case_text: The ordinary rules of construction that apply to any written instrument are applicable to the construction of the specification of a patent: Nobel's Explosives Co Ltd v Anderson (1894) 11 RPC 519 at 523; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 (' Décor ') at 391, 400; Photocure at [168]. However, there are also a number of special considerations that are relevant to the construction of a patent. The general basis for these rules was explained by Hely J in Beltreco at [70]: 'A patent is a public instrument which grants the right to protection of a defined monopoly, for the consideration of the disclosure of the invention to the general knowledge base of society. It is the need for balance between these symbiotic, yet competing interests which underscores the rules of patent construction.' 16 It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 17 It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric & Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; Décor at 391, 398; Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74]. 18 A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; Décor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 20 The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170]. 25 A feature of a claim is considered essential if the hypothetical reader (that is, a reader skilled in the art before the priority date) would have understood from the language used in the claim, in the context of the specification as a whole, that the patentee intended that strict compliance was an essential requirement of the invention: Catnic at 243; Décor at 400; Populin at 476; Beltreco at [81].


case_outcome: applied

case_text: As such, a court can have regard to evidence from experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning: see [21] above and EI Dupont de Nemours & Co v Imperial Chemical Industries plc (2002) 54 IPR 304 at [41]-[60]. This is not to say that the court is thereby relinquishing its role as the ultimate arbitrator of the proper construction of the claims. The weight that a court gives to such evidence will vary from case to case. 39 In the present proceedings, the terms used in the relevant claims are unusual given the characteristics of plastic bags: see [32] [33] above. The use of particular terms, especially 'straight', must be understood by reference to what the hypothetical addressee would consider the terms to mean. Consequently, in my view the evidence adduced by the respondents provides evidence of the meaning that the notional addressee would ascribe to such terms and the evidence is admissible as relevant to the construction of the claims. 40 Counsel for Clorox accepted that in order to consider infringement a bag must be considered in the laid-flat form but contended that this could encompass a laid-flat three-dimensional form. In my view the concession as to the laid-flat form was correctly made. The language of the relevant claims, as set out above, is ambiguous when considered in isolation. The terms chosen by the patentee to describe the monopoly cannot be properly understood without reference to the specification as a whole. In particular, unless the bags are arranged in a laid-flat form, it is not sensible to refer to the front and rear panels of the bag or to the sides of the bag (whether straight or otherwise) or even to discuss the shape of the fourth side of the bag. To consider the bags in any other form or arrangement would be to deprive the essential integers of the invention of any content. While, as previously mentioned, a clear and unambiguous claim must not be varied or qualified by statements in the remainder of the specification, in the present context the language chosen is difficult to comprehend without reference to the description of the invention contained in the body of the specification. Thus, in my opinion the relevant claims each import a requirement that the language used is to be understood in light of the invention being in the laid-flat form. This does no more than give effect to the language chosen by the patentee and does not expand or narrow the relevant claims.


case_outcome: followed

case_text: As a general rule, the terms used in a specification should be accorded their ordinary English meaning. Put another way, the terms must be understood in a practical, commonsense manner: Electric & Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513; Interlego at 478; Minnesota Mining at 270; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338.


case_text: It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 17 It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric & Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; Décor at 391, 398; Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74]. 19 As a general rule, the terms used in a specification should be accorded their ordinary English meaning. Put another way, the terms must be understood in a practical, commonsense manner: Electric & Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513; Interlego at 478; Minnesota Mining at 270; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338. 22 Ultimately, however, the construction of the specification is for the court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas at 485-486; Patent Gesellschaft at 455. Further, if the evidence before the court does not establish that a technical meaning is to be given to a term, it is to be given its ordinary meaning: Electric & Musical Industries at 226; Minnesota Mining at 279; Patent Gesellschaft at 455; Photocure at [170].


case_text: The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170].


case_text: The parties are not in dispute as to the applicable principles which have been the subject of frequent discussion in the decisions of this Court: see, for instance, Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 (' Beltreco '); PhotoCure ASA v Queen's University at Kingston (2005) 64 IPR 314 (' Photocure '); Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 (' Sachtler '). While it may be useful for me to set out some of the relevant principles I shall do so only briefly. 15 The ordinary rules of construction that apply to any written instrument are applicable to the construction of the specification of a patent: Nobel's Explosives Co Ltd v Anderson (1894) 11 RPC 519 at 523; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 (' Décor ') at 391, 400; Photocure at [168]. However, there are also a number of special considerations that are relevant to the construction of a patent. The general basis for these rules was explained by Hely J in Beltreco at [70]: 'A patent is a public instrument which grants the right to protection of a defined monopoly, for the consideration of the disclosure of the invention to the general knowledge base of society. It is the need for balance between these symbiotic, yet competing interests which underscores the rules of patent construction.' 16 It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 17 It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric & Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; Décor at 391, 398; Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74]. 18 A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; Décor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 20 The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170]. 25 A feature of a claim is considered essential if the hypothetical reader (that is, a reader skilled in the art before the priority date) would have understood from the language used in the claim, in the context of the specification as a whole, that the patentee intended that strict compliance was an essential requirement of the invention: Catnic at 243; Décor at 400; Populin at 476; Beltreco at [81].


case_title: Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442


case_outcome: cited

case_text: Ultimately, however, the construction of the specification is for the court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas at 485-486; Patent Gesellschaft at 455. Further, if the evidence before the court does not establish that a technical meaning is to be given to a term, it is to be given its ordinary meaning: Electric & Musical Industries at 226; Minnesota Mining at 279; Patent Gesellschaft at 455; Photocure at [170].


