case_title: Australian Securities and Investments Commission v Pegasus Leveraged Options Group Pty Ltd [2002] NSWSC 310 ; (2002) 41 ACSR 561


case_outcome: referred to

case_title: Allsop Inc v Bintang Ltd (1989) 15 IPR 689

case_text: An appropriate starting point is the decision of the Full Court of this Court in Allsop Inc v Bintang Ltd (1989) 15 IPR 686. After referring to the fact that there must be an inventive step, although it can be a small one, and the fact that the cases time and again have warned against the "seductive clarity of hindsight", the Court said (at 701): "But although a simple idea may be inventive, it is essential for validity that there be inventiveness. Though small, it must be present. As was said in Graham v John Deere Co, supra, at 15, there is a 'requirement that the subject matter sought to be patented must be beyond the skill of the calling'. The question, as Lord Herschell said in Vickers, Sons & Co Ltd v Siddell [1890] 15 App Cas 496 at 502 is whether the subject of the patent 'was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it'. In R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 523; 85 ALR 679 at 689, Lockhart J said: 'There must ... be some difficulty overcome, some barrier crossed'. He cited a dictum of Cotton LJ that 'it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown in the particular thing'. When the principles which surround that question have been stated, the question itself remains one of fact involving an evaluation of the claimed invention in the light of the evidence. It has been described as a 'jury question': Wellcome Foundation case at (CLR) 280."


case_text: In Bristol-Myers v F H Faulding [2000] FCA 316 ; (2000) 97 FCR 524 at 546, Black CJ and Lehane J considered the case in which the anticipation was a paper anticipation. Their Honours referred with approval to the following passage from the speech of Lord Westbury in Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195: "The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed: -- the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. ... The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application. The reason is manifest, because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the use of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it. Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There may be a latent truth in the words of a former writer, not known even to the writer himself; and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world. Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use." Black CJ and Lehane J, after referring to more recent authorities, said (at 548 [67]): "What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it."


case_text: The re-examination procedure under Chapter 9 of the Act was discussed by Lindgren J in Emperor Sports v Commissioner of Sports [2005] FCA 996 ; (2005) 146 FCR 159 (" Emperor Sports ") and then on appeal by the Full Court of this Court: Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 ; (2006) 149 FCR 386. The particular facts of that case were different from those in this case in that in Emperor Sports the Commissioner of Patents was asked to re-examine a complete specification under s 97(2) of the Act . She did so and she decided to revoke the patent. The patentee appealed against the Commissioner's decision under s 101(4) of the Act . Lindgren J allowed the appeal. He referred to the purpose of the re-examination provisions. In that context he referred to the report dated 29 August 1984 of the Industrial Property Advisory Committee, "Patents, Innovation and Competition in Australia" to the Minister for Science and Technology, and relating to the introduction of post-grant re-examination. He referred to the position in the United States and in that context he referred to a statement in Congress (HR Rep No 96-1307 at 3-4) on the purpose of the re-examining statute (35 USC SS302) (at [104]-[105]). Speaking generally, it seems that the re-examining procedure enables a party to utilise the expertise of the Patent Office to decide appropriate questions with a view, if possible, to avoiding the expense of legal proceedings.


case_text: In this case there is no information which falls within the terms of s 7(3). None of the witnesses who gave evidence relevant to the question of obviousness identified prior art information, either a single piece or a combination, which they said a person skilled in the relevant art could before 21 December 1998 (that is, the priority date of the Patent) be reasonably expected to have ascertained, understood and regarded as relevant (or, in an appropriate case, combined). In those circumstances it is not necessary to consider the extent of the relaxation of the rules under the repealed s 100(1)(c) of the Patents Act 1952 (Cth) effected by s 7(3): Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 (" Elconnex "); Tidy Tea Ltd v Unilever Australia Pty Ltd (1995) 32 IPR 405 (" Tidy Tea "); Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) [2002] HCA 21 ; (2002) 76 ALJR 816 at 821-823 [31] - [36] (" Firebelt "). 142 The attributes of the person skilled in the relevant art for the purposes of s 7(2) have been referred to in a number of authorities. For present purposes it is enough to say that the hypothetical worker must be taken to be non-inventive, although skilled in the relevant art. By reason of the conditions which prevail in modern industry, he or she may be part of a sophisticated research team, with a great amount of information available to it ( Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 at 270 per Aickin J (with whom the other members of the Court agreed); Elconnex at 507 per Burchett J). 145 In Elconnex , Burchett J said (at 507): "While the hypothetical skilled worker, against whose efforts the claimed invention is to be tested, may be taken to have extensive knowledge, he must be uninventive. Even a small inventive element is sufficient to sustain a patent. However, there is a great difference between the simple idea which really breaks new ground and an unimaginative extension of well-known techniques into a closely similar area. Of course, if the area is not closely similar, so that an imaginative leap (even perhaps a small one) is required to perceive that the techniques are applicable to it, there will be invention." (See also Tidy Tea at 413-415.) The particular question of the test of obviousness when faced with a patent involving what is said to be a new combination made up of old integers was discussed by Aickin J in Minnesota Mining . His Honour said (at 293): "In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."


case_title: Emperor Sports v Commissioner of Sports [2005] FCA 996 ; (2005) 146 FCR 159


case_title: Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway ) [2002] HCA 21 ; (2002) 76 ALJR 816

case_text: In this case there is no information which falls within the terms of s 7(3). None of the witnesses who gave evidence relevant to the question of obviousness identified prior art information, either a single piece or a combination, which they said a person skilled in the relevant art could before 21 December 1998 (that is, the priority date of the Patent) be reasonably expected to have ascertained, understood and regarded as relevant (or, in an appropriate case, combined). In those circumstances it is not necessary to consider the extent of the relaxation of the rules under the repealed s 100(1)(c) of the Patents Act 1952 (Cth) effected by s 7(3): Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 (" Elconnex "); Tidy Tea Ltd v Unilever Australia Pty Ltd (1995) 32 IPR 405 (" Tidy Tea "); Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) [2002] HCA 21 ; (2002) 76 ALJR 816 at 821-823 [31] - [36] (" Firebelt "). 146 Part of the above passage was cited with approval by the High Court in Firebelt at [21]. See also Aktiebolagett Hässle v Alphapharm [2002] HCA 59 ; (2002) 212 CLR 411, at 421-432 [42]-[49] (Gleeson CJ, Gaudron, Gummow and Hayne JJ). 147 I turn now to apply these principles to the facts. 148 Mr Langley gave the clearest and most concise evidence as to what was the common general knowledge in the relevant art before the priority date. The facts I now set out are based on his evidence.


