case_title: Natural Floor Covering Centre v Monamy (No 3) [2006] FCA 602

case_text: the matter was returned this morning the respondent was represented by Mr Webb SC and Mr Altan. They have submitted that I should revisit the finding I made in my judgment delivered on 12 May 2006, Natural Floor Covering Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 , on the basis that the reformulated charge has elevated the sign depicted in order 1 made by Wilcox J on 15 December 2005 to the status itself of the trademarks, the protection of which was understood to be the object of order 1. The respondent has referred to the phrasing of the handwritten heads of agreement reached in the mediation between the parties on 12 December 2005 and in particular to par 1 which reads: injunction against respondent restraining his use of the applicant's registered trademarks and the applicant's guide to estimating on the respondent's website.' The respondent submits that a reasonable construction of order 1 would involve the use of the well developed concepts of 'substantial identity' and 'deceptive similarity' over many years of trademarks law under various statutes, including the concepts in ss 10 and 120 of the Trademarks Act 1995 (Cth). Against that background the respondent submits that order 1 made on 15 December 2005 was clearly intended to protect the registered trademarks numbered 981970 and 1013021 from infringement by the use of signs, symbols or devices that were the same or substantially identical with those marks. The respondent submits that when one has regard to the fact that the concept employed by the parties in their consent orders eschewed the broader concept of deceptive similarity as explained in The Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) [1961] HCA 75 ; (1963) 109 CLR 407, it is at least open to raise a reasonable doubt as to whether what the respondent did, as previously found by me (in Natural Floor Covering Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 at [12] ) was in fact a use that was the same or substantially identical with either of the registered marks. (The respondent does not accept that that finding was one which should have been arrived at on the facts, but has left such rights as he may have to deal with that matter to be the subject of an appeal rather than seeking leave to reopen generally.) One of the surrounding circumstances in this case is the fact that there were heads of agreement made between the parties prior to the formulation of the consent orders accepted by the solicitor then acting for the respondent. There does appear to be a variance between what is in the heads of agreement and the consent orders made by Wilcox J on 15 December 2005, although, as the applicant points out, the provisions of the heads of agreement ought to be read as a whole. Secondly, the applicant points to the fact that the consent orders specifically identify a particular sign as being agreed to be one the use of which is prohibited as an aid to the construction which would support the finding that I have made. The applicant urged that findings I had made in Natural Floor Covering Centre Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 at [12] in any event precluded the respondent having success on the reopening. This was because I found that by causing the animation to produce in sequence what was ultimately the shape that amounted to the spiral or cover-roll design and then the words 'Simply Natural Floorcoverings', the respondent had used and displayed a sign on his website in contravention of order 1 as charged in amended charge number 2. As I understand it though, the respondent's contention really goes to the fact that charge number 2 elevates the sign depicted in order number 1 into a mark in itself that was capable of protection. I am of opinion that the order is capable of being read in the sense that the respondent has advocated today, although that is not the way I, myself, would read it for the reasons I have given earlier. However, I think that I ought to find that the charge number 2 has not been proved beyond reasonable doubt because of the difference in interpretation which order 1 made by Wilcox J could give rise to having regard to the heads of agreement. I therefore vacate my finding that charge 2 has been proved beyond reasonable doubt and I will enter a judgment of not guilty on that count. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rares. Associate: Dated: 31 August 2006 Counsel for the Applicant: Mr C D Freeman Solicitor for the Applicant: Purcell Lawyers Counsel for the Respondent: Mr R Webb SC with Mr H Altan (pro bono) Date of Hearing: 29 May 2006 Date of Judgment: 29 May 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1197.html


case_outcome: followed

case_title: Smith v The New South Wales Bar Association [1992] HCA 36 ; (1992) 176 CLR 256

case_text: is the first occasion on which I have had the benefit of representation of the respondent by counsel. Until now, effectively, the case has proceeded with the respondent acting for himself. The question of whether the Court should allow a limited reopening of the kind sought by the respondent has been discussed in a number of authorities. In Smith v New South Wales Bar Association [1992] HCA 36 ; (1992) 176 CLR 256 at 265 Brennan, Dawson, Toohey and Gaudron JJ dealt with the question where, as here, judgment has been given. I have made a finding of guilt on charge 2, but no orders have been entered. Their Honours pointed out that the power of the court to set aside or vary such a judgment, reflected in the analogue of O 35 r 7(1), was discretionary and existed up until the entry of judgment. Their Honours said that it was a power that was exercised having regard to the public interest in maintaining the finality of litigation and that if reasons for judgment had been given the power was only exercised if there was some matter calling for review. There may be, their Honours pointed out, more or less reluctance to exercise the power depending on whether there is an avenue of appeal. Their Honours approved the statement that where there had been judgment in a case, but the order had not been entered, the power would not ordinarily be exercised to permit a general reopening. However they made clear that that was a general statement only and, once the matter had been reopened, the nature and extent of the review had to depend upon the error or omission which led to the step being taken. In this case the error that is posited is that there was a factor overlooked by me in a construction of the order that might give rise to a reasonable doubt as to whether there had been a breach of it as I found. I am of the opinion that in the circumstances of the proceedings, the respondent has shown that there is a matter calling for review ( Smith v New South Wales Bar Association (1992) 176 CLR at 265 and Texas Company (Australasia) Limited v The Federal Commissioner of Taxation [1940] HCA 9 ; (1940) 63 CLR 382 at 457 per Starke J). Accordingly, in my view, it is appropriate for me to consider the argument now raised by the respondent for the purposes of reconsidering my finding, particularly as the respondent has sought to limit the basis of the review, notwithstanding that he maintains a position of wishing to challenge the factual findings that I have made in the event that an appeal is taken.


case_outcome: applied

case_text: respondent submits that when one has regard to the fact that the concept employed by the parties in their consent orders eschewed the broader concept of deceptive similarity as explained in The Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) [1961] HCA 75 ; (1963) 109 CLR 407, it is at least open to raise a reasonable doubt as to whether what the respondent did, as previously found by me (in Natural Floor Covering Centre Pty Ltd v Monamy (No 3) [2006] FCA 602 at [12] ) was in fact a use that was the same or substantially identical with either of the registered marks. (The respondent does not accept that that finding was one which should have been arrived at on the facts, but has left such rights as he may have to deal with that matter to be the subject of an appeal rather than seeking leave to reopen generally.) The respondent referred to the decision of Windeyer J in the Shell Co of Australia Limited v Esso Standard Oil (Australia Limited) (1961) 109 CLR at 414-415, where his Honour considered the concept of 'substantial identity' within the meaning of the then Trademarks Act 1955 (Cth) and the decided cases on those words, both here and in England, in contradistinction to the other concept used in the legislation of 'deceptive similarity'. He explained that the task was to compare side by side the similarities and differences noted and the importance of those assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison. He said that the judgment ought to be by eye alone for the purposes of determining substantial identity, but noted that in an animated depiction where matters do not stand still fleeting glimpses of substantial identity were not enough, although the position may be different with regard to deceptive similarity. Since order 1 does not refer to the latter concept I need not deal with it. Given that these are proceedings which are criminal in nature in which the liberty of the subject is in issue, it seems to me that I should err on the side of caution in construing order 1. Having now had the benefit of the argument put by the respondent, I am of opinion that the words 'substantially identical' as used in that order could be construed as denoting the concept in s 120 of the Trademarks Act 1995 (Cth) and as expounded in judicial decisions and that it is a reasonable construction of order 1 to read it in the way submitted by the respondent today. That is so even though this is not necessarily the only construction that one would make. That is to say, the parties were identifying a limited legal concept as defining the extent of the protection that the order was seeking to give to the applicant's two trademarks and they accepted that the particular depiction, included as part of order 1, was an infringement of them. While that is not, for the reasons I have given in my earlier judgements, the construction which I would place on the words, I am not satisfied beyond reasonable doubt, having now reflected upon the new argument put by the respondent through his counsel today, that that is the only way one would read the consent orders in light of the heads of agreement which the respondent signed on 12 December 2005.


case_outcome: cited

case_title: Blair v Curran (1939) 62 CLR 464

case_text: On 7 February 2008 when the applicant filed its written outline of submissions for trial, it argued that the NCC was bound by res judicata and issue estoppel. The applicant referred to Blair v Curran (1939) 62 CLR 464 , which is, of course, the locus classicus of these doctrines.


