Federal Court of Australia Vector Corrosion Technologies Ltd v DuoGuard Australia Pty Ltd [2020] FCA 1624 File number(s): QUD 649 of 2018 QUD 117 of 2019 Judgment of: GREENWOOD J Date of judgment: 6 November 2020 Catchwords: PRACTICE AND PROCEDURE – consideration of an application to vacate trial dates Division: General Division Registry: Queensland National Practice Area: Intellectual Property Sub-area Patents and Associated Statutes Number of paragraphs: 21 Date of hearing: 3 November 2020 Counsel for the Applicant: Ms K Howard SC with Mr C Smith Solicitor for the Applicant: Bennett & Philp Lawyers Counsel for the Respondents: Mr J S Cooke with Ms A McDonald Solicitor for the Respondents: Maddocks Lawyers ORDERS QUD 649 of 2018 BETWEEN: VECTOR CORROSION TECHNOLOGIES LTD Applicant AND: DUOGUARD AUSTRALIA PTY LTD First Respondent CONCRETE PRESERVATION TECHNOLOGIES LTD Second Respondent NIGEL DAVISON Third Respondent GARETH KEVIN GLASS Fourth Respondent ADRIAN CHARLES ROBERTS Fifth Respondent order made by: GREENWOOD J DATE OF ORDER: 6 NOVEMBER 2020 THE COURT ORDERS THAT: 1. The dates allocated for the hearing of the proceeding commencing on 30 November 2020 are vacated. 2. The costs of and incidental to vacating the hearing dates are reserved for later determination. 3. Pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), rule 1.32 and rule 1.36 of the Federal Court Rules 2011, these orders and the reasons for judgment in support of these orders are made and published from Chambers. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. ORDERS QUD 117 of 2019 BETWEEN: VECTOR CORROSION TECHNOLOGIES LTD Applicant AND: E-CHEM TECHNOLOGLIES LTD First Respondent NIGEL DAVISON Second Respondent ADRIAN CHARLES ROBERTS Third Respondent GARETH KEVIN GLASS Fourth Respondent order made by: GREENWOOD J DATE OF ORDER: 6 NOVEMBER 2020 THE COURT ORDERS THAT: 1. The dates allocated for the hearing of the proceeding commencing on 30 November 2020 are vacated. 2. The costs of and incidental to vacating the hearing dates are reserved for later determination. 3. Pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), rule 1.32 and rule 1.36 of the Federal Court Rules 2011, these orders and the reasons for judgment in support of these orders are made and published from Chambers. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT GREENWOOD J: 1 These proceedings are concerned with an interlocutory application made by the applicant in both proceedings for an order that the hearing dates for the trial of both proceedings, commencing on 30 November 2020, be vacated. 2 There are two proceedings which are to be heard together with evidence in one being treated as evidence in the other, although some affidavits have been filed in one proceeding and other affidavits filed in the other. 3 The first proceeding (QUD 649/2018) is concerned with claims of patent infringement which are denied coupled with a cross-claim for revocation of the patent in suit. The second proceeding (QUD 117/2019) is described as an entitlement proceeding in which the applicant claims to be entitled to have Australian Patent No. 2006224340 transferred to it. Declarations as to particular matters are sought in the proceeding. 4 The application to vacate the hearing dates was heard on Tuesday, 3 November 2020. The application was resisted by the respondents. 5 In order to deal with the oral and written submissions, it has been necessary to read all of the affidavits filed in the proceeding in order to understand the sequence of factual and technical matters raised in the material by both the lay witnesses and expert witnesses so as to determine the nature of the difficulties said to confront the applicant by reason of the respondents having filed the following material: an affidavit of Dr Bruce Ackland on 2 November 2020; an affidavit of Dr Nigel Davison on 1 November 2020; an affidavit of Dr Gareth Kevin Glass on 30 October 2020; an affidavit of Dr David Gareth John on 30 October 2020; and an affidavit of Mr Adrian Charles Roberts on 30 October 2020. 6 In proceeding QUD 117/2019, a series of affidavits were filed by the applicant on 28 October 2019. Affidavits were filed in answer to that material. Affidavits were filed in response to those affidavits. A mediation of the proceedings took place on 27 October 2020. The affidavits mentioned at [5] of these reasons were to be filed by 9 October 2020. However, as a result of an order on 23 October 2020, the affidavits were to be filed by 30 October 2020. Those affidavits are responsive to eight affidavits filed by the applicant identified in Order 4 to the Orders of 23 October 2020 which, in turn, are responsive to the affidavits filed by the respondents in answer to the affidavits of the applicant filed on 24 October 2019. 