FEDERAL COURT OF AUSTRALIA

Bitech Engineering v Flameglow Pty Ltd (in liq) [2010] FCA 1271

THE COURT ORDERS THAT:

1.                  The Notice of Motion filed by the applicant on 10 November 2010 be dismissed. 

2.                  There be no orders as to the costs of that Notice of Motion.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

1                     On 30 September 2010, I delivered a judgment (Bitech Engineering v Flameglow Pty Ltd (In Liquidation) [2010] FCA 1079) in which, pursuant to s 500 of the Corporations Act 2001 (Cth), I granted leave to the applicant to proceed against the respondent for the purpose of seeking certain specific orders which had been set out in a Notice of Motion filed by the applicant on 12 August 2010.  Leave was necessary because the respondent is in liquidation.  At the time I delivered that judgment, the question of infringement had been settled, at least to the level of the Full Court of this Court, and the applicant was seeking to obtain information as to the sales of the infringing products which had been made by the respondent with a view to electing the form of pecuniary relief which it would pursue.

2                     In the course of proceeding down that path, the applicant became aware that Ogilvie Distributors Pty Limited (Ogilvie Distributors), a company which appears to be related to the respondent and which appears to be controlled by Mr Donald Ogilvie, had also apparently sold products which the applicant will contend infringed its patent.  In my judgment of 30 September 2010, I made orders which, to some extent, facilitated the applicant’s inquiries as to the sales made by Ogilvie Distributors. 

3                     The applicant has now filed a Notice of Motion in which it seeks leave to proceed against the respondent for the sole purpose of maintaining the current proceeding so that Mr Ogilvie and Ogilvie Distributors might be joined as second and third respondents to the current proceeding.  The applicant is now unlikely to proceed against the respondent. 

4                     The applicant has foreshadowed a case on infringement against Ogilvie Distributors which, in substance, is the same case as was put against the respondent in this proceeding and other respondents in certain related proceedings (Bitech Engineering v Garth Living Pty Ltd NSD 1681 of 2006; Bitech Engineering v Bunnings Group Limited NSD 43 of 2007; Bitech Engineering v The Muir Electrical Company Proprietary Limited NSD 44 of 2007; and Bitech Engineering v Hotpoint (Aust) Pty Ltd NSD 2056 of 2007).  In this proceeding and in three of the four related proceedings, I held that the applicant’s patent had not been infringed but the Full Court reversed that holding and made appropriate orders reflecting the circumstance that, in its view, the patent had been infringed. 

5                     It is therefore quite obvious that, at the time when the Notice of Motion which is presently before me was filed, the question of infringement of the applicant’s patent had been considered both by me as the trial judge and by a Full Court on appeal.  Judgments at both levels had been given.  Neither Mr Ogilvie nor Ogilvie Distributors has been a party to this proceeding at any time.  I do not think that the filtering process contemplated by s 500 of the Corporations Act includes granting leave pursuant to that section purely for the purpose of running a whole new case against new parties in circumstances where judgments on liability have already been given.  Whilst it may seem to be a practical course, I think that it is undesirable that, after judgments have been delivered and further inquiries made in aid of the enforcement of the last of those judgments, an applicant should be permitted to add fresh parties and raise an entirely new case. 

6                     Second, whether or not s 500 of the Corporations Act was in play, I think that the course proposed by the applicant is undesirable.  It may have consequences for the putative respondents which I cannot presently see and which would be unfair.  It seems to me that it is not enough for the applicant to submit, as it does, that it was not aware of the involvement of Ogilvie Distributors in the sale of the infringing products.  This is a circumstance which ordinarily arises and does not justify the course proposed by the applicant.  As far as Mr Ogilvie is concerned, it was always open to the applicant to have joined him insofar as the conduct of the present respondent is concerned. 

7                     For these reasons, I propose to dismiss the Notice of Motion filed by the applicant on 10 November 2010.  I will not make any order for costs as the liquidator of the respondent has indicated that he is unable to participate in the future conduct of this proceeding because of a lack of funds and has not sought any order for costs in respect of the present Motion. 

8                     I should add that, in my opinion, it is quite open to the applicant to bring a fresh proceeding against Ogilvie Distributors and Mr Ogilvie and, as I see matters at the moment, there does not appear to be any fundamental difficulty with the applicant proceeding in that way.

9                     The advantage of requiring the applicant to commence a fresh proceeding is that the matter can be looked at in light of the Full Court’s decision but also in a way which preserves to the putative respondents any particular defences that they may legitimately be able to raise. 

10                  I should also add that, in this matter and in three of the four related matters, I have fixed for hearing commencing on 27 April 2011 the applicant’s claim for pecuniary relief in light of the Full Court’s decision.  It would obviously make sense for any fresh proceeding along the lines of that foreshadowed by the applicant to be programmed through the interlocutory stages with a view to being included in that fixture.  In saying that, I do not wish to be thought to be prejudging any question of liability in the foreshadowed fresh proceeding.  However, I have been informed from the Bar table that it is likely the applicant will make an application for summary judgment on liability in the foreshadowed fresh proceeding.

11                  It may well be that, in light of the Full Court’s decision, liability might be appropriately dealt with in a summary fashion.  I have also indicated to Counsel for the applicant that I am quite prepared to entertain an appropriately founded application for summary judgment on liability on an urgent basis so that any claims for pecuniary relief in the foreshadowed fresh proceeding can be joined with the fixture of the other matters to which I have referred commencing on 27 April 2011.  

12                  There will be orders accordingly. 

Associate:

Dated:         18 November 2010