case_text: According to TPI, it was on the basis of the applicant's written submissions that it prepared its own written submissions to meet the applicant's assumed case. However, on the morning of the hearing on 26 March 2008, senior counsel for the applicant, without any prior warning to the other parties or the Court, abandoned the issue estoppel argument. Instead, TPI submitted, the applicant reformulated its case in oral argument and put it on two quite different bases. The applicant relied firstly on what senior counsel for the NCC had said to Kenny J when her Honour delivered judgment in Hamersley Iron Pty Ltd v National Competition Council [1999] FCA 867 ; (1999) 164 ALR 203. Secondly, it relied on what was said to be the proper construction of the declaratory orders thereafter made by her Honour . 7 TPI says that the applicant's case before me was conducted on this new basis and that the evidence and written submissions of all parties were thereafter rendered almost entirely irrelevant. Moreover, further written submissions were required to be filed by all parties in response to these newly identified issues. It is for that reason that TPI claims that it should be fully indemnified for the substantial costs that it incurred in preparing to meet a case that was commenced, particularised and articulated in written submissions, but then abandoned without warning on the morning of the hearing. TPI accepts that the costs of the hearing itself, and the supplementary submissions that it had to file to meet the applicant's new case, should be ordered against the applicant on the usual party-party basis. 8 In the alternative, TPI submits that the applicant's issue estoppel case was always clearly foredoomed to fail. Logically, the res judicata point had to fail as well once issue estoppel was abandoned since the latter, so it was said, was a necessary condition for the existence of the former. 12 The applicant argues that the issue regarding the construction of Kenny J's orders was always part of its case and did not involve a newly identified issue. It refers to correspondence from its solicitors to the NCC in which the solicitors referred to the NCC being "bound" by Kenny J's orders. Its own outline of submissions plainly flagged the construction argument by referring repeatedly to the actual terms of her Honour's orders. The issue regarding the construction of those orders was intertwined with whether res judicata was applicable. 13 The applicant concedes that it abandoned issue estoppel. However, it submits that this is not a sufficient basis for ordering indemnity costs. If it were, indemnity costs would be ordered routinely and parties and their legal advisers would be tempted to pursue all issues to judgment rather than face the prospect of indemnity costs for abandoning an issue no longer regarded as tenable. The applicant says that the abandonment of issue estoppel should not be taken as a concession that the doctrine had been unreasonably or improperly raised. 14 The applicant says that its res judicata claim was not one that had no chance of success, a point amply illustrated by the detailed treatment I gave this claim in my reasons for judgment. Nor was the issue estoppel claim necessarily foredoomed to fail. Indeed, the fourth undertaking proffered to the Full Court made express reference to a possible contention that Kenny J's orders gave rise to an issue estoppel. This was said in response to concerns expressed by Goldberg J that an issue estoppel might arise. 15 Finally, the applicant says that another factor weighing against TPI's application for indemnity costs is that it sought, and obtained by consent, leave to be joined as a respondent to the proceeding in circumstances where the NCC was a perfectly able contradictor and TPI made many submissions that duplicated those of the NCC. 19 The applicant's additional submission based upon counsel's "assurance" to Kenny J at the time her Honour delivered judgment had to be addressed, as indeed it was. However, the failure of this point should be the subject of an order for costs on a party and party basis, and does not warrant an order for indemnity costs. 20 For these reasons, I will order, as foreshadowed, that the applicant pay the respondents' costs, to be taxed in default of agreement. There will be no order for indemnity costs. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Weinberg. Associate: Dated: 28 May 2008 Counsel for the Applicant: Mr P.W. Collinson SC with Mr S.H. Parmenter Solicitor for the Applicant: Allens Arthur Robinson Counsel for the First Respondent: Mr P.J. Hanks QC with Mr P.R.D. Gray Solicitor for the First Respondent: Australian Government Solicitor Counsel for the Second Respondent: Mr N.J. O'Bryan SC with Mr T.J.F. McEvoy Solicitor for the Second Respondent: DLA Phillips Fox Date of Hearing: 26 March 2008 Date of Submissions: 12 and 15 May 2008 Date of Judgment: 27 May 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/779.html


case_text: Section 43 of the Federal Court of Australia Act 1976 (Cth) gives the Court a wide discretion in relation to matters of costs. In DSE (Holdings) Pty Ltd v InterTAN Inc [2004] FCA 1251 ; (2004) 51 ACSR 555 , Allsop J observed that the section conferred a broad and ample power which was not to be read down otherwise than in accordance with judicial principle.


case_text: The principles that govern the award of indemnity costs are well settled: Colgate-Palmolive Co v Cussons Pty Ltd (1993) 46 FCR 225. Such an order may be appropriate where it appears that the action was commenced or continued in circumstances where the applicant, properly advised, would have known that there was no chance of success. In such a case, an ulterior motive may be presumed. It is also within the discretion of a judge to depart from the ordinary rule of party and party costs where, for example, allegations of fraud have been made that are not sustained or where the conduct of the litigation has been such as to warrant a strong expression of disapproval. 18 In my view, there is no justification in this case for departing from the usual rule that costs be paid on a party and party basis. I accept the applicant's submissions in that regard. The doctrine of res judicata loomed large throughout and the applicant's decision to abandon issue estoppel did not bring about any delay or cause any party to incur additional expenditure. The res judicata point was certainly not hopeless.


case_outcome: affirmed

case_text: The nature of the appellant's visa application, the reasoning of the Tribunal, and the decision of the Federal Magistrates Court are set out in the judgment of the Federal Magistrate, which is available on the internet: SZKJO v Minister for Immigration [2007] FMCA 1534. 3 The appellant is a citizen of the People's Republic of China who arrived in Australia on 7 September 2006. The appellant claimed to have well-founded fear of persecution as a supporter of the Falun Gong. The appellant failed to attend the Tribunal hearing. The Tribunal sent the appellant an invitation to the Tribunal hearing. The Tribunal received no response, and the letter was not returned unclaimed. 4 The Tribunal made a decision pursuant to s 426A of the Migration Act 1958 (Cth). On the limited evidence before it, the Tribunal found that it could not be satisfied that the appellant was a Falun Gong practitioner in China, or that she currently practised in Australia. The Tribunal also could not be satisfied that the appellant was a genuine Falun Gong practitioner, or that she would seek to practise in the future. There was, accordingly, no persuasive evidence to satisfy the Tribunal that the appellant would face serious harm for a convention reason.


case_text: The Tribunal then rejected the appellant's claim because it concluded that he is reasonably capable of relocating to other parts of India if he faces persecution from Muslim fundamentalists in his city of Ahmedabad. After referring to the relocation principle discussed in Randhawa v Minister for Immigration, Local Government and Ethnic Affairs (1994) 52 FCR 437, the Tribunal observed that it did not see any impediment to the appellant's relocation to other parts of India. It explained why. It did not think that the appellant had given the Tribunal any persuasive reason why he should feel uncomfortable in setting up his business in other parts of India. It noted that there was no rational basis for the appellant's claimed belief that he and his wife would not be entitled to the same protection as other business people in other major cities in India. Even if he could not afford to set up business in another city, it noted that the appellant is currently employed in Australia as a farm hand, and is also skilled as a medicine salesman and a diamond polisher. It therefore concluded that he is easily capable of taking up other types of work without the necessity of establishing his own business. It rejected his claim that he had unsuccessfully attempted to relocate in the past because he had been unable to tell the Tribunal where he had tried to relocate. It concluded that he is reasonably capable of relocating in India, and so did not have a well-founded fear of persecution for a Convention reason if he were to return to India, even if he may have been the subject of further attacks in his city of Ahmedabad. 10 The appellants sought to have the Tribunal decision quashed by a Federal Magistrate. That application was refused by a decision of a Federal Magistrate of 3 May 2007. The Federal Magistrate found no jurisdictional error on the part of the Tribunal in the way it had considered the appellant's claims, including the assertion (which was the only specific assertion in the grounds of the application before the Federal Magistrate) that the Tribunal had failed to comply with s 424A of the Act by having failed to give to the appellant a notice under that section addressing the matters to which the Tribunal may have had regard in deciding whether it was reasonable for him to relocate to some other part of India. The Federal Magistrate said that the matters to which the Tribunal had regard in reaching that conclusion was information given by the appellant to the Tribunal during the course of the hearing. 11 This is an appeal from the decision of the Federal Magistrate.


case_outcome: discussed

case_text: The first step in considering the appellant's contention that his case was that he had a well-founded fear of persecution for a Convention reason throughout India, because he would be a target for Muslim fundamentalists wherever he was located in India, is to decide whether the appellant should be entitled to raise that matter on this appeal. It was not raised as a ground of appeal before the Federal Magistrate, nor in the grounds of appeal before this Court. Leave to amend a notice of appeal to raise a new ground should only be granted where it is expedient in the interests of justice for that leave to be granted: NAJT v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 134 ; (2005) 147 FCR 51 at [163] [166]; VAAC v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 74 ; (2003) 129 FCR 168 at 177; NBKT v Minister for Immigration and Multicultural Affairs [2006] FCAFC 195 ; (2006) 156 FCR 419 at [22] . 19 In NAJT 147 FCR at [166] Madgwick J identified relevant questions on the topic as including whether the new legal argument has a reasonable prospect of success; whether there is an acceptable explanation of why it was not raised before the Federal Magistrate; whether permitting the new ground to be raised would interfere with the efficient use of judicial sitting time; the consequences to the appellant of not permitting the new ground to be raised and to the first respondent in permitting the proposed new ground of appeal to be raised and, if so, how it could be cured; and where the interests of justice lie in all the circumstances. 20 The appellant's application for a protection visa asserts in very general terms that he fears being killed by criminal Muslim fundamentalists in India if he were to return there, and refers specifically to a letter of 16 June 2006 in which he expands upon that information. That letter records the complaints of particular adverse experiences to which the Tribunal has referred in the Gujarat state. It is specific to that state. It says, however, by way of conclusion that: We have nowhere to go. If we go back to India, We can be killed by Muslims or maybe even by power hungry Hindu fundamentalists. Indian police can never protect us. I note however that in that letter, the appellant said that the incident which occurred on 31 March 2006 when he was beaten by persons he assumed were Muslim fundamentalists, he was warned to leave Gujarat, rather than that he would be attacked elsewhere in India. 21 In a letter to the Tribunal of 20 November 2006, again in my view the claim is somewhat ambiguous. It is focused upon events in and around Ahmedabad. It says: There was no any [sic] improvement in the law order situation. We were living in a fearful situation. Hiding here and there and begging safety of life from the local police. The local police did not give any solid or effective protection. Because of that we left our country to have a peaceful life. It proceeds to refer to reports about the negligence and corruption of Gujarat police.