case_text: In the well known case of General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457 (" General Tire "), the Court of Appeal said (at 486): "If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co Ltd v Carr & Co Ltd ((1908) 25 RPC 428 at 457, line 34, approved in B T H Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 R P C 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." 101 In ICI Chemicals v Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214, the Full Court of this Court (Lee, Heerey and Lehane JJ) referred to the metaphor involving the flag and said (at 230 [51]): "In those circumstances, and in the absence of relevant expert evidence, we think that the primary judge was correct to conclude that Williamitis did not anticipate the claims of the patent in suit. A familiar metaphor illustrating the concept of anticipation is that the prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee: General Tire at 485-486. In the present case, the appellants' argument involved the skilled addressee rummaging through the Williamitis flag locker to find a flag which Williamitis possessed and could have planted." 115 A number of witnesses gave evidence as to whether the claims in the Patent were novel in light of the prior art referred to above. The construction of documents is for the Court but it seems clear that if appropriate the Court can be assisted by a person skilled in the relevant art at the relevant date. In General Tire the Court of Appeal said (at 485): "The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date." 116 In his second affidavit Dr Franklin expressed the opinion that the Patent lacks novelty or inventiveness having regard to prior art and he refers to the Kennedy and Hitchen patent, the Ogawa patent, a patent called the Kordon patent, the Groom patent and the Sapsford patent. He also expressed the opinion that the patent is not useful. The applicants submitted that I should not receive Dr Franklin's second affidavit. He had not complied with the practice note relevant to experts' reports and, moreover, he would be giving expert evidence in a case in which he was a party. I would waive compliance with the practice note. The applicants have had an adequate opportunity to respond to Dr Franklin's affidavit. As to the other point raised by the applicants, unless it is a particularly serious case of bias which might enliven the discretion to exclude, the fact that Dr Franklin is a party goes to the weight to be accorded to his evidence, not the admissibility of the evidence: J D Heydon, Cross on Evidence (7 th Australian ed, 2004) (at [29080]) and cases cited therein; Ian Freckelton and Hugh Selby, Expert Evidence (3 rd ed, 2005) (at 26 and 315-16) and cases cited therein. 117 Dr Franklin's area of expertise is chemistry, although I accept that he has acquired some knowledge of termite barrier systems by reason of his association with Mr Hannay. He had never installed a termite barrier system either physical or chemical or both before the priority date. It seems that he received the prior art from Mr Geoffrey Habel, an experienced patent and trademark attorney, and it is likely he has been influenced by his discussion with Mr Habel about the prior art. I am not suggesting that there is anything improper about that; simply that it is unlikely he has any real expertise in the interpretation of the prior art. In those circumstances, I do not think Dr Franklin's evidence as to a lack of novelty because of prior art is of any assistance. As to lack of an inventive step or obviousness his evidence is of no assistance because it relies on material (that is, paper anticipations) which, for reasons I will give, was not part of general common knowledge within s 7(2) of the Act .


case_title: Hill v Evans (1862) 4 De G F & J 288


case_text: In ICI Chemicals v Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214, the Full Court of this Court (Lee, Heerey and Lehane JJ) referred to the metaphor involving the flag and said (at 230 [51]): "In those circumstances, and in the absence of relevant expert evidence, we think that the primary judge was correct to conclude that Williamitis did not anticipate the claims of the patent in suit. A familiar metaphor illustrating the concept of anticipation is that the prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee: General Tire at 485-486. In the present case, the appellants' argument involved the skilled addressee rummaging through the Williamitis flag locker to find a flag which Williamitis possessed and could have planted."


case_text: Claims 1 and 2 are each claims for a combination. Each claim consists of a number of integers no one of which was not known at the priority date. However, the applicants submit that they are so arranged and related that they work together to produce a single result or a new thing. In Kanzal v Lee [1936] HCA 39 ; (1936) 58 CLR 670 Dixon and McTiernan JJ said (at 687): "Although the principles relied upon are old and simple and the features, separately considered, are used in daily practice for all sorts of purposes, the production of a new implement by their judicious use may involve an inventive step or display inventive ingenuity, if the integers are so combined and related that they work in co-operation to effect a purpose or provide an appliance which is new . " See also Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30 and Sunbeam Corporation v Morphy Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98 (" Sunbeam Corporation ") at 101 per Windeyer J.


case_text: I have already discussed the relationship between claims 1 and 2 on the one hand and claim 4 on the other (see [86]-[88] above). As a matter of construction, the claims cover a termite resistant product which is a liquid on impregnation and which becomes a solid thereafter. In those circumstances, the argument that the invention is not useful must fail. Had I construed claims 1 and 2 to include a termite resisting product which was in liquid form on impregnation and in a solid or liquid form thereafter then a real question of utility would have arisen ( Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271; Martin Engineering v Trison Holdings (1989) 14 IPR 330 at 337 per Burchett J). However, I would wish to make two points in connexion with that. First, such resulting inutility would be a reason not to construe claims 1 and 2 in that fashion, when the construction not resulting in inutility, which I have adopted, is open: Welch Perrin Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 602 per Menzies J. Secondly, it is not to be assumed that had it been necessary to deal with the question, inutility would have been made out on the facts. The respondents bore the onus on the issue of utility and there was no evidence before me as to types of liquid, evaporation rates and atmospheric conditions in the cavity. In the circumstances, it is not necessary for me to resolve that issue.


case_text: It is well-established that the basic test for anticipation or want of novelty is the same as that for infringement and "one can properly ask oneself whether the alleged anticipation would if the patent were valid, constitute an infringement": Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235 per Aickin J. In that case his Honour said that as no prior document or object involved or incorporated all the integers of any one of the claims there could not possibly be an infringement.


case_text: The Term-Seal FRM also contains the additional two integers in claim 5. The matting is fabricated from natural or artificial fibres. Dr Fredericks examined the samples and he concluded that the matting was fabricated into "a non-woven mat from synthetic (artificial) fibres". As to the second integer, I agree with counsel for the applicants that when the fibres are teased out it is apparent that long fibres have been woven into the fabric. It is permissible for me to draw conclusions from my own inspection of the alleged infringing product: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (" Minnesota Mining "). 93 The Term-Seal FRM also contains the additional integer identified in claim 6, namely, that the matting is woven fiberglass, polyester or polyethylene wadding, or geofabric. I accept the opinion of Dr Fredericks that the matting of the Term-Seal FRM can properly be described as such and, in particular, as polyester wadding or as geofabric. 94 The Term-Seal FRM also contains the additional integer identified in claim 9, namely, that the termite resisting product additionally includes a water-proofing compound, other additives and/or diluents. Dr Fredericks said, and I accept, that the Term-Seal Multi-Purpose largely comprises an acrylic resin (a polymer) which will, when cured, be waterproof. The Term-Seal Multi-Purpose does not contain as additives, creosote or orminoid, as referred to in claim 10, but the applicants do not allege an infringement of claim 10 and there is no reason to read down claim 9 by reference to claim 10. Claim 10 is a later claim with additional integers. 140 It follows from the above that the knowledge which is to be attributed to the person skilled in the relevant art is the "common general knowledge". That does not include a specification open for public inspection unless there is evidence that the disclosure in question was part of the common general knowledge before the priority date. Aickin J (with whom the other members of the Court agreed) made that point in Minnesota Mining . In this case there is no evidence that any of the prior disclosures identified for the purposes of the submissions as to novelty were part of the common general knowledge before the priority date. Indeed, Mr Christopher Langley, who I considered an impressive witness on the question of obviousness, had not seen many of the disclosures put to him in cross-examination before he began to prepare for this litigation. None of the prior disclosures advanced on the case as to novelty are relevant as such on the case as to obviousness because they are not part of the common general knowledge. 141 The common general knowledge is what is known or used by those in the relevant trade or field of endeavour. In Minnesota Mining , Aickin J said (at 292): "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." 145 In Elconnex , Burchett J said (at 507): "While the hypothetical skilled worker, against whose efforts the claimed invention is to be tested, may be taken to have extensive knowledge, he must be uninventive. Even a small inventive element is sufficient to sustain a patent. However, there is a great difference between the simple idea which really breaks new ground and an unimaginative extension of well-known techniques into a closely similar area. Of course, if the area is not closely similar, so that an imaginative leap (even perhaps a small one) is required to perceive that the techniques are applicable to it, there will be invention." (See also Tidy Tea at 413-415.) The particular question of the test of obviousness when faced with a patent involving what is said to be a new combination made up of old integers was discussed by Aickin J in Minnesota Mining . His Honour said (at 293): "In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."


