Marconi's Wireless Telegraph Co Ltd v Commonwealth (No 1) [1912] HCA 93; (1912) 15 CLR 685 (16 October 1912)

HIGH COURT OF AUSTRALIA

H C of A

On appeal from a Justice of the High Court.

16 October 1912

Griffith C.J. and Barton J.

Mitchell K.C. (with him Irvine K.C. and Mann), for the appellants,

Duffy K.C. and Starke, for the respondents,

Griffith 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 specification 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 at a 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. Irvine 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 in so 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 made.

Barton J.

I concur.

[Isaacs J. was not present on the last day of the hearing, and took no part in the judgment.]

Order varied by ordering that the costs of the application and of the appeal be plaintiffs' costs in the action.

Solicitors, for the appellants, Blake & Riggall.

Solicitor, for the respondents, C. Powers, Crown Solicitor for the Commonwealth.