case_title: Currie v Dempsey [1967] 69 SR NSW 116

case_text: The right to obtain relief for infringement seems to me to be necessarily bound up with the grant of exclusive rights conferred by s 20(1). Since the grant of those exclusive rights is expressly subject to s 25 of the Act which, if satisfied, meets head on the exclusive rights conferred by s 20(1), it seems to me that proof of the subsistence of the exclusive rights is an essential element of the cause of action. In other words, the allegation made by the respondent is a denial of an essential ingredient in a cause of action and once raised and an evidential onus discharged, the persuasive onus falls upon the applicant. The structure of ss 20(1), 25 and 120(1) seem to fall within the general rule Walsh JA had in mind in Currie v Dempsey [1967] 69 SR NSW 116 at 125; [1967] 2 NSWR 532 when his Honour said: But, if recourse is had to the rules of pleading, the fixing of the burden of proof is not always to be tested simply by asking which party is alleging the affirmative. In Purkess v Crittenden it was said that the proposition there quoted from Phipson on evidence, 10 th Ed, par. 92, has been frequently acknowledged. The proposition was that the expression 'the burden of proof' as applied to judicial proceedings, 'has two distinct and frequently confused meanings: (1) the burden of proof as a matter of law and pleading the burden, as it has been called, of establishing a case, whether by preponderance of evidence, or beyond reasonable doubt; and (2) the burden of proof in the sense of introducing evidence'. The author went on to say, and this was also approved in the case last cited, that the burden of proof in the first sense is always stable, but the burden of proof in the second sense may shift constantly. In my opinion, the burden of proof in the first sense lies on a plaintiff, if the fact alleged (whether affirmative or negative in form) is an essential element in his cause of action, e.g., if its existence is a condition precedent to his right to maintain the action. The onus is on the defendant, if the allegation is not a denial of an essential ingredient in the cause of action, but is one which, if established, will constitute a good defence, that is, an 'avoidance' of the claim which, prima facie, the plaintiff has. 113 The respondent seeks to avoid the plaintiff's claim by demonstrating that s 25 applies with the result that the applicant does not have any exclusive rights. Whilst it is, of course, true that the respondent seeks to avoid the plaintiff's claim in that way, the matters raised by the respondent having regard to s 20 and s 25 are properly characterised as a denial of an essential ingredient in the cause of action. Although s 120(1) does not speak in terms of the exclusive rights of the registered owner of the trade mark, the right to obtain relief is predicated upon and is conferred in support of the exclusive rights of the registered owner. If the registered owner, by operation of s 25, does not have any exclusive rights, it would be an odd notion that the registered owner could seek and obtain relief in respect of the use by a respondent of a substantially identical trade mark. Accordingly, it seems to me that once the respondent puts the elements of s 25 in issue and adduces evidence of those matters, the persuasive onus falls upon the applicant. 114 In any event, in this matter the parties agree that the disposition of the controversy does not in any sense turn upon the discharge of the burden of proof wherever it lies. There is an abundance of evidence going to the question in controversy and the findings I have made are supported by a clear body of evidence.


case_outcome: followed

case_text: Although this Court does not have jurisdiction to consider the merits of the Minister's decision, there is a reviewable error if the only material on which the Minister's decision is based does not provide a factual basis for, and prevents the reasonable formation of, the requisite opinion. Such a decision would be perverse in the Wednesbury sense; Associated Provincial Picture Houses Ltd v Wednesbury Corporation [1947] EWCA Civ 1 ; [1948] 1 KB 223 at 230. The point was made by Cooper J in Foster v Attorney-General of the Commonwealth of Australia (1997) 97 A Crim R 560 at 573-4 where his Honour, in expressing the view that the Act did not, either expressly or by implication, exclude the rules of natural justice or the requirement of procedural fairness in relation to the exercise of the power under s 16, said: 'The nature of the decision under s 16 does not of itself indicate an intention to exclude the rules. The decision to issue a notice under s 16 is not reviewable by a magistrate under s 19, and, subject to the limited avenues available for control by the courts, is final ... The decision operates as a necessary precondition to allow the next stage of the extradition process to occur. Although the extradition process involves a number of steps or stages before a final decision to surrender the person for extradition is made, each step is self-contained. The decision at each stage takes effect to either terminate the process or constitute the condition precedent required for the next stage to occur. Further, the issues at each stage are not the same, although there may be some overlap, eg, the existence or possible existence of extradition objections.' 21 In Foster , as in this case, it was accepted that the relevant Minister had considered only a departmental minute and its annexures. From the extract of this minute in Cooper J's judgment, it appears to have been very similar in form to the advice provided to the Minister in this case. The applicant in Foster submitted that, in reaching the opinion required by s 16(2)(a)(ii), the Minister was required personally to consider the conduct of the person who was the subject of the extradition request. It was submitted that, since the conduct of the applicant in Foster was not described in any of the documents provided to him, the Minister could not have given personal consideration to this conduct. Cooper J rejected this submission and noted at 568: 'Section 16(2)(a)(ii) only requires that the Attorney-General hold the relevant opinion. The notice issued by the respondent under s 16 of the Act and signed by him expressly states that he held the requisite opinion. In order to avoid the consequence of the respondent in fact holding the opinion, the applicant must demonstrate that no person in the position of the respondent on 27 May 1997, having the material which was available to the respondent, could reasonably have held the opinion. That is, the applicant must show that the opinion was perverse: Associated Provincial Picture Houses Ltd v Wednesbury Corporation [1947] EWCA Civ 1 ; [1948] 1 KB 223 at 228.' 22 His Honour found that the Minister was entitled to have the investigation and consideration done by departmental officers and was entitled to rely on departmental submissions in reaching the s 16(2)(a)(ii) opinion. 23 I respectfully agree with his Honour that the applicant in this case must establish that the first respondent's determination was unreasonable or perverse in the Wednesbury sense. If the decision was based on factual material which was so materially deficient that it could not reasonably form the basis for the requisite opinion, then it would be unreasonable in the Wednesbury sense.


case_outcome: cited

case_text: The submissions made by the applicant are similar to those rejected by this Court in Foster . The offences alleged in that case and stated in the departmental memorandum given to the Minister for the purpose of his decision, were set out in the judgment given in a related appeal, Attorney-General of the Commonwealth v Foster [1999] FCA 81 ; (1999) 84 FCR 582 at [50] , namely: '... one count of conspiracy to use false instruments, two counts of conspiracy to defraud, and three counts of using a false instrument.'


case_outcome: referred to

case_text: The issue remains, however, whether the information contained in the advice put before the Minister was sufficient to allow him to give proper consideration to the request made for the extradition of the applicant. The fact that, if the notice is issued, the matter goes to a magistrate for consideration according to the same criteria as are considered by the Minister (s 19(2)(c) of the Act), does not in any way relieve the Minister from his obligation to give those criteria independent consideration; Director of Public Prosecutions of the Commonwealth v Kainhofer [1995] HCA 35 ; (1995) 185 CLR 528 at 538.


case_outcome: applied

case_text: Although this Court does not have jurisdiction to consider the merits of the Minister's decision, there is a reviewable error if the only material on which the Minister's decision is based does not provide a factual basis for, and prevents the reasonable formation of, the requisite opinion. Such a decision would be perverse in the Wednesbury sense; Associated Provincial Picture Houses Ltd v Wednesbury Corporation [1947] EWCA Civ 1 ; [1948] 1 KB 223 at 230. The point was made by Cooper J in Foster v Attorney-General of the Commonwealth of Australia (1997) 97 A Crim R 560 at 573-4 where his Honour, in expressing the view that the Act did not, either expressly or by implication, exclude the rules of natural justice or the requirement of procedural fairness in relation to the exercise of the power under s 16, said: 'The nature of the decision under s 16 does not of itself indicate an intention to exclude the rules. The decision to issue a notice under s 16 is not reviewable by a magistrate under s 19, and, subject to the limited avenues available for control by the courts, is final ... The decision operates as a necessary precondition to allow the next stage of the extradition process to occur. Although the extradition process involves a number of steps or stages before a final decision to surrender the person for extradition is made, each step is self-contained. The decision at each stage takes effect to either terminate the process or constitute the condition precedent required for the next stage to occur. Further, the issues at each stage are not the same, although there may be some overlap, eg, the existence or possible existence of extradition objections.'


