case_title: Olivieri v Stafford (1989) 24 FCR 413

case_text: Court has the power to set aside a bankruptcy notice or to extend the time for compliance with it. The power to set aside a bankruptcy notice is contained in s 30(1) of the Act and, as Gummow J said, sitting as a judge of this Court in Olivieri v Stafford (1989) 24 FCR 413 (" Olivieri ") at 430, the express power in s 41 to extend the time for compliance with the requirements of such a notice has been said to carry with it the power to set aside the notice itself (see Re Sterling; Ex parte Esanda Ltd [1980] FCA 61 ; (1980) 44 FLR 125 ; 30 ALR 77). The power to extend the time for compliance with the requirements of a bankruptcy notice is contained in s 41(6A) of the Act, which is in the following terms: "(6A) Where, before the expiration of the time fixed for compliance with the requirements of a bankruptcy notice: (a) proceedings to set aside a judgment or order in respect of which the bankruptcy notice was issued have been instituted by the debtor; or (b) an application has been made to the Court to set aside the bankruptcy notice; the Court may, subject to subsection (6C), extend the time for compliance with the bankruptcy notice." There is no doubt this Court has the power, in an appropriate case, to go behind a judgment debt in the sense of examining whether, in truth, there was, as it is sometimes put, consideration for the judgment debt. That power may be exercised on an application to set aside a bankruptcy notice ( Olivieri at 429 per Gummow J). The power may result in the Court determining that there is, in truth, no consideration for the judgment debt and, although the Court has no power to set aside the judgment of another Court, it may decide to set aside the bankruptcy notice. The Court's power to inquire into or examine a judgment may involve two steps. First, the Court may ask itself whether there are grounds to inquire into the judgment. Secondly, assuming the answer to the first question is yes, the Court may inquire into the judgment. In certain circumstances, it may be more appropriate for the Court to extend the time for compliance with the requirements of a bankruptcy notice, while an application to set aside the judgment is determined by the Court which entered the judgment, rather than inquiring into the judgment itself. The power to inquire into or examine a judgment is part of the power to set aside a bankruptcy notice and is not the aspect of ordering inquiries under s 30(2) of the Act.


case_outcome: cited

case_title: Petrie v Redmond (1942) 13 ABC 44

case_text: is a good deal of law on the circumstances in which the Court will inquire into, or examine, a judgment. The circumstances will vary according to the circumstances in which the judgment came to be entered. A Court will be far more inclined to inquire into and examine a judgment entered by default or consent, than it will in the case of a judgment entered after a contested trial on the merits followed by an appeal or perhaps even an unsuccessful application to set aside the judgment to the Court which entered it. Those are in effect the two ends of the spectrum. It has been said that, in the former case, a bona fide allegation that there was no pre-existing debt will be sufficient for the Court to inquire into or examine the judgment (see Corney v Brien [1951] HCA 31 ; (1951) 84 CLR 343 (" Corney v Brien ") at 357-358 per Fullagar J). It has been said that, in the latter case, the Court will not inquire into or examine a judgment unless there is evidence of fraud, collusion or a miscarriage of justice: Petrie v Redmond (1942) 13 ABC 44 at 48-49 per Latham CJ (with whom Rich and McTiernan JJ agreed); Corney v Brien at 356-357 per Fullagar J. The principles must be applied in a flexible fashion, having regard to the myriad of circumstances which may arise (see the discussion by J L Goldring in "Going Behind a Judgment" (1973) 47 ALJ 377).


case_outcome: discussed

case_text: reason was identified as to why the cross demand could not have been set up in the defamation action. Even if it is appropriate to attribute to the applicant the statement of the applicant's husband that he was not advised that he could bring a cross demand, such a reason is not sufficient to show that the cross demand could not have been set up in the defamation action. In Re Ling; Ex parte Ling v Commonwealth of Australia [1995] FCA 1410 ; (1995) 58 FCR 129 , Hill J said (at 132): "What emerges here is that the practical reason why no action was taken against the Commonwealth, whether by the institution of a cross-claim or otherwise, is that the debtor was not advised that he could do so. But that does not suffice to make the claim one which the debtor could not have set up in the Commonwealth proceedings. That is not a question to be determined by reference to practicalities; it is a question to be answered by reference to legal considerations: Re Brink; Ex parte Commercial Banking Co of Sydney Ltd [1980] FCA 78 ; (1980) 44 FLR 135 ; Re James; Ex parte Carter Holt Harvey Roofing (Australia) Pty Ltd (1993) 46 FCR 183 ; Walton v National Mutual Life Association of Australasia Ltd [1994] FCA 1114 ; (1994) 49 FCR 406 at 408; Re Scott; Ex parte Scott v Beneficial Finance Corporation Ltd [1994] FCA 1379 ; (1994) 53 FCR 324 ; Re Martinovic (unreported, Federal Court, Kiefel J, 23 June 1995). Thus the mere fact that there was an excuse as to why the cross-claim was not brought will not avail a debtor seeking to come within s 41(7) of the Act, if a cross-claim could legally have been brought." I accept the respondent's fourth submission. I am not satisfied that a cross demand in relation to the first publication could not have been set up in the defamation action. Second publication The USFA published a bulletin to the Ukrainian community throughout Australia, including South Australia. In Volume 15, July-September 2002, there was an article which referred to the applicant in defamatory terms. The evidence of the applicant's husband as to the respondent's involvement in the publication was as follows: "I refer to the affidavit of Mr Whittaker of 22 December 2008 and to the exhibit thereto, namely a translation of the USFA Bulletin 15 of July September 2002. The USFA bulletin was published throughout Australia to the Ukrainian community including in South Australia. I have been informed by my wife whom I verily believe that she was told by the then chairman of the USFA Mr Jurko Suchowerskyj, who took over that position when Dr Motyka was not re-elected that Dr Motyka was the author of the defamatory statements about me contained in it. We have attempted to contact Mr Suchowerskyj recently but he now denies his previous statement."


case_outcome: referred to

case_text: Court has the power to set aside a bankruptcy notice or to extend the time for compliance with it. The power to set aside a bankruptcy notice is contained in s 30(1) of the Act and, as Gummow J said, sitting as a judge of this Court in Olivieri v Stafford (1989) 24 FCR 413 (" Olivieri ") at 430, the express power in s 41 to extend the time for compliance with the requirements of such a notice has been said to carry with it the power to set aside the notice itself (see Re Sterling; Ex parte Esanda Ltd [1980] FCA 61 ; (1980) 44 FLR 125 ; 30 ALR 77). The power to extend the time for compliance with the requirements of a bankruptcy notice is contained in s 41(6A) of the Act, which is in the following terms: "(6A) Where, before the expiration of the time fixed for compliance with the requirements of a bankruptcy notice: (a) proceedings to set aside a judgment or order in respect of which the bankruptcy notice was issued have been instituted by the debtor; or (b) an application has been made to the Court to set aside the bankruptcy notice; the Court may, subject to subsection (6C), extend the time for compliance with the bankruptcy notice."


case_title: Wenkart v Abignano [1999] FCA 354

case_text: power to inquire into a judgment arises not only in cases where the judgment reflects a pre-existing debt or liquidated claim, but also in cases where the judgment follows from the determination of an unliquidated claim and the judgment itself creates the debt: In re Newman; Ex parte Brooke (1876) 3 Ch D 494 ; Wenkart v Abignano [1999] FCA 354 at [23] . Plainly, a claim for damages for defamation falls into the latter category.


case_outcome: followed

case_text: For present purposes it is sufficient to be satisfied that the powers conferred by O 15A, r 6 may not have been " exhausted ". Had the view been formed that those powers had been " exhausted ", or even most probably " exhausted ", a different conclusion may well have been warranted as to whether there was any power to now require the Respondent to be made available for cross-examination or, at the very least, how any discretion should be exercised. Had that view been formed, it may have been more desirable to have resolved that question prior to resolving any question as to cross-examination. Without finally resolving that question, it is considered that there most probably remains outstanding a basis upon which the Applicants can still contend that they have a " reasonable cause to believe that [the Respondent] has or is likely to have or has had or is likely to have had possession " of further documents " relating to the question whether [the Applicants have a] right to obtain the relief and that inspection of the document [s] ... would assist in making the decision ": Order 15A, r 6(c). The rule does not " mandate mere rummaging through another's affairs ", but an applicant " will not necessarily be denied preliminary discovery because he or she already has available evidence establishing a prima facie case for the granting of relief ": Airservices Australia v Transfield Pty Ltd [1999] FCA 886 at [5] , [1999] FCA 886 ; 92 FCR 200 at 203 per Finn J (appeal dismissed: Hooper v Kirella Pty Ltd [1999] FCA 1584 , 96 FCR 1).


