FEDERAL COURT OF AUSTRALIA

Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2020] FCA 811

ORDERS

THE COURT ORDERS THAT:

1.    The Interlocutory application of the first and second respondents dated 20 December 2019 and the Interlocutory application of the third and fourth respondents dated 20 December 2019 be dismissed.

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

REASONS FOR JUDGMENT

BESANKO J:

Introduction

1    There are two interlocutory applications dated 20 December 2019 before the Court. The first application is brought by the first and second respondents, and the second by the third and fourth respondents. In both applications, an order is sought that I disqualify myself in this proceeding and that the proceeding be referred to another judge of the Court for case management and the hearing and determination of the claims made by the parties. The broad basis of the applications is that an apprehension of bias arises by reason of my involvement in hearing a previous proceeding between the applicants and the first and second respondents in this proceeding.

The Facts

2    The applicants in this proceeding are Australian Mud Company Pty Ltd and Reflex Instruments Asia Pacific Pty Ltd, and the respondents are Globaltech Corporation Pty Ltd, Globaltech Pty Ltd, Boart Longyear Limited and Boart Longyear Australia Pty Ltd. The proceeding involves a claim by the applicants that the respondents have infringed claims in Australian Standard Patent No 2010200162 entitled “Core Sample Orientation” (the Patent). The fourth respondent, Boart Longyear Australia Pty Ltd, has brought a cross-claim in which it alleges that the Patent is invalid.

3    Globaltech Corporation Pty Ltd and Globaltech Pty Ltd (the Globaltech respondents) are represented by one firm of solicitors (Watermark Intellectual Property Lawyers), and Boart Longyear Limited and Boart Longyear Australia Pty Ltd (the Boart Longyear respondents) are represented by a different firm of solicitors (Bird & Bird). However, on these applications, all four respondents were represented by the same counsel.

4    I have previously considered a claim by the applicants against the Globaltech respondents that they have infringed claims in the Patent and a cross-claim by the Globaltech respondents that the Patent is invalid (the previous proceeding). On 26 November 2018, I delivered reasons in which I indicated that I had reached the following conclusions: (1) the Priority Date of the claims in suit is 3 September 2004 and the claims in suit are valid; (2) each of the respondents has infringed the claims in suit; and (3) the applicants are not entitled to additional damages under s 122(1A) of the Patents Act 1990 (Cth) (Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2018] FCA 1839 (the previous reasons)).

5    I made orders in the previous proceeding on 14 December 2018 and those orders were as follows:

THE COURT DECLARES THAT:

1.    The respondents and each of them have infringed claims 1-4, 7-10, 16-17, 21-24, 27-28, 33-40, 46-48, 54 and 65 of Australian Standard Patent No. 2010200162 entitled “Core Sample Orientation” (the Patent).

2.    Reflex Instruments Asia Pacific Pty Ltd, the second applicant, is the exclusive licensee of the Patent.

THE COURT CERTIFIES THAT:

3.    Pursuant to s 19 of the Patents Act 1990 (Cth), the validity of each of claims 1-4, 7-10, 16-17, 21-24, 27-28, 33-40, 46-48, 54 and 65 of the Patent was questioned in this proceeding.

THE COURT ORDERS THAT:

4.    The respondents and each of them be permanently restrained, whether by themselves, their directors, officers, servants, agents or however otherwise from infringing the Patent in Australia during the term of the Patent, including without limitation by, without licence of the applicants:

(a)    making, hiring, selling or otherwise disposing of, offering to make, hire, sell or otherwise dispose of, using, importing, exporting, or keeping for the purpose of doing any of those things, any core sample orientation tool or system according to any of claims 33-40, 46-48, 54 or 65 of the Patent, including without limitation the core sample orientation tools developed and sold under the names “Orifinder v3A”, “Orifinder v3B”, “Orifinder v5” or “TRUCORE” (the Orifinder Tools);

(b)    using any method of providing an indication of the orientation of a core sample according to any of claims 1-4, 7-10, 16-17, 21-24, 27-28 or 65 of the Patent;

(c)    supplying or offering to supply any core sample orientation tool or system capable of being used in a method of providing an indication of the orientation of a core sample according to any of claims1-4, 7-10, 16-17, 21-24, 27-28 or 65 of the Patent;

(d)    doing the acts referred to in sub-paragraph (c) above together with the giving of, or the publication of advertisements containing, instructions or inducements for the use of such a core sample orientation tool or system in a method of providing an indication of the orientation of a core sample according to any of claims 1-4, 7-10, 16-17, 21-24, 27-28 or 65 of the Patent; or

(e)    authorising, procuring, inducing or joining in a common design with any person to do any act referred to in sub-paragraphs (a) to (d) above.

5.    The first respondent’s Cross-Claim filed on 24 August 2016 be dismissed.

6.    Subject to orders 14 to 16 below, within 28 days each of the respondents, or their nominated agents, are to destroy all Orifinder Tools, and any other core sample orientation tools or systems referred to in orders 4(a) and (c) above, and all advertising, instructional and promotional material relating thereto or referred to in order 4(d) above, in the possession, custody, power or control of the respondents.

7.    By 4pm on 25 January 2019, the first respondent is to file an affidavit (by an officer with sufficient knowledge of the affairs of the company) setting out the total number of Orifinder Tools that the respondents have sold or supplied (including by way of export) to date, annexing supporting documents.

