Federal Court of Australia

Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 5) [2020] FCA 1243

ORDERS

THE COURT ORDERS THAT:

1.    The proceeding be allocated to the docket of a Judge of the Court other than Yates J.

2.    The question of the costs of the first respondent’s interlocutory application dated 13 July 2020 be reserved.

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

REASONS FOR JUDGMENT

YATES J:

Introduction

1    The applicant in this proceeding, Vehicle Monitoring Systems Pty Limited (VMS) sues SARB Management Group Pty Ltd (SARB) and the City of Melbourne (Melbourne) for patent infringement. The proceeding has been under my case management since its commencement on 14 February 2019. In the course of that management, I have heard and determined several interlocutory disputes between the parties: Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia [2020] FCA 6; 149 IPR 370 (VMS No 1) (application for permanent stay); Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 2) [2020] FCA 447; 150 IPR 554 (separation of determination of liability and quantum); Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 3) [2020] FCA 471; 151 IPR 1 (application to set aside a subpoena); Vehicle Monitoring Systems Pty Limited v SARB Management Group Pty Ltd trading as Database Consultants Australia (No 4) [2020] FCA 819 (application for non-standard discovery).

2    By an interlocutory application dated 13 July 2020, SARB seeks an order that the proceeding be allocated to the docket of a different Judge of the Court on the basis that, given findings made by me in an earlier patent infringement proceeding (the first proceeding) between VMS and SARB (Vehicle Monitoring Systems Pty Limited v Sarb Management Group Pty Ltd (trading as Database Consultants Australia) (No 2) [2013] FCA 395; 101 IPR 496) (the 2013 reasons), a fair-minded lay observer might reasonably apprehend that I might not bring an impartial mind to the resolution of some of the questions the Court will be called upon to decide in the present proceeding.

3    At the first case management hearing held on 18 March 2019, junior counsel for SARB raised the possibility that such an application might be made, but no formal steps were taken in that regard until the filing of the present interlocutory application. It has not been suggested that it was inappropriate for me to hear and determine the earlier interlocutory applications.

4    VMS opposes SARB’s present application. It also submits that SARB has been dilatory in bringing the application—so much so that I should refuse to accede to it, particularly having regard to the fact that on 14 February 2020, with the consent of all parties, I set down the substantive proceeding for hearing before me commencing on 21 October 2020. VMS is concerned that, should I accede to SARB’s present interlocutory application, these hearing dates will be lost.

5    Melbourne has not actively participated in the hearing of the present interlocutory application. It submits that I should not view that stance as in any way detracting from the merits of SARB’s application.

6    In the first proceeding, I found that SARB had infringed an innovation patent held by VMS (Patent No 2010101354 (the 354 patent)) by exploiting a product referred to as the PinForce Sentinel VDU Product, including by supplying the product to Melbourne. Further, I found that, by supplying the product to Melbourne, SARB had authorised it to use the product in a method for identifying vehicle overstay in a parking space (referred to as the PinForce Sentinel Method).

7    In the present proceeding, VMS alleges that SARB has infringed Patent No 2005243110 (the 110 patent) and Patent No 2011204924 (the 924 patent) by exploiting vehicle detection sensor units (the PinForce Sensors) and vehicle detection systems (the PinForce Systems). VMS also alleges that SARB has (amongst other things) authorised others (including Melbourne) to use the PinForce Sensors and the PinForce Systems in methods for identifying vehicle overstay in a parking space (the PinForce Methods) and that, for its part, Melbourne has infringed the 110 patent and the 924 patent by (amongst other things) using the PinForce Sensors, the PinForce Systems and the PinForce Methods. VMS alleges that the PinForce Sentinel VDU Product, the subject of the first proceeding, is one of the PinForce Sensors (namely, the First PinForce Sensor) that infringe the 110 patent and the 924 patent. The First PinForce Sensors are used in the PinForce Systems (the First PinForce Systems) and the PinForce Methods (the First PinForce Methods).

8    SARB challenges the validity of the 110 patent and the 924 patent on various grounds. The priority dates of the claims in suit are in issue.

The relationship between the patents

9    The 354 patent, the 110 patent and the 924 patent are related. The complete application for the 354 patent was filed on 2 December 2010 as a divisional application of Patent Application No 2008200089 (the parent application). The complete application for the 924 patent was filed on 21 July 2011, also as a divisional application of the parent application.

10    The parent application was filed on 8 January 2008 as a divisional application of Patent Application No 2005243110 (the grandparent application), but lapsed on 31 July 2011.

11    The grandparent application was filed on 9 May 2005 and matured into the 110 patent.

12    The claims of the 354 patent and the 924 patent each claim the same priority date as the claims of the 110 patent, being the date of filing a provisional application on which the grandparent application is based.

