Abuse of Process
53 This Court has the power to prevent its procedures from being abused. The Court can strike out or dismiss a claim or defence which is an abuse of process.
54 In Walton v Gardiner [1993] HCA 77; (1993) 177 CLR 378 (Walton v Gardiner), Mason CJ, Deane and Dawson JJ described the inherent jurisdiction of a superior court to prevent an abuse of its processes in the following terms (at 392-393):
The inherent jurisdiction of a superior court to stay its proceedings on grounds of abuse of process extends to all those categories of cases in which the processes and procedures of the court, which exist to administer justice with fairness and impartiality, may be converted into instruments of injustice or unfairness. Thus, it has long been established that, regardless of the propriety of the purpose of the person responsible for their institution and maintenance, proceedings will constitute an abuse of process if they can be clearly seen to be foredoomed to fail. Again, proceedings within the jurisdiction of a court will be unjustifiably oppressive and vexatious of an objecting defendant, and will constitute an abuse of process, if that court is, in all the circumstances of the particular case, a clearly inappropriate forum to entertain them. Yet again, proceedings before a court should be stayed as an abuse of process if, notwithstanding that the circumstances do not give rise to an estoppel, their continuance would be unjustifiably vexatious and oppressive for the reason that it is sought to litigate anew a case which has already been disposed of by earlier proceedings. The jurisdiction of a superior court in such a case was correctly described by Lord Diplock in Hunter v. Chief Constable of the West Midlands Police as "the inherent power which any court of justice must possess to prevent misuse of its procedure in a way which, although not inconsistent with the literal application of its procedural rules, would nevertheless be manifestly unfair to a party to litigation before it, or would otherwise bring the administration of justice into disrepute among right-thinking people".
(Citations omitted.)
In this passage, their Honours identify a class of case where a proceeding is unjustifiably vexatious and oppressive because, although not giving rise to an estoppel, the plaintiff or applicant seeks to litigate anew a case which has already been disposed of by an earlier proceeding. Their Honours referred to two authorities in connection with that class of case which I refer to in turn below.
55 In Reichel v Magrath (1889) 14 App Cas 665, the plaintiff unsuccessfully brought an action for a declaration that he had not resigned as vicar of a benefice. His successor to the benefice, who had not been a party to the first action, brought a claim against the plaintiff for relief in relation to the benefice. The plaintiff sought to defend the action on the same basis he had advanced in the original action. It was held that his defence was frivolous and vexatious and an abuse of process. Lord Halsbury LC said the following:
My Lords, I think it would be a scandal to the administration of justice if, the same question having been disposed of by one case, the litigant were to be permitted by changing the form of the proceedings to set up the same case again. It cannot be denied that the only ground upon which Mr. Reichel can resist the claim by Mr. Magrath to occupy the vicarage is that he (Mr. Reichel) is still vicar of Sparsholt. If by the hypothesis he is not vicar of Sparsholt and his appeal absolutely fails, it surely must be in the jurisdiction of the Court of Justice to prevent the defeated litigant raising the very same question which the Court has decided in a separate action.
I believe there must be an inherent jurisdiction in every Court of Justice to prevent such an abuse of its procedure and I therefore think that this appeal must likewise be dismissed.
56 The other case their Honours referred to in Walton v Gardiner was a case involving criminal offences: Connelly v Director of Public Prosecutions [1964] AC 1254; [1964] 2 All ER 401. The House of Lords applied a similar principle saying that the doctrines of autrefois acquit and autrefois convict did not exhaust the powers of the Court to prevent a person from being convicted twice in relation to the same matter.
57 The doctrine of abuse of process is not restricted to defined and closed categories. As Gaudron J said in Ridgeway v The Queen [1995] HCA 66; (1995) 184 CLR 19 at 74-75, this is because:
… notions of justice and injustice, as well as other considerations that bear on public confidence in the administration of justice, must reflect contemporary values, and, as well, take account of the circumstances of the case.
Her Honour went on to say that at the same time the concept of "abuse of process" is not at large or, indeed, without meaning.
(See also Aon Risk Services Australia Limited v Australian National University [2009] HCA 27; (2009) 239 CLR 175 at [34] per French CJ.)
