case_text: In Gararth v Minister for Immigration, Multicultural and Indigenous Affairs [2006] FCA 316 , Wilcox J said at [62] that there is ample authority for the proposition that excessive, unexplained delay will justify the refusal of relief. As to the length of time which will be considered excessive, his Honour said that it must always be necessary for the Court to examine all of the circumstances of the case. 31 Wilcox J went on to say that there is no rigid rule about the length of delay, although a delay of five years would ordinarily be difficult to excuse and two years would require explanation; see at [62] [63]. His Honour referred to the observations of McHugh J in Marks and Madgwick J at first instance in S58 ; see [2004] FCA 451.


case_outcome: cited

case_text: It follows from what I have said, that the discretion to refuse relief miscarried within the well known principle stated in House v The King [1936] HCA 40 ; (1936) 55 CLR 499 at 504 505. It was not open to the learned Federal Magistrate to find that the appellant's delay was lengthy or unsatisfactory upon the basis of untested statements made from the bar table. 46 I will make orders setting aside the orders of the Federal Magistrate and remitting the proceeding to the Federal Magistrates Court. It will of course be a matter for that Court as to whether it is heard by the same or another Federal Magistrate. 47 The appellant sought to tender a bundle of documents as fresh evidence on the appeal. I have considered the documents and in my opinion, they fail the test stated in the well known authorities. I would not admit these documents under s 27 of the Federal Court of Australia Act 1976 (Cth).


case_outcome: referred to

case_text: It should be noted that at [55] their Honours pointed out that the discretion to refuse relief is not to be exercised lightly. This is borne out by the observations of Gaudron J in Enfield City Corporation v Development Assessment Commission [2000] HCA 5 ; (2000) 199 CLR 135 at [56] which were set out. Guidance is also obtained from the quoted remarks of Latham CJ, Rich, Dixon, McTiernan and Webb JJ in R v Commonwealth Court of Concilation and Arbitration; Ex Parte Ozone Theatres (Aust) Limited [1949] HCA 33 ; (1949) 78 CLR 389 at 400 where, after referring to "unwarrantable delay", their Honours said:- "... the court's discretion is judicial and if the refusal of a definite public duty is established, the writ issues unless circumstances appear making it just that the remedy should be withheld."


case_text: Their Honours referred at [51] to the statement of Gibbs CJ in R v Ross-Jones; Ex parte Green [1984] HCA 82 ; (1984) 156 CLR 185 at 194 that if a clear case of want or excess of jurisdiction is made out, the writ will issue almost as of right but the Court retains its discretion to refuse relief if in all the circumstances that seems proper. Gaudron and Gummow JJ said at [52] that this should be accepted as the correct approach. 26 Their Honours went on to say at [53] that the recognition of the discretion involves two separate questions. The first is whether the officer in question has acted in want of or in excess of jurisdiction. It is clear from what their Honours said at [54] that the same principles apply to the grant of all constitutional writs under s 75(v).


case_text: At [22] Scarlett FM observed that delay has always been a bar to relief of the kind sought in the present matter, citing Applicant M70 of 2002 v Minister for Immigration, Multicultural and Indigenous Affairs [2004] FCAFC 132 (" Applicant M70") and Re Commonwealth of Australia; Ex Parte Marks [2000] HCA 67 ; (2000) 177 ALR 491 (" Marks") at 495-6 per McHugh J. The learned Magistrate also made reference to S58 of 2003 v Minister for Immigration, Multicultural and Indigenous Affairs [2004] FCAFC 283 (" S58 "), emphasising that in S58 the Full Court had held it was open to the trial judge in that case to characterise the appellant's delay as poorly or unsatisfactorily explained. 31 Wilcox J went on to say that there is no rigid rule about the length of delay, although a delay of five years would ordinarily be difficult to excuse and two years would require explanation; see at [62] [63]. His Honour referred to the observations of McHugh J in Marks and Madgwick J at first instance in S58 ; see [2004] FCA 451. 32 Although in Marks at [16] McHugh J considered a delay of 17 months to be inexcusable, it should be noted that his Honour's observations were about a person who "with knowledge of the decision" delayed for that period before seeking relief.


case_text: In Re Refugee Review Tribunal; Ex Parte Aala [2000] HCA 57 ; (2000) 204 CLR 82 at [51] [60], Gaudron and Gummow JJ set out what their Honours considered to be the correct approach to the exercise of the discretion to refuse constitutional relief under s 75(v) of the Constitution .


case_text: At [22] Scarlett FM observed that delay has always been a bar to relief of the kind sought in the present matter, citing Applicant M70 of 2002 v Minister for Immigration, Multicultural and Indigenous Affairs [2004] FCAFC 132 (" Applicant M70") and Re Commonwealth of Australia; Ex Parte Marks [2000] HCA 67 ; (2000) 177 ALR 491 (" Marks") at 495-6 per McHugh J. The learned Magistrate also made reference to S58 of 2003 v Minister for Immigration, Multicultural and Indigenous Affairs [2004] FCAFC 283 (" S58 "), emphasising that in S58 the Full Court had held it was open to the trial judge in that case to characterise the appellant's delay as poorly or unsatisfactorily explained.


case_title: S58 of 2003 v Minister for Immigration, Multicultural and Indigenous Affairs [2004] FCA 451

case_text: Wilcox J went on to say that there is no rigid rule about the length of delay, although a delay of five years would ordinarily be difficult to excuse and two years would require explanation; see at [62] [63]. His Honour referred to the observations of McHugh J in Marks and Madgwick J at first instance in S58 ; see [2004] FCA 451.


case_text: The learned Federal Magistrate recorded a concession made by the Minister's counsel that the RRT had failed to comply with the requirements of the Act to provide the appellant with an opportunity to be heard. Reference was made to Xie v Minister for Immigration and Multicultural Affairs [1999] FCA 1480 ; (1999) 95 FCR 543 in which Cooper J held that an applicant's failure to respond to an invitation does not entitle the RRT to assume that the person does not wish to attend. Federal Magistrate Scarlett also recorded the Minister's concession that this was an error going to jurisdiction. 14 His Honour then referred at [15] [16] to the Minister's submission that relief should be refused on discretionary grounds because of the appellant's "unwarrantable" and "extraordinary" delay. 15 The Federal Magistrate noted that the appellant did not file written submissions. However, his Honour recorded what he apparently considered to be the substance of the appellant's oral submissions. Most of what was recorded by the Federal Magistrate at [17] [21] consisted of evidence given to the Federal Magistrate from the bar table. There is no suggestion that the appellant filed any affidavit evidence or that he entered the witness box. 16 At [17] the learned Federal Magistrate states that the appellant told the Court that he was not aware of the decision of the RRT until it was translated for him at Court. That was, clearly enough, a reference to the hearing before the Federal Magistrate on 28 November 2005. 17 The Federal Magistrate went on to record at [18] that the appellant said that he did not attend the hearing, that is to say the hearing before the RRT, because he did not receive a letter notifying him, otherwise he would have gone. 18 The Federal Magistrate also recorded at [18] that the appellant said that when he was in immigration detention, he wanted to bring a case but he did not have money for a lawyer. 19 At [19] the learned Federal Magistrate recorded that the appellant had said he believed he had been placed in detention "because he had become illegal" and that he had only commenced the proceeding after he was interviewed by Chinese Government officials. This had caused him to fear persecution if he was returned to China.


case_outcome: followed

case_text: SZKCE v Minister for Immigration and Citizenship [2008] FCA 1814 , which was also an application for leave to appeal, I stated the following at paragraphs 15 to 17: Applications for leave to appeal may be heard either by a Full Court or by a single judge: s 25(2)(a) Federal Court of Australia Act 1976 (Cth). The principles relevant to a grant of leave are not in doubt, the root authority being Décor Corp v Dart Industries Inc (1991) 3 FCR 397. Those principles are, firstly, whether in all the circumstances the decision is attended with sufficient doubt to warrant its being considered by the Full Court and, secondly, whether substantial injustice would result if leave were refused supposing the decision to be wrong. Later in time and in the context of an application for leave to appeal from a decision of the Federal Magistrates Court dismissing an application for the judicial review of a decision of the Tribunal, Hely J remarked in NACA v Minister for Immigration and Multicultural Affairs [2003] FCA 659 at [12] that an applicant "had to show an arguable case that the RRT's decision should be quashed on the grounds of jurisdictional error". Whether a judgment is interlocutory, rather than final, and hence requires a grant of leave to appeal by virtue of s 24(1A) of the Federal Court of Australia Act is sometimes a question of considerable nicety. It is the legal effect of a judgment, rather than its practical effect, that is determinative of the question whether a judgment is final or interlocutory. The present case nicely illustrates the point. The refusal by the Federal Magistrates Court on 12 November 2007 to set aside the order of dismissal made on 12 October 2007 and to reopen the proceeding for the judicial review of the Tribunal's decision did not have the legal effect of finally determining as between the Applicant and the Minister the merits of that proceeding. However, the practical effect of the refusal to reopen was to leave in place the order of dismissal of the challenge to the Tribunal's decision. That, in turn, had the practical effect of leaving standing the decision of the Tribunal affirming the refusal to grant the Applicant a protection visa. An appreciation of the practical effect that some, strictly interlocutory judgments may nonetheless have led Branson J in Johnston v Comcare [2002] FCAFC 251 ; (2002) 124 FCR 160 at [8] to observe that leave to appeal is more readily granted where a decision, if allowed to stand, will have "the practical effect" of determining a claim of an applicant to be entitled to an order, rather than in a case concerning practice and procedure only. I have approached the question of whether to grant leave in this case with this sentiment in mind. In the present case, the refusal by the Federal Magistrates Court to set aside the earlier order of dismissal had exactly the same practical effect, so far as the Applicant is concerned, to that which I have described in the passage quoted. I therefore take into account all of the principles set out in the passage quoted in deciding this application.


