U & I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd [1995] FCA 794

CATCHWORDS

CONTEMPT OF COURT - Whether sending of a letter threatening legal proceedings in relation to a patent breached undertaking given to the court - undertaking not given to the court - whether contempt proceedings applicable to breach of undertaking given inter partes - whether to allege that undertaking was given to the court when that was factually incorrect and to attempt to enforce undertaking by contempt proceedings was itself "contempt in the face or hearing of the court" or "contempt in connection with proceedings in the court" - appropriate remedy not contempt but stay or strike out of proceedings as abuse of process.

PATENTS - Interlocutory injunction sought to restrain respondent from threatening infringement or other similar proceedings against applicant and others - serious question that letter amounted to unjustifiable threat - onus of proving justification on patentee or holder of patent application - impact of threats potentially very damaging - balance of convenience in favour of granting interlocutory injunctive relief - interlocutory injunction sought to restrain alleged infringement of petty patent - conflicting expert evidence - serious question to be tried - balance of convenience against making order - risk of irreparable damage to applicant (alleged infringer).

WORDS AND PHRASES - "contempt in the face or hearing of the court" - "contempt in connection with proceedings in the court" - "unjustifiable threats".

Patents Act (1990) (Cth) ss.57, 128, 129, 131

Federal Court Rules O.40 r.5(1)

Neath Canal Company v. Ynisarwed Resolven Colliery Company (1875) 10 Ch.App. 450 - Dist.

In re the Solicitor of a Defendant: Lawford v. Spicer (1864) 2 Jur (N.S.) 564 - Dist.

A.-G. v. Boyle (1864) 10 LT 290 - Dist.

Windsurfing International Inc. v. Sailboards Australia Pty Ltd (1986) 19 FCR 110 - Dist.

Biba Ltd v. Stratford Investments Ltd [1973] 1 Ch. 281 - Dist.

Williams v. Fawcett [1986] 1 QB 604 - Dist.

Thomson Australian Holdings Pty Ltd v. Trade Practices Commission (1981) 148 CLR 150 - Appl.

Lido Manufacturing Co Pty Ltd v. Meyers & Leslie Pty. Ltd. (1964) 5 FLR 443 - Appl.

Townsend Controls Pty Ltd v. Gilead (1989) 14 IPR 443 - Appl.

Mechanical Services (Trailer Engineers) Ltd v. Avon Rubber Co Ltd [1977] RPC 66 - Appl.

European Asian Bank AG v. Wentworth (1986) 5 NSWLR 445 - Cons.

McKeown v. R. [1971] 16 DLR (3d) 390 - Not Foll.

Ex parte Bellanto Re Prior (1963) 63 SR (NSW) 190 - Dist.

R v. Castro; Skipworth's Case (1873) LR 9 QB 219 - Dist.

R v. Weisz; Ex parte Hector MacDonald Ltd [1951] 2 KB 611

R v. B (1971) 20 FLR 368

Doyle v. The Commonwealth of Australia (1985) 156 CLR 510 - Appl.

Coward v. Stapleton (1953) 90 CLR 573 - Appl.

Air Express Ltd v. Ansett Transport Industries (Operations) Pty Ltd (1981) 146 CLR 249

U & I Global Trading (Australia) Pty Ltd v. Tasman-Warajay Pty Ltd

No. QG177 of 1994

Cooper J., Brisbane, 5 October 1995

IN THE FEDERAL COURT OF AUSTRALIA

GENERAL DIVISION

QUEENSLAND DISTRICT REGISTRY

No. QG177 of 1994

BETWEEN:

U & I GLOBAL TRADING (AUSTRALIA) PTY. LTD.

(ACN 062 370 610)

Applicant

AND:

TASMAN-WARAJAY PTY. LTD.

(ACN 060 662 428)

Respondent

JUDGE MAKING ORDER:Cooper J.

WHERE MADE: Brisbane

DATE OF ORDER: 5 October 1995

MINUTES OF ORDER

On the notice of motion filed 3 February 1995 THE COURT ORDERS THAT :-

UPON the applicant giving the usual undertaking as to damages :-

1. The respondent by itself its servants or agents or otherwise be restrained, pending determination of the applicant's claims, from threatening a person or persons by means of circulars, advertisements or otherwise with infringement proceedings or similar proceedings concerning any patent arising out of Australian Patent Application No. 645150 in respect of the acquisition and use by the addressee of the threat of a conveyor belt tracking system other than a system supplied by the respondent or the manufacture or supply by the addressee of the threat of such a system in competition with the respondent.