13    There is a close correlation between the text of the complete specifications, and certain claims (including those in suit in the present proceeding), of each patent. Indeed, a significant part of the text of the complete specifications is identical.

Aspects of the 2013 reasons

14    There are two aspects of the 2013 reasons that are directly relevant to the present interlocutory application. The first concerns the findings I made as to the construction of the complete specification of the 354 patent with respect to a feature identified as “wake-up signals”. The second concerns the findings I made as to the priority date of the claims of the 354 patent. The findings on these aspects are said by SARB to give rise to the apprehension of bias on which it relies.

“Wake-up signals”

15    The construction of the expression “wake-up signals” related specifically to claim 2 and claim 5 (to the extent it was dependent on claim 2) of the 354 patent: see [46] of the 2013 reasons, which reproduces both claims. The expression was not defined in the complete specification of the 354 patent. I rejected VMS’s contention that the expression was used in a technical sense having a special meaning to the person skilled in the art, finding as follows:

71    In my view, the words “wake-up” are used colloquially in the complete specification to characterise a particular signal according to its function. The expression does not have a fixed technical meaning that is complete in itself, such that the person skilled in the art could put the disputed feature of the invention (as claimed in claim 2) into practice without further study of the description and claims of the complete specification to understand what the expression means. Thus, the expression has a contextual meaning derived from the functions and operations that are described and claimed in the complete specification. In context, those functions and operations relevantly involve the interoperability of detection apparatuses and data collection apparatuses of the kind described in the complete specification.

72    Reading the complete specification as a whole, it is apparent that “wake-up signals” are signals sent by radio frequency transmission to, and received by, a detection apparatus. So much is clear, in any event, from claim 2 itself which speaks of “a radio receiver … for receiving wake-up signals” (emphasis added). Moreover, the specification makes clear that wake-up signals are sent to the detection apparatus by a data collection apparatus.

73    Claim 2 also makes clear that these signals are received in the context of the apparatus transmitting data relating to instances of overstay of a vehicle in a parking space. This is confirmed by other passages in the specification. For example, when describing communications which involve the transmission of “download information” to a detection apparatus (such as application firmware, a table of operating hours and time limits applicable to an associated parking space, operating parameters for the detection apparatus, and information for updating or synchronising the real-time clock with a more accurate real-time source) – as opposed to communications involving the transmission by the detection apparatus of data relating to vehicle overstay – the complete specification says:

    The same radio receiver as used for receiving wake-up signals or a separate radio receiver may be used for this purpose.

74    This statement plainly distinguishes wake-up signals from other wireless transmissions sent to the detection apparatus.

75    Dr Klein’s evidence in chief was that, for the purposes of claim 2, a wake-up signal is not only a signal sent to the detection apparatus to instruct it to send data to a data collection apparatus, but also a signal sent to the detection apparatus for the purpose of downloading information to it. In his view, any signal that would take the detection apparatus out of its normal operating mode is a wake-up signal. Also, in the course of his cross-examination, Mr Spirovski acceded to the proposition that, in the context of claim 2 of the patent, wake-up signals are not limited to wake-up signals for the communication of overstay data. I do not accept Dr Klein’s and Mr Spirovski’s evidence in this regard. For the reasons I have given above, claim 2, when read with the description in the complete specification, makes clear that wake-up signals relate specifically to the function of the detection apparatus transmitting data relating to identified instances of overstay of a vehicle in a parking space, and not to other communications involving that apparatus.

76    Further, the complete specification refers to wake-up signals as “activation signals”. With this understanding, it can be seen that wake-up signals are signals that activate the detection apparatus to transmit data concerning vehicle overstay. This characteristic is consistent with the power management strategies that are described in the complete specification: the described detection apparatus is operated in a high power state intermittently, and otherwise in a low power state while detecting the movement and presence of vehicles.

77    However, the advantages and implications of power management must be understood. A wake-up signal needs to be “received” by the detection apparatus. In order for this to happen, the receiver for receiving the wake-up signal must be turned on. The complete specification makes clear that, when the receiver is on to detect whether a data collection apparatus is present (that is, to identify whether a wake-up signal has been sent by the data collection apparatus), the detection apparatus is already operating in a high power state, albeit intermittently for this purpose.

78    The flow diagram … illustrates that if, when operating in its high power state, the detection apparatus detects the presence of a data collection apparatus (through recognition of a wake-up signal sent by the data collection apparatus) the detection apparatus will then engage in a communications session with the data collection apparatus. In so doing, the detection apparatus will continue to operate in its high power state until this communications session is finished, at which time the receiver will be turned off and the apparatus will resume its low power state. When this is recognised, the true characteristics of a wake-up signal can be understood. The wake-up signal is a signal that activates the transmission of data relating to vehicle overstay by the detection apparatus when it is already operating in its high power state to determine whether a wake-up signal has been sent. It is not a signal that causes the detection apparatus to change from one power state to another relatively higher power state.