8.    There be an inquiry as to damages or profits in respect of the respondents’ infringement of the Patent by the Orifinder Tools, such inquiry to be listed for directions before Justice Besanko on a date and time to be fixed at the convenience of the Court.

9.    The respondents pay the applicants’ costs of the proceeding to date, including any reserved costs, as agreed or assessed.

10.    The applicants file any interlocutory application and supporting affidavits seeking a lump sum costs order by 19 January 2019.

11.    The respondents file and serve any affidavits in answer to the affidavits of the applicants by 1 February 2019.

12.    The parties file and serve any written submissions (which are not to exceed 5 pages in length) in respect of any interlocutory application filed in accordance with Order 11 by 8 February 2019.

13.    There be liberty to restore on 3 days’ notice in writing.

THE COURT NOTES THE FOLLOWING UNDERTAKING TO THE COURT:

A.    The Respondents undertake to quarantine and hold proper and discrete accounting records for revenue made from the sale of the 16 Orifinder v5 kits currently on order, as well as any further orders the Respondents receive, between 11 December 2018 and 23 January 2019 or, if an application for a stay is made in accordance with paragraph 16, the end of the period referred to in paragraph 16.

THE COURT FURTHER ORDERS THAT:

14.    Orders 4 and 6 be stayed until 4pm on 23 January 2019.

15.    On or before 4pm on 23 January 2019, the respondents are to file and serve any application for a stay pending appeal of these orders, together with evidence in support of that application.

16.    Orders 4 and 6 be stayed until the determination of respondents’ application for a stay pending appeal, provided that the application for a stay is made on or before 4pm on 23 January 2019.

The orders in paragraphs 4 and 6 above were stayed until 4 pm on 23 January 2019. The Globaltech respondents did not seek to stay the orders beyond that date.

6    The respondents’ respective applications are supported by affidavits. The applicants oppose an order that I disqualify myself and they have two filed affidavits in response to the applications. It will be convenient if I refer to the parties by reference to their status in the proceeding, even though it is the respondents who are making the present applications.

7    In the previous proceeding, the applicants called two experts at the trial, Professor Jonathan Tapson and Mr Kelvin Brown. Professor Tapson’s evidence and my findings in relation to it are at the centre of the respondents’ primary submission on these applications. I described Professor Tapson’s qualifications in my previous reasons (at [44]–[57]).

8    The Globaltech respondents called two experts, Mr Michael Ayris and Mr Adrian Edmonds. I refer to Mr Edmonds later in these reasons. I described Mr Edmonds’ qualifications in my previous reasons (at [98]–[103]).

9    The infringing articles or tools in the previous proceeding were known as “Orifinder” tools and they consisted of an OriTool and an Oripad. As I noted in the previous reasons, there are and have been various versions of the Orifinder tool and those said to infringe the claims in suit in the previous proceeding were known as the Orifinder v3A, Orifinder v3B and Orifinder v5 respectively (at [6]).

10    On 23 January 2019, the Globaltech respondents appealed from the orders I made in the previous proceeding. On 13 September 2019, the Full Court of this Court dismissed the appeal (Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162; (2019) 145 IPR 39). On 11 October 2019, the Globaltech respondents filed an Application for Special Leave to Appeal to the High Court of Australia. That application was heard and determined on 20 March 2020. The application was dismissed.

11    I turn to describe the events leading to this proceeding.

12    The applicants allege that since on or about 23 January 2019, the Globaltech respondents have been selling an Orifinder UPIX tool. I will refer to the tool in this way, although some of the witnesses referred to the tool as the Orifinder v6. They issued an application under r 7.23 of the Federal Court Rules 2011 (Cth) which enables a prospective applicant to apply to the Court for an order for discovery by a prospective respondent of documents in circumstances in which the prospective applicant reasonably believes that the prospective respondent has or is likely to have or has had or is likely to have had in the respondent’s control documents directly relevant to the question of whether the prospective applicant has a right to obtain the relief he or she reasonably believes it may have a right to obtain. That application was supported by two affidavits. The first affidavit was an affidavit of Sarah Lorne Standish affirmed on 24 June 2019. Ms Standish is the general counsel of Imdex Limited (Imdex) and that company is the parent company of the two applicants. Ms Standish describes the tool, which was the subject of the application, as the Orifinder v6. She states that in her opinion it is not clear if, on the basis of the correspondence between the applicants and Globaltech’s solicitors, precisely how it is alleged Globaltech has changed the Orifinder tool from v5 to v6 to avoid infringing the claims in the Patent. The second affidavit is an affidavit of Professor Tapson affirmed on 20 June 2019. He expresses the opinion that the v6 Orifinder tool appears to operate in a very similar manner to the v5 Orifinder tool. Having regard to the correspondence between the applicants and Globaltech’s solicitors, he focuses on a particular integer in claims 1 and 33 of the Patent and that integer is as follows:

Claim 1:    “recording the orientation of the inner tube at predetermined time intervals during said drilling”; and

Claim 33:    “means for recording the orientation of the inner tube at predetermined time intervals during drilling by the core drill”.

13    The effect of Professor Tapson’s affidavit is that the applicants seek access to material relating to the Orifinder v6 tool in order to determine whether the above integer is present.