case_text: The first step in considering the appellant's contention that his case was that he had a well-founded fear of persecution for a Convention reason throughout India, because he would be a target for Muslim fundamentalists wherever he was located in India, is to decide whether the appellant should be entitled to raise that matter on this appeal. It was not raised as a ground of appeal before the Federal Magistrate, nor in the grounds of appeal before this Court. Leave to amend a notice of appeal to raise a new ground should only be granted where it is expedient in the interests of justice for that leave to be granted: NAJT v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 134 ; (2005) 147 FCR 51 at [163] [166]; VAAC v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 74 ; (2003) 129 FCR 168 at 177; NBKT v Minister for Immigration and Multicultural Affairs [2006] FCAFC 195 ; (2006) 156 FCR 419 at [22] .


case_title: NBKT v Minister for Immigration and Multicultural Affairs [2006] FCAFC 195 ; (2006) 156 FCR 419


case_outcome: considered

case_text: There is another reason why, in any event, in my judgment, the appellant's claim is inevitably doomed to failure (even if as widely expressed as he now asserts). That is because, as the Tribunal remarked, there is no reason to consider that the Indian authorities would not provide an appropriate level of protection to the appellant at least outside of the state of Gujarat. In Minister for Immigration and Multicultural Affairs v Respondents S152/2003 [2004] HCA 18 ; (2004) 222 CLR 1, Gleeson CJ, Hayne and Heydon JJ said at [26]: No country can guarantee that its citizens will at all times, and in all circumstances, be safe from violence. Day by day, Australian courts deal with criminal cases involving violent attacks on person or property. Some of them may occur for reasons of racial or religious intolerance. The religious activities in which the first respondent engaged between May and December 1998 evidently aroused the anger of some other people. Their response was unlawful. The Ukrainian state was obliged to take reasonable measures to protect the lives and safety of its citizens, and those measures would include an appropriate criminal law, and the provision of a reasonably effective and impartial police force and justice system. None of the country information before the Tribunal justified a conclusion that there was a failure on the part of the Ukraine to conform to its obligations in that respect. 32 Those observations apply equally to the present matter. There is no evidence upon which the Tribunal could have found, even if the appellant were at risk of Muslim fundamentalists throughout India, that the Republic of India did not provide reasonable measures to protect the lives and safety of its citizens including providing an appropriate criminal law and the provision of a reasonably effective and impartial police force and justice system. Consequently, even if the appellant were able to show (contrary to what is clearly the Tribunal's conclusion of fact) that he was at risk of attack by Muslim fundamentalists throughout India, there is no basis upon which he could show that that non-state threat was one in which the Indian state itself was complicit, or in respect of which the Indian state did not provide an appropriate level of protection by police and other authorities.


case_text: I have also independently considered whether there is some other basis upon which the appellant might have demonstrated jurisdictional error on the part of the Tribunal. Section 425(1) of the Act obliges the Tribunal to have invited the appellant to give evidence and present arguments relating to the issues arising in relation to the decision under review. As the High Court (Gleeson CJ, Kirby, Hayne, Callinan and Heydon JJ) pointed out in SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63 ; (2006) 231 ALR 592 at [33] , the reference to "the issues arising in relation to the decision under review" is important. The issue of relocation was therefore an important one, but it was, as the Tribunal's record of hearing as exposed in its reasons for decision illustrates, raised fairly and squarely before the appellant. Moreover, even if "the issues" to be the subject of a hearing are more refined, and extend to particular factual matters which may go to the question of reasonableness of relocation, in this instance in my judgment the Tribunal adequately gave the appellant the opportunity to address those factual matters. In particular, it put to him that he had travelled to Australia and that, if he were able to set himself up in Australia, there is no reason why he should not be able to do so in another city in India. 34 For those reasons, in my judgment, the appeal must be dismissed. The appellant is to pay to the first respondent the costs of the appeal. I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Mansfield. Associate: Dated: 9 August 2007 Counsel for the Appellant: The appellant appeared in person Counsel for the Respondents: Mr D Godwin Solicitor for the Respondents: DLA Phillips Fox Date of Hearing: 8 August 2007 Date of Judgment: 9 August 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1197.html


case_text: In these circumstances the Court of its own motion listed the matter for a directions hearing on 9 April 2008. At that directions hearing the Court directed the parties to file and serve submissions in relation to the disposition of the application pursuant to s 190F(6) of the Native Title Act on or before 7 May 2008. Subsequent to this date and in light of the Full Court's decision in the matter of Gudjala People # 2 v Native Title Registrar [2008] FCAFC 157 delivered on 27 August 2008, parties were invited by the Court to file and serve any further submissions prior to the hearing of the application. 5 In deciding whether the application should be dismissed I have considered s 190F(6) of the Native Title Act , which provides as follows: The Court may, either on the application of a party or on its own motion, dismiss the application in which the claim was made ... if: (a) the Court is satisfied that the application in issue has not been amended since consideration by the Registrar, and is not likely to be amended in a way that would lead to a different outcome once considered by the Registrar; and (b) in the opinion of the Court, there is no other reason why the application in issue should not be dismissed. 6 There is no evidence, and it was not submitted by any party, that this application is likely to be amended at all, never mind in a way that would lead to a different outcome once considered by the Registrar of the National Native Title Tribunal.


case_outcome: referred to

case_text: Australian Broadcasting Commission v Parish and Ors (1980) 43 FLR 129 Bowen CJ stated at 132-3: 'Under s 50 an order may be made forbidding or restricting the publication of particular evidence or the name of a party or witness where it appears to the court "to be necessary in order to prevent prejudice to the administration of justice or the security of the Commonwealth". Again, we are familiar with cases where an order forbidding or restricting publication is appropriate. Thus, where the proceedings concern a secret process and publication of the process would destroy the subject matter of the proceedings and render them nugatory, an order is necessary to prevent prejudice to the administration of justice. Where proceedings are brought to restrain publication of confidential material, similar considerations apply. Disclosure would prejudice the court's proper exercise of the function it was appointed to discharge, to do justice between the parties. The possible cases where an order may be necessary to prevent prejudice to the administration of justice range fairly widely. The categories of this public interest are not closed and must alter from time to time whether by restriction or extension as social conditions and legislation develop (see D. v National Society for Prevention of Cruelty to Children [[1978] AC 171 at 230] per Lord Hailsham ; Science Research Council v Nassé [[1979] 3 WLR 762 at 784] per Lord Fraser ...' Bowen CJ added (at 133) that ' Open justice is the underlying assumption of s 50 ... '. Deane J observed at 158: 'The decision whether an order under s 50 should be made will be the outcome of a balancing process in respect of which there will commonly be room for differences of opinion as to the weight to be attached to particular factors to be placed in the balance and, in the result, as to the precise outcome of the process itself.' The Australian Prudential Regulation Authority ('APRA') has provided six reasons in support of the continuation of order 8 and denial of access under O 46 r 6(3) of the Federal Court Rules . Firstly, it says that certain documents have not been admitted into evidence. Secondly, it says that certain documents contain information which it would be an offence to disclose under s 56(2) of the Australian Prudential Regulation Authority Act 1998 (Cth) ('APRA Act'). Thirdly, it says that certain documents were supplied to the applicant subject to non-disclosure conditions under s 56(5)(b) of the APRA Act. Fourthly, it says certain documents are subject to a duty of confidentiality pursuant to s 60 of the Insurance Act 1973 (Cth). Fifthly, it says that certain documents contain information about third parties, the disclosure of which may damage reputations or result in a denial of procedural fairness by APRA. Sixthly, it says that certain documents disclose the investigative processes of APRA. Apart from the question of statutory prohibition, these documents were provided by the respondent to the applicant on a confidential basis. Documents which the Court could not have ordered be provided to a party or to the Court, and which are provided voluntarily on a confidential basis to a party, should not in my opinion be released to non-parties by the Court. I note the observations of Deane J in Parish (at 157) that: 'The interests of the administration of justice plainly make it desirable that obligations of confidence be not lightly overruled and that legitimate expectations of confidentiality as to private and confidential transactions and affairs be not lightly disregarded. ' Further, I consider that any documents which contain information derived from documents subject to s 56 of the APRA Act should remain the subject of an order under s 50, except where that information is otherwise in the public domain. Although documents created by the applicant in response to the reports may not, in all cases, be themselves covered by the operation of s 56, it would, in my opinion, undermine the operation of s 56 if they were not also restrained from publication. Further, it would be likely that organisations such as APRA would cease to provide such documents to external interested parties if they could not ensure that confidentiality of the material contained within them would be maintained. I accept that in some circumstances, documents which disclose the investigative processes of APRA might be appropriately restrained from publication. In the present case, however, having considered those documents which fall outside the restrictions already discussed, I do not consider that the material contains significant details which would prejudice APRA's conduct of future investigations if it were publicly revealed. Accordingly, I do not consider that any additional material should be withheld by order under s 50 on the basis that it reveals APRA's investigative processes. In respect of the suggestion that a duty of confidentiality applies by virtue of s 60 of the Insurance Act 1973 (Cth), I agree with this submission but only to a limited extent. I accept that information relating to the contents of the final report would be subject to a duty of confidentiality, on the basis that publication is prohibited without the agreement of the Attorney-General. It is possible that this duty would extend also to the contents of the draft reports, but it is unnecessary to decide this point at present since s 56 of the APRA Act applies to the draft reports. However I do not consider that s 60 of the Insurance Act would prevent the applicant disclosing his knowledge of the investigation by APRA outside of these parameters. I have read the file and considered the documents contained in it. I propose to amend order 8 of the orders of 14 July 2006 to restrict its operation to those portions of the documents which I believe fall into one of the two categories referred to above (namely, documents to which s 56 of the APRA Act applies, or documents derived from documents to which s 56 applies). Because of the nature of the documents in question, I have prepared a schedule of those documents to which I consider the s 50 order should continue to apply. Any further documents filed in the proceedings will need to be subject to consideration on a case-by-case basis.