79    Thus, “wake-up signals” within the meaning of claim 2 are signals that are sent wirelessly by a data collection apparatus to a detection apparatus that, upon receipt by the detection apparatus, activate it to engage in a communications session with the data collection apparatus, in which the detection apparatus wirelessly transmits data relating to identified instances of overstay of a vehicle in a parking space.

16    On the basis of the technical evidence before me as to the operation of the PinForce Sentinel VDU Product (much of which was the subject of a confidentiality order), I found that claim 2 had been infringed:

81    The accused product is a battery-powered vehicle detection unit that identifies overstay of a vehicle in a parking space. It has a magnetic sensor for detecting the presence of a vehicle. The sensor is coupled to a microprocessor in a module that includes, amongst other components, a radio transceiver.

82    The unit operates in three main power states, which were described in the evidence as “asleep”, “sampling” and “communicating”.

83    The “asleep” state is the lowest power state. The unit is in this state for most of the time, in order to conserve power. In this state, the transceiver is turned off. [Redaction pursuant to orders made on 4 June 2013.]

84    When in the “sampling” state, the processor and the sensor are both turned on. The processor takes a reading from the sensor. This reading is stored and then processed by the processor in order to determine the presence or absence of a vehicle. In this state, the transceiver is not turned on. Overall, the unit can be seen to be operating in a relatively low power state, but nevertheless in a higher power state than when “asleep”.

85    In order to communicate the processed data, the unit attempts to communicate with a TMT (a data collection apparatus). When it makes this attempt, the processor, sensor and transceiver are all turned on (in the case of the sensor, periodically). Thus, overall, the unit is operating in a high power state. [Redaction pursuant to orders made on 4 June 2013.] The unit then returns to its lower power states.

86    There are two main reasons why the unit attempts to communicate. First, if it determines that a vehicle is present for longer than is allowed (a “potential violation”), the unit will attempt to communicate with a TMT to notify it of that fact. It will also attempt to communicate the fact that a detected vehicle will soon go into violation (a “pending violation”). In order to conserve power, the unit attempts to connect to a TMT at regular but infrequent intervals.

87    The second reason why the unit attempts to communicate with a TMT is to allow maintenance by a system administrator. This maintenance includes such things as updating the system information (for example, by changing parking information). The process is similar to the process for attempting to communicate potential and pending violation information. [Redaction pursuant to orders made on 4 June 2013.] However, the occasions on which the unit attempts to communicate to allow maintenance by a system administrator are different to the occasions on which it attempts to communicate a potential or pending violation.

88    [Redaction pursuant to orders made on 4 June 2013.]

89    [Redaction pursuant to orders made on 4 June 2013.]

90    The following process takes place when the unit attempts to communicate with a TMT:

    [Redaction pursuant to orders made on 4 June 2013.]

91    During this process, the unit is in its high power state. [Redaction pursuant to orders made on 4 June 2013.] If the unit receives [redaction pursuant to orders made on 4 June 2013] from the TMT, the unit and the TMT then engage in a communications session in which the potential or pending violation information is transmitted wirelessly by the unit to the TMT. During this communications session, the unit remains in its high power state.

92    In my view, when related to the communication of potential or pending violations, the [redaction pursuant to orders made on 4 June 2013] is a wake-up signal for the purposes of claim 2 of the patent. It is a signal that is sent wirelessly by the TMT (a data collection apparatus) to the unit (a detection apparatus) that, upon receipt by the unit, activates it to engage in a communications session with the TMT in which the unit wirelessly transmits data relating to identified instances of overstay of a vehicle in a parking space. I am satisfied, therefore, that the accused product possesses the disputed feature of a “radio receiver … for receiving wake-up signals”.

93    [Redaction pursuant to orders made on 4 June 2013.] The critical question for infringement is whether the accused product possesses all the essential features of claim 2. I have found that it does. The fact that it might have other features [redaction pursuant to orders made on 4 June 2013] is not to the point, unless an apparatus having such a feature is excluded by the language of the claim. In my view, such an apparatus is not excluded.

Priority date

17    VMS contended that the claims of the 354 patent had a priority date of 17 May 2004, being the filing date of the provisional application that was antecedent to the grandparent application. I accepted that contention, finding that the claims of the 354 patent were fairly based on matter disclosed in the complete specification of the parent application (the parent specification).