case_outcome: considered

case_text: A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; Décor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 29 I also respectfully agree with Bennett J's assessment of the assistance provided by the questions in Improver , which Mr Hess referred to in his submissions. In particular her Honour said at [67]: '...I do not consider that utilisation of those questions is helpful other than, perhaps, as a "check" on the conclusion reached as to the characterisation of essential or inessential integers present in the allegedly infringing article. They are no substitute for construction of the claim to ascertain the essential and inessential integers and a determination regarding the presence of those integers for infringement.' 30 While the shape of the fourth side might accurately be described as the novel feature of the invention claimed, the patentee has chosen by the language of the claims to make the requirement that the front and rear panels be joined along straight sides an essential feature. 31 In my view, these two issues, both of which involve construction of the claims and the specification as a whole, are necessarily connected. Mr Caine's threshold question about the form in which the refuse bag of the invention is to be arranged in order to understand its features, cannot be addressed properly without considering the context in which there is a requirement that the panels be joined along three straight sides. Similarly, the meaning of 'along three straight sides' cannot be determined without reference to the appropriate arrangement.


case_text: It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 17 It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric & Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; Décor at 391, 398; Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74]. 19 As a general rule, the terms used in a specification should be accorded their ordinary English meaning. Put another way, the terms must be understood in a practical, commonsense manner: Electric & Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513; Interlego at 478; Minnesota Mining at 270; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338.


case_title: Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1


case_text: A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; Décor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 37 In my view, the evidence objected to by Clorox is admissible as relevant in the present proceedings in relation to the proper construction of the Patent's claims. While terms used in a claim are to be given their ordinary English meaning, the hypothetical addressee is the non-inventive person skilled in the art before the priority date: see [20] above. This is made plain by Lord Hoffman in Kirin-Amgen at [32] where his Lordship stated: 'Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the meaning of the words the author used", but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of, and background to, the particular utterance . It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience. ' (emphasis added)


case_text: It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric & Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; Décor at 391, 398; Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74].


case_text: Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning: Sartas at 485-486; NV Philips at 531-532; Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-138; Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 (' Patent Gesellschaft ') at 455.


case_text: It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75].


case_text: It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 19 As a general rule, the terms used in a specification should be accorded their ordinary English meaning. Put another way, the terms must be understood in a practical, commonsense manner: Electric & Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513; Interlego at 478; Minnesota Mining at 270; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338. 22 Ultimately, however, the construction of the specification is for the court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas at 485-486; Patent Gesellschaft at 455. Further, if the evidence before the court does not establish that a technical meaning is to be given to a term, it is to be given its ordinary meaning: Electric & Musical Industries at 226; Minnesota Mining at 279; Patent Gesellschaft at 455; Photocure at [170].


case_title: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56


case_text: A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; Décor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720.


case_text: The ordinary rules of construction that apply to any written instrument are applicable to the construction of the specification of a patent: Nobel's Explosives Co Ltd v Anderson (1894) 11 RPC 519 at 523; Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 (' Décor ') at 391, 400; Photocure at [168]. However, there are also a number of special considerations that are relevant to the construction of a patent. The general basis for these rules was explained by Hely J in Beltreco at [70]: 'A patent is a public instrument which grants the right to protection of a defined monopoly, for the consideration of the disclosure of the invention to the general knowledge base of society. It is the need for balance between these symbiotic, yet competing interests which underscores the rules of patent construction.'


case_text: The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170]. 21 Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning: Sartas at 485-486; NV Philips at 531-532; Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-138; Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 (' Patent Gesellschaft ') at 455.


case_text: Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning: Sartas at 485-486; NV Philips at 531-532; Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-138; Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 (' Patent Gesellschaft ') at 455. 22 Ultimately, however, the construction of the specification is for the court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas at 485-486; Patent Gesellschaft at 455. Further, if the evidence before the court does not establish that a technical meaning is to be given to a term, it is to be given its ordinary meaning: Electric & Musical Industries at 226; Minnesota Mining at 279; Patent Gesellschaft at 455; Photocure at [170].


case_text: The Hercules Bag is manufactured, like other such bags (as detailed in the specification of the Patent), from an extruded tube of plastic. Initially therefore, there is no bag, merely a plastic tube. For this reason, Clorox did not claim that this was a case where infringement occurred during the manufacturing process: see, for instance, Pinefair Pty Ltd v Bedford Industries Rehabilitation Association Inc (1998) 42 IPR 330. After the plastic is blown through the extruder, the resulting tube is flattened. The longitudinal sides are 'gusseted', by effectively folding the longitudinal sides towards each other, so that they meet in the centre of the inside of the tube. This 'four-layered form' is then folded in half again resulting in an eight-layered form; that is one-quarter the size of the flattened extruded plastic tube. The tube's base (the third side) is then heat welded forming a 'star-shaped' weld. This feature marks, in essence, the practical difference between the plastic bag described in the Patent's specification and the Hercules Bag. 60 The gusseting of the longitudinal sides and the star-shaped welding of the base have both advantages and disadvantages in comparison to the bag described in the specification. For instance, the Hercules Bag has less capacity and uses more plastic material because of the way in which the base is welded. However, an advantage is that the Hercules Bag is able to be sold in packaging that is narrower than would otherwise be the case. This was said by Mr Caine to be attractive to retailers as the package fits in a supermarket basket and occupies less shelf space. It is also the case that the base weld is stronger and the Hercules Bag has greater tear strength. Dr Pullum also gave evidence that fewer manufacturing difficulties arose when cutting and/or serrating across a narrower portion of plastic. In other words, to cut or serrate across a portion one-eighth the width of the tube is less likely to involve manufacturing difficulties than performing the same action across the entire width of the extruded tube. Dr Pullum also stated that the Hercules Bag could be manufactured in multiple streams. 61 It is also important to note that the Hercules Bag is in an eight-layered form when sold. Consequently, in order to be used in the manner envisaged, the bag must; first, be torn from the other bags to which it is attached along the base and top sides; and secondly, 'opened' up such that refuse or garbage can be placed in the bag through the open top side. This latter action will necessarily mean that, except for the base weld, the bag will no longer be in an eight-layered form.


case_text: The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170]. 25 A feature of a claim is considered essential if the hypothetical reader (that is, a reader skilled in the art before the priority date) would have understood from the language used in the claim, in the context of the specification as a whole, that the patentee intended that strict compliance was an essential requirement of the invention: Catnic at 243; Décor at 400; Populin at 476; Beltreco at [81].