case_outcome: considered

case_text: The remaining question is whether such cross-examination should be conducted using a video link. To some extent there may be a difference of practice as between the Federal Court of Australia and the Supreme Court of New South Wales. The Federal Court has, perhaps, more readily embraced the technology (cf Tetra Pak Marketing Pty Ltd v Musachi Pty Ltd [2000] FCA 1261) than the Supreme Court of New South Wales ( Australian Medical Imaging Pty Ltd v Marconi Medical Systems Australia Pty Ltd [2001] NSWSC 651 at [25] [26] per Palmer J, 53 NSWLR 1).


case_title: Carey v Carey [2007] FCA 1482

case_text: On 8 August 2007 Cowdroy J made orders under O 15A, r 12: Carey v Carey [2007] FCA 1482. In making those orders, Cowdroy J recounted that the Applicants are the executors of the estate of Grace Dorothy Carey, a retired medical practitioner, and that the Respondent is the brother of the Applicants and a beneficiary of that estate. His Honour concluded: [19] The applicants have made inquiries of banking institutions in Sydney and the accountants for the deceased but they have not been able to ascertain any further details of any overseas accounts of the deceased. The Court is satisfied that there is reasonable cause to believe that the respondent has or is likely to have information relative to the foreign owned assets in accordance with O 15A r 6 of the Rules and that it is in the interests of the administration of justice that the applicants be given the opportunity of obtaining such information. 3 The Respondent resides in the Netherlands. 4 Since that date there has been a series of revisions to the orders as first made. 8 A further Motion has since been filed on 9 April 2008. That Motion , filed on behalf of the Respondent, seeks a variety of orders including an order that the preservation order as previously made by Cowdroy J (and later varied) be discharged unless the Applicants file and serve proceedings seeking the recovery of assets within 28 days. 9 Of immediate concern, however, is a further order seeking to vacate the order requiring that the Respondent attend in person for cross-examination. It is this issue which must be resolved as quickly as possible. If the Respondent is to attend in person, albeit pursuant to an order previously made and long outstanding, it is nevertheless appropriate to have that issue resolved expeditiously. 10 In respect of the hearing on 1 and 2 May 2008, Counsel for the Respondent has previously confirmed that Affidavits filed thus far by the Respondent will be relied upon. No question thus arises as to the Court itself requiring a party to attend " for examination ". An " Addendum ", however, has since been filed on behalf of the Respondent on 15 April 2008. The effect of that " Addendum ", if properly understood, is that the Respondent now wishes to reserve his position and give such evidence " by way of reply only to the matters the Applicants seek to agitate ". He also contends that " justice will only be served if the Respondent's evidence is limited to evidence in chief, unless the Respondent submits by consent to cross-examination ". Notwithstanding that " Addendum ", Counsel for the Respondent has this morning confirmed that he will seek to " tender " the Respondent's Affidavits previously filed, albeit for the limited purpose of establishing " compliance " with previous orders.


case_title: Carey v Carey [2007] FCA 2045

case_text: On 2 October 2007 the Applicants filed a Notice of Motion seeking a further variation of the orders, as did the Respondent on 8 November 2007. On 9 November 2007, both Notices of Motion were set down for hearing on 4 December 2007. That date was vacated on 29 November 2007 and the Notices of Motion were again set down for hearing on 10 and 11 March 2008. One of the orders made on 29 November 2007 was that the Respondent was to " attend in person on the adjourned hearing date so as to be able to be cross examined ". Affidavits , it should be noted, had previously been filed by the Respondent upon which reliance was to be placed. A further application to vary the orders previously made was rejected on 6 December 2007: Carey v Carey [2007] FCA 2045. 6 On at least one prior occasion a hearing date has been vacated, with the consent of the Applicants, to accommodate the personal circumstances of the Respondent and, in particular, his wife. 7 Both of the present Notices of Motion are set down for hearing on 1 and 2 May 2008.


case_title: Hooper v Kirella Pty Ltd [1999] FCA 1584


case_text: Those are areas of cross-examination which, it is considered, can be further pursued in an application under O 15A. But it must further be recognised that the point of time at which the Applicants must be required to file an application and statement of claim and thereafter invoke the general rules for discovery conferred by O 15A must be very imminent. Whether such an order should be made, as is sought by the Respondent, will be further considered at the hearing on 1 and 2 May 2008. Rule 6 is a rule " designed to amplify the court's power to penetrate obscurities and uncertainties in the interests of justice ": cf Paxus Services Ltd v People Bank Pty Ltd (1990) 99 ALR 728 at 733 per Burchett J. It is a rule which should be " beneficially construed, given the fullest scope that its language will reasonably allow, with the proper brake on any excesses lying in the discretion of the Court, exercised in the particular circumstances of each case ": St George Bank Ltd v Rabo Australia Ltd [2004] FCA 1360 at [26] , [2004] FCA 1360 ; 211 ALR 147 at 153 per Hely J.


case_title: Tetra Pak Marketing Pty Ltd v Musachi Pty Ltd [2000] FCA 1261


case_text: The variety of orders as sought by the Respondent in the most recent Motion desirably should have been resolved at the one time. The Respondent in an Outline of Submissions filed on 28 March 2008 thus contends that the order as first made under O 15A -- and as subsequently varied -- has served its purpose and that " Order 15A is now exhausted" . On behalf of the Respondent, reliance is placed upon the following observations of Finkelstein J in SmithKline Beecham PLC v Alphapharm Pty Ltd [2001] FCA 271: [26] There is a limit to the discovery to which an applicant is entitled under O15A. As I have indicated, O15A is not a substitute for general discovery. The object is to disclose what is sufficient to permit the applicants to establish whether the elements of a cause of action are made out and to plead sufficient particulars to support a claim. Even though the Respondent has previously filed Affidavits , it is simply submitted that there should be no cross-examination because the object and purpose of O 15A in the present proceedings has been fulfilled. 16 That there is a limit to the power conferred by O 15A may readily be accepted. A question which will have to be resolved is to determine whether that limit has now been reached. But that is a matter which can be resolved at the hearing on 1 May 2008. That is a course which was not opposed this morning by Counsel for the Respondent. 17 It is inappropriate to require Senior Counsel for the Applicants to detail in advance the precise questions or even the detailed subject-matter of those areas of factual dispute which will be the focus of any cross-examination. To do so may of itself frustrate the effectiveness of any cross-examination. But it is appropriate to oblige any counsel requiring a deponent who normally resides overseas to attend in person, to satisfy the Court that there is a legitimate reason for requiring him to do so. To that end, it was put on behalf of the Applicants (without being exhaustive) that there would be cross-examination on the following issues: (i) why there has been production of a number of Swiss bank accounts but non-production of the first pages of those accounts, the first pages presumably disclosing the names of the beneficiaries of each of those accounts; (ii) the references contained within those Swiss bank accounts to other accounts described as " fiduciary accounts ", without any further explanation as to the identity of those accounts or those having an interest in them; and (iii) assets asserted by the Respondent to belong to himself and not to his mother but in respect to which legitimate bases for reservation exist. Some of the documents upon which the Respondent is to be cross-examined have previously been seen by him; others, however, have apparently not been seen by him.


