case_title: Borowski v Quayle [1966] VR 382

case_text: starting point for resolution of Alphapharm's General Relevance Objection is a particular group of exceptions to the hearsay rule that were recognised under the general law as being dictated by necessity. In the Law Reform Commission's Interim Report on Evidence (ALRC No 26, 1985), the Commission described these exceptions as (a) the expert's accumulated knowledge, (b) the reported data of fellow scientists, and (c) information commonly relied upon in an industry, trade or calling (ALRC No 26 vol 1 at [131], vol 2 at [91]). The Commission cited in support: English Exporters (London) Ltd v Eldonwall Ltd [1973] 1 Ch 415 ; R v Abadom [1983] 1 WLR 126 ; Borowski v Quayle [1966] VR 382 ( Borowski ); H v Schering Chemicals Ltd [1983] 1 All ER 849 ( Schering Chemicals ); Reid v Kerr [1974] 9 SASR 367 ; Rowley v London and North Western Railway Co [1852] EngR 1037 ; (1873) LR 8 Exch 221 ; Dickins v Randerson [1901] 1 KB 437 ; R v Perryman (1907) 147 CCC Sess Pap 109 (Lawrence J). There is some overlap between the three categories. The Commission referred, as an illustration of (b), to Borowski , in which the following passage from Wigmore on Evidence, Chadbourn JH (ed) (Little, Brown & Co, Boston, 1979) vol 2 at [665b], was cited with approval: The data of every science are enormous in scope and variety. No one professional man can know from personal observation more than a minute fraction of the data which he must every day treat as working truths. Hence a reliance on the reported data of fellow scientists, learned by perusing their reports in books and journals. The law must and does accept this kind of knowledge from scientific men...[T]o reject a professional physician or mathematician because the fact or some facts to which he testifies are known to him only upon the authority of others would be to ignore the accepted methods of professional work and to insist on finical and impossible standards.....In general, the considerations which define the (professional) are (a) a proper source of information, (b) an extent of personal observation in the general subject, enabling him to estimate the general plausibility, or probability of soundness, of the views expressed, and (c) the impossibility of obtaining information on the particular technical detail except through reported data in part or entirely. The true solution must be to trust the discretion of the trial judge, exercised in the light of the nature of the subject and the witness' equipments. The decisions show in general a liberal attitude in receiving technical testimony based on professional reading. In Borowski , his Honour found (at 386) that evidence given by the expert in that case: ...would have been directed to matter travelling outside opinion and dependent to a degree upon knowledge based upon hearsay. But this is an area where the hearsay rule does not apply and the matter dealt with in the evidence would clearly have been admissible. The same judge-made exception to the hearsay rule was recognised in the standard texts on evidence at that time: see, for example, D Byrne QC and JD Heydon, Cross on Evidence (3 rd Australian Edition, Butterworths, 1986) at [15.31], [17.161], citing, in addition to Borowski and Schering Chemicals , See v Milner (1980) 2A Crim R 210 (FCA); Holt v Auckland City Council [1980] 2 NZLR 124; Cuthill v State Electricity Commissioner of Victoria [1981] VR 908 at 915 (FC); Baker v Australian Asbestos Insulations Pty Ltd [1984] 3 NSWLR 595 at 607. The Law Reform Commission dealt with the present issue under the heading "Evidence Admissible for a Non-hearsay Purpose" (ALRC No 26 Vol 1 at [685]) stating (footnotes omitted): Under existing law hearsay evidence that is admissible for a non-hearsay purpose is not excluded, but may not be used by the court as evidence of the facts stated. This involves the drawing of unrealistic distinctions. The issue is resolved by defining the hearsay rule as preventing the admissibility of hearsay evidence where it is relevant by reason only that it would affect the court's assessment of the facts intended to be asserted. This would have the effect that evidence relevant for a non-hearsay purpose eg to prove a prior consistent or inconsistent statement, or to prove the basis of the expert's opinion will be admissible also of evidence of the facts stated: Tender of Prior Consistent and Inconsistent Statements ............... Expert's evidence of Basis of Opinion Reference has been made above to the uncertainties that exist as to the admissibility of such evidence and to the unclear exceptions which have had to be created to meet the problems created by the hearsay rule. Under the proposal, evidence by an expert of the facts on which his opinion is based will be admissible as evidence of those facts. Potential dangers have been raised. First, there is the danger that false evidence may be placed before the court. However, the expert will usually form a judgment about the accuracy of what he is told. In addition the tactical pressure on the parties to verify the facts relied upon by the expert should ensure that problems of assessment of the evidence will not arise. They will either call more direct evidence or have to face adverse comment. When assessment problems do arise, the exclusionary discretions may be used. This is similar to the present approach. Another danger suggested is that it could result in an increase in evidence adduced particularly that which is adduced in the Family Court and is of marginal relevance. As at present, the expert will do no more than adduce evidence of the basis of his opinion what he was told will be relevant to that opinion and the assessment of it. However, the relevance proposal and relevance discretion will apply and give the courts express control where now that control and its extent is unclear. It has also been suggested that parties will want to answer the allegations of marginal relevance and this will give rise to an increase in the evidence given. However, this should not occur. First the party against whom the evidence is led can object to the relevance of the facts related by the expert only those affecting his opinion will be relevant. As to such facts, that party will have to decide, as at present, whether he accepts those facts or wishes to challenge them. He would have to do this whether the evidence was admitted as the basis of the expert's opinion or to prove the facts asserted it would be a foolish party who relied on that distinction in relation to key factual elements and did not call rebutting evidence. The proposal in fact has the potential to save time and costs. At present, the party leading the expert evidence should lead non-hearsay evidence to confirm all the statements made to and relied upon by the court. If he does not, it will be open to the opposing party to argue that the opinion should be rejected the hearsay rile will lie in wait. Under the proposal he can call witnesses to confirm the key material, and leave it up to the opposing party to cross-examine the witness to raise the matters in issue. If he does not and leads evidence in rebuttal, it will be possible for the first party to call further evidence. The result of the Commission's deliberations was s 60 of the Evidence Act . The hearsay rule itself is set out in s 59 of that Act. Section 59(1) provides: Evidence of a previous representation made by a person is not admissible to prove the existence of a fact that the person intended to assert by the representation. In their joint report, Uniform Evidence Law: Report of December 2005, the Australian, New South Wales and Victorian Law Reform Commissions have recognised that s 60 had the effect of excluding from the hearsay rule an expert's statement of the factual basis of his or her opinion (see [7.74] ff). The Commissions recognised (at [7.74]) that an expert relies on "statements made to him or her by others about their observations of events which are facts in issue, together with a wide range of factual information from more remote sources". The Commissions gave as illustrations: knowledge acquired by experts from reading the work of other experts and from discussion with them; the reported data of fellow experts relied upon by such persons as scientists and technical experts in giving expert opinion evidence; factual material commonly relied upon in a particular industry or trade or calling. The Commissions also recognised that, through necessity, there existed those judge-made exceptions to the hearsay rule referred to at [761] above. In addition to Borowski , they cited PQ v Australian Red Cross Society [1992] 1 VR 19 ; R v Vivona (Unreported, Victorian Court of Criminal Appeal, Crockett, Tadgell and Teague JJ, 12 September 1994); R v Fazio (1997) 93 A Crim R 522. The Commissions then stated at [7.77], [7.78] (footnotes omitted): 7.77 The proposal that became s 60 was formulated with these exceptions in mind, with the intention that s 60 would perform the role the miscellaneous common law exceptions had performed and the complication of specific exceptions for these kinds of evidence avoided. 7.78 Section 60 also applies to representations of fact unique to the particular case upon which the expert bases his or her opinion. Such evidence is hearsay at common law, but s 60 lifts the statutory hearsay rule in that situation.