14    On 31 July 2019, the Globaltech respondents issued an interlocutory application seeking an order that the application for preliminary discovery be allocated to a judge other than myself. On 9 August 2019, the Globaltech respondents filed an affidavit of Mr Edmonds sworn on 9 August 2019. In that affidavit, Mr Edmonds expressed the opinion that it was clear from the UPIX documents how the Orifinder UPIX tool operates and the manner in which the time intervals for recording the orientation of the inner tube are being determined, including how the number of watchdog cycles are created or generated. Mr Edmonds considers that because the time intervals for recording the operation of the inner tube are dependent on an unpredictable time, the Orifinder UPIX tool does not “record the orientation of the inner tube at predetermined time intervals” as required by claims 1 and 33 of the Patent.

15    On 9 August 2019, the Globaltech respondents filed an affidavit affirmed by Mr Khaled Hejleh. Mr Hejleh is the managing director of Globaltech Corporation. He states that Globaltech developed a new product from December 2018 known as the Orifinder UPIX. He expresses the opinion that the Orifinder UPIX is a core orientation system that works in a very different way to other core orientation systems previously and currently available in the market and that it does not have and does not require orientation data to be taken at predetermined time intervals. It accordingly has, in Mr Hejleh’s opinion, significant advantages over other products available in the market.

16    Although the parties prepared for an argument on the application for preliminary discovery and the interlocutory application for disqualification, ultimately such an argument did not proceed because the parties resolved their dispute as to the preliminary discovery application and orders were made on 5 September 2019. The application for disqualification issued by the Globaltech respondents was dismissed by consent.

17    This proceeding was commenced by Originating application dated 27 November 2019.

The Evidence on the Application

18    Ms Leanne Michelle Oitmaa is a solicitor and the principal of Watermark Intellectual Property Lawyers. She swore an affidavit in support of the Interlocutory application brought by the Globaltech respondents. In that affidavit, she outlines the history of the previous proceeding, including the trial on the issue of liability, the appeal to the Full Court of this Court and the Application for Special Leave to Appeal to the High Court made by the Globaltech respondents. That application had not been heard and determined at the time Ms Oitmaa swore her affidavit.

19    Ms Oitmaa refers to the application for preliminary discovery dated 24 June 2019. She annexes to her affidavit an email sent to my associate on 24 June 2019 by the solicitors for the applicants. The email attached a letter to the Registrar of the Court with copies to my associate and to the solicitors for the Globaltech respondents and the Originating application for preliminary discovery and affidavit of Professor Tapson affirmed on 20 June 2019. The email sent to my associate contained the following passage:

As set out in the attached letter to the Registrar, the Prospective Applicants seek preliminary discovery to determine the manner of working of a “workaround” tool that was introduced to the Australian market by the Prospective Respondents after the final orders made by his Honour in NSD 1089/2016 on 14 December 2018.

20    In their letter to the Registrar, my associate and the solicitors for the Globaltech respondents, the solicitors for the applicants state, inter alia, the following:

We observe that it was previously an administrative requirement that a filing party inform the Court in writing of any apparently related proceedings of which that party is aware that might be suitable to be listed before the same docket Judge. We write as a courtesy to the Court to observe that the parties to the Interlocutory Application are also involved in Federal Court Proceeding NSD 1089/2016 before Besanko J (NSD 1089/2016 Proceeding). In that matter, questions of liability were determined late last year, and the proceeding continues in relation to quantum.

21    Ms Oitmaa makes the point that this proceeding involves two other respondents, namely, the Boart Longyear respondents.

22    Ms Oitmaa also says the following in her affidavit:

I am instructed that Globaltech is concerned the Current Proceedings have been allocated to the docket of Besanko J, who will hear and determine the Current Proceedings. I am instructed that Globaltech’s principal concern is that, given Besanko J heard and determined the Earlier Proceeding adversely to Globaltech (which was affirmed by the Appeal Judgment) and given that Globaltech has sought special leave to appeal that decision (having regard to the proposed grounds of appeal in the Special Leave Application), the Current Proceedings ought be determined by a different Judge.

23    Ms Jane Margaret Frances Owen is a partner at the firm Bird & Bird. She swore an affidavit in support of the Interlocutory application bought by the Boart Longyear respondents. She refers to the present proceeding and what she describes as the procedural history of the previous proceeding. She refers to the acquisition by Boart Longyear of a majority interest in Globaltech Corporation Pty Ltd and that, prior to the acquisition of that interest on 1 July 2018, Boart Longyear, through a company called Votraint No 1609 Pty Limited, held a minority shareholding in Globaltech Corporation Pty Ltd. Ms Owen also says the following in her affidavit:

As neither Boart party was a party to proceeding no. NSD 1089 of 2016, if they file a cross-claim for invalidity in respect of the Patent, I am informed by Robert Closner, director and company secretary of Boart Longyear Australia, and secretary of Boart Longyear Limited, and I believe that those parties do not wish that that cross-claim be determined by the judge who has previously made a determination that the Patent is valid. I am informed by Robert Closner, and I believe, that the Boart parties believe that if Besanko J determines such a cross claim, he may not be able to be impartial in consideration of such claims given his earlier judgment.

