case_text: Considerable care, of course, needs to be exercised in too rigidly approaching the definition in s 3 as having three discrete elements, namely that there be a " decision ", that that decision be of an " administrative character ", and that it be made " under an enactment ": Griffith University v Tang [2005] HCA 7 , 221 CLR 99 per Gummow, Callinan and Heydon JJ. Their Honours there observed: [60] The cases, particularly in the Federal Court, have tended to see these as discrete elements. But there are dangers in looking at the definition as other than a whole. The interrelation between them appears from the following passage in the joint judgment of Toohey and Gaudron JJ in Australian Broadcasting Tribunal v Bond [(1990) 170 CLR 321 at 377] respecting the ADJR Act: It does not follow that, because s 5 is not confined to acts involving the exercise of or a refusal to exercise a substantive power, the acts which constitute a decision reviewable under s 5 of [the ADJR Act] are at large. They are confined by the requirement in s 3(1) that they be made 'under an enactment'. A decision under an enactment is one required by, or authorized by, an enactment. The decision may be expressly or impliedly required or authorized. If an enactment requires that a particular finding be made as a condition precedent to the exercise of or refusal to exercise a substantive power, a finding to that effect is readily characterized as a decision 'under an enactment'. However, it is otherwise with respect to findings which are not themselves required by an enactment but merely bear upon some issue for determination or some issue relevant to the exercise of a discretion. Findings of that nature are not themselves 'decisions under an enactment'; they are merely findings on the way to a decision under an enactment. (citations omitted) Their Honours later went on to conclude: [89] The determination of whether a decision is "made ... under an enactment" involves two criteria: first, the decision must be expressly or impliedly required or authorised by the enactment; and, secondly, the decision must itself confer, alter or otherwise affect legal rights or obligations, and in that sense the decision must derive from the enactment. A decision will only be "made ... under an enactment" if both these criteria are met. It should be emphasised that this construction of the statutory definition does not require the relevant decision to affect or alter existing rights or obligations, and it will be sufficient that the enactment requires or authorises decisions from which new rights or obligations arise. Similarly, it is not necessary that the relevantly affected legal rights owe their existence to the enactment in question. Affection of rights or obligations derived from the general law or statute will suffice. 14 The " enactment " pursuant to which any decision made by the Authority has been taken is identified in the Amended Application as being either s 255 of the Superannuation Industry (Supervision) Act 1993 (Cth) or s 56(4) of the Australian Prudential Regulation Authority Act 1998 (Cth). Written submissions filed on behalf of the Applicant also placed reliance upon s 11 of the 1998 Act. The Respondents contend that there has been no decision " under an enactment "; any decision made, it is contended, does not " alter or otherwise affect legal rights or obligations ". 15 No submission was advanced by the Authority contending that its August and December 2007 letters did not constitute a " decision " within the meaning of s 3(2) of the Administrative Decisions (Judicial Review) Act . 33 The term " matter " as used in s 39B has the same meaning that it has in ss 75 , 76 and 77 of the Constitution : Commonwealth v Lyon [2003] FCAFC 284 at [24] , [2003] FCAFC 284 ; 133 FCR 265 at 272 per Branson, Madgwick and Hely JJ. The term " matter ", it has been said, " requires some immediate right, duty or liability to be established by the court ": Griffith University v Tang [2005] HCA 7 at [90] , [2005] HCA 7 ; 221 CLR 99 at 131 per Gummow, Callinan and Heydon JJ.


case_outcome: followed

case_text: Section 43 of the Federal Court of Australia Act confers discretion upon the Court to make an order for costs. That general discretion is " absolute and unfettered, except that it must be exercised judicially, not arbitrarily or capriciously ": Trade Practices Commission v Nicholas Enterprises Pty Ltd (No 3) (1979) 42 FLR 213 at 219. The general approach is that costs should follow the event: Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 40-748 at 48,136 per Toohey J.


case_outcome: considered

case_text: Had it been necessary to consider that Motion , however, an extension would have been granted. The principles to be applied in considering any such application have been previously identified by Wilcox J in Hunter Valley Developments Pty Ltd v Cohen (1984) 3 FCR 344 at 348 9. 50 Notwithstanding the fact that no satisfactory explanation has been advanced as to why these proceedings were commenced approximately five months out of time, the fact remains that, prior to the commencement of these proceedings, the Applicant had repeatedly asserted its entitlement to have the documents returned to it. The Authority could have been under no impression that the issues arising from its service of the s 255 notice had been finally resolved. No prejudice was raised by the Authority in opposition to any extension of time being granted. 51 The appropriate order to be made is that the Amended Application for an Order of Review be dismissed.


case_text: Nor can reliance be placed by the Applicant upon s 11 of the Australian Prudential Regulation Authority Act as the source of the authority pursuant to which the decision was taken. A power of the kind conferred by s 11 does not authorise or require the making of any decision: cf Hutchins v Commissioner of Taxation (1996) 65 FCR 269 at 272; Salerno v National Crime Authority (1997) 75 FCR 133. As observed by the Full Court in Salerno , at 143: If a general authorisation in a statute for a decision by an organisation set up under that legislation is sufficient to make it a decision under the statute, and thus open to judicial review, every intra vires action of that organisation that has decisional effect and every kind of conduct engaged in by it for the purpose of making a decision will be examinable by the court. The potential for massive disruption of the organisation's activities that would be the consequence of such a conclusion is manifest. Appl'd: Electricity Supply Association of Australia Ltd v Australian Competition and Consumer Commission [2001] FCA 1296 at [70] , [2001] FCA 1296 ; 113 FCR 230 at 250 1 per Finn J.


case_outcome: distinguished

case_text: Reliance by the Applicant upon Johns v Australian Securities Commission [1993] HCA 56 , 178 CLR 408 is misplaced. In issue in those proceedings was the disclosure of transcripts of examinations conducted pursuant to s 19 of the Australian Securities Commission Act 1989 (Cth). Section 25(3) authorised the Commission to give to persons a copy of a written record of an examination. Section 127(1) required the Commission to " take all reasonable measures to protect from unauthorised use or disclosure information given to it in confidence in or in connection with the performance of its functions or the exercise of its powers ". Section 127(4)(b) authorised the disclosure of information where it would " enable or assist the government, or an agency, of a State or Territory to perform a function or exercise a power ". These statutory provisions, it is considered, stand in contrast to s 56(4) of the 1998 Act. The provisions in issue in Johns authorised the giving to persons of written copies of an examination. There is no such counterpart provision in the 1998 Act. Although, as observed by Brennan J in Johns, s 25(3) and s 127(4)(b) were both relied upon " as alternative sources of authority to give copies of the transcripts to the Royal Commission ", the " better view may be that s 25(3) was the source of the authority and s 127(4)(b) was a limitation on its exercise ": [1993] HCA 56 ; (1993) 178 CLR 408 at 426. 28 Section 56(4) certainly does not expressly authorise the disclosure of information; nor can that provision be construed as impliedly authorising any such decision. The decision or decisions of the Authority were not made under s 56.


case_text: If this Court is to have jurisdiction there must nevertheless remain a " matter " which it can be said arises under a law made by Parliament. A matter arises under a federal law " if the right or duty in question ... owes its existence to Federal law or depends upon Federal law for its enforcement ": R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett [1945] HCA 50 ; (1945) 70 CLR 141 at 154; LNC Industries Ltd v BMW (Australia) Ltd [1983] HCA 31 ; (1983) 151 CLR 575 at 581 per Gibbs CJ, Mason, Wilson, Brennan, Deane and Dawson JJ.


case_title: McGowan v Migration Agents Registration Authority [2003] FCA 482 , 77 ALD 49

case_text: It is thus recognised that " the notion of a 'matter ... arising under any laws made by the Parliament' ... is wider than that of a 'decision ... made under an enactment' ": White Industries Aust Ltd v Commissioner of Taxation [2007] FCA 511 at [111] , [2007] FCA 511 ; 160 FCR 298 at 319 per Lindgren J. A " matter ", for example, may arise under a law made by Parliament and this Court may have jurisdiction, even though there is no " decision " which is sought to be reviewed. Section 39B(1A)(c) is a provision which " should not be given an unduly narrow interpretation ": Saitta Pty Ltd v Commonwealth [2000] FCA 1546 at [89] , [2000] FCA 1546 ; 106 FCR 554 at 573. Justice Weinberg there observed that s 39B(1A)(c) " was intended to provide ample scope for judicial review " -- but what was intended by this observation is, perhaps, not clear: McGowan v Migration Agents Registration Authority [2003] FCA 482 at [34] , [2003] FCA 482 ; 129 FCR 118 at 128 per Branson J.