case_outcome: applied

case_text: its heart, this is a case where an applicant did not attend before the Tribunal and the Tribunal went on to determine the application on the basis of the material then to hand. It seems to me that the circumstances of the case before the Tribunal are not relevantly distinguishable from those which grounded the decision of the Full Court in Minister for Immigration and Multicultural and Indigenous Affairs v VSAF [2005] FCAFC 73 (VSAF). In that case, at para 24, the Full Court made reference to and followed an earlier Full Court decision, NAST v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 208 (NAST). There, too, an Applicant had failed to attend a hearing and the Tribunal proceeded to make its decision without taking any further steps to enable him to attend. The Full Court in NAST held that this was a course that the Tribunal was entitled to adopt. That was followed by the Full Court in VSAF . Those decisions bind me, as they did the Federal Magistrate.


case_text: that case, at para 24, the Full Court made reference to and followed an earlier Full Court decision, NAST v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 208 (NAST). There, too, an Applicant had failed to attend a hearing and the Tribunal proceeded to make its decision without taking any further steps to enable him to attend. The Full Court in NAST held that this was a course that the Tribunal was entitled to adopt. That was followed by the Full Court in VSAF . Those decisions bind me, as they did the Federal Magistrate.


case_text: In Adams v Lambert ('Adams') [2006] HCA 10 ; (2006) 225 ALR 396 the High Court held that a misdescription of the statutory source of an entitlement to claim interest on a judgment debt was a formal defect or irregularity within the purview of s 306 of the Bankruptcy Act 1966 (Cth) ('the Act'). However, in the present proceedings, Federal Magistrate Driver found that a misdescription of the statute under which post-judgment interest was claimed was a substantial defect in the bankruptcy notice which could not be cured by reference to that provision. 2 Thus, the learned Federal Magistrate's decision appears, at first sight, to be at odds with the unanimous judgment of the High Court in Adams. The principal question which arises on this appeal, therefore, is whether his Honour correctly applied the principles stated by the High Court. 3 In deciding that the defect was substantive, Driver FM had regard to the certificate supporting the bankruptcy notice which stated that interest was not payable on the amount claimed whereas the bankruptcy notice claimed interest in the sum of $16,509.96. 4 His Honour accepted that this was a claim for post-judgment interest but he took into account the terms of an earlier bankruptcy notice served on the debtor which made no claim for interest. His Honour concluded that this, coupled with the misdescription of the statute under which post-judgment interest was claimed (and an incorrect reference in the costs certificate to a provision in the Legal Profession Act 1987 (NSW) dealing with pre-judgment interest) would have left the debtor "hopelessly confused" as to what was necessary to comply with the notice. 5 The creditor appeals against his Honour's order dismissing the petition. He seeks an order under s 52(1) of the Act. However, if the appeal is allowed a difficulty arises because the creditor's petition appears to have lapsed under s 52(4) of the Act, in the circumstances referred to below. 6 The appellant, Mr Snelgrove, is a solicitor. In legal proceedings which appear to have a long history dating back to the 1990's, he represented a company of which Mr Roskell was a shareholder and director. The proceedings were unsuccessful, the company went in to liquidation, and Mr Snelgrove claimed his costs from Mr Roskell personally. 7 Driver FM found at [4] that in the course of the proceedings Mr Roskell agreed to become personally liable for the costs, although he later sought to dispute his liability. As a result, Mr Snelgrove brought proceedings against Mr Roskell in the Supreme Court of New South Wales. 8 On 15 May 2000, a costs assessor of that Court issued a certificate as to determination of costs in the amount of $33,967.62. This was the certificate upon which bankruptcy notice NN3366/04 was founded. 16 His Honour heard Mr Snelgrove's creditor's petition against Mr Roskell on 12 August 2005 prior to the decision of the High Court in Adams. The petition was filed on 26 April 2005. 17 The only ground on which Mr Roskell opposed the petition was that he was not personally liable for the debt. His Honour satisfied himself that this objection had no substance but during the hearing he raised two issues concerning the validity of the bankruptcy notice. Mr Roskell was not legally represented and was happy to adopt those points as grounds of opposition to the petition; see at [5]. 18 The first ground was that the certificate stated that interest was not payable on the amount of costs assessed but the bankruptcy notice claimed interest of $16,509.96. 19 The second ground was the incorrect statement of the statutory source of liability for post-judgment interest. 20 Having raised both of these issues, his Honour adjourned the matter pending delivery of the judgment by the High Court in Adams. A fter the decision in Adams was handed down, Driver FM called for written submissions to be delivered by the parties by 26 April 2006 . He then determined the matter, delivering judgment on 6 June 2006. 21 When his Honour handed down judgment he noted, at footnote 11, that there may be a third error in the bankruptcy notice because of the illegible certificate of judgment attached to the notice. He noted that judgment was entered in the Local Court on 22 June 2000 but queried whether the annexure satisfied the description of a certificate of judgment. However, this issue was not raised before Driver FM and his Honour did not deal with it. 22 His Honour described the bankruptcy notice and the certificate of judgment attached to it as "scrappy". 23 It was in this context that he went on to deal with the two errors that he had identified. 24 His Honour seems to have proceeded on the basis that the statement in the costs certificate that interest was not payable was an error. He described it as an error in [16] although he accepted the appellant's submission that it was a reference to pre-judgment interest. It would have followed from this that the statement was perfectly correct, the only error being the incorrect reference to s 203E of the Legal Profession Act . 25 Indeed, his Honour went on to say that if the correct provision of the Legal Profession Act had been identified, Mr Roskell could probably have worked out that the statement in the costs certificate referred only to pre-judgment interest. 26 His Honour then referred to the second error, namely the statement in the interest calculation attached to the bankruptcy notice, that interest was claimed under s 85 of the District Court Act . He referred in this regard to the fact that the reference to the District Court (Civil Claims) Act had been struck out. 27 The learned Federal Magistrate then went on to deal with these errors upon the footing that they were compounded by the fact that this was the second bankruptcy notice served on Mr Roskell; see at [18]. 28 The substance of his Honour's reasons appears in the following two paragraphs as follows: [19] Mr Roskell was then confronted with a second bankruptcy notice which claimed a smaller principal sum than the first bankruptcy notice but which included a claim of interest in the sum of $16,509.96 making a total of $50,477.58. In my opinion, a debtor in the position of Mr Roskell would have been left hopelessly confused. Interest was initially not claimed and then claimed. The certificate of judgment annexed to both bankruptcy notices appeared to indicate that no interest was payable . . It would have been next to impossible for him to check his liability because both the certificate of judgment and the bankruptcy notice referred to incorrect statutory provisions. [20] It is true that Mr Roskell could have disputed the claim of interest on the second bankruptcy notice by giving notice pursuant to s.41(5). He did not do so. However, in my view, the bankruptcy notice, coupled with the costs certificate and the earlier bankruptcy notice was so confusing as to have left Mr Roskell in no position to determine whether he was entitled to make such a claim. Notice pursuant to s.41(5) must be given before the time for compliance with the bankruptcy notice expires. It is now too late for such a notice to be given. In my view, the confusion created by the errors in the second bankruptcy notice and its attached certificate gave rise to confusion resulting in injustice which is now irremediable. It follows that the defects are substantive and not formal and cannot be corrected pursuant to s.306 of the Bankruptcy Act . 29 The High Court said in Adams at [18] that if there is a failure to comply with a provision of the Bankruptcy Act or the Regulations, the first question which must be asked is whether the defect or irregularity is a formal one within the purview of s 306. If it is, it is then necessary to ask whether substantial injustice has been caused by the defect or irregularity and whether the injustice cannot be remedied by an order of the Court. It must be borne in mind that these are separate and distinct questions. 30 The first question, that is, whether the defect or irregularity is formal, involves two levels of enquiry. These were stated by an earlier decision of the High Court in Kleinwort Benson Australia Ltd v Crowl [1988] HCA 34 ; (1988) 165 CLR 71, and applied in Adams at [25]ff. 31 The relevant enquiry is: does the bankruptcy notice fail to meet a requirement made essential by the Act or the Regulations; or could it reasonably mislead a debtor as to what is necessary to comply with the notice; see Kleinwort Benson at 79; Adams at [25]. 36 Moreover, consistently with the observation of the Court in Adams , it cannot be said that a mistaken reference to the section of the Legal Profession Act could be said to have been an essential requirement for validity of the notice or to have misled the debtor as to what was necessary to comply with it. 37 Upon the proper construction of the bankruptcy notice as a whole, it was plain that interest was being claimed only post-judgment. The notice stated in express terms that judgment was entered in the Local Court on 22 June 2000 and that interest was claimed for the period from 22 June 2000 to 15 December 2004. This appeared in (b) and (c) of the interest calculation attached to the notice. The summary of interest calculation in (c) set out precisely how the amount of $16,509.96 was calculated for that period. 38 The bankruptcy notice in the present case is therefore indistinguishable from the notice in Adams . That is to say the only defect was the second error identified by Driver FM, namely an incorrect citation of the source of entitlement to post-judgment interest. That was a formal defect within the purview of s 306 of the Act, not a substantive one as found by the Federal Magistrate; see Adams at [32] [34]. 39 There was no suggestion in the present case that post-judgment interest was incorrectly calculated. Indeed the figure seems to have been correct, the rate prescribed under the District Court Act being exactly the same as that prescribed from time to time under the Local Courts (Civil Claims) Act . 40 The learned Federal Magistrate's view that a debtor in Mr Roskell's position would have been hopelessly confused cannot, with respect, be sustained. As I have already said, the bankruptcy notice, considered as a whole, made it plain that interest was only claimed for the period after judgment. 44 Mr Roskell asserted that the errors in the bankruptcy notice, when viewed together, were sufficient to render it invalid. He referred in his written submissions to the citation of the wrong statutory provisions and the fact that interest was claimed notwithstanding the note in the costs certificate that interest was not claimed. These submissions are contrary to the plain construction of the notice and to the observations of the High Court in Adams. 45 Mr Roskell also contended that a certificate of judgment was not annexed to the bankruptcy notice. I will deal with that issue below. 46 Mr Roskell appeared in person on the appeal. He argued, strenuously and with apparent conviction, that he was not personally liable for the costs, or at very least that the amount was overstated. 49 In summary therefore, in my opinion the learned Federal Magistrate failed to correctly apply the principles stated in Adams . The only defect in the bankruptcy notice was a formal one which fell within the purview of s 306. There was no substantial injustice caused by the defect. 50 Mr Roskell did not file a notice of contention in accordance with O 52 r 22(3) of the Federal Court Rules . However, he submitted that "a copy of the record of judgement [sic]" was not attached to the bankruptcy notice. Since he was not legally represented, I took this to be a submission to the effect that the notice was affected by a defect, analogous to the further issue mentioned by the Federal Magistrate and which I set out above at [20]. This was whether the costs certificate satisfied the description of a certificate of judgment. Accordingly, I propose to grant leave to Mr Roskell, nunc pro nunc, to raise this submission without the need to file a notice of contention. 58 Here the petition was presented on 26 April 2005 but, at the creditor's request, the Federal Magistrate adjourned it pending the delivery of judgment in Adams . At the time when the adjournment was granted, no consideration seems to have been given to the question of the lapsing date of the petition. 59 The Federal Magistrate's order dismissing the petition was made on 6 June 2006, more than twelve months after the petition was presented. 60 Nor was any application apparently made before the lapsing date for an extension of time under s 52(5).