24    Mr Christopher Edmund Duvall Williams is a solicitor and partner at Gilbert + Tobin and that firm acts for the applicants. Mr Williams has sworn two affidavits which are relied upon by the applicants in opposition to these applications. The first affidavit was sworn by Mr Williams on 8 August 2019. In that affidavit, he states that when he wrote to my associate on or about 24 June 2019, he believed that the present proceeding was a related proceeding to the previous proceeding at the time it was filed. Mr Williams produces his letter to the Registrar dated 24 June 2019 and the administrative notice NSW 4 which had previously applied to proceedings commenced in the New South Wales Registry of this Court. Paragraph 3 of the administrative notice provided as follows:

At the time of filing a new proceeding, a filing party is to inform the Court in writing of any apparently related proceedings of which that party is aware that might be suitable to be listed before the same docket Judge. The filing party must give sufficient details in writing about the proceedings, and the reasons why they are related, to provide an understanding of why they might be suitable (or not suitable) to be so listed. The filing party must include any other relevant information such as details of any consent by affected parties to the matter(s) being listed before the same judge.

25    Mr Williams notes that the administrative notice is no longer in effect, but that there remains a requirement during the eLodgment of documents and when commencing a new proceeding to answer a query as follow: “Is the Document related to an Existing File?”.

26    Mr Williams’ second affidavit was sworn on 24 January 2020. This affidavit was sworn in response to the respective affidavits of Ms Oitmaa and Ms Owen. Some of the matters he addresses have fallen away and I do not need to address them. There are, however, two matters which I must address.

27    First, Mr Williams notes that in confidential correspondence, the solicitors for the Globaltech respondents in fact rely on a paragraph in my reasons in the previous proceeding in support of their arguments. That paragraph is paragraph 243 which is in the following terms:

Globaltech’s submission is that the predetermined time intervals are pre-known sequential time intervals that are referable to a known start time and that the start time must, therefore, happen at the beginning. In general terms, that proposition may be accepted. Globaltech goes on to submit that predetermined time intervals are synonymous with synchronised operations where two devices (i.e., one in the downhole tool and one at the surface) can keep track of the same intervals because they are predetermined. To be predetermined, such intervals must have pre known start and end points. As I understood Globaltech’s submission, it was that accurate predetermined time intervals are an essential feature of a synchronised system. It put its submission in writing as follows:

The Patent is a synchronised method that requires highly accurate timers counting at accurate intervals, otherwise it would not be possible for the inputted specific time to be related to the initial reference time and the predetermined time intervals. And it would not be possible to subsequently identify a specific time interval using the inputted specific time if the intervals are at unpredictable duration.

It may be accepted, that predetermined time intervals are a feature of a synchronised system. However, the same may be said of the methods or systems which are a feature of the use of the Orifinder v3B and Orifinder v5.

28    Secondly, in response to Ms Owen’s affidavit, insofar as it addresses a possible cross-claim (at that stage), Mr Williams points out that the Patent has in fact been the subject of two unsuccessful validity challenges and as a result, two certificates of validity have been issued by this Court, one in WAD 74 of 2014 and the other in the previous proceeding. Furthermore, certificates of validity have been issued in respect of divisional innovation patents from the same patent family in WAD 132 of 2007 (Barker J) and in NSD 2082 of 2011 (McKerracher J).

The Submissions

29    There was a difference in the presentation of the respondents’ submissions between their written outline of submissions dated 7 February 2020 and their oral submissions. That may be explained by the fact that, in the interim, the High Court heard and dismissed the Globaltech respondents’ Application for Special Leave to Appeal. At all events, counsel’s oral submissions focussed on two grounds, whereas the written outline of submissions was more broadly based. Although counsel for the respondents did not abandon the written outline of submissions, he did not address paragraphs 18–23 inclusive of the written outline in circumstances in which I specifically said to counsel at the outset of his submissions that I could not see precisely how the matters raised in these paragraphs were linked to the arguments the respondents put.

30    The respondents’ written outline of submissions raise three matters. All three matters were put by reference to the test of apparent bias formulated by the High Court in Ebner v Official Trustee in Bankruptcy [2000] HCA 63; (2000) 205 CLR 337 (Ebner) and discussed below.

31    First, the respondents contend that I should disqualify myself because of my involvement in the previous proceeding and my continuing involvement in the determination of the quantum part of that proceeding. They accept that the fact that I was involved in the previous proceeding and decided infringement and validity against the Globaltech respondents is not of itself a sufficient basis for disqualification for apprehended bias. However, they submit that that is not the whole context in this case. The context in this case is “much broader and entrenched”. They referred to the “grievances” of the Globaltech respondents with my previous decision and their belief “on rational grounds” that the Orifinder UPIX tool does not infringe the claims in the Patent. However, it was never explained to me how these things, even if accepted, meant that there is a case of apprehended bias. As I have already noted, since the respondents’ written outline, the High Court has dismissed an Application for Special Leave to Appeal from the Full Court’s decision. I reject this argument.