case_text: If this Court is to have jurisdiction there must nevertheless remain a " matter " which it can be said arises under a law made by Parliament. A matter arises under a federal law " if the right or duty in question ... owes its existence to Federal law or depends upon Federal law for its enforcement ": R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett [1945] HCA 50 ; (1945) 70 CLR 141 at 154; LNC Industries Ltd v BMW (Australia) Ltd [1983] HCA 31 ; (1983) 151 CLR 575 at 581 per Gibbs CJ, Mason, Wilson, Brennan, Deane and Dawson JJ. 39 The fact that those statutory provisions must be construed does not of itself satisfy the requirement that the controversy or dispute between the parties must " arise under any law made by the Parliament ": Felton v Mulligan [1971] HCA 39 ; (1971) 124 CLR 367. The then Chief Justice observed at 374: The critical question in the case is whether the defence did involve the exercise of federal jurisdiction by the Supreme Court. It would do so if the matter before the Supreme Court became or involved by reason of the defence raised to the applicant's claim, either wholly or partly a matter arising under a law made by the Parliament, in this case the Matrimonial Causes Act : see Constitution s. 76(ii) and Judiciary Act s. 39(2). Further the matter arising under a law of the Parliament will have arisen if the suit could have been disposed of by deciding the matter, whether or not the suit was so disposed of : cf. Nelungaloo Pty . Ltd . v . The Commonwealth [1952] HCA 11 ; [(1952) 85 CLR 545] ; The Commonwealth v . Bank of New South Wales [(1949) 79 CLR 497]. It is of course not enough that a law made by the Parliament must be construed in the course of the decision of the case. There must be a matter arising under a law of the Parliament. The contrast between the language of s. 76(i.) and 76 (ii.) is relevant in this connexion. The point at which interpretation of the federal statute, prima facie an apparently incidental consideration, may give rise to a matter arising under the statute is not readily expressed in universally valid terms. But the distinction between the two situations must be maintained. Justice Walsh further observed at 408 9: A comparison between the terms of s. 76(i.) and those of s. 76(ii.) of the Constitution indicates that a distinction is to be drawn between a matter "arising under" a law of the Parliament and a matter which involves the interpretation of such a law. The fact that the interpretation of a law is involved does not necessarily mean that there is a matter arising under the law. But, in my opinion, there is a matter arising under the law if the source of the right claimed by the plaintiff or applicant or the source of a defence which asserts that the defendant or respondent is immune from the liability or obligation alleged against him is a law of the Parliament. I think that that view of what constitutes a matter arising under a law of the Parliament is in conformity with the statements made in R . v Commonwealth Court of Conciliation and Arbitration ; Ex parte Barrett [1945] HCA 50 ; [(1945) 70 CLR 141] by Latham C.J. and by McTiernan J. [(1945) 70 CLR, at p 173]. There Latham C.J. said: "If a right claimed is conferred by or under a federal statute, the claim arises under the statute" [(1945) 70 CLR, at p 154]. Likewise, in my opinion, if the answer made to a claim is that the defendant is free from the obligation asserted against him and that this freedom is conferred by an Act of the Parliament, the defence arises under that Act and the result is that there is before the Court a "matter" which arises under that Act. ... And Gibbs J, as his Honour then was, observed at 416: ... I regard it as now settled that a matter cannot be said to arise under a law made by the Parliament within s. 76 (ii.) simply because to decide the matter it is necessary to consider or construe the law. To adapt some of the language used in James v . South Australia [1927] HCA 32 ; [(1927) 40 CLR 1 at 40], in relation to s. 30 of the Judiciary Act , it may be said that a matter arises under a law made by the Parliament when a right, title, privilege or immunity is claimed under that law. A right, title privilege or immunity may be claimed under a law, either because the law is the source of the right, title, privilege or immunity or because the right, title, privilege or immunity can only be enforced by virtue of the law.


case_title: Saitta Pty Ltd v Commonwealth [2000] FCA 1546 , 106 FCR 554


case_title: Salerno v National Crime Authority (1997) 75 FCR 133


case_title: Trade Practices Commission v Nicholas Enterprises Pty Ltd (No 3) (1979) 42 FLR 213


case_text: No reliance is placed by the Applicant upon s 39B(1) of the Judiciary Act 1903 (Cth) conferring jurisdiction upon this Court. Reliance, however, is placed upon s 39B(1A)(c). That provision is as follows: (1A) The original jurisdiction of the Federal Court of Australia also includes jurisdiction in any matter: ... (c) arising under any laws made by the Parliament, other than a matter in respect of which a criminal prosecution is instituted or any other criminal matter. This provision is " relevantly identical to s 76(ii) of the Constitution ": Transport Workers Union v Lee (1998) 84 FCR 60 at 65. Black CJ, Ryan and Goldberg JJ there observed that: ... the identity of language suggests that the Parliament intended to exercise its power under s 77(i) of the Constitution to confer upon the Federal Court the same potential original jurisdiction as might be conferred upon the High Court of Australia under s 76(ii) [of the Constitution ]. ...


case_title: White Industries Aust Ltd v Commissioner of Taxation [2007] FCA 511 , 160 FCR 298


case_outcome: cited

case_text: In my opinion, the appellant was, by the answer given by the Tribunal, denied the chance of establishing those two facts before the Tribunal. If it had been established that the document was authentic, the Tribunal might not have made the adverse credit findings. That being the case, in my opinion, the appellant has been denied a fair hearing and the Tribunal has fallen into jurisdictional error. Not every statement made by the Tribunal to an applicant which is factually incorrect or may mislead will give rise to a finding that the Tribunal has fallen into jurisdictional error. The statement or representation must give rise to unfairness in the sense that the applicant was denied a fair hearing: Re Minister for Immigration and Multicultural Affairs; Ex parte Lam [2003] HCA 6 ; (2003) 214 CLR 1; Minister for Immigration and Multicultural and Indigenous Affairs v SZFDJ [2006] FCAFC 53 at [30] . Insofar as the Federal Magistrate said otherwise I think, with respect, he has fallen into error.


case_text: The Federal Magistrate found that the Tribunal was entitled to make a finding adverse to the appellant regarding his credibility which he said was a function of the Tribunal: Re Minister for Immigration and Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 ; (2001) 168 ALR 407 at 423 per McHugh J. 29 The Federal Magistrate rejected the appellant's complaints insofar as the appellant sought a rehearing on the merits. 30 Similar matters are raised in the notice of appeal. The thrust of the appellant's complaints on appeal is that the Tribunal erred in (a) finding that the document was a forgery; (b) failing to accord the appellant procedural fairness that it might find the document to be a forgery; (c) failing to allow the appellant to present arguments relating to the issues as required under s 425 of the Act; and (d) failing to investigate the authenticity of the document pursuant to s 427(1)(d) of the Act. Insofar as the Federal Magistrate rejected those arguments, it is said that the Federal Magistrate fell into error.


case_title: Re Minister for Immigration and Multicultural Affairs; Ex parte Lam [2003] HCA 6 ; (2003) 214 CLR 1


case_text: It was put that the second and third grounds of appeal were not raised before the Federal Magistrate. The respondent objected to the appellant raising these grounds for the first time, especially in circumstances where the appellant has not explained why the matters were not raised on the application before the Federal Magistrate: VAAC v Minister for Immigration [2003] FCAFC 74 ; (2003) 129 FCR 168. 42 The third ground of appeal was abandoned. Section 425 was in different form when the Tribunal undertook its review. It then provided: 425. (1) Where section 424 does not apply, the Tribunal: (a) must give the applicant an opportunity to appear before it to give evidence; and (b) may obtain such other evidence as it considers necessary. (2) Subject to paragraph (1)(a), the Tribunal is not required to allow any person to address it orally about the issues arising in relation to the decision under review. 43 There was not then a statutory obligation to invite an applicant to present arguments relating to the issues. For that reason, that ground was rightly abandoned. Ground 2 was, I think, raised before the Federal Magistrates Court and could be the subject of an appeal.