case_text: Contestable issues of fact may just as likely arise in applications under O 15A as they may in other proceedings. And they may be resolved in the same manner, with the Court always conscious of the need to ensure that the process itself does not become a " full-blown " hearing or an abuse of process. In Tyco Australia , Hely J relevantly observed: [54] Contestable issues of fact may arise in proceedings under O 15A for preliminary discovery: St George Bank Ltd v Rabo Australia Ltd [2004] FCA 1360 ; (2004) 211 ALR 147. There is no reason why the ordinary interlocutory procedures should not be available to assist in the resolution of those contestable issues of fact, subject to the overriding consideration that the invocation of those procedures does not amount to an abuse of the process of the Court: Kimberley Mineral Holdings Ltd (In Liq) v McEwan (1980) 1 NSWLR 210. Thus, at least prima facie, it would be an abuse of process for an applicant for preliminary discovery to seek to compel the production of documents by notice to produce, when the production of those documents is sought under O 15A r 6. But it does not follow, for example, that a subpoena sought to be issued by an applicant for preliminary discovery against a third party would necessarily be an abuse, depending upon the scope and purpose of the subpoena. Even short of an abuse of process, considerable caution should be exercised before exposing any witness to the inconvenience of travelling from overseas to Australia unless it is considered necessary in the interests of the administration of justice. 18 Those are areas of cross-examination which, it is considered, can be further pursued in an application under O 15A. But it must further be recognised that the point of time at which the Applicants must be required to file an application and statement of claim and thereafter invoke the general rules for discovery conferred by O 15A must be very imminent. Whether such an order should be made, as is sought by the Respondent, will be further considered at the hearing on 1 and 2 May 2008. Rule 6 is a rule " designed to amplify the court's power to penetrate obscurities and uncertainties in the interests of justice ": cf Paxus Services Ltd v People Bank Pty Ltd (1990) 99 ALR 728 at 733 per Burchett J. It is a rule which should be " beneficially construed, given the fullest scope that its language will reasonably allow, with the proper brake on any excesses lying in the discretion of the Court, exercised in the particular circumstances of each case ": St George Bank Ltd v Rabo Australia Ltd [2004] FCA 1360 at [26] , [2004] FCA 1360 ; 211 ALR 147 at 153 per Hely J.


case_text: Counsel for the Respondent accepts that there may, in an appropriate case, be cross-examination of deponents of affidavits filed and read in proceedings commenced under O 15A. So much may presently be accepted. An application under O 15A does not exclude the availability of other interlocutory procedures of the Court nor exclude the normal rule that a " party may require the attendance for cross-examination of a person making an affidavit ": Federal Court Rules 1979 (Cth), O 14, r 9. When addressing the availability of interlocutory procedures, including the ability to issue a notice to produce, Hill J (with whom Hely and Conti JJ agreed) concluded in Tyco Australia Pty Ltd v Leighton Contractors Pty Ltd [2005] FCAFC 115 , 142 FCR 428: [46] However, for the reasons I have given, I am of the view that there is power to issue, in an appropriate case, a notice to produce in pre-action discovery proceedings. Whether the notice should be confined clearly depends upon the issues that are said to arise and in respect of which the production of documents is sought. An applicant who seeks to use a notice to produce, in effect, to gain production of the very documents which are the subject of the pre-action discovery will not have given the notice to produce in good faith, but rather, will have acted in a way that is an abuse of process. Otherwise, in principle at least, the notice to produce procedure may be exercised by both parties if otherwise relevant to issues in dispute. However, I would emphasise that it clearly is not contemplated that a pre-action discovery proceeding become a full-blown factual contest between the parties. The judge hearing the application will, no doubt, confine cross-examination and examine the subject matter of any notice to produce to ensure this does not become the case.


case_text: the notion of a "market in Australia" in s 4E has been referred to in two cases ( Riverstone Computer Services Pty Ltd v IBM Global Financing Australia Ltd [2002] FCA 1608 at [21] per Hill J and Auskay International Manufacturing & Trade Pty Ltd v Qantas Airways Ltd (2008) ATPR 42-256 at [19] per Tracey J), the concept has not been the subject of extensive judicial consideration.


case_text: Commission submits that the benefit obtained by the contravening conduct is not the only, or indeed the main, determinant of the size of the appropriate penalty in price fixing cases. It notes that, particularly in cases involving conduct over a lengthy period, the extent of that benefit will be impossible to determine. The Commission referred to observations made by Goldberg J in Australian Competition and Consumer Commission v Australian Safeway Stores Pty Ltd (No 4) [2006] FCA 21 ; (2006) ATPR 42-101 at [56] - [57] and by me in Australian Competition and Consumer Commission v Roche Vitamins Australia Pty Ltd (2001) ATPR 41-809 at [42].


case_text: in Australian Competition and Consumer Commission v Construction, Forestry, Mining and Energy Union (2007) ATPR 42-192 , his Honour had to consider a proposed four year time limit. Of this limit, his Honour said (at [8]): It provides a limit to the remedy of contempt of Court for breach. More particularly, it sets a period during which the party restrained will have a very powerful incentive to ensure that there is no further contravening conduct. By the end of that period it is to be hoped that the procedures and, perhaps, the culture of the organisation will be such that further contravention is unlikely. It seems to me that the undertakings which have been obtained in relation to compliance programs are appropriate for that purpose.


case_text: appropriateness of injunctions of limited duration under s 80 has been considered in several recent cases. In Australian Competition and Consumer Commission v George Weston Foods Ltd [2004] FCA 1093 ; (2004) 210 ALR 486 ( George Weston Foods ) at [30], Gyles J expressed a reservation concerning the time limit of three years proposed by both parties in that case. His Honour found it difficult to see the reason for the time limit in relation to a properly framed injunction, bearing in mind that under s 80(3) of the Act the Court has power to rescind or vary an injunction granted under s 80(1). Gyles J had occasion to consider the question again in Australian Competition and Consumer Commission v Liquorland (Aust) Pty Ltd (2005) ATPR 42-070 where, again, a time limit of three years was proposed. His Honour (at [71]) repeated the reservation he had voiced in George Weston Foods but granted an injunction limited to three years on the basis that in the circumstances it was not necessary to subject Liquorland (Aust) Pty Ltd to the threat of contempt of court for any longer period. In forming that view, his Honour referred to the existence of a compliance programme, a change in New South Wales licensing laws, and the sharp shock that had been administered to the company by the proceeding.


case_text: J and Stone J have also had occasion to consider the question of time limits on injunctions granted on the Commission's application. In Australian Competition and Consumer Commission v IPM Operation & Maintenance Loy Yang Pty Ltd (2006) 157 FCR 162 ( IPM ), the Commission sought a final injunction against the respondent Union. Young J unequivocally rejected (at [233]) a final injunction as "plainly inappropriate" and would "not contemplate an injunction that operates indefinitely" in a case where the relevant conduct had come to an end. His Honour observed that in such a case, any injunction should be for only a limited period of time, and noted that this course was commonly taken in the authorities. For her part, Stone J, in Australian Competition and Consumer Commission v Signature Security Group Pty Ltd (2003) ATPR 41-942 , incorporated a two year time limit in the injunction that she granted, even though, as in IPM , the Commission sought a permanent injunction. Her Honour regarded the purpose of the injunction in the case before her as being not to restrain apprehended repetition but to deter the contravening party from repeating the contravention. Her Honour referred to the following observation by French J in ICI Australia Operations Pty Limited v Trade Practices Commission [1991] FCA 527 ; (1992) 38 FCR 248: There is room in the statutory framework and the policy that underlies it for an injunction which is intended not to restrain an apprehended repetition of contravening conduct but to deter an offender from repeating the offence. That deterrence is effected by attaching to the repetition of the contravention the range of sanctions available for contempt of court ... The remedy is flexible and may be applied in service of a variety of functions to support the policy of the Act. In imposing the two year time limit, Stone J noted that the respondent had instituted appropriate measures to prevent a recurrence of its contravening conduct, and that if it had not done so she might have granted a permanent injunction, leaving it to the respondent to apply under s 80(3) for its termination.


case_text: Full Court in Mobil Oil made the following further five points: • First, the rationale for giving weight to a joint submission on penalty is the saving in resources for the regulator and the Court, which, in the case of the regulator, can be used to increase the likelihood that other contraveners will be detected and brought before the Court. • Second, the sixth proposition from NW Frozen Foods (see [26] above) does not mean that the Court must commence its reasoning with the level of penalty proposed and limit itself to considering whether that penalty is within the permissible range: the Court may, instead, address the question independently at the outset. • Third, there was no suggestion in NW Frozen Foods that the admissions or statement of agreed facts had been "tailored or modified to reflect the difficulties faced by the [Commission] in proving its case" (at [55]). • Fourth, the regulator should always explain to the Court the process of reasoning said to justify a discounted penalty (the Court referred to Australian Competition and Consumer Commission v Ithaca Ice Works Pty Ltd (2002) ATPR 41-851 at [56]). • Fifth, there is nothing in NW Frozen Foods inconsistent with any of the following propositions: (i) The Court may request the parties to provide additional evidence or information or to verify the information provided, in default of which the Court may well not be satisfied that the proposed penalty is within the permissible range; (ii) If the absence of a contradictor inhibits the Court in the performance of its duty under s 76 of the Act, it may seek the assistance of an amicus curiae or of an individual or body prepared to act or intervene under O 6 r 17 of the Federal Court Rules ; and (iii) If the Court is disposed not to impose the agreed penalty, it may be appropriate for the parties or either of them to be given the opportunity to withdraw consent and for the matter to proceed as a contested hearing.


