracking says that it wishes to explore, and which I accept it should be able to explore if this amendment were allowed, is the circumstances in which the document came to be provided to a Mr Mueller. I do not accept that the similarities between the proposal dated 9 July 2012 and the proposal to Mr Mueller dated 25 March 2013 show that little or no factual enquiry by Precision Tracking is necessary. 17 Precision Tracking also submits, which I accept, that it would wish to obtain further expert evidence in relation to this proposed amendment to the effect that the claims in the First Innovation Patent were not novel. I do not accept as an answer to this point that if necessary Mr Sizer can provide consequential expert evidence. In my opinion, leave to amend in this second respect should not be granted. 18 In summary, I refuse Domino's and Navman's application to amend insofar as it is opposed. The orders I propose are as follows: 1. By 4 PM on 1 November 2017, Domino's Pizza Enterprises Limited and Navman Wireless Australia Pty Ltd file and serve amended pleadings, as notified on 9 October 2017, but excluding the three amendments in respect of which leave to amend has not been granted. 2. By 4 PM on 6 November 2017, Precision Tracking Pty Ltd file amended pleadings in response. 3. Domino's Pizza Enterprises Limited and Navman Wireless Australia Pty Ltd pay the costs thrown away by reason of the unopposed amendments. 4. Domino's Pizza Enterprises Limited's and Navman Wireless Australia Pty Ltd's interlocutory applications to amend be otherwise dismissed. 5. Domino's Pizza Enterprises Limited and Navman Wireless Australia Pty Ltd pay Precision Tracking Pty Ltd's costs of the contested interlocutory applications to amend. I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate: Dated: 27 October 2017 SCHEDULE OF PARTIES NSD 516 of 2016 Respondents Fourth Respondent: ALEXANDER GREEN Cross-Respondents Second Cross-Respondent NAVMAN WIRELESS AUSTRALIA PTY LTD (ACN 123 981 457)