case_text: The appellant has relied upon WACO v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 171 ; (2003) 131 FCR 511 where the Court found the Tribunal to be in breach of procedural fairness by failing to allow an applicant an opportunity to respond to its conclusion that documents which were submitted to the Tribunal at the Tribunal's request after the hearing were a forgery. 40 In this case, however, the Tribunal did not find the document to be a forgery. Rather, it refused to accept it as evidence in support of the appellant's credibility. Moreover, in this case, contrary to the facts in WACO [2003] FCAFC 171 ; 131 FCR 511, the Tribunal raised its concerns with the appellant about the status of the document during the hearing.


case_title: Re Kaz Group Ltd [2004] FCA 738

case_text: Various affidavits including an affidavit by Lucinda Hughes Turnbull, a director of WCG, to the effect that she is willing to act as chairperson at the proposed Scheme meeting, and an affidavit of Sean Martin Howard to the effect that he is willing to act as alternate chairperson. Ms Turnbull and Mr Howard disclose the holdings of shares in WCG by companies associated with themselves respectively. 5 Senior counsel for WCG has properly drawn my attention to two matters, which may be described as the "performance risk issue" and the "no encumbrances" clause. The performance risk issue 6 The "performance risk issue" refers to the risk that MLB will not perform its obligations under the Scheme, by providing the promised consideration after the Scheme Shares have vested in it. Gyles J has referred to this issue in several cases, including Re Kaz Group Ltd [2004] FCA 738 , in which his Honour observed that it was "not entirely adequate" that scheme shares vest in the transferee corporation, leaving the former members with only the transferee corporation's covenant to pay. 7 The issue was again referred to by his Honour in Re Tempo Services Ltd (2005) 53 ACSR 523 (" Tempo "), another cash acquisition scheme by share transfer. His Honour said (at [5]): "The one matter to which I have drawn to attention of counsel is that, as a matter of principle, my view is that the security holders whose securities are divested by virtue of a scheme such as this should not have to bear any credit risk occasioned by the mechanism chosen so far as payment is concerned." In Tempo , the point was met by a provision for payment of the consideration into a Quistclose trust (cf Barclays Bank Ltd v Quistclose Investments Ltd [1968] UKHL 4 ; [1970] AC 567). 8 His Honour most recently considered the issue in SFE Corporation Limited [2006] FCA 670 (" SFE ") at [4]. Indeed, counsel has provided me with a copy of the scheme in SFE , which was, like the present Scheme, an acquisition for cash and shares. More accurately, it provided for an election between a Share Alternative and a Cash and Share Alternative. 9 In the present case, cl 6.1(a) of the Scheme provides that after the Court's approving order is made but before the "Implementation Date" (which is eight business days thereafter), MLB must deposit the aggregate amount of cash consideration payable to all Scheme Shareholders "in cleared funds in the trust account operated by WCG, to be held on trust for the Scheme Shareholders , except that any interest on the amount deposited shall be to MLB's account" [my emphasis]. Clause 6.2 of the Scheme provides that MLB's obligation to issue shares to the Scheme Shareholders is to be performed by its entering their names in the Share Register on the Implementation Date (and within five business days thereafter, dispatching to them an "uncertificated holding statement" relating to the number of MLB Shares issued to the addressee). This provision is generally similar to that found in cl 4.4 of the scheme that was approved in SFE . 14 Senior counsel for WCG, who is very experienced in this area, states that some schemes he has encountered have contained this provision and some have not. Senior counsel has referred to four cases in the last 12 months in which a provision similar to cl 9.3(b) has appeared. He has also remarked that in recent times, two Judges, Gyles J in this Court and Barrett J in the Supreme Court of New South Wales, have expressed a preference for such a provision not to appear in a scheme. Senior counsel has submitted as follows: "37. Possible bases for the Gyles J/Barrett J [approach] would seem to be: (a) Requiring omission of the clause as a matter of exercise of the discretion to convene the scheme meeting under s 411(1) or approve the scheme under s 411(4)(b). (b) The clause is outside the s 411 power which can only bind shareholders and the company. (c) If the clause is within the s 411 power then it purports to affect third party rights (in particular those with a security interest) and such persons are neither party to the application nor have they been notified. 38. On the issue of discretion, there are examples of inclusion of the clause. 39. On the issue of whether it is within the s 411 power, WebCentral submits that it is within the s 411 power to cause a person to become the registered holder of shares. This proposition is best adumbrated in the recent Navigator decision in the Privy Council, [a reference to Cambridge Gas Transport Corporation v The Official Committee of Unsecured Creditors (of Navigator Holdings PLC and others) , Privy Council Appeal No 46 of 2005, delivered 16 May 2006] in particular in paragraph 26. That paragraph succinctly summarises the broad nature of the scheme of arrangement power including that a scheme "may...provide that someone else is to be registered as holder of the shares", which is not a novel proposition. 40. On the issue of affecting third party rights, the Corporations Act provides for more than one method of compulsory acquisition of shares, which provides for the passing of title to the acquirer. Examples include s 661A , s 664A and in a slightly different context a reduction of capital under s 256C. The concept does not embrace those with security interests having the capacity to prevent the acquisition process because of their security interest. The security interest in the scheme consideration presumably remains unaffected by a clause such a [s] cl 9.3(b). The approach of the Court should be that persons lending against shares bear the risk of compulsory acquisition using any one of the means in the Corporations Act , and therefore the Court need have no special concern for them as part of the scheme process. 41. For these reasons, WebCentral submits that cl 9.3(b) is proper and should remain in the scheme." 15 There was discussion of cl 9.3(b) on the hearing, including reference to s 1072E(10) of the Act which relates to notice of trusts on which shares are held. Reference may also be made to cll 2.5 and 2.6 of WCG's constitution. Clause 2.5 provides: "Except as permitted or required by the Corporations Law, the Company shall not recognise a person as holding a Share or Share Option upon any trust". Clause 2.6 provides that WCG is "not bound by or compelled in any way to recognise any equitable, contingent, future or partial right or interest in any Share or Share Option (whether or not it has notice of the interest or right concerned) unless otherwise provided by [the] Constitution or by law, except an absolute right of ownership in the registered holder of the Share or Share Option". These various provisions relate to the position of WCG, not MLB. 16 Senior counsel has undertaken to provide a further submission on the "no encumbrances" issue. As presently advised, I think it appropriate to follow a course that he suggested, namely, to allow cl 9.3(b) to remain in the Scheme for consideration at the meeting of members, while noting that further reflection may lead to my granting approval to the Scheme subject to deletion of the provision. Subsection 411(6) permits the Court to grant its approval subject to such alterations or conditions as it thinks just.


case_text: Various affidavits including an affidavit by Lucinda Hughes Turnbull, a director of WCG, to the effect that she is willing to act as chairperson at the proposed Scheme meeting, and an affidavit of Sean Martin Howard to the effect that he is willing to act as alternate chairperson. Ms Turnbull and Mr Howard disclose the holdings of shares in WCG by companies associated with themselves respectively. 5 Senior counsel for WCG has properly drawn my attention to two matters, which may be described as the "performance risk issue" and the "no encumbrances" clause. The performance risk issue 6 The "performance risk issue" refers to the risk that MLB will not perform its obligations under the Scheme, by providing the promised consideration after the Scheme Shares have vested in it. Gyles J has referred to this issue in several cases, including Re Kaz Group Ltd [2004] FCA 738 , in which his Honour observed that it was "not entirely adequate" that scheme shares vest in the transferee corporation, leaving the former members with only the transferee corporation's covenant to pay. 7 The issue was again referred to by his Honour in Re Tempo Services Ltd (2005) 53 ACSR 523 (" Tempo "), another cash acquisition scheme by share transfer. His Honour said (at [5]): "The one matter to which I have drawn to attention of counsel is that, as a matter of principle, my view is that the security holders whose securities are divested by virtue of a scheme such as this should not have to bear any credit risk occasioned by the mechanism chosen so far as payment is concerned." In Tempo , the point was met by a provision for payment of the consideration into a Quistclose trust (cf Barclays Bank Ltd v Quistclose Investments Ltd [1968] UKHL 4 ; [1970] AC 567). 8 His Honour most recently considered the issue in SFE Corporation Limited [2006] FCA 670 (" SFE ") at [4]. Indeed, counsel has provided me with a copy of the scheme in SFE , which was, like the present Scheme, an acquisition for cash and shares. More accurately, it provided for an election between a Share Alternative and a Cash and Share Alternative. 9 In the present case, cl 6.1(a) of the Scheme provides that after the Court's approving order is made but before the "Implementation Date" (which is eight business days thereafter), MLB must deposit the aggregate amount of cash consideration payable to all Scheme Shareholders "in cleared funds in the trust account operated by WCG, to be held on trust for the Scheme Shareholders , except that any interest on the amount deposited shall be to MLB's account" [my emphasis]. Clause 6.2 of the Scheme provides that MLB's obligation to issue shares to the Scheme Shareholders is to be performed by its entering their names in the Share Register on the Implementation Date (and within five business days thereafter, dispatching to them an "uncertificated holding statement" relating to the number of MLB Shares issued to the addressee). This provision is generally similar to that found in cl 4.4 of the scheme that was approved in SFE .