2. The notice of motion be otherwise dismissed.

On the notice of motion filed 16 February 1995 THE COURT ORDERS THAT :-

1. The notice of motion be dismissed.

On the notice of motion filed 20 February 1995 THE COURT ORDERS THAT :-

UPON the applicant undertaking to keep records of all sales of "Beltracker: Mark II" conveyor belt tracking systems, the cost of all such sales to the applicant and the profit, if any, on such sales pending the hearing and determination of the respondent's cross-claim for infringement of Australian Petty Patent No. 658110,

1. The notice of motion be dismissed.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

GENERAL DIVISION

QUEENSLAND DISTRICT REGISTRY

No. QG177 of 1994

BETWEEN:

U & I GLOBAL TRADING (AUSTRALIA) PTY. LTD.

(acn 062 370 610)

Applicant

AND:

TASMAN-WARAJAY PTY. LTD.

(ACN 060 662 428)

Respondent

CORAM: Cooper J.

PLACE: Brisbane

DATE: 5 October 1995

REASONS FOR JUDGMENT

The court has before it three notices of motion. The first was filed 3 February 1995 by the applicant U & I Global Trading (Australia) Pty Ltd ("the applicant") seeking that the respondent Tasman-Warajay Pty Ltd ("the respondent") be committed for contempt of court. The contumelious conduct alleged against the respondent is the alleged breach of an undertaking given to the court by the sending of a letter threatening legal proceedings in relation to a patent. Further and alternatively, the applicant seeks an interlocutory injunction to restrain the respondent from threatening legal proceedings against the applicant and others for infringement of Australian Patent Application No. 645150 or any divisional patent or petty patent arising out of such application.

The second notice of motion was filed 16 February 1995 by the respondent seeking a declaration that the filing of the applicant's notice of motion and the affidavit of Michael David Perry constituted contempt in the face or hearing of the court or contempt in connection with a proceeding in the court and further that the person or persons responsible for the preparation, filing and prosecution of the statement of charge filed with the applicant's notice of motion be identified and be brought before the court to answer such contempt.

The third notice of motion was filed on 20 February 1995 by the respondent and sought an interlocutory injunction restraining the applicant from infringing Petty Patent No. 658110.

In order to avoid having to determine these notices of motion and to finally resolve the patent issues, the parties were offered an early trial date in lieu of the three contested notices of motion. The offer was not accepted.

The letter dated 13 January 1995 which the applicant complains of said :-

"We refer to previous correspondence and statements referring to `the Blacktracker' belt tracking system.

We acknowledge:-

(a) that Patent Application No. 645150 is not yet registered;

(b) we currently have no right to issue legal proceedings for the protection of that patent application.

However, upon the registration of the patent, we reserve our right to sue for any past infringements of the patent that have occurred since April 1991 (being the date of publication of the patent application).

Yours faithfully,

TASMAN-WARAJAY PTY LTD."

The applicant alleges that the respondent breached an undertaking given on 16 December 1994 in the following terms :-

"Unless and until Tasman-Warajay Pty. Ltd. obtains a patent for its training idler, it will not threaten persons with patent infringement proceedings in relation to such training idlers. Tasman-Warajay Pty. Ltd. reserves its rights to notify persons of any pending patent application in respect of its training idler and possible consequences of infringement."

The undertaking was not an undertaking given to the court. That is clear from the circumstances in which the possibility of an interlocutory injunction or undertaking to the court were dealt with by Spender J when the matter came before his Honour on 16 December 1994 :-

"HIS HONOUR: Yes. What has happened to the interlocutory injunction?

MR CARRIGAN: Your Honour, an undertaking has been offered at court this morning by the respondent. The undertaking in its terms is not totally acceptable although it does take a lot of the heat out of our urgency for an urgent hearing date for an injunction. Nevertheless, your Honour, what we would be seeking today is really directions for the filing of affidavit material and for the setting down of a hearing of the matter, at some time convenient to the court, early next year. By that, I mean, if it can be done in February or March, depending - - -

HIS HONOUR: Well, almost certainly, it cannot be. I mean, there is a callover of matters awaiting trial by Cooper J this morning, and it was the intention, I think, that every skerrick of time in February and March that could be set down was going to be set down. But in any event, is it the case that this is to proceed to a final hearing?

MR CARRIGAN: Yes, your Honour. Yes.

HIS HONOUR: So I am not concerned with interlocutory relief, or undertakings to be offered, or what is the situation?