case_text: passage was cited with approval by Merkel J in Australian Competition and Consumer Commission v Leahy Petroleum Pty Ltd (No 2) [2005] FCA 254 ; (2005) 215 ALR 281 at [10] . In Australian Competition and Consumer Commission v Leahy Petroleum Pty Ltd (No 3) [2005] FCA 265 ; (2005) 215 ALR 301 at [39] , Goldberg J concluded that the level of penalty must be sufficiently high that the party penalised will realise the seriousness of its conduct and will not be inclined to repeat it. His Honour noted that obviously the sum required to achieve that object would be the larger where the company has vast resources.


case_title: Australian Competition and Consumer Commission v Leahy Petroleum Pty Ltd (No 3) [2005] FCA 265 ; (2005) 215 ALR 301


case_text: J had occasion to consider the question again in Australian Competition and Consumer Commission v Liquorland (Aust) Pty Ltd (2005) ATPR 42-070 where, again, a time limit of three years was proposed. His Honour (at [71]) repeated the reservation he had voiced in George Weston Foods but granted an injunction limited to three years on the basis that in the circumstances it was not necessary to subject Liquorland (Aust) Pty Ltd to the threat of contempt of court for any longer period. In forming that view, his Honour referred to the existence of a compliance programme, a change in New South Wales licensing laws, and the sharp shock that had been administered to the company by the proceeding.


case_text: Australian Competition and Consumer Commission v McMahon Services Pty Ltd (2004) ATPR 42-031 at [15], Selway J stated in relation to price fixing: Once it is understood that deterrence, and particularly general deterrence, is the primary principle in the imposition of penalty for price fixing, then at least two conclusions flow from that. First, it means that penalties for collusive price fixing will need to be substantial and significant. This is, of course, reflected in the size of the maximum penalty upon corporations of $10 million. However, it also follows logically from the principle. Collusive price fixing, particularly between tenderers is difficult to detect. Public enforcement often only occurs with "a tip from an affected party or an insider" (see Marshall & Meurer, "Bidder Collusion and Antitrust Law: Refining the Analysis of Price Fixing to Account for the Special Features of Auction Markets" (2004) 72 AntiTrust Law Journal 83 at 101). Given these difficulties and the potential for large profits from such practices there is a chance that those in the market place might be prepared to factor the risk of a low penalty into its pricing structure as a 'business cost'. That would be inimical to the statutory purpose of ensuring that the practices do not occur. The penalty must be sufficiently high that a business, acting rationally and in its own best interest, will not be prepared to treat the risk of such a penalty as a business cost.


case_text: difficulty of detection of collusive price fixing understandings was referred to by Heerey J in Australian Competition and Consumer Commission v McPhee & Son (Australia) Pty Ltd (1998) ATPR 41-628 at 40,891-40,892: This form of contravention commonly occurs in secret and between parties who seek a mutual benefit. The risk of detection is often low and the potential gain to the contraveners, and damage to the community, large. Therefore the penalty needs to be correspondingly high.


case_title: Australian Competition and Consumer Commission v Roche Vitamins Australia Pty Ltd (2001) ATPR 41-809


case_text: her part, Stone J, in Australian Competition and Consumer Commission v Signature Security Group Pty Ltd (2003) ATPR 41-942 , incorporated a two year time limit in the injunction that she granted, even though, as in IPM , the Commission sought a permanent injunction. Her Honour regarded the purpose of the injunction in the case before her as being not to restrain apprehended repetition but to deter the contravening party from repeating the contravention. Her Honour referred to the following observation by French J in ICI Australia Operations Pty Limited v Trade Practices Commission [1991] FCA 527 ; (1992) 38 FCR 248: There is room in the statutory framework and the policy that underlies it for an injunction which is intended not to restrain an apprehended repetition of contravening conduct but to deter an offender from repeating the offence. That deterrence is effected by attaching to the repetition of the contravention the range of sanctions available for contempt of court ... The remedy is flexible and may be applied in service of a variety of functions to support the policy of the Act. In imposing the two year time limit, Stone J noted that the respondent had instituted appropriate measures to prevent a recurrence of its contravening conduct, and that if it had not done so she might have granted a permanent injunction, leaving it to the respondent to apply under s 80(3) for its termination.


case_text: NW Frozen Foods Pty Ltd v Australian Competition and Consumer Commission [1996] FCA 1134 ; (1996) 71 FCR 285 ( NW Frozen Foods ) and J McPhee & Son (Aust) Pty Ltd v Australian Competition and Consumer Commission [2000] FCA 365 ; (2000) 172 ALR 532 (J McPhee & Son ), Full Courts of this Court approved of French J's list and added: (j) similar conduct in the past; (k) effect on the functioning of the market and other economic effects of the conduct; and (l) whether the conduct was systematic, deliberate or covert. The Commission refers to J McPhee & Son in which a pecuniary penalty of $2.5 million was ordered in relation to making and attempting to make price fixing arrangements. As another illustration, the Commission refers to non-compete agreements in which one party might derive no direct benefit in a particular market or market segment because it has merely agreed to stay out of that market or segment. For airlines with a 2% or less share of the Australian segment of the Air Cargo Market, the Commission proposed no uplift or increase in the base penalty. The Commission did not propose to discriminate between those with 2% or less, but accepted that all would have been likely to derive a relatively minor benefit in the Australian segment, which would probably be less than the base penalty. Over the relevant period, Qantas carried approximately 24% of all air cargo to and from Australia based on weight, well above the 2% level. Some 69% of Qantas's fuel surcharges were obtained on flights to and from Australia. Qantas's penalty in Australia must reflect the fact that Qantas's activities had the most significant connection with Australia and that Australia is therefore the primary jurisdiction in which those activities should be penalised. The figure reached by the Commission, prior to any discount, was $40 million.


case_text: principles governing the imposition of penalties for contraventions of Part IV must now be considered in the light of the most recent Full Court pronouncement on the matter in Minister for Industry, Tourism & Resources v Mobil Oil Australia Pty Ltd [2004] FCAFC 72 ; (2004) ATPR 41-993 ( Mobil Oil ). Mobil Oil was not a Part IV case. The Minister for Industry, Tourism & Resources sought, among other relief, an order that the respondent (Mobil) pay to the Commonwealth a pecuniary penalty by reason of its contravention of s 10 of the Petroleum Retailing Marketing Sites Act 1980 (Cth). The primary judge was Gyles J. On his recommendation the Chief Justice directed, pursuant to s 20(1A) of the Federal Court of Australia Act 1976 (Cth), that the jurisdiction of the Court should be exercised by a Full Court in respect of the following question: Where the parties propose an agreed amount to be imposed as a penalty pursuant to s 13 of the Petroleum Retailing Marketing Sites Act 1980 (Cth), is the Court bound by the decision in [NW Frozen Foods] to consider whether the proposed amount is within the permissible range in all the circumstances and, if so, impose a penalty of that amount? The Full Court answered this question as follows: No, but the reasons in [ NW Frozen Foods ] discloses no error of principle. The Full Court in Mobil Oil made the following further five points: • First, the rationale for giving weight to a joint submission on penalty is the saving in resources for the regulator and the Court, which, in the case of the regulator, can be used to increase the likelihood that other contraveners will be detected and brought before the Court. • Second, the sixth proposition from NW Frozen Foods (see [26] above) does not mean that the Court must commence its reasoning with the level of penalty proposed and limit itself to considering whether that penalty is within the permissible range: the Court may, instead, address the question independently at the outset. • Third, there was no suggestion in NW Frozen Foods that the admissions or statement of agreed facts had been "tailored or modified to reflect the difficulties faced by the [Commission] in proving its case" (at [55]). • Fourth, the regulator should always explain to the Court the process of reasoning said to justify a discounted penalty (the Court referred to Australian Competition and Consumer Commission v Ithaca Ice Works Pty Ltd (2002) ATPR 41-851 at [56]). • Fifth, there is nothing in NW Frozen Foods inconsistent with any of the following propositions: (i) The Court may request the parties to provide additional evidence or information or to verify the information provided, in default of which the Court may well not be satisfied that the proposed penalty is within the permissible range; (ii) If the absence of a contradictor inhibits the Court in the performance of its duty under s 76 of the Act, it may seek the assistance of an amicus curiae or of an individual or body prepared to act or intervene under O 6 r 17 of the Federal Court Rules ; and (iii) If the Court is disposed not to impose the agreed penalty, it may be appropriate for the parties or either of them to be given the opportunity to withdraw consent and for the matter to proceed as a contested hearing.