case_text: In determining whether a bankruptcy notice could reasonably mislead a debtor the court is not confined to an examination of the notice; it may look at facts extraneous to the notice, including the terms of an earlier bankruptcy notice served on the debtor; see Re Wimborne; Ex parte the Debtor (1979) 24 ALR 494 (Lockhart J); Clyne v Deputy Commissioner of Taxation (1982) 42 ALR 703 (Lockhart J); Roufos v Andrea (1981) 57 FLR 10 at 15-16 (Deane, Fisher & Fitzgerald JJ).


case_text: The form prescribed by the Bankruptcy Regulations requires the notice to attach a copy of the judgment or order relied upon; see Reg 4.02 and Form 1; see also Franks v Warringah Council [2003] FCA 1047 ; (2003) 131 FCR 287 at [12] . 52 The schedule to Form 1 provides, in note 1, that if legal costs are claimed in the notice, a certificate of the assessed costs must be attached to the notice. The certificate is, upon filing in the office or registry of a court of competent jurisdiction, taken to be a judgment of that Court for the amount of the unpaid costs; Legal Profession Act , s 208J(3). 53 However, a certificate that sets out a determination of the costs assessor, without being filed in a court of competent jurisdiction, is not sufficient to found a bankruptcy notice; Franks at [27]. 54 Here, there was evidence in the affidavit of Mr Snelgrove filed on 5 July 2005 that judgment was entered in the Local Court on 22 June 2000. Also Ms Rachel Menassa's affidavit of 17 December 2004 deposes to the fact that a certificate of judgment was obtained from the Local Court on 22 June 2000 and she annexes that document to her affidavit. This was the backsheet from the Local Court with the attached costs certificate in the same form as was annexed to the bankruptcy notice. 55 It follows in my view that there was evidence before the Federal Magistrate that the costs certificate was filed in a court of competent jurisdiction. It is therefore taken to be a judgment of the Local Court and it was annexed to the bankruptcy notice. This was sufficient to found the notice. 56 Section 52(4) of the Act provides that a creditor's petition lapses twelve months after the date of presentation, unless before that time a sequestration order is made or the petition is dismissed or withdrawn. 57 Provision is made for an extension of the twelve month period but s 52(5) provides, expressly, for the extension to be obtained before the expiration of the initial twelve month period.


case_text: The first question, that is, whether the defect or irregularity is formal, involves two levels of enquiry. These were stated by an earlier decision of the High Court in Kleinwort Benson Australia Ltd v Crowl [1988] HCA 34 ; (1988) 165 CLR 71, and applied in Adams at [25]ff. 31 The relevant enquiry is: does the bankruptcy notice fail to meet a requirement made essential by the Act or the Regulations; or could it reasonably mislead a debtor as to what is necessary to comply with the notice; see Kleinwort Benson at 79; Adams at [25].


case_title: Makhoul v Barnes (1995) 60 FCR 572

case_text: However, the learned Federal Magistrate declined to exercise his discretion to go behind the judgment, satisfying himself that there was no substance in Mr Roskell's objection. It is true that in an appropriate case, where substantial reasons are shown, the Court may exercise a discretion to go behind the judgment debt; see Wren v Mahony [1972] HCA 5 ; (1972) 126 CLR 212 at 224-225; Makhoul v Barnes (1995) 60 FCR 572 at 580-582. But in the present case, no error has been demonstrated in the Federal Magistrate's determination of this question.


case_text: Regulation 4.02 and Form 1 of the Bankruptcy Regulations 1996 (Cth) requires the bankruptcy notice to state the provision under which interest is being claimed. Here, interest was not being claimed on pre-judgment costs. Accordingly, I do not see how the Regulations contained any requirement with respect to this statement, let alone one which would strike down as invalid an act done in breach of it within the principles stated in Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28 ; (1998) 194 CLR 355 at [93] .


case_text: A Full Court has stated in explicit terms that the life of a bankruptcy petition cannot be extended after the petition has lapsed; see Re Young; Ex parte Smith (1985) 5 FCR 204 (Bowen CJ, Sweeney and Lockhart JJ). Notwithstanding this, orders have been made extending a petition after the expiry date pursuant to the 'slip rule'; see for example Re Howell; Ex parte Commissioner of Taxation (1996) 70 FCR 261 (Burchett J). The authorities are summarised in the 5 th Edition of McDonald, Henry & Meek Australian Bankruptcy Law & Practice at [52.5.05].


case_title: Re Wimborne; Ex parte the Debtor (1979) 24 ALR 494


case_title: Re Young; Ex parte Smith (1985) 5 FCR 204


case_title: Roufos v Andrea (1981) 57 FLR 10


case_text: The principle I intend to apply is that if a plaintiff earns any money which he is not able to collect, he is not to be charged with that money. I have not been able to find any Anglo-Australian authority on point but I did come across a decision of the New York Court of Common Pleas that is in point. The case is Bassett v French 64 NY St Rep 292 (1895). The action was for damages for wrongful dismissal. As regards the assessment of damages Pryor J said of the plaintiff: "He was bound only to reasonable diligence in quest of other employment, and the proof is that he fulfilled the obligation. Having credited the defendant with every dollar he actually received, he is not responsible for money he earned but could not collect." [citations omitted] 31 Although consultancy fees were credited to Mr Hem's account in the books of SSSA, the fees were not paid, the company is no longer in business, and it is unlikely to have assets to discharge the debt. At least Mr Cant, on whom the onus falls, has not shown otherwise. Thus, there will therefore be no deduction from the claim. 32 The appeal will be allowed and Mr Cant will be directed to admit Mr Hem's proof for $75,000. On the question of costs, I think that Mr Hem should have them on a solicitor and client basis save for the costs incurred on 3 October 2006. Not only was Mr Hem successful on the appeal, on the evidence available to Mr Cant he had no basis for rejecting the proof. I have excluded the costs of 3 October 2006 because they were incurred when Mr Hem applied for and was granted leave to reopen his case and tender additional evidence. The costs of that day (also on a solicitor and client basis) should be borne by Mr Hem. I certify that the preceding thirty-two (32) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein. Associate: Dated: 9 February 2007 Counsel for the Plaintiff: Ms A Kaitinis Solicitor for the Plaintiff: John Curtain & Associates Counsel for the Defendant: Mr A Sandbach Solicitor for the Defendant: Lennon Settle Mazzeo Solicitors Date of Hearing: 2 and 3 October 2006 Date of Judgment: 9 February 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/81.html


case_text: As to the applicable principles I will refer to only two cases. The first is Easling v Mahoney Insurance Brokers Pty Ltd (2001) 78 SASR 489 a decision of the Full Court of the Supreme Court of South Australia. There Olsson J (who was in dissent on other grounds) said (at 514): "First it is necessary to address the concept of constructive dismissal. This was explored by me in some detail in Blaikie v SA Superannuation Board (1996) 65 SASR 85. I adhere to what I there said at pages 102-105. Suffice to reiterate that the notion of constructive dismissal implies the existence of conduct on the part of an employer which is plainly inimical to a continuance of a contract of employment according to its express or implied terms. The authorities establish the concept that there is implied in a contract of employment a term that the employer will not, without reasonable and proper cause, conduct itself in a manner calculated or likely to destroy or seriously damage the relationship of confidence and trust between employer and employee. An intention to repudiate need not be proved. Rather, it is a matter of objectively looking at the employer's conduct as a whole and determining whether its effect, judged reasonably and sensibly, is such that the employee cannot be expected to put up with it."


case_text: This brings me to the quantum of Mr Hem's claim. It was not seriously disputed that Mr Hem was entitled to twelve months notice of termination. He had worked for the company for more than twenty years. He was its most senior employee. He received a salary of approximately $62,000 per annum together with a motor vehicle worth $15,000 per annum. He had put his own money into the company's business with the expectation of obtaining a 10 per cent interest. It was anticipated that he would remain with the company for the rest of his life. In the event he left, he would have difficulty finding alternative employment. Cases such as Dyer v Peverill [1979] 2 NTR 1; Quinn v Jack Chia (Australia) Ltd [2000] VSCA 75 ; [1992] 1 VR 567; O'Donnell v GIO Insurance Ltd (1996) 64 IR 297; Caulfield v Broken Hill City Council (1995) 60 IR 211; Rankin v Marine Power International Pty Ltd (2001) 107 IR 117 show that in these circumstances a reasonable period of notice would be twelve months.


case_text: As regards the application of the principles, there are several instances where a single incident of verbal abuse has given rise to a successful claim for constructive dismissal. So, in Isle of Wight Tourist Board v Coombes [1976] IRLR 413 a director said of his secretary: "She is an intolerable bitch on a Monday morning", leading Bristow J to find there had been a constructive dismissal. In Courtaulds Northern Textiles Ltd v Anderson [1979] IRLR 84 an assistant manager said to an employee: "You can't do the bloody job anyway", not believing this to be true. Again constructive dismissal was established. In Robinson v Compton Parkinson Ltd [1978] ICR 401 an employee who was falsely accused of theft was found to have been "constructively dismissed". Likewise in Moores v Bude-Stratton Town Council [2000] IRLR 676 where an employee was called: "a lying toe-rag".


