Case: Stack v Brisbane City Council [2000] FCA 598
Outcome: considered
On 10 May 2000, Cooper J revoked Petty Patent No 655740 and dismissed the Notice of Motion insofar as it sought to reopen the issue of the two applicants' entitlement to Petty Patent No 645740. In his Honour's reasons for dismissing the Notice of Motion, ([2000] FCA 598 (the Second Set of Reasons)), Cooper J said at [19]-[24]): 19 What Stack and GST seek to do is to set aside declarations which, although not yet entered, have taken effect as and from the date of their making as orders of the Court: O 35 r 3. They also seek to set aside on the entitlement issue all findings of fact made on that issue, to re-open their case to tender the evidence on the entitlement issue, which was previously struck out, and to call additional evidence which, on its face, was available at the time of the trial. This they seek to do to overcome matters determined adversely to them in a trial which has concluded and after judgment has been given. In my view, no demonstrable basis for the making of such an order has been made out, or is even attempted to be made out, on the material filed in support of the notice of motion. 20 The decision not to call Grieves and Stack to give evidence, I have no doubt, was a tactical decision taken on the trial of the issues. Stack was present for most, if not all, of the trial. There is no reasonable basis to suggest that Stack and GST and their legal adviser did not understand what was being done and the consequences of not producing the witnesses for cross-examination. This is not an application to re-open before judgment, where the taking of such a decision may not carry so much weight against allowing re-opening: Urban Transport Authority of NSW v Nweiser (1991) 28 NSWLR 471 (CA) at 475-6, 478-479. See also Hindmarsh Medical Clinic v Hindmarsh Family Practice Pty Ltd (1997) 38 IPR 616. 21 In the present case there is no attempt to explain why the evidence now relied upon was not left to the Court on the trial of the issue. Further, Stack and GST seek to retain the benefit of the declarations of validity in declarations 6 and 7 by contending that those issues were found in their favour, and that, having regard to my findings on them, Grieves and Stack would not be subject to cross-examination on those issues. To take such a position smacks of the earlier conduct being a deliberate attempt to deny the cross-claimants an opportunity to cross-examine the inventors on the invalidity issues, and to now seek to retain the benefit of having taken such a course without accepting the consequences which flowed in terms of the entitlement issue. 22 All respondents to the notice of motion oppose all of the relief sought including setting aside declarations 1 to 5 inclusive and permitting Stack and GST to re-open their case. DS and DSQ also submit that if declarations 1 to 5 are set aside, then declarations 6 and 7 should also be set aside so that they too could re-open their case on all issues. 23 The cross-claimants have been forced to conduct the case on the issues tried without the benefit of cross-examining Grieves and Stack as the inventors. Whether or not cross-examination would have assisted them on the other issues is a moot point. However, to set aside all declarations and all findings would involve a substantial waste of time and costs. The parties litigated the issues to judgment on the basis of the evidence before the Court the content of which, was in no small way, determined by the way in which GST and Stack conducted their case at trial. Even assuming that GST and Stack are in a position to pay the costs thrown away if all of the declarations are set aside, and leave is given to all parties to re-open their cases, there is no offer to pay such costs, whether they be with respect to all issues or limited to the issues which arose on the entitlement of Stack and through him GST, to the grant of the petty patent. 24 There must be finality to litigation, unless some good reason is shown to the contrary. In my view, no such reason has been shown. Nor am I persuaded on the material produced in support of the notice of motion that to re-open the trial would necessarily lead to any different result, so far as the entitlement of Stack or GST to the grant of the petty patent is concerned. I decline to set aside any of the declarations made on 15 September 1999. (Emphasis added). 39 The judgment of the Full Federal Court of 4 May 2001 dismissed both appeals from the decisions of Cooper J dated 15 September 1999 and 10 May 2000. The Court noted at [49]: The failure to nominate Grieves in the patent request was not an oversight. Stack and GST have persisted with their claim that the petty patent was validly granted to Stack alone. No Application has been made under s 105 of the Act in any of the pending proceedings to have the Court direct amendment of the patent request and patent so as to add Grieves as a joint patentee. 40 The High Court refused an application for special leave by Stack and GST on 26 June 2002.