case_text: NW Frozen Foods Pty Ltd v Australian Competition and Consumer Commission [1996] FCA 1134 ; (1996) 71 FCR 285 ( NW Frozen Foods ) and J McPhee & Son (Aust) Pty Ltd v Australian Competition and Consumer Commission [2000] FCA 365 ; (2000) 172 ALR 532 (J McPhee & Son ), Full Courts of this Court approved of French J's list and added: (j) similar conduct in the past; (k) effect on the functioning of the market and other economic effects of the conduct; and (l) whether the conduct was systematic, deliberate or covert. The principal object of imposing a penalty under s 76 is deterrence, both specific and general: Trade Practices Commission v Stihl Chainsaws (Aust) Pty Ltd (1978) ATPR 40-091 at 17,896; TPC v CSR at 52,152; NW Frozen Foods , above, at 292-294. The principles governing the imposition of penalties for contraventions of Part IV must now be considered in the light of the most recent Full Court pronouncement on the matter in Minister for Industry, Tourism & Resources v Mobil Oil Australia Pty Ltd [2004] FCAFC 72 ; (2004) ATPR 41-993 ( Mobil Oil ). Mobil Oil was not a Part IV case. The Minister for Industry, Tourism & Resources sought, among other relief, an order that the respondent (Mobil) pay to the Commonwealth a pecuniary penalty by reason of its contravention of s 10 of the Petroleum Retailing Marketing Sites Act 1980 (Cth). The primary judge was Gyles J. On his recommendation the Chief Justice directed, pursuant to s 20(1A) of the Federal Court of Australia Act 1976 (Cth), that the jurisdiction of the Court should be exercised by a Full Court in respect of the following question: Where the parties propose an agreed amount to be imposed as a penalty pursuant to s 13 of the Petroleum Retailing Marketing Sites Act 1980 (Cth), is the Court bound by the decision in [NW Frozen Foods] to consider whether the proposed amount is within the permissible range in all the circumstances and, if so, impose a penalty of that amount? The Full Court answered this question as follows: No, but the reasons in [ NW Frozen Foods ] discloses no error of principle. At [51] the Full Court noted that the following propositions emerged from NW Frozen Foods : (i) It is the responsibility of the Court to determine the appropriate penalty; (ii) Determining the quantum of a penalty is not an exact science and the courts have acknowledged that within a permissible range, a particular figure cannot necessarily be said to be more appropriate than another; (iii) There is a public interest in promoting settlement of litigation, particularly where it is likely to be lengthy; (iv) The view of the regulator, as a specialist body, is relevant, but not determinative, and its views on matters within its expertise will usually be given greater weight than its views on more "subjective" matters; (v) The Court examines all the circumstances of the case, and where the parties have advanced an agreed statement of facts, the Court may act on it if it is appropriate to do so; and (vi) Where the parties have jointly proposed a penalty, it is not useful to investigate whether the Court would have arrived at that precise figure; the figure will be appropriate if within the permissible range. The Full Court in Mobil Oil made the following further five points: • First, the rationale for giving weight to a joint submission on penalty is the saving in resources for the regulator and the Court, which, in the case of the regulator, can be used to increase the likelihood that other contraveners will be detected and brought before the Court. • Second, the sixth proposition from NW Frozen Foods (see [26] above) does not mean that the Court must commence its reasoning with the level of penalty proposed and limit itself to considering whether that penalty is within the permissible range: the Court may, instead, address the question independently at the outset. • Third, there was no suggestion in NW Frozen Foods that the admissions or statement of agreed facts had been "tailored or modified to reflect the difficulties faced by the [Commission] in proving its case" (at [55]). • Fourth, the regulator should always explain to the Court the process of reasoning said to justify a discounted penalty (the Court referred to Australian Competition and Consumer Commission v Ithaca Ice Works Pty Ltd (2002) ATPR 41-851 at [56]). • Fifth, there is nothing in NW Frozen Foods inconsistent with any of the following propositions: (i) The Court may request the parties to provide additional evidence or information or to verify the information provided, in default of which the Court may well not be satisfied that the proposed penalty is within the permissible range; (ii) If the absence of a contradictor inhibits the Court in the performance of its duty under s 76 of the Act, it may seek the assistance of an amicus curiae or of an individual or body prepared to act or intervene under O 6 r 17 of the Federal Court Rules ; and (iii) If the Court is disposed not to impose the agreed penalty, it may be appropriate for the parties or either of them to be given the opportunity to withdraw consent and for the matter to proceed as a contested hearing.


case_text: the notion of a "market in Australia" in s 4E has been referred to in two cases ( Riverstone Computer Services Pty Ltd v IBM Global Financing Australia Ltd [2002] FCA 1608 at [21] per Hill J and Auskay International Manufacturing & Trade Pty Ltd v Qantas Airways Ltd (2008) ATPR 42-256 at [19] per Tracey J), the concept has not been the subject of extensive judicial consideration. In Riverstone , Hill J rejected the proposition that in order to be a "market in Australia" a market must be wholly within Australia. His Honour said (at [21]) that the fact that a market was global did not signify that there could not be a market in Australia for the same products. As the Commission points out, a contrary view would considerably reduce the efficacy and utility of the competition law provisions of the Act, especially in the modern telecommunications era. The definition of "market in Australia" in s 4E excludes, however, a market that is wholly outside Australia. Part of the present global and international air cargo market necessarily falls within the territorial boundaries of Australia. The Fuel Surcharge Understanding necessarily affected the prices exacted from persons, including persons in Australia, in respect of the international transport of cargo by air. In my view, the jurisdictional threshold in s 5 of the Act is satisfied.


case_text: Trade Practices Commission v CSR Ltd (1991) ATPR 41-076 ( TPC v CSR ) at 52,152-52,153 French J identified the following considerations as being relevant to the level of penalty: (a) the nature and extent of the contravening conduct; (b) the amount of loss or damage caused; (c) the circumstances in which the conduct took place; (d) the size of the contravening company; (e) the degree of power it has, as evidenced by its market share and ease of entry into the market; (f) the deliberateness of the contravention and the period over which it extended; (g) whether the contravention arose out of the conduct of senior management or at a lower level; (h) whether the company has a corporate culture conducive to compliance with the Act, as evidenced by educational programs and disciplinary or other corrective measures in response to an acknowledged contravention; and (i) whether the company has shown a disposition to co-operate with the authorities responsible for the enforcement of the Act in relation to the contravention.


case_text: principal object of imposing a penalty under s 76 is deterrence, both specific and general: Trade Practices Commission v Stihl Chainsaws (Aust) Pty Ltd (1978) ATPR 40-091 at 17,896; TPC v CSR at 52,152; NW Frozen Foods , above, at 292-294.