case_text: Australian Competition & Consumer Commission v ABB Transmission and Distribution Ltd (No 3) (2002) ATPR 41-873, Finkelstein J observed at [7]: 'The question that I must resolve is what principle should be applied when deciding whether to allow inspection in cases where leave is required. In giving the answer I propose to confine myself to those cases where a non-party seeks access to material which has been relied upon by the judge. In such a case I have no doubt that the proper approach is that access should be allowed unless the interests of justice require a different course. It is only by adopting this approach that, in a practical sense, the principle of open justice will be preserved. Put differently, in my view there is a strong presumption in favour of allowing any member of the public who wishes to do so to inspect any document or thing that is put into evidence. Inspection should only be refused in exceptional circumstances. I think that the position is a fortiori when the material has been read by the judge in private and is not read out in court. If that material is not made available for inspection then the manner in which the case has been conducted will only be known to the parties. That is an unacceptable position.'


case_text: Seven Network Ltd and Anor v News Ltd and Ors (No 2) [2005] FCA 1394 ; (2005) 148 FCR 1 Sackville J said at [27]: '... it seems to me that unless the interests of justice require otherwise, this Court would ordinarily take the view that a non-party should have access to all non-confidential documents and other material admitted into evidence. I say 'ordinarily' because the circumstances of each case will vary and the exercise of the discretion under O 46, r 6 of the Rules will have to take into account the particular circumstances of the case. I agree ... that a convenient touchstone for determining the question of access by non-parties is whether the documents or other material have been admitted into evidence. In general, the application of this principle will serve the interests of open justice. In particular, access to the documentary evidence can be expected to be helpful to a person seeking to understand or explain the proceedings, or to evaluate the Court's determination of the issues arising in the proceedings ...' The above passage was approved by French J in Australian Securities and Investments Commission, in the matter of Richstar Enterprises Pty Ltd (ACN 099 071 968) v Carey (No 2) [2006] FCA 407 at [18] . 0


case_outcome: distinguished

case_text: agree with Rares J in Llewellyn that the approach adopted in the Supreme Court of New South Wales, in which different rules apply, is different from the approach adopted by the rules of this Court: see at [21] and [22] of his Honour's judgment. Pursuant to O 46 r 6(1) of the Federal Court Rules , a non-party will generally be entitled to access the pleadings. Accordingly I do not consider the comments of Santow J in eisa Ltd v Brady and Ors [2000] NSWSC 929 at [20] are applicable to this Court in so far as they apply to pleadings. However, in respect of affidavit material which has not been read in Court, the comments of Santow J in respect of affidavits accord with the principle outlined by Sackville J in Macquarie Radio and Seven Network .


case_text: do not consider that the first reason provides a basis for excluding documents under s 50 of the Federal Court of Australia Act 1976 (Cth). Given the principle of open justice, the fact that documents have not been admitted into evidence would not be sufficient to justify a prohibition on their publication. In Llewellyn v Nine Network Australia Pty Ltd [2006] FCA 836 Rares J observed at [27]: 'The proposition that untested allegations in civil proceedings are somehow to be shielded from public view merely because they are untested allegations and could only possibly be properly understood in the context of a fully contested hearing is, in my opinion, not one that can sit with the principle of open justice or the right of anyone fairly to report proceedings in a court of justice.' Rares J was dealing with an application which sought to restrain access by the media to pleadings filed in proceedings. Pleadings are subject to O 46 r 6(1). Third parties are entitled to access pleadings unless the Court has ordered that they are confidential. The case law relating to documents subject to O 46 r 6(2) is somewhat different. Nonetheless, the principle which emerges from the above is the fact that material contains allegations which are untested this does not of itself justify an order under s 50. For similar reasons, I do not consider that the fifth reason proposed by APRA is sufficient to justify the continuation of an order under s 50. Unfortunate though it may be, the fact that the reputations of certain individuals may be damaged by documents is not of itself a reason for restricting their publication by an order under s 50. The damage to an individual must be weighed against the importance of maintaining open justice and public confidence in the justice system. As Rares J observed in Llewellyn at [23]: 'Ordinary members of the public are well aware of the difference between allegations made in courts and findings made by courts.' However, I consider that the second and third reasons suggested by APRA relating to the prohibitions contained in s 56 of the APRA Act are significant. In my opinion, it would prejudice the administration of justice if documents were revealed to which restrictions under s 56 of the APRA Act applied. The Court cannot require the production of these documents and they were provided to the applicant and to the Court subject to confidentiality requirements. It would vitiate my decision of 26 May 2006 relating to the effect of that section if those documents which were ' protected documents ' or contained ' protected information ' were allowed to be published by the Court. I agree with Rares J in Llewellyn that the approach adopted in the Supreme Court of New South Wales, in which different rules apply, is different from the approach adopted by the rules of this Court: see at [21] and [22] of his Honour's judgment. Pursuant to O 46 r 6(1) of the Federal Court Rules , a non-party will generally be entitled to access the pleadings. Accordingly I do not consider the comments of Santow J in eisa Ltd v Brady and Ors [2000] NSWSC 929 at [20] are applicable to this Court in so far as they apply to pleadings. However, in respect of affidavit material which has not been read in Court, the comments of Santow J in respect of affidavits accord with the principle outlined by Sackville J in Macquarie Radio and Seven Network .


case_text: rules may apply when material has not been admitted into evidence. In Macquarie Radio Network Pty Ltd v Australian Broadcasting Authority [2002] FCA 1408 Sackville J said at [21]: 'Of course, the position may well be different where leave is sought to inspect affidavits that have not been read in open court. For example, as Santow J recognised in eisa Ltd v Brady, there is a risk of serious injustice if untested allegations contained in affidavits or pleadings can be published to the world at large without the usual constraints of defamation law applying.' I agree with Rares J in Llewellyn that the approach adopted in the Supreme Court of New South Wales, in which different rules apply, is different from the approach adopted by the rules of this Court: see at [21] and [22] of his Honour's judgment. Pursuant to O 46 r 6(1) of the Federal Court Rules , a non-party will generally be entitled to access the pleadings. Accordingly I do not consider the comments of Santow J in eisa Ltd v Brady and Ors [2000] NSWSC 929 at [20] are applicable to this Court in so far as they apply to pleadings. However, in respect of affidavit material which has not been read in Court, the comments of Santow J in respect of affidavits accord with the principle outlined by Sackville J in Macquarie Radio and Seven Network .


case_text: Seven Network Ltd and Anor v News Ltd and Ors (No 2) [2005] FCA 1394 ; (2005) 148 FCR 1 Sackville J said at [27]: '... it seems to me that unless the interests of justice require otherwise, this Court would ordinarily take the view that a non-party should have access to all non-confidential documents and other material admitted into evidence. I say 'ordinarily' because the circumstances of each case will vary and the exercise of the discretion under O 46, r 6 of the Rules will have to take into account the particular circumstances of the case. I agree ... that a convenient touchstone for determining the question of access by non-parties is whether the documents or other material have been admitted into evidence. In general, the application of this principle will serve the interests of open justice. In particular, access to the documentary evidence can be expected to be helpful to a person seeking to understand or explain the proceedings, or to evaluate the Court's determination of the issues arising in the proceedings ...' The above passage was approved by French J in Australian Securities and Investments Commission, in the matter of Richstar Enterprises Pty Ltd (ACN 099 071 968) v Carey (No 2) [2006] FCA 407 at [18] . 0 I agree with Rares J in Llewellyn that the approach adopted in the Supreme Court of New South Wales, in which different rules apply, is different from the approach adopted by the rules of this Court: see at [21] and [22] of his Honour's judgment. Pursuant to O 46 r 6(1) of the Federal Court Rules , a non-party will generally be entitled to access the pleadings. Accordingly I do not consider the comments of Santow J in eisa Ltd v Brady and Ors [2000] NSWSC 929 at [20] are applicable to this Court in so far as they apply to pleadings. However, in respect of affidavit material which has not been read in Court, the comments of Santow J in respect of affidavits accord with the principle outlined by Sackville J in Macquarie Radio and Seven Network .