MR CARRIGAN: Well, yes. I think that in terms - the undertakings as
such are not acceptable, but it is probably matters we can address, given some more time; so I think the way to proceed, your Honour, is really to give interim directions and with liberty for the parties to come back to the court if there is demonstrated a need for an urgent hearing on an interlocutory matter.

HIS HONOUR: Well, are you happy with that?

MR SOMERS: Yes, your Honour; and I do have a copy of the undertaking which has been offered to the applicants, if your Honour wishes to see it.

HIS HONOUR: No, I do not, you see. I mean, if the parties want an undertaking to be given to the court, it has to be accompanied with an assurance by the representatives that their clients know what it is all about, because an undertaking is the equivalent of an injunction, and if there is a breach of it, somebody might chew corn. And that is different, you see, to an agreement between the parties which - - -

MR SOMERS: I am not instructed to go that far.

HIS HONOUR: No, all right. If there is any difficulty, however, liberty to apply will be the vehicle by which the matter can be agitated. I will give directions with the intention that this matter can be as ready for trial as - as soon as possible.

MR CARRIGAN: Yes, your Honour."

The applicant submits that notwithstanding that the statement of charge alleges in paragraphs 1, 2 and 3 that the undertaking was given to the court, contempt proceedings are applicable to a breach of an undertaking "whether given to a party or to the court". In support of this submission the applicant relies upon the statements in :-

(a) Oswald's "Contempt of Court" (3rd Ed.)(1910) at p.108

(b) Neath Canal Company v. Ynisarwed Resolven Colliery Company (1875) 10 Ch.App. 450 at 457

(d) Biba Ltd v. Stratford Investments Ltd [1973] 1 Ch. 281 at 286

(e) Miller "Contempt of Court" (2nd Ed.)(1989) at p.411.

In Oswald (at p.108) there appears the statement :-

"An undertaking entered into or given to the Court by a party or his counsel or solicitor is equivalent to and has the effect of an order of the Court, so far as any infringement thereof may be made the subject of an application to the Court to punish for its breach (Neath Canal Co. v. Ynisarwed Resolven Colliery Co. (1875), L.R. 10 Ch. 450; In re the Solicitor of a Defendant, Lawford v. Spicer (1856) 2 Jur. (N.S.) 564; A.-G. v. Boyle (1864), 10 L.T. 290. As to solicitors' undertakings, see further. p.110, post). The undertaking to be enforced need not necessarily be embodied in an order."

The applicant relies upon the first sentence of the statement as supporting the enforcement of an undertaking given by one party to litigation to another on the same basis as an undertaking to the court.

The cases cited in Oswald as authority for the proposition set out above require consideration. The first relied upon by the applicant is the Neath Canal Company case. At pages 453 and 454 of the report it is recorded that there was a settlement of an action which involved the defendants applying to the court for leave to withdraw their pleas in defence and an order being made granting such leave on conditions including the giving of an undertaking not to repeat the trespasses. The undertaking was also signed by the defendants' attorneys. The plaintiffs sought to enforce a breach of the undertaking by injunction. At first instance an injunction was granted without the usual undertaking as to damages. On appeal the Court of Appeal (at 457) was of the opinion that such an undertaking as to damages ought to have been given. The case did not concern proceedings for contempt for breach of undertaking and nothing said by James LJ assists
the applicant. Neither do the two other authorities cited in Oswald assist the applicant. In re the Solicitor of a Defendant: Lawford v. Spicer (1864) 2 Jur (N.S.) 564 was a case of an undertaking given to the court by a solicitor on behalf of the client which was incorporated in an order of the court. A.-G. v. Boyle (1864) 10 LT 290 was a case of a party submitting to a perpetual injunction.

The authorities referred to do not support a reading of Oswald which would allow an undertaking inter partes to be treated as an undertaking given to the court or to be enforced by contempt proceedings as such.