18    Given the way in which SARB had structured its priority date submissions, this finding meant that, so far as claim 2 was concerned, SARB accepted that it would have the priority date of the filing of the provisional application (17 May 2004).

19    So far as the other claims (claims 1, 3, 4 and 5) were concerned, it was necessary for me to carry out further analyses to ascertain whether they were, in turn, fairly based on matter disclosed in the complete specification of the grandparent application (the grandparent specification) and, then, whether they were fairly based on matter disclosed in the specification of the provisional application (the provisional specification). I found that they were so based.

20    At issue so far as claim 2 was concerned was whether there was a real and reasonably clear disclosure in the parent specification of methods, apparatuses and systems for identifying vehicle overstay in parking spaces which included detection apparatuses that were not limited to those that required a radio receiver for receiving “wake-up signals”. I found as follows:

128    The “Summary” of the invention in the parent specification discloses a number of aspects of the described invention. All of these aspects identify subterraneously installed and operated detection apparatuses. However, the “Detailed Description” makes clear that the detection apparatus need not be subterraneously installed and operated. It exemplifies a detection apparatus configured in a low-profile, high-strength plastic domed housing that can be fixed to a road or parking space surface by any suitable method, including by use of an adhesive. The same disclosure is made in the complete specification. The person skilled in the art would not read this disclosure as itself limiting the detection apparatus to that form. Rather, the person skilled in the art would understand this disclosure as teaching that the methods, apparatuses and systems that are disclosed are not confined to a detection apparatus that is installed and operated subterraneously, and that the alternative embodiment that is described is provided as no more than an illustrative example.

129    The “Summary” of the invention in the parent specification also discloses a detection apparatus which, in operation, is not confined to one that receives wake-up signals: see page 2 lines 5 to 11. This disclosure stands as the consistory statement for claim 1 of the parent specification, which is directed to a method of operating a detection apparatus: compare, in that regard, claim 2 of the parent specification which adds the limitation that the method is performed in conjunction with the receipt of a wake-up signal. It does not matter for this purpose that the method that is disclosed is one provided where the detection apparatus is subterraneously installed and operated. Another passage in the “Summary” makes clear that wireless retrieval of data may (not must) be performed in response to a wake-up signal received by the detection apparatus: see page 3 lines 6 and 7.

130    Other passages in the “Detailed Description” in the parent specification disclose embodiments in which the detection apparatus is not required to operate in response to the receipt of a wake-up signal: see page 10 lines 16 to 18 and Figure 6; page 10 lines 24 to 27 and Figure 7; and page 13 lines 10 to 13; see also the passages at page 3 lines 4 to 8 and page 13 lines 15 to 23, which find corresponding expression in the complete specification … In these embodiments, the detection apparatus is in radio communication with a data collection apparatus at a fixed location rather than with a portable or mobile data collection apparatus which, at any particular point in time, might not be in radio communication with the detection apparatus. The radio communication between the detection apparatus and the data collection apparatus at a fixed location may be via repeaters (in which case, the data collection apparatus can be seen to function as a central data collection apparatus) or via inter-detection apparatus communications. …

(Emphasis in original.)

21    In the course of submissions in the present application, SARB argued that, in a passage in a later section of the 2013 reasons (at [210]), I had expressed the view that a broader claim which encompassed an earlier, narrower disclosure, could not be anticipated by that disclosure. I expressed no such view. It is SARB’s interpretation of an observation I made in the context of finding that, had the priority date of the claims of the 354 patent been deferred (as SARB had argued) then I would have found that none of the claims would have been novel over the prior art information disclosed in the parent specification. Having regard to the way in which SARB had advanced its priority date argument, this finding was an acceptance, not a rejection, of the proposition that a broader claim can be anticipated (and, in that case, would have been anticipated) by an earlier, narrower disclosure.

The appeal

22     On 4 June 2013, SARB filed an appeal from my judgment in the first proceeding. The appeal was heard but not determined because, before judgment was given by the Full Court, the parties entered into a Deed of Release by which they settled VMS’s infringement claims. This is significant because, although contested on appeal, the findings referred to above remain.

Infringement and validity allegations

23    In this proceeding, VMS alleges that SARB has infringed a number of the claims of the 110 patent which, in each case, incorporate as an integer the wireless transmission of data relating to vehicle overstay “in response to receipt of a wake-up signal”. (This is a simplification of the text of the claims, but it will suffice for present purposes). Some claims include, as an integer, a radio receiver for receiving data from “woken-up … apparatuses”.