case_text: The steps involved in the extradition process under Part II of the Act were considered by the Full Federal Court in Harris v Attorney-General of the Commonwealth (1994) 52 FCR 386 at 389. The Full Court described four stages in the extradition process: commencement, remand, determination by a magistrate of eligibility for surrender and executive determination that the person is to be surrendered; see also Vasiljkovic v Commonwealth [2006] HCA 40 ; (2006) 228 ALR 447 at [55] . The issue of a notice under s 16(1) of the Act formally commences the process and, as noted above, is a condition precedent to a magistrate considering the person's eligibility for surrender. The Minister's decision to issue a s 16 notice may be subjected to judicial review; von Arnim v Ellison [2006] FCAFC 49 ; (2006) 150 FCR 282 at 298, Harris at 400-401. 13 The applicant's written submissions put the following argument: 'However, the formation of the Minister's opinion is flawed and the decision is invalid if the deficiencies in the material before the Minister are such that the material does not provide a factual basis for, and prevents the reasonable formation of, the requisite opinion in section 16(2) of the Act: Harris v Attorney General (1993) 45 FCR 11 at 25 (Ryan J). Alternatively, the formation of the Minister's opinion is flawed and the decision is invalid if the Minister has not properly construed and applied the statutory criteria to the facts before him: Harris v Attorney General (1993) 45 FCR 11 at 27 (Ryan J). Nothing said by the Full Court in Harris v Attorney General (Cth) (1994) 52 FCR 386 controverts either of those propositions.' 14 Whilst this submission may be accepted as far as it goes, it does little to advance the applicant's case. The comments of Ryan J to which the applicant refers were directed to preconditions to the Minister issuing a notice under s 16(1) that are not the subject of challenge here. His Honour's comments were directed to whether a valid extradition request had in fact been received and whether there was an extradition objection in relation to the offence. No challenge has been made to the extradition request in this case and there is no extradition objection. The complaints made by the applicant in this case have all been directed to the reasonability of the opinion expressed by the Minister, given the alleged deficiencies in the material on which that opinion was based. I note, however, the statement of the Full Court in Harris at 403: 'It is difficult to imagine a case where, on the one hand, there is a document which is sufficiently certain so that it can properly be described as an "extradition request", while, on the other, does not contain sufficient information to enable the Attorney to consider the matters specified in s 16(2).' 29 I do not accept that the circumstances in Foster were relevantly different from those before me. It is inevitable that in many cases where extradition is sought there will be no precise equivalent between the offence as specified in the request for extradition and offences in Australia however the Act does not require this. It is sufficient if there is dual criminality in substance; Harris at 411; Holt v Hogan (No 2) (1993) 46 FCR 145 at 149-151. The dual criminality requirement is that the 'conduct or the equivalent conduct' to that in respect of which extradition is sought should be an 'extradition offence' in relation to Australia.


case_title: Holt v Hogan (No 2) (1993) 46 FCR 145

case_text: I do not accept that the circumstances in Foster were relevantly different from those before me. It is inevitable that in many cases where extradition is sought there will be no precise equivalent between the offence as specified in the request for extradition and offences in Australia however the Act does not require this. It is sufficient if there is dual criminality in substance; Harris at 411; Holt v Hogan (No 2) (1993) 46 FCR 145 at 149-151. The dual criminality requirement is that the 'conduct or the equivalent conduct' to that in respect of which extradition is sought should be an 'extradition offence' in relation to Australia.


case_text: Further, the respondents referred to two passages from Minister for Aboriginal Affairs v Peko-Wallsend Limited [1986] HCA 40 ; (1985) 162 CLR 24 in support of its contention that the first respondent was entitled to rely on the advice prepared for him by departmental staff. Although in a different context, these extracts bear repeating. At 30 Gibbs CJ stated: 'Of course the Minister cannot be expected to read for himself all the relevant papers that relate to the matter. It would not be unreasonable for him to rely on a summary of the relevant facts furnished by the officers of his Department.' 27 In the same case Brennan J said at 65-6: 'The department does not have to draw the Minister's attention to every communication it receives and to every fact its officers know. Part of a department's function is to undertake an analysis, evaluation and précis of material to which the Minister is bound to have regard or to which the Minister may wish to have regard in making decisions. The press of ministerial business necessitates efficient performance of that departmental function... Reliance on the departmental appreciation is not tantamount to an impermissible delegation of the ministerial function. A Minister may retain his power to make a decision while relying on his Department to draw his attention to the salient facts.' 28 The applicant attempted to distinguish Foster on the basis that the descriptions of the offences in Foster were instantly recognisable as bearing dual criminality, whereas in the present case it was not possible on the basis of the descriptions given in the advice to form a reasonable opinion as to dual criminality. As noted above at [7], the charges made against the applicant are 'wilful attempt to evade Federal income tax' in each of 1999, 2000 and 2001. Counsel for the applicant submitted that there is no such offence in Australia. Further, counsel submitted that such an offence could encompass conduct that was not criminal in Australia, including the failure to lodge an income tax return. In comparison, counsel for the applicant referred to the departmental submission in Foster , which stated: 'The Commonwealth DPP has advised that Foster's alleged conduct would amount to the offences of conspiracy to defraud contrary to section 430(1) of the Criminal Code (Qld); fraudulent inducement of a person to give credit to a company... uttering false document... obtaining goods or credit by false pretence... and falsifying books or accounts by an officer of a corporation.'


case_text: The steps involved in the extradition process under Part II of the Act were considered by the Full Federal Court in Harris v Attorney-General of the Commonwealth (1994) 52 FCR 386 at 389. The Full Court described four stages in the extradition process: commencement, remand, determination by a magistrate of eligibility for surrender and executive determination that the person is to be surrendered; see also Vasiljkovic v Commonwealth [2006] HCA 40 ; (2006) 228 ALR 447 at [55] . The issue of a notice under s 16(1) of the Act formally commences the process and, as noted above, is a condition precedent to a magistrate considering the person's eligibility for surrender. The Minister's decision to issue a s 16 notice may be subjected to judicial review; von Arnim v Ellison [2006] FCAFC 49 ; (2006) 150 FCR 282 at 298, Harris at 400-401.


case_text: The steps involved in the extradition process under Part II of the Act were considered by the Full Federal Court in Harris v Attorney-General of the Commonwealth (1994) 52 FCR 386 at 389. The Full Court described four stages in the extradition process: commencement, remand, determination by a magistrate of eligibility for surrender and executive determination that the person is to be surrendered; see also Vasiljkovic v Commonwealth [2006] HCA 40 ; (2006) 228 ALR 447 at [55] . The issue of a notice under s 16(1) of the Act formally commences the process and, as noted above, is a condition precedent to a magistrate considering the person's eligibility for surrender. The Minister's decision to issue a s 16 notice may be subjected to judicial review; von Arnim v Ellison [2006] FCAFC 49 ; (2006) 150 FCR 282 at 298, Harris at 400-401. 18 The applicant accepted that the Minister was entitled to rely upon the advice of departmental staff in reaching the requisite opinion per s 16(2)(a)(ii) but submitted that when it comes to signing the s 16 notice the Minister has to do more than rubber stamp the recommendations of the Department. Clearly this submission must be accepted. This much is clear from the comments made in von Arnim at 298 by Young J, with whom Madgwick and Siopis JJ agreed: 'The obvious statutory intention behind s 16 is that the Attorney-General should carefully scrutinise the case for extradition before giving a notice stating that an extradition request has been received. Speaking of earlier legislation which was in similar form, Burchett J in Schlieske v Federal Republic of Germany (No 2) (1987) 26 ACrimR 341 at 346-347, described the Attorney-General's notice as the essential document which translates any Australian obligation, under international law, to extradite a fugitive into a right, under municipal law, to have a particular application for extradition proceeded with before a magistrate. This aptly describes the function of the s 16(1) notice under the Act. In Commonwealth v Dutton [2000] FCA 1466 ; (2000) 102 FCR 168 at [33] , Moore J said that the function of the Attorney-General under s 16 provides an important safeguard against the abuse of the extradition process by the country seeking extradition and involves the Attorney-General scrutinising the request independently of the requesting country and, potentially, against the interests of that country. In this sense, Moore J said that s 16 involves the Attorney-General acting as a contradictor to the claim of the requesting country. None of this is controversial.' 24 The respondents submit that the facts in Foster are indistinguishable from the present facts; that the decision in Foster is correct and should be followed by this Court; and that there is nothing in von Arnim to contradict Cooper J's analysis in Foster . 25 At its highest, the respondents' submission was that it was sufficient for the Minister to adopt the DPP's conclusion without having any indication from the DPP as to why it came to that conclusion. It seems to me that this is higher than it is necessary for the respondents to go and, indeed goes beyond the position taken by Cooper J in Foster . It is not correct to say that in this case the departmental advice gave no indication of the basis of the DPP's advice. Although scant, an indication is provided by the description of the offences with which the United States seeks to charge the applicant. The Minister had before him a list of the US offences that the applicant was charged with, a list of (at least in the DPP's opinion) equivalent offences under the Australian law and the DPP's advice that the US offences would be considered offences under the Australian law. 31 I respectfully accept the view expressed by Young J in von Arnim (see [18] above) that the Minister must carefully scrutinise the case for extradition before issuing a s 16 notice. I do not accept that the advice in this case did not allow such scrutiny. 32 In this case the DPP has given its opinion that that the conduct alleged by the United States, if committed in New South Wales, would be an offence under the Commonwealth Criminal Code . The question is not whether the DPP is right or wrong but whether it was perverse of the Minister to accept that advice. Put that way, the answer can hardly be in doubt. The DPP has the expertise that the Minister presumably lacks. There is no reason for the Minister to think other than that their advice was given in good faith. It was, in my opinion, entirely reasonable for the Minister to accept the advice given. 33 Accordingly, the application is dismissed with costs. I certify that the preceding thirty-three (33) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone. Associate: Dated: 20 December 2006 Counsel for the Applicant: R Richter QC and R Lancaster Solicitor for the Applicant: Watsons Solicitors Counsel for the Respondents: Dr J Renwick and C Lenehan Solicitor for the Respondents: Australian Government Solicitor Date of Hearing: 4 December 2006 Date of Judgment: 20 December 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1782.html


case_text: In Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, Sheppard J distilled ten rules of construction from the authorities: (1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly. (2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. (3) Nevertheless, in approaching the task of construction, one must read the specification as a whole. (4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification. (5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. (6) A patent specification should be given a purposive construction rather than a purely literal one. (7) In construing the specification, the court is not construing a written instrument operating inter partes , but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood. (8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensive to, and does not mislead, a skilled reader, the language used is seldom of importance. (9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right. (10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.