In Windsurfing International Burchett J said (at 113) that he accepted that a breach of an undertaking was to be treated as a breach of an injunction and referred with approval to the decisions in Biba Ltd v. Stratford Investments Ltd [1973] 1 Ch. 281 at 286 and Williams v. Fawcett [1986] 1 QB 604 at 607 as authority for the principle. However Windsurfing International and the two English authorities were cases of undertakings given to the court. They did not concern undertakings given inter partes and do not discuss the enforcement of such undertakings. The citation in Miller (at 411) from Biba has to be put in context. Brightman J said (at 287) :-

"I approach the case before me on the basis that Mr. Lawson adopted a purely passive role and did not aid and abet a contempt in any way. The question to be decided is whether, despite this purely passive role, he can be made liable under R.S.C., Ord. 45, r. 5, in consequence of the breach by the defendant company (which I assume to have taken place) of an undertaking, as distinct from disobedience to an order. In my view, I ought to follow and apply the decision of Warrington J. in Milburn v. Newton Colliery, 52 S.J. 317. That is a clear authority, to my mind, that an undertaking given to the court and embodied in the written order of the court, whereby a party undertakes to abstain from doing an act, has the same effect for the purposes of R.S.C., Ord. 45, r. 5 as a judgment or order enjoining that act. It is a common practice for a plaintiff in this sort
of proceedings to accept an undertaking offered by a defendant as a substitute for the imposition of an injunction. I think it would be a pity to disturb that practice by giving a lesser quality to an undertaking than to an injunction."

It was the last two sentences of this citation which were relied upon by the applicant as supporting a wider statement of what type of undertakings may be enforced by proceedings for contempt. In context no such support can be obtained from the decision in Biba.

Finally, it is submitted that O.40 r. 5(1) of the Federal Court Rules where the rule uses the words "where it is alleged that a contempt has been committed in connection with a proceeding in the court" recognises that a contempt may be committed in circumstances other than breach of an undertaking given to the court. That is correct so far as it goes. The other circumstances include, for example, breach of an injunction, disobeying an order or judgment of the court to do an act, abusing the process of discovery (see the examples given in Borrie and Lowe's Law of Contempt (2nd Ed.) (1983) Chapter 13 at p.392 ff. and the Australian supplement (1988) at 103 ff.) However, O.40 r.5(1) is procedural and not substantive and it creates no rights for breach of an inter partes undertaking which are enforceable by proceedings for contempt. In my view the reasoning of the High Court in Thomson Australian Holdings Pty Ltd v. Trade Practices Commission (1981) 148 CLR 150 at 164-165 is against the enforcement by proceedings for contempt of inter partes undertakings not given as undertakings to the court.

The applicant's notice of motion for contempt therefore fails and will be dismissed.

The applicant's claim for injunctive relief to restrain threatened proceedings is based on s.128 of the Patents Act 1990 (Cth) ("the Act") which provides :-

"128(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a prescribed court, or to another court having jurisdiction to hear and determine the application, for:

(a) a declaration that the threats are unjustifiable; and

(b) an injunction against the continuance of the threats; and

(c) the recovery of any damages sustained by the applicant as a result of the threats.

(2) Subsection (1) applies whether or not the person who made the threats is entitled to, or interested in, the patent or a patent application."

Section 129 of the Act provides :-

"129. The court may grant an applicant under section 128 the relief applied for unless the respondent satisfies the court that the acts about which the threats were made infringed, or would infringe:

(a) a claim that is not shown by the applicant to be invalid; or

(b) rights under section 57 in respect of a claim that is not shown by the applicant to be a claim that would be invalid if a patent had been granted."

Section 131 of the Act provides :-

"131. The mere notification of the existence of a patent, or an application for a patent, does not constitute a threat of proceedings for the purposes of section 128."

For the purposes of this application I will treat the applicant as a person aggrieved within the terms of s.128.

The respondent submits that the letter in question contains no threats but merely states, as was the fact, that the respondent then had no right to issue proceedings for infringement and merely conveyed by way of information that it reserved its rights which are the rights given by s.57 of the Act.

Whether or not the letter of 13 January 1995 contains a threat within the terms of s.128 depends upon the construction to be given to the sentence :-

"However, upon the registration of the patent, we reserve our right to sue for any past infringements of the patent that have occurred since April 1991 (being the date of publication of the patent application)."

The test is whether the language would convey to any reasonable person that the author of the letter in the present case intended to bring proceedings for infringement against the person said to be threatened. It is not necessary that there be direct words that action would be taken. There is some similarity between the present case and Lido Manufacturing Co Pty Ltd v. Meyers & Leslie Pty. Ltd. (1964) 5 FLR 443. There McClelland CJ in equity said (at 450-451) :-

"... Mr. Meyers said that he had a provisional patent in circumstances which would have suggested to an ordinary person that he had the rights which the holder of a patent had and which would become enforceable when the `full patent' was issued, and what was said was more than a mere notification of the existence of an application for a patent. However, the fact that s.121(2) is inapplicable does not necessarily mean that what was said amounted to a threat or threats within the meaning of s.121(1).