case_title: SFE Corporation Limited [2006] FCA 670


case_outcome: applied

case_text: The parties were not in dispute as to the principles that apply to the construction of the 981 Patent. I was referred to numerous authorities in which these principles have been clearly articulated, including Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 ( 'Welch Perrin' ) at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 ( 'Interlego' ) at 478 (see also Stephen J at first instance at 466); Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 18-19; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39], 238 [52] and 245-246 [91]-[94]; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1 ( 'Pfizer' ) at 52-54 [247]-[250]; Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 ( 'Kirin-Amgen' ) at 452-457 [27]-[35]; PhotoCure ASA v Queen's University at Kingston (2005) 216 ALR 41 ( 'PhotoCure' ) at 85 [172] and 85-86 [168]-[174]; Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 ( 'Sachtler' ) at 380-382 [39]-[42]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 ( 'Clorox' ) at 260-262 [13]-[22]. 64 For present purposes, however, it is helpful to refer specifically to several principles that have particular resonance with the circumstances of this case: (1) The underlying consideration in the construction of the patent is that it is a public instrument, conferring a public monopoly, that is meant to define the monopoly in such a way that it is not capable of being misunderstood: see eg Pfizer at 52 [247]. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct that is prohibited: see eg Clorox at 261 [18]. (2) The claims define the invention which is the subject of the patent. They must be construed according to their terms by applying the ordinary rules of construction that apply to any written instrument: see eg Décor at 400; Clorox at 260 [15]. (3) The claims must be construed in the context of the specification as a whole. The rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in resolving ambiguities in the construction of the claims: Clorox at 260 [16]; Sachtler at 381 [42]. (4) Although the claims are to be construed in the context of the specification as a whole, 'the settled rule is that it is not permissible to vary or qualify the plain or unambiguous meaning of the claim by reference to the body of the specification': see Interlego per Barwick CJ and Mason J at 478. Further, 'it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document': Welch Perrin at 610 per Dixon CJ, Kitto and Windeyer JJ; see also Clorox at 261 [17]. (5) A patent specification must be given a purposive rather than a purely literal construction. This involves construing the claims in a practical, commonsense manner, avoiding too technical or narrow a construction of the claims, and preferring a construction under which the invention will work to one where it may not work: Pfizer at 53-54, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56. It also means construing the claims in light of what a reasonable person to whom the patent was addressed would have understood the language of the claim to mean: Kirin-Amgen at 453-454 [30], [32] and [34] per Lord Hoffman. (6) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in the specification and the claim are to be given the meaning that the skilled 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: Clorox at 261-262 [20]; Décor at 391; PhotoCure at 85 [170]. (7) The proper construction of the specification is a matter of law for the Court to determine. However, 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: see Clorox at 262 [21]; see also Root Quality Pty Ltd v Root Control (2000) 49 IPR 225 ( 'Root Quality' ) at 237 [49].


case_title: Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461


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


case_text: The parties were not in dispute as to the principles that apply to the construction of the 981 Patent. I was referred to numerous authorities in which these principles have been clearly articulated, including Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 ( 'Welch Perrin' ) at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 ( 'Interlego' ) at 478 (see also Stephen J at first instance at 466); Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 18-19; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39], 238 [52] and 245-246 [91]-[94]; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1 ( 'Pfizer' ) at 52-54 [247]-[250]; Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 ( 'Kirin-Amgen' ) at 452-457 [27]-[35]; PhotoCure ASA v Queen's University at Kingston (2005) 216 ALR 41 ( 'PhotoCure' ) at 85 [172] and 85-86 [168]-[174]; Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 ( 'Sachtler' ) at 380-382 [39]-[42]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 ( 'Clorox' ) at 260-262 [13]-[22].


case_title: Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230


case_title: Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1


case_text: The parties were not in dispute as to the principles that apply to the construction of the 981 Patent. I was referred to numerous authorities in which these principles have been clearly articulated, including Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 ( 'Welch Perrin' ) at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 ( 'Interlego' ) at 478 (see also Stephen J at first instance at 466); Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 18-19; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39], 238 [52] and 245-246 [91]-[94]; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1 ( 'Pfizer' ) at 52-54 [247]-[250]; Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 ( 'Kirin-Amgen' ) at 452-457 [27]-[35]; PhotoCure ASA v Queen's University at Kingston (2005) 216 ALR 41 ( 'PhotoCure' ) at 85 [172] and 85-86 [168]-[174]; Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 ( 'Sachtler' ) at 380-382 [39]-[42]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 ( 'Clorox' ) at 260-262 [13]-[22]. 64 For present purposes, however, it is helpful to refer specifically to several principles that have particular resonance with the circumstances of this case: (1) The underlying consideration in the construction of the patent is that it is a public instrument, conferring a public monopoly, that is meant to define the monopoly in such a way that it is not capable of being misunderstood: see eg Pfizer at 52 [247]. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct that is prohibited: see eg Clorox at 261 [18]. (2) The claims define the invention which is the subject of the patent. They must be construed according to their terms by applying the ordinary rules of construction that apply to any written instrument: see eg Décor at 400; Clorox at 260 [15]. (3) The claims must be construed in the context of the specification as a whole. The rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in resolving ambiguities in the construction of the claims: Clorox at 260 [16]; Sachtler at 381 [42]. (4) Although the claims are to be construed in the context of the specification as a whole, 'the settled rule is that it is not permissible to vary or qualify the plain or unambiguous meaning of the claim by reference to the body of the specification': see Interlego per Barwick CJ and Mason J at 478. Further, 'it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document': Welch Perrin at 610 per Dixon CJ, Kitto and Windeyer JJ; see also Clorox at 261 [17]. (5) A patent specification must be given a purposive rather than a purely literal construction. This involves construing the claims in a practical, commonsense manner, avoiding too technical or narrow a construction of the claims, and preferring a construction under which the invention will work to one where it may not work: Pfizer at 53-54, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56. It also means construing the claims in light of what a reasonable person to whom the patent was addressed would have understood the language of the claim to mean: Kirin-Amgen at 453-454 [30], [32] and [34] per Lord Hoffman. (6) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in the specification and the claim are to be given the meaning that the skilled 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: Clorox at 261-262 [20]; Décor at 391; PhotoCure at 85 [170]. (7) The proper construction of the specification is a matter of law for the Court to determine. However, 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: see Clorox at 262 [21]; see also Root Quality Pty Ltd v Root Control (2000) 49 IPR 225 ( 'Root Quality' ) at 237 [49]. 146 Ranbaxy argued that the actions that Warner-Lambert had to take after 30 May 1986 to develop and market a single enantiomeric drug showed that the practical difficulties to which it pointed were very real. In particular, Ranbaxy referred to the fact that Warner-Lambert encountered difficulties with racemic atorvastatin lactone in mid 1987; at that point it decided to resolve the racemate into its individual enantiomers; and on 1 February 1989 Warner-Lambert filed a United States patent application directed to the process it had developed for the chiral synthesis of enantiomers of atorvastatin lactone. Assuming that it is appropriate on a question of construction to have regard to these subsequent events, these matters do not affect my conclusion as to the proper construction of the 981 Patent. On the evidence before me, there was a common expectation prior to 30 May 1986 that single enantiomeric drugs could be commercially produced whether by way of resolution or chiral synthesis. The fact that there were numerous single enantiomeric drugs on the market by that stage confirmed this expectation. The possibility that difficulties may be encountered in developing an enantomeric drug for commercial sale does not have the consequence, in my view, that the 981 Patent should be read down so that it only claims racemic mixtures. It must be borne in mind that the patent is concerned with the grant of a monopoly in respect of the claimed compounds for a period of 20 years. There is no reason to doubt that there was a general expectation that means could be found to develop methods of synthesising single enantomeric drugs for commercial sale over that time frame. To my mind, it is unreasonable to suppose that the patent was intended to be confined to racemates simply because difficulties might arise in the near term in producing a single enantiomeric drug on a commercial scale. In any event, I have grave doubts that subsequent conduct of the kind to which Ranbaxy refers in this argument (as distinct from the surrounding commercial circumstances at 30 May 1986) can properly be used as an extrinsic aid to the proper construction of the 981 Patent: cf FAI Traders Insurance Co Ltd v Savoy Plaza Pty Ltd [1993] 2 VLR 437; see also Kirin-Amgen at 452 [28].


