Austal Ships Pty Ltd v Stena Rederi Aktiebolag

REASONS FOR JUDGMENT 1 This is an application by motion, dated 15 March 2004, brought by the respondent for a change of venue. The proceeding is an appeal under s 60(4) of the Patents Act 1990 (Cth) ("Patents Act") from a decision of a delegate of the Commissioner of Patents dismissing the applicant's opposition to the grant to the respondent of the patent in application 648634. It is noted that on 16 August 2002, pursuant to an order of a judge of this Court, Frederikshavn Vaerft A/S (formerly Danyard A/S) was replaced by Austal Ships Pty Ltd as applicant in the proceedings: Frederikshavn Vaerft A/S v Stena Rederi Aktiebolag (2002) 124 FCR 243. 2 The respondent's patent application was accepted by the Australian Patent Office on 28 April 1994. The predecessor of the applicant filed a notice of opposition dated 27 July 1994. The hearing of the opposition took place in Canberra on 13 April 1999. The decision to dismiss the opposition and to allow the patent to proceed to sealing occurred on 29 March 2000. That grant has not been made since the proceeding in this court was commenced on 19 April 2000. 3 The applicant, who is the respondent to the motion, Austal Ships Pty Ltd is a company registered and based in Western Australia. It has retained patent attorneys and solicitors from Melbourne as well as counsel from the Victorian Bar. Of its 10 witnesses, six reside in Western Australia, three in New South Wales and one in Victoria. Evidence filed indicates that the nine witnesses outside Victoria all knew and accepted that they would be required to travel to Melbourne to give evidence in the proceeding. 4 The respondent is a Swedish company. It has retained patent attorneys and solicitors in Sydney, senior counsel from the Bar of New South Wales and junior counsel from Victoria. Of its three witnesses, one is based in Sydney, one is based in Melbourne (but is prepared to travel to Sydney to give evidence if required to do so) and one is in England. The total number of witnesses is 13. Being an appeal from a patent opposition proceeding the place where the cause of action arose is not a relevant factor. 5 The applicant has estimated that the trial will take three weeks, but the respondent believes it is possible it will only take two weeks. If the trial were to be transferred to the New South Wales District Registry in Sydney the matter can be brought on for hearing this year, whereas if it remains in Melbourne no trial date can be made available this year. 6 Section 48 of the Federal Court of Australia Act 1976 (Cth)("the FCA Act") provides: "The Court or a Judge may, at any stage of a proceeding in the Court, direct that the proceeding or a part of the proceeding be conducted or continued at a place specified in the order, subject to such conditions (if any) as the Court or Judge imposes." 7 Paragraph (f) of sub-r (2) of O 10 r 1 of the Federal Court Rules ("the Rules") provides that the court may: "Direct that the proceeding be transferred to a place at which there is a Registry other than the then proper place. Where the proceeding is so transferred the Registrar of the proper place from which the proceeding is transferred shall transmit all documents in his charge relating to the proceeding to the Registrar at the proper place to which the proceeding is transferred." 8 The test to be applied in considering motions to transfer a proceeding, pursuant to s 48 of the FCA Act and O 10 r 1(2)(f) of the Rules, was set out by a Full Court in National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155 ("National Mutual Holdings") at 162 as follows: "Ultimately the test is: where can the case be conducted or continued most suitably bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them and the most efficient administration of the Court." The test has been applied in many subsequent cases. 9 Dealing first with the interests of the parties, the applicant opposes the application for transfer on the basis of its convenience since its legal representatives are in Melbourne. It was submitted that the applicant was entitled to institute its proceedings in Melbourne and did so because of the calibre of its chosen representatives who are all based in Melbourne. It was contended it would sustain a significant expense to take its legal team to Sydney as it is too late to change its representation. It was also submitted correctly on behalf of the applicant that there would need to be "a sound reason to direct that the proceedings be conducted or continued elsewhere." See: Australian Competition and Consumer Commission v Pauls Ltd [2002] FCA 71 at [19]. 10 Since six of its witnesses are located in Western Australia where it is registered, three of its witnesses are from New South Wales, and only one is located in Victoria, the extra expense of a transfer for the applicant appeared to be significantly confined to its legal team. I accept that it is appropriate for the applicant to retain its chosen legal team and this is a factor to be weighed in the balance on this application. 11 Since the applicant's legal representatives are based in Melbourne, albeit with an office in Sydney, and the respondent's legal representatives, with the exception of junior counsel, are based in Sydney, wherever the proceeding is held it will involve costs of transportation and related costs, to one or other of the parties, which may need to be taken into account when orders for costs are made. In this context, it can be observed that a transfer of the proceeding to the New South Wales District Registry does not mean that every day of the hearing must be in Sydney. It will be a matter for the trial judge to determine cost efficiencies and any other matters which may be relevant to hearing some of the proceeding at court venues in Western Australia and Victoria. So far as witnesses are concerned there are greater connections between the proceeding and New South Wales than there are with Victoria, though there are also connections between the applicant, through its witnesses, and Western Australia. It might be supposed that representatives of the applicant and the applicant's witnesses in Western Australia are in much the same position whether travelling to Sydney or Melbourne for the purposes of the hearing. The respondent's connections with New South Wales have been referred to above. 12 Secondly, as this is a matter concerning the Australia patent registration system, it is in the interests of the Australian public that there be such expedition in determining an appeal under s 60(4) of the Patents Act as soon as is possible. This is a particularly weighty factor since the decision to allow the patent to proceed to grant occurred four years ago. The purpose of opposition proceedings is to provide a swift and economical method of ensuring that a patent does not proceed to grant if it should not be permitted to go on the Register of Patents, a matter in which there is a strong public interest as recognised by Emmett J in F Hoffman La Roche v New England Biolabs Inc (2000) 99 FCR 56 at [46]. See also Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at [19]-[21]. 13 Thirdly, the court can accommodate a hearing of the proceeding in the New South Wales District Registry this year whereas that cannot be arranged in Melbourne. The matter has been on foot in the court for almost four years and has been ready for hearing since November 2003. Representatives of both parties have indicated all their witnesses, counsel and other necessary persons are available for a hearing in November this year. Efficient case management and a public interest in prompt resolution can be weighed in the balance when considering an application for a change of venue: Friends of Hinchinbrook Society v Minister for Environment (No. 1) (1996) 69 FCR 1 at [25]. A transfer from Melbourne to Sydney achieves the "most efficient administration of the court" in the terms referred to in National Mutual Holdings. As earlier mentioned, whether or not any part of the hearing might be conducted conveniently elsewhere should be a matter for the trial judge. 14 Taking into account and weighing up the original choice of venue, the location of legal representatives, the location of witnesses, the public interest in determining an appeal under s 60(4) of the Patents Actpromptly and efficient case management of a national court, the balance of all the factors and circumstances of the case favours a transfer of the proceeding. Accordingly I propose to order that the proceedings hereafter be conducted or continued in the District Registry of the Court in New South Wales at Sydney and that the costs of the motion, as sought in the motion, be the costs of the respondent in any event. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Crennan.