32    Secondly, the respondents contend that I should disqualify myself because in this proceeding I will be called on to choose between the evidence of experts on an issue of claim construction in circumstances in which, in the previous proceeding, I did so in favour of the applicants’ expert and in circumstances in which the experts in this proceeding are likely to be the same as they were in the previous proceeding. The issue of claim construction so far identified in this proceeding (and whether others will arise is not known at this point) relates to the integer in Claims 1 and 33 which contains the expression “predetermined time intervals”. The main claim construction issue in the previous proceeding related to synchronisation (see previous reasons at [185]–[266]). The construction of the integer relating to predetermined time intervals was a much lesser issue and raised in the context of a particular feature being considered (see previous reasons at [242]–[243] and [277]–[281]). The respondents accept that the expression, predetermined time intervals, did not receive substantial consideration in the claim construction issues determined in the previous proceeding. Nevertheless, the basis of the claim of apprehended bias is that I have previously accepted Professor Tapson’s evidence on an issue (albeit different) of claim construction and rejected a contention that he had deliberately tailored his evidence to advance the applicants’ cause. This is the respondents’ principal argument put on the present applications.

33    Thirdly, the respondents submit that the applicants’ email to my associate and the letter to the Registrar with a copy of the letter to my associate and to Globaltech’s solicitors were inappropriate and “amplified the prospect that a fair-minded lay observer might consider that the Trial Judge had been selected for the purpose of securing an advantage to AMC”. I do not consider that there was anything inappropriate in Mr Williams pointing out the common features of the two proceedings. It may be that substantial time and cost is expended unnecessarily if matters such as this are not pointed out at any earlier stage. The parties might be quite content for a matter to be allocated to a judge with familiarity of some of the background features of the proceeding. Of course, one of them (or perhaps both) may object to a judge hearing a matter in which he or she has had some prior involvement, in which case they bring an application as the respondents have in this case and that application is then decided according to law. In oral submissions, the respondents’ argument based on this correspondence was modified and was, in essence, a complaint about the use in the correspondence of the term “workaround tool”. That was said to imply some dubious, if not nefarious, conduct by the applicants and should not have been used in correspondence to the Court, and, in particular, my chambers. I took the respondents’ argument to be that by using the term in correspondence to me, my mind will be pre-disposed to favour the applicants and an apprehension of bias arises.

Professor Tapson and the Previous Proceeding

34    It is necessary to say something more about Professor Tapson’s role in the previous proceeding and my findings with respect to his evidence.

35    I indicated in the previous reasons that I formed the view that generally, Professor Tapson’s evidence of the matters about which he had informed himself was reliable (at [57]). I indicated that Professor Tapson was cross-examined about evidence he had given in what I described as Coretell First Instance and an affidavit he swore in Coretell Western Australia (see at [11], [12] and [58]). I said in the previous reasons that it was suggested by Globaltech that Professor Tapson had a close association with the first applicant and that one example of that was the fact that he was named as an inventor on a patent without his knowledge. Furthermore, it was true that, as Globaltech submitted, Professor Tapson had acted for a number of years as an expert for the first applicant and Imdex. I took into account the fact that Professor Tapson had given evidence in previous proceedings and, in a sense, he had had a long association with this family of patents. However, I said that I was not persuaded that his independence had been compromised (at [59]).

36    Professor Tapson and other experts gave evidence about the principal issues concerning the construction of the claims. I identified the first construction issue (at [185]–[207]). I indicated that before turning to the evidence and the text in claim 1, I needed to deal with two particular submissions made in relation to the applicants’ experts, Mr Brown and Professor Tapson (at [209]). In these reasons, I need only address the issue involving Professor Tapson.

37    I said that Globaltech challenged Professor Tapson’s impartiality and that, in broad terms, it was suggested to him that he had previously expressed the opinion that claim 1 was a method which involved synchronisation and possibly counting forwards, but not counting backwards (at [211]). I noted that the background was that Professor Tapson gave evidence on behalf of the applicants in Coretell First Instance and Coretell Western Australia. I noted that in the cross-examination of Professor Tapson in the previous proceeding, a number of passages in evidence he had previously given were put to him. I identified that material and how Professor Tapson had dealt with it in his evidence before me. I noted that Professor Tapson had disagreed with the suggestion that he had “bent over backwards” to try and help Imdex by stretching the words in the claims to try and capture the Orifinder tools. I noted that he had said that that proposition was “absolutely incorrect” (at [233]).

38    I then said the following (at [238] and [239]):

I have considered Professor Tapson’s evidence carefully. I am not persuaded that Professor Tapson has deliberately changed his evidence from the previous proceedings to this proceeding in order to further AMC’s cause. It seems to me that in the previous proceedings, Professor Tapson was focused on the alleged infringing product in those proceedings or the preferred embodiment of the claims in suit. A method involving synchronisation clearly falls within the terms of the claims and that was the focus of Professor Tapson’s consideration in the previous proceedings. I do not think that it can be said from the passages I have identified that Professor Tapson identified the metes and bounds of the claims and has now changed his mind with a view to giving evidence that the Orifinder v3B and Orifinder v5 fall within the terms of the claims. That is not to say that the boundaries of claim 1, for example, as now stated by Professor Tapson were in his mind at the time of the previous proceedings.

The issue is one of construction and that is a matter for the Court to resolve. I have had the benefit of evidence as to the relevant common general knowledge and the opinions of experts as to the meaning of the claims. The issue comes down to the language of the claims in their particular context.

39    The respondents submit that it is reasonable to assume that Professor Tapson disagrees with their view that the Orifinder UPIX tool does not infringe claims 1 and 33 of the Patent and that he will be a witness at the trial and that his evidence will conflict with evidence that will be adduced by the respondents.