case_text: The parties were not in dispute as to the principles that apply to the construction of the 981 Patent. I was referred to numerous authorities in which these principles have been clearly articulated, including Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 ( 'Welch Perrin' ) at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 ( 'Interlego' ) at 478 (see also Stephen J at first instance at 466); Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 18-19; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39], 238 [52] and 245-246 [91]-[94]; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1 ( 'Pfizer' ) at 52-54 [247]-[250]; Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 ( 'Kirin-Amgen' ) at 452-457 [27]-[35]; PhotoCure ASA v Queen's University at Kingston (2005) 216 ALR 41 ( 'PhotoCure' ) at 85 [172] and 85-86 [168]-[174]; Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 ( 'Sachtler' ) at 380-382 [39]-[42]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 ( 'Clorox' ) at 260-262 [13]-[22]. 64 For present purposes, however, it is helpful to refer specifically to several principles that have particular resonance with the circumstances of this case: (1) The underlying consideration in the construction of the patent is that it is a public instrument, conferring a public monopoly, that is meant to define the monopoly in such a way that it is not capable of being misunderstood: see eg Pfizer at 52 [247]. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct that is prohibited: see eg Clorox at 261 [18]. (2) The claims define the invention which is the subject of the patent. They must be construed according to their terms by applying the ordinary rules of construction that apply to any written instrument: see eg Décor at 400; Clorox at 260 [15]. (3) The claims must be construed in the context of the specification as a whole. The rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in resolving ambiguities in the construction of the claims: Clorox at 260 [16]; Sachtler at 381 [42]. (4) Although the claims are to be construed in the context of the specification as a whole, 'the settled rule is that it is not permissible to vary or qualify the plain or unambiguous meaning of the claim by reference to the body of the specification': see Interlego per Barwick CJ and Mason J at 478. Further, 'it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document': Welch Perrin at 610 per Dixon CJ, Kitto and Windeyer JJ; see also Clorox at 261 [17]. (5) A patent specification must be given a purposive rather than a purely literal construction. This involves construing the claims in a practical, commonsense manner, avoiding too technical or narrow a construction of the claims, and preferring a construction under which the invention will work to one where it may not work: Pfizer at 53-54, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56. It also means construing the claims in light of what a reasonable person to whom the patent was addressed would have understood the language of the claim to mean: Kirin-Amgen at 453-454 [30], [32] and [34] per Lord Hoffman. (6) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in the specification and the claim are to be given the meaning that the skilled 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: Clorox at 261-262 [20]; Décor at 391; PhotoCure at 85 [170]. (7) The proper construction of the specification is a matter of law for the Court to determine. However, 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: see Clorox at 262 [21]; see also Root Quality Pty Ltd v Root Control (2000) 49 IPR 225 ( 'Root Quality' ) at 237 [49]. 70 In PhotoCure at 52 [31], Merkel J said: 'The common general knowledge will encompass not only information that is retained in the memory of the skilled person, but also information that the person knows of, and to which he or she might refer as a matter of course, or habitually consult: see ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (1999) 45 IPR 577 at [112] and Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375; [2000] FCA 1303 at [73] . However, common general knowledge does not include information merely because it would have been able to be found if a routine literature search was conducted: see Alphapharm (HCA) at [31], [44]-[45] and [55]. Nor does it follow from the fact that a publication "may have been held in a library readily accessible to a particular formulator" that such a publication formed part of the common general knowledge: see Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at [105] ... per Lehane J.'


case_text: The parties were not in dispute as to the principles that apply to the construction of the 981 Patent. I was referred to numerous authorities in which these principles have been clearly articulated, including Welch Perrin & Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 ( 'Welch Perrin' ) at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 ( 'Interlego' ) at 478 (see also Stephen J at first instance at 466); Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 18-19; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39], 238 [52] and 245-246 [91]-[94]; Pfizer Overseas Pharmaceuticals v Ely Lilly & Co (2005) 68 IPR 1 ( 'Pfizer' ) at 52-54 [247]-[250]; Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 ( 'Kirin-Amgen' ) at 452-457 [27]-[35]; PhotoCure ASA v Queen's University at Kingston (2005) 216 ALR 41 ( 'PhotoCure' ) at 85 [172] and 85-86 [168]-[174]; Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 ( 'Sachtler' ) at 380-382 [39]-[42]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 ( 'Clorox' ) at 260-262 [13]-[22]. 63 I do not propose to summarise all of the guiding principles that emerge from these authorities. That task has already been undertaken, most helpfully, by Bennett J in Sachtler at 380-382 [39]-[42] and Stone J in Clorox at 260-262 [13]-[22]. I gratefully adopt their Honours' summaries of the relevant principles. 64 For present purposes, however, it is helpful to refer specifically to several principles that have particular resonance with the circumstances of this case: (1) The underlying consideration in the construction of the patent is that it is a public instrument, conferring a public monopoly, that is meant to define the monopoly in such a way that it is not capable of being misunderstood: see eg Pfizer at 52 [247]. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct that is prohibited: see eg Clorox at 261 [18]. (2) The claims define the invention which is the subject of the patent. They must be construed according to their terms by applying the ordinary rules of construction that apply to any written instrument: see eg Décor at 400; Clorox at 260 [15]. (3) The claims must be construed in the context of the specification as a whole. The rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in resolving ambiguities in the construction of the claims: Clorox at 260 [16]; Sachtler at 381 [42]. (4) Although the claims are to be construed in the context of the specification as a whole, 'the settled rule is that it is not permissible to vary or qualify the plain or unambiguous meaning of the claim by reference to the body of the specification': see Interlego per Barwick CJ and Mason J at 478. Further, 'it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document': Welch Perrin at 610 per Dixon CJ, Kitto and Windeyer JJ; see also Clorox at 261 [17]. (5) A patent specification must be given a purposive rather than a purely literal construction. This involves construing the claims in a practical, commonsense manner, avoiding too technical or narrow a construction of the claims, and preferring a construction under which the invention will work to one where it may not work: Pfizer at 53-54, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56. It also means construing the claims in light of what a reasonable person to whom the patent was addressed would have understood the language of the claim to mean: Kirin-Amgen at 453-454 [30], [32] and [34] per Lord Hoffman. (6) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in the specification and the claim are to be given the meaning that the skilled 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: Clorox at 261-262 [20]; Décor at 391; PhotoCure at 85 [170]. (7) The proper construction of the specification is a matter of law for the Court to determine. However, 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: see Clorox at 262 [21]; see also Root Quality Pty Ltd v Root Control (2000) 49 IPR 225 ( 'Root Quality' ) at 237 [49].