Mr. Ramsden agreed that the discussion was quite a friendly one and that Mr. Meyers did not say `I am going to take action against Farmers' and Mr. Faulkner agreed that Mr. Meyers did not say `If you do not withdraw the goods from sale I am going to take proceedings against the company', or words to that effect. Indeed Farmers had been a customer of the defendant for a long time and Mr. Meyers was no doubt anxious not to say things which would offend its officers and lose him custom and it is unlikely that he would have bluntly said, `If you don't withdraw the goods from sale
I will in due course take proceedings against Farmers'.

However, the absence of direct words by Mr. Meyers, saying that he would take action, does not involve in my view that no threat within the meaning of s.121(1) was made: cf. Luna Advertising Co. Ltd. v. Burnham & Co. (1928) 45 R.P.C. 258, at p.260; Willis & Bates Limited v. Tilley Lamp Co. (1943) 61 R.P.C. 8, at p.11; C. & P. Development Co. (London) Limited v. Sisabro Novelty Co. Limited (1953) 70 R.P.C. 277, at p.282.

I am of the opinion that what Mr. Meyers said to the officers of Farmers was sufficient to indicate to them that if the goods were not withheld from sale Farmers would be infringing rights belonging to Mr. Meyers' company for which subsequently Farmers would be legally liable to his company and that Mr. Meyers did threaten Farmers with an action or proceeding for infringement within the meaning of s.121(1).

It was not suggested, nor could it have been suggested, that the defendant could satisfy the court that the acts in respect of which proceedings were threatened would constitute an infringement of a patent or an infringement of rights within the provisions of s.121(1)(a) or (b). Accordingly the threats were unjustified."

This is an application for an interlocutory injunction. Accordingly it is only necessary that the applicant establish that there is a serious question to be tried and that the balance of convenience is in favour of the making of an order.

In my opinion there is a serious question to be tried that the letter amounts to an unjustifiable threat. The statement that the respondent reserves its right to sue does not save it. It is a threat to sue for infringement if the respondent obtains a right to do so in the future by virtue of s.57 of the Act. It is a threat to sue for infringement if the respondent is so minded on a future occasion. It is no less a threat that the respondent may not be so minded. The purpose of the letter is clearly to dissuade the recipients other than the applicant from buying tracking systems for conveyor belts from the applicant and to dissuade the applicant from offering such equipment for sale.

The threat is presently unjustified. It is not saved by the fact that rights may be obtained at some future time. Section 129 does not give a person a right to make threats if the circumstances provided for in paragraphs (a) or (b) of the section are made out; the section only operates as a statutory defence to proceedings against conduct which is otherwise unlawful (Townsend Controls Pty Ltd v. Gilead (1989) 14 IPR 443 at 448; Mechanical Services (Trailer Engineers) Ltd v. Avon Rubber Co Ltd [1977] RPC 66 at 74-75).

The onus of proving justification is on the patentee or the holder of the patent application. The onus of establishing invalidity of the patent, if such is alleged, lies on the applicant for relief. The respondent incorrectly, in my view, submits that :-

"... the respondent has a statutory defence to the claim of `threats' pursuant to section 129(b) and section 57 of the Patents Act 1990 in that the standard patent application has not been shown by the applicant to be invalid".

Likewise the submission that :-

"It would be pointless for the Court to now grant an injunction against the continuance of any threats on the part of the Respondent as the Petty Patent has now been granted. Any relief claimed by the Applicant in relation to the alleged unjustified threats must now be limited to `damages' of any loss suffered by it as a result of the alleged unjustified threats."

misunderstands the nature of the statutory cause of action and the operation of the onus on the respondent to negative the allegation that the threats are unjustifiable by establishing the circumstances in either (a) or (b) of s. 129 of the Act.

Because the market for this type of equipment in the coal industry is limited and because the threats have been made to all potential buyers, the impact of the threats is potentially very damaging. Further, the letter of 13 January must be placed in
the context of express threats of proceedings for infringement in September, November and December 1994 which led to the undertaking being given on 16 December 1994. The reservation in that undertaking was "to notify persons of any pending patent application in respect of its training idler and the possible consequences of infringement". The letter of 9 January 1995 arguably goes substantially beyond that reservation and therefore is not saved by s.131 of the Act.