case_outcome: approved

case_text: The parties are not in dispute as to the applicable principles which have been the subject of frequent discussion in the decisions of this Court: see, for instance, Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 (' Beltreco '); PhotoCure ASA v Queen's University at Kingston (2005) 64 IPR 314 (' Photocure '); Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 (' Sachtler '). While it may be useful for me to set out some of the relevant principles I shall do so only briefly.


case_outcome: referred to

case_text: It is appropriate to consider the principles applicable to the construction of a patent and their application to the Patent's specification before addressing Clorox's claims of infringement: see CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 267-268 referring to Ransburg Co v Aerostyle Ltd [1968] RPC 287 per Lord Upjohn at 297. Indeed, it is important to ensure that consideration of the allegedly infringing product does not influence the determination of the proper construction of the claims.


case_text: The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170].


case_title: Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59


case_text: The parties are not in dispute as to the applicable principles which have been the subject of frequent discussion in the decisions of this Court: see, for instance, Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 (' Beltreco '); PhotoCure ASA v Queen's University at Kingston (2005) 64 IPR 314 (' Photocure '); Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 (' Sachtler '). While it may be useful for me to set out some of the relevant principles I shall do so only briefly. 18 A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; Décor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 28 I do not accept the applicant's attempt to introduce the concept of an 'intermediate' feature. Either the feature is necessary for an article to infringe the Patent or it is not. Mr Hess' submissions qualifying his concession go to the proper construction of the relevant claims (and in particular the meaning of 'straight' in this context) rather than to whether this requirement is essential. The construction of the requirement found in the specifications that these sides be 'straight' is a separate question and is discussed below. In my view the requirement that the front and rear panels be joined along three straight sides is an essential integer of the relevant claims and the Hercules Bag must possess this element in order for infringement to be demonstrated. On this issue I respectfully agree with Bennett J in Sachtler at [55] where her Honour said: 'To the extent that recent judgments of this court have suggested that there may be infringement by taking what is determined to be the substantial idea disclosed by the specification but not the essential integers of the claim, I must respectfully disagree.'


case_title: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479


case_title: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577


case_text: It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; Décor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; Décor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric & Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; Décor at 400; Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 17 It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric & Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; Décor at 391, 398; Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74]. 20 The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; Décor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Décor at 391; Photocure at [170].


case_title: Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7


case_text: s 269ZHF(5) required the CEO to give reasons for any recommendation it is possible to analyse whether the CEO performed the statutory function of making the recommendation for continuation of the measures against Siam in accordance with the Act. The Minister declared in the notice that he gave under s 269ZHG(1) that he had accepted the CEO's recommendations, reasons and findings. Where a statute requires a decision-maker to arrive at a state of satisfaction as a condition of the exercise of a power, the courts can review whether the power has been exercised according to law: Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 275-276 Brennan CJ, Toohey, McHugh and Gummow JJ. If the statute requires a decision-maker to be satisfied as to a certain matter or matters before making a decision, the decision can be set aside at common law if it is affected by a jurisdictional error. In instances where matters of opinion or taste or policy are involved, the courts have recognised that it may be very difficult to show that the decision-maker has made a jurisdictional error by misconstruing the applicable test, asking the wrong question, making some other mistake of law, taking into account an extraneous reason or excluding from consideration some factor that should affect the determination: Wu Shan Liang 185 CLR at 275-276; Avon Downs Pty Ltd v Federal Commissioner of Taxation [1949] HCA 26 ; (1949) 78 CLR 353 at 360 per Dixon J; Buck v Bavone [1976] HCA 24 ; (1976) 135 CLR 110 at 118-119. Such a decision can also be set aside if a ground under the Administrative Decisions (Judicial Review) Act 1977 (Cth) is established.


case_text: Report did not explain what, if anything, was identified as a factor that had been eliminated from consideration. It is not possible to read this "finding" as another way of stating that the CEO or the Minister had not attributed for the purposes of s 269TAE(2A) any injury or threat of injury to Qenos to factors other than the exportation of goods from Thailand or by Siam. In effect, this passage in the Report, did no more than say that the CEO had considered those factors in the sense of having looked at, but discarded, them in a cursory way: cf East Australian Pipeline Pty Ltd v Australian Competition and Consumer Commission [2007] HCA 44 ; (2007) 233 CLR 229 at 244 [52] per Gleeson CJ, Heydon and Crennan JJ, see also 256 [102] per Gummow and Hayne JJ. The attribution of dumping as the sole cause of the likelihood of material injury or its threat was fundamental to the imposition and continuation of anti-dumping measures. The CEO and the Minister had to give a reason to eliminate any factors other than dumping as being likely to cause such an injury or threat so as to arrive at the appropriate determination of what, if any, measures were needed to prevent that injury or threat, and if so, what the nature and extent of the measures would be. No other reason supported the conclusion that the threat of material injury to Qenos would be caused by Siam's dumping (or dumping of Thai exports) alone if the measures were allowed to expire. The material in Report 137 was inadequate to establish that the CEO and the Minister had considered what was shown in confidential appendix 7 as undercutting, in accordance with s 269TAE(2), by not attributing any factor other than dumping as being likely to cause material injury. They took the undercutting itself into account as material establishing the likelihood of a threat of material injury. But, that material begged questions, that were left unanswered, as to why the differences in price appeared and what injury was likely to be caused. Because of this inadequacy, the CEO and the Minister did not, in fact, have sufficient material on which to be satisfied that expiration of the measures would be likely to lead to a threat of material injury to Qenos caused by Siam's dumping: see Telstra Corporation Ltd v Australian Competition Consumer Commission (2008) 107 ALD 474 at 518-519 [180]-[182] where I examined the authorities; R v Australian Stevedoring Industry Board; Ex parte Melbourne Stevedoring Company Pty Ltd (1953) 188 CLR 100 at 120 per Dixon CJ, Williams, Webb and Fullagar JJ. As I said there ( Telstra 107 ALD 502 at 107): "[107] Where a decision-maker must consider matters prescribed by law, generally, he or she cannot jettison or ignore some of those factors or give them cursory consideration only in order to put them to one side: East Australian Pipeline Pty Ltd v Australian Competition and Consumer Commission (2007) 233 CLR 229 ; 239 ALR 50 ; 97 ALD 274 ; 63 ACSR 404 ; [2007] HCA 44 at [52] ( East Australian Pipeline ) per Gleeson CJ, Heydon and Crennan JJ. As Gummow and Hayne JJ, in concurring observed ( East Australian Pipeline at [102]): [102] ... It was not enough for the ACCC to say in its final determination that it had considered those matters in the sense of having looked at but discarded them ..."