7 Today, the Court advised the parties that in order to determine whether the hearing dates ought to be vacated it was necessary to read all of the affidavits filed in the proceeding to determine the ebb and flow of the material with a view to understanding the contention of the applicant that the body of material and information reflected in the affidavits described at [5] of these reasons has made it virtually impossible for the applicant to address the various matters and conduct the trial on the allocated trial dates. 8 The Court advised the parties that all of the affidavit material had been read and that in the result the Court accepted that the hearing dates would need to be vacated in order to enable the applicant to properly conduct a trial of each action. The Court advised the parties that reasons explanatory of the order would be provided either today or on Monday. 9 Today, the Court received an email from the solicitor for the respondents advising that the respondents do not require reasons in support of the decision to vacate the hearing dates. 10 That being so, these reasons are expressed in brief terms. 11 The Court had intended to step through the pleadings in the action to address issues which have been raised about an amendment to the statement of claim (as to which see the amended statement of claim filed 5 April 2019, para 40; the further amended statement of claim filed on 9 August 2019, para 40; and the second further amended statement of claim filed on 16 September 2020, para 40 which introduces subpara (AA), makes a deletion to para 40(A)(i), deletes para 40(A)(iii) and adds at para 40(A), subparas (iv), (v) and (vi)), and step through in some detail the topics raised by the affidavits described at [5] of these reasons and the extent to which they engage with the earlier material. The Court had intended to review in these reasons the sequence of orders. However, none of that is now necessary. 12 It is sufficient for present purposes to say that the solicitors for the applicant have set out a series of matters which identify difficulties they and the applicant will have in addressing the material described at [5] of these reasons. It is not necessary to set out the elements of that contended difficulty and, in particular, the difficulty that Dr Lambert will have in contributing to the identification of the issues to be addressed by the experts, responding to the material and preparing for trial. In addition, senior counsel for the applicant urges upon the Court the difficulty the applicant will have in being able to prepare for and conduct the trial. The matters referred to by Mr Finney in his affidavit sworn 2 November 2020 are emphasised by senior counsel. 13 Two factors have been instrumental in reaching a decision to vacate the hearing dates. 14 The first is that the Court has read for itself all of the affidavit material and accepts that the material raised by the affidavits referred to in [5] of these reasons raises significant matters to be addressed by the applicant. 15 The second is that in circumstances where senior counsel familiar with the matter urges upon the Court the proposition that the applicant is prejudiced and will be unable to conduct a trial of each proceeding on the allocated dates having regard to the need to address that material, determine the field of the issues upon which the experts would be required to caucus and prepare a joint report, review, in particular, Dr John's evidence, engage with Dr Lambert and prepare for the hearing (particularly in relation to expert issues), the Court accepts that the applicant will be prejudiced in the conduct of the proceeding. 16 The Court had intended to identify in these reasons detailed aspects of the topics addressed by the affidavits referred to at [5] of these reasons and the material to which they refer and their relationship with the earlier affidavits. 17 However, it is not necessary to now do so in these reasons. 18 It may be necessary to later examine aspects of these matters in some detail on the question of costs. 19 The preparation undertaken by the parties to date both for the mediation and towards trial is unlikely to be lost and certainly, as the docket Judge, I have had the advantage of now reading all of the material filed in QUD 117/2019, the pleadings in this proceeding, the pleadings in QUD 649/2018 and all the related orders. 20 The costs of and incidental to vacating the hearing dates for each proceeding are reserved. 21 Steps will be taken as soon as possible to allocate new trial dates as early as possible in 2021. I certify that the preceding twenty-one (21) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Greenwood. Associate: Dated: 6 November 2020