Australian Commercial Research & Development Ltd v Uniquest Ltd & Ors [1990] QSC 80

IT l:I \?,;r~ ii . 1 IN THE SUPREME COURT OF QUEENSLAND 1:1 10 c: 20 i ii 30 I CHAMBERS BEFORE SENIOR MASTER HORTON Q.C. BRISBANE, 20 MARCH 1990 (Copyright in this transcript is vested in the Crown. Copies thereof must not be made or sold without the written authority of .the Chief Court Reporter,Court Reporting Bureau.) BETWEEN: AUSTRALIAN COMMERCIAL RESEARCH AND DEVELOPMENT LIMITED -and- UNIQUEST LIMITED -and- UNIVERSITY OF QUEENSLAND -and- HALLE MORTON -and- ALICE CHRISTINE CAVANAGH -and- BARBARA ELLEN ROLFE ORDER Plaintiff First Defendant Second Defendant Third Defendant Fourth Defendant Fifth Defendant SENIOR MASTER: This is an application for an order that the issue of liability as between the plaintiff and the five defendants be determined separately. In essence, the 10 20 30 40 ii 50 50 application is brought by the third, fourth and fifth Ii 11 60 defendants who are members of the University's staff within the faculty of Medicine and who appear to have been the principal research scientists associated with a project initially described as "early pregnancy testing", which project has come Govt. Printer, Old. -1- 60 -- 1 of 4 -- 10 20 30 40 50 60 to have substantial important involvement in early cancer detection. . By something which is described as a "Principle Projects I Deed" entered into between the plaintiff . and, the first - I defendant, the . fi.rst defendant purported to bind the 1 10 University, the second defendant and certain of the University staff members where, in return for funding support, _ Uniquest would .. assign and/ or procure the assignment of the University' s and its. servai:ts intellectual property in the said project. It is apparent that to the third, fourth and fifth defendants this litigation ~s a major interference with their professional and intellectual activities. Although the claim 20 30 0 for specific performance has been abandoned, it is not to say that they can conduct their research effectively and assiduou~ly in the manner in which the community expects. Indeed, :it is very easy to appreciate how their necessary application for funding support must be inhibited while they (J r~main parties to this litigation. T.here-are many issues to be tried, and, notwithstanding the ·J" 40 C persuasive arguments of Mr. McMurdo, I am satisfied that this is one of_those rare cases, particularly in the light of the fact that it is a Commercial Cause which has come on for trial already in January of this year and been adjourned at the behest of the plaintiff, that it is appropriate to make an order ordering a separate trial on the issue of liability. I am acutely aware of the caution sounded by the Full Court in Evans Deakin v. the Commonwealth of Australia [1983] Qd.R.40, and Ln particular the language of Andrews S.P.J. as he then was wherein he said: Govt. Printer, Old. -2- 50 60 -- 2 of 4 -- 10 C> 20 30 ("· 40 50 60 "Great care must be taken before a decision to make one. I think the rarity of such an order does not really reflect the principle, but rather'establishes that the circurristancesrarely ·arise to justify it." I hold, however, that the provisions of the Commercial Cause · Act, together with the peculiar circumstances of this case call for this.unusual step. There has been much agitation of the issue of the necessary involvement of the plaintiff's experts in the assessment of the third, fourth and fifth defendants' material. I am far from · persuaded that such · involvement · would be · a necessary consequence of a trial on the issue of liability, and such are the public considerations that I think it is most · important that the· corifidentiali ty of 'this material be strictly adhered to. Mr. McMurdo has submitted that the credibility of Mr. Pa.lmer and Mr. Millhouse may well be· issues common to both trial.of quantum and liability. While, of course, that is unfortunate, in all of these cases one has to do, to some extent, a balancing act and, as I have said, the public interest in the continuance of this research is a very weighty consideration. I bear in mind, of course, that the liability issue is resolved in a manner favourable to the third, fourth and fifth defendants, the quantum trial will take on a substantially different complexion and it may still involve those defendants but as witnesses rather than parties.· The problem remains that those defendants are seeking damages for wrongful use of the information obtained by'.the plaintiff by way of counterclaim. I am not persuaded, however, that this is a significant factor but, lest it be seen by others as such~ I am inclined to order as follo•s: Govt. Printer, Old. -3- 10 20 30 40 50 60 -- 3 of 4 -- 10 20 30 40 so 60 Upon the third, fourth and fifth defendants by their counsel undertaking to discontinue the counterclaim as it relates to the issue of damages, I order that the trial in this action with respect to liability proceed and be determined separately and prior to the trial of the issue of quantum. Secondly, I order that all parties' costs of and incidental to the application, including reserved costs, be their costs in the cause. I give liberty to all parties to apply on three days' notice in writing. Are there any further issues? MR. McMURDO: There is still my client's application. SENIOR MASTER: I adjourn your client's application. \ Govt. Printer, Old. -4- 10 20 <J 30 0 50 60 -- 4 of 4 --