case_text: criticised Dr Rowe's conclusions as no more than a routine literature search, falling short of establishing that what was shown by the documents to which he referred had entered the common general knowledge of those in Australia experienced in the practical working of formulating drugs for therapeutic use. See Aktiebolaget Hassle v Alphapharma Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [45] and [57]. It is true that Dr Rowe does not, in his several reports, use the words of s 7(2) of the Act "common general knowledge as it existed" in Australia. Nevertheless, on a fair reading of his reports, he does in my view do more than list the matters that he thought could be derived from the publications to which he referred. Dr Rowe first identified the relevant skilled person. He said that during his time at Abbott Laboratories in Sydney in the late 1980s working on new pharmaceutical formulations, he headed a team of six people comprising three analytical chemists and three formulation chemists, as well as several technicians. At the time he had a PhD, and the chemists in the team all had chemistry or pharmacy degrees and between two and fifteen years experience. He said that was the team he considered to be a typical team involved in pharmaceutical formulation, including sustained release formulation, in Australia at the priority date. He went on to say that where in his affidavit he referred to a skilled person, he was referring to what he would have done and what he believed, on the basis of his experiences, other persons with similar experience would be likely to have done at the priority date. Thus, for example, when he later referred (at par 40 of his affidavit) to standard textbooks which he owned "and which would have been routinely referred to by the Skilled Person at the Priority Date", he is to be taken as saying that a team such as the Abbott Laboratories group would have routinely referred to those texts. Throughout his main report (his affidavit) he uses variants of this formulation. Accordingly, when in examining the integers of the various claims, Dr Rowe says that the claims do not "provide anything that is new or surprising or an advance over what was well known and understood by the Skilled Person as at the Priority Date", and that they provide results of routine trial and error testing (at par 78), his opinion is to be understood in the manner I have described. Aspects of Dr Rowe's evidence were challenged (briefly, "given time constraints") by Professor Charman. See pars 161 to 163 of his affidavit of 19 May 2009. It is not possible on an application such as this to come to a conclusion as to which expert's opinion is preferable. That is a matter for close examination at trial. Even taking into account Professor Charman's criticisms, I remain of the view that Dr Rowe's evidence, understood as I have explained it, raises a prima facie case of invalidity for want of an inventive step. Manner of new manufacture


case_text: do not agree that damages will be adequate compensation for Wyeth simply because it will be able to recover lost royalties in reliance on the undertaking, or that potential loss to Wyeth Australia is irrelevant. Similar arguments were rejected by McLelland J in Appleton Papers Inc v Tomasetti Paper Pty Ltd (1983) 3 NSWLR 208 ( Appleton ) at 219: The defendant points out that in substance the plaintiff uses its patent to license the manufacture of paper by others and receives a once-only royalty upon manufacture. It is submitted that if an account of sales by the defendant is kept the damage suffered by the plaintiff is precisely quantifiable. It is also submitted that a distinction should be drawn between the plaintiff and other members of the group in which the plaintiff operates and that it is only the position of the plaintiff that matters. It is submitted that loss of sales or loss of market position by parties further down the distribution chain (whether or not connected with the plaintiff) do not bear upon the balance of convenience between the parties to this litigation. I am unable to accept that potential losses to others with whom the plaintiff is in a relevant commercial relationship dependent upon the validity of the patent, and its effectiveness in conferring a monopoly, are irrelevant to the question of the granting of interlocutory relief. The ability of a party to effectively prevent infringements of its patents must necessarily affect the value of those patents and its commercial standing vis-à-vis others with whom it deals in relation to those patents, and this is not a matter to be ignored, particularly as this kind of injury does not lend itself to ready calculation in monetary terms. The present case is stronger than Appleton because Wyeth is Wyeth Australia's ultimate holding company. Loss to Wyeth Australia thus feeds through directly to Wyeth itself. It is likely that Wyeth Australia (and thus Wyeth) will suffer a loss of market share from Sigma's possible acquisition of up to 50% of the market for venlafaxine products at the expense of Efexor-XR. It was common ground that unlike originator companies that market to medical practitioners, generic companies market direct to pharmacies. Ms Braithwaite, Wyeth Australia's Pharmaceutical Business Director, said that in view of the size of Sigma's sales force and the presence it has at the pharmacy level, which is where the decision and incentive to substitute a generic product for Efexor-XR lies, Sigma's product has the ability to quickly take market share from Efexor-XR, "with consequent considerable and irreparable damage to Wyeth's business". In addition Wyeth Australia is likely to be forced to reduce the price at which it sells Efexor-XR due to discounting by Sigma. The balance of convenience favours the grant of relief. At best Sigma's trade in Evelexa-XR has just commenced. It launched its product on 1 May 2009, the same day on which Wyeth commenced its cross claim. Sigma has commenced taking orders on the basis that the product will be delivered to pharmacies for sale by 1 June 2009. However there is no evidence that any supply contract has been entered into. On the other hand Wyeth has an established trade. It is much more likely to suffer from a disturbance of the status quo than is Sigma. The relevance of this comparison between a new entrant and an established participant in a market is shown by cases such as Appleton (1983) 3 NSWLR at 219 and Pharmacia Italia SpA v Interpharma Pty Ltd (2005) 67 IPR 397 ( Pharmacia Italia ) at [52].


case_text: general principles to be applied are: (a) whether there is a serious question to be tried, or Wyeth has made out a prima facie case in the sense that, if the evidence remains the same, there is a probability that at trial it will be entitled to relief; (b) whether Wyeth will suffer irreparable harm, for which damages will not be an adequate remedy, unless an injunction is granted; and (c) whether the balance of convenience favours the granting of an injunction. See Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57 ( O'Neill ) at [19] and [70].


case_text: if one looks solely to Wyeth's own potential loss, as Sigma contends one should, its undertaking does not adequately protect Wyeth. The probable scenario, if no injunction is granted, is that other generic companies will enter the market. In 2007 and 2008 there were five applications for ARTG registration of products containing venlafaxine. In March 2009 Alphapharm Pty Ltd obtained registration for a venlafaxine product called Enlafax-XR. I accept Wyeth's submission that if Sigma is not restrained, other generic suppliers are unlikely to be restrained, and will enter the market. Once a post-Sigma entity does so, quantification of Wyeth's loss will become impossible. See B Braun Melsungen AG v Terumo Corporation (2004) 61 IPR 71 ( Braun ) at [29]. Sigma's royalty solution depends on a loss of sales of Efexor-XR translating directly into sales of Evelexa-XR. Further, detriment suffered by Wyeth Australia because of Sigma's discounting will not be covered by the undertaking, which is limited to lost sales. It does not cover retained, though discounted, sales. Wyeth's feared loss or damage is summarised at [51] to [58]. Sigma's feared loss is of a different order. It has just entered the market. It has reached that position with its eyes open to the risk. It has incurred setting up and preparation costs well aware of the risk they may be wasted. The evidence is that Sigma has a portfolio of more than 170 products with others planned for launch during 2009 and 2010. Ms Braithwaite's evidence was that Sigma's projected turnover in sales of Evelexa-XR would amount to approximately 0.4% of its total company turnover. In some respects Mr de Alwis' evidence of loss seems exaggerated, such as his claims that Evelexa-XR was to be the jewel in Sigma's crown, that an interlocutory restraint may lead to a decrease in Sigma's share price, and that pharmacists might assume that an injunction reflected adversely on the quality of the product. On this last point, Sigma's own marketing to pharmacists refers to the existence of this patent proceeding and to its undertaking not to list on the PBS until the case is resolved. See also Braun 61 IPR 71 at [30]. As indicated at [56], it is likely that other generic companies will seek to establish their products in the market in competition with Efexor-XR. Ms Braithwaite says that this will lead to intense competition between generic companies. I refer to what I have said at [56] about: For the foregoing reasons, I am of the view that the balance of convenience favours the grant of interlocutory relief.


case_text: discovering the Patent on 6 March 2009 Sigma persisted with its commercial preparations for a launch of its product. In very similar circumstances to those here present, the High Court in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 619 ( Beecham ) dealing with balance of convenience, said at 626: The facts which appear to us to be decisive on this question may be stated quite briefly. In April 1967, after the plaintiff had been building up in Australia a substantial business in ampicillin over a period of several years, the defendant announced its intention of marketing hetacillin in Australia. The plaintiff on 10th May 1967 warned the defendant that if it began to do so proceedings for infringement of the patents would be taken. It was in the face of this warning that the defendant commenced the acts now complained of, and the action was thereafter instituted without delay. Any goodwill the defendant may since have built up for hetacillin would of course be destroyed or damaged by granting an injunction, but that was a risk the defendant took with its eyes open . If it be not restrained, it will presumably take advantage of the time before the hearing to subject the goodwill of the plaintiff's established trade in ampicillin to the prejudice of competition from a product which the defendant maintains has some points of superiority. In no meaningful sense could matters be said to be kept in statu quo if in these circumstances the defendant were left free to pursue its course, merely keeping an account of the profits it makes . (Emphases added.)