case_text: The High Court recently confirmed in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1 that the specification and claims must not be read in the abstract. Rather, the specification and claims must be construed in light of the common general knowledge and the art before the priority date. Chief Justice Gleeson, McHugh, Gummow, Hayne and Callinan JJ said at [24]: ...[the complete specification] is to be construed in the light of the common general knowledge and the art before...the priority date; the court is to place itself "in the position of some person acquainted with the surrounding circumstances as to the state of [the] art and manufacture at the time. 143 Nufarm, quoting Kimberly-Clark Australia 207 CLR at 16 [24], agrees that the specification and claims must be 'construed in the light of the common general knowledge and the art before ... the priority date'. It is also not disputed that the Merck patent (obtained in the US in 1983) predates the Nufarm priority date of 4 June 1999. 144 Jurox contended that the 'Merck [p]atent and the micellar solutions described in it, including IVOMEC® [the commercial embodiment of the patent], were common general knowledge at the priority date. The references in the [Nufarm] patent to "emulsions" should be understood against that background, i.e. they do not encompass micellar solutions'. 145 Jurox argues that the evidence supports their view. In this regard they cite the testimony of their expert, Mr Shepherd. Moreover, they note that Nufarm's expert Dr Lichti conceded on cross-examination that Merck patents generally are considered sources of knowledge for skilled addressees in the field.


case_text: More recently, Bennett J made the following observations in Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 at [42] (referred to by the Full Court in Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited (2005) 67 IPR 475): • When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. As a whole it is made up of several parts and those parts have different functions. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent. What is not claimed is disclaimed. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that: Beltreco at [73]. • Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly, as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document: Beltreco at [74]. • Terms in the claim which are unclear may be defined or clarified by reference to the body of the specification: Welch Perrin at 610; Interlego at 479, both approved in Kimberly-Clark at [15]. • Reference may be made to the body of the specification to understand the context in which words have been used: Beltreco at [77] following Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 at 272. • It is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and to resolve ambiguities in the construction of the claims. Where the language of the claim is obscure or doubtful the doubt is sometimes resolved by referring to words in the body of the document to explain it: Beltreco at [75]. • It is not necessary first to construe the claims without reference to the specification and then to determine whether or not ambiguity exists: Décor at 410; Beltreco at [76]; PhotoCure at [174]. • There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 585 per Drummond J. • The construction of the claim determines infringement, on both textual and substantive bases: Catnic Components Limited v Hill & Smith Ltd [1982] RPC 183 at 242 at 242; PhotoCure at [158]. It is a question of whether the alleged infringement is covered by the language of the claim: Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 at 189-190 cited in Photocure at [158]. • A patent should be given a purposive construction: Catnic at 242-3. However, that does not involve extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. For this purpose, the language chosen is usually of critical importance: Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd [2004] UKHL 46 ; (2004) 64 IPR 444; [2005] 1 All ER 667 at [34] . • Purposive construction, permitting consideration of whether the person skilled in the art would understand a variant that does not strictly comply with the particular descriptive word used in the claim may still fall within the monopoly, does not arise where the variant would in fact have a material effect upon the way the invention worked: Catnic at 243; Kirin-Amgen at [50]. 57 It is clear that in construction of patents, one is not concerned with what the author meant to say. It is rather, what the notional addressee would have understood the author to mean by using those words: see Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 per Lord Hoffman at [32]. His Lordship went on to consider at [34] what is meant by 'purposive construction', as follows: "Purposive construction" does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral documents in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often. 58 It is well settled that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification. In particular, it is not legitimate, in the absence of an express reference in the claim itself to import into a claim, features of the preferred embodiment. The preferred embodiment cannot be used to introduce into the definite words of a claim an additional definition or qualification of the patentee's invention. 59 The dispute between the parties stems from ambiguities which exist as a result of certain wording used in the patent. Fundamentally, those ambiguities reflect a difference of opinions within the relevant audience, namely the skilled addressee, as to the proper meaning of the words 'emulsion' and 'phase'. I set out below a relatively brief summary of the competing views as to the correct definition of these words, along with some other chemical principles and concepts which are relevant to the current dispute and to the evidence which was given during the course of the trial.


case_text: In determining the meaning to be given to the words of a patent claim the court must make a 'common sense assessment of what the words used convey' in the context of the knowledge prevailing in the relevant art at the priority date. In Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 the Full Court stated at 476: The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date, bearing in mind that what is being construed is a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood (see generally Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 610). The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common sense assessment of what the words used convey in the context of then-existing published knowledge.


case_text: In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242 Finkelstein J stated: Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected. In Plimpton v Malcolmson (1876) 3 ChD 531 Jessel MR said (at 556): What is meant is that if [the invention] is a manufacture connected with a particular trade, the people in the trade shall know something about it; if it is a thing connected with a chemical invention, people conversant with chemistry shall know something about it. In Catnic Lord Diplock said (at 242) that skilled addressees are "those likely to have a practical interest in the subject matter of [the] invention". A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention. The skilled addressee seems to me to be a relative expression which does not identify any specific person. Because the patent is directed to a person interested in making, constructing, compounding or using the invention (see for example s 27(3)(b) of the Patent Act 1993 (Canada); International Standard Electric Corporation v Ooms 157 F2d 73 (1946)), this hypothetical person, the patent lawyer's "reasonable man", may be required to be skilled in more than one art. Such a person might be thought of as the composite being, mentioned by Buckley LJ in Tetra Molectric at 583. It may be preferable not to search for a composite addressee but a team whose combined skills are to be employed. 50 The relevant skilled addressee for the purposes of this proceeding is a person skilled in chemistry, and particularly physical chemistry.


case_text: More recently, Bennett J made the following observations in Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 at [42] (referred to by the Full Court in Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited (2005) 67 IPR 475): • When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. As a whole it is made up of several parts and those parts have different functions. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent. What is not claimed is disclaimed. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that: Beltreco at [73]. • Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly, as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document: Beltreco at [74]. • Terms in the claim which are unclear may be defined or clarified by reference to the body of the specification: Welch Perrin at 610; Interlego at 479, both approved in Kimberly-Clark at [15]. • Reference may be made to the body of the specification to understand the context in which words have been used: Beltreco at [77] following Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 at 272. • It is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and to resolve ambiguities in the construction of the claims. Where the language of the claim is obscure or doubtful the doubt is sometimes resolved by referring to words in the body of the document to explain it: Beltreco at [75]. • It is not necessary first to construe the claims without reference to the specification and then to determine whether or not ambiguity exists: Décor at 410; Beltreco at [76]; PhotoCure at [174]. • There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 585 per Drummond J. • The construction of the claim determines infringement, on both textual and substantive bases: Catnic Components Limited v Hill & Smith Ltd [1982] RPC 183 at 242 at 242; PhotoCure at [158]. It is a question of whether the alleged infringement is covered by the language of the claim: Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 at 189-190 cited in Photocure at [158]. • A patent should be given a purposive construction: Catnic at 242-3. However, that does not involve extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. For this purpose, the language chosen is usually of critical importance: Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd [2004] UKHL 46 ; (2004) 64 IPR 444; [2005] 1 All ER 667 at [34] . • Purposive construction, permitting consideration of whether the person skilled in the art would understand a variant that does not strictly comply with the particular descriptive word used in the claim may still fall within the monopoly, does not arise where the variant would in fact have a material effect upon the way the invention worked: Catnic at 243; Kirin-Amgen at [50].