58 In Rogers v The Queen [1995] HCA 42; (1994) 181 CLR 251 (Rogers) at 286, McHugh J said that although the categories of abuse of process are not closed, abuses of procedure usually fall into one of three categories which he identified as follows:
… (1) the court's procedures are invoked for an illegitimate purpose; (2) the use of the court's procedures is unjustifiably oppressive to one of the parties; or (3) the use of the court's procedures would being the administration of justice into disrepute.
59 Estoppel is a distinct doctrine from abuse of process, although the doctrines may overlap on the facts of a particular case. There is no plea or argument in this case of res judicata or judgment estoppel, or issue estoppel, strictly so called. The third type of estoppel is Anshun estoppel and it means that an estoppel may arise in relation to an issue, which although not raised in earlier proceedings, should have been raised in those earlier proceedings in the sense that it was unreasonable for the party not to raise it. In Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45; (1981) 147 CLR 589 (Anshun), Gibbs CJ, Mason and Aickin JJ said (at 602-603):
In this situation we would prefer to say that there will be no estoppel unless it appears that the matter relied upon as a defence in the second action was so relevant to the subject matter of the first action that it would have been unreasonable not to rely on it. Generally speaking, it would be unreasonable not to plead a defence if, having regard to the nature of the plaintiff's claim, and its subject matter it would be expected that the defendant would raise the defence and thereby enable the relevant issues to be determined in the one proceeding. In this respect, we need to recall that there are a variety of circumstances, some referred to in the earlier cases, why a party may justifiably refrain from litigating an issue in one proceeding yet wish to litigate the issue in other proceedings e.g. expense, importance of the particular issue, motives extraneous to the actual litigation, to mention but a few.
(See also Wong v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCAFC 242; (2004) 146 FCR 10 at [36]-[37].)
60 In Tomlinson v Ramsay Food Processing Pty Limited [2015] HCA 28; (2015) 256 CLR 507 (Tomlinson), the High Court explained the difference between estoppel and abuse of process and the fact that they may overlap in a particular case. The Court said (at [24]-[26]):
To explain contemporary adherence to the comparatively narrow principle in Ramsay v Pigram, it is appropriate also to explain the relationship between the doctrine of estoppel and the doctrine of abuse of process as it has since come to be recognised and applied in Australia. The doctrine of abuse of process is informed in part by similar considerations of finality and fairness. Applied to the assertion of rights or obligations, or to the raising of issues in successive proceedings, it overlaps with the doctrine of estoppel. Thus, the assertion of a right or obligation, or the raising of an issue of fact or law, in a subsequent proceeding can be simultaneously: (1) the subject of an estoppel which has resulted from a final judgment in an earlier proceeding; and (2) conduct which constitutes an abuse of process in the subsequent proceeding.
Abuse of process, which may be invoked in areas in which estoppels also apply, is inherently broader and more flexible than estoppel. Although insusceptible of a formulation which comprises closed categories, abuse of process is capable of application in any circumstances in which the use of a court's procedures would be unjustifiably oppressive to a party or would bring the administration of justice into disrepute. It can for that reason be available to relieve against injustice to a party or impairment to the system of administration of justice which might otherwise be occasioned in circumstances where a party to a subsequent proceeding is not bound by an estoppel.
Accordingly, it has been recognised that making a claim or raising an issue which was made or raised and determined in an earlier proceeding, or which ought reasonably to have been made or raised for determination in that earlier proceeding, can constitute an abuse of process even where the earlier proceeding might not have given rise to an estoppel . Similarly, it has been recognised that making such a claim or raising such an issue can constitute an abuse of process where the party seeking to make the claim or to raise the issue in the later proceeding was neither a party to that earlier proceeding, nor the privy of a party to that earlier proceeding, and therefore could not be precluded by an estoppel.
(Citations omitted.)
61 This case does not involve Anshun estoppel. It was not pleaded or argued by the respondents. In any event, it could not be made out. The Parent Application could not have been brought into the WA Proceeding because it had not resulted in the grant of a patent at the time of the WA Proceeding and, in fact, did not result in the grant of a patent. The System Patent and the Method Patent had not been granted at the time of the trial in the WA Proceeding and could not have been brought into that proceeding. As I will explain later, it was not unreasonable for the applicants not to bring this proceeding into the NSW Proceeding.