24    SARB denies that one of its accused products, the First PinForce Sensor which is used in the First PinForce Method and in the First PinForce System, has a radio receiver for receiving “wake-up signals” or transmits data in response to the receipt of “wake-up signals”. It also denies that the First PinForce System has a data collection apparatus for transmitting “wake-up signals” to detection apparatuses and that the First PinForce Method incorporates a step of wirelessly transmitting data in response to receipt of a wireless “wake-up signal”.

25    By way of reply, VMS alleges that, by reason of the findings made in [81] – [92] of the 2013 reasons, SARB is estopped from making these denials in relation to the First PinForce Sensor, on the basis of an issue estoppel. Further, on 30 June 2020, VMS filed an affidavit by Mr Spirovski (who gave evidence in the first proceeding) who deposes that his understanding of the expression “wake-up signal” in the complete specification of the 110 patent is consistent with his understanding of how that expression is used in the complete specification of the 354 patent. In the course of oral submissions, SARB identified the passages in the complete specification of the 110 patent that were the same as corresponding passages in the 354 patent and in the 924 patent.

26    The same circumstances exist with respect to the 924 patent. Amongst the claims alleged to be infringed by SARB, claim 26 includes, as an integer, a radio receiver coupled to a processor for receiving “wake-up signals”. Other claims in suit include what can be described as wireless detection integers. Once again, SARB denies that the First PinForce Sensor includes a radio receiver for receiving “wake-up signals” or any feature possessing the wireless detection integers, or that it has infringed the First PinForce Method or the First PinForce System. Correspondingly, VMS alleges that SARB is estopped from making these denials, on the basis of the pleaded issue estoppel to which I have referred. Mr Spirovski deposes that his understanding of the expression “wake-up signal” in claim 26 of the 924 patent is the same for claim 2 of the 110 patent. He further deposes that the wireless detection integers referred to in the other claims can be implemented by using a “wake-up signal”.

27    In its amended cross-claim, SARB pleads that certain claims of the 924 patent have a priority date of 21 July 2011, not 17 May 2004 as VMS contends (based on the filing of the provisional application to which I have referred). SARB’s contention is that the relevant claims encompass an invention that does not involve the use of “wake-up signals” and is not, therefore, fairly based on the provisional specification, the grandparent specification or the parent specification. The deferred priority date for which SARB contends is important to its invalidity case.

28    In its defence to the amended cross-claim, VMS pleads that SARB is estopped from denying that certain claims of the 924 patent have a priority date of 17 May 2004. This is pleaded as an issue estoppel based on my finding in the 2013 reasons that claims 1, 3, 4 and 5 of the 354 patent have that priority date. My finding was based on my satisfaction, expressed at [129] – [133] of the 2013 reasons, that the parent specification, the grandparent specification and the provisional specification each disclose methods, apparatuses and systems for identifying vehicle overstay in parking spaces which do not involve the use of “wake-up signals”.

29    It will be apparent from this summary that the proceeding brings into question the correctness of critical findings of fact or of mixed fact and law which I made in the first proceeding and which, as I have noted, remain. VMS will contend that SARB is bound by those findings but, if it is not, that I should adhere to the findings I did make in the first proceeding, as expressed in the 2013 reasons, because:

(a)    the First PinForce Sensor is the same as the PinForce Sentinel VDU Product (the subject of the first proceeding and referred to in the 2013 reasons); and

(b)    the claims in suit in the proceeding are, in relevant respects, materially the same as the claims of the 354 patent (because they include identical integers), share the same descriptive context as the claims of the 354 patent, and should be construed in the way that I found the claims of the 354 patent were to be construed.

30    Put simply, VMS will contend that, having found infringement of the claims of the 354 patent, I should find infringement of “corresponding” claims of the 110 patent and the 924 patent because there is (and will be) no reason whatsoever to depart from the critical findings I made in the first proceeding based on my construction of the relevant patent specifications and priority documents.

Relevant principles

31    In the course of oral submissions I was taken to the relevant principles concerning disqualification for apprehended bias and the application of those principles in a number of leading authorities.

32    SARB commenced with the following statements of principle in Ebner v Official Trustee in Bankruptcy [2000] HCA 63; 205 CLR 337 (Gleeson CJ, McHugh, Gummow and Hayne JJ):

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.

7    The apprehension of bias principle may be thought to find its justification in the importance of the basic principle, that the tribunal be independent and impartial. So important is the principle that even the appearance of departure from it is prohibited lest the integrity of the judicial system be undermined. There are, however, some other aspects of the apprehension of bias principle which should be recognised. Deciding whether a judicial officer (or juror) might not bring an impartial mind to the resolution of a question that has not been determined requires no prediction about how the judge or juror will in fact approach the matter. The question is one of possibility (real and not remote), not probability. Similarly, if the matter has already been decided, the test is one which requires no conclusion about what factors actually influenced the outcome. No attempt need be made to inquire into the actual thought processes of the judge or juror.

