Australian court rejects attempt to dismiss judge in patent suit
Justice Anthony Besanko of the Federal Court of Australia has rejected two applications seeking to disqualify him from a case involving a mining tool patent.
On Friday, June 12, Besanko dismissed two interlocutory applications filed by mining companies Globaltech Corporation and Boart Longyear, which requested that the judge disqualify himself. Boart Longyear owns a majority stake in Globaltech Corporation.
Globaltech Corporation and Boart Longyear both argued that bias arises because Besanko had been involved in hearing a previous proceeding between competitor Australian Mud Company (the plaintiff in this suit) and Globaltech Corporation.
In the current suit, Australian Mud Company had accused Globaltech Corporation and Boart Longyear of infringing Australian patent number 2010200162, called “Core sample orientation”. The patent covers a core orientation device for a core drill.
Besanko had previously considered a claim by Australian Mud Company against Globaltech Corporation that it had infringed claims in the ‘162 patent and a cross-claim by Globaltech Corporation that the patent is invalid.
In November 2018, the judge concluded that the patent claims were valid, Globaltech Corporation had infringed the claims through the sale of its Orifinder tools (core sample orientation tools) and Australian Mud Company was not entitled to additional damages.
In their applications, both Globaltech Corporation and Boart Longyear argued that Besanko should disqualify himself because of his involvement in the previous proceeding and his continuing involvement in the determination of the quantum part of that proceeding.
While the respondents accepted that Besanko’s involvement in the proceeding and decision of patent infringement and validity is not a sufficient basis for disqualification for apprehended bias, they argued that it is not the whole context in this case and the context is “much broader and entrenched”.
In rejecting the argument, Besanko said: “They referred to the ‘grievances’ of the Globaltech respondents with my previous decision and their belief ‘on rational grounds’ that the Orifinder UPIX tool does not infringe the claims in the patent. However, it was never explained to me how these things, even if accepted, meant that there is a case of apprehended bias.”
Globaltech Corporation and Boart Longyear also claimed that Australian Mud Company’s letters to Besanko’s associate, the Patent Registrar and Globaltech Corporation’s solicitors were inappropriate and “amplified the prospect that a fair-minded lay observer might consider that the trial judge had been selected for the purpose of securing an advantage” to Australian Mud Company.
The letter points out that the parties to the interlocutory application are also involved in the previous proceedings that Besanko oversaw and that the applicants are seeking preliminary discovery to determine the manner of working of a “workaround” tool that was introduced to the Australian market by the respondents.
In his ruling, Besanko said he did not consider that there was anything inappropriate in the letter pointing out the common features of the two proceedings.
Globaltech Corporation and Boart Longyear argued in oral submissions that the term “workaround” tool implied “some dubious, if not nefarious, conduct by the applicants”.
“I took the respondents’ argument to be that by using the term in correspondence to me, my mind will be pre-disposed to favour the applicants and an apprehension of bias arises,” said Besanko, before concluding that “workaround” had an innocent meaning.
Finally, the respondents argued that Besanko should disqualify himself because he would be called on to choose between the evidence of experts on an issue of claim construction.
In the previous proceedings, he chose in favour of the applicants’ expert (professor Jonathan Tapson) and, according to the respondents, the experts in this proceeding are likely to be the same as they were in the previous proceeding.
The judge explained: “As I understand the respondents’ submission, it is that because I accepted professor Tapson’s evidence in the previous proceeding and rejected claims of inconsistency and lack of independence, a fair-minded lay observer might reasonably apprehend that I might not bring an impartial mind to the resolution of the questions I will be required to decide.”
However, he rejected this argument, finding that “the acceptance of an expert’s evidence in one case does not mean that the judge cannot hear another case involving that expert, even if the expert’s evidence was and is challenged on the basis of a lack of competence or independence”.
The case will now proceed to trial.
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