Federal Court of Australia
Howden Australia Pty Ltd v Minetek Pty Ltd (Release of Implied Undertaking) [2022] FCA 1202
ORDERS
First Applicant JAMES HOWDEN & COMPANY LTD Second Applicant | ||
AND: | MINETEK PTY LTD ACN 167 164 936 First Respondent MINETEK INVESTMENTS PTY LTD Second Respondent REMY MARCEL SYDNEY BOURCIER Third Respondent | |
DATE OF ORDER: |
THE COURT ORDERS THAT:
1. The Applicants’ interlocutory application be dismissed with costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
PERRAM J:
1 Pending in this docket is a case which concerns large scale industrial fans known as mixed flow fans. For determination at trial is the broad question of whether the Respondents have misappropriated the Applicants’ confidential information about one of its fans and used it illicitly to fashion their own fan. One of the allegations that the Applicants make is that the Respondents have used their confidential information to prepare and to file at the Australian Patents Office two applications for patents in respect of a mixed flow fan. In respect of that allegation, it will be necessary at trial for the Court to determine: (a) whether the confidential information was taken by the Respondents as alleged; and (b) whether it was used in the preparation of the patent applications.
2 Pending before a delegate of the Registrar of Patents are opposition proceedings by which the Applicants oppose the grant to the Respondents of the two patents. One of the grounds on which they rely is that the Respondents are not entitled to the patents since they are the fruits of the Applicants’ allegedly misappropriated confidential information. Consequently the same two questions which are pending in this litigation are also pending before the delegate.
3 The question of whether the confidential information was used in the creation of the Respondents’ mixed flow fan is the subject of expert evidence from Dr Robinson, who says that it was, and Dr Sheard, who disagrees. Both experts have given close consideration to what is said to be the confidential information and have compared it to the Respondents’ fan, although reaching opposite conclusions.
4 The experts’ reports, and the confidential information which they assay, are subject to two sets of confidentiality obligations. These exist because in practical terms there is no point in having a suit to enforce the confidentiality of information if, in the course of the suit, the information is made public.
5 One set of obligations consists of express confidentiality undertakings to the Court which have been proffered by persons who have been permitted to access the confidential information. The other arises from the implied undertaking that documents obtained in the course of proceedings as a result of compulsory process or a court order will not be used for any purpose extraneous to those proceedings. Sometimes this is referred to as the Harman undertaking and sometimes as the Hearne v Street obligation: see Harman v Secretary of State for the Home Department [1983] 1 AC 280; Hearne v Street [2008] HCA 36; 235 CLR 125.
6 The Applicants now wish to use Dr Robinson’s report, and the confidential information itself, to persuade the delegate that the Respondents are not entitled to their patents. To do so, it seeks to be released from both sets of undertakings. The principles are clear. The Applicants will be entitled to be released from the undertakings if they demonstrate the existence of special circumstances. The course of authority confirms that it suffices to show special circumstances by demonstrating the existence of some good reason to release the undertakings.
7 I accept that the proposed use by the Applicants constitutes a special circumstance which, in principle, would justify a release from the undertaking.
8 Despite that, I am not going to take that course. The proceedings before the delegate are subject to a de novo appeal to this Court. Assuming the delegate decides the proceedings in November this year, any such appeal will be filed towards the end of this year and be returnable before a judge, very likely me, in the new year. On the other hand, the present matter is set down for a three week trial commencing on 3 April 2023. That trial will determine whether the confidential information was taken and whether it was used in the preparation of the two patent applications. It will therefore create issue estoppels between the parties on those two issues.
9 When the de novo appeal comes on for hearing, those issues will therefore have already been determined and, at least on the entitlement issue, there will be nothing to do other than to give effect to the outcome of the trial judgment.
10 I therefore see no utility in allowing this complex debate to play out before the delegate. If I were to permit the Applicants to deploy Dr Robinson’s evidence, I would also have to permit the Respondents to rely on Dr Sheard’s evidence. The delegate would then be obliged to hear and determine the whole of the confidential information case pending before this Court and then the complex question of the extent to which the patents actually use the confidential information. Neither is the usual bailiwick of the Patents Office.
11 Where there is a de novo appeal to this Court on those self-same issues and I am, in any event, going to determine those issues after a three week trial, it would be wasteful to consign the delegate to such a fate, particularly where it would be for no purpose in view of the de novo appeal.
12 Put another way, the same two complex questions are pending before two Commonwealth officials: a judge of this Court and a delegate of the Registrar of Patents. I do not think it is a good use of the public resources of the Commonwealth to require both officials to perform the same task, particularly when the views of this Court on the question will prevail.
13 During the hearing of this application, there was some discussion of whether the Court might instead of releasing the Applicants from their undertakings, instead stay the proceedings before the delegate pending the outcome of the trial. If that were done, the delegate would not be obliged to deal with this issue since it would have been determined by the Court by the time the stay was lifted. On balance, I do not think this is the preferable course. There are other grounds of opposition before the delegate which are unaffected by this debate and there is no reason they should not be determined in the ordinary way. Further, it is relevant that these proceedings have been on foot for some time and it is only now, fairly late in the piece, that the idea of restraining the pursuit of the proceedings before the delegate has been raised. The time for this was, I think, somewhat earlier.
14 I therefore dismiss the application with costs.
I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Perram. |