case_text: considerations apply where, as here, the party seeking interlocutory relief alleges infringement and the other party alleges invalidity. As to this, in Interpharma 79 IPR 261 at [17] Jessup J said: In such a situation, it will not be enough to ask whether the applicant has shown a serious question, or a probability of success, on his or her own case. While the answer to that question may be in the affirmative, it will then be necessary to consider whether that answer should be qualified by the apparent strength of the defence. In a patent case, the fact of registration constitutes prima facie evidence of validity: AB Hassle v Pharmacia (Aust) Pty Ltd (1995) 33 IPR 63 at 69-70 ( AB Hassle ); GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 ... at [2]-[6] ... It has been said that it is for the respondent to show that want of validity is a triable question: AB Hassle at 69. This seems clear enough, but, in my opinion, the analysis needs to be taken a step further. Is it sufficient that the respondent does show a triable question on validity? In my view, if that is as far as the respondent goes, then, assuming always that the applicant has shown a triable issue on infringement, absent questions of validity, the conclusion would remain that the latter had a triable question. That is to say, as a matter of analysis, unless the case for invalidity is sufficiently strong (at the provisional level) to qualify the conclusion that, overall, the applicant has a serious question, or a probability of success, the court should move to consider the adequacy of damages, the balance of convenience and other discretionary matters. It is the applicant's title to interlocutory relief which is under consideration, and the bottom-line question, as it were, is whether the applicant has a serious question, or a probability of success, not whether the respondent does in relation to some point of defence raised or foreshadowed. The purpose of an interlocutory injunction is to preserve the status quo pending trial. What was said by Gyles J in GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 at [15] is applicable here. A new entrant into the market would have an effect which may be both unpredictable and irreversible. Once Sigma is in the market, it is likely that other generic manufacturers will also come in. I doubt whether, if Sigma is not restrained and Wyeth succeeds at trial, Wyeth will ever be able to resume the position it now occupies. Cf Interpharma 79 IPR 261 at [71]. In my view it is likely that Wyeth will suffer irreparable harm for which damages will not adequately compensate it, unless an injunction is granted.


case_text: (a) and (c) are related in this sense, that whether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties' substantive cases will often be an important consideration to be weighed in the balance: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at [416]; Interpharma Pty Ltd v Commissioner of Patents (2008) 79 IPR 261 ( Interpharma ) at [16]. Special considerations apply where, as here, the party seeking interlocutory relief alleges infringement and the other party alleges invalidity. As to this, in Interpharma 79 IPR 261 at [17] Jessup J said: In such a situation, it will not be enough to ask whether the applicant has shown a serious question, or a probability of success, on his or her own case. While the answer to that question may be in the affirmative, it will then be necessary to consider whether that answer should be qualified by the apparent strength of the defence. In a patent case, the fact of registration constitutes prima facie evidence of validity: AB Hassle v Pharmacia (Aust) Pty Ltd (1995) 33 IPR 63 at 69-70 ( AB Hassle ); GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 ... at [2]-[6] ... It has been said that it is for the respondent to show that want of validity is a triable question: AB Hassle at 69. This seems clear enough, but, in my opinion, the analysis needs to be taken a step further. Is it sufficient that the respondent does show a triable question on validity? In my view, if that is as far as the respondent goes, then, assuming always that the applicant has shown a triable issue on infringement, absent questions of validity, the conclusion would remain that the latter had a triable question. That is to say, as a matter of analysis, unless the case for invalidity is sufficiently strong (at the provisional level) to qualify the conclusion that, overall, the applicant has a serious question, or a probability of success, the court should move to consider the adequacy of damages, the balance of convenience and other discretionary matters. It is the applicant's title to interlocutory relief which is under consideration, and the bottom-line question, as it were, is whether the applicant has a serious question, or a probability of success, not whether the respondent does in relation to some point of defence raised or foreshadowed. The purpose of an interlocutory injunction is to preserve the status quo pending trial. What was said by Gyles J in GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 at [15] is applicable here. A new entrant into the market would have an effect which may be both unpredictable and irreversible. Once Sigma is in the market, it is likely that other generic manufacturers will also come in. I doubt whether, if Sigma is not restrained and Wyeth succeeds at trial, Wyeth will ever be able to resume the position it now occupies. Cf Interpharma 79 IPR 261 at [71]. In my view it is likely that Wyeth will suffer irreparable harm for which damages will not adequately compensate it, unless an injunction is granted. A similar situation existed in Interpharma 79 IPR 261 where the alleged infringer had proceeded with its preparations to enter the market "with its eyes wide open". Jessup J said at [77] that this significantly compromised that party's attempt to resist an injunction which went no further than to maintain the status quo. See also Pharmacia Italia 67 IPR 397 at [38] and Merck & Co Inc v GenRx Pty Ltd (2006) 70 IPR 286 at [19].


case_text: 40(3) of the Act provides that the claims defining the invention must be fairly based on the matter described in the specification. This requires that there be a real and reasonably clear disclosure in the body of the specification of what is then claimed so that the alleged invention as claimed is broadly described in the body of the specification: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood ) at [69]. A lack of fair basis is a ground of invalidity independent and distinct from the others and its determination is a matter of construction for the court: Lockwood at [46]-[48]. Sigma contends that for fair basis purposes it is appropriate to consider the body of the specification prior to its amendment, because any claim supported by material added by the amendment will, because of s 114(1) of the Act, have a later priority date and therefore lack novelty. On this basis Sigma asserts that claims 1 to 17 and 27 are not fairly based on the matter described in the specification insofar as any of them claim the use of a formulation of venlafaxine hydrochloride which does not consist of a spheroid core containing microcrystalline cellulose and HPMC together with venlafaxine coated with an ethyl cellulose and HPMC mixture. For the reasons set out at [21] to [26] I do not accept that fair basis is to be determined by reference to the specification prior to its amendment. In Lockwood 217 CLR at [68]-[69] the High Court said: Erroneous principles . The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis" ... It is wrong to seek to isolate in the body of the specification "essential integer" or "essential feature" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question ... " Real and reasonably clear disclosure ". Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure"... But those words, when used in connection with s 40(3) , do not limit disclosures to preferred embodiments. As was said in Lockwood 217 CLR at [69], the words "real and reasonably clear disclosure" do not limit disclosures to preferred embodiments, or I would add examples. The spheroid core example is just that. Sigma's contention cannot be accepted when the specification is read as a whole. The invention is not limited to the example. It relates to a method of treating patients using a single daily dosing formulation of venlafaxine hydrochloride that provides a peak blood plasma concentration of venlafaxine within a defined period or at a defined level. Under the heading "Brief Description of the Invention" there are consistory style statements, three of which are set out at [10] and [12], that reflect various embodiments of the invention. These provide a description of the invention later claimed. See in particular claims 4 and 9. Nothing in the body of the specification suggests that the description of the invention it contains is wider than the invention claimed. The spheroid example is an example of one embodiment later reflected in a claim upon which Wyeth does not presently rely. See page 4B, lines 17 to 34, page 4C, line 1 and claims 18 and 19. The examples given at page 5 of the specification all deal with coated spheroids and are examples of the formulations referred to at page 4D, lines 5 to 16. For the foregoing reasons, I do not consider Sigma has a prima facie case for invalidity on fair basis. Novelty


case_text: leading cases, including NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655 at 661-666 and Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 at [63] , establish that: (a) the opening words of s 18(1) of the Act "a patentable invention is an invention that" impose a threshold requirement that the "patentable invention" be an "invention", that is to say an alleged manner of new manufacture; (b) that requirement will not be met if, on the face of the specification, the subject matter: (i) lacks the necessary quality of inventiveness under the Statute of Monopolies ; (ii) is not new; (c) a new use of an old substance is not an invention if its known properties make it suitable for that use in such a case the new purpose is no more than analogous to the purposes for which the utility of the substance is already known; and (d) there will be an invention if the new use consists in taking advantage of a hitherto unknown or unsuspected property of the substance.


case_text: similar situation existed in Interpharma 79 IPR 261 where the alleged infringer had proceeded with its preparations to enter the market "with its eyes wide open". Jessup J said at [77] that this significantly compromised that party's attempt to resist an injunction which went no further than to maintain the status quo. See also Pharmacia Italia 67 IPR 397 at [38] and Merck & Co Inc v GenRx Pty Ltd (2006) 70 IPR 286 at [19].


case_title: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655


case_text: balance of convenience favours the grant of relief. At best Sigma's trade in Evelexa-XR has just commenced. It launched its product on 1 May 2009, the same day on which Wyeth commenced its cross claim. Sigma has commenced taking orders on the basis that the product will be delivered to pharmacies for sale by 1 June 2009. However there is no evidence that any supply contract has been entered into. On the other hand Wyeth has an established trade. It is much more likely to suffer from a disturbance of the status quo than is Sigma. The relevance of this comparison between a new entrant and an established participant in a market is shown by cases such as Appleton (1983) 3 NSWLR at 219 and Pharmacia Italia SpA v Interpharma Pty Ltd (2005) 67 IPR 397 ( Pharmacia Italia ) at [52]. A similar situation existed in Interpharma 79 IPR 261 where the alleged infringer had proceeded with its preparations to enter the market "with its eyes wide open". Jessup J said at [77] that this significantly compromised that party's attempt to resist an injunction which went no further than to maintain the status quo. See also Pharmacia Italia 67 IPR 397 at [38] and Merck & Co Inc v GenRx Pty Ltd (2006) 70 IPR 286 at [19].