case_title: Dyer v Peverill [1979] 2 NTR 1


case_text: As to the applicable principles I will refer to only two cases. The first is Easling v Mahoney Insurance Brokers Pty Ltd (2001) 78 SASR 489 a decision of the Full Court of the Supreme Court of South Australia. There Olsson J (who was in dissent on other grounds) said (at 514): "First it is necessary to address the concept of constructive dismissal. This was explored by me in some detail in Blaikie v SA Superannuation Board (1996) 65 SASR 85. I adhere to what I there said at pages 102-105. Suffice to reiterate that the notion of constructive dismissal implies the existence of conduct on the part of an employer which is plainly inimical to a continuance of a contract of employment according to its express or implied terms. The authorities establish the concept that there is implied in a contract of employment a term that the employer will not, without reasonable and proper cause, conduct itself in a manner calculated or likely to destroy or seriously damage the relationship of confidence and trust between employer and employee. An intention to repudiate need not be proved. Rather, it is a matter of objectively looking at the employer's conduct as a whole and determining whether its effect, judged reasonably and sensibly, is such that the employee cannot be expected to put up with it." 22 The second case is Thomson v Orica Australia Pty Ltd (2002) 116 IR 186. In that case Allsop J described constructive dismissal in the following terms: "Constructive dismissal is an unlawful termination of the contract of employment in circumstances where the employee leaves, without an express act or enunciation of 'dismissal' by the employer. It will be taken to be a dismissal (hence the word 'constructive') if the employer has behaved towards the employee in a way that entitles the employee to treat the employment as at an end. How that behaviour of the employer is to be described is at the heart of the matter. One difficulty in a simple enunciation of the common law principle is the existence of legislation and caselaw on closely related topics. However, if one is to approach the matter in straightforward contractual terms there is ample authority for the implication of a term in a contract of employment that the employer will not, without reasonable cause, conduct itself in a manner likely to damage or destroy the relationship of confidence and trust between the parties as employer and employee." [citations omitted] Allsop J went on to state that: "Breach of that implied term will entitle the employee to treat himself or herself as wrongfully dismissed. " He cited with approval the judgments of Olsson J in Blaikie v South Australian Superannuation Board and in Easling v Mahoney Insurance Brokers Pty Ltd which he said: "expressed the principle with clarity."


case_title: Isle of Wight Tourist Board v Coombes [1976] IRLR 413


case_title: Moores v Bude-Stratton Town Council [2000] IRLR 676


case_title: O'Donnell v GIO Insurance Ltd (1996) 64 IR 297


case_title: Quinn v Jack Chia (Australia) Ltd [2000] VSCA 75 ; [1992] 1 VR 567


case_title: Rankin v Marine Power International Pty Ltd (2001) 107 IR 117


case_title: Robinson v Compton Parkinson Ltd [1978] ICR 401


case_text: I do not discount the possibility that Mr Coulson asked Mr Hem to resign. I rather think that something along those lines was suggested. Having accused him of theft it would not be surprising had Mr Coulson asked Mr Hem to resign. By the time of the conversation the ill-will between the two was significant. If Mr Hem had been asked to resign to avoid a dismissal that would be equivalent to an actual dismissal. In Sheffield Oxford Controls Co Ltd [1979] ICR 396, in delivering the judgment of the Employment Appeal Tribunal, Arnold J said (at 402): "It is plain, we think, that there must exist a principle, exemplified by the four cases to which we have referred, that where an employee resigns and that resignation is determined upon him because he prefers to resign rather than be dismissed (the alternative having been expressed to him by the employer in the terms of a threat that if he does not resign he will be dismissed), the mechanics of the resignation do not cause that to be other than a dismissal. The cases do not in terms go further than that. We find the principle to be one of causation. In cases such as that which we have just hypothesised, and those reported, the causation is the threat. It is the existence of the threat which causes the employee to be willing to sign, and to sign, a resignation letter or be willing to give, and to give, the oral resignation. But where that willingness is brought about by other considerations and the actual causation of the resignation is no longer the threat which has been made but is the state of mind of the resigning employee, that he is willing and content to resign on the terms which he has negotiated and which are satisfactory to him, then we think there is no room for the principle to be derived from the decided cases." 20 In the end it is not necessary for me to rule on any of the disputed aspects of the conversation between Mr Hem and Mr Coulson. The reason is that it is not in dispute that during the discussion Mr Hem was accused of being a thief. In the absence of any justification (and none was proffered) that accusation constitutes what in some cases is referred to as a "constructive dismissal".


case_text: The second case is Thomson v Orica Australia Pty Ltd (2002) 116 IR 186. In that case Allsop J described constructive dismissal in the following terms: "Constructive dismissal is an unlawful termination of the contract of employment in circumstances where the employee leaves, without an express act or enunciation of 'dismissal' by the employer. It will be taken to be a dismissal (hence the word 'constructive') if the employer has behaved towards the employee in a way that entitles the employee to treat the employment as at an end. How that behaviour of the employer is to be described is at the heart of the matter. One difficulty in a simple enunciation of the common law principle is the existence of legislation and caselaw on closely related topics. However, if one is to approach the matter in straightforward contractual terms there is ample authority for the implication of a term in a contract of employment that the employer will not, without reasonable cause, conduct itself in a manner likely to damage or destroy the relationship of confidence and trust between the parties as employer and employee." [citations omitted] Allsop J went on to state that: "Breach of that implied term will entitle the employee to treat himself or herself as wrongfully dismissed. " He cited with approval the judgments of Olsson J in Blaikie v South Australian Superannuation Board and in Easling v Mahoney Insurance Brokers Pty Ltd which he said: "expressed the principle with clarity."


case_text: It is appropriate to impose penalties because the relevant breaches were numerous and occurred over a period of nearly two years. I also accept the submission of counsel for the Union that the breaches were ones which offended an important regulatory regime. It is a regulatory regime designed to stop flagrant exploitation of outworkers in an industry notorious for such behaviour; see Clothing and Allied Trades Union v J & J Saggio Clothing Manufacturers Pty Ltd (1990) 34 IR 26 at 37, per Gray J. The breaches are serious and appear to have been committed in defiance of Part 9 of the Award. 31 Given the above factors, it would ordinarily be appropriate to order a high range penalty in respect of the breach of each term of the Award. However, a countervailing factor is that there is no evidence of any prior offending behaviour by Southern Cross. Also, Mr Leongue, when interviewed by Union officials did not attempt to conceal the Award breaches and co-operated with the Union.


case_text: In Textile Clothing and Footwear Union of Australia v Lotus Cove Pty Ltd [2004] FCA 43 , Merkel J found that various breaches of cl 46 and cl 48 of the Award had occurred over a period of about one year. He imposed a penalty of 60 per cent of the maximum available on Lotus Cove for breach of the requirement to register imposed by cl 48.1. He imposed no additional penalty on Lotus Cove for related breach of cl 46.1.3 for failing to make an application to register. 33 The circumstances prevailing in this matter and the circumstances in Lotus Cove are very similar, save that the period of time over which the breaches occurred in this instance is almost twice as long. As with Southern Cross, Lotus Cove co-operated with officers of the Union and did not try to hide the breaches from them. 34 Given the similarity between the two matters I would ordinarily take the same approach and impose a penalty on Southern Cross of 60 per cent of the maximum of $33,000, being $19,800. However, Southern Cross was advised of the outcome of the Lotus Cove case by a letter dated 2 September 2004 and still failed to apply to register under Part 9 of the Award. In these circumstances a penalty of 70 per cent of the maximum is more appropriate, being a penalty of $23,100. That penalty will be imposed in respect of cl 48.1 of the Award. Although the non-observance of cl 46.1.3 is technically another breach of a term of an award, consistently with the reasoning of Merkel J in Lotus Cove at [49], I consider that the breach of cl 48.1 and that of cl 46.1.3 to "essentially relate to one omission". That omission was the failure to apply for and achieve registration. Consequently, no additional penalty will be imposed for the breach of cl 46.1.3 of the Award. 35 In Lotus Cove at [50], Merkel J imposed a single penalty of 40 per cent of the maximum available for breaches of cl 46.2.1 and the related cl 46.2.6, concerning the making of work records and the provision of a copy of work records. Applying a consistent penalty in this matter involves the Court in imposing a penalty of $13,200 on Southern Cross for breach of cl 46.2.1 of the Award and no additional penalty for its breach of cl 46.2.6. 36 In Lotus Cove , Merkel J imposed an additional penalty of 24 per cent of the maximum for breach of cl 46.2.3 of the Award. I raise that amount slightly to 25 per cent, having regard to the longer period over which the breaches occurred in this case. Accordingly, I impose a penalty of $8,250 for breach of cl 46.2.3. 37 Merkel J imposed a penalty of 36 per cent of the maximum for breach of cl 46.4.3 concerning the provision of lists. Considering the extra length of time involved in the current transgressions, it is appropriate to impose a penalty of 40 per cent of the maximum, being $13,200 in respect of the breach of cl 46.4.3. His Honour imposed no extra penalty for the breach of the requirement to provide copies of a list to the Industrial Registrar and the Union. I see no reason to depart from that approach. 38 In Lotus Cove , Merkel J imposed a penalty of 40 per cent of the maximum available for the breach of cl 46.7 concerning the failure of Lotus Cove to provide information to an outworker. In the similar circumstances of this matter a like penalty is appropriate and I impose a penalty of $13,200 on Southern Cross for its breach of cl 46.7. 39 In Lotus Cove there was no separate finding of a breach of any of the following terms of the Award; cll 46.4.1, 46.4.2 and 47.3.1. I consider that the breaches of those terms of the Award are no less serious than those in respect of which penalties have been imposed at 40 per cent of the maximum rate. Accordingly, I impose a penalty of $13,200 in respect of each such breach. 40 In accordance with the above reasoning I will order that: 1. A penalty in the sum of $23,100 for breach of cl 48.1 of the Clothing Trades Award 1999 ("the Award") between 20 December 2002 and 8 September 2004 be imposed on the respondent. 2. A penalty in the sum of $13,200 for breach of cl 46.2.1 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 3. A penalty in the sum of $8,250 for breach of cl 46.2.3 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 4. A penalty in the sum of $13,200 for breach of cl 46.4.1 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 5. A penalty in the sum of $13,200 for breach of cl 46.4.2 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 6. A penalty in the sum of $13,200 for breach of cl 47.3.1 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 7. A penalty in the sum of $13,200 for breach of cl 46.4.3 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 8. A penalty in the sum of $13,200 for breach of cl 46.7 of the Award between 20 December 2002 and 8 September 2004 be imposed on the respondent. 41 The above penalties total $110,550. The total penalties in Lotus Cove were $20,000. However, since that time the maximum penalty has more than tripled and more breaches of the Award were alleged and found in this matter than in Lotus Cove . In addition, the failure to register in this matter occurred after Southern Cross was advised of the outcome in Lotus Cove . 42 In accordance with s 356(b) of the Act the usual order is that the penalty be paid to the applicant. I see no reason to depart from that approach and will order that each of the penalties in this matter be paid to the Union. 43 In addition to the orders referred to at [40] above, I will add an order that the penalties so imposed be paid to the applicant. I certify that the preceding forty-three (43) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Marshall. Associate: Dated: 31 March 2006 Counsel for the Applicant: Mr C Dowling Solicitor for the Applicant: Slater and Gordon There was no appearance by the Respondent. Date of Hearing: 28 March 2006 Date of Judgment: 28 March 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/325.html