case_outcome: cited

case_text: my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.


case_title: Burroughs Corporation (Perkins's Application ) [1974] RPC 147

case_text: submits that in relation to the new manner of manufacture criterion, the case is one of a "mere desideratum" (the expression "a mere method or mere idea or mere desideratum" was used in Burroughs Corporation ( Perkins's Application ) [1974] RPC 147). Senior counsel for Alphapharm frankly conceded that, in a sense, Alphapharm's submission in this respect rose no higher than its case on obviousness. Indeed, he conceded that it was more confined than that case because the character of a manner of manufacture must appear on the face of the specification, and common general knowledge cannot be taken into account as it can in the context of obviousness.


case_text: submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.


case_text: determining whether what is claimed fits the description of a "manner of manufacture", one must confine one's attention to the face of the specification: Philips v Mirabella at 663-664; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 (Ramset) at [38] ; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260 ( CCOM v Jiejing ) at 291). The notion of a manner of manufacture does not incorporate considerations of novelty or inventiveness which are dealt with independently and comprehensively in s 18(1)(b), s 7, and the definitions of "prior art base" and "prior art information" in Sch 1: see Ramset at [30]-[34] (dealing with s 100 of the 1952 Act). What is required is that there be a real and reasonably clear disclosure in the body of the specification, taken as a whole, of the invention that is claimed in the claims so that those who may wish to exploit the invention as claimed after the patent has expired will be enabled to do so: see, for example, Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5 at 11 per Fullagar J; F Hoffman-La Roche & Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; CCOM v Jiejing at 281-282; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood v Doric ) at [69].


case_text: parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( Décor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours & Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH & Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; Décor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date


case_title: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385


case_title: EI Dupont De Nemours & Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304


case_title: F Hoffman-La Roche & Co AG v Commissioner of Patents ( [1971] HCA 3 ; 1971) 123 CLR 529

case_text: is required is that there be a real and reasonably clear disclosure in the body of the specification, taken as a whole, of the invention that is claimed in the claims so that those who may wish to exploit the invention as claimed after the patent has expired will be enabled to do so: see, for example, Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5 at 11 per Fullagar J; F Hoffman-La Roche & Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; CCOM v Jiejing at 281-282; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood v Doric ) at [69].


case_text: note that my rulings in relation to Documents 4 and 5 are consistent with certain observations made on applications for orders for discovery by Burchett J in F Hoffmann-La Roche AG v Chiron Corporation (2000) 47 IPR 516 at [19] [21] and by Branson J in Lubrizol Corporation Inc v Imperial Chemical Industries plc [2000] FCA 1464 ; (2000) 50 IPR 526 at [33] (although, unlike the present case, those cases involved the exercise of a discretion and a balancing exercise).


case_title: Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331


case_text: parties rely on the following passage from the English Court of Appeal's judgment in General Tire & Rubber Co v Firestone Tyre & Rubber Co Limited [1972] RPC 457 at 485-486: If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented : Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. [my emphasis] This passage has been followed in Lubrizol at [61] and in numerous other cases. In my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.


case_text: parties rely on the following passage from the English Court of Appeal's judgment in General Tire & Rubber Co v Firestone Tyre & Rubber Co Limited [1972] RPC 457 at 485-486: If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented : Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. [my emphasis] This passage has been followed in Lubrizol at [61] and in numerous other cases.


case_outcome: referred to

case_title: Generics (UK) Ltd v H Lundbeck A/S [2007] EWHC 1040 ; [2007] RPC 32


case_text: arriving at the conclusion expressed in the last paragraph, I have read what Kitchin J has said on the present issue in Generics v Lundbeck at [231] [237] and the passages from the authorities to which his Lordship refers, namely, Richardson-Vicks Inc's Patent [1995] RPC 568 at 581 and Glaxo Group Ltd's Patent [2004] EWHC 477 ; [2004] RPC 43 at [113] . I note that my conclusion is generally in line with those three authorities.


case_title: H Lundbeck A/S v Generics (UK) Ltd [2008] EWCA 311

case_text: the reasons set out above were being proofread in preparation for delivery of judgment, the English Court of Appeal on 10 April 2008 gave judgment in H Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311 , the appeal from the judgment of Kitchin J in Generics v Lundbeck previously noted. With respect, I do not think it necessary to incorporate references to their Lordships' reasons, which are, generally speaking, consistent with what I have written above. I certify that the preceding seven hundred and eighty-five (785) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren. Associate: Dated: 24 April 2008 Proceeding NSD 1120 of 2005 Counsel for the Applicant/Cross Respondent (Alphapharm Pty Ltd): Mr DK Catterns QC, Mr S Burley SC and Mr JS Cooke Solicitor for the Applicant/Cross Respondent (Alphapharm Pty Ltd): Mallesons Stephen Jaques Counsel for the Respondent/First Cross Claimant (H Lundbeck A/S) and for the Second Cross Claimant (Lundbeck Australia Pty Ltd): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Respondent/First Cross Claimant (H Lundbeck A/S) and for the Second Cross Claimant (Lundbeck Australia Pty Ltd): Corrs Chambers Westgarth Proceeding NSD 1870 of 2005 Counsel for the Applicant (Lundbeck Aust Pty Ltd): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Applicant (Lundbeck Aust Pty Ltd): Corrs Chambers Westgarth Counsel for the First Respondent (the Secretary of the Department of Health & Ageing of the Commonwealth of Australia): Mr G Kennett Solicitor for the First Respondent (the Secretary of the Department of Health & Ageing of the Commonwealth of Australia): Australian Government Solicitor Counsel for the Second Respondent (Alphapharm Pty Ltd): Mr DK Catterns QC, Mr S Burley SC and Mr JS Cooke Solicitor for the Second Respondent (Alphapharm Pty Ltd): Mallesons Stephen Jaques Proceeding NSD 954 of 2006 Counsel for the Applicant (Arrow Pharmaceuticals Pty Ltd): Mr C Dimitriadis Solicitor for the Applicant (Arrow Pharmaceuticals Pty Ltd): Blake Dawson Waldron Counsel for the Respondent (H Lundbeck A/S): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Respondent (H Lundbeck A/S): Corrs Chambers Westgarth Proceeding NSD 1078 of 2006 Counsel for the Applicant (H Lundbeck A/S): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Applicant (H Lundbeck A/S): Corrs Chambers Westgarth The First Respondent (Commissioner of Patents) did not appear, having filed a submitting appearance. Counsel for the Second Respondent (Alphapharm Pty Ltd): Mr DK Catterns QC, Mr S Burley SC and Mr JS Cooke Solicitor for the Second Respondent (Alphapharm Pty Ltd): Mallesons Stephen Jaques Dates of Hearing: 11, 12, 13, 16, 17, 18, 19, 23, 24, 26 April 2007; 1, 7, 8, 9, 10, 11 May 2007 Date Last Written Submission Received: 21 November 2007 Date of Judgment: 24 April 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/559.html


case_text: is necessary to distinguish between two potential meanings of the notion of a "basis rule". The expression may be used to refer to a supposed rule that evidence of expert opinion is not admissible unless the expert identifies the assumed factual basis for his or her opinion, thereby distinguishing between what is opinion and what is not. This goes to the form taken by the expert's evidence. The provisions of s 79 of the Evidence Act tend to have the practical effect of requiring attention to the form that expert evidence takes: HG v The Queen [1999] HCA 2 ; (1999) 197 CLR 414 at [39] per Gleeson CJ. As I noted in Harrington-Smith v State of Western Australia (No 2) [2003] FCA 893 ; (2003) 130 FCR 424 at [25] , in the absence of a distinction between opinion and assumed factual basis, the Court may not be able to be satisfied:


case_title: Hill v Evans (1862) 1A IPR 1

case_text: parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( Décor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours & Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH & Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; Décor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date In my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.