Relevant Principles

40    The plurality of Gleeson CJ, McHugh, Gummow and Hayne JJ in Ebner stated the relevant test for apprehended bias as follows (at [6]):

Where, in the absence of any suggestion of actual bias, a question arises as to the independence or impartiality of a judge ( or other judicial officer or juror), as here, the governing principle is that, subject to qualifications relating to waiver (which is not presently relevant) or necessity (which may be relevant to the second appeal), a judge is disqualified if a fair-minded lay observer might reasonably apprehend that the judge might not bring an impartial mind to the resolution of the question the judge is required to decide. That principle gives effect to the requirement that justice should both be done and be seen to be done, a requirement which reflects the fundamental importance of the principle that the tribunal be independent and impartial. It is convenient to refer to it as the apprehension of bias principle.

(Citations omitted.)

41    Their Honours said that the test for apprehended bias involved two steps. First, the Court must identify what it is said might lead a judge or juror to decide a case other than on its legal and factual merits. The second step is the articulation of the logical connection between that matter and the feared deviation from the course of deciding the case on its merits. Their Honours went on to say the following:

The bare assertion that a judge (or juror) has an ‘interest’ in litigation, or an interest in a party to it, will be of no assistance until the nature of the interest, and the asserted connection with the possibility of departure from impartial decision making, is articulated. Only then can the reasonableness of the asserted apprehension of bias be assessed.

42    The importance of not acceding too readily to an application for apprehended bias was emphasised by Mason J (as his Honour then was) in Re JRL; Ex parte CJL [1986] HCA 39; (1986) 161 CLR 343. His Honour said (at 352):

Although it is important that justice must be seen to be done, it is equally important that judicial officers discharge their duty to sit and do not, by acceding too readily to suggestions of appearance of bias, encourage parties to believe that by seeking the disqualification of a judge, they will have their case tried by someone thought to be more likely to decide the case in their favour.

43    The principles in Ebner were reiterated by Gummow ACJ, Hayne, Crennan and Bell JJ in Michael Wilson & Partners v Nicholls [2011] HCA 48; (2011) 244 CLR 427 at [63]. The question is whether might what was done reasonably cause a fair-minded lay observer to apprehend that the judge might not bring an impartial mind to the resolution of a question or decision at the trial (at [68]).

44    As set out above (at [21]–[22]), the respondents adduced evidence of their own views about me hearing this proceeding. The relevance of evidence of this nature was addressed in Expectation Pty Ltd v PRD Realty Pty Ltd (No 2) [2006] FCA 392; (2006) 151 FCR 160. In this case, Greenwood J (at [11]) set out the evidence of the view of the applicant for disqualification of the circumstances said to give rise to an apprehension of bias. His Honour then said the following as to the relevance of that evidence (at [18]):

… The question is not determined by the views expressed by Mr Douglas (see [11]) unless it is said that those views are emblematic of the view a fair‑minded lay observer acting objectively and reasonably might take. The role of experienced counsel in advising the lay litigant in the face of particular articulated concerns is to reflect informed opinion as to whether the presence in the conduct of a trial in the Federal Court in Brisbane for a party represented by senior counsel from Western Australia facing appointment to the Supreme Court in that State raises fairly and objectively, assessed from the standpoint of a fair‑minded lay observer a possibility (that is, a real and not remote possibility) of impartiality.

45    In Cavar v Green Gate Pty Ltd [2015] FCA 1179, Flick J considered an application that he disqualify himself by reason of the fact that he had delivered an earlier judgment in another proceeding to which the party applying for disqualification had been a party. His Honour said (at [12]–[14]):

But the mere fact that a Judge of this Court has heard a previous application in another proceeding involving the same party, it is respectfully considered, does not of itself give rise to a reasonable apprehension of bias. Nor does the fact that the legal issues to be resolved may have a close parallel with those now under consideration. Taken together, however, such factors give rise to questions of individual judgment.

In rejecting the application for disqualification, the factors that have been taken into account include:

•    the fact that the earlier decision, unsurprisingly, did not involve any finding as to credit or any adverse factual finding in respect to Ms Cavar;

•    the fact that the earlier decision was dictated by reference to well-accepted principles as to the manner in which the discretion to summarily dismiss a proceeding is to be exercised and the application of those principles to facts not substantially put in issue; and

•    the fact that the present case is decided by reference to facts and circumstances peculiar to the present claims for relief and it is only the prior exposition of the well-accepted principles which could arguably found any reasonable apprehension of bias.

Such factors, it has been concluded, do not found any reasonable apprehension of bias.

Even more so than those cases where a Judge has refused to disqualify himself by reason of having previously resolved an interlocutory application in the same proceeding (e.g., Sebel Furniture Ltd v Acoustic & Felts Pty Ltd (No 2) [2009] FCA 291), the prior involvement of a Judge in a different case – albeit involving the same litigant – will ordinarily not be a sufficient basis for any application for disqualification. Different considerations may well apply where, in an earlier interlocutory application, comments have been made as to the strengths of the case ultimately advanced for resolution (e.g., Embertec Pty Ltd v Energy Efficient Technologies Pty Ltd (No 2) [2013] FCA 347) – but, even then, tentative comments as to aspects of the case may not be sufficient (e.g., Shaw v Australian Pump Industries Pty Ltd [2015] FCA 547).