case_text: The question of infringement is prefaced by a proper understanding of what is described in the body of the specification and a proper construction of the claims: see Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 486 per Gummow J. 54 In Sartas No 1 30 IPR at 485-486, Gummow J set out the following propositions: The construction of the patent plainly is a matter of primary importance in the litigation. In Glaverbel SA v British Coal Corp [1994] RPC 443 at 485-486, Mummery J set out a number of what his Lordship said were uncontroversial propositions as to construction. Some of these are certainly applicable here, as being in accordance with the development of the law in Australia. From what was said by his Lordship useful guidance, in particular, is to be derived from the following propositions. Some of them were applied in rulings on evidence in the course of the trial. They are: (1) It is for the court, not for any witness, however expert, to decide the question of construction in accordance with the meaning of the language used. Evidence can be given by experts to enlighten the judge on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning. ( Cf Agfa-Gevaert Ltd v Collector of Customs (1994) 124 ALR 645.) (2) The specification should be construed without reference to the prior documents relied on as a ground for invalidity with a view to avoiding the effect of the prior documents. A fortiori, documents subsequent to the complete specification are inadmissible in aid of its construction. (3) ... it is not permissible to construe the claims by reference to the subjective thoughts, intentions, purposes and opinions of the patentee or his witnesses or by reference to his actions before or after the grant of the patent. (4) In reading the specification as a whole the different functions of the claim and the rest of the specification should be observed. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent: and "what is not claimed is disclaimed". The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not permissible to restrict, expand or amend the clear language of a claim by reference to a limitation or gloss in the language used in the earlier part of the specification, but not repeated in the claim itself. It is legitimate , however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of the technical terms and resolve ambiguities in the construction of the claims . The passage which I have emphasised is better understood by reference to the remarks of Taylor J in Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 at 97 (affd [1956] HCA 32 ; 95 CLR 213 (PC)): Plain language must be given its plain meaning, and clear words in a claim must not be tortured into an unnatural meaning by importing passages from the body of the specification: see Lord Russell's speech in Electrical and Musical Industries Ltd v Lissen Ltd (1939) 56 RPC at 41, line 34). The claims must also be construed without an eye on the alleged infringer's acts. (So said Greene LJ in RCA Photophone Ltd v Gaumont British Picture Corp (1936) 53 RPC at 202, line 16). On the other hand, it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work this is an application of the old doctrine ut res magis valeat quam pereat and is illustrated in Nobel's Case (1894) 11 RPC at 524; and, where the language of a claim is obscure or doubtful, the doubt may sometimes be resolved by referring to words in the body of the document to explain it. This is known as the dictionary principle: see Lord Haldane's speech in British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1921) 39 RPC at 67, line 44). See also Melbourne v Terry Fluid Controls Pty Ltd (1994) AIPC 91-058 at 38,214; CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 417 at 424.


case_title: Synthetic Turf Development Pty Limited v Sports Technology International Pty Limited (2005) 67 IPR 475


case_text: The fact was that, in oral submissions at the first hearing, counsel for the first respondent ("Bradshaw") conceded that the Commonwealth was entitled to recover its investigatory costs but argued that the application for payment should be dismissed because the Commonwealth had not quantified these costs or any other loss. At the first hearing, the applicants maintained that quantification was irrelevant, although they had tendered the affidavit of Mr TD Clarke, which referred to the costs incurred by the Commonwealth in investigating the bankrupt estates under Bradshaw's control. The respondents had not contested the contents of Mr Clarke's affidavit. Further, the applicants had not told the Court that the Commonwealth's costs could not be quantified, although they had said as much to the respondents earlier (see further below). The respondents had submitted that the Commonwealth should and could quantify its costs and had not referred to the applicants' statement to them that it could not do so. It was in these circumstances that I gave my directions on 15 April 2005: see Inspector-General in Bankruptcy v Bradshaw [2005] FCA 424 (" Bradshaw (No 1) ") at [80]. 6 Bearing this in mind, at the directions hearing of 8 June 2005, I stated that the parties should be permitted to make further submissions as to the appropriate disposition of the case. In particular, I held that it was open to the respondents to submit that the Commonwealth was precluded from recovering its loss for the reasons outlined in their letters to the applicants and to contest the recoverability and quantification of any loss specified by the applicants. The applicants had concomitant rights to pursue their claim and answer the respondents. The respondents stated that they would not pursue their motions for leave to appeal and the matter continued before me on 13 December 2005. 7 At the hearing on 13 December 2005 ("the second hearing") the applicants sought to rely on a further affidavit of Mr TD Clarke sworn on 24 May 2005, the affidavits of Darren Kane and Shane Kirne sworn on the same day, and the affidavit of Terrence Burke sworn on 23 May 2005. There was no cross-examination, but, as foreshadowed, the respondents contended that it was not, or ought not to be, open to the applicants to adduce this further evidence.


case_text: Ace contended that Cachia v Hanes [1994] HCA 14 ; (1994) 179 CLR 403 prevented recovery for the cost of lawyers' investigations preparatory to Bradshaw's prosecution. Further, the costs of the time involved in the investigatory work of Mr Clarke, his ITSA colleagues and Mr Kane were irrecoverable because they were costs incurred within the scope of the work they were employed to perform in any event. Ace also argued that the applicants' reference to the difficulty in assessing loss was misplaced and refuted the applicants' submission that exemplary damages might be awarded. 14 The applicants denied that they had made any election. According to them, they had simply called on payment under the bonds, which had been breached. They added: "The quantification of the loss cannot be seen as an attempt to exercise 'alternative and inconsistent rights'. The applicants wish to do no more than what the respondents themselves have been urging the applicants to do. ... The debate is now over proof and assessment of loss that is not a different remedy."


case_title: Re Smith; ex parte Inspector-General in Bankruptcy [1996] FCA 1076

case_text: The applicants contended that they were not seeking to re-open their case but merely to finish it. Alternatively, they submitted that this was a "clear case" in which leave to re-open should be given, since there would be "no reagitation of any issue". They also argued that what they termed the "decision" of 15 April 2005 was "in the nature of a determination of a preliminary question". The applicants submitted that there were numerous factors militating in their favour in any exercise of discretion, including the reasonableness of their reliance on the decision in Re Smith; ex parte Inspector-General in Bankruptcy and Brown [1996] FCA 1076 (" Re Smith "), the absence of prejudice to the respondents, the absence of formal pleadings, and public policy. 16 The applicants estimated their loss as $115,348 and sought to recover $100,000 under the bond. They submitted that the Court is not discharged from an obligation to assess loss simply because quantification was "not a simple exercise" and was imprecise. In ascertaining the loss that flowed from the breach of the bond, there were, so the applicants said, three relevant questions: (1) what action was required to be taken by them once they became aware of a possible breach of the bond?: (2) What resources were used to take such action?: and (3) How can those resources be valued for the purpose of quantifying a loss? 17 The applicants contended that no issue of managerial time arose, although if it did, they were entitled to recover in respect of such time. They submitted that the employee status of relevant officers did not disentitle the applicants from recovering the costs claimed for them. They contended that "the value of the time they have spent is the cost of the resources used by the applicants in carrying out their duties following a breach of the bond". They maintained that they were entitled to recover the costs referable to Bradshaw's prosecution and submitted that the Court could award exemplary damages. 27 There are a number of factors militating in favour of granting the applicants leave to re-open their case. There is a matter of the public interest and public policy involved. There has been a serious breach on Bradshaw's part of his duties as a trustee, which also constituted a breach of the condition of his bond. There was evidence of loss to the Commonwealth before the Court at the first hearing. The Commonwealth has been obliged to investigate Bradshaw's misconduct and has determined to prosecute him for his criminal misconduct. This has involved time and money. If the Commonwealth were able to quantify its loss, then it would be entitled to payment under the bond to the extent of that quantified loss (but not exceeding $100,000). If the Court were to grant leave to re-open, the costs that the respondents have unnecessarily incurred might be met by a costs order in their favour. The evidence that the applicants seek to present concerns an issue that the Court has not previously considered and the respondents have indicated that they would not seek to cross-examine the relevant deponents. The applicants' conduct at the first hearing was explicable by reference the decision in Re Smith , although, as stated in Bradshaw (No 1) at [41], this decision provided only limited guidance. There were no pleadings in which issues of the present kind might have been ventilated prior to the first hearing. Apart from the matter of costs, the respondents identified no prejudice to them if leave were granted, save for the fact that the parties had at all times until the directions of 15 April 2005 proceeded on the basis that the applicants would not and could not quantify the Commonwealth's loss.


case_title: Hughes v Hill [1937] SASR 285

case_text: The authorities indicate that, broadly speaking, there are four recognised classes of case in which a court may grant leave to re-open, although these classes overlap and are not exhaustive. These four classes are (1) fresh evidence ( Hughes v Hill [1937] SASR 285 at 287 ; Smith v New South Wales Bar Association [No 2] (1992) 108 ALR 55 at 61-2); (2) inadvertent error ( Brown v Petranker (1991) 22 NSWLR 717 at 728 (application to recall a witness); Murray v Figge (1974) 4 ALR 612 at 614 (application to tender answers to interrogatories); Henning v Lynch [1974] 2 NSWLR 254 at 259 (application to re-open); (3) mistaken apprehension of the facts ( Urban Transport Authority of NSW v NWEISER (1992) 28 NSWLR 471 (" UTA ") at 478; and (4) mistaken apprehension of the law ( UTA at 478). In every case the overriding principle to be applied is whether the interests of justice are better served by allowing or rejecting the application for leave to re-open: see UTA at 478; also The Silver Fox Company Pty Ltd as Trustee for the Baker Family Trust v Lenard's Pty Ltd (No 2) [2004] FCA 1310 (" Silver Fox ") at [22] and [25].


