Lucent Technologies Inc v Krone Aktiengesellschaft

REASONS FOR JUDGMENT (No 2) (ex tempore ruling on objection to evidence) 1 Lucent appeals to the Court under s 60(4) of the Patents Act 1990 (Cth) against a decision of the Delegate of the Commissioner of Patents ("the Delegate"). The Delegate upheld Krone's opposition to an application for a patent by American Telephone and Telegraph Company of which Lucent is an assignee. Senior counsel for Lucent objects to para 111 of an affidavit of George Georgevits sworn 5 February 1998. Shortly, para 111 supports Krone's case of anticipation based on an "Archer RS-232 jumper box (model or item No. 276 1403)". The evidence objected to is intended to show that the Archer jumper box, like the supposed invention, is effective to reduce "crosstalk" of electrical signals between conductors in electrical connectors. 2 Paragraph 111 reads as follows: "In April 1995, I conducted tests on the Archer jumper box (my former exhibit GG-14) in order to determine the crosstalk performance of crossed and uncrossed pairs of conductors. Now produced and shown to memarked GG-60 is a true copy of my Test Report No. 9538 dated 6 April 1995. The test showed that: (i) crosstalk between adjacent pairs which are not crossed, or which are crossed in an identical manner, is at a level of about 35dB below the transmitted signal; (ii) crosstalk between adjacent crossed and uncrossed pairs is at a level of about 43dB below the transmitted signal; and (iii) accordingly, putting a single half-twist in one pair in order tocross them reduces crosstalk by about 8dB at 100MHz. I conclude from the test that the provision of the crossed conductorpairs in the jumper box in fact reduced overall crosstalk, thus satisfying the last feature of the AT&T Claim 1." 3 The reference in this passage to "exhibit GG-14" is a reference to the Archer jumper box which was in evidence before the Delegate. Mr Georgevits' test report, exhibit GG-60 to his present affidavit, also referred to in the passage, was addressed to Krone's solicitors, Davies Collison Cave. The evidence of the test carried out by the deponent and its results were apparently relied on before the Delegate. 4 The Delegate gave his decision in favour of Krone on 26 June 1997. The Notice of Appeal was filed in this Court on 17 July 1997. Clearly, Mr Georgevits carried out the test for the immediate purpose of supporting Krone's case in the opposition proceeding. Krone now wishes to rely on the test and its results in this appeal. An "appeal" of the present kind is a hearing de novo on the evidence adduced before the Court (Kaiser Aluminum & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 (Kitto J) at 142-143) and material before the Commissioner is not evidence admissible on the appeal, at least unless leave is given (O 58 r 8(1)). 5 Order 58, Rule 31 provides as follows: "(1) In any proceedings in which a party proposes to submit experimental proof of a matter as evidence, that party must obtain directions from the Court: (a) as to the service on other parties of particulars of theexperiment and of the fact or facts that the proponent asserts will, or may, be established by the experiment; and (b) as to the conduct of the experiment and as to the persons who may attend it. (2) Unless such directions have been obtained and complied with, evidence derived from experimental proof is not admissible in theproceedings except by leave of the Court." (Rules dealing specifically with intellectual property cases were introduced as O 54B by SR 54 of 1988. They did not contain a provision to the effect of r 31. The provision was introduced as r 31 of a new O 54B which was introduced by SR 453 of 1992). 6 Senior counsel for Krone submits that r 31 applies only where the experiment or test is to be conducted after the commencement of the proceeding in the Court; that is, that the rule applies only where, after the commencement of the proceeding, a party proposes to obtain the experimental proof in question. Accordingly, he submits that the rule does not apply in the present case. 7 The issue raised is an interesting one that does not seem to be the subject of previous decision. 8 Clearly, the purpose of r 31 of O 58 is (a) to ensure that the other party has an adequate opportunity to challenge the validity of the experiment or test, and (b) to avoid wasteful duplication by that party of an experiment that can be seen to be valid. 9 In my opinion, the rule is not limited in the manner suggested and does apply in the present case. I think the rule applies wherever, after the commencement of a proceeding, a party proposes to submit experimental proof of a matter as evidence, not only where, after the commencement of a proceeding, a party proposes to obtain the experimental proof by conducting the experiment or test in question. 10 Since the commencement of this proceeding, Krone has proposed to submit on this hearing experimental proof of the matters referred to in subparas (i), (ii) and (iii) of para 111 of Mr Georgevits' affidavit set out earlier. Therefore, in my opinion, the rule operates. The rule is not rendered inapplicable merely by the fact that it can be given effect only if the experiment or test is one that can yet be carried out. After all, many experiments or tests carried out prior to the commencement of a proceeding could be repeated easily and inexpensively after it. I see nothing untoward in the fact that in the absence of a grant of leave under subrule (2) a party who conducted an experiment or test prior to the commencement of the proceeding in the absence of the other party, should, in effect, be required to repeat it after that commencement. According to the alternative construction, the purpose of the rule could be easily circumvented, at least by an applicant: the applicant could simply ensure that all experiments or tests to be relied on were carried out prior to commencing the proceeding. 11 No doubt, many factors might suggest a granting of leave under subr (2) of r 31. The experiment or test may have been carried out long before the parties were in dispute; a physical object on which it was conducted may have been destroyed in the process or lost, and so be no longer available for a repetition of the experiment or test; the result of the experiment or test may not be seriously in dispute; repetition of the experiment or test may involve undue expense and inconvenience. But such considerations do not go to the applicability of the rule in the first place. 12 I rule that O 58 r 31(2) operates to make para 111 not admissible unless leave is given pursuant to that subrule. 13 I will hear the parties on the question of leave at a convenient time. 14 [There was preliminary discussion of some of the factors relevant to a grant of leave including the fact that Mr Georgevits' affidavit had been filed as long ago as 6 February 1998 and the objection to para 111 had been notified only yesterday at the commencement of the hearing. Subsequently, by consent, leave was granted.] I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.