case_text: It was then contended that none of the evidence of any significance was admissible or, if admissible, was of such little weight that it ought be rejected pursuant to s 135 of the Evidence Act 1995 (Cth). I agree with that submission in relation to a significant portion of the evidence namely that relating to construction of both the patent in suit and the priority document. In my opinion, that evidence does not supply technical explanations from the deponent's field of expertise that would assist in placing the Court in the position of a skilled addressee of those documents. Rather, they constitute the reading of the documents by the deponent. ( Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 at [67].) In my opinion, that evidence is not admissible and, if it were, it would be rejected pursuant to s 135 of the Evidence Act 1995 (Cth) . I do not need to make a formal ruling as to admissibility. I indicate I will not grant leave to read paragraphs 23 39 (inclusive), 46 and 52 56 (inclusive) of the affidavit. 4 Paragraphs 40 44 (inclusive) of the affidavit could conceivably be relevant to the issue of inventive step. Standing alone, they would not be sufficient to establish the point. However, the issues raised by s 7(2) and s 7(3) of the Patents Act 1990 (Cth) involve a number of factual aspects that may be proved from a number of sources. As was said in Jupiters 222 ALR 155 at [154]: " Section 7(2) of the Act refers to the hypothetical person 'skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim'. That person is wholly hypothetical. Much evidence is admissible from persons none of whom would precisely answer the statutory description. Some may be more skilled in the relevant art than others. Some may be skilled and inventive; some may be brilliant; some may be plodders; some may be aware of particular pieces of art claimed to be part of the common general knowledge and others not. It is for the Court, having admitted relevant evidence, to come to a conclusion as to the application of the section." (See also, generally, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202.) It is not possible to rule in advance as to that issue.


case_text: The role of case management is relevant. The wide scope of O 10 of the Federal Court Rules is well established (eg Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388); see also s 23 of the Federal Court of Australia Act 1976 (Cth). In my opinion, the effect of the decision of the High Court in State of Queensland v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146 on case management has been exaggerated. It dealt with a special situation prevention of litigating a fairly arguable defence some months before a trial date. Even so, it may prove to be the high water mark of anti case-management philosophy, probably as a reaction to some perceived over zealous case management in New South Wales at the time. The decision in Sali v SPC Ltd [1993] HCA 47 ; (1993) 116 ALR 625; (1993) 67 ALJR 841, still needs to be considered. In any event, the evidence of one expert is not necessary to achieve the attainment of justice.


case_text: Paragraphs 40 44 (inclusive) of the affidavit could conceivably be relevant to the issue of inventive step. Standing alone, they would not be sufficient to establish the point. However, the issues raised by s 7(2) and s 7(3) of the Patents Act 1990 (Cth) involve a number of factual aspects that may be proved from a number of sources. As was said in Jupiters 222 ALR 155 at [154]: " Section 7(2) of the Act refers to the hypothetical person 'skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim'. That person is wholly hypothetical. Much evidence is admissible from persons none of whom would precisely answer the statutory description. Some may be more skilled in the relevant art than others. Some may be skilled and inventive; some may be brilliant; some may be plodders; some may be aware of particular pieces of art claimed to be part of the common general knowledge and others not. It is for the Court, having admitted relevant evidence, to come to a conclusion as to the application of the section." (See also, generally, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202.) It is not possible to rule in advance as to that issue.


case_outcome: discussed

case_title: State of Queensland v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146


case_text: Whether s 117 can apply to a process or method claim, where no product results from the use of the method or process, may be an open question. GenRx says that the Patentees' rights are restricted by paragraph (b) in the definition of " exploit " referred to above, namely, to use the method or process or do any acts mentioned in paragraph (a) in respect of a product resulting from such use (see Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 24). 87 In any event, GenRx says, it cannot be said that the GenRx products are capable of only one reasonable use. Carvedilol is indicated for the treatment of hypertension and treatment of patients with symptomatic mild to severe congestive heart failure. That is the claim made by GenRx in the product information document published in respect of the GenRx products. 88 Further, carvedilol is a useful and beneficial medication for treating the symptoms of congestive heart failure itself. One of the major advantages of carvedilol is that a decrease in heart rate may be achieved, which immediately provides a significant symptomatic benefit to the patient. The information published by the Patentees in respect of DILATREND indicates that administration of carvedilol will cause a significant reduction in systematic blood pressure and heart rate and that it has been shown to reduce cardiovascular hospitalisation, improve patient well being and slow the progression of congestive heart failure. GenRx says, therefore, that they are reasonable uses for carvedilol that are not decreasing mortality.


case_text: First, GenRx relies upon what it describes as its Gillette defence (see Gillette Safety Razor Company v Anglo-American Trading Co Ltd (1913) 30 RPC 465). That is to say, the dosage regimen for the GenRx products is the regimen disclosed in the Kelly publication and the Metra publication. GenRx says that, if the supply of its products would infringe the Patent, the Patent must be invalid as lacking novelty because that regimen was anticipated in those publications. On the other hand, if the publications do not anticipate the Patent, GenRx is not infringing because it is doing no more than was disclosed in the earlier publications. 78 However, the argument fails to take account of the matter already referred to above concerning the question of whether the publications do, in truth, anticipate the claimed invention of the Patent. That is to say, the element of ' decreasing mortality ' is not present in the publications but it is at least reasonably arguable that it would be an element in the threatened actions of GenRx. I am not persuaded that the so-called Gillette defence is a clear answer to the Patentees' allegations of infringement such that there is not a serious question to be tried. 79 The Patentees contend that the proposed exploitation by GenRx of its carvedilol products is for decreasing mortality in patients suffering from congestive heart failure and that, accordingly, there will be an infringement of Claims of the Patent. They say that listing of the GenRx products under the Pharmaceutical Benefits Scheme for the treatment of mild to severe congestive heart failure was obtained on the basis that the effect of carvedilol in the products on decreasing mortality arising from congestive heart failure was shown to be cost justified having regard to such a clinical outcome. The Patentees contend, therefore, that, since GenRx obtained listing under the Pharmaceutical Benefits Scheme as a bio equivalent of the Patentees' products, they have done so on the basis that the cost-justification for the listing of GenRx's products under the Pharmaceutical Benefits Scheme is a decrease in mortality for patients suffering from congestive heart failure. The Patentees contend that, having regard to the basis upon which GenRx has obtained listing under the Pharmaceutical Benefits Scheme, the GenRx products are medicaments for decreasing mortality resulting from congestive heart failure in humans. Claims 1 to 13 are for the use of carvedilol for the manufacture of such medicaments. 80 Under the Patents Act , it is an exploitation of an invention as claimed to import, sell or otherwise dispose of a product resulting from the method or process for manufacture that is the subject of the claim. Claim 14 is directed to a method of treatment using carvedilol to decrease mortality resulting from congestive heart failure. The dosages for which registration has been obtained for the GenRx products and the listing under the Pharmaceutical Benefits Scheme that has been obtained in relation to those products are clearly in relation to treating human patients suffering from congestive heart failure. The Patentees say that such treatment is clearly ' with the objective of decreasing mortality resulting from such congestive heart failure '.


case_text: In proceedings in the Court in 2005, the Patentees alleged infringement of the Patent by Hexal Australia Pty Limited and Alphapharm Pty Limited, other threatened suppliers of carvedilol products. Stone J examined grounds of invalidity raised in those proceedings and concluded that there was a serious question to be tried as to whether the Patent is valid and as to whether there was infringement by those parties (see Hexal Australia Pty Limited v Roche Therapeutics Inc [2005] FCA 1218). However, Stone J concluded that there was no likelihood of irreparable injury that could not be adequately compensated by an order form damages or an account and refused interlocutory relief on the basis of the balance of convenience. Those proceedings have now been settled.


case_title: Re BA's Application (1915) 32 RPC 348

case_text: GenRx says that Claims 8 and 21 do no more than describe a mere new use for an old thing. Once a substance is known, its methods of production ascertained, its characteristics and its constituents well defined, the use of that substance for a purpose that was hitherto unknown cannot be patented ( Re BA's Application (1915) 32 RPC 348 at 349). 71 GenRx also contends that none of the Claims can amount to any more than a direction to doctors and pharmacists on how to treat the patients with carvedilol. GenRx says that the only new component of the Claims is the reference to the fact that the treatment is ' for decreasing mortality ' and says that the fact that treatment with carvedilol may decrease mortality is a mere discovery, since it is an inherent feature of carvedilol. GenRx says that the only act apparently done in relation to the invention was to provide some funding for trials that comprised long-term treatment with known compounds in known dosages for a known condition. GenRx contends that, at most, what is disclosed is mere confirmation of the existing properties of carvedilol in known dosages. 72 There is cogency in GenRx's arguments. However, they raise questions of law that it may be inappropriate to resolve in an interlocutory proceeding such as the present.