case_title: Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399


case_title: Jango v Northern Territory (No 4) (2004) 214 ALR 608


case_title: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274


case_text: history of the emergence of obviousness or lack of inventive step as a distinct ground of invalidity has been recently traced by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 ( Lockwood v Doric (No 2) ) at [38] [49], and by a Full Court of this Court in Ajinomoto Co Inc v NutraSweet Australia Pty Ltd [2008] FCAFC 34 at [63] [91]. I need not discuss that history.


case_text: effect of these provisions is that the Patent can be revoked under the Act only on a ground of invalidity that would have been available under the 1952 Act. In any case where a relevant ground of invalidity under the 1952 Act is narrower than the corresponding ground under the Act, the patentee has the benefit of the narrower ground and is not to be worse off than if the 1952 Act had continued to operate: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404 ; (1993) 44 FCR 239 at 250 ff per Lockhart J, with whom Northrop J agreed and with whom Burchett J agreed on this point; ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214 ( Lubrizol ) at [22] [24]; Aktiebolaget Hässle v Alphapharm Pty Ltd [2000] FCA 1303 ; (2000) 51 IPR 375 at [8] [10]. Professors Banwell and Davies Both parties rely on the following passage from the English Court of Appeal's judgment in General Tire & Rubber Co v Firestone Tyre & Rubber Co Limited [1972] RPC 457 at 485-486: If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented : Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. [my emphasis] This passage has been followed in Lubrizol at [61] and in numerous other cases. I note that my rulings in relation to Documents 4 and 5 are consistent with certain observations made on applications for orders for discovery by Burchett J in F Hoffmann-La Roche AG v Chiron Corporation (2000) 47 IPR 516 at [19] [21] and by Branson J in Lubrizol Corporation Inc v Imperial Chemical Industries plc [2000] FCA 1464 ; (2000) 50 IPR 526 at [33] (although, unlike the present case, those cases involved the exercise of a discretion and a balancing exercise).


case_title: Makita (Australia) Pty Ltd v Sprowles (2001) 52 NSWLR 705

case_text: relies on a passage from the well-known judgment of Heydon JA (as his Honour then was) in Makita (Australia) Pty Limited v Sprowles (2001) 52 NSWLR 705 ( Makita ) at [85]: In short, if evidence tendered as expert opinion evidence is to be admissible, it must be agreed or demonstrated that there is a field of "specialised knowledge"; there must be an identified aspect of that field in which the witness demonstrates that by reason of specified training, study or experience, the witness has become an expert; the opinion proffered must be "wholly or substantially based on the witness's expert knowledge"; so far as the opinion is based on facts "observed" by the expert; they must be identified and admissibly proved by the expert, and so far as the opinion is based on "assumed" or "accepted" facts, they must be identified and proved in some other way; it must be established that the facts on which the opinion is based form a proper foundation for it; and the opinion of an expert requires demonstration or examination of the scientific or other intellectual basis of the conclusions reached: that is, the expert's evidence must explain how the field of "specialised knowledge" in which the witness is expert by reason of "training, study or experience", and on which the opinion is "wholly or substantially based", applies to the facts assumed or observed so as to produce the opinion propounded. If all these matters are not made explicit, it is not possible to be sure whether the opinion is based wholly or substantially on the expert's specialised knowledge. If the court cannot be sure of that, the evidence is strictly speaking not admissible, and, so far as it is admissible, of diminished weight.


case_outcome: discussed

case_text: Barker decided that the decision of Wilcox J in Merck & Co Inc v Arrow Pharmaceuticals Ltd [2003] FCA 1344 ; (2003) 59 IPR 226 ( Merck ) governed the issue before him. As Dr Barker understood the position, Merck produced the result that it did not matter that escitalopram was a new chemical entity having properties different from those of the racemate, citalopram, or that the registration of citalopram under its brand name Cipramil on the ARTG did not give the right to market escitalopram except as part of the racemate. All that mattered was that Cipramil did in fact "contain" escitalopram, or put another way, that escitalopram was present (to some extent) in Cipramil, and that Cipramil was included in the ARTG. It was also immaterial, according to Dr Barker, that escitalopram was not responsible for all of the activity of Cipramil. Dr Barker concluded that since citalopram hydrobromide, marketed under the brand name Cipramil and containing escitalopram, was first registered on the ARTG on 9 December 1997, the Commissioner was required by reg 10.7(7) to amend the relevant entry in the Register to reflect the correct extension of the term of the Patent as expiring on 9 December 2012 (see [32] above). Lundbeck complains that the Dr Barker erred in finding that the first regulatory approval date was the date on which Cipramil was registered on the ARTG, and that Dr Barker ought to have found that it was the date on which Lexapro was so registered (see [33] above). Which legislative régime applies? For its part, Alphapharm relies on Merck & Co Inc v Arrow Pharmaceuticals Ltd (2003) 59 IPR 226 ( Merck ). A patentee, Merck & Co Inc (Merck), appealed against the Commissioner's delegate's refusal of an extension. The appeal was undefended, the respondent having withdrawn from the proceeding. Wilcox J allowed the appeal. Sankyo Company Pty Ltd (Sankyo) had held a patent that claimed a compound of a particular formula, commonly referred to as Lovastatin. Lovastatin was entered on the ARTG. It was used for the control of cholesterol levels. Sankyo's patent expired on 19 February 2000, and no extension was sought in respect of it. Merck applied for a patent on 3 June 1980 with priority dates in 1979 and 1980. The patent was granted on the basis of the exclusion of certain claims which related to Lovastatin. On appeal, Wilcox J disagreed, saying (at [25]) that Merck's LHA argument was "irrefutable", and that, if only on that ground, the delegate's decision must be reversed. His Honour stated (at [26]) that LHA was a pharmaceutical substance per se disclosed in the complete specification of the patent and falling within its claims, and that the undisputed evidence was that Mevacor contained LHA. Wilcox J considered that it was irrelevant whether or not LHA itself was included in the ARTG: that for s 70(3)(a) purposes it was enough that it was contained in some other good (Mevacor) that was included in the ARTG (at [27]). His Honour thought that it did not matter that LHA was present in Mevacor only in minute quantities (at [28]). Having regard to his conclusions supporting Merck's LHA argument, his Honour did not need to address its argument concerning Lovastatin, although he expressed the view that it seemed to him that the delegate had been right to reject that argument. In Merck , as in the other cases referred to above, the question before the Court did not concern a competition between two arguable first regulatory approval dates. However, Wilcox J's construction of "containing" in s 70(3) must be applicable to the word "contain" in s 70(5). If I were to follow Wilcox J, I would hold that Cipramil "contained" (+)-citalopram. Consideration of Lundbeck's "pharmaceutical substance per se " submission The Latin expression "per se" means "by or in itself; intrinsically. Opposed to PER ACCIDENS [defined relevantly to mean "By virtue of some non-essential circumstance; contingently, indirectly"]": Oxford Dictionary of Foreign Words and Phrases (OUP, 1997). It is not every disclosure of every substance falling within the definition of "pharmaceutical substance" to which s 70(2)(a) refers. A non-essential or incidental disclosure of a pharmaceutical substance will not satisfy s 70(2)(a). The pharmaceutical substance must be of the essence of a disclosure made in the specification. This construction is consistent with the requirement that it fall within the scope of the claim or claims. The racemate, citalopram, is the pharmaceutical substance per se disclosed in the specification of the Australian Citalopram Patent, whereas the (+)-enantiomer of that racemate is the pharmaceutical substance per se disclosed in the specification of the Patent, in each case for the purpose of s 70(2)(a). Moreover, the inclusion in the ARTG of Cipramil on 9 December 1997 clearly signified the inclusion in the ARTG of goods that consisted of or contained the pharmaceutical substance citalopram, and the inclusion of Lexapro in the ARTG on 16 September 2003 clearly signified the inclusion in the ARTG of goods that consisted of or contained the pharmaceutical substance (+)-citalopram, in each case for the purpose of s 70(3)(a). The precise question before the Court, however, is whether Cipramil was goods that contained the pharmaceutical substance (+)-citalopram for the latter purpose.