case_text: am of opinion that reading Report 137 as a whole, and making allowance for any looseness in language or unhappy phrasing, it does not contain any practical analysis or reasoning process by the CEO or the Minister of what, if any, injury was threatened, on the balance of probabilities, if Siam continued to export the product to Australia at the dumped prices. It was not enough for the CEO and the Minister merely to recite a paraphrase of the test in s 269TAE(2A) but discard it. A person entrusted with a discretion must call his own attention to the matters which he or she is bound to consider: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; (1986) 162 CLR 24 at 39; Telstra 107 ALD at 502 [105].


case_title: Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259


case_text: other reason supported the conclusion that the threat of material injury to Qenos would be caused by Siam's dumping (or dumping of Thai exports) alone if the measures were allowed to expire. The material in Report 137 was inadequate to establish that the CEO and the Minister had considered what was shown in confidential appendix 7 as undercutting, in accordance with s 269TAE(2), by not attributing any factor other than dumping as being likely to cause material injury. They took the undercutting itself into account as material establishing the likelihood of a threat of material injury. But, that material begged questions, that were left unanswered, as to why the differences in price appeared and what injury was likely to be caused. Because of this inadequacy, the CEO and the Minister did not, in fact, have sufficient material on which to be satisfied that expiration of the measures would be likely to lead to a threat of material injury to Qenos caused by Siam's dumping: see Telstra Corporation Ltd v Australian Competition Consumer Commission (2008) 107 ALD 474 at 518-519 [180]-[182] where I examined the authorities; R v Australian Stevedoring Industry Board; Ex parte Melbourne Stevedoring Company Pty Ltd (1953) 188 CLR 100 at 120 per Dixon CJ, Williams, Webb and Fullagar JJ. As I said there ( Telstra 107 ALD 502 at 107): "[107] Where a decision-maker must consider matters prescribed by law, generally, he or she cannot jettison or ignore some of those factors or give them cursory consideration only in order to put them to one side: East Australian Pipeline Pty Ltd v Australian Competition and Consumer Commission (2007) 233 CLR 229 ; 239 ALR 50 ; 97 ALD 274 ; 63 ACSR 404 ; [2007] HCA 44 at [52] ( East Australian Pipeline ) per Gleeson CJ, Heydon and Crennan JJ. As Gummow and Hayne JJ, in concurring observed ( East Australian Pipeline at [102]): [102] ... It was not enough for the ACCC to say in its final determination that it had considered those matters in the sense of having looked at but discarded them ..."


case_text: respondents contended that it was open to the CEO to make the finding in Report 137 that in that context it was likely that there would be price convergence between Siam's imports and Qenos' product. They argued that the test of causation of material injury was "essentially a practical exercise that had the purpose of achieving an objective of determining whether, viewed as a whole, the relevant Australian industry is suffering material injury from dumping", relying on what Lockhart J had said in Swan Portland Cement Ltd v Minister for Small Business and Customs [1991] FCA 49 ; (1991) 28 FCR 135 at 144; and Schaefer Waste Technology Sdn Bhd v Chief Executive Officer, Australian Customs Service [2006] FCA 1644 ; (2006) 156 FCR 94 at 115-116 [147] - [149] per Jacobson J. ISSUE TWO Did the respondents misconstrue the application of s 269TAE(2B)? The respondents responded that Report 137 had analysed whether material injury to Qenos was being caused or threatened in a practical manner as contemplated in Swan Portland 28 FCR at 144 and Schaefer 156 FCR at 115-116 [147]-[149]. They argued that the terms of s 269TAE(1) directed the Minister's enquiry to the exportation of goods from "the country of export", not to an individual exporter located there and that nothing in s 269TAE(2A) affected this construction. The respondents argued that Report 137 had considered Thai exports as a whole and their impact on the Australian industry in accordance with the requirements of Div 6A of Pt XVB. They contended that they had applied the right test and had used the non-injurious price analysis in Report 134 to arrive at their findings. In Swan Portland 28 FCR at 144-145, Lockhart J examined the nature of a determination whether material injury to an Australian industry producing like goods to those dumped has been, or is being caused, or is threatened. He said that such a determination was not an exercise of counting heads of markets, production or distribution centres or things of that kind and that: "It is essentially a practical exercise designed to achieve the objective of determining whether, when viewed as a whole, the relevant Australian industry is suffering material injury from the dumping of goods." And, he went on to emphasise that the finding of injury depends on the facts of the case and inevitably involves a question of degree, balancing all relevant considerations and integers, before concluding whether or not the dumping constitutes material injury to the Australian industry. That approach was approved by Black CJ, Neaves and von Doussa JJ in ICI Australia Operations Pty Ltd v Fraser [1992] FCA 120 ; (1992) 34 FCR 564 at 576, 577-578. The Full Court held that if the Australian ind`ustry had suffered detriment from a number of probable causes, then s 269TG required a determination whether there was a separate material injury or material incremental injury caused by the dumping over and above detriment caused by other factors: ICI Australia 34 FCR at 579. While in each of those cases the Court was considering the legislation in an earlier form than that it presently takes, those observations continue to assist in the construction of the present statutory scheme: see e.g. Schaefer 156 FCR at 115-116 [147]-[149] per Jacobson J.