46    A leading case on apprehended bias where the basis of the apprehended bias is findings as to credit or fact in prior proceedings is Livesey v New South Wales Bar Association [1983] HCA 17; (1983) 151 CLR 288 (Livesey). In that case, Mason, Murphy, Brennan, Deane and Dawson JJ said (at 300):

It is, however, apparent that, in a case such as the present where it is not suggested that there is any overriding consideration of necessity, special circumstances or consent of the parties, a fair-minded observer might entertain a reasonable apprehension of bias by reason of prejudgment if a judge sits to hear a case at first instance after he has, in a previous case, expressed clear views either about a question of fact which constitutes a live and significant issue in the subsequent case or about the credit of a witness whose evidence is of significance on such a question of fact.

47    It is important to note in this context the difference between expert witnesses and non-expert witnesses. Although it is a lengthy passage, it is worth setting out in full the following observations of Brennan, Deane and Gaudron JJ in Vakauta v Kelly [1989] HCA 44; (1989) 167 CLR 568 (Vakauta) at 570–571:

It is inevitable that a judge who sits regularly to hear claims for damages for personal injury will form views about the reliability and impartiality of some medical experts who are frequent witnesses in his or her court. In some cases and notwithstanding the professional detachment of an experienced judge, it will be all but impossible to put such preconceived views entirely to one side in weighing the evidence of a particular medical expert. That does not, however, mean that the judge is disqualified from hearing the particular action or any other action involving that medical expert as a witness. The requirement of the reality and the appearance of impartial justice in the administration of the law by the courts is one which must be observed in the real world of actual litigation. That requirement will not be infringed merely because a judge carries with him or her the knowledge that some medical witnesses, who are regularly called to give evidence on behalf of particular classes of plaintiffs (e.g. members of a particular trade union), are likely to be less sceptical of a plaintiff’s claims and less optimistic in their prognosis of the extent of future recovery than are other medical witnesses who are regularly called to give evidence on behalf of particular classes of defendants (e.g. those whose liability is covered by a particular insurer). If it were so infringed, the administration of justice in personal injuries cases would be all but impossible. In that regard, both necessity and common sense require that a distinction be drawn between the case where a judge has some preconceived views about the expertise or reliability of the professional opinions of an expert medical witness and the case where a judge has preconceived views about the credit or trustworthiness of a non-expert witness “whose evidence is of significance on ... a question of fact” which “constitutes a live and significant issue” in the case (see Livesey v. New South Wales Bar Association).

(see also Dawson J at 576; Toohey J at 576–577).

Analysis

48    The respondents rely on two grounds. They are the two grounds advanced in oral submissions. They reflect the second ground in the respondents’ written outline of submissions and a modified form of the third submission in that document.

49    Professor Tapson was an expert called as a witness by the applicants in the previous proceeding. He gave evidence about a number of issues, but of present relevance is his evidence as to the construction of claims in the Patent. That evidence was challenged by the Globaltech respondents. They went further than alleging that his opinion was not correct. They put to him that his evidence was inconsistent with evidence he had given in other proceedings concerning the claims. It was put to him that he had a long association with the applicants and was tailoring his evidence. I rejected those criticisms of his evidence. I construed the claims in a manner which was consistent with the construction advanced by Professor Tapson.

50    In this proceeding, and at this particular point in the proceeding, it is a different integer which is at the centre of the infringement case. There may be other disputes, but that is not known at this point.

51    I agree with the respondents’ submission that, having regard to the circumstances of the application for preliminary discovery, it is likely Professor Tapson has formed an opinion about the disputed integer adverse to the respondents and that he is likely to be a witness for the applicants in this proceeding.

52    As I understand the respondents’ submission, it is that because I accepted Professor Tapson’s evidence in the previous proceeding and rejected claims of inconsistency and lack of independence, a fair-minded lay observer might reasonably apprehend that I might not bring an impartial mind to the resolution of the questions I will be required to decide.

53    The respective passages in Livesey and Vakauta set out above provide a convenient reference point for the identification of what I consider to be the two problems with the respondents’ submission.

54    First, the central issue in the previous proceeding and, as far as it can be determined at this stage, in this proceeding, is the proper construction of claims in a patent and that is not a question of fact. The construction of claims in a patent is a question of law.

55    In Jupiters Ltd v Neurizon Pty Ltd [2015] FCAFC 90; (2005) 222 ALR 155, the Full Court of this Court summarised the principles which are relevant to the proper construction of claims in a patent and the role of an expert in that process as follows (at [67]):

(i)    the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;

…

(v)    experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and

(vi)    it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.

56    Dr Bodkin in his book, Patent Law in Australia (3rd ed, Lawbook Co, 2019) puts the matter in the following terms (at [21780]):

Claim construction is a matter for the court, though expert evidence is admissible on the meaning of technical terms and generally to put the court in the same position as the skilled addressee and to show how a skilled reader would have read the specification at the relevant time (see [11400] – [11440] for discussion of “skilled addressee”). Absence of relevant evidence from any skilled addressee does not necessarily mean that the court is not in a position to construe the claims however.

(Citations omitted.)