case_title: Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254


case_text: For present purposes, however, it is helpful to refer specifically to several principles that have particular resonance with the circumstances of this case: (1) The underlying consideration in the construction of the patent is that it is a public instrument, conferring a public monopoly, that is meant to define the monopoly in such a way that it is not capable of being misunderstood: see eg Pfizer at 52 [247]. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct that is prohibited: see eg Clorox at 261 [18]. (2) The claims define the invention which is the subject of the patent. They must be construed according to their terms by applying the ordinary rules of construction that apply to any written instrument: see eg Décor at 400; Clorox at 260 [15]. (3) The claims must be construed in the context of the specification as a whole. The rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in resolving ambiguities in the construction of the claims: Clorox at 260 [16]; Sachtler at 381 [42]. (4) Although the claims are to be construed in the context of the specification as a whole, 'the settled rule is that it is not permissible to vary or qualify the plain or unambiguous meaning of the claim by reference to the body of the specification': see Interlego per Barwick CJ and Mason J at 478. Further, 'it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document': Welch Perrin at 610 per Dixon CJ, Kitto and Windeyer JJ; see also Clorox at 261 [17]. (5) A patent specification must be given a purposive rather than a purely literal construction. This involves construing the claims in a practical, commonsense manner, avoiding too technical or narrow a construction of the claims, and preferring a construction under which the invention will work to one where it may not work: Pfizer at 53-54, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56. It also means construing the claims in light of what a reasonable person to whom the patent was addressed would have understood the language of the claim to mean: Kirin-Amgen at 453-454 [30], [32] and [34] per Lord Hoffman. (6) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in the specification and the claim are to be given the meaning that the skilled 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: Clorox at 261-262 [20]; Décor at 391; PhotoCure at 85 [170]. (7) The proper construction of the specification is a matter of law for the Court to determine. However, 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: see Clorox at 262 [21]; see also Root Quality Pty Ltd v Root Control (2000) 49 IPR 225 ( 'Root Quality' ) at 237 [49].


case_outcome: approved

case_text: For present purposes, however, it is helpful to refer specifically to several principles that have particular resonance with the circumstances of this case: (1) The underlying consideration in the construction of the patent is that it is a public instrument, conferring a public monopoly, that is meant to define the monopoly in such a way that it is not capable of being misunderstood: see eg Pfizer at 52 [247]. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and to allow the general public to identify from the words of the claims the conduct that is prohibited: see eg Clorox at 261 [18]. (2) The claims define the invention which is the subject of the patent. They must be construed according to their terms by applying the ordinary rules of construction that apply to any written instrument: see eg Décor at 400; Clorox at 260 [15]. (3) The claims must be construed in the context of the specification as a whole. The rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in resolving ambiguities in the construction of the claims: Clorox at 260 [16]; Sachtler at 381 [42]. (4) Although the claims are to be construed in the context of the specification as a whole, 'the settled rule is that it is not permissible to vary or qualify the plain or unambiguous meaning of the claim by reference to the body of the specification': see Interlego per Barwick CJ and Mason J at 478. Further, 'it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document': Welch Perrin at 610 per Dixon CJ, Kitto and Windeyer JJ; see also Clorox at 261 [17]. (5) A patent specification must be given a purposive rather than a purely literal construction. This involves construing the claims in a practical, commonsense manner, avoiding too technical or narrow a construction of the claims, and preferring a construction under which the invention will work to one where it may not work: Pfizer at 53-54, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56. It also means construing the claims in light of what a reasonable person to whom the patent was addressed would have understood the language of the claim to mean: Kirin-Amgen at 453-454 [30], [32] and [34] per Lord Hoffman. (6) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in the specification and the claim are to be given the meaning that the skilled 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: Clorox at 261-262 [20]; Décor at 391; PhotoCure at 85 [170]. (7) The proper construction of the specification is a matter of law for the Court to determine. However, 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: see Clorox at 262 [21]; see also Root Quality Pty Ltd v Root Control (2000) 49 IPR 225 ( 'Root Quality' ) at 237 [49]. 65 As patent specifications and claims must be construed in light of the common general knowledge of a person skilled in the art before the priority date, it is necessary to ask: who is the skilled addressee? Various descriptions have been given to the skilled addressee, including the 'notional skilled addressee', the 'uninventive skilled worker in the particular field', the 'non-inventive worker in the field', the 'person skilled in the art', the 'non-inventive hypothetical skilled addressee', and 'those likely to have a particular interest in the subject matter of the invention': Root Quality at 241 [70]-[71] per Finkelstein J. The person skilled in the art is a 'relative expression which does not identify any specific person' and may consist of a team of persons with combined skills: Root Quality at 242 [71]; see also The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 ( 'General Tire' ) at 485. 71 In Root Quality at 241-242 [71], Finkelstein J observed that, generally speaking, the skilled addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention: at 241-242 [71].


case_text: As patent specifications and claims must be construed in light of the common general knowledge of a person skilled in the art before the priority date, it is necessary to ask: who is the skilled addressee? Various descriptions have been given to the skilled addressee, including the 'notional skilled addressee', the 'uninventive skilled worker in the particular field', the 'non-inventive worker in the field', the 'person skilled in the art', the 'non-inventive hypothetical skilled addressee', and 'those likely to have a particular interest in the subject matter of the invention': Root Quality at 241 [70]-[71] per Finkelstein J. The person skilled in the art is a 'relative expression which does not identify any specific person' and may consist of a team of persons with combined skills: Root Quality at 242 [71]; see also The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 ( 'General Tire' ) at 485. 69 There is, accordingly, an important distinction between common general knowledge and public knowledge. In General Tire at 482, the Court of Appeal illustrated the distinction by saying that each and every patent specification of the last 50 years would form part of relevant public knowledge if it is resting anywhere in the shelves of the patent office, whereas common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee the sort of person good at his or her job that could be found in real life. The Court then observed at 482 that: '... individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst those versed in the art that upon evidence of that state of affairs they form part of such knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge.' The Full Federal Court referred to this distinction, with approval, in W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) 25 IPR 481 at 492; see also Heerey J at first instance: Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co (1991) 22 IPR 491 at 523.


case_text: In NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542 ( 'NSI Dental' ) Tamberlin J said at 570 [151]: 'At the outset, it is necessary to describe the attributes of the skilled addressee and the relevant patent area. The skilled addressee is a legal construct and is assumed to be a person, or team, who is "not 'particularly imaginative or inventive'": Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [288] per French and Lindgren JJ. This does not mean that the addressee is a technician or person with only practical and non-academic qualifications. In fields such as chemistry, the addressee can be a person or group with high level qualifications and a capacity for original research: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [30] .' 227 This test was approved by the Full Court in Pfizer at 80-83 [394]-[403] and by Crennan J in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at 94 [134]-[136]. There is no requirement of a deliberate intent to deceive: Pfizer at 80 [394]. Insofar as the representation is based on belief, it is relevant to consider whether the belief is false or not reasonably held: see NSI Dental at 579 [207] per Tamberlin J.


case_text: In NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542 ( 'NSI Dental' ) Tamberlin J said at 570 [151]: 'At the outset, it is necessary to describe the attributes of the skilled addressee and the relevant patent area. The skilled addressee is a legal construct and is assumed to be a person, or team, who is "not 'particularly imaginative or inventive'": Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [288] per French and Lindgren JJ. This does not mean that the addressee is a technician or person with only practical and non-academic qualifications. In fields such as chemistry, the addressee can be a person or group with high level qualifications and a capacity for original research: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [30] .' 67 Axiomatically, the identity of the person who is skilled in the art will vary with the nature of the invention and the field with which it is concerned. The level of skill which can properly be attributed to the skilled addressee will be an important determinant of his or her common general knowledge. The qualifications of the skilled addressee, the setting in which and the resources with which he or she operates, and the practices and techniques that he or she regards as commonplace and known will also be important considerations: see Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 ( 'Alphapharm' ) at 465 [153] per Kirby J. 68 In Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 ( 'Minnesota' ) at 292, Aickin J described 'common general knowledge' as: '... that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.' Aickin J went on to add that those working or studying in some fields of endeavour may make themselves familiar with all patent specifications as they become available for inspection, in one or in many countries, so that their contents become common general knowledge in that particular trade or field of manufacture in the country in question. But that is not so in all fields or in all countries. There must be evidence that the content of a patent specification has become part of the common general knowledge of those working in the relevant field before it can be regarded as part of the background knowledge and experience of the skilled addressee: at 294-295. The High Court confirmed this analysis in Alphapharm at 426-427 [31], 430-431 [44]-[45] and 434 [55].


