Marconi's Wireless Telegraph Company Limited v Commonwealth (No 1) [1912] HCA 93

alleged that an apparatus used by the Commonwealth for wireless telegraphy 25 ; Sept 23, was an infringement of certain patents of the plaintiffs for improvements in

wireless telegraphy. After the statement of claim was filed and before {jitfith C.J.

defence the plaintiffs applied for inspection of the apparatus used by the Isaacs JJ. Commonwealth. An application for a patent in respect of the apparatus 92 16 used by the Commonwealth was subsequently made, and the specification was g.imtn 0.3. made public. and Barton J.

Held, that no order for inspection should be granted at that stage of the proceedings.

The Marconi's Wireless Telegraph Co. Ltd. brought an action in the High Court against the Commonwealth, alleging an infringement by the defendants of six patents of the several States of the Commonwealth, each being for improvements in

wireless telegraphy, and claiming an injunction and damages. In giving particulars of infringement the plaintiffs alleged that the

, defendants had erected, and were using, at the Domain, Mel-

bourne, at Pennant Hills, New South Wales, and at Hobart, Tas- mania, apparatus for wireless telegraphy made in accordance with or only colourably differing from the specifications of the said several letters patent, and they further said that they were unable to give further particulars of infringement before discovery.

The plaintiffs then, before any defence was delivered, applied by summons, dated 12th March 1912, for inspection of the plant or apparatus used or contained in any station for wireless tele- graphy erected or to be erected by the defendants in Australia.

It was stated in one of the affidavits filed on behalf of the defendants that the system of wireless telegraphy used at the defendants' wireless telegraph station at Melbourne was entirely different from that of the plaintiffs, and was invented by John Graeme Balsillie, an officer of the Postmaster-General's Depart- ment, and that he had assigned his rights to the inventions com- prised in such system to the defendants.

Another affidavit was one sworn by Justinian Oxenham, Secre- tary to the Postmaster-General's Department, under the direction of the Postmaster-General, containing the following paragraph : - "The Postmaster-General has authorized me to inform the Court that he is of opinion that it would be prejudicial to the public interest of the Commonwealth of Australia for the system of wireless telegraphy now being employed at the wireless station at Melbourne to be discovered at the present stage of the action."

The summons was heard by Higgins J., who made an order, dated 15th April 1912, that, the plaintiffs by their counsel "refusing to accept an order for inspection by some impartial expert on lines substantially similar to those laid down in Plat- ing Oo. v. Farquharson (1), make no order on the application except that the costs of the said summons, which are hereby fixed at £5 5s., be paid by the plaintiffs to the defendants."

From this decision the plaintiffs appealed to the Full Court.

During the hearing of the appeal a further affidavit was sworn

by Mr. Oxenham, in which it was stated that he was directed by the Postmaster-General to inform the Court that the Minister was of opinion that it would be prejudicial to the public interest and welfare of the Commonwealth to allow inspection of the wireless telegraph stations or the plant and apparatus therein, and also that the Postmaster-General had directed him to inform the Court that the Postmaster-General's opinion was not based upon the pecuniary or commercial interests of the Postal Department of the Commonwealth, or upon any desire to defeat the plaintiffs' claim in the action, but solely in the interests of the public welfare and the naval and military defence of the Commonwealth.

It was also stated on behalf of the defendants that it was intended to apply for patents in respect of the apparatus used by the defendants at their wireless telegraph stations and that the specifications would be published. The hearing of the appeal was thereupon adjourned. Subsequently applications were made by J. G. Balsillie, for patents for a " wireless telegraphic trans- iitter" and for "improvements in wireless telegraphic receivers," and the complete specifications for these inventions were accepted and made public. It was sworn that the apparatus used by the defendants was in strict accordance with those specifications.

Mitchell K.C. (with him Irvine K.C. and Mann), for the appel- Jants, referred to Terrell on Patents, 2nd ed., p. 246; Seton on Decrees, 4th ed., vol. 1., p. 351; Frost on Patents, 3rd ed., vol. 1., p. 451; 4th ed., vol. 1, p. 226; Batley v. Kynock (1): Cheetham v. Oldham (2); Edler v. Victoria Press Manufacturing Co. (3); Marconi v. British Radio Telegraph and Telephone Co. Ltd. (4); Potter's Sulphide Ore Treatment Ltd. v. Sulphide Corporation Ltd. (5).