case_title: Smith v New South Wales Bar Association [No 2] (1992) 108 ALR 55


case_title: Brown v Petranker (1991) 22 NSWLR 717


case_title: Murray v Figge (1974) 4 ALR 612


case_title: Henning v Lynch [1974] 2 NSWLR 254


case_title: Urban Transport Authority of NSW v NWEISER (1992) 28 NSWLR 471


case_text: The authorities indicate that, broadly speaking, there are four recognised classes of case in which a court may grant leave to re-open, although these classes overlap and are not exhaustive. These four classes are (1) fresh evidence ( Hughes v Hill [1937] SASR 285 at 287 ; Smith v New South Wales Bar Association [No 2] (1992) 108 ALR 55 at 61-2); (2) inadvertent error ( Brown v Petranker (1991) 22 NSWLR 717 at 728 (application to recall a witness); Murray v Figge (1974) 4 ALR 612 at 614 (application to tender answers to interrogatories); Henning v Lynch [1974] 2 NSWLR 254 at 259 (application to re-open); (3) mistaken apprehension of the facts ( Urban Transport Authority of NSW v NWEISER (1992) 28 NSWLR 471 (" UTA ") at 478; and (4) mistaken apprehension of the law ( UTA at 478). In every case the overriding principle to be applied is whether the interests of justice are better served by allowing or rejecting the application for leave to re-open: see UTA at 478; also The Silver Fox Company Pty Ltd as Trustee for the Baker Family Trust v Lenard's Pty Ltd (No 2) [2004] FCA 1310 (" Silver Fox ") at [22] and [25]. 28 The above-mentioned considerations do not, however, persuade me to give the applicants leave to re-open. There are weightier factors militating against the grant of leave. These factors are as follows. (1) The applicants deliberately chose not to quantify the Commonwealth's loss at the first hearing, perhaps because they believed that they could not do so (see their letter of 27 August 2004) or for some other reason. This factor, though not conclusive, is a significant one. (2) Prior to the first hearing, the applicants had plainly led the respondents to believe that the applicants were proceeding on the basis that quantum was irrelevant and, in any case, that the loss could not be quantified. (3) The applicants opened and closed their case on the basis that they had not quantified their loss and did not need to do so. (4) The applicants did not make any application for a split trial, whether by the preliminary determination of a separate question under O 29 r 2 of the Federal Court Rules or otherwise, although it was open to them to do so. (5) By their correspondence and their conduct before and at the first hearing, the applicants led the respondents to understand that they had presented the totality of their evidence at the first hearing. (6) Before the first hearing, the applicants knew that it would be said against them that they could not succeed without evidence quantifying their loss. (7) The respondents prepared, planned and conducted their case on the basis that the applicants would not present quantification evidence. This factor is also significant. In the belief that the applicants were not going to present quantification evidence, Bradshaw contended that the applicants could not succeed without such evidence. As counsel for Bradshaw observed, if the applicants had provided the respondents with some evidence of the quantum of their loss, the respondents might have taken a different view of their claim for payment under the bond. Had he not been led to believe that there would be no evidence of quantification, Bradshaw would presumably have conducted his case differently. (8) Whilst there were no pleadings, the issue in debate was clearly addressed in the correspondence between the parties prior to the first hearing. (9) In circumstances where the applicants had full knowledge of the considerations relevant to their conduct and proceeded on a particular basis, the public interest in the finality of litigation weighs strongly against permitting them to depart from that basis: compare Silver Fox at [25] and the cases there cited. (10) In the circumstances outlined, a costs order is inadequate compensation to the respondents and, in any event, does not satisfactorily meet the public interest in finality of litigation. I would therefore refuse the application to reopen the applicants' case.


case_text: The present is not a case of new evidence, inadvertent error or mistaken apprehension of the facts. Further, I accept that, as counsel for the respondents submitted, this was not a case of mistaken apprehension of the law, because the applicants knew the substance of the respondents' case, which depended on an understanding of the law that differed from their own. That is, with full knowledge that there was another view of the law to theirs, the applicants decided not to attempt to present the evidence that was relevant and necessary if the Court accepted the respondents' case and not theirs. This was not a case in which a particular issue was pleaded or argued but, by reason of circumstances outside the relevant litigant's control, was not adequately addressed at trial (as in David Securities Pty Ltd v Commonwealth Bank of Australia [1992] HCA 48 ; (1992) 175 CLR 353 at 386 per Mason CJ, Deane, Toohey, Gaudron and McHugh JJ). There could have been no misapprehension on the applicants' part about the respondents' position as to the law. All that has happened is that the Court has accepted the respondents' submissions on the bond in preference to their own. I accept that, as counsel for Ace contended, the principle of finality of litigation should preclude the Court from regarding this circumstance as a relevant 'misapprehension' on an application for leave to re-open. 26 As already noted, however, the overriding principle requires that the Court consider whether, taken as a whole, the justice of the case favours the grant of leave to re-open. In this case, the applicants' decision not to present evidence on quantification was deliberate, but, as Clarke JA, with whom Mahoney and Meagher JJA agreed, said in UTA at 478: "No doubt it is relevant to take account of a number of matters such as likely prejudice to the party resisting the application and the reasons why the evidence was not led in the first place, but there is not, in my opinion, any hard and fast rule which requires the court to reject an application where the decision not to call a witness in the party's case was a deliberate one. Of course that does not mean that that is not a very relevant consideration. It is. Where, for instance, a decision was based on tactical grounds it may be difficult to resist the conclusion that the interests of justice were better served by the rejection of the application. But even in that circumstance there may be cases in which it is felt that the client whose application it is should not have to suffer for his or her counsel's deliberate decision. Where the decision is not made for tactical reasons and is based on a mistaken apprehension of the law or the facts the case is more appropriately to be considered as one in which the application has resulted from an error by counsel."


case_text: In view of this conclusion, it is strictly unnecessary to consider the question of election, which is generally said to arise "when a state of affairs comes into existence which enables a person to exercise alternative and inconsistent rights against another": see GEC Marconi Systems Pty Ltd v BHP Information Technology Pty Ltd [2003] FCA 50 ; (2003) 128 FCR 1 (" GEC Marconi ") at 89 [356] per Finn J. When faced with such a choice (e.g., the right to terminate a contract for breach or repudiation or the right to insist on performance of the contract), a person is required to elect which of the mutually exclusive courses of action the person wishes to take. Before such a choice arises, the person must be aware of the circumstances giving rise to the choice: GEC Marconi at 90 [357]. 30 Counsel for Ace contended that the applicants sought to exercise alternative inconsistent rights by seeking, at the first hearing, payment under the bond without proof of the quantum of loss and, now, payment under the bond to the extent of proven loss. This misconstrues the right in issue, which is the Commonwealth's right to payment under the bond. The relevant debate was whether the Commonwealth was entitled to the whole of the bond amount or to an amount that represented the Commonwealth's quantified loss. This was not a case of election in the sense discussed in GEC Marconi . 31 Since I would not grant the applicants' leave to re-open their case, it is also strictly unnecessary to consider the further question of quantification. I do so, however, since the parties have argued various issues relating to quantification. 32 The applicants' uncontested evidence was as follows. Between February and December 1996, Mr Clarke was employed by ITSA on a salary of $47,591 per annum and spent approximately 60% of his time in the investigation of Bradshaw's conduct as trustee of bankrupt estates. Between December 1996 and June 1998, he also spent some time in preparing for and attending court. In 1996, two other officers also spent about one week of their time assisting Mr Clarke in the investigation. At the time they were employed on annual salaries of $41,000 and $54,000 respectively. The applicants claimed $31,933 in respect of Mr Clarke and a total of $2,219 in respect of ITSA's other employees. Further, in the investigation and prosecution of Bradshaw, the Commonwealth, through ITSA, incurred out of pocket expenses in the sum of $4,729.


case_text: The disbursements incurred by the Commonwealth, through ITSA, in investigating the misconduct of Bradshaw in the administration of the estates under his control may well be part of the loss to the Commonwealth. However, the evidence that the applicants have sought to rely on would be insufficient to establish that the Commonwealth, through ITSA or the AFP, suffered the further losses deposed to in the affidavits of Mr Clarke and Mr Kane. It was incumbent on the applicants to prove, on the balance of probabilities, not only that they suffered loss as a result of the breach of the condition of the bond but also the amount of that loss. This is not a case where the plaintiff cannot adduce precise, or at the least relatively precise, evidence of what has been lost: see Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257 at 266 per Hayne J.