case_text: In the case of a combination, it is the combination which must be disclosed in the prior specification: Necaro Holdings v Martin Engineering (1990) 16 IPR 545 at 549 per Lockhart J; TA Blanco White Patents for Inventions (5 th ed, 1983) para 4.107. 103 The respondents referred to a number of alleged anticipations but emphasised three in particular. The Kennedy and Hitchen patent (published 22 May 1997) 104 The abstract of this patent is in the following terms: "A method for preventing or precluding migration of termites or insects through a possible area of migration for example between a concrete slab (13) and a brick wall (28) erected on the slab (13) including the step of applying to a possible area of migration as for example a join line (15) between the slab (13) and wall (28), a settable or curable barrier material which defines a barrier to termite or insect migration through said area. The barrier material may define a physical barrier or may incorporate a chemical to define a chemical barrier. The method may be used also for preventing termite penetration along pipes (19) penetrating a slab (13) by providing beads (68) around the pipe (19) within the slab (13) or at the junction between the pipe (19) and slab (13)."


case_title: Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271


case_title: Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30


case_text: The test for determining if a claim has been infringed by a defendant's product was stated by Dixon J (as his Honour then was) in Radiation Ltd v Galliers and Kleirr Pty Ltd [1938] HCA 17 ; (1938) 60 CLR 36 (at 51-52): "But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing. It is, no doubt, sometimes the case that an inventor explains in his specification steps or methods involving an idea, conception or principle of wider application or of deeper significance than that for which he claims. Sometimes a claim, particularly a claim for a combination, is expressly confined to a particular form of construction or the like, and in such a case it is useless for the patentee to complain that his idea of what he calls his principle has been applied in a different construction or has been expressed by means of a mechanical equivalent of some element which his claims make of the essence of his monopoly. Such cases are well illustrated by the decisions of this court in Walker v. Alemite Corporation and Shave v. H. V. McKay Massey Harris Pty Ltd But the words of James L.J. in Clark v. Adie, p. 675 must not be forgotten: 'The patent is for the entire combination, but there is, or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination.'" 58 It is necessary at this point to describe the respondents' product, the Term-Seal FRM, in some detail. 59 Pursuant to a notice to produce, samples of the Term-Seal FRM (or fibre re-inforced membrane) were produced and tendered on the hearing before me. The membrane before the application of Term-Seal Multi-Purpose became exhibit A2, three samples of the membrane with the Term-Seal Multi-Purpose applied to it (that is, what I will call the Term-Seal FRM) became exhibits A3, A4 and A5 respectively. The Term-Seal Multi-Purpose in a bucket became exhibit A6 and the same product in a jar became exhibit A7. The "recipe or formula for the Term-Seal Termite Resistant Product which is applied to the Term-Seal FRM" is part of exhibit A1. On occasions the membrane was referred to as the Mopet, which is a brand name.


case_text: Claims 1 and 2 are each claims for a combination. Each claim consists of a number of integers no one of which was not known at the priority date. However, the applicants submit that they are so arranged and related that they work together to produce a single result or a new thing. In Kanzal v Lee [1936] HCA 39 ; (1936) 58 CLR 670 Dixon and McTiernan JJ said (at 687): "Although the principles relied upon are old and simple and the features, separately considered, are used in daily practice for all sorts of purposes, the production of a new implement by their judicious use may involve an inventive step or display inventive ingenuity, if the integers are so combined and related that they work in co-operation to effect a purpose or provide an appliance which is new . " See also Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30 and Sunbeam Corporation v Morphy Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98 (" Sunbeam Corporation ") at 101 per Windeyer J. 56 The relevant comparison for determining if a claim has been infringed is between the applicants' Patent and the respondents' product. The comparison is not between the applicants' product and the respondents' product: Sunbeam Corporation at 101 per Windeyer J.


case_text: In this case there is no information which falls within the terms of s 7(3). None of the witnesses who gave evidence relevant to the question of obviousness identified prior art information, either a single piece or a combination, which they said a person skilled in the relevant art could before 21 December 1998 (that is, the priority date of the Patent) be reasonably expected to have ascertained, understood and regarded as relevant (or, in an appropriate case, combined). In those circumstances it is not necessary to consider the extent of the relaxation of the rules under the repealed s 100(1)(c) of the Patents Act 1952 (Cth) effected by s 7(3): Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 (" Elconnex "); Tidy Tea Ltd v Unilever Australia Pty Ltd (1995) 32 IPR 405 (" Tidy Tea "); Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) [2002] HCA 21 ; (2002) 76 ALJR 816 at 821-823 [31] - [36] (" Firebelt "). 145 In Elconnex , Burchett J said (at 507): "While the hypothetical skilled worker, against whose efforts the claimed invention is to be tested, may be taken to have extensive knowledge, he must be uninventive. Even a small inventive element is sufficient to sustain a patent. However, there is a great difference between the simple idea which really breaks new ground and an unimaginative extension of well-known techniques into a closely similar area. Of course, if the area is not closely similar, so that an imaginative leap (even perhaps a small one) is required to perceive that the techniques are applicable to it, there will be invention." (See also Tidy Tea at 413-415.) The particular question of the test of obviousness when faced with a patent involving what is said to be a new combination made up of old integers was discussed by Aickin J in Minnesota Mining . His Honour said (at 293): "In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."


case_text: An appropriate starting point is the decision of the Full Court of this Court in Allsop Inc v Bintang Ltd (1989) 15 IPR 686. After referring to the fact that there must be an inventive step, although it can be a small one, and the fact that the cases time and again have warned against the "seductive clarity of hindsight", the Court said (at 701): "But although a simple idea may be inventive, it is essential for validity that there be inventiveness. Though small, it must be present. As was said in Graham v John Deere Co, supra, at 15, there is a 'requirement that the subject matter sought to be patented must be beyond the skill of the calling'. The question, as Lord Herschell said in Vickers, Sons & Co Ltd v Siddell [1890] 15 App Cas 496 at 502 is whether the subject of the patent 'was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it'. In R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 523; 85 ALR 679 at 689, Lockhart J said: 'There must ... be some difficulty overcome, some barrier crossed'. He cited a dictum of Cotton LJ that 'it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown in the particular thing'. When the principles which surround that question have been stated, the question itself remains one of fact involving an evaluation of the claimed invention in the light of the evidence. It has been described as a 'jury question': Wellcome Foundation case at (CLR) 280." 155 In my opinion, having regard to the evidence before me as to the common general knowledge before the priority date it has not been established by the respondents that the invention embodied in the relevant claims in the Patent would have been obvious to a person skilled in the relevant art. Without necessarily indicating any preference for how the test as to obviousness should be expressed, it has not been established by the first and second respondents that the invention "was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end ..." ( Vickers, Sons & Co Ltd v Siddell [1890] 15 App Cas 496 at 502 per Lord Herschell). In fact, had it been necessary to do so I would have found that the contrary was established. The idea of a matting impregnated with liquid termite resisting product and used to protect the cavity between masonry wall and concrete slab and thereby forming both a physical and chemical barrier to the entry of termites involved an inventive step having regard to the common general knowledge as I have found it to have been at the relevant time. 156 Although Mr Worthington expressed his conclusion in terms of novelty, it seems that his opinions address the question of obviousness. In addition to saying the invention described in the Patent was not a novel invention, he said that it was "merely an adaptation of an existing detail of construction using another type of material". That opinion appears to be based on the fact that the Termimesh system was in use and the positioning of a damp-proof course and flashing. Those matters do not mean that the invention in the relevant claims was obvious. Nor do the other matters he referred to such as Alcore (which is a roll of aluminium sheets), vapour barriers (which are impervious sheets laid under the slab and up the edge of the slab) and shower damp-proofing mean that the invention disclosed by the relevant claims was obvious. 157 Insofar as Mr Worthington expressed the opinion that the invention in the Patent was obvious, I reject that opinion.