8    The apprehension of bias principle admits of the possibility of human frailty. Its application is as diverse as human frailty. Its application requires two steps. First, it requires the identification of 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 no less important. There must be an articulation of the logical connection between the matter and the feared deviation from the course of deciding the case on its merits. 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.

(Emphasis in original.)

33    SARB also relied on Livesey v The New South Wales Bar Association (1983) 151 CLR 288 at 293 – 300, particularly at 294, where the High Court said:

In a case such as the present where there is no allegation of actual bias, the question whether a judge who is confident of his own ability to determine the case before him fairly and impartially on the evidence should refrain from sitting because of a suggestion that the views which he has expressed in his judgment in some previous case may result in an appearance of pre-judgment can be a difficult one involving matters “of degree and particular circumstances may strike different minds in different ways” ... . If a judge at first instance considers that there is any real possibility that his participation in a case might lead to a reasonable apprehension of pre-judgment or bias, he should, of course, refrain from sitting. On the other hand, it would be an abdication of judicial function and an encouragement of procedural abuse for a judge to adopt the approach that he should automatically disqualify himself whenever he was requested by one party so to do on the grounds of a possible appearance of pre-judgment or bias, regardless of whether the other party desired that the matter be dealt with by him as the judge to whom the hearing of the case had been entrusted by the ordinary procedures and practice of the particular court. ...

34    At 298 – 299, their Honours said:

… As we have already indicated, however, we do not consider that a case such as the present is to be resolved by reference to the ability of the members of a particular court or to public confidence in the integrity of the judiciary. What is in issue in the present case is the appearance and not the actuality of bias by reason of prejudgment. The reasonable observer is to be presumed to approach the matter on the basis that ordinarily a judge will so act as to ensure both the appearance and the substance of fairness and impartiality. But the reasonable observer is not presumed to reject the possibility of pre-judgment or bias; nor is the reasonable observer presumed to have any personal knowledge of the character or ability of the members of the relevant court …

35    At 300, their Honours said:

… 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 pre-judgment 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. …

36    SARB also took me to various passages from British American Tobacco Australia Services Limited v Laurie [2011] HCA 2; 242 CLR 283; Minister for Immigration and Multicultural Affairs v Jia Legeng [2001] HCA 17; 205 CLR 507 (at [185] per Hayne J); GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 150 (GlaxoSmithKline); Embertec Pty Limited v Energy Efficient Technologies Pty Limited (No 2) [2013] FCA 347 (particularly at [22] with respect to previous findings concerning the construction of a patent specification); Australian Mud Company Pty Ltd v Globaltech Corporation Pty Ltd [2020] FCA 811; and Vakauta v Kelly (1989) 167 CLR 568 (Vakauta v Kelly).

37    In addition to these authorities, VMS took me to Charan v Secretary, Department of Social Services [2019] FCAFC 134; 167 ALD 206, especially at [24] where the Full Court referred to Mason J’s observations in Re JRL; Ex parte CJL (1986) 161 CLR 342 at 352 which emphasise that the ground of disqualification is a reasonable apprehension of bias that the judicial officer will not decide the case impartially or without prejudice, not a reasonable apprehension that the judicial officer will decide the case adversely to one party.

38    The parties’ written submissions contained other references to authorities, which I have considered.

Submissions

SARB’s submissions

39    In its submissions SARB makes clear that at the substantive hearing of this proceeding it will contend that my finding as to the meaning of “wake-up signals” in the 2013 reasons, construed by reference to the complete specification of the 354 patent and the evidence that was then before me, should not be adopted in relation to the construction of the complete specifications (including claims) of the 110 patent and the 924 patent. Whilst accepting that the evidence in this proceeding might provide a different or more extensive context for the interpretation of that expression (because, amongst other things, the question of obviousness is in play on SARB’s cross-claim), it submits that VMS’s case, based on its pleadings and Mr Spirovski’s proposed evidence, is perfectly clear: VMS will contend, in effect, that the references to “wake-up signals” in the complete specifications of the 110 patent and the 924 patent are indistinguishable from the same references in the complete specification of the 354 patent and that, by the 2013 reasons, I have already decided the critical questions of construction that will be presented for determination.

40    Even though the construction of the patent specification involves a question of law, SARB submits that the fair-minded lay observer is likely to consider that the Court, as currently constituted, may cleave to its earlier findings on construction. Thus, having regard to the way in which VMS is likely to present its case in chief, SARB submits that a fair-minded lay observer might reasonably apprehend that I might not bring an impartial mind to the question of whether the First PinForce Sensor, the First PinForce Method and the First PinForce System infringe the claims of the 110 patent and the 924 patent in so far as they refer to any integer explicitly or implicitly related to the concept of “wake-up signals”.