case_text: In the present context, had the Commonwealth expended monies in investigating Bradshaw's conduct as trustee, then it would have been entitled to payment under the bond in respect of such expenditure. The affidavits of Mr Clarke and Mr Kane provide no evidence of such expenditure. They show only that the Commonwealth, through ITSA and the AFP, expended monies in the employment of these officers who, in the course of their employment as salaried officers of the Commonwealth, undertook the investigation. There was no necessary correlation, causal or otherwise, demonstrated between the cost of the work done on account of Bradshaw's misfeasance and the cost of Mr Clarke's or Mr Kane's annual salary. Put another way, there is no necessary connection between Bradshaw's breach of the condition of his bond and the amount claimed in relation to Mr Clarke and Mr Kane. Further, there is nothing to indicate that their services would not have been retained or that they would have been more profitably employed but for their investigation of Bradshaw: compare National Coal Board v Galley [1958] 1 WLR 16 at 29-30 referred to by Harvey McGregor in McGregor on Damages (16 th ed, Sweet & Maxwell Ltd, 1997) at [1250]. There is nothing to show that their work on Bradshaw's account saved the Commonwealth from other expenditures: compare Christmas Island Resort Pty Ltd v Geraldton Building Co Pty Ltd (No 4) (1995) 16 WAR 277 at 280. There is no evidence in the relevant affidavits about the work that they would have undertaken if they had not undertaken the investigations into Bradshaw's activities. 37 Moreover, whilst the Commonwealth might recover payment under the bond in respect of its expenditure in investigating Bradshaw, it does not follow that it would be entitled to recover its expenditure on Bradshaw's prosecution. The prosecution flowed from a decision by the DPP to prosecute Bradshaw and not from the breach by Bradshaw of the condition of his bond. The decision to prosecute is separate and distinct from the investigation that flowed from the breach of the bond. The costs of the prosecution cannot be said to flow from that breach. 38 For the reasons advanced by counsel for Ace, there is no basis upon which the Court might award exemplary damages.


case_outcome: distinguished

case_text: The respondents contended that Ms Wu's application should fail because she failed to provide legally admissible evidence of all the facts necessary to substantiate her entitlement to the relief claimed. Under the former O 10 r 7, an applicant was required to file proof by way of evidence of his or her claims when seeking judgment: see Australian Securities Commission v Macleod (1994) 54 FCR 309 at 312-313 per Drummond J. Under the new O 35A r 3, it now seems that reliance may be placed on the allegations in the relevant statement of claim. Judges of the Court have held that the rule does not require proof by way of evidence of the applicant's claim, but that on the face of the statement of claim there is a claim for the relief sought and that the court has jurisdiction to grant that relief: see Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 at [3] per Heerey J; Australian Competition and Consumer Commission v 1 CellNet LLC [2005] FCA 856 at [14] per Nicholson J; Australian Competition and Consumer Commission v Albert [2005] FCA 1311 at [6] --[7] per Jackson J and Deisel Spa v Hwang [2005] FCA 1619 at [2] per Tamberlin J. Having read the statement of claim, I find that these conditions are satisfied. Accordingly, the motion does not fail because of an insufficiency of evidence showing entitlement to relief claimed.


case_text: In Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 (" Lenijamar "), Wilcox and Gummow JJ considered the nature of the Court's power when a party is in default. Although Lenijamar concerned the former O 10 r 7, certain of their Honours' observations can be applied to O 35A: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2004] FCA 1718 (" Cadbury Schweppes ") at [22]-[23] per Ryan J. As with O 35A, the power given by the former O 10 r 7 is conditioned only upon the failure of the party to comply with an order of the Court directing that party to take a step in the proceeding. There is no requirement of intentional default or contumelious conduct, or of inordinate and inexcusable delay, or of prejudice to the other party: Lenijamar at 395-396. These are, however, usually important factors to be weighed in the exercise of the discretion. Further, the power conferred on the Court must be "administered sensibly and with an appreciation both of the fact that some delays are unavoidable, and unpredictable ... and of the likely serious consequences to [the party in default]": Lenijamar at 396. 50 In Lenijamar , Wilcox and Gummow JJ also observed that, while it was undesirable to make any exhaustive statement of the circumstances in which the power granted by O 10 r 7 would be appropriately exercised, there were two obvious candidates for such exercise: "cases in which the history of non-compliance ... is such as to indicate an inability or unwillingness to co-operate with the Court and the other party or parties in having the matter ready for trial within an acceptable period and cases ... in which the non-compliance is continuing and occasioning unnecessary delay, expense or other prejudice to the [other party]": Lenijamar at 396.


case_text: In Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 (" Lenijamar "), Wilcox and Gummow JJ considered the nature of the Court's power when a party is in default. Although Lenijamar concerned the former O 10 r 7, certain of their Honours' observations can be applied to O 35A: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2004] FCA 1718 (" Cadbury Schweppes ") at [22]-[23] per Ryan J. As with O 35A, the power given by the former O 10 r 7 is conditioned only upon the failure of the party to comply with an order of the Court directing that party to take a step in the proceeding. There is no requirement of intentional default or contumelious conduct, or of inordinate and inexcusable delay, or of prejudice to the other party: Lenijamar at 395-396. These are, however, usually important factors to be weighed in the exercise of the discretion. Further, the power conferred on the Court must be "administered sensibly and with an appreciation both of the fact that some delays are unavoidable, and unpredictable ... and of the likely serious consequences to [the party in default]": Lenijamar at 396.


case_text: When applying these principles, the Court must balance the need for the expeditious conduct of litigation, particularly in a court committed to a case management system, and the "the strong reluctance of courts to prevent litigants having a proper opportunity to present their cases": KM & A Chadwick Pty Ltd v Yeung [1995] FCA 354 per Tamberlin J. Ms Wu's motion must also be considered in light of the other powers of the Court to sanction non-compliance, such as the use of costs orders. 52 The history of this matter is troubling. The first and second respondents have been in default numerous times in the course of this proceeding. They filed their first lists of discoverable documents on 18 February 2004, over three months after the original deadline and over a month after orders by consent that they be filed by 15 January 2004. Moreover, these lists were filed only after Ms Wu brought two motions for compliance. Subsequent to this, Ms Wu has been required to take extraordinary steps to secure inspection of documents. 53 In addition, it is clear that Ms Wu has been frustrated by other action, or inaction, by these respondents, even if not amounting to non-compliance with court orders. The application for substituted service, the initial failure to seek to have a subpoena issued to Mr Guss, the failure of the respondents personally to attend mediation, the resignation of Barry Armitage from office in Avin, and the frequent changes in legal representation are matters that have undoubtedly caused Ms Wu vexation and have made the conduct of litigation more difficult than it would otherwise have been. Having regard to their conduct, I find that the first and second respondents have failed to defend the proceeding with due diligence. They are therefore in default for the purposes of O 35A r 2(2)(h) of the Rules.


case_text: Despite this conclusion and the unsatisfactory history of the proceeding, I would not at this stage make orders precisely in the terms of the present motion. Instead, pursuant to O 35A r 3(2)(e), I would order that judgment for $334,000 and interest thereon against the first and second respondents be given under O 35A r 3(2)(c) if the first and second respondents do not comply with the costs order that I propose to make (see below). I would not order that judgment be entered without more because, following the return of the subpoena directed to Mr Guss, there remains no continuing and unexplained default on the respondents' part. If Barry Armitage's evidence is accepted, there is nothing more the respondents can do to facilitate inspection of documents. Although Mr Guss did not produce all of the documents the subject of the subpoena, Barry Armitage has affirmed that the remaining documents remain in Mr Guss' custody. Ultimately, the credibility (or lack thereof) of Barry Armitage's claims regarding these and like matters will be an issue for trial: see Australian Finance Group Ltd v Accent Financial Group Pty Ltd [2005] FCA 66 at [33] per Nicholson J. Whether he is believed or not is likely to have other consequences for this litigation. 55 I note too that there may be circumstances that partly explain the delays. These circumstances include the ill health of Barry Armitage and of a family member and the disturbance caused by changes in legal representation. Moreover, although the respondents have needed repeated prompting by Ms Wu's solicitor, they have filed their defence, various affidavits responding to Ms Wu's claims and lists of discoverable documents. They have mostly participated in court hearings and they were represented at the mediation by their solicitor. Barry Armitage ultimately took steps to have a subpoena issued to Mr Guss, in order that Ms Wu have access to the first and second respondents' discovered documents. 56 In these circumstances, any prejudice caused to Ms Wu can, at this stage, be met by an appropriate costs order, subject to an entitlement to enter judgment in the event of non-compliance with such an order. Plainly enough, this is not to condone the delay occasioned by Avin and Barry Armitage; and this is not an invitation to them to continue to litigate this matter in the unsatisfactory manner they have thus far done. As indicated below, it is appropriate that they pay Ms Wu's costs of the motion on an indemnity basis; and, since they are in fact in default, that there be orders of the kind contemplated by O 35A r 3(2)(e). I also note that there is again apparently no solicitor on the record. The repeated last-minute retainer of solicitor and counsel to is mischievous since it militates against the efficient conduct of the litigation. The evidence of Mr Liberogiannis about the Armitages' failure to cooperate with their legal advisers is concerning. Nothing in these reasons would preclude Ms Wu from bringing fresh notices of motions for summary judgment upon further breaches of court orders.