case_title: Welch Perrin Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588


case_text: The attributes of the person skilled in the relevant art for the purposes of s 7(2) have been referred to in a number of authorities. For present purposes it is enough to say that the hypothetical worker must be taken to be non-inventive, although skilled in the relevant art. By reason of the conditions which prevail in modern industry, he or she may be part of a sophisticated research team, with a great amount of information available to it ( Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 at 270 per Aickin J (with whom the other members of the Court agreed); Elconnex at 507 per Burchett J). 144 An appropriate starting point is the decision of the Full Court of this Court in Allsop Inc v Bintang Ltd (1989) 15 IPR 686. After referring to the fact that there must be an inventive step, although it can be a small one, and the fact that the cases time and again have warned against the "seductive clarity of hindsight", the Court said (at 701): "But although a simple idea may be inventive, it is essential for validity that there be inventiveness. Though small, it must be present. As was said in Graham v John Deere Co, supra, at 15, there is a 'requirement that the subject matter sought to be patented must be beyond the skill of the calling'. The question, as Lord Herschell said in Vickers, Sons & Co Ltd v Siddell [1890] 15 App Cas 496 at 502 is whether the subject of the patent 'was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it'. In R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 523; 85 ALR 679 at 689, Lockhart J said: 'There must ... be some difficulty overcome, some barrier crossed'. He cited a dictum of Cotton LJ that 'it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown in the particular thing'. When the principles which surround that question have been stated, the question itself remains one of fact involving an evaluation of the claimed invention in the light of the evidence. It has been described as a 'jury question': Wellcome Foundation case at (CLR) 280."


case_outcome: followed

case_text: In respect to the second ground of appeal, the first respondent contended that the Tribunal considered in detail the appellant's evidence relating to his relationship with his partner. The first respondent contended that any weight to be attached to a relevant consideration is a matter of the merits and a Court should proceed with caution before it interferes with such a finding: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; (1986) 162 CLR 24 per Mason J at 42. 43 The second ground of appeal goes to the merits of the matter. The Tribunal considered the appellant's claim in respect to his relationship with his partner. Having regard to its credibility findings, it was entitled to give whatever weight was appropriate to those claims. That was a matter for the Tribunal: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; 162 CLR 24. Its approach was not indicative of jurisdictional error.


case_text: Finally, the first respondent submits that the third ground should also fail as the Federal Magistrate made no error in holding that s 427(1)(d) of the Act does not impose any duty on the Tribunal to investigate: Minister for Immigration and Multicultural and Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12 at [43] . 44 I accept the first respondent's contention in respect to the third ground. There was no obligation imposed upon the Tribunal to carry out the inquiries of which the appellant complains: Minister for Immigration and Multicultural and Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12 at [43] ; s 427(1)(d) of the Act. 45 All grounds of appeal fail. The appeal must be dismissed. The appellant must pay the first respondent's costs. I certify that the preceding forty-five (45) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lander. Associate: Dated: 7 March 2008 Counsel for the Appellant: Appellant appeared in person Counsel for the First Respondent: Ms M Allars Solicitor for the First Respondent: DLA Phillips Fox Date of Hearing: 4 March 2008 Date of Judgment: 7 March 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/269.html


case_outcome: distinguished

case_text: The Federal Magistrate found that the appellant's claims had been rejected on the basis of credibility. In respect to the alleged wrongdoing of the appellant's migration agent, his Honour found that the alleged conduct did not have "the character of fraud as described in SZFDE " and noted that the Tribunal had formed the view that, in any event, there was no adequate explanation why the appellant did not raise these issues during his second hearing. His Honour concluded that the Tribunal had adequately considered the possible issue concerning the appellant's migration agent, stating at [17]: ... While accepting the subsequent cancellation of his registration as a migration agent, the Tribunal noted that even a flawed agent such as Mr Mollah would have realised the significance of the applicant's claims. The Tribunal formed the view that the applicant did not mention them to Mr Mollah. 28 With respect to the second ground of review, his Honour held that the Tribunal was not under a duty to investigate the appellant's claim under s 427(1)(d) of the Act, nor was it the role of the Court to engage in merits review, which is the way in which his Honour characterised this ground. 29 In relation to the two documents raised in ground 3, his Honour found that there was nothing to suggest bad faith on the part of the Tribunal. The Tribunal was not required to contact the alleged writers or otherwise prove the authenticity of the documents and it was for the appellant to make out his own case. The hearing invitation issued on 9 May 2006 clearly stated that the appellant could nominate witnesses. The appellant elected not to pursue this course but produced letters instead. His Honour was not satisfied that this ground of review could be sustained. The application for review was dismissed. 30 The appellant's notice of appeal raises three grounds of appeal, which are essentially the same three grounds as raised before the Federal Magistrate at first instance: a. The Tribunal failed to constructively exercise its jurisdiction under the Act by not considering the disadvantage suffered by the appellant because of his previous migration agent's wrong doings; and b. The Tribunal did not place any weight on the appellant's relationship with his partner in Australia, in particular, by failing to ascertain whether the partner was in Australia and by failing to contact the hospital where he was a patient; and c. The Tribunal did not put any effort into investigating the authenticity of two documents submitted by the appellant's friend and parents. 31 The appellant filed written submissions in this matter in which he addressed each of the three grounds of appeal. 32 In relation to the first ground of appeal, the appellant repeated his claims that his original migration advisor did not record his claims accurately; submitted a statement without his knowledge by forging his signature; and also advised him not to expand on his answers at the first Tribunal hearing. The appellant challenged the Tribunal's finding that it was "not satisfied that the Applicant ever mentioned them to his advisor." 33 The appellant contended that because he had language difficulties when he arrived, he depended on his migration agent but received ill-treatment. He claimed that he did not get the opportunity to tell the Tribunal about his persecution because of the mistake of his migration agent and that he was therefore denied natural justice. 36 In her written submission, Ms Allars, counsel for the first respondent contended that fraud on the Tribunal may be established where there are dishonest acts and omissions of a third party amounting to fraud and those acts and omissions result in the Tribunal failing to comply with the procedures in Div 4 of Pt 7: SZFDE v Minister for Immigration and Citizenship [2007] HCA 35 ; (2007) 237 ALR 64 at [14] . 37 However, the first respondent relied on the Tribunal's finding that the Tribunal was not satisfied as to the credibility of the appellant and did not accept his claims as truthful. The first respondent contended that even though the Tribunal accepted that the appellant's agent's registration had been cancelled, it did not accept that the agent would have omitted to refer to incidents included in the appellant's documents. Therefore, no fraud by the agent was established. In any event, it was not established that the Tribunal had failed to comply with the procedures in Div 4 of Pt 7. In this case, the appellant did appear at the hearing to give evidence and gave evidence. 40 The Tribunal was aware of the appellant's complaint about his migration agent before the hearing before the second Tribunal. In those circumstances, this Tribunal was in a quite different position to the Tribunal which was the unwitting victim of the agent's fraud in SZFDE [2007] HCA 35 ; 237 ALR 64. In that case, the agent had advised the appellant not to appear at the Tribunal hearing. The Tribunal was unaware of that advice or that the appellant was acting on that advice in not appearing. The Tribunal here considered the appellant's complaints about his migration agent but rejected them because it was not satisfied that the claims were truthfully made. Whilst the Tribunal accepted that the appellant's migration advisor's registration had been cancelled, it was not prepared to find on the appellant's evidence that the migration advisor had omitted incidents from the appellant's documents. Specifically, the Tribunal did not accept his claims that he had mentioned matters to the migration agent which were not included. Moreover, the Tribunal was not prepared to accept that the appellant was frightened of his migration advisor or that the appellant was told to keep his answers brief. In particular, the Tribunal concluded that the appellant's claims were fabricated for the purpose of strengthening his claim to a protection visa. 41 All these findings were open to the Tribunal and, once made, meant that the further findings which the Tribunal made in relation to the appellant's credibility based on the omission of evidence were also open. The findings also preclude, in my opinion, any suggestion that there has been any fraud upon the Tribunal of the kind which was considered in SZFDE [2007] HCA 35 ; 237 ALR 64. 42 Moreover, there is no evidence that the Tribunal, as a result of anything done by the appellant's migration agent, failed to comply with the procedures in Div 4 of Pt 7 of the Act. The first ground of appeal must fail.