case_title: Rescare Limited v Anaesthetic Supplies Pty Limited (1992) 25 IPR 119

case_text: Under s 18(1)(c) of the Patents Act , a claimed invention will not be a patentable invention unless it is useful. A claim for an invention will not be useful if the invention as claimed, does not meet one or more of the stated objectives of the invention. There will be inutility of a claim if the invention of that claim fails to meet the result promised for it by the Patent ( Rescare Limited v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 at 143). 74 GenRx again draws attention to the terms of the Claims that do not disclose a dosage regimen. GenRx says that there is no evidence that carvedilol has any beneficial effect on mortality or otherwise unless it is administered according to the specified regimen over a sufficient period of time. However, it is for GenRx to establish lack of utility. It is not incumbent upon the Patentees to establish that the claimed invention works. GenRx says that the evidence indicates that only administration according to a regimen such as is described in Claims 8 and 21 will have any effect. However, while some claims may be challenged on that basis, Claims 8 and 21 would not be subject to that challenge and would be sufficient to support the allegation of infringement. 75 In relation to Claims 8 and 21, GenRx points out that there is a reference to the final administration as ' a maintenance dose ', the Claims do not specify in terms that the maintenance dose must be continued for a period in the order of 100 days. It points to evidence that such continued dosage is required for effectiveness. However, it is tolerably clear that the reference to maintenance dose means that that dosage is maintained indefinitely. Indefinite maintenance of the dose is shown to have a beneficial effect on mortality.


case_text: When I handed down my decision in Rawley Pty Ltd v Bell (No 2) [2007] FCA 583 , such was my dissatisfaction with the course and conduct of this matter that I indicated a provisional inclination not to make orders as to costs in either of the applications that I had there dismissed. Nonetheless, I invited the parties to put on submissions as to costs. They did so voluminously, save for Mr Bell who indicated he would abide by the orders of the Court. Having considered the parties submissions and having reviewed the costs issues in light of what are well accepted principles that properly inform the exercise of my discretion under s 43 of the Federal Court of Australia Act 1976 (Cth), I am satisfied that to deny the successful respondents any costs at all would, in the circumstances, be punitive. It is not a proper use of the power to award costs to punish either a successful or an unsuccessful party: cf Latoudis v Casey [1990] HCA 59 ; (1990) 170 CLR 534 at 566-567.


case_title: Cretazzo v Lombardi (1975) 13 SASR 4

case_text: It is well accepted that the general discretion conferred by s 43 is absolute and unfettered but that it must be exercised judicially and cannot be exercised on grounds unconnected with the litigation: see Cretazzo v Lombardi (1975) 13 SASR 4 at 11; Re Wilcox; Ex parte Venture Industries Pty Ltd (1996) 141 ALR 727 at 732. Nonetheless, it is equally well accepted that in the exercise of that discretion: (i) ordinarily costs follow the event and a successful litigant receives costs in the absence of special circumstances justifying some other order; (ii) where a litigant has succeeded only upon a portion of the claim, the circumstances may make it reasonable that the litigant bear the expense of litigating that portion upon which he or she has failed; and (iii) a successful party who has failed on certain issues may not only be deprived of the costs of those issues but may be ordered as well to pay the other parties' costs of them. In this sense "issue" does not mean a precise issue in the technical pleading sense but any disputed question of fact or law. Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229 at [11] approving Hughes v Western Australian Cricket Association (Inc) (1986) 69 ALR 660; ATPR 40-748 at 48,136. See generally Dal Pont, Laws of Costs , ch 8 (2003). 3 What can constitute "special circumstances" capable of disentitling a successful party from a costs award has been the subject of helpful consideration by Nicholson J in Instant Colour Pty Ltd v Canon Australia Pty Ltd [1996] FCA 1097. I am content for present purposes to reiterate what his Honour there said of the authorities on this matter: "(a) In Ritter v Godfrey [1920] 2 KB 47 at 60, Atkin LJ stated 'principles upon which a judge is to discern whether the necessary materials exist' for the exercise of discretion as to costs as follows: 'In the case of a wholly successful defendant, in my opinion the judge must give the defendant his costs unless there is evidence that the defendant (1) brought about the litigation; or (2) has done something connected with the institution or the conduct of the suit calculated to occasion unnecessary litigation and expense; or (3) had done some wrongful act in the course of the transaction of which the plaintiff complains.' Atkin LJ continued: '(2) I think, would include improper conduct in or connected with the litigation calculated to defeat or delay justice. Such conduct would also be included in (3) which, I think, further extends to cases where the facts complained of, though they do not give the plaintiff a cause of action, disclose a wrong to the public: King v Gillard [1905] 2 Ch 11, by which I understand some criminal or quasi criminal misconduct, eg a fraud or crime or preparation for a fraud or crime, or possibly some act of serious oppression. Such conduct must, however, be in the course of the transaction complained of.' (b) In Donald Campbell & Co Ltd v Pollak [1927] AC 732 at 811-12, Viscount Cave LC adversely criticised the correctness of Atkin LJ's guiding principles but on the basis they were too restrictive: Verna Trading Pty Ltd v New India Assurance Co Ltd [1991] 1 VR 129 at 153 per Kaye J. As Viscount Cave LC formulated it, the discretion cannot be exercised against a successful party 'except for some reason connected with the case': Donald Campbell (supra). (c) In Australia it has been accepted the general discretion of a trial judge as to costs ought not be fettered by the rules formulated by Atkin LJ: Verna Trading (supra) at 154 and see: Cretazzo v Lombardi (1975) 13 SASR 4 at 11-12 per Bray CJ. (d) The principle as to the exercise of the discretion is the same in the case of plaintiffs and defendants, but it is clear that considerations sufficient to justify a refusal of costs to a plaintiff are not necessarily sufficient in the case of a defendant, for the former initiates the litigation while the latter is brought into it against his will: Ritter v Godfrey (supra) at 52-3 per Sterndale MR, approved in Donald Campbell (supra) at 811-12 per Viscount Cave LC. (e) More compelling circumstances are required for the exercise of discretion as a result of which a successful defendant is not only denied his costs but also compelled to pay the whole or part of the plaintiff's costs of the proceedings. This is so for the reason the proceedings are initiated by the plaintiff and the plaintiff fails to gain the relief which he sought: Verna Trading at 154. (f) In more recent English authority - Scherer v Counting Instruments Ltd [1986] 1 WLR 615 at 621 - Buckley LJ, in summarising the principles governing the making of cost orders, included the principle that: 'the grounds must be connected with the case. This may extend to any matter relating to the litigation and the parties conduct in it, and also to the circumstances leading to the litigation, but no further.' (g) In Jamal v Secretary, Department of Health (1988) 14 NSWLR 252 at 271-2, Mahoney JA recognised that in respect of costs on an appeal, conduct in relation to the matter under appeal may be discreditable to an extent warranting deprivation of costs: see Jones v Merionethshire Permanent Benefit Building Society [1892] 1 Ch 173 at 187-8 and Borthwick v Evening Post (1888) 37 ChD 449 at 465."


case_text: It is well accepted that the general discretion conferred by s 43 is absolute and unfettered but that it must be exercised judicially and cannot be exercised on grounds unconnected with the litigation: see Cretazzo v Lombardi (1975) 13 SASR 4 at 11; Re Wilcox; Ex parte Venture Industries Pty Ltd (1996) 141 ALR 727 at 732. Nonetheless, it is equally well accepted that in the exercise of that discretion: (i) ordinarily costs follow the event and a successful litigant receives costs in the absence of special circumstances justifying some other order; (ii) where a litigant has succeeded only upon a portion of the claim, the circumstances may make it reasonable that the litigant bear the expense of litigating that portion upon which he or she has failed; and (iii) a successful party who has failed on certain issues may not only be deprived of the costs of those issues but may be ordered as well to pay the other parties' costs of them. In this sense "issue" does not mean a precise issue in the technical pleading sense but any disputed question of fact or law. Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229 at [11] approving Hughes v Western Australian Cricket Association (Inc) (1986) 69 ALR 660; ATPR 40-748 at 48,136. See generally Dal Pont, Laws of Costs , ch 8 (2003).


case_title: Hughes v Western Australian Cricket Association (Inc) (1986) 69 ALR 660


case_text: What can constitute "special circumstances" capable of disentitling a successful party from a costs award has been the subject of helpful consideration by Nicholson J in Instant Colour Pty Ltd v Canon Australia Pty Ltd [1996] FCA 1097. I am content for present purposes to reiterate what his Honour there said of the authorities on this matter: "(a) In Ritter v Godfrey [1920] 2 KB 47 at 60, Atkin LJ stated 'principles upon which a judge is to discern whether the necessary materials exist' for the exercise of discretion as to costs as follows: 'In the case of a wholly successful defendant, in my opinion the judge must give the defendant his costs unless there is evidence that the defendant (1) brought about the litigation; or (2) has done something connected with the institution or the conduct of the suit calculated to occasion unnecessary litigation and expense; or (3) had done some wrongful act in the course of the transaction of which the plaintiff complains.' Atkin LJ continued: '(2) I think, would include improper conduct in or connected with the litigation calculated to defeat or delay justice. Such conduct would also be included in (3) which, I think, further extends to cases where the facts complained of, though they do not give the plaintiff a cause of action, disclose a wrong to the public: King v Gillard [1905] 2 Ch 11, by which I understand some criminal or quasi criminal misconduct, eg a fraud or crime or preparation for a fraud or crime, or possibly some act of serious oppression. Such conduct must, however, be in the course of the transaction complained of.' (b) In Donald Campbell & Co Ltd v Pollak [1927] AC 732 at 811-12, Viscount Cave LC adversely criticised the correctness of Atkin LJ's guiding principles but on the basis they were too restrictive: Verna Trading Pty Ltd v New India Assurance Co Ltd [1991] 1 VR 129 at 153 per Kaye J. As Viscount Cave LC formulated it, the discretion cannot be exercised against a successful party 'except for some reason connected with the case': Donald Campbell (supra). (c) In Australia it has been accepted the general discretion of a trial judge as to costs ought not be fettered by the rules formulated by Atkin LJ: Verna Trading (supra) at 154 and see: Cretazzo v Lombardi (1975) 13 SASR 4 at 11-12 per Bray CJ. (d) The principle as to the exercise of the discretion is the same in the case of plaintiffs and defendants, but it is clear that considerations sufficient to justify a refusal of costs to a plaintiff are not necessarily sufficient in the case of a defendant, for the former initiates the litigation while the latter is brought into it against his will: Ritter v Godfrey (supra) at 52-3 per Sterndale MR, approved in Donald Campbell (supra) at 811-12 per Viscount Cave LC. (e) More compelling circumstances are required for the exercise of discretion as a result of which a successful defendant is not only denied his costs but also compelled to pay the whole or part of the plaintiff's costs of the proceedings. This is so for the reason the proceedings are initiated by the plaintiff and the plaintiff fails to gain the relief which he sought: Verna Trading at 154. (f) In more recent English authority - Scherer v Counting Instruments Ltd [1986] 1 WLR 615 at 621 - Buckley LJ, in summarising the principles governing the making of cost orders, included the principle that: 'the grounds must be connected with the case. This may extend to any matter relating to the litigation and the parties conduct in it, and also to the circumstances leading to the litigation, but no further.' (g) In Jamal v Secretary, Department of Health (1988) 14 NSWLR 252 at 271-2, Mahoney JA recognised that in respect of costs on an appeal, conduct in relation to the matter under appeal may be discreditable to an extent warranting deprivation of costs: see Jones v Merionethshire Permanent Benefit Building Society [1892] 1 Ch 173 at 187-8 and Borthwick v Evening Post (1888) 37 ChD 449 at 465." 15 I do not consider it profitable or appropriate to attempt to apportion costs by reference to the applicants' success or lack of success on the misrepresentation and non-disclosure issues the more so as those issues were not separable in any event from the issues of reliance and causation: cf Instant Colour Pty Ltd , at 18. 16 As I have earlier indicated, there are parts of the applicants' claims for the costs of which Sladojevic is entitled to be paid. For example, the fiduciary claim, as I foreshadowed at the very beginning of the trial was quite misconceived. Its failure was inevitable. This said, I am satisfied that because of his conduct in connection with the litigation or with what reasonably was litigated by the applicants in the circumstances (e.g. the Georgiadis letter), I am satisfied he should incur a significant abatement of the costs to which he would otherwise be entitled as a successful defendant in respect of the claims based on misrepresentation and those relating to non-disclosure which were abandoned. Sladojevic's conduct permeated this part of the Rawley litigation.