case_text: "totality principle" as it is called in the criminal law, is applicable, that is to say, the total penalty for related offences should not exceed what is proper for the entire contravening conduct involved: Trade Practices Commission v TNT Australia Pty Ltd (1995) ATPR 41-375 at 40,169. What follows under this heading is paras 131-158 of the Joint Submissions: Nature and extent of the contravening conduct, including its deliberateness 131. The conduct subject to penalty was engaged in by Qantas' freight division throughout the world. The understanding was to implement the Fuel Surcharge Understanding as widely and as fully as possible but, in some locations in giving effect to the Fuel Surcharge Understanding, the amount of the fuel surcharge varied according to what the participants thought was profitably achievable, and in some locations no surcharge was maintainable. 132. Within Qantas Freight, its involvement in the conduct was not particularly clandestine. It did not however disclose the conduct to Qantas' most senior management or Board. Qantas Freight representatives throughout the world sought or gave pricing intentions or assurances at the direction of Frampton or Cooper but for many of them it was seen as a normal part of business. They would openly report their discussions back to Cooper. The conduct simply continued after Frampton and Cooper left. 133. In many jurisdictions prior to the investigations of this conduct, the local representatives did not consider their discussions particularly secret. In some locations, such as Hong Kong and Japan where local regulators had to approve price increases, Qantas Freight representatives would meet with competitors to jointly propose a surcharge and would minute their meetings and agreement. 134. The conduct ceased in February 2006, when allegations concerning the understanding were publicised following "raids" undertaken by regulatory bodies in the United States and Europe. The cartel could have been defeated at any time in most localities by any major carrier in that locality declining to impose the surcharge. The cartel could have been defeated to and from Australia had Qantas declined to participate. The amount of loss or damage caused 135. The revenue generated by Qantas as a result of the fuel surcharges to and from Australia during the relevant period was approximately $170 million. Qantas Freight carried 24% of the cargo carried to and from Australia. This however does not demonstrate the actual loss to shippers or their customers because, absent the Fuel Surcharge Understanding, some price increases would have occurred to cover the increased costs of fuel, which did increase over the relevant period. It may have also been that some carriers would have been forced to exit certain routes, allowing the remainder to impose other increases with less constraint. These competitive outcomes cannot be known. It is the case that each of the parties to the Fuel Surcharge Understanding had different arrangements for the acquisition of fuel and acquired it in different places: many, such as Qantas, also had hedging arrangements. The Fuel Surcharge Understanding did not accordingly reflect any of the parties' actual costs. Further, a surcharge increase could stay in place even after the price increase that triggered it had gone: different trigger steps were used in the Surcharge Methodology when it was reducing from when it was increasing. 136. Neither the Commission nor Qantas are aware as to what proportion of the surcharge was ultimately borne by any particular consumer or business in Australia. As a general rule, the ultimate consumer will bear most if not all of the transport cost, in the price paid for the cargo: others in the supply chain, such as a wholesaler or retailer will absorb some part of the cost some part of the time. These others involve persons both in Australia or overseas. They will be more likely to absorb the loss if the goods comprising the cargo have been sold prior to the transport cost increase but may also have to do so if their competitors do not have the same costs. Nevertheless it may be assumed that the cost of surcharges on cargo comprising imported goods would be largely borne by Australians whereas the same costs on cargo comprising exported goods would be largely borne by overseas buyers. 137. Businesses in Australia importing cargo on which a surcharge was paid, even if they passed it on totally to their customers, would also be negatively impacted if they competed with domestic goods, but again the effect on any particular consumer or business cannot be known or quantified. The size of the contravener 138. As noted in paragraphs 9 to 13 above, Qantas has assets of nearly $20 billion and during the relevant period was the 11th largest airline in the world in terms of revenue passenger kilometres. Over the relevant period Qantas carried approximately 24% of the air freight to and from Australia and its nearest competitor carried about 14%. Its total profits before tax for the year ended 30 June 2007 was $1.032 billion. It derived revenue of $902 million from the carriage of air freight for the same financial year. Many of Qantas' principal competitors are of a similar or even larger size although none is as large in the Australian segment of the Air Cargo Market. The period over which the contravening conduct extended 139. Qantas' contravening conduct for which penalties can be imposed extended over a four year period from 2002 to 2006 inclusive. Degree of power it has, as evidenced by its market share and ease of entry into the market 140. Qantas does not know, and does not have access to any reliable information to allow it to assess, its share of the Air Cargo Market. 141. In the segment to and from Australia, Qantas holds about 24%. Its nearest rival holds about 14% and there are at least ten significant competitors which are major international carriers and which have market shares to and from Australia of between about 2% and 10%. Qantas clearly has the largest market share in the Australian segment but is and was unable to act without being constrained by its competitors. The circumstances in which the conduct took place 142. Whilst the volatility of jet fuel prices certainly sparked the conduct, and some price adjustment would have been implemented by participants unilaterally to reflect this, the fuel surcharge timing and amount did not reflect the actual changes in costs of the competing airlines or the degree to which general price rises accounted for movements in fuel costs. The conduct substantially reduced competition for the carriage of air cargo. The parties were aware that the US Department of Transport had comprehensively rejected the conduct as anticompetitive. The conduct required the participation of all major carriers in each port or region to be successful. Participation of senior management 143. Qantas Freight's participation in the Fuel Surcharge Understanding was arranged by Frampton and Cooper and implemented by regional managers of Qantas Freight in offices around the world. It was not known to the Qantas Board or its most senior managers. Whilst the most senior person in its air cargo operation was involved, there was, since 1996, a level of more senior executives between him and the Chief Executive Officer. Qantas nevertheless accepts that Frampton, the head of Qantas Freight, a division generating over $500 million revenue a year, is properly classified as a senior executive of Qantas. Culture of compliance with the Trade Practices Act 144. Qantas did have a program of trade practices compliance in place during the period of the contravening conduct. That program proved to be inadequate in identifying, preventing or even limiting the extent of the conduct. Persons responsible for monitoring and preventing such conduct only became aware of it after raids of their competitors' premises overseas were conducted by regulatory agencies. 145. Qantas has recognised the inadequacy of its compliance program. It has substantially upgraded the program and its new program is presently being implemented throughout the world. Co-operation and Contrition 146. Qantas has fully co-operated with the Commission's investigations since Qantas contacted the Commission in mid 2006. Qantas promptly provided the Commission with critical information about collusive understandings, including frank and detailed admissions of its own participation in those understandings as it became aware of them and insofar as it was able. Qantas did so aware that immunity was not available to it in relation to its fuel surcharge conduct and knowing that it was highly likely to face very substantial penalties. 147. To this end Qantas interviewed, and made available for interview by the Commission, over 35 of its staff and former staff and voluntarily searched for and produced documents from its operations throughout the world relevant to its and other airlines involvement in the contraventions. It brought to Australia at its own expense all staff willing to be interviewed by the Commission even though those staff could not have been compelled under section 155 of the Act. The Commission has not needed to serve any section 155 notices on Qantas. 148. Qantas' efforts have made available to the Commission information and documents identifying the involvement of other participants which have not been produced or made available as yet by these persons. Qantas has consistently demonstrated a commitment from its Board and Chief Executive Officer to identify and report to the Commission the extent of its involvement in the contraventions and to ensure the breaches are not repeated. Qantas has demonstrated genuine contrition for its involvement in these contraventions. 149. Whilst Qantas was not able to secure the co-operation of some of its former staff (less than 5) in all countries, the Commission is satisfied it has used its best endeavours to do so. Qantas has offered to the Commission, and undertakes to the Court, to continue to provide this very high level of assistance with the investigation, and possible prosecution, of cases against other participants. 150. Qantas through its solicitors and in-house counsel willingly participated in a series of discussions with the Commission to bring an agreed resolution of the matter before the Court. As a result of those discussions Qantas and the Commission have reached agreement as to the appropriate penalty to be suggested to the Court. Qantas has also assisted the Commission in the preparation of the relevant settlement documents including the admissions. 151. As already mentioned, Qantas has reviewed and upgraded its current trade practices compliance program. 152. The Commission fully accepts that Qantas is entitled to very substantial credit for having admitted contravening the Act, indeed actively self reporting, assisting the Commission in its investigations, upgrading its compliance program and agreeing with the Commission on the appropriate penalty to put to the Court (see Trade Practices Commission v TNT Australia Pty Ltd (1995) ATPR |P41-375 41 375). Qantas' co-operation with the Commission has saved the Commission and the Court (and ultimately the community) the cost and burden of litigating an extremely lengthy and expensive case. 153. The number of possible participants, the fact that numerous witnesses and documents are not within the jurisdiction, the need for translations and the sheer scope and duration of the conduct would make this likely to be the largest and most expensive investigation ever conducted by the Commission. 154. It is obviously of benefit to the Commission's investigations that respondents are encouraged to co-operate in appropriate cases. In these circumstances the parties submit Qantas is entitled to a very substantial discount on the penalty that otherwise would have been appropriate, which, given the regularity of the contravening conduct over the four year period and the maximum applicable penalty per contravention of $10 million, could have been very much higher. This discount should reflect not only its extraordinary levels of assistance in locating witnesses and material to make appropriate admissions as soon as possible but also in using its best endeavours to assist in the investigation and possible prosecution of other participants. 155. Considering Qantas' outstanding cooperation in relation to its own case and as against other parties, the Commission has accepted a very substantial reduction in agreeing on an appropriate penalty to recommend to the Court. Similar conduct in the past 156. The Court has not previously found contraventions against Qantas in relation to the Act. Other regulators 157. The Commission notes that Qantas has already paid a penalty in the United States of US$61 million in respect of its conduct. Qantas expects to pay a very substantial penalty in Europe at the conclusion of EU investigations. The penalty in the United States was very substantially discounted as a result of Qantas' co-operation with authorities there. Qantas expects similar considerations to be applied by European authorities where Qantas has also co-operated with enquiries and made appropriate admissions. Conclusion on appropriate penalty 158. The Commission and Qantas submit that, when all the factors and circumstances referred to above are taken fully into account, a pecuniary penalty of $20 million is appropriate, in that the parties consider that the suggested amount falls within the range that the Court, unaided by the parties' agreement, would have considered appropriate. I did not find the present case straightforward and therefore sought and received further submissions from the Commission which were supported by Qantas. My difficulties arose from the following considerations: • The anti-competitive arrangement was a global one and this raised a question as to its territorial connection with Australia and the question of whether the same conduct contravened laws of other jurisdictions so that penalties imposed on Qantas in them should be taken into account; • Identification of the extent to which Qantas profited from the Fuel Surcharge Understanding; and • The extent of the discount for Qantas's early admission of contravention and cooperation with the Commission. There are two relevant territorial connection provisions in the Act: ss 5 and 4E. In the present case, the relevant market is a worldwide market for air cargo services, including, but not limited to, the carriage of cargo by air to and from Australia (see [8](22) above). In these circumstances, the primary territorial and jurisdictional limit is that found in s 5. Section 5 provides, relevantly, that Part IV of the Act extends to engaging in conduct outside Australia by bodies corporate incorporated or carrying on business within Australia. Qantas is incorporated in Australia. Section 45(3) provides, relevantly, that for the purposes of ss 45 and 45A "competition" means competition in any market in which a party to the contract, arrangement or understanding in question supplies or acquires goods or services. Section 4E provides, relevantly, that "market" means a market in Australia.