case_outcome: cited

case_text: Pursuant to that liberty, Bowesco and Lanepoint, by their common director, Karen Carey-Hazell, have each applied to the Court for orders directing the receiver to make provisions to enable them to meet various legal expenses including the costs of resisting the winding up applications in proceedings WAD 177 of 2006 ( ASIC v Bowesco ) and WAD 152 of 2006 ( ASIC v Lanepoint ). They also apply for funding for legal services in relation to the prosecution of an application by Bowesco for leave to appeal against my decision, made on 14 September 2006, relating to Bowesco's entitlement to an option to purchase certain property, which option had been assigned to it by Westpoint Corporation Pty Ltd: Australian Securities & Investments Commission, In the Matter of Richstar Enterprises Pty Ltd v Carey (No 9) [2006] FCA 1242. Pursuant to an order made by Siopis J on 17 October 2006 a motion for leave to appeal out of time and for leave to appeal that decision was referred to the Full Court in the November sittings. The applications also seek orders for the provision of funding for legal services in relation to certain other matters. 4 The applications, insofar as they relate to the winding up proceedings, are made pursuant to the liberty to apply given on 30 August 2006 in those proceedings. The other directions sought, although brought in these winding up proceedings, should properly be the subject of separate substantive applications. I am prepared, however, because of the urgency of the matters and particularly the pending application by Bowesco for leave to appeal in relation to the option dispute, to deal with the merits of those applications in this judgment on the basis that any substantive application should be filed before the orders sought take effect. 5 The Court is asked to make all of the orders sought as an exercise of the power conferred upon it by s 423(1)(b) of the Corporations Act 2001 (Cth) (the Act). That provision allows for a person to complain to the Court about an act or omission of a controller of property of a corporation in connection with performing or exercising any of the controller's functions and powers. In such a case the Court may inquire into the matter and, where the Court so inquires, it may take such action as it thinks fit. For reasons given below, I do not consider that s 423(1)(b) is an appropriate basis for the orders sought as an incident of the winding up application. Indeed, it seems to have been put forward by Lanepoint and Bowesco as opening a doorway to a broader inquiry into the conduct of the receiverships. 6 The alternative basis upon which the applications rest is s 1321 of the Act. Lanepoint and Bowesco in effect appeal to this Court against the refusal by their receivers and managers to make available, out of the funds under their control, funding for legal representation in the winding up proceedings and for the other purposes to which reference has been made. 7 For the reasons that follow, in my opinion, provision should be made by the receivers and managers of Lanepoint for Bowesco's reasonable legal costs in defending the winding up application brought against it, in meeting the legal costs of this application and in prosecuting its application for leave to appeal. The orders sought by Lanepoint are not acceded to nor the remaining orders sought by Bowesco.


case_title: Australian Securities & Investments Commission, In the Matter of Richstar Enterprises Pty Ltd (ACN 099 071 968) v Carey (No 3) [2006] FCA 433

case_text: On 20 April 2006 freezing orders were made against Bowesco in respect of its assets pursuant to s 1323 of the Act: Australian Securities and Investments Commission, In the Matter of Richstar Enterprises Pty Ltd (ACN 099 071 968) v Carey (No 3) [2006] FCA 433. Those orders were varied on 30 June 2006 and expressed to permit the Bowesco receivers appointed by Suncorp-Metway to exercise their powers pursuant to their appointment including their powers under s 420 of the Act.


case_title: Re Geneva Finance Ltd [1992] 7 WAR 496

case_text: On 30 August 2006 I made the orders earlier referred to declaring that the sole director of Lanepoint and Bowesco, Karen Carey-Hazell, was entitled to defend the winding up proceedings in the name of the companies. The practical concern relevant to whether Ms Carey-Hazell could defend the winding up applications was whether her exercise of powers in their names would interfere with the legitimate exercise by the receivers of their powers. As Owen J said in Re Geneva Finance Ltd [1992] 7 WAR 496: 'The real question is whether the directors, wishing to exercise a power which they would otherwise have, can do so without prejudicing the legitimate interests of the receiver and the secured creditor in the realisation of the asset.' The receivers do not oppose the ASIC winding up applications. There was no actual or apparent conflict between their position and Ms Carey-Hazell's proposed opposition. I said (at [24]): 'Absent Ms Carey-Hazell's participation as proposed, there is no contradictor to the winding up application. She asserts that there is a case to be made against the orders sought by ASIC. Quite apart from the question of her entitlement to bring that contention before the Court, it is in the interests of justice that as a director of the company she has an opportunity to make that case if she does so in accordance with the duties imposed upon her by the Act and not, for example, for some collateral purpose. In so doing, it should not be assumed that Ms Carey-Hazell will have any a priori entitlement to resort to the assets of the company for the purpose of funding legal representation in the winding up proceeding. I will, however, allow liberty to apply at the termination of the proceedings in that respect.' 13 The orders sought by Bowesco and Lanepoint in these applications are in identical terms: '2. The Receivers and Managers of the Respondent be directed to make provision for the funding of legal costs for the purposes of legal advice and representation relating to solicitor/client costs and expenses for: a. $50,000 for the defence of action WAD 177 of 2006 (" the Bowesco Proceedings ") pursuant to Liberty to Apply; b. $50,000 for the defence of action WAD 152 of 2006 (" the Lanepoint Proceedings ") pursuant to Liberty to Apply; c. $80,000 for an appeal against the decision of Justice French made 14 September 2006 in the Bowesco Option Dispute proceedings in WAD 83 of 2006 (" the Bowesco Option Dispute "); d. $50,000 for advice in relation to the asset preservation proceedings in WAD 83 of 2006 in relation to Bowesco (" the Asset Preservation Proceedings ")' and e. $15,000 for tax advice in relation to Lanepoint; f. $10,000 for advice in relation to the costs and conduct of the Receivers and Managers of the Respondent; and g. $7,500 for the bringing and prosecution of this application. 3. The Receivers and Managers of the Respondent be directed to provide the Respondent with a statement of the current financial position of the Company. 4. The costs of this application, including any reserved costs, be paid by the Receivers and Managers of the Respondent.' 14 Ms Carey-Hazell and the companies' solicitor, Mr John Hammond, have sworn affidavits in the winding up proceedings in support of the directions sought against the receivers. Mr Hammond deposed that the companies have been unable to provide funding for the purpose of legal advice in the winding up proceedings as any requests for funding have been refused by the receivers and managers.


case_text: The general entitlement of a receiver appointed under a charge to deduct and retain, out of the funds realised, costs, charges and expense incurred in the realisation was asserted as a matter of general principle in Moodemere Pty Ltd (In Liq) v Waters [1998] VR 215 at 222 (Murphy J) and 229 (Tadgell J). In Nicobar Pty Ltd v Abrokiss (2003) 48 ACSR 259, Young CJ said (at [60]): 'The general rule is that where a person who is a fiduciary or an officer of the court produces a fund through his own effort, he is entitled to an equitable lien over the fund in respect of defending himself against claims made against him for what he did in producing the fund.' His Honour, however, was not prepared to accept that an equitable lien might exist in the case of a privately appointed receiver, saying (at [62]): 'Although the scope of equitable liens is wide and the boundaries are flexible, and although a receiver appointed out of court owes fiduciary duties both to his appointor and perhaps also to the mortgagor, I do not consider that the principle applies to receivers appointed out of court. If this were not so, there would be little point in the authorities continuing to emphasise the fact that the receivers in the successful cases of lien were receivers appointed by the court.' His Honour referred to O'Donnell, Company Receivers & Administrators at [12.109] (Update 40) and Harris & Lewin Pty Ltd (in liq) v Harris & Lewin Agents Pty Ltd (1975-76) CLC 40-216. He further observed that (at [64]): 'The receiver is usually the agent of the mortgagor company and may have a lien against the assets of the company, but this will not normally have force against a secured creditor.'


