University of WA v Gray (No. 24)

What do you do if you have an appeal on foot, but the other side starts selling off the subject matter of the dispute?

Now that French J has gone on to loftier planes, Siopis J has inherited this behemmoth.

In the principal proceedings, the University had sued Dr Gray claiming (in very broad terms) that he had invented some very successful the micro sphere technologies while an employee with the consequence that he held the rights to the technologies on trust for the University.  Dr Gray, however, had sold the IP to Sirtex in which, after its public listing, he became the owner of a large parcel of shares.

Dr Gray and Sirtex had given undertakings not to deal with the IP or the shares pending trial of the matter.

The action failed, but the University has appealed and the appeal is due to be heard in November.  

The undertakings also lapsed when French J gave his judgment.  Dr Gray and Sirtex refused to continue the undertakings pending the appeal.  Despite diligent monitoring by the University’s solicitors, Dr Gray sold both his shares in Sirtex to another company, ACN, of which he was the sole shareholder and director.

The University did two things.  First, it sought interlocutory injunctions against Dr Gray and ACN to restrain dealing in the shares in ACN and the proceeds of the sale of the shares to ACN.  Secondly, it sought to amend the application in the original proceeding to add ACN as a party and bring new claims against it – remember, judgment has already been given and there is an appeal on foot.

While Siopis J acknowledged there were cases where originating documents and pleadings could be amended, even after judgment, this was not one.

13 In my view, O 13 is not to be construed as permitting the amendment of the originating application or pleadings to plead causes of action based on facts and matters which occurred after the date of the judgment. A construction of the Rules which would permit amendment in those circumstances would be inconsistent with the finality principle and the principle that an appeal in this Court is by way of a rehearing directed at correcting error. (See Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at 432-440.) The policy considerations militating against the University’s contention are expressed in the following observations of Gibbs CJ, Wilson, Brennan and Dawson JJ in Coulton v Holcombe (1986) 162 CLR 1 at 7:

It is fundamental to the due administration of justice that the substantial issues between the parties are ordinarily settled at trial. If it were not so the main arena for settlement of disputes would move from the court of first instance to the appellate court, tending to reduce the proceedings in the former court to little more than a preliminary skirmish.

So, the amendment application was refused.  However, the interlocutory injunction was granted and the University ordered to commence a separate proceeding against Dr Gray and ACN within 7 days.

University of Western Australia v Gray (No 24) [2008] FCA 1400