FEDERAL COURT OF AUSTRALIA

N and E Bowder Pty Ltd v Australian Keg Company Pty Ltd [2014] FCA 288

THE COURT ORDERS THAT:

1.    The applicants have leave to appeal against the orders of Dowsett J given on 14 March 2014.

2.    The applicants file and serve a notice of appeal by 4.00 pm on 4 April 2014.

3.    Costs are reserved.

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

REASONS FOR JUDGMENT

1    The applicants have applied for leave to appeal against a judgment of a single judge of this Court.

2    The respondent is the holder of a patent in respect of a field bin for the storage of grain. The applicants commenced proceedings seeking relief against the respondent for the making of “threats that are unjustifiable” pursuant to s 128(1) of the Patents Act 1990 (Cth). The respondent cross-claimed for damages for infringement of its patent.

3    On 24 December 2013, the primary judge published reasons for judgment, holding that the applicants had infringed the patent. His Honour made no orders at that stage.

4    The applicants filed their application for leave to appeal without any orders having been made. Their application was premature. Reasons for judgment are not themselves a “judgment” for the purposes of s 24 of the Federal Court of Australia Act 1976 (Cth), a “judgment” being a formal order by which the court disposes of the matter before it: Ah Toy v Registrar of Companies (1985) 10 FCR 280 at 285-286; Australian Telecommunications Commission v Colpitts (1986) 12 FCR 395 at 398-399; Hi-Fert Pty Ltd v Kiukiang Maritime Carriers Inc (1998) 86 FCR 374 at 378; Traxys Europe SA v Balaji Coke Industry Pvt Ltd (No 2) (2012) 201 FCR 535 at 552, [74]; and Harmer v Oracle Corporation Australia Pty Limited (2013) 299 ALR 236 at [21]-[22] and [33].

5    I heard argument upon the application for leave to appeal, but adjourned the application to allow the applicants to make further submissions or await the making of orders by the primary judge.

6    On 14 March 2014, the primary judge made orders declaring that each of the applicants had infringed the patent. Accordingly, the application for leave to appeal may now be decided.

7    Before considering the application, there is one further matter I should mention. The primary judge had ordered a separate trial of the issue of infringement. Damages have not yet been determined.

8    There is a division of authority in this Court as to whether a declaration made in respect of a separate issue which does not dispose of the whole proceeding is interlocutory or final. A long line of authority holds that such a judgment is interlocutory: see, for example, the judgments of the Full Court in Australian Builders’ Labourers’ Federated Union of Workers – Western Australian Branch v J-Corp Pty Limited (1993) 42 FCR 452 at 454; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 242; Caboche & Anor v Ramsay & Ors (1993) 119 ALR 215 at 226; NZI Securities Australia Ltd v Poignand (1994) 51 FCR 584 at 593-594; Fraser v NRMA Holdings Ltd (1995) 55 FCR 452 at 457; Construction, Forestry, Mining and Energy Union v Employment Advocate [2001] FCA 1442 at [8]-[9]; Lewis v Hall [2005] FCAFC 251 at [7]. These cases applied the reasoning of the High Court in Computer Edge Pty Ltd v Apple Computer Inc (1984) 54 ALR 767 at 767-768.

9    Other decisions of this Court support the view that a declaration made in respect of a separate issue which does not finally dispose of the case is a final judgment, so that leave to appeal is not required. That view was strongly expressed by Finkelstein J in Warramunda Village Inc v Pryde (2002) 116 FCR 58 at [65]-[70]. In Ho v Grigor (2006) 151 FCR 236, the Full Court cited those passages from the judgment of Finkelstein J with approval. However, the Full Court was not directly deciding the question addressed by Finkelstein J and its apparent approval of those views appears to be obiter dicta. For present purposes, I consider that I am bound by the earlier Full Court decisions to conclude that the judgment was interlocutory and that leave to appeal is required.

10    Section 24(1A) of the Federal Court of Australia Act provides that an appeal shall not be brought from an interlocutory judgment unless the Federal Court or a judge gives leave to appeal.

11    The Court has a wide discretion as to whether to grant leave to appeal from an interlocutory judgment, but generally leave will not be granted unless the decision in question is attended with sufficient doubt to warrant the grant of leave and substantial injustice would result from a refusal of leave: DÉcor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398-399; Minogue v Williams [2000] FCA 125 at [19]. Leave will more readily be granted where the interlocutory decision effectively determines a substantive right: DÉcor Corporation at 400; Minogue v Williams at [19]. In such a case, leave will usually be granted if there is any doubt about the decision at first instance: Johnson Tiles Pty Ltd v Esso Australia Ltd (2000) 104 FCR 564 at [43].

12    The applicants submit that there is doubt about the judgment in two respects described in the notice of appeal. The applicants attribute to the primary judge errors in determining that their product contained two particular features or integers of the patent, resulting in an infringement of the patent. It is sufficient, for present purposes, to say that I am satisfied that the applicants have at least an arguable case in the proposed appeal.

13    I consider that substantial justice will result if leave to appeal is not granted because the judgment determines the parties’ substantive rights and is likely to have economic consequences for the applicants. I note that if the issues in the case had not been split, the applicants would have been entitled to appeal as of right.

14    For these reasons, I will grant the applicants leave to appeal. I will order that the applicants file and serve a notice of appeal within 7 days, that is, on or before 4 April 2014.

Associate:

Dated:    28 March 2014