62 I return to the categories of abuse of process identified by McHugh J in Rogers. The first category is not said by the respondents to be relevant. There is no suggestion that the applicants have instituted this proceeding for any purpose other than the legitimate purpose of enforcing their intellectual property rights. It is difficult to see how it falls within the third category which to date has been primarily directed at collateral attacks on earlier judgments, or inconsistent findings (O'Shane v Harbour Radio Pty Ltd [2013] NSWCA 315; (2013) 85 NSWLR 698 at [226]; Rogers at 256-257). There is no possibility of inconsistent findings in this case because infringement is admitted by all respondents other than Goldview, which is a new respondent and, as far as it is concerned, there is a factual issue about its involvement.
63 The case does not fall within the class of case identified by Mason CJ, Deane and Dawson JJ in Walton v Gardiner and discussed above. When the applicants instituted the NSW Proceeding, they had litigated a case about the Device Patent. They were unsuccessful in that case because of the terms of the patent and they paid the costs of that proceeding. They had not litigated a case about the System Patent and the Method Patent. They were not seeking to litigate anew a case which had already been disposed of by earlier proceedings.
64 It is important to note that the applicants pursued their applications for further patents in relation to a complete application for a patent in a manner permitted by the Patents Act. The respondents did not argue to the contrary.
65 "Patent" is defined in the Dictionary in the Patents Act to mean a standard patent or an innovation patent. Chapter 6 of the Patents Act deals with the grant of patents and the terms of patents. The term of a standard patent is 20 years from the date of the patent, and the term of an innovation patent is 8 years from the date of the patent (ss 67 and 68 of the Patents Act).
66 Chapter 6A deals with divisional applications prior to the grant of a patent. Section 79B provides that if a complete application for a patent is made and it is not a divisional application for an innovation patent provided for in s 79C, the applicant may make a further complete application for a patent for the invention disclosed in the specification filed in relation to the first application. The further application can only be made during certain periods and relevant in this case, is the period starting on the day that the first application was made and ending when the first application lapses (s 79B(3)(b)(i)).
67 Section 79C provides that a patentee of an innovation patent may make a complete application for another innovation patent for a further invention disclosed in the first innovation patent if the invention was disclosed in the complete specification filed in respect of the application on which the first patent was granted.
68 The system of innovation patents was introduced into the Patents Act in 2000 (Patents Amendment (Innovation Patents) Act 2000 (Cth)) and it replaced the petty patent system. In the Second Reading Speech for the Act, the Minister referred to the innovation patent system, as a "second tier" patent system designed to better address the needs of business, particularly small to medium size enterprises. The Minister said that the innovation patent will be relatively inexpensive, quick and easy to obtain. The Minister said that it will provide the same scope of protection as a standard patent, but that it will require a lower inventive threshold than that required for a standard or petty patent. The maximum patent term for an innovation patent will be eight years compared to a 20-year term for a standard patent. The Minister stated that a substantive examination of an innovation patent will only occur if directed by the Commissioner of Patents, or is requested by the patent owner or a third party. An owner of an innovation patent may only take action to exercise their rights if their patent has been substantively examined.
69 In Coretell v Australian Mud Company [2017] FCAFC 54; (2017) 250 FCR 155, Burley J (with whom Jagot and Nicholas JJ agreed) identified benefits in filing divisional applications. His Honour said (at [33]):
There are several benefits to a patentee in filing divisional applications. One is that where the claims of the divisional are fairly based on matters disclosed in the parent (or, where relevant, the grandparent) the priority date of a divisional mirrors that of its ancestor; reg 3.12(1)(c) and (2C); Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) (Bodkin) at [11120]. Another concerns the procedure for filing patents. As the author of Bodkin explains, the most obvious reason for filing a divisional application is to accommodate the requirement that the claims of a patent relate to a single invention only pursuant to s 40(4) of the Act. If a standard or innovation patent application filed is found upon examination to claim more than one invention, the applicant or patentee must delete or remove claims. The provisions in relation to divisional applications then permit the applicant or patentee to apply for a patent in respect of the invention disclosed, but no longer claimed; Bodkin at [11120]. Another benefit arises where patent applicants have not gained acceptance of their patent application within the available time from the date of the first examination report (normally within 12 or 21 months of the first examination report, depending on when examination was requested; reg 13.4). By filing a divisional application near the due date for acceptance of the parent, a further time extension is effectively granted; Bodkin [11130].