case_text: I accept that perfect interpretation is never possible, there must be translation which provides an effective communication between the parties: see, Gaio v The Queen [1960] HCA 70 ; (1960) 104 CLR 419 at 433 and WACO v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 171 ; (2003) 131 FCR 511 at [66] . This did not occur in this case.


case_text: 39 of the AAT Act requires that the Tribunal apply notions of procedural fairness: see Kioa v West [1985] HCA 81 ; (1985) 159 CLR 550 per Mason J; O'Sullivan v Repatriation Commission [2003] FCA 387 ; (2003) 128 FCR 590 at [45] ; and Repatriation Commission v Farley-Smith (2007) 45 AAR 474 at [54]. Obviously, the requirements of procedural fairness will depend upon the particular circumstances of each case. More specifically, s 39 provides that the Tribunal must ensure that every party before it is given a reasonable opportunity to present his or her case. If such a statutory duty is not complied with there is an error of law.


case_text: appreciate that a solicitor represented the applicant at the Tribunal. This in itself does not absolve the Tribunal from carrying out the mandate set forth in s 39 of the AAT Act: see, eg, Kuswardana v Minister for Immigration and Ethnic Affairs (1981) 54 FLR 334 , 342-43 per Bowen CJ and Sullivan v Department of Transport (1978) 20 ALR 323 , at 326 per Smithers J, and at 342 per Deane J. For instance, a failure of a tribunal to adjourn a matter could constitute a failure to allow a party to present his or her case even if an adjournment was not requested: see Deane J at 342 and Priddle v Fisher & Sons (1968) 1 WLR 1478. On the other hand, I accept that in circumstances where a party is represented there is some onus upon a party to be proactive: see, eg, Schiffer v Pattison [2001] FCA 1094 and Farley-Smith 45 AAR 474 at [54]. However, the solicitor representing the applicant in the circumstances of this case could hardly have been expected to know of the extent of the inadequacy of the translator when the applicant herself was not present to advise him. In an important respect, namely the inadequacy of the translation itself, the solicitor had no basis upon which to be proactive.


case_text: respondent submitted that to the extent that the Tribunal's decision depended on the assessment of the evidence of the applicant's witnesses, there is no evidence to suggest that the Tribunal was unable to make a proper assessment of that evidence, including the sincerity and reliability of the witnesses ( NAIS v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 77 ; (2005) 228 CLR 470 at 475). For the reasons indicated above, I reject that submission even if it raises a relevant consideration for my current determination. In light of the inadequacy of the translation, the Tribunal simply could not properly assess the evidence of Ms Yu-Lin and undertake the weighing exercise it was required to engage in. I wish to make one further observation as to the evidence before the Tribunal and the approach taken by the Tribunal. The Tribunal relevantly decided that: 7. On 25 November 2006 an enduring power of attorney was executed by the mother of Ms Eao, Ms Pao Yu Yu-Lin (Ms Yu-Lin), appointing Ms Eao as her attorney. On 15 March 2007 Ms Eao executed a Deed of Acknowledgment of Trust both as trustee and as attorney for the beneficiary, Ms Yu-Lin, reciting that the property had been purchased on 6 June 1996 as trustee for the beneficiary. On 5 April 2007, the property was transferred into the name of Ms Yu-Lin alleging her entitlements pursuant to that trust. The transfer of land was executed by Ms Eao as attorney for Ms Yu-Lin. Ms Eao acknowledged that, prior to March 2007, no document existed which recorded her as holding the property in trust, whereas a document such as the option agreement warranted that she was the sole owner with no other person having any interest or rights in the property. She said that she had relied on professional advice from those who were aware that the legal owner was her mother. ... 9. Ms Yu-Lin provided evidence confirming her daughter's evidence that the property had been purchased in the daughter's name but that she was the true owner. Ms Yu-Lin said that the $505,000 was not a loan but funds for the purchase of the property. She maintained that she was happy to invest in Australia but would not want to benefit one daughter to the detriment of her two other children. She said that she trusted her daughter and was aware of the mortgage as security for loans to other companies, the failure to pay full rent as a result of financial difficulties and the option to sell to Messrs Hughes and Doolan. She said that she had borrowed a part of the $505,000 remitted to Australia. ... 17. The primary issue before the Tribunal is whether the rental income derived from the property in the three years ended 30 June 2002 represented assessable income of Ms Eao or Ms Yu-Lin. The only evidence of the property being beneficially owned during this period was the oral evidence of the mother, the daughter, the son, the daughter's de facto partner and his business partner . The only documentary contemporaneous evidence was a telegraphic transfer order, transferring $505,000 from Ms Yu-Lin to the account of Ms Eao. The evidence pointing to beneficial ownership by Ms Eao or evidence indicating concern of acceptance of the above oral evidence included : (a) Notwithstanding that the ownership arrangements were made with legal advice, no documentary evidence existed prior to 2007 of any trust relationship. All prior documentation was to the contrary. (b) $96,373 of the purchase costs was borrowed directly in Australia by Ms Eao for no apparent consideration by Ms Yu-Lin. (c) Ms Yu-Lin was prevented from acquiring land in Australia in 1996. (d) An apparent informal acceptance of non-payment of rent. (e) The use of the property to provide security for borrowings of two other companies associated with Mr Hughes for no apparent consideration. (f) Payment of, at least, some rent into the same bank account of Ms Eao. While the majority of the rent was paid into an account in the name of Ms Yu-Lin, Ms Eao was the signatory on this account and there is no evidence of the subsequent disposition of the funds credited to that account. (g) Ms Eao was employed by Superior Hide and was the person primarily responsible for recording payments and receipts of that business. (h) The statement attributed to Mr Hughes at the interview with the ATO auditor in October 2003 that the property was owned by Ms Eao. (i) The evidence of Ms Yu-Lin that: I would never want to benefit my daughter at the expense of my other two children. I would only ever invest any money if it would be for the benefit of my children jointly and then only after my passing. This is at odds with the acceptance of non-payment of rent and allowing the property to be used as security for personal guarantees. (j) The letter from Walker & Company in July 2004 indicating the rent payments were interest on a loan from Ms Yu-Lin. (Emphasis added.) 18. On balance, I am satisfied that the applicant has not discharged the required onus of proof that she was not the beneficial owner of the property during the relevant period and that the amended assessments were excessive . It is unnecessary for the Tribunal to make a finding as to whether the $505,000 was a loan or gift to Ms Eao. It is appropriate to note that the actual source of the funds was not clearly demonstrated. It is accepted that it is possible the funds were by way of loan with the rental payments in lieu of interest and the subsequent transfer of the property to Ms Yu-Lin in 2007 being consideration for repayment of the principal. However, the full circumstances are something known only to the family. (Emphasis added.) As I have alluded to previously, it is apparent from the above extracts that the Tribunal did not explain its process of balancing the evidence set out by the Tribunal in sub-paragraphs 17(a)-(j). The Court cannot ascertain to what extent the important evidence of Ms Yu-Lin as translated had any impact on the balancing process, one way or another. In view of the failures of the translation process, the Tribunal could not make any proper assessment of the evidence, even allowing for the fact that the Tribunal was aware of the flaws in the process it had adopted.