case_text: Court then approved the following passage from Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 (Gummow J): The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification. The High Court then said (at [69]): Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.


case_text: (a) and (c) are related in this sense, that whether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties' substantive cases will often be an important consideration to be weighed in the balance: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at [416]; Interpharma Pty Ltd v Commissioner of Patents (2008) 79 IPR 261 ( Interpharma ) at [16].


case_text: Section 153B(1) of the Act relevantly provides that: "If the Court is satisfied that a sequestration order ought not to have been made ...the Court may make an order annulling the bankruptcy." Section 153B(1) and its predecessors have been considered in many decisions of this and other Courts. These authorities establish a number of relevant propositions. They are: (1) An order can be made under s 153B(1) of the Act notwithstanding that the applicant has been discharged from bankruptcy; Re Oates; ex parte Deputy Commissioner of Taxation (1987) 17 FCR 402. (2) An applicant who seeks an annulment of his or her bankruptcy "carries a heavy burden". It is incumbent on an applicant "to place before the Court all relevant material with respect to his or her financial affairs so that the Court may be properly informed and may make a judgment that is based on the actual circumstances of the applicant": Re Papps; Ex parte Tapp (1997) 78 FCR 524 at 531. (3) In determining whether or not a sequestration order "ought not to have been made" the Court is not confined to a consideration of whether the order should have been made on the facts known to the Court at the time at which it was made. The Court must take account of facts, known at the time at which the sequestration order was made and at which it determines an annulment application, even if those facts were not before the Court at the time at which the sequestration order was made: Boles v Official Trustee in Bankruptcy (2001) 183 ALR 239 at 243; Re Raymond; ex parte Raymond (1992) 36 FCR 424 at 426. (4) A sequestration order "ought not to have been made" if, on the facts known at the time of the annulment application, the Court would have been bound not to make the sequestration order: Re Frank; ex parte Piliszky (1987) 16 FCR 396. (5) The Court will be so satisfied if it is established that the debtor was not, at the time the sequestration order was made, indebted to the petitioning creditor: Re Deriu (1970) 16 FLR 420 at 422. (6) If the Court is so satisfied, it is not precluded from annulling the bankruptcy because the bankrupt had not sought to have the default judgment set aside or failed to oppose the creditor's petition or failed to seek a review of the sequestration order: Re Raymond; ex parte Raymond (1992) 36 FCR 424 at 426. (7) The power conferred on the Court by s 153B(1) is discretionary in nature. Even if persuaded that the sequestration order ought not to have been made, the Court can, in appropriate circumstances, decline to annul the bankruptcy: Boles v Official Trustee in Bankruptcy (2001) 183 ALR 239 at 243. (8) Considerations which may have a bearing on the exercise of discretion include unexplained delay in the making of the application, whether or not the applicant is solvent, whether or not the applicant has made full disclosure of his or her financial affairs and a failure by the bankrupt to oppose the creditor's petition and attend the hearing at which the sequestration order was made: Re Williams (1968) 13 FLR 10 at 24-5; Boles at 247; Re Papps; ex parte Tapp (1997) 78 FCR 524 at 531; Rigg v Baker [2006] FCAFC 179 at [79] ; Cottrell v Wilcox [2002] FCA 1115 at [7] . Additional considerations are collected in D. A. Hassall, "Annulment of Bankruptcy and Review of Sequestration Orders" (1993) 67 ALJ 761 at 766.


case_text: The Court has an absolute and unfettered discretion to award costs but that discretion must be exercised judicially: see Trade Practices Commission v Nicholas Enterprises Pty Ltd (1979) 42 FLR 213 at 219. Any departure from the ordinary rule that costs should be paid on a party-party basis requires the presence of something special or unusual in the conduct of the case to be demonstrated: see Preston v Preston [1981] 3 WLR 619 at 637. The types of case in which it may be appropriate to award indemnity costs do not fall in any closed categories: see Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991). One type of case in which it has been held that indemnity costs might be ordered is that in which an applicant pursues a hopeless case. In Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 Woodward J said: "I believe that it is appropriate to consider awarding "solicitor and client" or "indemnity" costs, whenever it appears that an action has been commenced or continued in circumstances where the applicant, properly advised, should have known that he no chance of success. In such cases the action must be presumed to have been commenced or continued for some ulterior motive, or because of some wilful disregard of the known facts or the clearly established law. Such cases are, fortunately, rare. But when they occur, the Court will need to consider how it should exercise its unfettered discretion." See also the authorities collected by Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 230-234.


case_title: Cottrell v Wilcox [2002] FCA 1115


case_title: Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397


case_text: There is no doubt that the Court has a discretion, in the interests of justice, to order that Mr Bulic's case should be reopened so that he can adduce further evidence and advance further argument: see Inspector General in Bankruptcy v Bradshaw [2006] FCA 22 at [24] . The availability of "fresh evidence" will, in some circumstances, warrant the reopening of a case. 22 Mr Bulic submits that the documents would establish a number of negative propositions. They are that: • There are no documents held by the respondent which contain any direct proof of Mr Bulic's indebtedness in the sum alleged. • The files appear to have been "culled" and are incomplete. It is also suggested that the documents appear, in some instances, to be confusing and self contradictory. The balance inquiries which, it is said, should be examined by an expert accountant are numerous. They are printouts of computer records on various dates between 1990 and 1992. They relate to each of the four accounts held by Mr Bulic with the respondent and its predecessor. Each records debit and credit entries over a particular period. They appear to have been printed at the instigation of bank officers and used as the basis for the calculation of Mr Bulic's indebtedness from time to time. 23 The respondent accepts that the Court has a discretion to reopen the case but submits that there is nothing in the newly produced material which would warrant such a step being taken. This is because there is nothing in that material which could reasonably be regarded as advancing the case already put by Mr Bulic. It contends that, on the contrary, there is certain documentary material which confirms Mr Bulic's indebtedness to it, in the amounts alleged, at relevant times.


case_title: Re Oates; Ex parte Deputy Commissioner of Taxation (1987) 17 FCR 402


case_title: Re Papps; Ex parte Tapp (1997) 78 FCR 524


case_title: Re Raymond; Ex parte Raymond (1992) 36 FCR 424


case_title: Re Frank; Ex parte Piliszky (1987) 16 FCR 396


case_title: Re Williams (1968) 13 FLR 10


case_title: Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991)


case_title: Trade Practices Commission v Nicholas Enterprises (1979) 42 FLR 213


case_text: Lloyd-Jones FM accepted the essence of the Minister's submissions advanced regarding the lack of viability of the appellants' claims as putative refugees. The Minister submitted that the Tribunal correctly determined their application adversely to them as at the date of the determination. In purportedly applying Minister for Immigration and Ethnic Affairs v Singh (1997) 72 FCR 288 at 294 (Black CJ, Lee, von Doussa, Sundberg and Mansfield JJ), the Tribunal was evidently of the view that the appellant husband's circumstances the subject of his claims had not changed sufficiently since leaving Sir Lanka, and that the claimed threats were no more than further instances of circumstances which the Tribunal considered to have been evident at the time of the appellant husband's departure for Australia.


