Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judge: BESANKO J
• Judgment Date: 12 June 2020
• Neutral Citation: [2020] FCA 811
• Date: 12 June 2020

FEDERAL COURT OF AUSTRALIA

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2020] FCA 811

File number:	NSD 1040 of 2019
Judge:	BESANKO J
Date of judgment:	12 June 2020
Catchwords:	PRACTICE AND PROCEDURE — two applications for disqualification on the basis of apprehended bias by reason of judge’s involvement in hearing a previous proceeding between the applicants and the first and second respondents in the present proceeding — where judge rejected the first and second respondents’ previous challenge to the impartiality of an expert witness whom gave evidence in the previous proceeding and whom is likely to give evidence in the present proceeding — where judge also construed claims in the patent in the previous proceeding in a manner consistent with the construction advanced by the expert witness — where the proper construction of claims in a patent is a question of law — whether a fair-minded lay observer might reasonably apprehend that judge might not bring an impartial mind to the resolution of the issues in the present proceeding — whether an apprehension of bias arises by reason of the applicants’ use of the term “workaround” in a letter to the Court
Legislation:	Patents Act 1990 (Cth) s 122
Cases cited:	Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839 Cavar v Green Gate Pty Ltd [2015] FCA 1179 Ebner v Official Trustee in Bankruptcy [2000] HCA 63; (2000) 205 CLR 337 Expectation Pty Ltd v PRD Realty Pty Ltd (No 2) [2006] FCA 392; (2006) 151 FCR 160 Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162; (2019) 145 IPR Jupiters Ltd v Neurizon Pty Ltd [2015] FCAFC 90; (2005) 222 ALR 155 Livesey v New South Wales Bar Association [1983] HCA 17; (1983) 151 CLR 288 Michael Wilson & Partners v Nicholls [2011] HCA 48; (2011) 244 CLR 427 Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240 Re JRL; Ex parte CJL [1986] HCA 39; (1986) 161 CLR 343 Vakauta v Kelly [1989] HCA 44; (1989) 167 CLR 568 ; Bodkin C, Patent Law in Australia (3rd ed, Lawbook Co, 2019)
Date of hearing:	8 April 2020
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Category:	Catchwords
Number of paragraphs:	64
Counsel for the Applicants:	Ms F St John
Solicitor for the Applicants:	Gilbert + Tobin
Counsel for the Respondents:	Mr A Ryan SC with Mr A Fox
Solicitor for the First and Second Respondents:	Watermark Intellectual Property Lawyers
Solicitor for the Third and Fourth Respondents:	Bird & Bird

ORDERS

		NSD 1040 of 2019
BETWEEN:	AUSTRALIAN MUD COMPANY PTY LTD (ACN 009 283 416) First Applicant/Cross-Respondent ; REFLEX INSTRUMENTS ASIA PACIFIC PTY LTD (ACN 124 204 191) Second Applicant
AND:	GLOBALTECH CORPORATION PTY LTD (ACN 087 281 418) First Respondent ; GLOBALTECH PTY LTD (ACN 086 012 393) Second Respondent ; BOART LONGYEAR LIMITED (ACN 123 052 728) (and another named in the Schedule) Third Respondent

JUDGE:	BESANKO J
DATE OF ORDER:	12 june 2020

THE COURT ORDERS THAT:

1. The Interlocutory application of the first and second respondents dated 20 December 2019 and the Interlocutory application of the third and fourth respondents dated 20 December 2019 be dismissed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BESANKO J:

Introduction

1. There are two interlocutory applications dated 20 December 2019 before the Court. The first application is brought by the first and second respondents, and the second by the third and fourth respondents. In both applications, an order is sought that I disqualify myself in this proceeding and that the proceeding be referred to another judge of the Court for case management and the hearing and determination of the claims made by the parties. The broad basis of the applications is that an apprehension of bias arises by reason of my involvement in hearing a previous proceeding between the applicants and the first and second respondents in this proceeding.

The Facts

2. The applicants in this proceeding are Australian Mud Company Pty Ltd and Reflex Instruments Asia Pacific Pty Ltd, and the respondents are Globaltech Corporation Pty Ltd, Globaltech Pty Ltd, Boart Longyear Limited and Boart Longyear Australia Pty Ltd. The proceeding involves a claim by the applicants that the respondents have infringed claims in Australian Standard Patent No 2010200162 entitled “Core Sample Orientation” (the Patent). The fourth respondent, Boart Longyear Australia Pty Ltd, has brought a cross-claim in which it alleges that the Patent is invalid.

3. Globaltech Corporation Pty Ltd and Globaltech Pty Ltd (the Globaltech respondents) are represented by one firm of solicitors (Watermark Intellectual Property Lawyers), and Boart Longyear Limited and Boart Longyear Australia Pty Ltd (the Boart Longyear respondents) are represented by a different firm of solicitors (Bird & Bird). However, on these applications, all four respondents were represented by the same counsel.

4. I have previously considered a claim by the applicants against the Globaltech respondents that they have infringed claims in the Patent and a cross-claim by the Globaltech respondents that the Patent is invalid (the previous proceeding). On 26 November 2018, I delivered reasons in which I indicated that I had reached the following conclusions: (1) the Priority Date of the claims in suit is 3 September 2004 and the claims in suit are valid; (2) each of the respondents has infringed the claims in suit; and (3) the applicants are not entitled to additional damages under s 122(1A) of the Patents Act 1990 (Cth) (Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839 (the previous reasons)).

5. I made orders in the previous proceeding on 14 December 2018 and those orders were as follows:

THE COURT DECLARES THAT:

1. The respondents and each of them have infringed claims 1-4, 7-10, 16-17, 21‑24, 27-28, 33-40, 46-48, 54 and 65 of Australian Standard Patent No. 2010200162 entitled “Core Sample Orientation” (the Patent).

2. Reflex Instruments Asia Pacific Pty Ltd, the second applicant, is the exclusive licensee of the Patent.

THE COURT CERTIFIES THAT:

3. Pursuant to s 19 of the Patents Act 1990 (Cth), the validity of each of claims 1-4, 7-10, 16-17, 21-24, 27-28, 33-40, 46-48, 54 and 65 of the Patent was questioned in this proceeding.

THE COURT ORDERS THAT:

4. The respondents and each of them be permanently restrained, whether by themselves, their directors, officers, servants, agents or however otherwise from infringing the Patent in Australia during the term of the Patent, including without limitation by, without licence of the applicants:

(a) making, hiring, selling or otherwise disposing of, offering to make, hire, sell or otherwise dispose of, using, importing, exporting, or keeping for the purpose of doing any of those things, any core sample orientation tool or system according to any of claims 33-40, 46-48, 54 or 65 of the Patent, including without limitation the core...