case_text: the Canadian case Pfizer Canada Inc v Apotex Inc (1998) 78 CPR (3d) 3, the court stated that the doctrine of equivalents applies to compositions where there is equivalence between chemical ingredients. That approach was followed in the Canadian case Merck Frosst Canada Inc v Canada (Minister of National Health and Welfare) (2000) 8 CPR (4 th ) 48. In the later case, the court stated, quoting from the earlier one, that "basically, there is equivalence when the substituting ingredient or device 'performs substantially the same function in substantially the same way to obtain the same result'". Accordingly, the court accepted expert evidence that the chemical properties and activities of the substituted ingredient were similar to those of the ingredient that it replaced. That evidence showed that both compounds were electron withdrawing groups and would therefore allow a particular reaction to occur, resulting in the same products. Importantly, the court accepted expert evidence that "a person reasonably skilled in the art would have known of the inter-changeability of that ingredient not contained in the patent with the one that was". Accordingly, the court found infringement proved. The evidence


case_text: is common ground that the basic test for lack of novelty in Australia is the "reverse infringement test", which was enunciated by Aickin J in the following well-known passage in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235: The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement ... This rule is stated in Blanco White TA, Patents for Inventions and the Protection of Industrial Design (5 th ed, Stephens, London, 1983) at [4-102] as follows: The test for lack of novelty is essentially the same as the test for infringement; that is to say, a prior use will invalidate a claim if it was such that it would infringe that claim if carried out after the grant of the patent concerned; while a prior disclosure will invalidate if it contains a clear description of, or clear instructions to do or make, something that would infringe if carried out after grant. Lundbeck submits that there are two elements of the reverse infringement test: first, that the alleged anticipation must disclose all of the essential features of the particular claim it is said to anticipate; and, second, that the alleged anticipation must have enabled the addressee to carry out the invention. Alphapharm submits: "The submissions of Lundbeck misapplied the doctrine of enabling disclosure, even assuming it applies in Australia". Alphapharm submits, however, that the applicability of the doctrine need not be decided because there is no dispute that the Australian Citalopram Patent "enabled" the racemate, that is, the positive enantiomer, but only with the negative enantiomer in equal proportions. Clearly, the issue of the proper construction of claim 1 discussed above directly arises.


case_outcome: applied

case_text: question of what was obvious is assessed from the perspective of the hypothetical non-inventive skilled addressee or team in the field of the invention, taking into account "what was known or used" (referred to as "common general knowledge"): Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 ( Minnesota v Beiersdorf ). This position is now effectively codified in ss 7(2) and 18(1)(b) of the Act, provided s 7(3) is put to one side. In Minnesota v Beiersdorf at 292-295 and in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 ( Astra ) at [57] it was held in relation to s 100(1)(e) of the 1952 Act that publications are not to be taken into account unless their content was part of common general knowledge at the priority date. Accordingly, the issue is not whether it was obvious to conduct a literature search of a particular kind with a view to acquiring information, but whether the information that would have been obtained from the search had already entered the body of common general knowledge: Minnesota v Beiersdorf at 295; Astra at [45]. No question arises in this case regarding the results of a routine literature search. In Minnesota v Beiersdorf , Aickin J described the notion of common general knowledge (at 292): The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. As noted earlier, it was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is "generally accepted without question" or "generally regarded as a good basis for further action" by the bulk of those in the art: Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315 ; (2002) 56 IPR 248 at [100] , quoting Blanco White TA, Patents for Inventions and the Protection of Industrial Design (5 th ed, Stephens, London, 1983) at [4-207].


case_text: Minnesota v Beiersdorf , Aickin J described the notion of common general knowledge (at 292): The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. As noted earlier, it was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is "generally accepted without question" or "generally regarded as a good basis for further action" by the bulk of those in the art: Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315 ; (2002) 56 IPR 248 at [100] , quoting Blanco White TA, Patents for Inventions and the Protection of Industrial Design (5 th ed, Stephens, London, 1983) at [4-207].


case_text: Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 ( Gambro ), Allsop J pointed out (at [353]) that it is wrong to divide up the inventive process into conception and practical implementation: it is the whole that must be considered and it suffices that there is only one inventive step involved (see also National Research Development Corporation v Commissioner of Patents [1959] HCA 67 ; (1959) 102 CLR 252 at 262).


case_title: Neolab Ltd and others v H Lundbeck AS 3 Ni 9/05 (EU)


case_text: submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.


case_text: parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( Décor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours & Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH & Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; Décor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date


case_text: my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.


case_text: history of the emergence of obviousness or lack of inventive step as a distinct ground of invalidity has been recently traced by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 ( Lockwood v Doric (No 2) ) at [38] [49], and by a Full Court of this Court in Ajinomoto Co Inc v NutraSweet Australia Pty Ltd [2008] FCAFC 34 at [63] [91]. I need not discuss that history. Lundbeck submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.


case_title: Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236


case_text: High Court also held in Astra (at [50] [53]) that obviousness was to be determined by asking whether a hypothetical non-inventive skilled addressee, equipped with the common general knowledge as at the priority date, would have taken steps towards the invention "as a matter of routine" in the expectation that they might well produce the invention or some other useful result (endorsing statements in Wellcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 ( Wellcome ) at 286 and Olin Mathieson Chemical Corporation v Biorex Laboratories Limited [1970] RPC 157 ( Olin ) at 187-188). The High Court has therefore insisted on the two elements: (1) being led as a matter of routine to the desired result; and (2) having a reasonable expectation of achieving that result.