On the material before me it is not possible to determine the strength of any possible argument of justification. The expert evidence is divided as to whether the product sold by the applicant would infringe the claims of the invention claimed in Patent Application 645150 or Petty Patent 658110. Because of the nature of the market and the difficulty in obtaining evidence that purchasers would have dealt with the applicant but for the threats of the respondent, I am not persuaded that damages alone would be an adequate remedy. The conduct of the respondent has been to attempt to force the applicant out of the market or substantially limit its market share by threats and there is nothing on the material to persuade me that the respondent will not continue such conduct pending trial. The balance of convenience is in favour of making an order for interlocutory injunctive relief.

I turn to the notices of motion filed by the respondent.

The statement of charge filed on 17 February 1995 by the respondent in conjunction with its notice of motion for contempt, alleges :-

"(i) By its Notice of Motion, Statement of Charge, and Affidavit of MICHAEL DAVID PERRY, all filed herein on or about the 3rd day of February, 1995 the Applicant has alleged:-

`that the Respondent is in breach of an undertaking given to the Court on behalf of the Respondent by its Counsel on or about the 16th December, 1994 as particularised in paragraphs 1, 2 and 3 of the Applicant's Statement of Charge';

(ii) No such undertaking was given to the Court by the Respondent or its Counsel either on the 16th December, 1994 or at any other time."

It is clear that no undertaking was offered by the respondent to the court, although it would appear that an undertaking was offered inter partes in the precincts of the court and this fact communicated to the court. The respondent contends that to allege that an undertaking was given to the court when that was factually incorrect and to attempt to enforce it by contempt proceedings was itself "contempt in the face or hearing of the court, or alternatively contempt in connection with proceedings in the court."

In my view the matters complained of do not satisfy the description of "contempt in the face or hearing of the court", whether one adopts a restrictive or an expansive view of those phrases (see European Asian Bank AG v. Wentworth (1986) 5 NSWLR 445 at 453-458; Miller at pp.99-100). The dissenting view of Laskin J in McKeown v. R [1971] 16 DLR (3d) 390 at 408 that anything which is within the knowledge of the court without the need for the calling of further evidence occurs "in the face or hearing of the court" is not a position with authoritative or widespread acceptance in Australia.

It is submitted by the respondent's counsel that the conduct complained of was a contempt in connection with legal proceedings because the legal representatives of the applicant were attempting to obtain a result in the proceedings different from that which would follow in the ordinary course. In support of such a contention counsel referred to Ex parte Bellanto Re Prior (1963) 63 SR (NSW) 190 at 199. The decision in Bellanto was concerned with a verbal exchange between a barrister and a judge in the course of cross-examining a witness in a criminal trial before a jury. It was a case of an alleged contempt in the face of the court. The court (Herron ACJ, Sugarman and Ferguson JJ) said (at 199) :-

"The question always is, in such a case as the present, did the barrister's conduct tend to interfere with the course of justice? Was he attempting to obtain a result of legal proceedings different from that which would follow in the ordinary course?"

In Bellanto (63 SR (NSW) at 198) the trial judge who fined for contempt was of the view that counsel :-

"... went out of his way to so conduct himself that I would order him to leave the court and thus he would achieve another trial for his client, which he was not able to obtain legally. He wanted to get it by this other method. I told him, however he conducted himself I did not propose to discharge the jury, and that I would deal with him later in the day, which I did."

That the court was concerned with conduct allegedly engaged in to procure the aborting of the trial and a new trial in lieu of the then trial proceeding to a conclusion in the ordinary course is also apparent from the court's reference to the decision in R v. Castro; Skipworth's Case (1873) LR 9 QB 219. There, Blackburn J said (at 232-233) :-

"Now, it may happen, and in many cases does happen, that persons interfere for the purpose of preventing that ordinary course of justice. There are many decided cases in which such an attempt has been made; sometimes it has been done by an attack upon the judge, though
comparatively rarely. Sometimes it has been done by trying to induce the judge to change his opinion by flattery, and even in some cases by offering bribes to him. There have been attempts made to change the ordinary course and cause the judge to take a particular view of the matter. More commonly the mode adopted has been that of an attempt to influence the trial by attacking, deterring, and frightening witnesses, or by commenting on the case, or, as it is called, appealing to the public, and endeavouring, by statements made ex parte, without the other side being heard, and without the means of testing the matter which the law requires, to prejudge the case and prejudice the trial; and in all those ways great mischief may be done by interfering with the due and ordinary course of law, and causing justice, whether criminal or civil, not to be administered in the way which is ordinarily pursued. ... When an action is pending in the Court and anything is done which has a tendency to obstruct the ordinary course of justice or to prejudice the trial, there is a power given to the Courts, by the exercise of a summary jurisdiction, to deal with and prevent any such matter which should interfere with the due course of justice; and that power has been exercised, I believe, from the earliest times that the law has existed."

