UON Pty Ltd v Hoascar [No 3]

[2021] WASC 17

Patents – transfer of proceedings to Federal Court – overlap in subject matter – risk of inconsistent findings

Justice Archer of the Supreme Court of Western Australia held that UON’s case against its former employee, Mr Hoascar, and his new employer, Taranis Power Group Pty Ltd, for misuse of confidential information in relation to an alleged invention for a “control and power management system with specific application to remote island mine sites”, should be referred to a concurrent dispute in the Federal Court.  The Federal Court case involves UON’s appeal from a decision of the Commissioner of Patents rejecting UON’s assertions that it was the true inventor of Taranis’ patent application for a control and power management system, and also rejecting other assertions of invalidly of that patent application.

Justice Archer recited the relevant principles regarding transfer of proceedings as follows.  The question calls for a “nuts and bolts” management decision as to which court, in the pursuit of the interests of justice, is the more appropriate to hear and determine the substantive dispute. If the Court is of the opinion that section 5(1) of the Jurisdiction of Courts (Cross-Vesting) Act 1987 (Cth) (or its State equivalent) is satisfied, it must transfer the proceeding. There is no question of judicial discretion. The interests of justice capture not just the interests of the parties – competing or conflicting – but may also capture interests wider than those of either party. The interests of justice concern those of both parties and, rather than the selection of the most advantageous or least disadvantageous forum for one of them, the interests of justice are to be judged by more objective factors which facilitate identification of the “natural forum”, in which objectively judged, the dispute would fall to be resolved, with its concomitant juridical advantages and disadvantages for each party, whatever they may be.

As to the relevant “connecting factors”, Archer J identified them as:

  1. factors indicating that justice can be done in one forum at substantially less inconvenience or expense such as the availability of witnesses;
  2.  factors which may make a forum the ‘natural forum’ as being the forum with which the action has the most real and substantial connection, such as where the relevant transactions took place and where the parties carry on business.

An important consideration is which forum can provide more effectively for the complete resolution of the matters in issue between the parties. Finally, because it is necessary to identify the more appropriate forum, no specific emphasis can be given in favour of the choice of forum made by the plaintiff.

Justice Archer considered each of the relevant factors identified in the authorities and addressed by the parties in detail. In short, her Honour observed that the matter could not be transferred from the Federal Court to the Supreme Court because the Federal Court was seized of matters that the Supreme Court did not have jurisdiction to deal with. Furthermore, if the matter were transferred there would be no risk of inconsistent factual findings (which risk would have existed if there was no such transfer). It was suggested by the plaintiff that the way to avoid inconsistent findings would have been for the Federal Court to stay its proceeding, but Archer J observed that there was no power of the Supreme Court to make the Federal Court do so. The authors respectfully query whether that observation is strictly correct, given the Court’s inherent power to issue an anti-suit injunction to protect its own processes, but the plaintiff apparently accepted the correctness of that proposition in this proceeding. The stay sought by the plaintiff would have, in any event, extended the uncertainty in relation to the patent application. Finally, as to costs already incurred in the Supreme Court, her Honour considered they could be dealt with quickly and efficiently so as not to delay the transfer of proceedings.

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