case_outcome: approved

case_text: construction, independently arrived at, accords with that of District Judge Keeley in Ortho-McNeil Pharmaceutical Inc v Mylan Laboratories Inc 348 F Supp 2d 713. Her Honour had to construe a claim of "An S( )-pyridobenzoxazine compound represented by [a certain formula]". Her Honour said (at 726): Thus, while it is certainly necessary to distinguish a new invention over the prior art, there is no indication that an inventor must use a plain-English purity limitation, as Mylan contends. Instead, an inventor may use anything that a person skilled in the relevant art would understand to limit the claim. In this case, the term "S( )" clearly and plainly limits the claim language to the levorotatory enantiomer. Those skilled in the art clearly understand the term "S( )" to affirmatively denote only the levorotatory enantiomer of a racemic compound, and not the racemic compound itself. Later (at 729-730) Keeley J said that those skilled in the art would have understood the claim to cover "levofloxacin with a purity that was highly, but less than 100%, optically pure". Her Honour's observations apply mutatis mutandis to the present case. While my construction would leave unanswered the question how much "impurity" would prevent a compound from meeting the formula in claim 1 (see below), it does establish that when the compound is present only as 50% of a racemate, it does not meet the description in claim 1. The construction outlined above is also supported by the body of the specification and a certain convention in the way in which chemists understand references to compounds, both discussed below, but does not depend on those two additional considerations. I rely on them as alternative bases for my construction if I am wrong in thinking that claim 1 is unambiguous. Rules of construction There is a series of decisions of the various courts of the United States in which it has been accepted that unexpected superiority in effectiveness is probative of non-obviousness: see, for example, Sterling Drug Inc v Watson 135 F Supp 173 (1955) at 175-176; In re Gershon , 372 F 2d 535 (1967) at 537; In re Skoner , 517 F 2d 947 (1975) at 950; Ex parte Sohda 2002 WL 519757 at 2-3; In re Chupp , 816 F 2d 643 (1987) at 646-647; Ortho-McNeil Pharmaceutical Inc v Mylan Laboratories Inc 348 F Supp 2d 713 at 755-756. In some of these cases it has been said that the evidence of unexpected superior clinical benefits has been admitted to counter prima facie obviousness arising from other evidence. I do not find other evidence in the present case raising a prima facie case of obviousness. In any event, this was not a basis of admissibility relied upon by Lundbeck.


case_title: Pfizer Canada Inc v Apotex Inc (1998) 78 CPR (3d) 3


case_title: Pfizer Overseas Pharmaceuticals v Ely Lilly & Co [2005] FCAFC 224 ; (2005) 225 ALR 416


case_text: so holding, the High Court rejected a less demanding "worth a try" or "obvious to try" test. Astra therefore stands for the rejection of a line of United Kingdom authority to the effect that "all of the courses of action which present themselves without the exercise of invention are obvious": Pharmacia Corporation v Merck & Co Inc [2002] RPC 775 at 818 (see Astra at [54] per Gleeson CJ, Gaudron, Gummow and Hayne JJ). Their Honours explained that "[t]he tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps [a description taken from the judgment of the trial Judge] [was] not the taking of routine steps to which the hypothetical formulator [would be] taken as a matter of course" (at [58]; also per Callinan J at [185]).


case_text: refers to three authorities as being relevant to the construction of the expression "pharmaceutical substance per se ": Boehringer Ingelheim International GmbH v Commissioner of Patents [2001] FCA 647 ; (2001) 112 FCR 595 ( Boehringer ); Prejay Holdings Ltd v Commissioner of Patents [2003] FCAFC 77 ; (2003) 57 IPR 424 ( Prejay ); and Pharmacia Italia SpA v Mayne Pharma Pty Ltd (2006) 69 IPR 1 ( Pharmacia ).


case_title: PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41


case_text: refers to three authorities as being relevant to the construction of the expression "pharmaceutical substance per se ": Boehringer Ingelheim International GmbH v Commissioner of Patents [2001] FCA 647 ; (2001) 112 FCR 595 ( Boehringer ); Prejay Holdings Ltd v Commissioner of Patents [2003] FCAFC 77 ; (2003) 57 IPR 424 ( Prejay ); and Pharmacia Italia SpA v Mayne Pharma Pty Ltd (2006) 69 IPR 1 ( Pharmacia ). In Prejay a Full Court of this Court followed Boehringer . All of the claims were method claims, not product claims. The Commissioner's delegate refused an application for an extension. The Full Court agreed with the delegate that a substance that is mentioned in the context of a method claim does not meet the requirement of s 70(2)(a) that the substance per se fall within the scope of a claim (at [23] [24] per Wilcox and Cooper JJ, [28] per Allsop J).


case_text: is perhaps the most critical aspect of the Revocation Proceeding (and the Arrow Proceeding). This appears to be the first time an Australian patent relating to a single enantiomer has been challenged on the ground of obviousness (the obviousness ground was abandoned in Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) [2006] FCA 1787 ; (2006) 71 IPR 46 ( Ranbaxy ) as noted by Young J at [15]).


case_text: Re Application of Eli Lilly & Co [1982] 1 NSWLR 526, it was argued by the Commissioner in an application under s 90 of the Patents Act 1952 (Cth) for an extension of term, that the patentee had not properly exploited the invention. The patent was in respect of a pharmaceutical invention called monensic acid and a new process for producing that product. The patentee had exploited and used commercially only monensin sodium, a salt of monensic acid. The Commissioner argued that the salt was a product chemically distinct from the acid.


case_text: is required is that there be a real and reasonably clear disclosure in the body of the specification, taken as a whole, of the invention that is claimed in the claims so that those who may wish to exploit the invention as claimed after the patent has expired will be enabled to do so: see, for example, Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5 at 11 per Fullagar J; F Hoffman-La Roche & Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; CCOM v Jiejing at 281-282; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood v Doric ) at [69].


case_text: arriving at the conclusion expressed in the last paragraph, I have read what Kitchin J has said on the present issue in Generics v Lundbeck at [231] [237] and the passages from the authorities to which his Lordship refers, namely, Richardson-Vicks Inc's Patent [1995] RPC 568 at 581 and Glaxo Group Ltd's Patent [2004] EWHC 477 ; [2004] RPC 43 at [113] . I note that my conclusion is generally in line with those three authorities.


case_title: Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231


case_text: is little case law in Australia in relation to "mechanical equivalents" and "non-essential integers" in the context of chemical formulae. In Saccharin Corporation Ltd v Anglo-Continental Chemical Works Ltd (1900) 17 RPC 307 at 319, Buckley J held that a method claim was infringed notwithstanding that changes had been made, because the same result was achieved.


case_text: parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( Décor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours & Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH & Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; Décor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date Alphapharm submits that "the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim", citing Sachtler at [53]. Alphapharm submits that the cross-examination of Professor Banwell established that the steps of the A process were different from the integers of Claim 6(b). Another defence raised by Alphapharm concerns the definition of "exploit" in Schedule 1 to the Act. Section 13(1) of the Act provides that, subject to the Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to do so. Section 13(3) provides that a patent "has effect throughout the patent area". The definition of "exploit" in the Dictionary in Schedule 1 is as follows: exploit , in relation to an invention includes: (a) where the invention is a product make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or (b) where the invention is a method or process use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use. Alphapharm submits that para (b) of the definition requires that the use of the method or process be in the "patent area". The "patent area" is defined in the Dictionary in Schedule 1 and may, for convenience, be thought of as being "Australia". Consideration of the claim of infringement of the product claims (claims 1, 3 and 5) The authorities relating to infringement were recently reviewed by Bennett J in Sachtler at [43]-[67]. Her Honour cautioned against the purported application of the "pith and marrow" or "substance of the invention" approach, untrammelled by the form of the claims (at [55]). It is necessary for the Court to construe claim 6(b) in the light of the common general knowledge as at the priority date. How would the non-inventive person skilled in the art at that time, possessed of that common general knowledge, have understood the words of the claim?


case_title: Seyfang v G D Searle & Co [1973] QB 148

case_text: seems to me to reflect the only practicable way in which opinion evidence of the kind given by Professor Montgomery can be dealt with. In this respect, I note the statement made by Cooke J in Seyfang v G D Searle & Co [1973] QB 148 at 151: It does appear to me with the greatest respect that a system which does not permit experts to refer in their expert evidence to the publications of other experts in the same field is a system which puts peculiar difficulties in the way of proof of matters which depend on expert opinion.