case_title: Nicobar Pty Ltd v Abrokiss (2003) 48 ACSR 259


case_text: Counsel for the committees also cited from a decision of the Full Court of this Court in Commonwealth v Human Rights and Equal Opportunities Commission (1998) 76 FCR 513 at 527D-F where Burchett J, who was a member of the Full Court, observed that a possible outcome of the proceedings in that case would be a re-hearing before the commission. He said: 'How could the matter then proceed to be and be, seen to be, dispassionately determined? The Commission had chosen, without any necessity (for X was capably represented), to descend into the arena and contend on an issue of substance as a partisan. In my opinion, it is very important, if parties are to retain confidence in the integrity of the Commission's decisions, that it refrain from a role which risks bringing its impartiality into question. If I had thought outstanding issues of fact remained to be decided in this case, I would not, in the circumstances, have considered it appropriate to compel the appellant to accept a referral back to the Commissioner. That is the consequence of ignoring Hardiman . In those rare cases where no party can represent one side of an issue which the Commission would wish to put, the course mentioned in Australian Conservation Foundation v Forestry Commission (1988) 19 FCR 127 at 130 and in the later decision Australian Conservation Foundation v Forestry Commission (Tas) (1988) 76 LGRA 381; 81 ALR 166 at 383; 168, 386; 171 of joining the Commonwealth, so that it can put an appropriate submission, may be available. That course was not available here, the Commonwealth being already an active party, but it was also unnecessary, since, as I have said, X was capably represented.'


case_text: The committees relied on the concurring judgment of Brennan J in Fagan v The Crimes Compensation Tribunal [1982] HCA 49 ; (1982) 150 CLR 666 at 681-682. His Honour there was dealing with whether it was appropriate to make an order for costs against the tribunal which had appeared as the active contestant in the proceedings, notwithstanding the observations of the Court in Hardiman (144 CLR at 35-36). Brennan J said: 'But where the proceedings before the tribunal are not inter partes, and where the Attorney-General cannot or does not intervene to represent the public interest (cf Corporate Affairs Commission v Bradley [1974] 1 NSWLR 391) and neither a law officer nor a public official is heard by the Court (cf Reg v Cook; Ex Parte Twigg [1980] HCA 36 ; (1980) 147 CLR 15), it may be desirable that the tribunal should appear by counsel to make such submissions as it thinks calculated to assist the Court and, in an appropriate case, to argue against the applicant's case. That is what was done in this case. Here the Tribunal's function was to determine whether and to what extent a claimant was entitled under statute to a payment out of public moneys. Though the Tribunal was bound to act impartially, it was in a sense, the guardian of the moneys appropriated by Parliament to answer the proper claims for compensation under the Act. In proceedings to review its decision, the Tribunal properly represents the public purse, and it was right that the Tribunal should appear by counsel as a party to respond substantially to the application. It follows that the Tribunal should then be treated as an ordinary party in the matter of costs.' 7 The question here is slightly different. The committees are charged with making administrative decisions, the effect of which can have a profound impact upon the professional standing and careers of doctors practicing in the Commonwealth. The committees each appeared, as I noted in my earlier judgment, as active protagonists in the proceedings. Counsel were unable to identify any previous decision of the Court in which a submission had been made that committees had engaged inappropriately by being the active respondent to proceedings in the sense identified in Hardiman (144 CLR at 35-36). Counsel for the committees also drew my attention to the decision of the Court of Appeal of the Australian Capital Territory in Regina v Doogan; Ex Parte Lucas-Smith [2005] ACTSC 74 ; (2005) 193 FLR 239, especially at 279-280 [179]-[180] where Higgins CJ, Crispin and Bennett JJ referred to the principles in Hardiman 144 CLR at 35-36 and Brennan J's remarks in Fagan 150 CLR at 681-682. 12 As Brennan J recognised in Fagan 150 CLR at 681-682, there are circumstances in which administrative decision makers can and should appear as active protagonists in litigation involving the correctness in law of their decisions, but that is not the ordinary course. The decision in Hardiman [1980] HCA 13 ; 144 CLR 13 is well known. It is not necessary for statute to make provision for there to be a proper contradictor where challenges are made to the administrative decisions of persons charged under legislation with the duty to decide matters. In Fagan 150 CLR at 681-682 Brennan J, pointed out that it could be appropriate for the decision maker to appear and take an active part in proceedings where the Attorney-General, as the representative of the public interest, or some other appropriate officer of the Commonwealth in a case such as the present, cannot or does not intervene to represent the public interest.