case_title: Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433


case_title: Australian Competition and Consumer Commission v 1 CellNet LLC [2005] FCA 856


case_title: Australian Competition and Consumer Commission v Albert [2005] FCA 1311


case_title: Deisel Spa v Hwang [2005] FCA 1619


case_text: recently discussed the principles applicable to preliminary discovery under O 15 r 6 in East Grace Corporation v Xing (No 2) [2005] FCA 1266. It is not necessary to repeat here that discussion and the citation of authorities there set out. For the purposes of O 15A r 6 and O 15A r 3, I am satisfied that: There is reasonable cause to believe that Austal has, or may have, the right to obtain relief in this Court from Messrs Merrigan and Thurlow for one or more of the following causes of action: (i) breach of confidence and infringement of copyright in the case of Mr Merrigan; (ii) infringement of copyright in the case of Mr Thurlow and possible accessorial liability in relation to breach of confidence. The applicant has made what, in the circumstances, are all reasonable enquiries. The term 'reasonable' in this context falls to be considered having regard to the degree of urgency necessary to act upon what is, on the face of it, a potentially serious breach of an obligation of confidentiality and unauthorised reproduction of a sensitive internal report of Austal. Wider enquiries are unlikely to elicit information relevant to the decision that Austal has to make as the necessary documentation is likely to be held by the respective respondents. No offer of disclosure has been made in response to the requests which have been sent. The offer of further investigation by Mr Clifford in the email sent to Mr Rothwell did not promise the kind of disclosure necessary for Austal to make the decision which it wants to make in relation to the institution of proceedings. There is reasonable cause to believe that Mr Merrigan and Mr Thurlow are likely to have in their possession documents, including email communications and copies of the Austal Report, relevant to the question whether Austal has a right to obtain relief against them. In the case of the Incat respondents, there are a number of companies some of which may have had no involvement at all in Mr Thurlow's apparent conduct in sending a copy of the Austal Report to Master Ferries. An order for discovery against the Incat respondents is likely to assist Austal in ascertaining against which, if any of them, it may have a cause of action. As to those of the respondents which are not involved, such respondents would have knowledge of facts as to their non-involvement which will assist the process of ascertainment of the relevant respondents which is contemplated by O 15A r 3. Discovery against Incat will also serve to assist Austal in ascertaining whether Mr Merrigan or some other person had breached confidentiality or infringed its copyright.


case_title: Calderbank v Calderbank [1976] Fam 93

case_text: appellation "Calderbank offer" has its origin in the decision of the English Court of Appeal in Calderbank v Calderbank [1976] Fam 93 at 106. In essence, a Calderbank offer is one which is made in a proceeding before judgment on the basis of it being without prejudice save as to costs and in which an offer for settlement or resolution of the proceeding is made. The right is reserved to refer to the offer if any issue arises as to costs once judgment is delivered. A court can take the offer into account in determining what costs order should be made notwithstanding that the payment into court procedure provided in the court's rules has not been followed. If the party to whom the offer is made does not obtain a more favourable result than the offer made and it is established that in the circumstances of the case that party ought to have accepted the offer, then costs will be awarded on the same basis as if there had been a payment into Court prior to judgment and judgment for a lesser amount had been obtained.


case_outcome: considered

case_text: refusal or rejection of a Calderbank offer, of itself, does not automatically mean, or give rise to a presumption, that the Court should make an order for costs on either a party/party basis or (depending on the circumstances) an indemnity basis where the result is less favourable to the offeree than the offer. It must be established that it was unreasonable in all the circumstances for the offeree to reject the offer : Jacomb v Australian Municipal, Administrative, Clerical & Services Union [2004] FCA 1600 at [6] ; Hazeldene's Chicken Farm Pty Ltd v Victorian Workcover Authority (No 2) (2005) 13 VR 435 at 440. That question gives rise to a threshold issue were the offers genuine offers of compromise? The plaintiff submitted that they were not genuine offers of compromise, but rather were "invitations to capitulate by discontinuing the proceedings on a basis that each party bear its own costs". There is support in a number of cases for the view that an offer by a defendant that a plaintiff discontinue the proceeding on the basis of each party bearing its own costs is not a genuine offer for the purpose of considering the effect of a Calderbank offer on a question of costs: McKerlie v State of New South Wales (No 2) [2000] NSWSC 1159 at [9] - [11] ; Australian Competition & Consumer Commission v Universal Music Australia Pty Ltd (No 2) [2002] FCA 192 at [59] - [64] ; Vasram v AMP Life Limited [2002] FCA 1286 at [12] ; Fyna Foods Australia Pty Ltd v Cobannah Holdings Pty Ltd (No 2) [2004] FCA 1212 at [10] ; Jacomb v Australian Municipal, Administrative, Clerical & Services Union (supra) at [7]; Dresna Pty Ltd v Linknarf Management Services Pty Ltd (In Liq) (No 2) [2006] FCA 755 at [20] . (The reasoning in Herning v GWS Machinery Pty Ltd (No 2) [2005] NSWCA 375 and Townsend v Townsend (No 2) [2001] NSWCA 145 does not support the proposition that an offer by a defendant that the proceeding be discontinued with no order as to costs cannot be regarded as a genuine offer to compromise.)


case_text: question gives rise to a threshold issue were the offers genuine offers of compromise? The plaintiff submitted that they were not genuine offers of compromise, but rather were "invitations to capitulate by discontinuing the proceedings on a basis that each party bear its own costs". There is support in a number of cases for the view that an offer by a defendant that a plaintiff discontinue the proceeding on the basis of each party bearing its own costs is not a genuine offer for the purpose of considering the effect of a Calderbank offer on a question of costs: McKerlie v State of New South Wales (No 2) [2000] NSWSC 1159 at [9] - [11] ; Australian Competition & Consumer Commission v Universal Music Australia Pty Ltd (No 2) [2002] FCA 192 at [59] - [64] ; Vasram v AMP Life Limited [2002] FCA 1286 at [12] ; Fyna Foods Australia Pty Ltd v Cobannah Holdings Pty Ltd (No 2) [2004] FCA 1212 at [10] ; Jacomb v Australian Municipal, Administrative, Clerical & Services Union (supra) at [7]; Dresna Pty Ltd v Linknarf Management Services Pty Ltd (In Liq) (No 2) [2006] FCA 755 at [20] . (The reasoning in Herning v GWS Machinery Pty Ltd (No 2) [2005] NSWCA 375 and Townsend v Townsend (No 2) [2001] NSWCA 145 does not support the proposition that an offer by a defendant that the proceeding be discontinued with no order as to costs cannot be regarded as a genuine offer to compromise.)


case_title: Australian Competition & Consumer Commission v Universal Music Australia Pty Ltd (No 2) [2002] FCA 192


case_title: Vasram v AMP Life Limited [2002] FCA 1286


case_title: Fyna Foods Australia Pty Ltd v Cobannah Holdings Pty Ltd (No 2) [2004] FCA 1212


case_title: Dresna Pty Ltd v Linknarf Management Services Pty Ltd (In Liq) (No 2) [2006] FCA 755


case_title: Herning v GWS Machinery Pty Ltd (No 2) [2005] NSWCA 375


case_title: Townsend v Townsend (No 2) [2001] NSWCA 145


case_text: to s 43(1) of the Federal Court of Australia Act 1976 (Cth) the Court has a broad general discretion in determining how, in what manner, and whether, costs should be borne and paid as a result of the conclusion of any proceeding. The usual order for costs is that costs follow the event and are paid on a party/party basis unless there are special circumstances which warrant the making of some other order. However, it has long been established that the Court may award costs on a solicitor/client or indemnity basis where the particular circumstances of the case warrant the Court departing from the usual order of party/party costs: Colgate-Palmolive Company v Cussons Pty Limited [1993] FCA 536 ; (1993) 46 FCR 225. In Colgate-Palmolive Company v Cussons Pty Limited (supra), Sheppard J set out some of the circumstances which he considered had been thought to warrant the exercise of the discretion to make an order for payment of costs not on the usual basis of party/party costs but on the basis of indemnity costs. Those circumstances included "an imprudent refusal of an offer to compromise".


case_text: has also been long established that in an appropriate case indemnity costs may be awarded against an unsuccessful party where it is established that a proceeding has been commenced in circumstances where the applicant properly advised by legal advisers should have known that it had no prospects of success: Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd [1988] FCA 202 ; (1988) 81 ALR 397 at 401. In J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers, Western Australian Branch (No 2) (1993) 46 IR 301, French J said at 303: "It is sufficient, in my opinion, to enliven the discretion to award such [indemnity] costs that, for whatever reason, a party persists in what should on proper consideration be seen to be a hopeless case."


case_title: J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers, Western Australian Branch (No 2) (1993) 46 IR 301


case_text: refusal or rejection of a Calderbank offer, of itself, does not automatically mean, or give rise to a presumption, that the Court should make an order for costs on either a party/party basis or (depending on the circumstances) an indemnity basis where the result is less favourable to the offeree than the offer. It must be established that it was unreasonable in all the circumstances for the offeree to reject the offer : Jacomb v Australian Municipal, Administrative, Clerical & Services Union [2004] FCA 1600 at [6] ; Hazeldene's Chicken Farm Pty Ltd v Victorian Workcover Authority (No 2) (2005) 13 VR 435 at 440. In Hazeldene's Chicken Farm Pty Ltd v Victorian Workcover Authority (No 2) (supra), the Victorian Court of Appeal accepted the proposition that the rejection of a Calderbank offer should only lead to the making of a special costs order, other than a party/party costs order, where the rejection of the offer was unreasonable. The Court of Appeal, at 442, set out a non-exhaustive list of matters to which a court should have regard in considering a submission that the rejection of a Calderbank offer was unreasonable: "(a) the stage of the proceeding at which the offer was received; (b) the time allowed to the offeree to consider the offer; (c) the extent of the compromise offered; (d) the offeree's prospects of success, assessed as at the date of the offer; (e) the clarity with which the terms of the offer were expressed; (f) whether the offer foreshadowed an application for an indemnity costs in the event of the offeree's rejecting it." In the present circumstances, the relevant question to ask and answer is whether the rejection of the offers by the plaintiff was unreasonable having regard to the relevant circumstances: Hazeldene's Chicken Farm Pty Ltd v Victorian Workcover Authority (No 2) (supra) at 441.