Duffy K.C. and Starke, for the respondents, referred to Com- monwealth v. Miller (6); Robertson's Civil Proceedings by and against the Crown, p. 606; Rylands v. Ashley's Patent (Muchine Made) Bottle Co. (7).

(1) L.R. 19 Eq., 90, at p. 92. (5) (2) 5 R.P.C., 617, at p. 620. (6 (3) 27 R.P.C., 114, (7 (4) 28 B.P.C., 181, at p. 199.

3 C.L.R., 101, at p. 107. 0 C.L.R., 742. ., 175, at p. 181.

Grirrita C.J. This matter comes before this Court in form as an appeal from an order of our brother Higgins dismissing a summons for inspection. He offered the plaintiffs an order for inspection on terms which they would not accept, and with which both parties were dissatisfied. As the plaintiffs would not accept them, he dismissed the summons with costs. Now the

"matter comes before us in form as an appeal, but really as a

re-hearing on fresh evidence, and we must now make the order that is proper to-day, not the order that should have been made in March last. The plaintiffs have delivered their statement of claim, and the defendants have not delivered their defence, but have asked the plaintiffs for particulars of infringement. The plaintiffs said, " We are not in a position to give particulars." But, now, at the last moment the plaintiffs are in possession of the specitication of the apparatus sought to be patented by the defendants, which is sworn to contain a full disclosure of the nature of the apparatus alleged to be an infringement of the plaintiffs' patent. The complaint in the statement of claim is of an apparatus - that the apparatus used by the defendants is substantially the same as the apparatus which has been patented by the plaintiffs, Under those circumstances, remembering that this is a matter within the discretion of the Court, I think that the Court will exercise its discretion wisely by not making any order at the present time. It may turn out ata later stage that it will be proper and necessary to make an order for inspection, and I am disposed to think that no objection will be offered then to the limited inspection which Mr. Jrvine says the plaintiffs desire. Certainly the defendants will not be in a position to object to such particulars as the plaintiffs can give with this specification before them.

Under all the circumstances, it seems to me the proper thing for the Court to do is to make no order on the application - as our brother Higgins did, but 'for a different reason - except that the order should be varied inso far as it orders payment of costs, and by ordering that the costs of the application and of this appeal should be plaintiffs' costs in the action. This order is to be without prejudice to any application that may hereafter be

[Isaacs J. was not present on the last day of the hearing, and = - ~ Marconr's

took no part in the judgment. ] Wanted TELEGRAPH Order varied by ordering that the costs of Co, LAP. ; the application and of the appeal be plaintiff's' costs in the uction. : Solicitors, for the appellants, Blake & Riggall. : Solicitor, for the respondents, C. Powers, Crown Solicitor for the Commonwealth. Bi La : <i : . ' (HIGH COURT OF AUSTRALIA.] ,

Courts of General Sessions (Tas.) - Appellate jurisdiction - Federal matters - Pro- H, C, or A.

hibited immigrant - Conviction - Refusal to hear appeal - Mandamus - Judica- 1913,

twre Act 1903 (No. 6 of 1903), sec. 39 (2) - Immigration Restriction Act 1901 peak

By virtue of sec. 39 (2) of the Judicature Act 1903 Courts of General

Sessions of the State of Tasmania are, within the limits of their jurisdiction, gyimun c.J.,

. - Se Rah Barton and invested with federal jurisdiction. ee

'As the Courts of General Sessions in Tasmania have no general appellate jurisdiction, but have merely particular appellate jurisdiction conferred upon them in several cases by particular Statutes, sich Courts have no general jurisdiction to hear appeals from justices in matters of federal jurisdiction.

Hdd, therefore, that a Court of General Sessions in Tasmania has no jurisdiction to hear an appeal from a conviction by a magistrate of a person for an offence under sec. 7 of the Immigration Restriction Act 1901, as a con- viction for an offence of that nature is not one in respect of which appellate jurisdiction has been conferred by any Statute on Courts of General Sessions in that State.