case_title: Swan Portland Cement Ltd v Minister for Small Business and Customs [1991] FCA 49 ; (1991) 28 FCR 135 at 144


case_text: other reason supported the conclusion that the threat of material injury to Qenos would be caused by Siam's dumping (or dumping of Thai exports) alone if the measures were allowed to expire. The material in Report 137 was inadequate to establish that the CEO and the Minister had considered what was shown in confidential appendix 7 as undercutting, in accordance with s 269TAE(2), by not attributing any factor other than dumping as being likely to cause material injury. They took the undercutting itself into account as material establishing the likelihood of a threat of material injury. But, that material begged questions, that were left unanswered, as to why the differences in price appeared and what injury was likely to be caused. Because of this inadequacy, the CEO and the Minister did not, in fact, have sufficient material on which to be satisfied that expiration of the measures would be likely to lead to a threat of material injury to Qenos caused by Siam's dumping: see Telstra Corporation Ltd v Australian Competition Consumer Commission (2008) 107 ALD 474 at 518-519 [180]-[182] where I examined the authorities; R v Australian Stevedoring Industry Board; Ex parte Melbourne Stevedoring Company Pty Ltd (1953) 188 CLR 100 at 120 per Dixon CJ, Williams, Webb and Fullagar JJ. As I said there ( Telstra 107 ALD 502 at 107): "[107] Where a decision-maker must consider matters prescribed by law, generally, he or she cannot jettison or ignore some of those factors or give them cursory consideration only in order to put them to one side: East Australian Pipeline Pty Ltd v Australian Competition and Consumer Commission (2007) 233 CLR 229 ; 239 ALR 50 ; 97 ALD 274 ; 63 ACSR 404 ; [2007] HCA 44 at [52] ( East Australian Pipeline ) per Gleeson CJ, Heydon and Crennan JJ. As Gummow and Hayne JJ, in concurring observed ( East Australian Pipeline at [102]): [102] ... It was not enough for the ACCC to say in its final determination that it had considered those matters in the sense of having looked at but discarded them ..." I am of opinion that reading Report 137 as a whole, and making allowance for any looseness in language or unhappy phrasing, it does not contain any practical analysis or reasoning process by the CEO or the Minister of what, if any, injury was threatened, on the balance of probabilities, if Siam continued to export the product to Australia at the dumped prices. It was not enough for the CEO and the Minister merely to recite a paraphrase of the test in s 269TAE(2A) but discard it. A person entrusted with a discretion must call his own attention to the matters which he or she is bound to consider: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; (1986) 162 CLR 24 at 39; Telstra 107 ALD at 502 [105].


case_outcome: discussed

case_text: the formation of the requisite state of satisfaction by the CEO under s 269ZHF(2) is an essential precondition to the Minister being able to exercise his or her power under s 269ZHG(1) to decide whether or not to secure the continuation of the anti-dumping measures. And, the CEO's report under s 269ZHF , including the CEO's satisfaction, findings of fact, particulars of the evidence relied on and reasons to support the recommendations in accordance with s 269ZHF(2) and (5), must be considered by the Minister in arriving at a decision under s 269ZHG(1) , together with any other information he or she considers relevant. The discretion of the Minister in s 269ZHG(1) is expressed in wide terms. Nonetheless, it must be exercised within proper limits as Stephen, Mason, Murphy, Aickin and Wilson JJ explained in The Queen v Australian Broadcasting Tribunal; Ex parte 2HD Pty Ltd [1979] HCA 62 ; (1979) 144 CLR 45 at 49 where they said that: "Here the problem lies in ascertaining what are the proper limits of the discretion. In the absence of some positive indication of the considerations on which a grant or refusal of consent is to depend, the discretion is "unconfined except in so far as the subject matter and the scope and purpose of the statutory enactments may enable the Court to pronounce given reasons to be definitely extraneous to any objects the legislature could have had in view", to use the words of Dixon J in Browning ((1977) 74 CLR at p 505). In that case his Honour went on to remark, (as he had done earlier in Swan Hill Corporation v Bradbury [1937] HCA 15 ; (1937) 56 CLR 746 at p 758)), "on the impossibility, when an administrative discretion is undefined, of a court's doing more than saying that this or that consideration is extraneous to the power"." Here, the limits of the discretion, are to be found in the subject matter, scope and purpose of Pt XVB of the Act and, in particular, in the requirement of s 269ZHG(1) itself, that the Minister must consider the report of the CEO. In that consideration, the Minister must also consider, as a fundamental matter in exercising his or her discretion, the central finding of the report that, in accordance with s 269ZHF(2) , the CEO was satisfied that the expiration of the measures would lead or be likely to lead to a continuation or recurrence of both the dumping and the material injury that the anti-dumping measure is intended to prevent. Thus, a review under Div 6A of Pt XVB is not intended as a complete replication of the process under Div 3 involved in the initial imposition of anti-dumping measures. But, the continuation review under Div 6A is still directed to the purpose of preventing material injury or the threat of such an injury caused by dumping. So, in exercising his or her discretion under s 269ZHG(1) , I am of opinion that the Minister must consider whether the existing measures are appropriate and adapted to achieve the purpose served by the measures identified in s 269ZHF(2) if they are to be continued.


case_text: argued that the reasoning in Report 137 recording the CEO's satisfaction as to the matters set out in s 269ZHF(2) was the product of hypothesising about the impact of unknown and undefined future events that bore no causal relationship to the expiry of the measures. Siam contended that, the conclusions in Report 137 that the expiration of the measures would lead or be likely to lead to the occurrence or recurrence of both dumping and material injury, and particularly the likelihood of dumping causing or threatening material injury, were not sufficiently causally connected in a reasoning process in the Report to justify the decision to continue the measures against Siam. Siam argued that the respondents had used speculation rather than a rigorous examination of a kind envisaged by the WTO Appellate Body in United States Sunset Review of Anti-Dumping Duties on Corrosion-Resistant Carbon Steel Flat Products from Japan (AB-2003-5) at [111]. The respondents argued that the terms of s 269ZHF(2) were materially similar to Art 11.3 of the implementation agreement. They argued that the considerations identified by Report 137, provided a reasoning process that was open to, and sufficient for, the CEO and the Minister. They referred to the finding in the Report that Siam had continued to dump the product in Australia even while the existing measures were in force, as leaving it open to the CEO and the Minister to conclude that it was likely that such activity would continue if the measures did not remain in place. The respondents accepted that the CEO was not empowered to make a recommendation under s 269ZHF(2) on the mere possibility of dumping or on no more than speculation, but contended that the CEO had had a more solid foundation for the recommendation and had correctly applied the relevant test. The respondents contended that the CEO's conclusion that imports from Thailand actively competed on price with the product produced in Australia was open on the other findings in the Report notwithstanding that Siam's product was of a higher grade than Qenos'. They pointed to the findings that the average price of Thai imports at the end of 2007 was only slightly higher than Qenos' prices, despite Siam's being of a higher quality, and that the removal of duty from 1 January 2008 would only have improved the competitive position of Siam's products, if measures were not in place. They referred to the fact that Report 134 had ascertained a non-injurious price for Siam's products. They also relied on the Report's finding that Siam's product had a degree of substitutability that could cause injury to the Australian industry.