41    SARB advances a similar submission with respect to the determination of the priority dates of the claims in suit of the 110 patent and the 924 patent having regard to my findings in the 2013 reasons as to what is disclosed in the provisional specification, the grandparent specification and the parent specification, and the evaluation I made as part of the fair basis analysis I undertook to determine the priority date of the claims of the 354 patent.

42    SARB submits that the present case is distinguishable from a case in which a trial judge expresses preliminary or provisional views in the course of determining an interlocutory application within an existing proceeding: see, for example, the observations in GlaxoSmithKline at [43] – [49]. SARB relies on the fact that, in the 2013 reasons, I expressed firm, clear and considered views on the correct construction of “wake-up signals”. In the course of expressing those views, I rejected different views expressed by the parties’ respective expert witnesses. SARB submits that I also expressed firm, clear and concluded views as to what was disclosed by the provisional specification, the grandparent specification and the parent specification. Those disclosures are fundamental to the determination of priority dates of the claims of the 110 patent and the 924 patent. All these findings are now in issue.

VMS’s submissions

43    VMS accepts that should its estoppel contentions fail then, at trial, the Court will be called upon to determine the meaning of “wake-up signals” in the context of the complete specifications of the 110 patent and the 924 patent and the priority date of the claims in suit having regard to the disclosures in the provisional specification, the grandparent specification and the parent specification. VMS submits that there is no basis for concluding that the Court, as presently constituted, would simply apply an opinion expressed in the 2013 reasons without giving fresh consideration to the meaning of “wake-up signals” taking into account the facts and arguments to be presented at trial. In this regard, VMS relies on the following observation I made in VMS (No 1):

60    First, despite the similarity in language and general subject matter of the claims litigated in the first proceeding and the claims sought to be litigated in the present proceeding, there can be no question of conflicting judgments being given. This is because the rights asserted by VMS in the first proceeding derive from the 354 patent, whereas the rights asserted in the present proceeding (relevant to the question of Anshun estoppel) derive from the 110 patent. As legal conceptions, each bundle of rights is discrete from the other, even though the patents in question are related in the way I have described. Whatever judgment might or might not be made in relation to infringement of the 110 patent, it could not contradict or impeach the judgment on liability given in respect of the 354 patent.

44    VMS submits that SARB’s submissions do not engage with the question of impartiality. Rather, those submissions are tantamount to a contention that a fair-minded lay observer might consider that an alternative Judge might be less likely to make a decision adverse to it. This is not the test. VMS also submits that the case for recusal is weaker in the context of views expressed in a separate proceeding compared to views about a case that might be expressed at an interlocutory stage of a proceeding.

45    VMS submits that the fact that Mr Spirovski is to give evidence on its behalf does not assist SARB because the role of experts in the construction of patent specifications is limited; construction is, essentially, a question for the Court to determine as a matter of law.

46    As I have already noted, VMS complains of SARB’s delay in bringing its interlocutory application. It submits that its position on questions of construction is unlikely to have come as a surprise to SARB or to have emerged only through the evidence VMS has filed in support of its infringement claim.

47    VMS also submits that even though SARB foreshadowed the possibility of bringing the present interlocutory application as early as the first case management hearing (see [3] above), the fair-minded lay observer can also be taken to know that SARB, having considered the reasons for judgment in VMS No 1, did not take the foreshadowed step of seeking to have the proceeding removed from my docket but, instead, consented to orders fixing the proceeding for hearing before me. VMS submits that, for this reason, SARB has waived its right to now have the proceeding docketed to another Judge. Alternatively, VMS submits that the fair-minded lay observer might perceive that SARB is doing no more than a seeking to find a Judge more likely to decide the present case in its favour—a perception which is liable to undermine, rather than enhance, confidence in the judicial system.

48    Finally, as I have already noted, VMS submits that the removal of this proceeding from my docket into the docket of another Judge is likely to result in the presently-fixed hearing dates being vacated, delaying the determination of its claim.

Conclusion

49    Having considered the competing submissions, and taken time to reflect, I am persuaded that it is appropriate that the proceeding be removed from my docket. I have arrived at this decision not because of any belief, let alone concern, on my part that I might not consider the relevant questions of construction and the question of priority dates afresh with a mind open to persuasion, but because I am persuaded that, realistically, there might be a genuine perception, reasonably held, that I might not do so having regard to the firm way in which I expressed my findings on those questions in the 2013 reasons.