case_text: In Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 ( 'Minnesota' ) at 292, Aickin J described 'common general knowledge' as: '... that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.' Aickin J went on to add that those working or studying in some fields of endeavour may make themselves familiar with all patent specifications as they become available for inspection, in one or in many countries, so that their contents become common general knowledge in that particular trade or field of manufacture in the country in question. But that is not so in all fields or in all countries. There must be evidence that the content of a patent specification has become part of the common general knowledge of those working in the relevant field before it can be regarded as part of the background knowledge and experience of the skilled addressee: at 294-295. The High Court confirmed this analysis in Alphapharm at 426-427 [31], 430-431 [44]-[45] and 434 [55].


case_text: There is, accordingly, an important distinction between common general knowledge and public knowledge. In General Tire at 482, the Court of Appeal illustrated the distinction by saying that each and every patent specification of the last 50 years would form part of relevant public knowledge if it is resting anywhere in the shelves of the patent office, whereas common general knowledge is a different concept derived from a commonsense approach to the practical question of what would in fact be known to an appropriately skilled addressee the sort of person good at his or her job that could be found in real life. The Court then observed at 482 that: '... individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst those versed in the art that upon evidence of that state of affairs they form part of such knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge.' The Full Federal Court referred to this distinction, with approval, in W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) 25 IPR 481 at 492; see also Heerey J at first instance: Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co (1991) 22 IPR 491 at 523.


case_title: Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co (1991) 22 IPR 491


case_text: In an international field such as drug discovery and development, the Court may have regard to evidence given by experts from outside Australia in assessing the state of common general knowledge of a skilled addressee or a skilled team working in Australia at the priority date: Pfizer at 63 [293]-[295]. Evidence from such witnesses may support the inference of a global pool of common general knowledge on issues relevant to the invention which would have been known to the skilled addressee in Australia: at 63 [294]; see also NutraSweet Australia Pty Ltd v Ajinomoto Co Inc (2005) 67 IPR 381 at 387-388 [29]-[32] per Finkelstein J. 73 Both Warner-Lambert and Ranbaxy called evidence from expert witnesses as to the identity of the skilled addressee in the relevant field, and as to the matters that would fall within the common general knowledge of the skilled addressee immediately before the priority dates of the 981 Patent (30 May 1986) and the Enantiomer Patent (21 July 1989). Neither party, nor any witness, suggested that the nature of the relevant field, or the identity of the skilled addressee, differed between May 1986 and July 1989. 74 Professor Christopher Easton gave evidence on behalf of Warner-Lambert. He is a professor at the Research School of Chemistry, Institute of Advanced Studies, Australian National University. He was awarded the Degree of Doctor of Philosophy by the University of Adelaide in 1981. His PhD involved research in the area of organic chemistry. In 1982, he was a Research Fellow in the Research School of Chemistry at the Australian National University, working on projects relating to organic and biological chemistry including reactions involving the biosynthesis of penicillin. From 1983 to 1986, he was a Lecturer and Senior Lecturer in the Department of Chemistry at the University of Canterbury, New Zealand. From 1986 to 1988 he was a Lecturer in the Department of Organic Chemistry at the University of Adelaide and on 1 January 1992 he was appointed a Reader in the Department of Organic Chemistry. Since 1995, he has held the positions of a Senior Fellow, Professor and Distinguished Professor at the Research School of Chemistry. From 1988, he has also been involved in numerous research projects in the field of medicinal chemistry and drug research.


case_text: Claim 5 of the 981 Patent uses the (+/-) sign so as clearly to indicate that claim 5 was confined to racemic mixtures. That descriptor is not applied to claim 1 or other claims. Arguably, this provides a slight indication that claim 1 was not intended to be limited to racemic mixtures. It also shows that the patentee was aware of particular means by which claims could be limited to a claim to a racemic mixture. This factor is not irrelevant because it is consistent with other indicators that the patent does not exclude the individual enantiomers. However, I am not disposed to attach significant weight to it: see Ranbaxy (UK) Ltd v Warner-Lambert Company [2006] EWCA 876 ( 'Ranbaxy UK' ) at [30] per Jacob LJ; see also the warnings given about the incautious use of the expressio unius maxim of construction in Houssein v Under Secretary, Department of Industrial Relations and Technology (NSW) [1982] HCA 2 ; (1982) 148 CLR 88 at 94 and Wentworth v NSW Bar Association [1992] HCA 24 ; (1992) 176 CLR 239 at 250.


case_title: Houssein v Under Secretary, Department of Industrial Relations and Technology (NSW) [1982] HCA 2 ; (1982) 148 CLR 88


case_title: Wentworth v NSW Bar Association [1992] HCA 24 ; (1992) 176 CLR 239


case_text: Ranbaxy argued that the actions that Warner-Lambert had to take after 30 May 1986 to develop and market a single enantiomeric drug showed that the practical difficulties to which it pointed were very real. In particular, Ranbaxy referred to the fact that Warner-Lambert encountered difficulties with racemic atorvastatin lactone in mid 1987; at that point it decided to resolve the racemate into its individual enantiomers; and on 1 February 1989 Warner-Lambert filed a United States patent application directed to the process it had developed for the chiral synthesis of enantiomers of atorvastatin lactone. Assuming that it is appropriate on a question of construction to have regard to these subsequent events, these matters do not affect my conclusion as to the proper construction of the 981 Patent. On the evidence before me, there was a common expectation prior to 30 May 1986 that single enantiomeric drugs could be commercially produced whether by way of resolution or chiral synthesis. The fact that there were numerous single enantiomeric drugs on the market by that stage confirmed this expectation. The possibility that difficulties may be encountered in developing an enantomeric drug for commercial sale does not have the consequence, in my view, that the 981 Patent should be read down so that it only claims racemic mixtures. It must be borne in mind that the patent is concerned with the grant of a monopoly in respect of the claimed compounds for a period of 20 years. There is no reason to doubt that there was a general expectation that means could be found to develop methods of synthesising single enantomeric drugs for commercial sale over that time frame. To my mind, it is unreasonable to suppose that the patent was intended to be confined to racemates simply because difficulties might arise in the near term in producing a single enantiomeric drug on a commercial scale. In any event, I have grave doubts that subsequent conduct of the kind to which Ranbaxy refers in this argument (as distinct from the surrounding commercial circumstances at 30 May 1986) can properly be used as an extrinsic aid to the proper construction of the 981 Patent: cf FAI Traders Insurance Co Ltd v Savoy Plaza Pty Ltd [1993] 2 VLR 437; see also Kirin-Amgen at 452 [28].


case_text: The United States Court of Appeals for the Federal Circuit adopted a similar construction of the US equivalent of the 981 Patent in Pfizer Inc v Ranbaxy Laboratories Limited 457 F3d 1284 (2006). Like the Court of Appeal in England, the Court of Appeals read the passage in the specification which specifically referred to the four possible isomers as meaning that the invention would otherwise encompass all four isomers of the compounds of structural formula I but for the patentee's express disclaimer of the R-cis and S-cis isomers: at 1289. 158 The 1990 Act governs the issue of the infringement of the 981 Patent and the grant of relief. 159 Ranbaxy has acknowledged that the question of infringement of the 981 Patent will be resolved by a determination of the proper scope of claim 1 of the patent. Specifically, Ranbaxy has admitted that the Ranbaxy Product has the active ingredient atorvastatin calcium. Ranbaxy has also conceded that if claim 1 of the 981 Patent encompasses the R-trans enantiomer of the compounds of structural formula I, its proposed importation and sale of the Ranbaxy Product would infringe claims 1 to 4 and 8 to 9 of the 981 Patent. 162 Ranbaxy has admitted that its product, with its active ingredient atorvastatin calcium, falls within the scope of claim 6 of the Enantiomer Patent. Therefore, the only matters in dispute between the parties in relation to the Enantiomer Patent are as to its validity. The validity of patents that are equivalent to the Enantiomer Patent has been litigated in England, the United States and Canada. However, the decisions in these jurisdictions do not shed any light on the invalidity issues that were contested before me: see Ranbaxy UK at [32] and [40]-[41] per Jacob LJ; Ranbaxy UK Limited v Warner-Lambert Company [2005] EWHC 2142, at [62] per Pumfrey J; Pfizer Inc v Ranbaxy Laboratories Limited , supra; Pfizer Inc v Ranbaxy Laboratories Ltd 405 FSupp2d 495 (D Del 2005) at 512-513 [22]-[27], 518 [32], 519 [35] and 520-525 [36]-[43]; see also Pfizer Canada Inc v The Minister of Health [2006] FC 1471.