case_text: I confine my comments here to whether Sladojevic ought bear some of his own costs notwithstanding he was ultimately successful in defending the proceedings against him. I do so for two reasons. First, as Bell appears to have been unrepresented throughout (he has not suggested to the contrary and has not made submissions on costs) his costs in any event will be limited to out-of-pocket expenses: cf Cachia v Hanes [1994] HCA 14 ; (1994) 179 CLR 403; and see generally Dal Pont, Law of Costs , [7-24] ff. In these circumstances, the issue of ouster of the ordinary rule of costs following the event is of no marked significance in his case. Secondly, the conduct said to give rise to "special circumstances" was, primarily, that of Sladojevic. 12 I should preface what I have to say with the observation that I do not consider that the applicants acted unreasonably in continuing to prosecute the proceedings notwithstanding that Sladojevic's legal representatives had asserted to them from as early as March 2004 that they would fail, in what were their then claims, on the grounds of reliance and causation for reasons similar to those informing my ultimate findings in this matter. The applicants' lighting upon what was referred to as the Georgiadis letter in 2005 (a Sladojevic strategy letter: see reasons [61]) it was not apparently discovered by Sladojevic led to a significant enlargement of their claim. Notwithstanding that both Sladojevic and his legal representatives asserted at the time that its contents were fiction they would have been damning if true I am satisfied that in the circumstances the applicants unwillingness to accept those assertions at face value was not unreasonable. Such facts as had been pleaded by Sladojevic in his 2002 amended defence were calculated to put his credibility in issue from the outset. The letter could only have compounded the applicants' suspicions. 13 I do not intend to reiterate in any detail the findings I have made, and the basis thereof, in relation to Sladojevic's evidence generally, to his strategies, to false denials given (e.g. on the provenance of the "Tiltform Australia" proposal of 25 June 2000) and false assertions made, and to their respective affects on and in the conduct of the proceeding. Suffice it to say I found that he engaged in opportunistic and self serving behaviour and resorted to falsehood: cf reasons [56]. Far from being honest and open, such were the doubts his conduct and evidence raised about his credibility, that the applicants were, in my view, entitled to treat his assertions with suspicion. As I held, "his evidence on any subject not corroborated by independent documentary evidence or a reliable third party ought be regarded with caution": [56]. Equally, his abandoning of parts of his affidavit evidence in the face of clear contrary evidence was opportunistic. It merely added to the sum of misinformation, confusion or time wasting in the trial for which he was responsible. And there was a deal of this. As I said of the Vinet strategies, "documents created for the purposes of them have added very significantly to misinformation relied upon the conduct of this proceeding. Amendments were made to the pleading and cross-examination conducted on the premise that the information conveyed in such documents was correct. This resulted both in time wastage and quite a deal of confusion and contradiction for which Sladojevic principally ... bear[s] responsibility": reasons [62].


case_text: As I indicated at the beginning of these reasons, punishment is not a permissible purpose in the exercise of my discretion to deny a successful party his or her costs in whole or in part. I am particularly conscious of that in this matter. I am also conscious that, in apportioning costs to reflect consequences occasioned by a successful defendant's disentitling conduct, I can only proceed by way of impression having regard to how the litigation itself unfolded and of the conduct of the parties in it. There can be no "mathematical precision" in the resultant allocation of costs: cf Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 3) [2007] FCAFC 119 at [13] . 18 In the circumstances I consider that appropriate costs orders in the Rawley matter would be that the applicants (i) pay 50 per cent of the second respondent's costs of the application; and (ii) pay Mr Bell's costs. 19 While in no way casting doubt on the seriousness to Mr Chehade of his claim, it had a much smaller evidentiary compass than the Rawley matter and occupied a relatively small part of the time taken in the joint proceedings.


case_title: Australian Estates Ltd v Palmer (unreported, New South Wales Court of Appeal, Kirby P, Samuels and Meagher JJA, 22 December 1989)

case_text: matter that received limited attention in the submissions of the parties was the relevance, if any, of post-contractual conduct in determining what the terms of the contract are when they are not in writing. If they are in writing the common law of Australia is comparatively clear: see the observations of Heydon JA in Brambles Holdings Ltd v Bathurst City Council [2001] NSWCA 61 ; (2001) 53 NSWLR 153 at [26] and more recently the judgment of the High Court in Agricultural and Rural Finance Pty Ltd v Gardiner [2008] HCA 57 ; (2008) 251 ALR 322 per Gummow, Hayne & Kiefel JJ at [36] and [163]. The post-contractual conduct is irrelevant. However the position is less clear in relation to contracts which are not in writing. This question was comparatively recently addressed by Finkelstein J as a member of a Full Court in Seven Network (Operations) Ltd v TCN Channel 9 Pty Ltd [2005] FCAFC 144 ; (2005) 146 FCR 183 at [83] . His Honour said: As things presently stand Anglo-Australian law does not allow reference to what the parties to a contract said and did before or after the contract as an aid to construction: James Miller & Partners Ltd v Whitworth Street Estates (Manchester) Ltd [1970] AC 583 ; L Schuler AG v Wickman Machine Tool Sales Ltd [1973] UKHL 2 ; [1974] AC 235 ; Secured Income Real Estate (Australia) Limited v St Martins Investments Proprietary Limited (1979) 144 CLR 597 ; FAI Traders Insurance Company Ltd v Savoy Plaza Pty Ltd [1993] 2 VR 343. The fear is that this approach could result in a contract having different meanings on different days. The rule does not, however, prevent the reception of pre-contract conduct (White v Australian and New Zealand Theatres Limited [1943] HCA 6 ; (1943) 67 CLR 266 ) or post-contract conduct (Australian Estates Ltd v Palmer (unreported, New South Wales Court of Appeal, Kirby P, Samuels and Meagher JJA, 22 December 1989 )) to identify the things with which the contract does deal. Why Australian Estates Ltd v Palmer is not reported, I do not know. However in a passage from the judgment of Samuels JA (with whom Kirby P. and Meagher JA agreed) the following is said: ..... it is true that a court cannot have regard to the subsequent conduct of the parties as an aid in the interpretation of a term in a written contract (see James Miller and Partners Ltd v Whitworth Street Estates (Manchester) Ltd [1970] AC 583 , Wickman Machine Tool Sales Ltd v L Schuler AG [1973] UKHL 2 ; [1974] AC 235) , this is merely an application of the parol evidence rule. Thus, as Stephenson LJ (with whom O'Connor LJ and Sir Stanley Rees agreed) said in Meares v Safecar Security Ltd [1983] QB 54 at 77, dealing with an oral contract: There is nothing in those authorities which prevents the court from looking at the way the parties acted for the purpose of ascertaining what that term was. Commonsense suggests that their subsequent conduct is the best evidence of what they had agreed orally but not reduced to writing, though it is not evidence of what any written terms mean; And see generally the Law of Contract , Greig and Davies at 436-438. Observations to similar effect were made by Spigelman CJ and McColl JD in County Securities v Challenger Group Holdings Pty Ltd [2008] NSWCA 193.