case_title: Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5


case_title: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354


case_text: High Court also held in Astra (at [50] [53]) that obviousness was to be determined by asking whether a hypothetical non-inventive skilled addressee, equipped with the common general knowledge as at the priority date, would have taken steps towards the invention "as a matter of routine" in the expectation that they might well produce the invention or some other useful result (endorsing statements in Wellcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 ( Wellcome ) at 286 and Olin Mathieson Chemical Corporation v Biorex Laboratories Limited [1970] RPC 157 ( Olin ) at 187-188). The High Court has therefore insisted on the two elements: (1) being led as a matter of routine to the desired result; and (2) having a reasonable expectation of achieving that result. Evidence of the patentee's own lack of success in earlier attempts is probative of the inventive nature of a successful solution to a problem ( Wellcome at 287); the question of what weight is to be given to that evidence will depend on all the circumstances including the patentee's qualifications and experience in the field of the invention. Inventions that reveal an "unfelt want or need" are as likely or sometimes more likely to involve an inventive step as those that fulfil a "long-felt want" ( Wellcome at 287; Astra at [38]). Obviousness in relation to the product claims and the method claim Obviousness means different things in relation to the product claims (claims 1 5) and the method claim (claim 6). Alphapharm criticises Lundbeck for failing to make that distinction. In the case of the method claim, the question of obviousness assumes as the starting point the goal of obtaining the (+)-enantiomer. In relation to the product claims, on the other hand, the question is whether that goal was itself an obvious one to pursue. Common general knowledge of methods available to resolve racemates may, however, be relevant to the obviousness of the product claims. It is relevant to the question whether it was obvious to want to obtain (+)-citalopram to ask whether it was part of common general knowledge that there were or were not available straightforward, inexpensive methods of doing so that were expected to succeed. While evidence of the efforts of the inventor and of the efforts (or absence of them) of the patentee's opponent and others is admissible as relevant to the issue of obviousness (see, for example, Wellcome at 287), the question is an objective one requiring the creation of a hypothetical person, skilled but non-inventive in the art, or a hypothetical team of such persons. The concept of common general knowledge at the priority date must be proved by evidence, and the assumption made that the hypothetical person or team was possessed of that common general knowledge. In Wellcome, Aickin J, with whom the other members of the High Court agreed, stated (at 287): ... not all inventions are to be classified as fulfilling a long-felt want. Those which reveal an "unfelt want" are as likely, or sometimes more likely, to involve an inventive step. In Astra at [38], Gleeson CJ, Gaudron, Gummow and Hayne JJ approved of this passage. However, neither Aickin J in Wellcome nor their Honours in Astra were saying that evidence of unexpected benefits is admissible. Rather, the point they were making was that evidence of previous unsuccessful attempts to satisfy a long-felt want, while admissible, might not be entitled to much weight since inventive step can be present, not only in the presence of a long-felt want and associated motivation, but also in their absence. It seems to me that Lundbeck has set up a "straw man" to knock down. In the light of the nature of the case that Lundbeck had to counter, it was only evidence of what was commonly known and expected at the priority date that it was entitled to seek to prove. Evidence of post-priority date surprises did not fall within that description.


case_outcome: followed

case_text: is a principle that all that is within the scope of a claim must be useful if the claim is not to fail for inutility, or, to express the matter differently, a claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid: Wm Wrigley Jr Company v Cadbury Schweppes Pty Ltd (2006) 66 IPR 298 at [138] and authorities there cited. Alphapharm relies on the testimony of Professor Montgomery who was asked what the highest therapeutically useful unit dose of escitalopram was. He said that it was 20 mg of escitalopram, but that in treating obsessive compulsive disorder (OCD) clinicians normally use above that level, and that unit dosages of 30 mg and 40 mg are often used in the treatment of resistant OCD. Professor Montgomery was also asked what would be the minimum useful dose. He said that 5 mg was found to be effective in the treatment of social anxiety disorder in a very large study, but that that amount was found to be ineffective in the treatment of generalised anxiety disorder. He said that there is a general notion that one should use lower doses in the case of the elderly, and that the 5 mg dose is used for the treatment of them.


case_title: Bagshaw v Scott [2005] FCA 104

case_text: my judgment, the proceedings were commenced without reasonable cause and were, from first to last, untenable: Bagshaw v Scott [2005] FCA 104 at [46] and [102]. From the outset, the proceedings had no substantial or any prospects of success, and it is clear, in my judgment, that the proceedings were commenced, maintained, and conducted vexatiously. Notwithstanding all of the above, for the reasons which follow, I think it right, in all the circumstances of this case, simply to order that, except where specific costs orders have been made with the opposite effect, the applicant pay the costs of the respondent of and incidental to the proceedings. I note that the dates that had been first set down for the hearing of the trial had to be vacated because of the inadequacy of the respondent's preparation for trial. In respect of that matter, I ordered the respondent to pay the costs of the applicant thrown away by the need to adjourn the trial of the proceedings. On 31 May 2007, I dismissed the application and set a timeframe in respect of the making of submissions as to costs.


case_text: principal proceedings were, in many respects, bizarre. On 31 May 2007, I gave judgment in this matter dismissing the application: Barrick v Qantas Flight Catering Limited [2007] FCA 835. In those reasons, I said, at [2]-[6]: ... the Federal Court proceedings, which were commenced by an application filed on 17 June 2002, involve an extraordinary collocation of alleged causes of action, many of which are misconceived or assert a cause of action not known to the law. It is a sad but true observation that the applicant's case has been conducted on the basis essentially of assertion, and the absence of probative evidence. 3 The relief claimed by Mrs Barrick in these proceedings is for: (i) the recovery of fines and penalties for alleged breaches of a number of provisions of the Award by Qantas Catering; (ii) recovery of wages and superannuation alleged to have been unpaid by Qantas Catering; (iii) damages under s 82 of the Trade Practices Act 1976 (Cth) (the TP Act) for breaches of s 51AA and s 52; (iv) and further and alternatively, for damages for breach of contract and or statutory duty; (v) and further and alternatively, damages and or equitable compensation for harsh and unconscionable conduct; (vi) and further and alternatively, for declaratory relief in reliance on s 80 of the TP Act, or alternatively, on reliance on the rules of natural justice and the principles of equity and good conscience and the common law of the Commonwealth; (vii) and further and alternatively, for a mandatory injunction in reliance on s 80 of the TP Act, and or alternatively in reliance on the inherent jurisdiction of the Court to uphold the statutory and common law of the Commonwealth, including the rules of natural justice and the principles of equity and good conscience; (viii) and further and alternatively damages and or equitable compensation as the Court deems fit and appropriate including exemplary damages in consequence of the respondent's compliance or non-compliance with the proposed orders for declaratory and mandatory injunction; (ix) such further or other orders as the Court deems fit in all the circumstances of the case as set out herein; (x) an order for costs on an indemnity basis; (xi) interest on all monies and damages found to be payable. It was pleaded in Mrs Barrick's case in [45] of the Further Amended Statement of Claim, filed 28 April 2005: 45. ..., the conduct of the Respondent [ Qantas Flight Catering Limited ] in:- (i) reversing its previous positions; (ii) and failing to take appropriate steps to correct its treatment of the Applicant on the strength of its original allegations and accusations (including its dismissal of the Applicant, her prosecution for fraud and refusal to pay superannuation on the grounds of ill health); (iii) and putting forward evidence, claims and defences in these proceedings which it could and should have put forward in the previous proceedings is unreasonable and contrary to equity and good conscience. 5 Further, in [46], it was pleaded: In the premises and in the absence of proper and reasonable explanations from the Respondent [Qantas Flight Catering Limited] to justify or excuse the conduct on its part ... the Respondent should be held as the Applicant reasonably apprehends to have committed an abuse of the process of the AIRC and the Magistrates Court to the detriment of the Applicant. This is, quite simply, an extraordinary assumption of what the Federal Court is empowered to do. There was no cause of action available to the applicant by which she could revisit the the issues which were the subject of findings in the Australian Industrial Relations Commission (AIRC) to the effect that the applicant was complicit in a fraudulent scheme. The applicant asserted that in the AIRC proceedings, the conduct by the respondent in resisting her application for unlawful termination or reinstatement was false, and was a representation in trade or commerce entitling the applicant, pursuant to the Trade Practices Act 1976 (Cth) to recovery of legal expenses. As my reasons for judgment in the principal proceedings demonstrate, I was and am of the view that the proceedings in the Federal Court were brought for the dominant purpose of having the Federal Court revisit the determinations of other courts and tribunals (including the proceedings in the AIRC) and the findings concerning the conduct of the respondent, or its officers, in such proceedings, which were determined adversely to the applicant. In particular, it was said that the proceedings in the Federal Court were brought to obtain findings from the Federal Court contrary to those of the AIRC, "to clear the applicant's name".