70 A summary of my conclusions to this point is as follows. There is no Anshun or other estoppel in this case. Furthermore, the case does not fall within the class of case identified in Walton v Gardiner of attempting to relitigate an issue or dispute which has been determined in earlier proceedings, as to which see also Coffey v Secretary, Department of Social Security [1999] FCA 375; (1999) 86 FCR 434 at 443. The manner in which the applicants have pursued their intellectual property rights has been in accordance with the Patents Act.
71 In support of their case of an abuse of process, the respondents placed great reliance, by way of analogy, on the approach taken by the English Courts to an application by a patentee to amend a patent after an unsuccessful defence to a challenge to the validity of a patent. Notions of abuse of process have been employed by the English Courts, either on a challenge to the making of the application for leave to amend, or as part of the consideration of whether the application for leave should be granted.
72 The respondents pointed out, correctly, that each of the patents claim a priority date from the Provisional Patent Application and each of them derive from the invention disclosed in the Parent Application. The respondents submit that suing in multiple proceedings on multiple divisional patents arising from the same original disclosure is, in substance, no different from suing in multiple proceedings on one patent which is continually amended.
73 In Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (Windsurfing International), claims in a patent were held to be invalid because they were anticipated by prior use and were obvious in light of a prior written article. The patentee then sought leave to amend the claims, but the primary judge refused leave to amend. The Court of Appeal dismissed an appeal against the primary judge's exercise of discretion to refuse leave to amend. The Court held that the primary judge had not erred in refusing the application for leave to amend under the statutory power to allow an amendment (Patents Act 1949 (UK) s 30). The Court did so having regard to a number of considerations, including the fact that the issue was not raised previously and would necessitate a substantial second hearing. The Court said (at 81-82):
In the first place, as Mr Young has pointed out, it was for the plaintiffs, if they wished to support their claim to monopoly on some alternative basis, to raise the point and adduce the appropriate evidence for that purpose at the trial. In fact, however, no-one, from first to last, advanced or considered the specialised qualities of a surfboard as an inventive concept and the suggestion that there should be an adjournment for this now to be raised and investigated as the basis for the claim to monopoly involves, in effect, a fresh trial, the recalling of most, if not all, of the most important witnesses, and a considerable degree of recapitulation of the evidence as well as the calling of fresh evidence on an issue never previously suggested either in the specification or a pleadings. We would require considerable persuasion that the imposition upon a successful defendant of such a manifestly inconsistent and oppressive course would be a proper exercise of discretion even in an otherwise strong case. But, if it is to be justified at all, there must at least be ground for some degree of confidence in that such an exercise is capable of yielding a useful result and that, in our judgment, is conspicuously lacking here.
74 In Generics (UK) Limited (Trading as Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006; [2016] RPC 1, the patentee, after a trial which resulted in a number of claims in its patent being held invalid, sought leave to amend the patent by (relevantly) rewriting one of the claims. The application for leave to amend was opposed and the primary judge held that the application for leave to amend was an abuse of process without deciding the merits of the amendment application.