That is not the present case.

If there is any ground for complaint it must be on the basis that there has been an abuse of the process of the court by the doing of an act which involves either a falsehood intended to deceive the court or the misuse of the process thereby prejudicing other persons (see Borrie and Lowe at p.310). It is not merely that a proceeding is an abuse of process that gives rise to a contempt of court. Rather, it is the bringing of a feigned issue so as to conceal its true nature from the court (R v. Weisz; Ex parte Hector MacDonald Ltd [1951] 2 KB 611 at 620) or to suppress or give false facts (R v. B (1971) 20 FLR 368). The decision of the Full Court of Western Australia Supreme Court in R v. B would support the conclusion that the suppression or giving of false facts must be deliberate and amount to a wilful false act before the conduct constitutes contempt (see Jackson CJ at 370 and Burt J at 377; see also Borrie and Lowe at p.311). The statement of charge against the applicant merely alleges that the applicant states an undertaking was given to court when in fact no undertaking was given. By itself that is insufficient. If it is alleged against the applicant that it deliberately filed the notice of motion, statement of charge and material in support to wilfully mislead the court by knowingly giving false facts, namely by stating that an undertaking was given to the court when no such undertaking was given, the failure to properly state the charge is fatal to the proceeding, for the court will not act unless there is a specific charge, distinctly stated, and an opportunity to answer given (Doyle v. The Commonwealth of Australia (1985) 156 CLR 510 at 516; Coward v. Stapleton (1953) 90 CLR 573 at 579-580). In the present case Mr Perry was not, nor was it sought that he be, cross-examined on his affidavit as to the basis upon which he deposed that the undertaking was given to the court, let alone on the basis that he was a party to an attempt to knowingly mislead the court.

On the hearing, notwithstanding the allegations that the undertaking was given to the court, no attempt was made to argue that the undertaking had in fact been given to the court. Rather, as appears earlier in these reasons, it was sought to argue that the undertaking was given inter partes on 16 December 1994 at court in these proceedings and was therefore enforceable by action for contempt. An argument which failed and one incidentally which the respondent submits was doomed to failure because it was not pleaded and particularised in the statement of charge.

The respondent's remedy was not for contempt but to have the applicant's motion for contempt struck out or stayed as an abuse of process because it was misconceived and not maintainable or not brought bona fide.

The respondent's notice of motion for contempt will be dismissed.

The respondent by notice of motion filed 20 February 1995 has sought an injunction to restrain the applicant from allegedly infringing Australian Petty Patent No. 658110 pending trial. The alleged infringement is the supply or offer to supply by way of sale a conveyor belt tracking frame known as "Beltracker: Mark II".

The respondent relies upon the evidence of Mr Claude Paul Anese, its patent attorney, and Mr Dudley Roach, a mechanical engineer, to make out a serious question to be tried of infringement of the petty patent. Mr Anese expressed the view that the "Beltracker: Mark II" possessed both a slewing means and a tilting means within the meaning of claim 1 of the Petty Patent. Mr Roach deposed that both the "Beltracker: Mark II" and the respondent's product the "Blacktracker" employ the same principle to correct tracking problems. The applicant relies upon an affidavit of Mr Trevor Dredge, a patent attorney and Bachelor of Applied Science, deposing that the "Beltracker: Mark II" has neither a slewing nor tilting means within claim 1 of the Petty Patent. The applicant also relies on a report of Dr Duncan Gilmore, a mechanical engineer prepared for Uni-Quest wherein Dr Gilmore expressed the opinion that "Beltracker: Mark II" has no independent tilting means within the meaning of Claim 1. There is therefore a significant dispute on the issue of infringement.

Although a serious question to be tried has been established, there remains the question of the balance of convenience. The strength of the respondent's claim for infringement and the weight to be given to it are neutral. There is eminently qualified opinion in favour of each side.

The respondent contends that if it succeeds the applicant is a "$2.00 company" without assets. In consequence it alleges that any award of damages or account of profits is unlikely to be satisfied and therefore an award of damages would be an inadequate remedy. If it cannot recover damages it argues that it will not receive an adequate return on the $300,000.00 plus invested in research and development of the tracking system. On the respondent's figures, thirty percent (30%) of its turnover and fifty percent (50%) of its profit as at September 1994 came from sales of the "Blacktracker" product. However, the respondent submits that since that time sales have fallen off dramatically because of the sale by the applicant of the allegedly infringing product.