case_text: In relation to the case that the Tribunal's obligation to consider the appellant husband's claim was not limited to what he put forward in his application, counsel for the appellants referred his Honour to NABE v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 263 ; (2004) 144 FCR 1 (Black CJ, French and Selway JJ) at [55]-[63]. However, Lloyd-Jones FM distinguished NABE [2004] FCAFC 263 ; 144 FCR 1, observing that ' the present case does not fall into that category... [f] or this argument to succeed, the Tribunal would have to be satisfied that the actions of the "gang" was [sic] motivated by political opinion and were not criminally based '. In his Honour's view the Tribunal did not find that the unidentified gang members involved in the assault had ' political motivation nor that their activities were not entirely criminal in nature '. His Honour was satisfied that the Tribunal dealt with the material correctly. 14 On the basis of those findings which I have sought to summarise, the Federal Magistrate dismissed the appellants' application for curial review of the Tribunal's decision. I have difficulty with the proposition that the appellant husband's fear of persecution could not have arisen in the evidentiary context he postulated, notwithstanding the confinement of his political exposure to that of a media advisor to a politician, but seemingly that measure of concern on my part is not strictly necessary or essential to my decision-making. 15 On 25 May 2006 the appellants filed a notice of appeal to the Federal Court which framed three grounds of asserted error on the part of the Federal Magistrate, the same being supported by particulars. During the hearing of the appeal to this Court on 9 November 2006, the appellants sought to rely on an amended notice of appeal. That comprehensively amended notice of appeal contained the following grounds and particulars thereto: '1. His Honour committed an error of law in dismissing the appeal from a decision of the Second Respondent in circumstances where the Second Respondent failed to comply with section 430(1)(c) of the Migration Act 1958 , thereby committing jurisdictional error by not having regard to probative material. Particulars: (a) The Tribunal found "there is no credible evidence to support the Applicant's claim that either the assault on him in 1997, or the assault and theft in 1999, or the alleged assault in March 2004, was politically (rather than criminally) motivated". (b) The Second Respondent had regard to the "Department's file..., which includes the protection visa application and... other material, including that supplied by the Applicant". (c) The Applicant supplied "various media reports" including a newspaper article in The Island entitled "Stage director assaulted by gang", in which it was reported that the Appellant "had been mercilessly assaulted by an armed gang alleged to be supporters of an organiser of the people's alliance" who allegedly said to the Appellant "... what was done to Laxshr (sic) would be done to you". (d) In making a finding that there is no credible evidence to support the allegation of "politically motivated" attack on the Appellant the Tribunal either failed to have regard to such information and/or, if it did, it did not give reasons why that particular piece [of] critical corroborative evidence was not credible (cf section 430(1)(c) of the Act). 2. His Honour further erred in upholding the Second Respondent's decision in circumstances where the Second Respondent constructively failed to exercise jurisdiction and act judicially when making a critical finding as to the nature of persecution faced by the Appellant. Particulars: (a) The Appellant repeats particulars to Ground 1. (b) By its failure to take into account relevant material corroborating the Appellant's claim of a politically motivated attack on him in 1999 the Second Respondent constructively failed to consider the Appellant's claim. (c) The Second Respondent also failed to act judicially by interpreting the proper test of what amounts to persecution too narrowly by limiting its assessment of the nature of the 1999 assault on the Appellant by reference to the Appellant's political opinion as opposed to whether the attack on the Appellant was politically motivated. 3. His Honour further erred in upholding the Second Respondent's decision in circumstances where the Second Respondent failed to consider an integer of the appellants' claim.' Particulars: (a) At the hearing before the Tribunal the appellant said that "the real death threats took place after the former Foreign Minister changed political parties. The Applicant said that he was seen on television on 1 May 2004, and from that moment he received "real threats". (b) The Tribunal then reminded the Appellant that "the only matter raised by him in the complaints he had lodged with the police, related to the threats arising from the 1999 videotaping incident... and that his claimed fear of persecution arising from his political opinion was difficult to accept". (c) However, in his Statutory Declaration dated 27 January 2005 sent to the Tribunal after the hearing, the appellant referred to his evidence at the hearing and reiterated that the alleged death threat he received was "not a criminal act, because I received threats since I [changed] my parties and political opinion". (d) In the preceding circumstances it was incumbent on the Tribunal to consider the claim that arose from the evidence, whether or not explicitly pleaded. (e) It appears the Tribunal considered the claim as articulated in the police complaints report in relation to the 1999 videotaping incident. (f) The Tribunal therefore constructively failed to consider an integer of the appellant's claim.' 16 In the context of the grounds the subject of that amended notice of appeal, counsel for the Minister submitted that the 'Minister does not consent to the appellant lodging an amended notice of appeal but accepts that the prejudice [the Minister] has suffered could be remedied by a costs order'. The Minister therefore requested that leave to amend be subject to an order that the appellants pay the Minister's costs thrown away. Counsel for the Minister further submitted that s 430 of the Migration Act 1958 (Cth) ('the Act') was now being relied upon in substitution for the s 424A ground contained in the original notice of appeal, and 'that being so, all I'm asking for...is that having put in their submission late we did the reasonable thing to make our submission to be prepared on time; they changed the case and we should get costs thrown away'. That submission is correct in principle, but whether or not any significant amount of legal costs were in effect 'thrown away' may well be in reality debateable, and would be a matter for the Court's assessment officer who undertakes the taxation process. In the somewhat complex circumstances of this case, the submission would not be a necessary 'given'. 17 Counsel for the Minister emphasised further complaint in particular in relation to the third ground the subject of the amended notice of appeal, which the Minister contended to be a new ground, and submitted that leave should be refused as it 'was not run below' and was a 'weak ground'. However both parties addressed the Court on the merits or lack of merit thereof. In any event the view I have reached is not anchored to that third ground. 18 In relation to the first ground of appeal, the appellants submitted that the Tribunal did not pay 'realistic regard' to the relevant newspaper article, 'in that [the Tribunal failed to] give reasons why it did not find material contained in that article to be of probative value to the appellant's claim'. The newspaper article, which appeared in the Sri Lankan newspaper The Island , is reproduced, in part, below: 'Stage director assault by gang A prominent stage play producer and director...had been mercilessly assaulted by an armed gang alleged to be supporters of an organiser of the Peoples Alliance at Galle Road close to Waldya road junction in Dehiwela at about 11.55 pm, when the play director was engaged in pasting posters with two of his assistants of the stage play "Prana appakaruwa". ... Speaking to "The Island" [he] said that the gang had with them firearms: "The persons who assaulted me shouted out loudly saying what was done to Laxshr would be done to you". Dehiwela police sources, in this connection, said investigations were being pursued to take suspects into custody.'


case_text: The appellants further submitted that 'it may strongly be inferred that the Tribunal failed to consider an issue and overlooked the material in the newspaper article', the appellants relying on the following dicta of the Full Court decision (French, Sackville and Hely JJ) in WAEE v Minister for Immigration and Multicultural and Indigenous Affairs (2003) 75 ALD 630 at [47], in principled support of that proposition: '[47] The inference that the tribunal has failed to consider an issue may be drawn from its failure to expressly deal with that issue in its reasons. But that is an inference not too readily to be drawn where the reasons are otherwise comprehensive and the issue has at least been identified at some point. It may be that it is unnecessary to make a finding on a particular matter because it is subsumed in findings of greater generality or because there is a factual premise upon which a contention rests which has been rejected. Where, however, there is an issue raised by the evidence advanced on behalf of an applicant and contentions made by the applicant and that issue, if resolved one way, would be dispositive of the tribunal's review of the delegate's decision, a failure to deal with it in the published reasons may raise a strong inference that it has been overlooked.' 20 Though I am not required to make any observation upon the extent of the potential persuasiveness of any segment of the evidence adduced to the Tribunal, I would observe nevertheless that the evident nature and implications of that assault upon a person having a public and at least quasi-political profile would have had inherent potential to be as unforgettable as they would allegedly have been significantly intimidating.


case_text: Counsel for the Minister drew attention to Iyer v Minister for Immigration and Multicultural Affairs [2000] FCA 52 at [36] (O'Connor J), Addo v Minister for Immigration and Multicultural Affairs [1999] FCA 940 at [24] (Spender, O'Connor and Emmett JJ), and Re Minister for Immigration and Multicultural Affairs; ex parte Durairajasingham [2000] HCA 1 ; (2000) 168 ALR 407 at [64] - [66] (McHugh J sitting as a single justice of the High Court), in support of the contention that s 430 of the Act does not impose any duty to deal with adverse material. Counsel submitted in that regard that '[t]he significance of these authorities is that it is not open to a court to infer from the fact that evidence adverse to the findings made by a Tribunal has not been mentioned that it has not been properly considered'.


case_text: Counsel for the Minister drew attention to Iyer v Minister for Immigration and Multicultural Affairs [2000] FCA 52 at [36] (O'Connor J), Addo v Minister for Immigration and Multicultural Affairs [1999] FCA 940 at [24] (Spender, O'Connor and Emmett JJ), and Re Minister for Immigration and Multicultural Affairs; ex parte Durairajasingham [2000] HCA 1 ; (2000) 168 ALR 407 at [64] - [66] (McHugh J sitting as a single justice of the High Court), in support of the contention that s 430 of the Act does not impose any duty to deal with adverse material. Counsel submitted in that regard that '[t]he significance of these authorities is that it is not open to a court to infer from the fact that evidence adverse to the findings made by a Tribunal has not been mentioned that it has not been properly considered'. 22 In Durairajasingham [2000] HCA 1 ; 168 ALR 407 at [64] - [66] , McHugh J observed as follows: '[64] There is some authority in the Full Court of the Federal Court for the proposition that s 430(1) requires the reasons of the tribunal to refer to evidence contrary to findings of the tribunal. However, the contrary view was taken by differently constituted Full Courts in Ahmed v Minister for Immigration and Multicultural Affairs , Addo v Minister for Immigration and Multicultural Affairs and Sivaram v Minister for Immigration and Multicultural Affairs. In Addo, the court said : Section 430 (1) does not impose an obligation to do anything more than to refer to the evidence on which the findings of fact are based. Section 430 does not require a decision-maker to give reasons for rejecting evidence inconsistent with the findings made. Accordingly, there was no failure to comply with s 430(1) of the Act. ... It is not necessary, in order to comply with s 430(1) , for the tribunal to give reasons for rejecting, or attaching no weight to, evidence or other material which would tend to undermine any finding which it made. [65] In my opinion, this passage correctly sets out the effect of s 430(1)(c) and (d). However, the obligation to set out "the reasons for the decision" (s 430(1)(b)) will often require the tribunal to state whether it has rejected or failed to accept evidence going to a material issue in the proceedings. Whenever rejection of evidence is one of the reasons for the decision, the tribunal must set that out as one of its reasons. But that said, it is not necessary for the tribunal to give a line-by-line refutation of the evidence for the claimant either generally or in those respects where there is evidence that is contrary to findings of material fact made by the tribunal... . [66] In this case, the tribunal made an express finding that it did not accept the prosecutor's wife's evidence. That was sufficient to comply with the requirements of s 430(1). '