75 The abuse of process argument was based on the proposition that the Court may regard it as abusive for a party to seek to raise in a second set of proceedings matters which should have been raised in earlier proceedings between that party and the same adversary. Floyd LJ (with whom Patten and Kitchin LJJ agreed) referred at length to the decision of the House of Lords in Johnson v Gore Wood & Co [2000] UKHL 65; [2002] 2 AC 1. In that case, Lord Bingham made the observation that there will rarely be a finding of abuse unless the later proceeding involves what the Court regards as unjust harassment of a party and that the correct approach is to ask if, in all the circumstances, a party's conduct is an abuse (at 31). Lord Millett said (at 59-60):
It is one thing to refuse to allow a party to relitigate a question which has already been decided; it is quite another to deny him the opportunity of litigating for the first time a question which has not previously been adjudicated upon. This latter (though not the former) is prima facie a denial of the citizen's right of access to the court conferred by the common law and guaranteed by art 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (Rome, 4 November 1950; TS 71 (1953); Cmd 8969). While, therefore, the doctrine of res judicata in all its branches may properly be regarded as a rule of substantive law, applicable in all save exceptional circumstances, the doctrine now under consideration can be no more than a procedural rule based on the need to protect the process of the court from abuse and the defendant from oppression. In Brisbane City Council v A G for Queensland [1978] 3 All ER 30 at 36, [1979] AC 411 at 425 Lord Wilberforce, giving the advice of the Judicial Committee of the Privy Council, explained that the true basis of the rule in Henderson v Henderson is abuse of process and observed that it -
'ought only to be applied when the facts are such as to amount to an abuse, otherwise there is a danger of a party being shut out from bringing forward a genuine subject of litigation'.
There is, therefore, only one question to be considered in the present case: whether it was oppressive or otherwise an abuse of the process of the court for Mr Johnson to bring his own proceedings against the firm when he could have brought them as part of or at the same time as the company's action. This question must be determined as at the time when Mr Johnson brought the present proceedings and in the light of everything that had then happened. There is, of course, no doubt that Mr Johnson could have brought his action as part of or at the same time as the company's action. But it does not at all follow that he should have done so or that his failure to do so renders the present action oppressive to the firm or an abuse of the process of the court. As May LJ observed in Manson v Vooght [1999] BPIR 376 at 387, it may in a particular case be sensible to advance claims separately. In so far as the so called rule in Henderson v Henderson suggests that there is a presumption against the bringing of successive actions, I consider that it is a distortion of the true position. The burden should always rest upon the defendant to establish that it is oppressive or an abuse of process for him to be subjected to the second action.
76 Floyd LJ then considered the application of this rule in the context of a patentee who seeks leave to amend claims in a patent after judgment on the issue of validity. His Lordship referred to the reasons for judgment of Jacob LJ in Nokia GmbH v IPCom GmbH & Co KG [2011] EWCA Civ 6; [2011] FSR 15 and Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906; [2006] FSR 4 and identified the following principles. First, the onus is on the party claiming an abuse of process to establish the abuse. Secondly, there is a general procedural rule that a party should normally not be allowed to advance in a second proceeding a matter he could have advanced in the first and this applies in patent litigation so that a party must bring before the Court the issues he seeks to have resolved so as to enable the Court to conclude the litigation between the parties. Thirdly, the Rules of Court which require the early identification of issues and the parties to face up to their cases at an early stage, not a later stage, reinforce the importance of the general procedural rule. Furthermore, not only are the private interests of the parties relevant, but there is an important public interest in the approach embodied in the general procedural rule. Fourthly, if a party fails to advance a case he could have advanced much earlier and does so without any real justification, then that can be an abuse of process because it is not normally procedurally fair to subject the other side to successive cases when that party could readily have put them at the same time. Finally, a finding that a claim or defence is an abuse of process will ordinarily lead to an order for striking out or dismissal and is only discretionary in a limited sense. Nevertheless, it is an evaluation by the primary judge of a number of factors and an appeal court will only interfere with the evaluation on limited grounds.
77 The Full Court of this Court considered the English approach in Woolworths Limited v BP plc (No 3) [2006] FCAFC 160; (2006) 70 IPR 270 (Woolworths v BP). In that case, the trade marks of an applicant for registration had been amended and then the amended trade marks had been contested, both at first instance and on appeal to this Court. The Full Court held that the trade marks had been amended contrary to the terms of s 65 of the Trade Marks Act 1995 (Cth). The applicant for registration sought an order from the Full Court that the applications for the trade marks in their unamended form be remitted to the primary judge for further consideration. The Court refused to make such an order. The Court said (at [7]-[12]):
Assuming (which was not seriously disputed) that there is available jurisdiction, we do not propose to make the orders sought by BP. It would not be consistent with the proper administration of justice to do so, and it would be quite unfair to put Woolworths to the trouble, risk and expense of a further trial (and, more likely than not, a further Full Court appeal). Mr Shavin said that the initiative for the amendments came from the registrar but that would not have prevented BP resisting them and appealing any adverse decision by the registrar. At all times the amendments were opposed by Woolworths, and BP chose to assert before the registrar, the primary judge and on the appeal to the Full Court the validity of the marks in their amended form.