57    Claim construction does not turn on the acceptance of one expert over another. An illustration is readily available. The appeal to the Full Court against my previous decision was largely as to issues of claim construction and a careful reading of that decision illustrates the importance of the Court’s role in the task of construction and the relatively limited role of the experts (see [118]–[126]). Significantly, the Court said (at [105]–[106]):

The issue is the correct construction of claim 1 of the Patent. This is a matter of law in respect of which there can be only one correct answer. The appeal to this Court is an appeal by way of rehearing. If this Court on appeal were of the view that the correct construction of the claim were that contended for by Globaltech, it would follow that the primary judge erred: see Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 (Branir) at [25] per Allsop J (as the Chief Justice then was); Dincel Construction System Pty Ltd v AFS Systems Pty Ltd (2018) 360 ALR 273 (Dincel) at [50] per Besanko and McKerracher JJ (Kenny J agreeing).

However, in considering the correct construction of claim 1, it is appropriate to recognise certain advantages enjoyed by the primary judge, consistently with the principles discussed in Branir at [21]-[30] (followed in Dincel at [50]). In the present case, the primary judge heard expert evidence about the common general knowledge and the art before the Priority Date. This evidence was relevant to the task of construction, given that the Court is to place itself in the position of a person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberly-Clark v Arico at [24]). That said, none of the experts alone represented the person skilled in the art (in this case, a team). Further, it was not suggested that claim 1 contains technical or scientific terms and phrases, or words that have unusual or special meanings, matters in respect of which expert evidence may be significant.

58    The second problem with the respondents’ submission is that the apprehended bias cases involving a judge’s view of the credit of a witness whose evidence is of significance on a question of fact which is a live and significant issue in the subsequent case generally involve a view that is adverse to the credit of the witness. That was the case in Livesey where two members of the Court of Appeal sitting in the subsequent case had previously expressed views that the applicant had actively and knowingly participated in a corrupt scheme or a conspiratorial arrangement to secure the release of his client on bail by the use of the client’s own money. In this case, the context is completely different. The issue concerns an expert who has provided an opinion on an issue of law which is ultimately a matter for the Court and a challenge to the opinion and the expert’s independence is in fact rejected by the Court. Counsel for the respondents agreed that his submission was “a variation on [the] theme” because often an application of the nature they are making is based on an adverse credit finding.

59    It is trite to say that expert evidence in the courts is common and, in highly specialised areas, it is not uncommon for a particular expert to give evidence before a particular judge on a number of occasions. As a general rule, and bearing in mind the need to examine all the facts and circumstances of the case, the acceptance of an expert’s evidence in one case does not mean that the judge cannot hear another case involving that expert, even if the expert’s evidence was and is challenged on the basis of a lack of competence or independence. It seems to me that this conclusion is even stronger when the circumstance that claim construction is a question of law for the Court is taken into account.

60    I reject the first basis upon which the respondents contend that I should disqualify myself for apparent bias.

61    I also reject the second ground upon which the respondents contend that I should disqualify myself for apparent bias. The respondents’ point is answered by noting that the word “workaround” does not, even on the respondents’ case, have a sufficiently fixed meaning of tinkering around in order to conceal, as the respondents put it. In fact, it can have a quite innocent meaning. In Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240, the Full Court said (at [72]–[73]):

More than copying is required to enliven the application of s 122(1A). Patent infringement may occur whether or not there is copying. It is not illegitimate, or flagrant, for a competitor to examine the disclosure of a patent and to attempt to work around the monopoly claimed in the claims. An important public policy rationale for the requirements of s 40(2) of the Patents Act that the complete specification describe the invention fully, including the best method known, and that the specification end with a claim or claims defining the invention is to give the world access to the technical contribution to the field provided by the patentee. It is part of what is often referred to as the “consideration” given by the patentee in return for the fixed term monopoly granted by the patent: Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (2005) 225 ALR 416 (per French and Lindgren JJ at [359], Crennan J agreeing at [405]); Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61 (at [97]). Equally, the patentee chooses to delimit the scope of its monopoly by reference to the language used in the claims. The function of the claims is to define clearly and with precision the monopoly claimed so that others may know the exact boundaries of the area within which they will be trespassers: Electric and Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23 (at 39); D'Arcy v Myriad Genetics Inc (2015) 258 CLR 334 (per French CJ, Kiefel, Bell and Keane JJ at [14]).

A competitor may take the patent, examine the scope of the claims, and endeavour to produce something that does not fall within them. Often, infringement cases are determined by having regard to contestable constructions of the claims. The fact that an alleged infringer fails to defend its reasonably arguable view as to the correct construction of the claim, and continues to produce infringing products in the face of that view, may result in an award for damages, but would not of itself trigger an entitlement to additional damages within s 122(1A) of the Patents Act.

62    Even if the word had a sinister connotation, it seems to me that it should be treated no differently from a rhetorical flourish by counsel in the course of submissions.

Conclusion

63    The respondents have not established a case of apparent bias and their respective interlocutory applications must be dismissed. I will hear the parties as to costs.

64    I will make interlocutory orders to progress the matters to trial. There were two differences between the parties about the appropriate interlocutory orders at this stage, one in relation to whether there should be an exchange of Position Statements in accordance with the Intellectual Property Practice Note, and the other concerned a Product Description. The particulars of infringement in the Statement of Claim are sparse and I think there should be an exchange of Position Statements on Infringement. I also consider that to avoid any uncertainty, the Product Description should be verified. I will give the parties the opportunity to agree the appropriate interlocutory orders in light of these intimations.

Associate:    

Dated:    12 June 2020

SCHEDULE OF PARTIES