50    Although the task of construing patent specifications, including when they function as priority documents, can be informed by evidence that is relevant and admissible to that task, one cannot escape the fact that the task is essentially evaluative, with the focus being on the words, descriptions and explanations given and used in the documents themselves. That being so, I accept that the lay observer, although taken to be fair-minded and informed, might nevertheless reasonably perceive that the views I have previously expressed are, or at least might be, fixed views, precisely because they do involve the construction of documents, and that those views will inevitably carry over to the construction, in the present proceeding, of closely similar documents (related patent specifications involving identical expressions and text). Moreover, the present proceeding concerns (but is not limited to) products and methods that I have previously found to be infringements based on my findings as to construction in the 2013 reasons.

51    I do not accept, therefore, VMS’s contention that SARB’s submissions do not engage with the issue of impartiality. I also do not accept that the perception I discern would be attenuated by the observations I made in VMS (No 1) at [60], which were directed to the technical question of conflicting judgments, rather than the question of the construction of documents.

52    I am troubled by the fact that SARB’s interlocutory application has only been brought recently. It has sought to justify the timing of its application by arguing that an earlier application would have been premature (for example, VMS’s estoppel allegations were only pleaded, and Mr Spirovski’s affidavit was only filed, earlier this year). Even so, I think it was plainly on the cards that, to the extent that there was an overlap of issues between the first proceeding and this proceeding, VMS would appeal, in this proceeding, to the earlier findings I had made in the 2013 reasons. SARB must have known that its response to that appeal would be substantially along the lines of the arguments it now raises.

53    This prospect was sufficiently in SARB’s contemplation at the first case management hearing on 18 March 2019 for it to foreshadow the bringing of such an application. Indeed, at that time the substance of the submissions it was proposing to advance at the hearing of its interlocutory application for a permanent stay of this proceeding (leading to VMS (No 1)) as to the close similarity between the complete specifications of the 354 patent, 110 patent and 924 patent, must have been top of mind. And yet it was some five months after I had listed the hearing of the proceeding before me, and some 16 months after the first case management hearing, that SARB filed its present interlocutory application.

54    In my view, SARB could have, and should have, moved much earlier than it did. There was no need for it to await the completion of the timetabling steps of the orders I made on 14 February 2020 (designed to bring the proceeding into readiness for hearing) before raising with the Court again the concerns that it obviously entertained. There was ample opportunity for SARB to air those concerns more fully after judgment was given in VMS (No 1) on 10 January 2020. Indeed, it should have done so at the first case management hearing after that judgment was given, when I expressed my determination to have the proceeding listed for hearing as soon as reasonably possible.

55    That said, I do not think that these observations warrant a different decision on my part. Having come to the decision which I think should be made, I do not believe that I should resile from giving effect to it simply because of the delay on SARB’s part to which I have referred. VMS and SARB are fierce competitors and no strangers to litigation against each other in this Court in respect of their respective parking overstay systems. The interests of justice will certainly not be served if the ultimate result of the present proceeding, which is a further episode in the disputes between them, is tainted by an apprehension of bias on the part of the Court.

56    Further, I am not persuaded that SARB has waived its entitlement to bring the present application. The present case is different to that contemplated in, say, Vakauta v Kelly where the complaining party elects to proceed to judgment in the face of an apprehension of bias on the part of the judicial officer so as to chance the possibility of a favourable judgment, only to resile from that election when an unfavourable judgment is delivered. Here, SARB foreshadowed a possible recusal application at the first case management hearing, but then did not proceed to make that application until much later. One justification for that approach might be the fact that it would not need to make such an application if its then existing application for a permanent stay of the proceeding were to be granted. However, as at 10 January 2020, SARB knew that its application in that regard had failed. As I have said, there was ample opportunity for it to then re-agitate its concerns about an apprehension of bias. Be that as it may, the more important consideration when determining whether SARB has waived its entitlement to bring its present application is that it has not elected to proceed to judgment on issues which it contends might be affected by that apprehension of bias. The other interlocutory applications I have heard and determined in this proceeding since giving judgment in VMS (No 1) are not affected in the way that SARB contends that a trial on liability, by the Court as presently constituted, would be affected. Those interlocutory applications did not raise the questions of the proper construction of the complete specifications of the 110 patent and the 924 patent or of the priority date of the claims in suit.

Disposition

57    I will make an order that the proceeding be allocated to the docket of a different Judge. SARB seeks an order that the costs of its interlocutory application be costs in the proceeding. At the present time, I am not persuaded that that order is appropriate. VMS is justified in expressing its concern that an order re-allocating the proceeding may jeopardise the presently listed hearing dates. There may be other consequences bearing upon costs. As the immediate consequences of allocating the proceeding to the docket of a different Judge are not presently known, I propose to reserve the question of costs.

Associate:

Dated:    27 August 2020