Case: Queensland v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146
Outcome: referred to
Another factor is a rather indulgent attitude often taken towards amendment and adjournment applications, in reliance on Queensland v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146. However, there is a limit, as was demonstrated in the present case when Finkelstein J refused GMCA a further adjournment of the trial date. I refused leave to appeal from this decision and an application by GMCA for special leave to appeal to the High Court was dismissed: GMCA Pty Ltd v Black &amp; Decker Inc [2007] HCATrans 662. 22 On 18 August 2006 Finkelstein J set the matter down for trial with an estimate of five days commencing 10 April 2007 and gave directions as to the filing of evidence. 23 On 16 November 2006 GMCA's solicitors wrote to B &amp; D's solicitors requesting an extra month in which to file its evidence in chief on invalidity. It appeared from that letter that (a) GMCA had only appointed its experts on 23 October and 3 November 2006 (that is, over a year since the proceeding commenced); (b) one of those experts was currently overseas making it difficult to finalise his affidavit; (c) prior art searches were still being conducted in review; (d) GMCA was having difficulty locating prior art and was still attempting to locate additional witnesses; and (d) GMCA's patent attorney was taken ill on 11 November. 24 On 27 November 2006 Finkelstein J extended the time for filing of evidence (evidence in chief by both parties 15 December 2006, GMCA answering evidence 16 February 2007, B &amp; D answering evidence 2 March 2007) and directed that no evidence could be filed thereafter. 25 On 15 December 2006 GMCA filed its evidence. 26 On 19 December 2006 GMCA filed its fourth particulars of invalidity. These added 11 further anticipations in relation to the patents in suit and eight in relation to the design. 27 On 20 March 2007 GMCA was granted leave by Finkelstein J to amend its particulars of invalidity and file further evidence in relation to new prior art. As a consequence, on 11 April 2007 his Honour made orders vacating the trial date and fixing a new trial date of 19 November 2007. His Honour gave directions as to the further filing of evidence. 28 On 18 April 2007 GMCA filed its fifth particulars of invalidity. These deleted 25 pieces of prior art that had previously been cited against the patents and introduced 11 new pieces. The particulars also deleted six pieces of prior art that had previously been cited against the design and introduced one new piece of prior art. 29 Since the adjournment of the trial a further four affidavits were filed on behalf of GMCA in May 2007. A further five affidavits were filed on behalf of B &amp; D in July 2007 and a further five affidavits on behalf of GMCA between August and October 2007. 30 On 5 October GMCA sought a further postponement of the trial date. As already mentioned, this application was rejected by Finkelstein J, who gave reasons on 26 October. His Honour said at [6] that GMCA's non compliance was "not excusable". His Honour continued: Indeed this case is a particularly bad one as regards delay... Initially the trial was fixed to begin on 10 April 2007. On the eve of the trial the respondent said it was not ready to begin the hearing and sought leave to introduce further prior art with which to attack both the patent and the design. Leave was granted so that the respondent was not shut out from running its best case. 31 His Honour noted that a consequence was the trial had to be vacated. It was refixed to commence on 19 November and a new timetable was set in place. His Honour noted: [7] ...When these orders were made it was made clear that neither party was to use its right of reply as an opportunity to add to its evidence in chief. [8] Despite the orders (or in defiance of them) the respondent has served two reply affidavits in which it seeks to add to its evidence in chief. The affidavits were filed without leave. The application for leave to rely on the additional material was made orally at the recent case management conference. 32 His Honour then went on to note how the affidavits referred to, and produced, new prior art. His Honour refused leave to rely on any additional material. 33 In the event, by the time of its closing submissions at trial GMCA relied on only seven pieces of prior art, two of which had not been pleaded. This is to be contrasted with the pleading at various stages of no less than 45 pieces of prior art. 34 B &amp; D was put to significant wasted expense dealing with alleged anticipations which ultimately were not relied on by GMCA. Many of these took the form of patents, which required careful analysis by B &amp; D's experts and lawyers. 37 Much of B &amp; D's work and evidence up to that time was wasted and B &amp; D was forced to prepare for a trial seven months later. As Finkelstein J noted in the passage already quoted, the case was "a particularly bad one as regards delay". I reject GMCA's argument that B &amp; D was somehow equally to blame because it was a day late in serving exhibits to some of its affidavits. 38 B &amp; D should receive costs on an indemnity basis for costs wasted or duplicated by reason of this adjournment of the trial date. 39 On 12 October 2006, that is almost a year after the commencement of proceedings and about six months before the scheduled trial date, B &amp; D's solicitors served a notice to admit facts on GMCA. By this stage the parties had completed discovery but had not filed any evidence.