case_text: do not agree with the proposition that an invitation to a plaintiff to discontinue proceedings with no order as to costs is not a genuine attempt to resolve the proceeding by way of compromise for the purposes of considering the consequences of an offer made in a Calderbank letter. In an appropriate case, the giving up by a defendant of the opportunity to recover from the plaintiff the costs it has incurred in defending a proceeding can constitute consideration for a compromise which is real, particularly where the costs incurred have been substantial. The reasoning of the New South Wales Court of Appeal in Leichardt Municipal Council v Green [2004] NSWCA 341 supports this proposition. The cases to which I have referred in the previous paragraph do not appear to have taken into account the fact that such an offer involves the defendant giving up the opportunity to recover its costs from the plaintiff. If the proceeding was pursued to judgment in favour of the defendant, then the defendant would be able to obtain an order to recover its costs from the plaintiff. The renunciation of that opportunity, in my opinion, clothes the offer with the cloak of a genuine compromise of substance. As Giles J said in Hobartville Stud Pty Ltd v Union Insurance Co Ltd (1991) 25 NSWLR 358 at 368: "Compromise connotes that a party gives something away".


case_title: Leichardt Municipal Council v Green [2004] NSWCA 341


case_text: It would appear that s 422B of the Migration Act 1958 (Cth) applies to the appellant's application. Prior to the introduction of s 422B there was generally no obligation on the Tribunal to conduct its own investigation or to make some particular inquiry: see generally, WAGJ v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 277 at [25] ; Applicant S214 of 2003 v Refugee Review Tribunal (2006) 90 ALD 632 at 641; and S1194/2003 v Minister for Immigration and Multicultural Affairs [2006] FCA 1133 at [13] . With the introduction of s 422B this position is made clear: see SZGQN v Minister for Immigration and Citizenship [2007] FCA 428 at [28] .


case_text: It is not sufficient to say, as the appellant does, that upon the Federal Magistrates Court making its decision, he tried harder to find further material. The appellant was well aware that his credit was in issue before the Tribunal, and he should have made all efforts to produce all the material he wished to rely upon before the Tribunal. Even if the new evidence would now be admissible, to which I refer to, for example, Australian Retailers Association v Reserve Bank of Australia [2005] FCA 1707 ; (2005) 148 FCR 446, remembering that this is a review procedure, in my view, I should not allow the additional information to be adduced by the appellant before me. 21 There is a public interest in disposing of public law cases in a timely manner and this is not a case where the issue to be agitated here was not appropriately and clearly put to the appellant before the Tribunal. Fairness does not dictate in this case that I should allow the appellant to tender into evidence any new material for the purposes of this appeal. My function is to review the decision of the federal magistrate and the Tribunal and not to consider the appellant's visa application on the merits and de novo. This is particularly so where the Tribunal did not accept the appellant as a witness of truth. 22 I further observe that the additional material seems to me to be relevant to the appellant's credibility. The Tribunal, in considering the material of Mr Kalin, was treating it as confirmatory of its view that the appellant was not telling the truth about his involvement with Jehovah's Witnesses. Even if the Tribunal had the additional information before it, any response, in my view, would not have affected the Tribunal's finding about the credit-worthiness of the appellant. I am not satisfied that there is any significant possibility that the decision of the Tribunal or the Federal Magistrates Court would have been different if the additional information now sought to be relied upon was in fact before either the Tribunal or the federal magistrate. 23 In my view, the approach of the Tribunal and the federal magistrate, and their conclusions, were correct. Accordingly, the appeal will be dismissed. I certify that the preceding twenty-three (23) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton. Associate: Dated: 17 May 2007 Counsel for the Appellant: The Appellant appeared in person Counsel for the Respondent: V McWilliam Solicitor for the Respondent: Sparke Helmore Date of Hearing: 7 May 2007 Date of Judgment: 7 May 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/710.html


case_text: I now turn to the question of the additional information. In my view the appellant has had ample opportunity to put material to the Tribunal and to place any evidence to rebut the statements of Mr Kalin. In fact, the appellant did address the Federal Magistrates Court as to Mr Kalin possibly being wrong. Even before the federal magistrate no additional information was sought to be tendered into evidence. No sufficient explanation is now offered in relation to the additional information sought to be relied upon and why it was not sought to be relied upon earlier: see generally, Chopra v Minister for Immigration and Multicultural Affairs [1999] FCA 480 at [68] and following.


case_text: In any event, it is apparent from this case that the Tribunal did make inquiries as to whether conscientious objectors were sent to prison. It relied upon information from Mr Kalin in forming its view on whether conscientious objectors were sent to prison. I see nothing wrong with the approach of the Tribunal in making this choice in its assessment of the information, and this is clearly a factual matter for it: see NAHI v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 10 at [11] to [13].


case_title: S1194/2003 v Minister for Immigration and Multicultural Affairs [2006] FCA 1133


case_title: SZGQN v Minister for Immigration and Citizenship [2007] FCA 428


case_title: WAGJ v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 277


case_text: weight to be given to the evidence before it is a matter for the Tribunal: Abebe v The Commonwealth of Australia [1999] HCA 14 , 197 CLR 510. Gummow and Hayne JJ there observed: [197] ... In the end, the criticisms made by the applicant of the Tribunal's reasoning are criticisms of the factual findings it made and are criticisms that fasten upon the weight that the Tribunal attributed to various pieces of information that it had available for consideration. But what weight the Tribunal gave to those various pieces of information was for it to say. Similarly, in Chand v Minister for Immigration and Ethnic Affairs (unreported, FCA, NG 257 of 1997, 7 November 1997) von Doussa, Moore and Sackville JJ observed: The RRT is required to evaluate all the evidence put before it by an applicant for refugee status. Where there is conflicting evidence from different sources, questions of credit of witnesses may have to be resolved. The RRT is also entitled to attribute greater weight to one piece of evidence as against another, and to act on its opinion that one version of the facts is more probable than another ... " A finding on credibility " it has been said, " is the function of the primary decision-maker par excellence ": Re Minister for Immigration and Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 at [67] , [2000] HCA 1 ; 168 ALR 407 at 423 per McHugh J. Reference may also be made to SZKRR v Minister for Immigration and Citizenship [2008] FCA 145 at [7] per Bennett J; SZJMH v Minister for Immigration and Citizenship [2008] FCA 270 at [27] per Lander J.


case_text: where reservations as to the authenticity of one document have been brought to the attention of a claimant, there may be no necessity to separately warn a claimant as to reservations being experienced in respect to corroborating material: Applicant S214 of 2003 v Refugee Review Tribunal [2006] FCA 375 , 90 ALD 632. The Tribunal had there found a newspaper article to be a fabrication. Corroborating evidence was from the claimant's sister. The corroborating evidence was in the form of a statutory declaration; the question was whether its contents were correct. There was there held to be no necessity for the Tribunal to go back and warn the claimant that the Tribunal would find the sister's evidence also to be fabricated. In rejecting the contention, Edmonds J concluded: [33] At the end of [the] day, the applicant complained that the Tribunal did not warn him that it would find that the corroborating evidence of his sister had been fabricated. The simple answer to that contention is that it was not obliged to do so. The applicant had the critical issue, viz., the authenticity of the newspaper article, drawn to his attention. He proffered further evidence on this point, including the sister's statutory declaration, which was rejected. There was no requirement for the Tribunal, acting in an inquisitorial capacity, to go back to the applicant warning him that this was one of the reasons why it would ultimately reject the newspaper article. [34] There was some suggestion the Tribunal was obliged to call the sister as a witness before it could make the findings that it did, but that suggestion must be rejected. While it is the case that it is the Tribunal which "obtains" or "acquires" evidence ... this says nothing about whether the Tribunal was obliged to call the applicant's sister. It was for the applicant to place such material as was necessary to persuade the Tribunal of his claims before the Tribunal. The Tribunal was under no obligation to verify or investigate the applicant's claims, including by calling his sister as a witness. The Tribunal has no duty to investigate, nor any duty to consider utilising such permissive statutory powers as it had which might enable it to investigate ... Even if the applicant had made a request under s 426 that the sister be called (which he did not) the Tribunal would not have been obliged to do more than have regard to the applicant's wishes. The Tribunal did not commit jurisdictional error by failing to call the applicant's sister as a witness, or by making the findings it did, having not called the sister as a witness. (Citations omitted) An opportunity to be heard thus does not involve informing a claimant as to the prospect of adverse findings being made in respect to each particular aspect of the case sought to be advanced.


case_title: Chand v Minister for Immigration and Ethnic Affairs (unreported, FCA, NG 257 of 1997, 7 November 1997)