case_text: The context in which I need to consider this matter is somewhat unusual. In September 2004 the ACCC accepted an undertaking of indefinite duration from Harbin under s 87B of the Act which amongst other things obliged Harbin to establish, maintain and have independently audited annually a compliance program which was to have specific regard to conduct that might breach Part V of the TP Act. The undertaking is, in several respects, more expansive in its terms than would be acceptable to a Court making orders under s 86C of the Act: see Australian Competition and Consumer Commission v Visy Paper Pty Ltd (No 2) (2004) 212 ALR 564 at [55]-[56]. It has not been alleged that this undertaking has been breached. Nonetheless, a further probation order is being sought under s 86C. 3 My own view of the relief that is appropriate to be ordered is less burdensome than what is now sought by the ACCC (the amended application filed at the hearing responded to objections raised in Harbin's written submissions), but is more demanding than Harbin would concede. 4 I begin with an abbreviated version of the parties' Statement of Agreed Facts.


case_text: I note in passing that there is a body of opinion in decisions of this Court which questions both whether there is legislative authority for the Court acting under s 86C of the TP Act to order a respondent to instruct an expert to audit a compliance program and to deliver to the ACCC audit reports: see BMW Australia Ltd v Australian Competition and Consumer Commission [2004] FCAFC 167 ; (2004) 207 ALR 452 at [42] - [52] ; Australian Competition and Consumer Commission v Midland Brick Co Pty Ltd [2004] FCA 693 ; (2004) 207 ALR 329 at [50] ; or, if there be some other source of power so to do: see BMW Australia at [51]; whether it would ordinarily be appropriate to make such orders: see Visy Paper (No 2) at [56]. I share these doubts. 25 It is well accepted that an injunction is a discretionary remedy and will not be awarded as of course on proof of a contravention of the TP Act: BMW Australia at [35]-[36]. As the Full Court observed in Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd (in liquidation) (2007) 161 FCR 513 at [111]: Many contraventions simply will not justify injunctive relief. We doubt whether unintentional misconduct in contravention of s 52 would lead to such relief. It is necessary for a claimant "to demonstrate that the injunction will serve a purpose": ibid; though it is unnecessary to that end to show that commission, continuance, or repetition of contravening conduct is threatened or apprehended: see s 80(4) and BMW Australia at [36].


case_text: I note in passing that there is a body of opinion in decisions of this Court which questions both whether there is legislative authority for the Court acting under s 86C of the TP Act to order a respondent to instruct an expert to audit a compliance program and to deliver to the ACCC audit reports: see BMW Australia Ltd v Australian Competition and Consumer Commission [2004] FCAFC 167 ; (2004) 207 ALR 452 at [42] - [52] ; Australian Competition and Consumer Commission v Midland Brick Co Pty Ltd [2004] FCA 693 ; (2004) 207 ALR 329 at [50] ; or, if there be some other source of power so to do: see BMW Australia at [51]; whether it would ordinarily be appropriate to make such orders: see Visy Paper (No 2) at [56]. I share these doubts.


case_text: It is well accepted that an injunction is a discretionary remedy and will not be awarded as of course on proof of a contravention of the TP Act: BMW Australia at [35]-[36]. As the Full Court observed in Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd (in liquidation) (2007) 161 FCR 513 at [111]: Many contraventions simply will not justify injunctive relief. We doubt whether unintentional misconduct in contravention of s 52 would lead to such relief. It is necessary for a claimant "to demonstrate that the injunction will serve a purpose": ibid; though it is unnecessary to that end to show that commission, continuance, or repetition of contravening conduct is threatened or apprehended: see s 80(4) and BMW Australia at [36].


case_text: In the present matter the ACCC seeks to find justification for the grant of an injunction (albeit in appropriately limited terms that can be clearly understood and practically complied with: cf Australian Competition and Consumer Commission v Prouds Jewellers Pty Ltd (No 2) (2008) ATPR 42-230) in the following considerations (i) there is a need to prevent recurrence of contraventions given the inadequate procedures Harbin had in place at the time; (ii) inadequate investigations of the circumstances were made; (iii) Harbin has indicated it intends to continue to engage in two price advertising; (iv) Harbin has not provided documentary reassurance to the ACCC; and (v) the contravention occurred while Harbin had a compliance program in place. 27 For my own part, I am not satisfied that it is appropriate in the circumstances to sanction Harbin's single and unintentional contravention of the Act with the imposition of an injunction. If it be the case that Harbin needs further to be sensitised to the seriousness of breaching the TP Act and to be made more attentive to the purposes of its compliance program, this can be achieved by other more appropriate means which can be adapted to Harbin's particular circumstances, as I will indicate. Harbin has already demonstrated preparedness to change its procedures. I should add, I do not accept that its conduct after the contravention reflects so adversely upon it as to provide some justification for the award of injunctive relief.


case_text: Section 86C of the Act empowers the Court to make an order for corrective advertising: on which see generally Australian Competition and Consumer Commission v Telstra Corporation Ltd (2007) ATPR 42-207 at 48,428 where the purposes informing such an order are helpfully collected. One such purpose, I would note, is to "aid in the enforcement of the primary orders and the prevention of repetition of the contravening conduct": Australian Competition and Consumer Commission v Real Estate Institute of Western Australia Inc [1999] FCA 1387 ; (1999) 95 FCR 114 at 133.


case_title: Australian Competition and Consumer Commission v Real Estate Institute of Western Australia Inc [1999] FCA 1387 ; (1999) 95 FCR 114


case_text: It has been recognised on a number of occasions that this remedy can be a peculiarly apt one where the contravening conduct occurred in the course of a company's routine business advertising: see eg Australian Competition and Consumer Commission v Target Australia Pty Ltd (2001) ATPR 41-840 at 43,382. In such cases, particularly where no injunction is to be granted, a corrective advertising order can assist in making an advertiser "more assiduous in ensuring that it does not repeat the contravening conduct": Prouds Jewellers (No 2) at [13]. The making of such an order would, in my view, be salutary in the present matter. 30 I acknowledge that a considerable period has passed since the offending publication was made. While this may in a given instance be a factor telling against ordering corrective advertising, here it is not. Such an order, coupled with declaratory relief rather than an injunction, provides an appropriate coercive incentive to Harbin. 31 The form of corrective advertisement I will order to be published will be in the terms of that annexed to these reasons. With one necessary modification to reflect my refusal to award injunctive relief, it follows the form proposed by the ACCC.


