FEDERAL COURT OF AUSTRALIA

ESCO Corporation v Wundowie Foundry Pty Ltd [2003] FCA 587

PRACTICE AND PROCEDURE – application for transfer of proceedings to Western Australian District Registry of Federal Court – allegedly infringing conduct occurred in Western Australia - whether location of allegedly infringing conduct is compelling factor in determining most appropriate Registry in intellectual property disputes – location of head offices – locations of professional advisors – location of potential witnesses – cases for and against transfer evenly balanced – possibility of hearing being held in Western Australia

PATENTS – application for transfer of proceedings to Western Australian District Registry of Federal Court – – allegedly infringing conduct occurred in Western Australia – whether location of allegedly infringing conduct is compelling factor in determining most appropriate Registry in intellectual property dispute

National Mutual Holdings Pty Ltd v Sentry Corporation (1988) 19 FCR 155

ESCO CORPORATION and BRADKEN MINING SPV PTY LTD ACN 098 301 001 v WUNDOWIE FOUNDRY PTY LTD ACN 009 123 764

N 185 of 2003

BRANSON J

3 JUNE 2003

SYDNEY

THE COURT ORDERS THAT:

1.                  The application be dismissed.

2.                  The costs of the notice of motion dated 7 May 2003 be the applicants’ costs in the cause. 

REASONS FOR JUDGMENT

1                     The respondent has moved the Court pursuant to a notice of motion dated 7 May 2003 for an order that the proceedings be transferred to the Western Australian District Registry of the Federal Court of Australia.  Although the matter was listed this morning for directions only the parties have requested the Court, and the Court has agreed, to hear the motion this morning.  The parties have been heard in full on the merit of the motion.

2                     The question to be determined on the motion is:

‘where can the case be conducted or continued most suitably bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the Court?’National Mutual Holdings Pty Ltd v Sentry Corporation (1988) 19 FCR 155 at 162

3                     The proceeding concerns allegations of patent infringement and will, it appears, involve a cross claim for patent revocation.  The respondents rely heavily on the fact that the conduct which is the subject of the proceedings, namely the alleged infringement, is conduct which occurred in Western Australia.  There are classes of cases in which the place of the conduct the subject of the litigation bears considerable significance on an application of this kind.  Industrial matters will often fall within such a class.  Ordinarily the place where industrial action is taken will bear heavily on the identity of the Registry in which an industrial proceeding in relation to that action should be conducted.  However, in my view, the place of an alleged infringement of an intellectual property right may not, of itself, be a compelling, or even a powerful, factor so far as the identity of  the most suitable Registry for the proceeding is concerned.  The place where the alleged infringement took place might, in a particular case, be almost fortuitous.  Much will depend on the particular circumstances of the case.  In this case I conclude that the place of the alleged infringement is only one factor to be evaluated, together with others, in determining the most suitable place for the proceeding to be conducted.

4                     In this case the New South Wales District Registry is plainly the most convenient place for the conduct of the proceeding so far as the applicants are concerned.  The first applicant has no place of business in Australia.  The head office of the Australian operations of the second applicant is in New South Wales.  All instructions in relation to the second applicant’s prosecution of this proceeding will emanate from individuals who are based in New South Wales.  The professional advisers of the applicants are to be found in Sydney.  On the other hand, so far as the respondent is concerned, Western Australia is the place where it would be most convenient for it to litigate.  Its principle place of business is in Western Australia.  The product which is alleged to infringe the applicants’ patent is manufactured in Western Australia and is sold from Western Australia.  The respondent’s solicitors and patent attorneys of choice are in Western Australia.

5                     The identity of the witnesses that the parties respectively will wish to call on the hearing of this proceeding is not yet known with any certainty.  The likely location of potential witnesses is not a factor to which I give great weight on this application.  It is open to the parties at any time to seek orders with respect to place, time and mode of the hearing. 

6                     Where, as here, the respective cases for and against transfer are evenly balanced, the applicants are, it seems to me, entitled to hold the proceeding at the registry of their choice, namely the New South Wales District Registry.  The Court is not able to be satisfied that there is sound reason overall to direct that the proceeding be conducted elsewhere, namely in the Western Australia District Registry.  This conclusion does not reflect in any way on the merits of any application that might later be made for the hearing of this matter to be conducted either wholly or in part in Perth. 

7                     The application is dismissed.

Associate:

Dated:              13 June 2003