The lost sales suffered by the respondent appear to be attributable to a number of factors. Firstly, that the applicant in September 1994 was a selling agent of the respondent and was responsible for generating the sales; secondly, that Mr Perry was the sales representative of the respondent and also generated the sales; thirdly, that the respondent terminated supply of its product to the applicant and Mr Perry in September 1994 for reasons unrelated to any alleged infringement of the patent application; and fourthly that consequent upon such terminations, the respondent effectively had no-one selling its product. That is, the immediate cause of the respondent's loss was its own conduct. All the applicant did was to find a supplier of frames to which it attached its own survey rollers and then supplied the completed product into the market vacated, albeit temporarily, by the respondent. The respondent also alleges that its loss of market
share to the applicant was caused by use of confidential information by its former employee Mr Perry to approach its clients and undercut it on price. There is no evidence to support this allegation.

The respondent either itself or through associated companies, has other product ranges available which it sells and which generate up to half of its income. Further, the applicant submits, the respondent holds patents in overseas countries and can sell and does sell the product overseas. In these circumstances the continued trading of the applicant entails no risk that the respondent will cease trading or suffer irreparable harm.

On the other hand, the applicant relies on sales of the "Beltracker: Mark II" for ninety percent (90%) of its business. If an injunction is granted the applicant will be put out of business and Mr Lewis will lose a substantial part of his superannuation which he has invested in the business. If the applicant goes out of business, that will impact seriously on Austbelt Splicing Systems (International) Pty Ltd ("Austbelt") of Mackay which is the manufacturer and supplier of the frames to the applicant. Austbelt is not a party to these proceedings and has not been sued for infringement of the petty patent by the respondent. There is a real risk, it is submitted, that if the applicant were closed down it could not re-open and effectively re-enter the market.

There is no doubt that the respondent wishes to force the applicant out of business and out of the market at the earliest opportunity. Because of the limited market for the product the respondent says that it would be "commercial suicide" to attempt to
restrain the end users of the "Beltracker Mark II" from using that product. In those circumstances the respondent submits that its only effective remedy is to force the applicant out of the market by obtaining a court order.

In the final analysis the risk of irreparable damage to the applicant swings the balance of convenience against granting the injunction. As the decision in Air Express Ltd v. Ansett Transport Industries (Operations) Pty Ltd (1981) 146 CLR 249 demonstrates, it is not sufficient to submit that any loss consequent upon the failure of the business will be covered by an undertaking as to damages. There would remain real questions as to whether but for the injunction the applicant would have survived having regard to its low capitalisation, and, as to the quantification of the value of the business which failed, including its prospects for the future. There is nothing to prevent the respondent from competing in terms of marketing, price and product, to win back market share and there is nothing to suggest that the respondent will entirely lose its market for the sale of its product. On the material there is evidence of replacement parts being sold for conveyor belt tracking systems already in place which include systems with frames supplied by the respondent. The applicant by its directors has undertaken to keep records of all sales to enable the respondent, should it succeed in the proceedings, to make an election between an award of damages and an account of profits.

The respondent's continuing ability to trade in the belt tracking product and others, both in Australia and overseas, and the maintenance of records in respect of such sales as the applicant may make of the competing system are factors weighing against the making of an order. The potential consequences of damage to the applicant and through
it Austbelt and companies and persons associated with it by the making of an order, outweigh any potential damage to the respondent by not making such an order.

The respondent's application for an interlocutory injunction is dismissed.

I will hear the parties on costs.

On the notice of motion filed 3 February 1995 THE COURT ORDERS THAT :-

UPON the applicant giving the usual undertaking as to damages :-

2. The notice of motion be otherwise dismissed.

On the notice of motion filed 16 February 1995 THE COURT ORDERS THAT :-

1. The notice of motion be dismissed.

On the notice of motion filed 20 February 1995 THE COURT ORDERS THAT :-

1. The notice of motion be dismissed.

I certify that this and the preceding twenty-one (21) pages are a true copy of the reasons for judgment herein of his Honour Justice Cooper.

Date: 5 October 1995

Associate

Counsel for the Applicant: Mr C. Carrigan

Solicitors for the Applicant: Xavier Kelly & Co.

Counsel for the Respondent: Mr T. Somers

Solicitors for the Respondent: MacDonald & Michel

Date of Hearing: 2 March 1995

Place of Hearing: Brisbane

Date of Judgment: 5 October 1995

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