case_text: There is, however, one further difficulty with this ground of appeal. A petition is not an affidavit. A petition which is amended is not required to be re-verified: Thai v Deputy Commissioner of Taxation (1994) 53 FCR 252 at 274 and Bryant v Commonwealth Bank of Australia [1995] FCA 971.


case_text: This ground of appeal proceeds upon a misunderstanding of the nature of the review provided for in s 104(2) of the FM Act . The review is a hearing de novo. Section 104(3) of the FM Act provides that upon the hearing, the Court " may make any order or orders it thinks fit in relation to the matter in respect of which the power was exercised" . Consistent with it being a hearing de novo, the appropriate form of order is to affirm the Registrar's orders: see Cottrell v Nicholls (as trustee in the estate of Cottrell) [2004] FCA 102 at [16] (per Allsop J) citing Meehan v Alfaro [1999] FCA 832 ; (1999) 93 FCR 201 at 212 and Martin v Commonwealth Bank of Australia (2001) 217 ALR 634 at [19].


case_text: Secondly, the fact that the Registrar granted leave for the Petition to be amended was consistent with s 33(1)(b) of the Bankruptcy Act . In MacDonald v Official Trustee in Bankruptcy [2001] FCA 140 ; (2001) 107 FCR 72 at [25] , the Full Court stated: "There is extensive authority for the proposition that the power of amendment in s 33(1)(b) extends to authorising the amendment of petitions to cure omissions of allegations made mandatory by the various provisions of the Bankruptcy Act and Bankruptcy Rules, that is, to cure what can be accepted to be more serious deficiencies in petitions than "formal defects or irregularities" within s 306." 32 The date of the commission of the act of bankruptcy is an allegation made mandatory in a petition: s 47(1A) of the Bankruptcy Act and Form 150 in Sch 1 to the Federal Court Rules 1979 (Cth). The discretion to amend in s 33(1)(b) is exercisable in all cases according to the circumstances of the particular case: MacDonald v Official Trustee in Bankruptcy [2001] FCA 140 ; (2001) 107 FCR 72 at [24] . In the present case, the appellant could not have been left in any doubt by what was stated in the Petition - the appellant had committed an act of bankruptcy within six months before presentation of the Petition by failing to comply with a bankruptcy notice dated 23 September 2005 (personally served on him on 29 September 2005), by failing to pay or secure the amount specified in the bankruptcy notice or by failing to satisfy the court that there was a valid ground for dismissing the notice: MacDonald v Official Trustee in Bankruptcy [2001] FCA 140 ; (2001) 107 FCR 72 at 82. Unsurprisingly, the appellant did not suggest that he was left in any doubt that he had committed an act of bankruptcy and the Petition had been issued on that basis. 33 This ground of appeal should be dismissed. 34 Ground (c) is that " [a]s a hearing De novo, Riley FM failed to rule that re-verification and re-service be dispensed with ." This ground of appeal substantially overlaps with ground (b) and should be dismissed on those bases.


case_title: Martin v Commonwealth Bank of Australia (2001) 217 ALR 634


case_outcome: affirmed

case_text: On 4 July 2006, the appellant filed an application for review against the Sequestration Order ("the Review Application"). The Review Application was heard by Riley FM on 28 August and 8 September 2006. On 19 October 2006, Riley FM dismissed the Review Application. Her Honour's reasons for decision are to be found in Moran v Lydiard Financial Services Pty Ltd (previously Cuthberts Nominees Pty Ltd) [2006] FMCA 1341. After setting out the affidavit material filed in support of the Petition, Riley FM described the course the Review Application took before her in the following terms: "11. The present application for review was filed on 4 July 2006 and was supported with an affidavit affirmed by Mr Moran on that date, a further affidavit affirmed by Mr Moran on 31 July 2006 and a notice of the grounds of opposition to the petition dated 31 July 2006. When the application for review was being heard, Mr Moran indicated that he had mistakenly understood that an affidavit that he had filed in relation to his application to set aside the bankruptcy notice was before the court. He was given leave to file in this proceeding an affidavit dealing with the material that he had understood was already before the court, as well as material indicating that he was a beneficiary of his mother's estate. That material was included in an affidavit affirmed by Mr Moran on 30 August 2006. 12. Mr Moran also handed up late in the hearing a photocopy of an order of the District Court of Queensland dated 1 December 1995 which provided that a debt of $80,000 owing to Mr Moran's uncle's estate by Mr Moran's mother ("Mrs Moran") be transferred to Mr Moran, Mrs Moran and two other relatives in equal shares. The provenance of that document was not established before this court. [Nor] was any evidence given about whether the debt mentioned in the order had been discharged in the 10 years or so since the order was apparently made. Mr Moran did not satisfactorily explain how the order had a bearing on the present review. Accordingly, I am unable to take it into account." 14 On 8 November 2006, the appellant filed this appeal against the orders made by Riley FM dismissing the Review Application. 15 Finally, on 8 February 2007, the High Court dismissed the appellant's application for special leave to appeal from the orders made by Sundberg J on 26 May 2006.


case_title: Thai v Deputy Commissioner of Taxation (1994) 53 FCR 252


case_text: Without providing an exhaustive list of defects, it is sufficient to state that the challenged portions of the respondent's Defence and Cross-Claim do not comply with the Rules. For example, paragraphs 6, 7, 9 and 21 all allege that AAB acted "falsely and recklessly" in some regard. This allegation appears akin to one of fraud, and as such must be further particularised pursuant to O 12 r 2: see Banque Commerciale SA (In Liquidation) v Akhil Holdings Ltd [1990] HCA 11 ; (1990) 169 CLR 279 at 285 per Mason CJ and Gaudron J. Even if it is not intended as an allegation of fraud (or misrepresentation or wilful default), O 12 r 3 obliges the respondent to particularise the facts relied upon for his allegations that AAB had such a condition of mind.


case_text: Also, the respondent must provide particulars of AAB's alleged breach of s 52 of the Trade Practices Act 1974 (Cth): see Johnson Tiles Pty Ltd v Esso Australia [2000] FCA 1572 ; (2001) ATPR 41-794 at 42,547-42,548, [63] - [66] per French J with whom Beaumont and Finkelstein JJ agreed (outlining the detailed requirements for pleading a claim under s 52 of the TPA). 8 Furthermore, pursuant to O 11 r 10 the respondent must plead specifically the provisions of the TMA he claims AAB has violated. Amongst other things, O 11 r 10 requires a party to plead specifically any matter of fact or point of law that, if not specifically pleaded, might take the other party by surprise. It is insufficient to specify provisions in the prayer for relief. It must be borne in mind that no relief can be granted unless justified by what has been pleaded in the body of the pleadings. 9 If the deficiencies in the pleading could be cured by the provision of further and better particulars, I would order that such particulars be provided. There is, however, a basic problem that the provision of particulars will not overcome. It is a fundamental rule of pleading that a respondent must state in his defence the material facts essential to any affirmative case he wants to make in answer to the applicant's claim. These facts (and not the evidence for them) are to be stated in a summary form according to the pleading rules. As far as convenient, each material fact or other matter is to be put into a separate paragraph, with paragraphs numbered consecutively (O 11, r 1 and r 2). Proper particulars are required of the relevant allegations (see, e.g., [6]-[8] above). Paragraphs 6, 7, 9 and 21 of the defence and cross-claim do not comply with these requirements.