In Nikken Kosakusho Works v Pioneer Trading Co [2005] All ER (D) 350 the English Court of Appeal was faced with a similar application. An integer of a patent claim was "an annular groove of predetermined depth". The trial judge construed this to mean "a groove whose depth the maker has decided in advance" and not, as the patentee argued, "approximately 3-5mm". The trial judge found the claim as so construed lacked novelty. After judgment the patentee sought an amendment to delete "predetermined depth" and substitute the 3-5mm measurement. The trial judge's refusal was upheld by the Court of Appeal.
The leading judgment was that of Jacob LJ. His Lordship (at [13]) pointed out that the proposal would lead to two trials instead of one. An exercise of discretion to allow the amendment would be improper for three reasons. First, there was the "straightforward application" of the principles of Henderson v Henderson (1843) 3 Hare 100; [1843-60] All ER Rep 378. In Australia the corresponding authority, following Henderson, is Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589; 36 ALR 3. Generally speaking, after judgment a party to litigation will not be permitted to raise an issue which, acting reasonably, it should have raised in the proceedings before they were finally determined.
Second, there was the particular strictness with which courts have applied the Henderson rule in patent litigation: Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59.
Third, there was the overriding objective in the Civil Procedure Rules of saving expense. In answer to the argument that all these matters could be dealt with by compensation in costs, Jacob LJ said (at [22]):
[22] Moreover I am not satisfied that this case is only about costs. Always when the question of patent validity is in issue commercial uncertainty is created, not only for any of the parties involved but the public in general. The court is particularly entitled to have regard to that.
Mutatis mutandis, we think the same considerations apply to trade mark litigation and to the present case.
78 As I have said, the categories of abuse of process are not closed. Furthermore, the matters which informed the English approach are considerations of finality and fairness and they are, broadly speaking, the matters which the respondents rely on for the purposes of their abuse of process argument in this case. Nevertheless, I think that the English cases are a long way (if I may put it that way) from the circumstances of this case. This is not an application for leave to amend within s 105 of the Patents Act after an unsuccessful defence of a validity challenge. Perhaps more importantly, the matter which informs the English approach is Henderson v Henderson (1843) 3 Hare 100; [1843-60] All ER Rep 378 (Henderson) issue estoppel of which the Australian equivalent is, as the Full Court said in Woolworths v BP (at least as to matters not raised, but which should have been), Anshun estoppel. As I have already said, there is no Anshun estoppel in this case. For these reasons, I do not derive any real assistance from the English authorities in determining the abuse of process argument in this case.
79 In my opinion, unless there is something in the particular facts of this case showing an abuse of process - the onus being on the respondents to establish an abuse of process - the respondents' abuse of process argument must be rejected.
80 There is nothing in the particular facts showing an abuse of process.
81 The respondents made a general submission that the applicants had deployed a family of related patents strategically to embark on 10 years of patent litigation, in effect, litigating the same invention (extracted in four patents) in three separate sets of proceedings. They also submitted that the applicants' "patenting and litigation strategy" has allowed them to tailor their patent portfolio to overcome the non-infringement finding in the WA Proceeding and has resulted in a multiplicity of proceedings which have imposed a significant burden by providing ammunition for almost continuous litigation for the last 10 years. They also submitted that the timing of the filing of the Method Patent and the System Patent reflects a deliberate strategy to wait until a final decision was made on the Device Patent and appeals exhausted and then to re-agitate infringement of the Coretell Orishot tool again through more recently filed patents.