case_text: respondents argued that s 269TAE(2B) had a limited role, and operated only in the situation in which there were no measures in place. They argued that s 269TAE(2B) had no relevance to an assessment of dumping, as opposed to material injury. The respondents contended that s 269ZHF(2) stated its own test for the purposes of a review under Div 6A of Pt XVB , and it was not constrained by, and applied in a different situation to, the test for imposing the measures originally under s 269TG(2) , using s 269TAE(2B). In addition, the respondents argued that they had considered the changes in market conditions, including that the market had continued to slow, in assessing that injury was likely, not merely threatened. They argued that there was also evidence of current pricing that would cause injury but for the measures and that sales at dumped prices would be below the non-injurious price. They relied on the decision of the WTO appellate body in United States Sunset Reviews of Anti-Dumping Measures on Oil Country Tubular Goods from Argentina (AB-2004-4) at [271]-[285] as supporting the approach that they had taken. ISSUE THREE Should the respondents have excluded any factor other than Siam's exportation to Australia in considering whether any injury to Qenos was threatened? Siam argued that the CEO made no findings in Report 137 about Siam or its relationship to any material, or other, injury to Qenos from dumping. Rather, Siam complained that the Report merely asserted, without any analysis or reasoning, that Customs had not attributed any potential injury from other factors as increasing any potential injury from dumping. It contended that s 269TAE(2A) required the respondents, first, to consider whether any other factors were causing or threatening to cause material injury to the Australian industry and, secondly, not to attribute that injury to any such factor. The WTO Appellate Body found that it was necessary to conduct an analysis that rested on a sufficient factual basis in order for the anti-dumping agency to determine the likelihood of an injury based on "reasoned and adequate conclusions": Oil Country Tubular Goods (AB-2004-4) at [284]. In arriving at a conclusion under s 269TAE(1), the Minister must take account of the matters prescribed in ss 269TAE(2B) and 269TAE(2A). Thus, the question of the foreseeability and imminence of the threat of material injury must be addressed by eliminating factors other than the exportation of Siam's dumped goods in considering whether that dumping alone would be likely to lead to material injury to Qenos if the measures expired. The other aspect of a consideration whether an injury is caused or threatened is that the injury under consideration must be, itself, material. Once again, the imposition of measures is not authorised unless there is more than just a mere injury actual or threatened. Part XVB requires that the injury have the character of materiality to an Australian industry producing like goods. Thus, in arriving at a reasoned and adequate conclusion based on sufficient facts for the purposes of imposing or reviewing the existing or continuation of measures, the Minister must address the question of the materiality of any injury that is under consideration. Here, Report 137 adverted to a number of relevant changes in circumstances. First, it noted the removal of Customs duty from 1 January 2008. This factor could impact on the market in Australia immediately following the period of review ending in the December 2007 quarter. And, Report 137 noted that regional markets had begun to slow, which, it suggested, was likely to create an environment where Qenos was more susceptible to injury caused by dumping. It also concluded that Qenos' performance showed some signs of deterioration towards the end of the five quarters examined.


case_text: The matter was remitted to the Federal Court and heard as proceeding VID 676 of 2002. Following a direction by a Registrar of the Court, on 29 November 2002 the appellants filed an amended application under s 475A of the Migration Act 1958 ("the Act ") and s 39B of the Judiciary Act 1903 . That application, which was heard in the first instance by Sundberg J, alleged that the RRT fell into jurisdictional error by considering out-of-date country information. The appellants' written contentions of fact and law repeated this claim. By a decision delivered 12 November 2003, Sundberg J dismissed the application for review. His Honour said, in M18/2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 1289 , at [13] and [16]: "As can be seen, when the Tribunal was considering the applicant's claims as to what happened to her in 1994 and thereafter, it considered information contemporaneous with the times. It would have been irrelevant to consider current information about Sri Lanka in assessing the state of the country after the events were said to have occurred. When it was considering the real chance of persecution on return, it had regard to current information about the country. ... It is to be remembered that the weight to be attributed to country information is a matter for the Tribunal, not for the Court."


case_text: The appellants appealed to a Full Court of this Court. The Full Court said, in M18/2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 127 , at [10]-[11], as follows: "In a notice of appeal filed on 1 December 2003, the appellant effectively repeated the ground raised before the primary judge. That is, it was alleged that the Tribunal fell into jurisdictional error by considering dated and not recent country information and the primary judge erred in not concluding that the Tribunal had fallen into jurisdictional error. For the reasons given by the primary judge, this contention is without substance." 6 The Full Court also discussed the appellants' additional submissions, which sought to raise the 'medically unfit' ground mentioned in the draft order nisi filed in the High Court. The Court said, at [12]-[19]: "In written submissions, the [first] appellant raised a number of additional issues. They included that she had been denied procedural fairness because she had been required to attend the hearing before the Tribunal at a time when she was medically unfit. The appellant also contended, in effect, that the Tribunal failed to take into account her mental state when assessing her evidence and, in particular, when considering the significance of her inability to name the Tamil boarders she claimed to have taken in during 1999. It is apparent from the Tribunal's reasons that the hearing was delayed for three months at the appellant's request because of a psychologist's report concerning the mental health of the appellant. That report recommended that the appellant should receive treatment for her condition in the interim. After the three months had passed, the Tribunal asked the appellant to attend a hearing on 25 May 2001 but, at the appellant's request (made on 24 May 2001) delayed that hearing until 31 May 2001. The Tribunal refused to delay the hearing for a longer period. It did so on the ground that the psychologist, although stating that the appellant still suffered from the same condition, reported that the appellant had not sought the recommended treatment. The appellant attended the delayed hearing with her legal representative. The appellant's amended application and written submissions before the primary Judge were prepared by counsel. That application and those submissions appear to have abandoned a complaint made in the draft order nisi that the appellant was denied procedural fairness (and that the Tribunal failed to follow procedures required by [the Act ] and misconceived its duty) because the hearing before the Tribunal took place when she was suffering from a mental disability. It may well be that the matter was not pursued in either the application or submissions because those advising the appellant considered a denial of procedural fairness was not a ground available under the then legislative regime. The allegation of denial of procedural fairness is not raised in the notice of appeal. However it is relatively clear the notice was prepared by the appellant without legal assistance. A full investigation of the consequences of any mental illness the appellant might have suffered at the time of the hearings before the Tribunal, would almost certainly have involved evidence being led before the primary judge. It was not."


