The City of Sydney v Streetscape Projects

Supreme Court of NSW|2011-08-25|Before: Einstein J, Mr J

Mr S Couper QC, Mr J Gooley, Mr R Higgins (Defendants) Holding Redlich (Plaintiff) Colin Biggers & Paisley (Defendants) File Number(s): 2009/00298673 & 2010/0085353

The contentious question 1In the context of cross examining Dr Green as to the details of a patent which informed his reports, Mr Couper put the following proposition to the witness: Q. Anyone looking at this patent, and reading it, would see a description of a pole which has, amongst its features, an aluminium extrusion with four C tracks at 90 degrees to each other, correct? A. That's correct. JUCOVIC: I object, your Honour. ... COUPER Q. And would you agree anyone reading the patent and looking at figure 6, would see the patent describes assisting whereby an adaptation of the Unistrut system is employed to hold brackets in place within the C tracks in the aluminium extrusion? 2Senior Counsel for the plaintiff again objected to this line of inquiry on the ground that the question went to issues outside the pleadings. 3After hearing submissions from both sides, the Court ruled Mr Couper's line of inquiry inadmissible. I indicated I would give reasons shortly.

The defendants' response 8The defendants put their argument on two bases. The primary argument was an application to reopen the Court's findings in relation to pleading 17(e)(ix). The defendants submitted: We, with respect, invite your Honour to revisit that ruling about paragraph 17(e)(ix). Your Honour has now heard evidence at the trial and is in a better position, with respect, to judge some things. Can we start by saying that your Honour's reasons of 4 August do not actually address paragraph 17(e)(ix) at all, with respect. Nothing was said in your Honour's reasons about why that paragraph should be disallowed. That is, your Honour doesn't record any submission from our learned friends or give any reasons to say that there was any prejudice involved to the plaintiff in having that matter ventilated. 9The second basis upon which the response was put, was that the defendants generally deny confidentiality of the smartpoles in (4A) and 17(e)(viii) in the following terms: Further, and alternatively any information which may be confidential (which is not admitted) to the extent to which it is disclosed by or in multi-function poles which the City refers to as 'Smartpoles' ceased to be confidential upon supply and creation of the poles in public and/or in any event has been disclosed in public in hard copy and electronic advertising and promotional material of many of the competitors of Streetscape Projects (clause 9.3(d)). 10On this basis alone, the defendants submitted that the line of inquiry should be allowed.

The defendants' application to vary the orders 11Rule 36.16 of the Uniform Civil Procedure Rules indicates that the Court should not lightly entertain an application to set aside or vary orders. The Court generally will not set aside orders, for finality in litigation is desirable DJL v Central Authority (2000) 201 CLR 226 at 245, although the principle is more lax with regards to interlocutory orders cf Douglas v John Fairfax & Sons Ltd [1983] 3 NSWLR 126. 12Clearly the court has jurisdiction to entertain a motion to set aside or vary a judgment provided that the motion is filed before entry of the judgment. The position at common law as stated in Smith v New South Wales By Association (1992) 176 CLR 256 at 265 was as follows: "It has long been the common law that a court may review, correct or alter its judgment at any time until its order has been perfected". 13In Smith the New South Wales Court of Appeal reconsidered orders previously made in view of an argument that the Court had mistakenly assumed that particular evidence had not been given at earlier hearings. 14Another example was Pittalis v Sherefettin [1986] QB 868 in which a judge recalled orders the day after the day they were made upon determining that he had erred in a material matter in his approach to the case. 15It is trite to observe that the public interest in the finality of litigation will not preclude the exceptional step of reviewing or rehearing an issue where a court has good reason to consider that, in its earlier judgment, it has proceeded on a misapprehension as to the facts or the law [cf Autodesk Inc v Dyason [No. 2] (1993) 176 CLR 300 at 302-3 Mason CJ at 302]. 16However as the reasons below make clear notwithstanding the defendants attempt to have the court reverse its considered decisions made on 4 August and 8 August there is no justification for doing so. 17The defendants put their application to set aside the Court's order in respect of 17(e)(ix) on the basis that at this stage in the hearing it has become clear that the confidentiality of the patent is an important issue and that after hearing Dr Green's evidence, the Court is now in a better position to reconsider whether the issue should be raised as a defence. 18It is important to recognise that in my judgment of 4 August 2011, the defendants were not refused leave to amend their pleadings because the Court saw the issue of the confidentiality or otherwise of the patent as an irrelevant one. The basis for refusing leave was the prejudice the plaintiff would suffer as a result of a late amendment to the defendants' pleadings. 19At this late stage of the hearing, the prejudice should the Court vary its orders and allow an amendment to the defendants' pleadings, would be greater than when the issue was first considered. 20This prejudice exists despite any argument as to the relevance of the patent issue or otherwise. In these circumstances, the principled exercise of the Court's discretion is to refuse leave to the plaintiff to amend its pleadings. To do otherwise would infringe upon the rule 14.14 of the Uniform Civil Procedure Rules .

The defendants' alternate proposition 21The secondary proposition put by the defendants is that the question falls within the ambit of their current commercial list response. 22Turning to the wording of the pleading relied upon by the defendants, the relevant denial states: Further, and alternatively any information which may be confidential (which is not admitted) to the extent to which it is disclosed by or in multi-function poles which the City refers to as 'Smartpoles' ceased to be confidential upon supply and creation of the poles in public and/or in any event has been disclosed in public in hard copy and electronic advertising and promotional material of many of the competitors of Streetscape Projects (clause 9.3(d)). 23Looking closely at the terms of this denial, the issue raised is whether upon public disclosure, the smartpole design ceased to be confidential. The relevant question pertaining to this issue was not objected to by Mr Jucovic: Q. Can we leave that view for a moment, and can I ask you to come to figure 6 in the patent, which is at page 277 of the Court Book? That is a figure which shows, amongst other things, a cross-section of an extrusion with C tracks, is that right? A. Correct. Q. Patents are by their nature open for public inspection, aren't they? A. Correct. 24In this respect, the defendants have put the plaintiff on notice that they intend to argue that due to the public disclosure of the smartpole, the design is not confidential. 25However, Mr Jucovic's objection went to the further issue of whether by reason of disclosure in the public domain a person could see all the features, such that they may reverse engineer a smartpole. 26The distinction drawn is in some senses a fine one, but given the Court's earlier rulings is an important one to maintain. For this reason, the defendants question is impermissible. It seeks to raise an issue outside the pleadings. 27For the above reasons the plaintiff's objection is upheld. The defendants' application to vary orders is dismissed.

DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 31 August 2011

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