case_text: principles concerning whether a letter contravenes this section were discussed by Conti J in Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd [2004] FCA 1312. It was not suggested in the judgment in the High Court in Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd [2006] HCA 55 ; (2006) 231 ALR 663 was wrong. Indeed it must have been approved having regard to the orders the High Court made. At [43] Conti J said: ... the authoritative dictum of Mansfield J in Australian Consulting & Training Pty Ltd v Tiltform Pty Ltd [2001] FCA 1072 , made in the context of the analogous provisions of the Australian patents legislation, and also of Cooper J in U & I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 32 IPR 494 , albeit again in the context of the same analogous provisions. In Australian Consulting & Training , his Honour said at [9]: 'That decision [whether conduct constituted a threat] must be made in the light of the circumstances in which the impugned conduct took place... and from the perspective of a reasonable recipient of the communication in those circumstances... It may not be necessary for there to be an explicit reference to enforcement proceedings.' Further, in I & U Global , his Honour said at 500-501: 'The test is whether the language would convey to any reasonable person that the author of the letter in the present case intended to bring proceedings for infringement against the person said to be threatened. It is not necessary that there be direct words that action would be taken... It is a threat to sue for infringement if the Respondent is so minded on a future occasion. It is no less a threat that the Respondent may not be so minded...' Mr Vardanian, who admitted he had seen the letter prior to authorising its dispatch from his solicitors, gave evidence in his affidavit of 19 December 2008 that "[i]n about September 2008, I became aware that customers of Intelmail (and previously The Mailmachine] were being asked to sign a licence agreement and were being charged a substantial software licensing fee. I have never discussed these arrangements with Mr Dilanchian or Mr Malouf". Mr Vardanian later gave oral evidence that he intended for the letter to be a catalyst to "start negotiations". In his cross-examination, he said that his position in the negotiations he envisaged was that he had "no problem" with the fact the machines were being sold with the installed software: He simply wanted royalties from the licensing fee income that the applicants were charging customers. However, counsel for the applicants correctly, in my opinion, submitted that neither the letter nor any of the subsequent correspondence from the respondents' solicitors said that. Indeed, far from wishing to negotiate, during the course of the subsequent correspondence, Mr Vardanian's solicitors sent a letter on 8 December 2008 which actually said "[p]oints one to three are not open for negotiation". It was the applicants who volunteered to amicably resolve the matter in the letter sent on 10 November 2008 by their representatives Blake Dawson. The letter relevantly stated: "[f]inally, we are instructed to note that Mr Dilanchian continues to have respect and affection for Mr Vardanian and therefore wishes for this matter to be amicably resolved".


case_text: not dissimilar issue arose in a case determined by Crennan J in 2005: Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd [2005] FCA 1521 , 225 ALR 57 , though, in this matter unlike the present, aspects of some of the contractual arrangements were express. At [77] and following, her Honour set out the applicable principles: Applicable principles Where, as here, applicant asserts the existence of an implied term regulating the parties rights in the drawings in relation to copyright then the precise definition of that implied term involves a question of construction of the alleged agreement. In Parramatta Design & Developments Pty Ltd v Concrete Pty Ltd [2005] FCAFC 138 ; [2005] 219 ALR 373 at [10] ('Parramatta') a Full Court of the Federal Court said of such an exercise: 'True, it is not an 'orthodox exercise in the interpretation of the language of a contract, that is, assigning a meaning to a particular provision': Codelfa Construction Pty Ltd v State Rail Authority (NSW) [1982] HCA 24 ; (1982) 149 CLR 337 at 345 per Mason J. Nevertheless the process involved is of interpreting the meaning of the contract as a whole : South Australia Asset Management Corp v Montague Ltd [1997] AC 191 at 212 per Lord Hoffmann.' In Codelfa , Mason J noted (at 346) that the implication of a term was appropriate to address a 'deficiency in the expression of the consensual agreement'. As his Honour noted, such implication might arise to address the failure of parties 'to direct their minds to a particular eventuality and to make explicit provision for it'. It is, of course, necessary to clarify that it is not appropriate to imply a term because it may be reasonable to do so, but rather to give business efficacy to contracts. The circumstances for implying a term were identified by the Judicial Committee of the Privy Council in BP Refinery (Westernport) Pty Ltd v Hastings Shire Council (1977) 180 CLR 266 at 283 ('BP Refinery') , as follows: '(1) it must be reasonable and equitable; (2) it must be necessary to business efficacy to the contract so that no term will be implied if the contract is effective without it; (3) it must be so obvious that 'it goes without saying'; (4) it must be capable of clear expression; (5) it must not contradict any express term of the contract.' Where, as in the present case, there is no formal contract concluded between the parties a more flexible approach to the question of implying terms is warranted than that laid down in BP Refinery at 283: see Hospital Products Ltd v United States Surgical Corporation (1984) 156 CLR 41 at 121; Hawkins v Clayton (1988) 164 CLR 539 at 573; Byrne & Frew v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 422-423. In this kind of case all that is necessary is to show that the term to be implied is necessary for the reasonable or effective operation of the contract in all the circumstances. The parties did not challenge her Honour's account of the principles. It is orthodox and I will apply them. Justice Crennan also discussed the application of these principles in a specific area of copyright between [81] and [85]. It is sufficient to notice three things which emerge from this discussion: (i) There are numerous instances when, in the circumstances, the courts have been prepared to imply a condition into an agreement between the parties that the author of a copyright work will assign legal title to it when called upon to do so because equitable ownership of the copyright in the work does not belong to the author. This can arise when there is a commissioning arrangement for the preparation of copyright material. (ii) If there is a lacuna in the contract and it is necessary to imply the grant of some right to fill the lacuna involving a choice between possible alternative rights, the choice should be of that right which does not exceed what is necessary in the circumstances. This principle is one of a number identified by Lightman J in Robin Ray v Classic FM Plc (1998) 41 IPR 235 in a lengthy passage quoted by Crennan J. In particular, if the need can be satisfied by the grant of licence or an assignment of the copyright, the implication will be of the grant of licence only. (iii) The circumstances may require the implication of a right for the assignment of the copyright, for example when the party commissioning the creation of the work should be able to exclude the author from using the work and also to enforce copyright against third parties. Again this emerges from the judgment of Lightman J. However the rationale for having regard to post-contractual conduct when the contract is not in writing seems of limited relevance in circumstances where a term is to be implied in the way discussed in some of the authorities referred to by Crennan J in Gold Peg , namely Hospital Products Ltd v United States Surgical Corporation , Hawkins v Clayton and Byrne & Frew v Australian Airlines Limited being cases where it is necessary is to show that the term to be implied is necessary for the reasonable or effective operation of the contract in all the circumstances. The implication of the term arises because the parties have not addressed the subject matter to which the term relates. It is difficult to see how subsequent conduct can, as a matter of common sense, be taken to be a manifestation of the parties acting conformably with the term. They had not earlier turned their minds to the way the contract would operate at the time it was made. That is not to say that evidence of conduct surrounding the formation of the contract would be irrelevant in determining what term might be implied. Context, including the manifestation of subjective intention, can be important in determining what objectively may have been agreed or what might be implied: see Kovan Engineering (Aust) Pty Ltd v Gold Peg International Pty Ltd [2006] FCAFC 117 per Heerey and Weinberg JJ at [105] and per Allsop J at [118]. Consideration It is perhaps appropriate, at this point, to take a step back from the minutiae of the evidence. What the evidence discloses, at a high level of generality, is that two individuals developed, collaboratively, a business which was dependent on the significant contribution of both but which has always been owned and substantially controlled by only one of them. The individual who has owned the business is now resisting attempts by the other to assert a right which is very narrowly focused on a statutory right said to arise from authorship of computer software. It is difficult to avoid the conclusion that the legal controversy this judgment addresses may not explore and resolve all bases on which the rights of the parties might be determined. However forensic decisions have been made for what probably is a mix of legitimate reasons including the personal and financial circumstances of the parties, to invite adjudication only on the copyright issue. As noted at the beginning of this judgment, the second respondent is gravely ill and having regard to matters raised in interlocutory proceedings, it appears the first applicant which is the present manifestation of the business, is in comparatively straightened financial times. One possible consequence of the narrow focus of the litigation on the copyright issue is that it has created a prism through which the parties have sought to establish the facts but which has led to distortions of what in truth happened. Broadly described, the evidence at this high level of generality points to one of at least three possibilities. The first is that Mr Vardanian was generally aware that copyright attached to the programs he was writing and always and genuinely believed that he owned it both before and after August 1996. Perhaps that was because he did not view himself as an employee at least after his initial years working in the business. If so, it is difficult to understand why he never discussed ownership of the copyright with Mr Dilanchian during the many years they worked closely and collaboratively together to develop the business in circumstances where they had close family ties. I have no doubt at all, having regard to the evidence, Mr Dilanchian never turned his mind to the question of ownership of the copyright before probably 2003. The second possibility is that Mr Vardanian was generally aware that copyright attached to the programs but understood, perhaps in a vague and imperfect way, that while an employee of the Intelmail business it was owned by his employer but that his move to the Gold Coast and the new arrangements associated with it would alter that position to his benefit. If so, moving and not discussing the consequences with Mr Dilanchian would suggest some measure of deception on his part, which would have been curious given the way they had worked together and their family ties.


case_title: Seven Network (Operations) Ltd v TCN Channel 9 Pty Ltd (2005) 146 SCR 183

case_text: matter that received limited attention in the submissions of the parties was the relevance, if any, of post-contractual conduct in determining what the terms of the contract are when they are not in writing. If they are in writing the common law of Australia is comparatively clear: see the observations of Heydon JA in Brambles Holdings Ltd v Bathurst City Council [2001] NSWCA 61 ; (2001) 53 NSWLR 153 at [26] and more recently the judgment of the High Court in Agricultural and Rural Finance Pty Ltd v Gardiner [2008] HCA 57 ; (2008) 251 ALR 322 per Gummow, Hayne & Kiefel JJ at [36] and [163]. The post-contractual conduct is irrelevant. However the position is less clear in relation to contracts which are not in writing. This question was comparatively recently addressed by Finkelstein J as a member of a Full Court in Seven Network (Operations) Ltd v TCN Channel 9 Pty Ltd [2005] FCAFC 144 ; (2005) 146 FCR 183 at [83] . His Honour said: As things presently stand Anglo-Australian law does not allow reference to what the parties to a contract said and did before or after the contract as an aid to construction: James Miller & Partners Ltd v Whitworth Street Estates (Manchester) Ltd [1970] AC 583 ; L Schuler AG v Wickman Machine Tool Sales Ltd [1973] UKHL 2 ; [1974] AC 235 ; Secured Income Real Estate (Australia) Limited v St Martins Investments Proprietary Limited (1979) 144 CLR 597 ; FAI Traders Insurance Company Ltd v Savoy Plaza Pty Ltd [1993] 2 VR 343. The fear is that this approach could result in a contract having different meanings on different days. The rule does not, however, prevent the reception of pre-contract conduct (White v Australian and New Zealand Theatres Limited [1943] HCA 6 ; (1943) 67 CLR 266 ) or post-contract conduct (Australian Estates Ltd v Palmer (unreported, New South Wales Court of Appeal, Kirby P, Samuels and Meagher JJA, 22 December 1989 )) to identify the things with which the contract does deal.