case_outcome: discussed

case_text: The committees argued that it would not be appropriate for me to make any order in the nature of a writ of prohibition because they were not acting inappropriately or in a way which made apposite the passage from the decision in The Queen v Australian Broadcasting Tribunal; Ex Parte Hardiman [1980] HCA 13 ; (1980) 144 CLR 13 at 35-36 which I cited in my earlier judgment ( Ho [2007] FCA at [110]). 6 The committees relied on the concurring judgment of Brennan J in Fagan v The Crimes Compensation Tribunal [1982] HCA 49 ; (1982) 150 CLR 666 at 681-682. His Honour there was dealing with whether it was appropriate to make an order for costs against the tribunal which had appeared as the active contestant in the proceedings, notwithstanding the observations of the Court in Hardiman (144 CLR at 35-36). Brennan J said: 'But where the proceedings before the tribunal are not inter partes, and where the Attorney-General cannot or does not intervene to represent the public interest (cf Corporate Affairs Commission v Bradley [1974] 1 NSWLR 391) and neither a law officer nor a public official is heard by the Court (cf Reg v Cook; Ex Parte Twigg [1980] HCA 36 ; (1980) 147 CLR 15), it may be desirable that the tribunal should appear by counsel to make such submissions as it thinks calculated to assist the Court and, in an appropriate case, to argue against the applicant's case. That is what was done in this case. Here the Tribunal's function was to determine whether and to what extent a claimant was entitled under statute to a payment out of public moneys. Though the Tribunal was bound to act impartially, it was in a sense, the guardian of the moneys appropriated by Parliament to answer the proper claims for compensation under the Act. In proceedings to review its decision, the Tribunal properly represents the public purse, and it was right that the Tribunal should appear by counsel as a party to respond substantially to the application. It follows that the Tribunal should then be treated as an ordinary party in the matter of costs.' 7 The question here is slightly different. The committees are charged with making administrative decisions, the effect of which can have a profound impact upon the professional standing and careers of doctors practicing in the Commonwealth. The committees each appeared, as I noted in my earlier judgment, as active protagonists in the proceedings. Counsel were unable to identify any previous decision of the Court in which a submission had been made that committees had engaged inappropriately by being the active respondent to proceedings in the sense identified in Hardiman (144 CLR at 35-36). Counsel for the committees also drew my attention to the decision of the Court of Appeal of the Australian Capital Territory in Regina v Doogan; Ex Parte Lucas-Smith [2005] ACTSC 74 ; (2005) 193 FLR 239, especially at 279-280 [179]-[180] where Higgins CJ, Crispin and Bennett JJ referred to the principles in Hardiman 144 CLR at 35-36 and Brennan J's remarks in Fagan 150 CLR at 681-682. 10 This has produced a very unfortunate situation. Each committee has appeared and argued, not merely as to statutory construction issues, but also substantively, that its decision in the first instance was correct. The Hardiman principle has been applied recently by the New South Wales Court of Appeal in Campbelltown City Council v Vegan [2006] NSWCA 284 but the circumstances were not similar to those in the present proceedings. It has caused me considerable concern that the situation has arisen as it has and that there has been no previous consideration of this point by other members of the Court so far as the researches of counsel and those I have been able to conduct this morning have shown. True it is that in other cases the court has declined to make an order that the committee be differently constituted, when matters were remitted after quashing of findings, but it does not appear that the Court in those cases at least from the terms of the judgments that have been reported to which I have been referred dealt with the precise question raised in Hardiman 144 CLR at 35-36. 11 Counsel for the committees referred to the decision of the Full Court in Oreb v Willcock [2005] FCAFC 196 ; (2005) 146 FCR 237. But Lander J said that there was nothing before the primary judge which meant that the committee there could not reconsider the matter, and that there was no suggestion of bias or apprehension of bias, the only error being simply as to the construction of the Act ( Oreb 146 FCR at 273 [248]). In this case a substantive argument of apparent bias was made by the doctors against each committee. I rejected that argument in relation to the way in which each committee approached its task in assessing what was before it during its hearing and in the course of making its findings (see Ho [2007] FCA 388 at [113] ). But in argument before me there was an allegation of apparent bias. The committees made substantive submissions as to why their decisions were open, on the law and the facts, and why the law was as they had contended it to be during the course of the hearing. It was this feature that caused my concern once the Hardiman point had been raised by the doctors late in the course of the hearing before me. 12 As Brennan J recognised in Fagan 150 CLR at 681-682, there are circumstances in which administrative decision makers can and should appear as active protagonists in litigation involving the correctness in law of their decisions, but that is not the ordinary course. The decision in Hardiman [1980] HCA 13 ; 144 CLR 13 is well known. It is not necessary for statute to make provision for there to be a proper contradictor where challenges are made to the administrative decisions of persons charged under legislation with the duty to decide matters. In Fagan 150 CLR at 681-682 Brennan J, pointed out that it could be appropriate for the decision maker to appear and take an active part in proceedings where the Attorney-General, as the representative of the public interest, or some other appropriate officer of the Commonwealth in a case such as the present, cannot or does not intervene to represent the public interest. 13 In my opinion there is no reason why in the future the Minister administering the Act or the Attorney-General, or the Commonwealth itself, ought not intervene or be joined as party to proceedings to uphold administrative decisions of committees. It is undesirable that the committees be put into a position where they become active protagonists in the proceedings for the very reasons outlined in Hardiman 144 CLR at 35-36. One can well understand how these proceedings, given their history, have got to the point that they have, where I must now determine whether or not orders in the nature of a writ of prohibition ought be issued prohibiting the members of the committees from further participating, so far as they still are members of the panel and are able to participate, in the deliberations on the administrative referral in each doctor's case. 14 The hearing before me was conducted as one in which there was an active and substantive argument put not merely as to statutory construction but to support the impartiality of decision-making processes of committees which were under attack for apparent bias. I am of opinion that, having regard to those matters, a fair-minded lay person properly informed as to the nature of the proceedings or process before the committee, were the matter remitted to members who had previously constituted them, might reasonably apprehend that those members might not bring an impartial mind to the making of the decision (see the cases cited in Ho [2007] FCA 388 at [106] . I am therefore of opinion that it is appropriate, albeit extremely unfortunate, to make an order in each matter in the nature of a writ of prohibition which will have the effect that none of the current members of each committee who are capable of being constituted on a further committee be members of any such reconstituted committee. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rares. Associate: Dated: 30 April 2007 Counsel for the Applicants: MA Robinson Solicitor for the Applicants: Tress Cox Counsel for the Respondents: RM Henderson Solicitor for the Respondents: Minter Ellison Date of Hearing: 28 March 2007 Date of Judgment: 28 March 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/603.html


case_text: In that regard his Honour referred to the Full Court of this Court's discussion of the effect of the provisions in Morsed v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 193 ; (2005) 88 ALD 90 (at [17]-[26]). His Honour also referred to the judgment of Cooper J in Zhou v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1078 ; (2004) 139 FCR 60 (at [42]-[45]), and the Full Court judgment of Minister for Immigration and Multicultural and Indigenous Affairs v Zhou [2006] FCAFC 96 ; (2006) 152 FCR 115 (at [39]-[44]). That judgment in turn accepted and applied the reasoning in Humayun v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 35 ; (2006) 149 FCR 558; Minister for Immigration and Multicultural and Indigenous Affairs v Yu [2004] FCAFC 333 ; (2004) 141 FCR 448; and Gerhard v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 495.


case_text: In that regard his Honour referred to the Full Court of this Court's discussion of the effect of the provisions in Morsed v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 193 ; (2005) 88 ALD 90 (at [17]-[26]). His Honour also referred to the judgment of Cooper J in Zhou v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1078 ; (2004) 139 FCR 60 (at [42]-[45]), and the Full Court judgment of Minister for Immigration and Multicultural and Indigenous Affairs v Zhou [2006] FCAFC 96 ; (2006) 152 FCR 115 (at [39]-[44]). That judgment in turn accepted and applied the reasoning in Humayun v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 35 ; (2006) 149 FCR 558; Minister for Immigration and Multicultural and Indigenous Affairs v Yu [2004] FCAFC 333 ; (2004) 141 FCR 448; and Gerhard v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 495. 33 Counsel for the appellant conceded that, on the basis of the Full Court authorities in Zhou , Yu , Humayun and Tian v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 238 , I am bound to determine this point against his client. He contended that the above line of authority is "plainly wrong". He said that the appellant seeks an opportunity to make that submission to a Full Court. After the filing of this appeal a judge of the Court in Melbourne with responsibility in relation to migration appeals made a decision that this appeal should be dealt with by a single judge. No contrary view was expressed on behalf of the appellant until this morning. It is not appropriate for me in those circumstances to refer this issue to a Full Court. It is more appropriate for the appellant to seek special leave in the High Court to test the correctness of the above mentioned Full Court judgments. However, the utility of doing so may be questionable given the matters referred to in the preceding paragraph above concerning an alternative basis for the relevant findings of the delegate and the Tribunal.


case_text: In considering whether the Tribunal had applied the correct test in determining whether the appellant had "not complied" with condition 8202 rather than whether he had "breached" the condition, the Federal Magistrate found that there was no difference in meaning that was of any relevant significance. His Honour found that it was the type of distinction that was well covered by the comments of the High Court in Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259. 24 Having found that no jurisdictional error had been established on any of the contended grounds, His Honour dismissed the appellant's applications with costs. 25 The appellant now appeals the Federal Magistrate's decision. I am empowered to hear that appeal pursuant to s 25(1AA) of the Federal Court of Australia Act 1976 (Cth). 26 The grounds relied on by the appellant in this appeal are in almost identical terms to those relied upon by him before the Federal Magistrate. The only material difference is that the errors are now said to have been made by both the Federal Magistrate and the Tribunal. 27 The judgments referred to by the Federal Magistrate, and by the Full Court in Zhou , authoritatively deal with the appellant's contention that s 116 is limited by Pt 2 , Div 3, Subdiv GB of the Migration Act , and by s 20 of the ESOS Act.