case_text: Claim 5 of the 981 Patent uses the (+/-) sign so as clearly to indicate that claim 5 was confined to racemic mixtures. That descriptor is not applied to claim 1 or other claims. Arguably, this provides a slight indication that claim 1 was not intended to be limited to racemic mixtures. It also shows that the patentee was aware of particular means by which claims could be limited to a claim to a racemic mixture. This factor is not irrelevant because it is consistent with other indicators that the patent does not exclude the individual enantiomers. However, I am not disposed to attach significant weight to it: see Ranbaxy (UK) Ltd v Warner-Lambert Company [2006] EWCA 876 ( 'Ranbaxy UK' ) at [30] per Jacob LJ; see also the warnings given about the incautious use of the expressio unius maxim of construction in Houssein v Under Secretary, Department of Industrial Relations and Technology (NSW) [1982] HCA 2 ; (1982) 148 CLR 88 at 94 and Wentworth v NSW Bar Association [1992] HCA 24 ; (1992) 176 CLR 239 at 250. 150 In Ranbaxy UK , the Court of Appeal held that Warner-Lambert's European Patent EP (UK) 0247633, on its proper construction, claimed both the individual enantiomers and the racemate of structural formula I of claim 1. In doing so, the Court of Appeal affirmed the decision of Pumfrey J: [2005] EWHC 2142 (Patents). The patent in suit was relevantly identical to the 981 Patent. Ranbaxy's construction arguments were also very similar to the arguments advanced in this case. The Court rejected all of those arguments. 151 In the leading judgment, Jacob LJ said at [19]: '... Overshadowing everything is the fact that the skilled reader would know that the R,R-enantiomer was the form which had all or by far the preponderance of the pharmaceutical activity. He would expect the patentee to know that too. And he would know that the patent claim was drafted by someone who knew what its function was to "demarcate the invention" (per Lord Hoffmann in Kirin-Amgen at p.185). There simply is no rational basis for supposing that the patentee would want to exclude the pure enantiomer which he would have known was the substance which really mattered.' A little later in his judgment, his Lordship said at [22]: 'Moreover the actual drawing of formula I and of X shows what is, strictly speaking, just the R,R enantiomer (compare drawing A on Annex A with Formula I). It was common ground that in practice chemists are not precise: that a figure showing a particular structure may mean, in context, a racemate. The Judge held that, in the context of the patent, Formula I would have been understood to show the racemate. However, I can think of no rational reason why it should mean only the racemate in the context of this patent. It is a patent whose big idea is not about stereochemistry but about a novel substitution. The only reference to stereochemistry excludes the "cis-form" of the compounds (which would be both cis-enantiomers) but not the trans- form (which would be both trans-enantiomers). And above all the skilled reader would know that the form giving most if not all activity was the R,R form.' 152 Neuberger LJ reasoned along similar lines at [49]: 'Subject to the point considered in the next paragraph but one, it seems to me clear that the formula in claim 1 must be a reference to the enantiomers as well as the racemic mixture. As the notional addressee of the patent, the relevantly skilled person, would appreciate, it would have been absurd for the patentee to have limited his claim to the racemic mixture. Given that one of its two constituent enantiomers would have been, at best less effective than, or, at worst, ineffective and detrimental to the effectiveness of, the other enantiomer, it would make no practical sense to construe the formula as extending only to the racemic mixture and not to the latter enantiomer. In this connection, I should refer to the Judge's finding that the relevantly skilled person would know how to resolve the racemate (i.e. how to isolate the (more) effective enantiomer) and he would know that this would be generally appreciated by those skilled in the art. That may well be of crucial significance. First, in terms of teaching, the patent is thereby not rendered insufficient if it claims the enantiomers, notwithstanding any express teaching as to how to resolve the racemic mixture. Secondly, the finding underlines the commercial unreality, actual and as perceived by the skilled person, of the contention that the claim does not extend to the enantiomers.' 155 Both Warner-Lambert and Ranbaxy accepted that this decision was persuasive authority in this Court. Senior counsel for Ranbaxy sought to distinguish the case on the basis that it was critical to the decision that no explanation or possible reasons had been advanced as to why the patentee would wish to exclude the individual enantiomers from the scope of claim 1 in the specification. In this regard, senior counsel pointed to the question that Pumfrey J posed in [39] of his reasons: 'a proper approach to construction of this claim is to ask why the patentee, who has covered a two-element composition for use in a drug, would wish not to cover one element of that combination which any reader would know was the effective element and which could be isolated using routine techniques'. Pumfrey J then drew a distinction between an omission that was surprising but for which the patentee might have reasons, and on the other hand an omission that is both surprising and would in the eye of the reader immediately deprive the patent of any commercial effect. Senior counsel for Ranbaxy argued that on this point there was an important distinction between the evidence advanced in the English proceedings and the evidence before this Court. He submitted that Ranbaxy had identified a number of possible reasons why the specification and claims had been drafted so as to exclude the individual enantiomers, in particular the fact that Warner-Lambert proposed to go to market with a racemate and may have contemplated practical difficulties in producing a single enantiomeric drug on a commercial scale. He did not point to any other significant differences in the evidence before the English Court. 156 The suggested distinction between the two cases is illusory. It is clear from the judgment in the Court of Appeal that Ranbaxy argued that there were reasons why the patentee would want to limit the monopoly to the racemate, including the fact that the patentee had done no work with the enantiomer, had no data on it, at the date of the patent many chiral pharmaceuticals were in racemic form, and the perception of a skilled man would be that the SS enantiomer had little or no effect: at [18] and [19]. In my opinion, the Court of Appeal's decision strongly supports the construction which I have adopted of the 981 Patent. 162 Ranbaxy has admitted that its product, with its active ingredient atorvastatin calcium, falls within the scope of claim 6 of the Enantiomer Patent. Therefore, the only matters in dispute between the parties in relation to the Enantiomer Patent are as to its validity. The validity of patents that are equivalent to the Enantiomer Patent has been litigated in England, the United States and Canada. However, the decisions in these jurisdictions do not shed any light on the invalidity issues that were contested before me: see Ranbaxy UK at [32] and [40]-[41] per Jacob LJ; Ranbaxy UK Limited v Warner-Lambert Company [2005] EWHC 2142, at [62] per Pumfrey J; Pfizer Inc v Ranbaxy Laboratories Limited , supra; Pfizer Inc v Ranbaxy Laboratories Ltd 405 FSupp2d 495 (D Del 2005) at 512-513 [22]-[27], 518 [32], 519 [35] and 520-525 [36]-[43]; see also Pfizer Canada Inc v The Minister of Health [2006] FC 1471.


case_text: Ranbaxy has admitted that its product, with its active ingredient atorvastatin calcium, falls within the scope of claim 6 of the Enantiomer Patent. Therefore, the only matters in dispute between the parties in relation to the Enantiomer Patent are as to its validity. The validity of patents that are equivalent to the Enantiomer Patent has been litigated in England, the United States and Canada. However, the decisions in these jurisdictions do not shed any light on the invalidity issues that were contested before me: see Ranbaxy UK at [32] and [40]-[41] per Jacob LJ; Ranbaxy UK Limited v Warner-Lambert Company [2005] EWHC 2142, at [62] per Pumfrey J; Pfizer Inc v Ranbaxy Laboratories Limited , supra; Pfizer Inc v Ranbaxy Laboratories Ltd 405 FSupp2d 495 (D Del 2005) at 512-513 [22]-[27], 518 [32], 519 [35] and 520-525 [36]-[43]; see also Pfizer Canada Inc v The Minister of Health [2006] FC 1471.


case_title: Pfizer Canada Inc v The Minister of Health [2006] FC 1471