case_text: The learned Federal Magistrate found ( MZXEF v Minister for Immigration [2006] FMCA 187 at [14] ): "[T] here is little doubt that in this case the issues now sought to be agitated ... are substantially the same as the issues which had been initially before the primary judge in the first application and in any event, which had been considered by the Full Court of the Federal Court on appeal from that decision. " Accordingly, his Honour found that the doctrine of res judicata applied and that the review application should be summarily dismissed. The Federal Magistrate held, in the alternative, that the application constituted an abuse of process and could also be dismissed on that basis. 12 The notice of appeal was broad and unparticularised. It was, however, accompanied by an affidavit sworn by the first appellant on 17 February 2006. The principal grounds of appeal raised by the appellants appear in this affidavit and in the appellants' written submissions filed on 25 April 2006. These grounds were: (1) that the first appellant was medically unfit to give evidence in support of her application before the RRT and was therefore denied procedural fairness and her rights under s 425 of the Act ; and (2) that the RRT failed to consider up-to-date country information. 13 On the hearing of the appeal, the first appellant reiterated both grounds and gave the Court copies of a document containing recent information on the situation in Sri Lanka.


case_text: This is the second occasion in which the appellants have instituted proceedings for the judicial review of the RRT's decision in January 2002. The grounds or proposed grounds were (1) the RRT's reliance on out-of-date country information and (2) save before Sundberg J, the first appellant's medical condition at the time of the hearing. At first instance and on appeal, the appellants were unsuccessful. The RRT's reliance on country information was the subject of Sundberg J's and the Full Court's consideration. The appellants seek to raise again the very same ground. I accept the first respondent's submission that there is no error shown in his Honour's conclusion that res judicata applied to preclude the appellants from pursuing a second judicial review application on this ground. Res judicata can operate as a bar to a judicial review application in these circumstances: see MZWHW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 466 (" MZWHW ") at [11] referring to Re Wong v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 204 ALR 722 (" Wong ") at [71]. 18 The Federal Magistrate's decision was, so it seems to me, a final decision: see MZWHW at [6]; also SZEEO v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 546 at [8] - [11] ; NADZ v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 975 at [29] ; and MZWZL v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1475 at [11] . Accordingly, the appellant did not require leave to appeal.


case_text: This is the second occasion in which the appellants have instituted proceedings for the judicial review of the RRT's decision in January 2002. The grounds or proposed grounds were (1) the RRT's reliance on out-of-date country information and (2) save before Sundberg J, the first appellant's medical condition at the time of the hearing. At first instance and on appeal, the appellants were unsuccessful. The RRT's reliance on country information was the subject of Sundberg J's and the Full Court's consideration. The appellants seek to raise again the very same ground. I accept the first respondent's submission that there is no error shown in his Honour's conclusion that res judicata applied to preclude the appellants from pursuing a second judicial review application on this ground. Res judicata can operate as a bar to a judicial review application in these circumstances: see MZWHW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 466 (" MZWHW ") at [11] referring to Re Wong v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 204 ALR 722 (" Wong ") at [71]. 16 The issue concerning the first appellant's medical condition formed part of the appellants' application in the High Court and a ground, or proposed ground, of appeal in the Full Court. The Full Court gave detailed consideration to the 'medically unfit' ground in determining whether, if an application to adduce further evidence were made, there would be any basis for the grant of leave. In substance, the Court held that there was no basis for the grant because the proposed ground was untenable in light of what had occurred at the RRT hearing. Even if this were insufficient to attract res judicata because directed to a different issue (namely, whether there was any basis to grant leave to adduce further evidence) from that which arises here, the history of the various proceedings instituted by the appellants discloses that his Honour correctly held the proceeding in the Federal Magistrates Court constituted an abuse of process. This is because, to the extent the appellants relied on the 'medically unfit' ground, these second judicial review proceedings would attract an Anshun estoppel: see Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589. Such an estoppel bars a party from raising any point which properly belonged to the subject of earlier litigation that the party, exercising reasonable diligence, might have brought forward at the time of the earlier proceeding. Plainly enough, the 'medically unfit' ground might have been brought forward for Sundberg J's consideration. Nothing has been established that would attract the discretion that forms part of the Anshun estoppel doctrine: see generally Wong at [49], [61]-[64], [149].


case_text: The issue concerning the first appellant's medical condition formed part of the appellants' application in the High Court and a ground, or proposed ground, of appeal in the Full Court. The Full Court gave detailed consideration to the 'medically unfit' ground in determining whether, if an application to adduce further evidence were made, there would be any basis for the grant of leave. In substance, the Court held that there was no basis for the grant because the proposed ground was untenable in light of what had occurred at the RRT hearing. Even if this were insufficient to attract res judicata because directed to a different issue (namely, whether there was any basis to grant leave to adduce further evidence) from that which arises here, the history of the various proceedings instituted by the appellants discloses that his Honour correctly held the proceeding in the Federal Magistrates Court constituted an abuse of process. This is because, to the extent the appellants relied on the 'medically unfit' ground, these second judicial review proceedings would attract an Anshun estoppel: see Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589. Such an estoppel bars a party from raising any point which properly belonged to the subject of earlier litigation that the party, exercising reasonable diligence, might have brought forward at the time of the earlier proceeding. Plainly enough, the 'medically unfit' ground might have been brought forward for Sundberg J's consideration. Nothing has been established that would attract the discretion that forms part of the Anshun estoppel doctrine: see generally Wong at [49], [61]-[64], [149].