case_title: Minister for Immigration and Multicultural and Indigenous Affairs v Yu [2004] FCAFC 333 ; (2004) 141 FCR 448


case_outcome: applied

case_title: Minister for Immigration and Multicultural and Indigenous Affairs v Zhou [2006] FCAFC 96 ; (2006) 152 FCR 115


case_title: Morsed v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 193 ; (2005) 88 ALD 90


case_text: Counsel for the appellant conceded that, on the basis of the Full Court authorities in Zhou , Yu , Humayun and Tian v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 238 , I am bound to determine this point against his client. He contended that the above line of authority is "plainly wrong". He said that the appellant seeks an opportunity to make that submission to a Full Court. After the filing of this appeal a judge of the Court in Melbourne with responsibility in relation to migration appeals made a decision that this appeal should be dealt with by a single judge. No contrary view was expressed on behalf of the appellant until this morning. It is not appropriate for me in those circumstances to refer this issue to a Full Court. It is more appropriate for the appellant to seek special leave in the High Court to test the correctness of the above mentioned Full Court judgments. However, the utility of doing so may be questionable given the matters referred to in the preceding paragraph above concerning an alternative basis for the relevant findings of the delegate and the Tribunal.


case_text: The Federal Magistrate observed that the appellant sought review of the Tribunal's decision on the following grounds: • that s 20 of the ESOS Act and Subdiv GB of Div 3, of Pt 2 of the Migration Act limit the operation of s 116 of the Migration Act ; • that the notice sent to the appellant purportedly under s 20 of the ESOS Act was invalid on the grounds set out in Uddin v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FMCA 841 , so that there was no power in the Tribunal to cancel the visa, or alternatively, it was not open to it to be satisfied that the appellant had not complied with condition 8202 as the sending of a valid notice was a condition of non-compliance; and • that the Tribunal erred by considering whether the appellant had breached condition 8202 rather than inquiring whether or not he had complied with that condition. 19 The Federal Magistrate reviewed the relevant legislation and found that the combined effect of s 116(3) and reg 2.43(2) was to remove any discretion and make visa cancellation mandatory in the case of a breach of any of the conditions referred to in reg 2.43(2).


case_title: Zhou v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1078 ; (2004) 139 FCR 60


case_text: The first respondent submitted, and I accept, that the Federal Magistrate's decision of 17 October 2006 was an interlocutory decision: compare Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at 440 per Taylor J. Accordingly, pursuant to s 24(1A) of the Federal Court of Australia Act 1976 (Cth), the applicant requires leave to appeal before he can proceed with his appeal.


case_text: Whether or not leave to appeal should be granted or refused depends on two matters. They are: (1) whether in all the circumstances the decision is attended with sufficient doubt to warrant its being reconsidered by an appellate court; and (2) whether substantial injustice would result if leave were refused, supposing the decision to be wrong: see Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398-399 per Sheppard, Burchett and Heerey JJ. For present purposes, I assume that this second question would be answered in the applicant's favour. Thus, this application turns on the question, whether the decision of the Federal Magistrate is attended by doubt that warrants reconsideration on appeal. 8 In an affidavit filed in support of this application, the applicant alleges that the Federal Magistrate (1) dismissed the proceeding without giving reasonable grounds; (2) breached the rules of natural justice and procedural fairness; and (3) failed to identify the errors made by the Tribunal. A draft notice of appeal alleges that the decision was an improper exercise of the power conferred by the enactment pursuant to which it was made. 9 As to (1) above, the Federal Magistrate clearly stated the reasons for his decision that the application for judicial review did not raise an arguable case. These reasons were sufficient for the case. As to (2), the applicant has given no particulars of this allegation and there is no evidence or other material before me that might support such an allegation. As to (3), the only question for his Honour was whether the applicant had raised an arguable case for the relief claimed. There is no error in his Honour's findings that he had not done so. The applicant's allegation, in his draft notice of appeal, that the decision was an improper exercise of power is unparticularised. There is nothing shown that might support this allegation. 10 In oral submissions today, the applicant stated that the situation in Bangladesh was not favourable. He referred to the fact that national leaders had been arrested and to his claim to be a leader in his local community. In this way, he addressed what are referred to as the merits of the application for a protection visa. The merits are, however, a matter for the first respondent, his Department and the Tribunal. This Court cannot enquire into or determine them. If the applicant wishes to maintain his entitlement to a protection visa in view of the present situation in Bangladesh, then he should apply to the first respondent's Department. 11 The decision of the Federal Magistrate is not attended by sufficient doubt to warrant reconsideration. The application for leave to appeal must therefore be refused.


case_text: On 28 November 2005, the applicant filed an application for leave to appeal, a draft notice of appeal and supporting affidavit the application that is now before this Court (together the 'Application').' The Minister's objection to competency 8 Counsel for the Minister referred as a starting point to s 24(1)(d) of the Federal Court Act 1976 (Cth) ('the FC Act'), which provides that the Federal Court has jurisdiction to hear appeals from judgments of the Federal Magistrates Court. Thereafter my attention was drawn to s 24(1A) of the FC Act, which provides that an appeal shall not be brought from a judgment referred to in subsection (1) that is an interlocutory judgment, unless the Court or a Judge gives leave to appeal. Section 25(2)(a) of the FC Act thereafter provides that applications for leave to appeal to the Court may be heard and determined by a single judge or a Full Court. 9 The Minister next emphasised that the Federal Magistrate's decision was indeed interlocutory, referring thereby to the distinction between final and interlocutory orders, enunciated for instance in Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at 440 by Taylor J as follows: 'So an order made in the course of an action or suit which does not conclude the rights of the parties inter se, although it may, of course, conclude the fate of the particular application in which it is made, is interlocutory only. On this basis an order staying proceedings against one of several defendants on the grounds that they are scandalous, vexatious and an abuse of the process of the court has been treated as interlocutory: Hind v Marquis of Hartington (1890) 6 TLR 267. The same view was taken of an order striking out a plaintiff's statement of claim on the ground that it disclosed no reasonable cause of action: Jones v Insole (1891) 64 LT 703 and of an order dismissing an action as frivolous and vexatious In re Page [1910] 1 Ch 489.' That dictum was more recently applied by a Full Federal Court in Dai v Telecommunications Industry Ombudsman [2000] FCA 717 at [7] (per Beaumont, Whitlam and Lehane JJ). 10 The applicant provided no basis or reason why the course sought to be adopted should be open to him, given the history of the proceedings which speaks for itself. Plainly the plethora of decisions already made unfavourably to the applicant demonstrates that no substantial injustice would be occasioned by any refusal of the current purported further application to the Court. No matter of substance has been raised for my consideration. Nothing more is raised other than bare assertions of error. However no error is apparent on the face of the material before the Court. 11 The application must be dismissed with costs. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Conti. Associate: Dated: 4 April 2006 The Applicant appeared in person Solicitor for the First Respondent: Clayton Utz Date of Hearing: 30 March 2006 Date of Judgment: 4 April 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/362.html


case_title: Dai v Telecommunications Industry Ombudsman [2000] FCA 717


case_text: The starting point for consideration of the consolidated proceeding is the NT Act. True though it may be that paragraphs (a) and (b) of s 223(1) are based on the judgment of Brennan J in Mabo v Queensland (No 2) [1992] HCA 23 ; (1992) 175 CLR 1, it is the provisions of the NT Act which the Court must address in any determination of native title. See Western Australia v Ward [2002] HCA 28 ; (2002) 213 CLR 1 ( Ward ), at [16], [25] per Gleeson CJ, Gaudron, Gummow and Hayne JJ; Members of the Yorta Yorta Aboriginal Community v Victoria [2002] HCA 58 ; (2002) 214 CLR 422 ( Yorta Yorta ), at [32] per Gleeson CJ, Gummow and Hayne JJ; and Commonwealth v Yarmirr [2001] HCA 56 ; (2001) 208 CLR 1 ( Yarmirr ), at [7] per Gleeson CJ, Gaudron, Gummow and Hayne JJ.


case_title: Western Australia v Ward [2002] HCA 28 ; (2002) 213 CLR 1