82 The evidence of Mr Brown was that there are, within the group of companies of which the applicants are a part, persons who advise and perhaps make the decisions on the applications for patents made by the applicants. None of those persons were called as witnesses by the applicants to give evidence as to the decisions made. Mr Brown was not one of those persons and he was not able to give evidence about the decisions and the reasons for those decisions. He attended meetings which gave him some passing knowledge of the general approach of the applicants with respect to their patent rights, but his evidence did not advance, in any significant way, an understanding of the applicants' approach. In cross-examination, he said that he thought that various decisions had been made as an intellectual property strategy, or to broaden the applicants' intellectual property and protect it. When he was asked to explain the reasons for filing the Method Patent and the System Patent, Mr Brown said:
I think it was more to have patents to prevent people from infringing your intellectual property is the - is the stance that the business takes.
83 Insofar as the respondents' general submission is to the effect that the applicants engaged in conduct for the purpose or with the intention of engaging in 10 years of litigation, it must be rejected. There is no evidence of such a strategy which, in any event, could only be described as bizarre and contrary to the applicants' own interests.
84 I agree with the applicants' submission that the main thrust of the respondents' abuse of process argument is the alleged failure to divide out the System Patent and the Method Patent and bring them into the WA Proceeding.
85 The applicants submitted that even if an abuse of process was potentially raised, there were a number of discretionary factors against a grant of relief. A summary of the matters they raised is as follows.
86 First, insofar as the NSW Proceeding is part of the abuse of process argument, it is to be noted that the applicants were successful in that proceeding.
87 Secondly, there was no election by the applicants in this case because they could not have brought the Standard Patent into the WA Proceeding and their actions with respect to the NSW Proceeding were not unreasonable.
88 Thirdly, insofar as fairness is a consideration, the respondents could have given an undertaking about the infringing tools once the Standard Patent had been granted.
89 Fourthly, despite being aware of the Standard Patent, at all material times Mr Kleyn delayed its grant by opposing it, and furthermore, did not suggest that it be brought into the NSW Proceeding.
90 Finally, none of the applicants' conduct has caused any prejudice to the respondents. They have been paid their costs of the proceeding in which they were successful.
91 I would not approach the issue in the manner suggested by the applicants. It is not a question of a potential abuse and then an examination of discretionary factors. On the face of it, and having regard to the existing authorities, this proceeding is not an abuse of process. Is there anything in the particular facts which suggests an abuse of process? The answer to that question is no and, in my opinion, the appropriate analysis involves the following propositions.
92 First, the applicants filed their application for the Device Patent in order to be in a position to enforce its intellectual property rights as soon as possible. That was a course permitted by the Patents Act and was in no way oppressive to the respondents or, indeed, any party.
93 Secondly, pursuing the Parent Application would, if regard is had to the lapse of time between filing and grant of the Standard Patent, delayed the enforcement of the applicants' intellectual property rights.
94 Thirdly, there is no reason to think that the applicants did not have a bona fide belief that they would be able to enforce their intellectual property rights by relying on the Device Patent. As it happens, their belief was incorrect, but that circumstance does not affect the bona fide nature of their belief.
95 Fourthly, in those circumstances, there is nothing oppressive or even unreasonable in the applicants not applying for the Method Patent and the System Patent earlier than they did.
96 Fifthly, if one is to treat the result of litigation as the decisive factor (which I do not think is correct) the respondents could have consented to the orders the applicants sought upon the institution of the NSW Proceeding. They did not do that.
97 Sixthly, it is not irrelevant that the respondents raised abuse of process in the NSW Proceeding and then abandoned it. They could, at that time, have raised two of the three matters they now raise. They could have submitted that the Parent Application should have been pursued and the Method Patent and System Patent should have been pursued much earlier than they were. These arguments were not only available to the respondents, but they were raised and then abandoned.
98 Seventhly, there is no evidence of delay by the applicants in pursuing the Standard Patent from filing to grant. The respondents lodged objections or representations to the application (see [16] above).
99 Eighthly, this proceeding was, in effect, held over pending the determination of the NSW Proceeding. The respondents consented to an order for the filing of defences and to the proceeding being held over and did not apply to consolidate this proceeding with the NSW Proceeding.
100 Finally, the course adopted in relation to this proceeding was a sensible one. Neither infringement nor validity are in issue in this proceeding. Only infringement by Goldview is in issue in this proceeding and Goldview was not a party to either the WA Proceeding or the NSW Proceeding.
101 I reject the respondents' abuse of process argument.