case_text: As the Federal Magistrate noted, the relevant standard for assessing an application for summary dismissal is well established: see, e.g., in Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62. Although it must be very clear that summary dismissal is appropriate, no error is shown in his Honour's decision that this standard was met in this case.


case_text: The Federal Magistrate's decision was, so it seems to me, a final decision: see MZWHW at [6]; also SZEEO v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 546 at [8] - [11] ; NADZ v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 975 at [29] ; and MZWZL v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1475 at [11] . Accordingly, the appellant did not require leave to appeal.


case_title: NADZ v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 975


case_title: MZWZL v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1475


case_title: Alabama, New Orleans, Texas & Pacific Junction Railway Company, In re [1891] 1 Ch 213

case_text: brief description of the two schemes for which approval is now sought is to be found in what I said when ordering the convening of the scheme meetings: see In the Application of United Medical Protection Limited [2007] FCA 631. The duty of the court when acting under s 411(6) of the Corporations Act 2001 (Cth) has been explained more than once. Nothing is served by going over old ground. It will be sufficient to refer to two short passages from the leading case: In re Alabama, New Orleans, Texas & Pacific Junction Railway Company [1891] 1 Ch 213. First there is the passage from Lindley LJ 238-239. He said: What the Court has to do is to see, first of all, that the provisions of that statute have been complied with; and, secondly, that the majority has been acting bona fide. The Court also has to see that the minority is not being overridden by a majority having interests of its own clashing with those of the minority whom they seek to coerce. Further than that, the Court has to look at the scheme and see whether it is one as to which persons acting honestly, and viewing the scheme laid before them in the interests of those whom they represent, take a view which can be reasonably taken by business men. The Court must look at the scheme, and see whether the Act has been complied with, whether the majority are acting bona fide, and whether they are coercing the minority in order to promote interests adverse to those of the class whom they purport to represent; and then see whether the scheme is a reasonable one or whether there is any reasonable objection to it, or such an objection to it as that any reasonable man might say that he could not approve of it. The other passage is from Fry LJ who at 247 said: Then the next inquiry is Under what circumstances is the Court to sanction a resolution which has been passed approving of a compromise or arrangement? I shall not attempt to define what elements may enter into the consideration of the Court beyond this, that I do not doubt for a moment that the Court is bound to ascertain that all the conditions required by the statute have been complied with; it is bound to be satisfied that the proposition was made in good faith; and, further, it must be satisfied that the proposal was at least so far fair and reasonable, as that an intelligent and honest man, who is a member of that class, and acting alone in respect of his interest as such a member, might approve of it. What other circumstances the Court may take into consideration I will not attempt to forecast. These passages make clear that the court does not simply act on the views of members. On the other hand, if the members are acting with full knowledge and complete information and, also, are acting honestly, they are in a far better position than a judge to decide what is in their best interests.


case_text: There are several difficulties in the matter. The first is that the Commission wishes to submit to such order as the Court might make save for costs based upon the comments of the Full Court in Peacock v Human Rights and Equal Opportunity Commission [2005] FCAFC 45 at [38] [40] which in turn referred to the case of Commonwealth v Human Rights and Equal Opportunity Commission (1998) 76 FCR 513. That case in turn referred to Commonwealth v Human Rights and Equal Opportunity Commission (1995) 63 FCR 74. The fountainhead of this jurisprudence, at least in modern times for Australia, is R v Australian Broadcasting Tribunal; Ex parte Hardiman [1980] HCA 13 ; (1980) 144 CLR 13. It is suggested that the role that the Commission has in this case is no different to the role that it had in the other cases in which its participation has been heavily criticized. I will come back to that point in a moment. The application on the part of the Commonwealth was, in effect, sparked by that problem, bearing in mind again the rather trenchant criticism by the Full Court of the lack of the Commonwealth's participation in Peacock [2005] FCAFC 45.


case_title: Commonwealth v Human Rights and Equal Opportunity Commission (1995) 63 FCR 74


case_text: There are several difficulties in the matter. The first is that the Commission wishes to submit to such order as the Court might make save for costs based upon the comments of the Full Court in Peacock v Human Rights and Equal Opportunity Commission [2005] FCAFC 45 at [38] [40] which in turn referred to the case of Commonwealth v Human Rights and Equal Opportunity Commission (1998) 76 FCR 513. That case in turn referred to Commonwealth v Human Rights and Equal Opportunity Commission (1995) 63 FCR 74. The fountainhead of this jurisprudence, at least in modern times for Australia, is R v Australian Broadcasting Tribunal; Ex parte Hardiman [1980] HCA 13 ; (1980) 144 CLR 13. It is suggested that the role that the Commission has in this case is no different to the role that it had in the other cases in which its participation has been heavily criticized. I will come back to that point in a moment. The application on the part of the Commonwealth was, in effect, sparked by that problem, bearing in mind again the rather trenchant criticism by the Full Court of the lack of the Commonwealth's participation in Peacock [2005] FCAFC 45. 6 Leave is not granted to the solicitor for the Commission to withdraw at this stage. The application of Peacock [2005] FCAFC 45 to this case was questioned by me in argument and can be discussed more fully when the matter comes back. 7 The orders I make are those that I have indicated, namely, that the Commonwealth will be added as a respondent on the terms which I have announced. There will be no order for costs of this application. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles. Associate: Dated: 20 December 2007 The Applicant appeared in person Solicitor for the First Respondent: Ms S Bangash of Human Rights and Equal Opportunity Commission Solicitor for the Second Respondent: Ms D Watson of Australian Government Solicitor Date of Hearing: 11 December 2007 Date of Judgment: 11 December 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/2066.html


case_title: R v Australian Broadcasting Tribunal; Ex parte Hardiman [1980] HCA 13 ; (1980) 144 CLR 13