Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 5)

• Jurisdiction: Australia Federal only
• Court: Federal Court (Australia)
• Judgment Date: 27 August 2020
• Neutral Citation: [2020] FCA 1243
• Date: 27 August 2020

Federal Court of Australia

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 5) [2020] FCA 1243

File number:	NSD 200 of 2019
Judgment of:	YATES J
Date of judgment:	27 August 2020
Catchwords:	PRACTICE AND PROCEDURE – application for removal of proceeding from docket of Docket Judge on the ground of apprehended bias – patent infringement proceeding – patent revocation proceeding – where previous proceeding and current proceeding involve related patent specifications containing identical text – where in previous proceeding Docket Judge made findings on the meaning of terms used in patent specification – where in the present proceeding the same terms are used in the specifications in suit – where in previous proceeding Docket Judge made findings with respect to disclosures in priority documents to determine priority date of claims – where in the present proceeding the same priority documents are to be construed to determine the priority dates of the claims in suit – whether a fair-minded lay observer might reasonably apprehend that Docket Judge might not bring an impartial mind to the adjudication of the same issues in the present proceeding
Cases cited:	Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2020] FCA 811 British American Tobacco Australia Services Limited v Laurie [2011] HCA 2; 242 CLR 283 Charan v Secretary, Department of Social Services [2019] FCAFC 134; 167 ALD 206 Ebner v Official Trustee in Bankruptcy [2000] HCA 63; 205 CLR 337 Embertec Pty Limited v Energy Efficient Technologies Pty Ltd (No 2) [2013] FCA 347 GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 150 Livesey v The New South Wales Bar Association (1983) 151 CLR 288 Minister for Immigration and Multicultural Affairs v Jia Legeng [2001] HCA 17; 205 CLR 507 Re JRL; Ex parte CJL (1986) 161 CLR 342 Vakauta v Kelly (1989) 167 CLR 568 Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (trading as Database Consultants Australia) [2013] FCA 395; 101 IPR 496 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia [2020] FCA 6; 149 IPR 370 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 2) [2020] FCA 447; 150 IPR 554 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 3) [2020] FCA 471; 151 IPR 1 Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 4) [2020] FCA 819
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and associated Statutes
Number of paragraphs:	57
Date of hearing:	17 August 2020
Counsel for the Applicant:	Mr R Cobden SC and Ms J Ambikapathy
Solicitor for the Applicant:	Johnson Winter & Slattery
Counsel for the First Respondent:	Mr A Bannon SC and Ms C Cunliffe
Solicitor for the First Respondent:	Norton Rose Fulbright
Counsel for the Second Respondent:	The Second Respondent did not appear

ORDERS

		NSD 200 of 2019
BETWEEN:	VEHICLE MONITORING SYSTEMS PTY LTD ACN 107 396 136 Applicant
AND:	SARB MANAGEMENT GROUP PTY LTD (T/AS DATABASE CONSULTANTS AUSTRALIA) ACN 106 549 722 First Respondent ; CITY OF MELBOURNE Second Respondent

order made by:	YATES J
DATE OF ORDER:	27 AUGUST 2020

THE COURT ORDERS THAT:

1. The proceeding be allocated to the docket of a Judge of the Court other than Yates J.

2. The question of the costs of the first respondent’s interlocutory application dated 13 July 2020 be reserved.

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

REASONS FOR JUDGMENT

YATES J:

Introduction

1. The applicant in this proceeding, Vehicle Monitoring Systems Pty Limited (VMS) sues SARB Management Group Pty Ltd (SARB) and the City of Melbourne (Melbourne) for patent infringement. The proceeding has been under my case management since its commencement on 14 February 2019. In the course of that management, I have heard and determined several interlocutory disputes between the parties: Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia [2020] FCA 6; 149 IPR 370 (VMS No 1) (application for permanent stay); Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 2) [2020] FCA 447; 150 IPR 554 (separation of determination of liability and quantum); Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 3) [2020] FCA 471; 151 IPR 1 (application to set aside a subpoena); Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 4) [2020] FCA 819 (application for non-standard discovery).

2. By an interlocutory application dated 13 July 2020, SARB seeks an order that the proceeding be allocated to the docket of a different Judge of the Court on the basis that, given findings made by me in an earlier patent infringement proceeding (the first proceeding) between VMS and SARB (Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; 101 IPR 496) (the 2013 reasons), a fair-minded lay observer might reasonably apprehend that I might not bring an impartial mind to the resolution of some of the questions the Court will be called upon to decide in the present proceeding.

3. At the first case management hearing held on 18 March 2019, junior counsel for SARB raised the possibility that such an application might be made, but no formal steps were taken in that regard until the filing of the present interlocutory application. It has not been suggested that it was inappropriate for me to hear and determine the earlier interlocutory applications.

4. VMS opposes SARB’s present application. It also submits that SARB has been dilatory in bringing the application—so much so that I should refuse to accede to it, particularly having regard to the fact that on 14 February 2020, with the consent of all parties, I set down the substantive proceeding for hearing before me commencing on 21 October 2020. VMS is concerned that, should I accede to SARB’s present interlocutory application, these hearing dates will be lost.

5. Melbourne has not actively participated in the hearing of the present interlocutory application. It submits that I should not view that stance as in any way detracting from the merits of SARB’s application.

6. In the first proceeding, I found that SARB had infringed an innovation patent held by VMS (Patent No 2010101354 (the 354 patent)) by exploiting a product referred to as the PinForce Sentinel VDU Product, including by supplying the product to Melbourne. Further, I...