case_title: O'Sullivan v Repatriation Commission [2003] FCA 387 ; (2003) 128 FCR 590


case_text: my view, the evidence of Ms Yu-Lin was effectively precluded from being properly presented because of the inadequacy of the translator. I am satisfied that the interpretation was so inadequate that it prevented the applicant from putting before the Tribunal the evidence she desired to rely upon, and that the evidence was significant to the applicant's case: see, eg Tobasi v Minister for Immigration and Multicultural Affairs [2002] FCA 1050 ; (2002) 122 FCR 322 ; Perera v Minister for Immigration and Multicultural Affairs [1999] FCA 507 ; (1999) 92 FCR 6 ; and SZGWN v Minister for Immigration and Citizenship [2008] FCA 238 per Gilmour J.


case_title: Priddle v Fisher & Sons (1968) 1 WLR 1478


case_text: 39 of the AAT Act requires that the Tribunal apply notions of procedural fairness: see Kioa v West [1985] HCA 81 ; (1985) 159 CLR 550 per Mason J; O'Sullivan v Repatriation Commission [2003] FCA 387 ; (2003) 128 FCR 590 at [45] ; and Repatriation Commission v Farley-Smith (2007) 45 AAR 474 at [54]. Obviously, the requirements of procedural fairness will depend upon the particular circumstances of each case. More specifically, s 39 provides that the Tribunal must ensure that every party before it is given a reasonable opportunity to present his or her case. If such a statutory duty is not complied with there is an error of law. I appreciate that a solicitor represented the applicant at the Tribunal. This in itself does not absolve the Tribunal from carrying out the mandate set forth in s 39 of the AAT Act: see, eg, Kuswardana v Minister for Immigration and Ethnic Affairs (1981) 54 FLR 334 , 342-43 per Bowen CJ and Sullivan v Department of Transport (1978) 20 ALR 323 , at 326 per Smithers J, and at 342 per Deane J. For instance, a failure of a tribunal to adjourn a matter could constitute a failure to allow a party to present his or her case even if an adjournment was not requested: see Deane J at 342 and Priddle v Fisher & Sons (1968) 1 WLR 1478. On the other hand, I accept that in circumstances where a party is represented there is some onus upon a party to be proactive: see, eg, Schiffer v Pattison [2001] FCA 1094 and Farley-Smith 45 AAR 474 at [54]. However, the solicitor representing the applicant in the circumstances of this case could hardly have been expected to know of the extent of the inadequacy of the translator when the applicant herself was not present to advise him. In an important respect, namely the inadequacy of the translation itself, the solicitor had no basis upon which to be proactive.


case_title: Schiffer v Pattison [2001] FCA 1094


case_text: appreciate that a solicitor represented the applicant at the Tribunal. This in itself does not absolve the Tribunal from carrying out the mandate set forth in s 39 of the AAT Act: see, eg, Kuswardana v Minister for Immigration and Ethnic Affairs (1981) 54 FLR 334 , 342-43 per Bowen CJ and Sullivan v Department of Transport (1978) 20 ALR 323 , at 326 per Smithers J, and at 342 per Deane J. For instance, a failure of a tribunal to adjourn a matter could constitute a failure to allow a party to present his or her case even if an adjournment was not requested: see Deane J at 342 and Priddle v Fisher & Sons (1968) 1 WLR 1478. On the other hand, I accept that in circumstances where a party is represented there is some onus upon a party to be proactive: see, eg, Schiffer v Pattison [2001] FCA 1094 and Farley-Smith 45 AAR 474 at [54]. However, the solicitor representing the applicant in the circumstances of this case could hardly have been expected to know of the extent of the inadequacy of the translator when the applicant herself was not present to advise him. In an important respect, namely the inadequacy of the translation itself, the solicitor had no basis upon which to be proactive. As the respondent properly submitted, the Tribunal is not obliged to undertake the 'impossible task' of ensuring that a party takes best advantage of the opportunity to which he or she is entitled: see Sullivan 20 ALR 323 at 343 per Deane J. However, this is not the task suggested here — there is nothing impossible in the Tribunal giving the applicant a reasonable opportunity to present the evidence by the employment of an adequate interpreter. The reasonable opportunity is the opportunity to obtain an adequate interpreter, which did not occur here.


case_title: SZGWN v Minister for Immigration and Citizenship [2008] FCA 238


case_title: Tobasi v Minister for Immigration and Multicultural Affairs [2002] FCA 1050 ; (2002) 122 FCR 322


case_title: WACO v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 171 ; (2003) 131 FCR 511


case_text: my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("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"); Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.


case_text: determining whether what is claimed fits the description of a "manner of manufacture", one must confine one's attention to the face of the specification: Philips v Mirabella at 663-664; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 (Ramset) at [38] ; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260 ( CCOM v Jiejing ) at 291). The notion of a manner of manufacture does not incorporate considerations of novelty or inventiveness which are dealt with independently and comprehensively in s 18(1)(b), s 7, and the definitions of "prior art base" and "prior art information" in Sch 1: see Ramset at [30]-[34] (dealing with s 100 of the 1952 Act).


case_outcome: applied

case_text: effect of these provisions is that the Patent can be revoked under the Act only on a ground of invalidity that would have been available under the 1952 Act. In any case where a relevant ground of invalidity under the 1952 Act is narrower than the corresponding ground under the Act, the patentee has the benefit of the narrower ground and is not to be worse off than if the 1952 Act had continued to operate: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404 ; (1993) 44 FCR 239 at 250 ff per Lockhart J, with whom Northrop J agreed and with whom Burchett J agreed on this point; ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214 ( Lubrizol ) at [22] [24]; Aktiebolaget Hässle v Alphapharm Pty Ltd [2000] FCA 1303 ; (2000) 51 IPR 375 at [8] [10]. Professors Banwell and Davies In Minnesota v Beiersdorf at 292-295 and in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 ( Astra ) at [57] it was held in relation to s 100(1)(e) of the 1952 Act that publications are not to be taken into account unless their content was part of common general knowledge at the priority date. Accordingly, the issue is not whether it was obvious to conduct a literature search of a particular kind with a view to acquiring information, but whether the information that would have been obtained from the search had already entered the body of common general knowledge: Minnesota v Beiersdorf at 295; Astra at [45]. No question arises in this case regarding the results of a routine literature search. Alphapharm submits: 415. ... Professor Montgomery articulates a series of opinions regarding the efficacy of citalopram vs (+) citalopram on the basis of his interpretation of reports or articles, which in turn report the results of certain clinical studies (most of which were conducted by or on behalf of Lundbeck). 416. No person has given evidence regarding the conduct of those studies, the underlying data concerning the studies has not been provided and there has been no disclosure of primary documents that might reveal (for instance) the aims, objectives or methodology of those studies. The authors of the Journal Articles relied upon have not given evidence. As submitted above, Alphapharm was able to call the pooled studies seriously into question, on the basis of limited material. 417. The Journal Articles themselves constitute reports of selected information taken from and summarized as the results from clinical studies. Further, there is no evidence as to the existence of other unpublished studies the results of which may be unhelpful to the Lundbeck arguments. Professor Montgomery does not refer to the underlying data, but relies on the results as reported in the Articles. 418. The Journal Articles themselves are at times opaque as to the studies upon which their conclusions are based ... Further, not all of the studies upon which the Montgomery expert evidence is based were published. 419. Accordingly, the basis upon which Professor Montgomery has expressed his opinions is hearsay evidence which cannot be admitted as evidence of the truth of its contents. 420. Alphapharm submits that, in the absence of proof of that factual basis, the evidence of Professor Montgomery in this regard is inadmissible.


case_text: am aware of the observations made by the English Court of Appeal in relation to the High Court's judgment in Astra in Angiotech Pharmaceuticals v Conor [2007] EWCA Civ 5 ; [2007] RPC 20 at [39] [45] which were quoted by Kitchin J in Generics v Lundbeck at [73]. Those observations are of no relevance to my task. Astra also stands as authority for the following propositions: While the evidence that was before Kitchin J in Generics v Lundbeck was clearly different from that which was before me, I assume that the evidence of the course of experimentation that was followed at Lundbeck was similar. In any event, his Lordship's summary (at [154]) accords with my findings on the evidence in the present case: Assuming the skilled person decided to embark upon the task of trying to obtain the individual enantiomers there was no real dispute between the parties that he would initially choose to attempt to resolve the final molecules. Only if this failed might he then consider alternative methods such as using enantiomerically pure precursors. But here his anxiety would be that subsequent reaction steps might result in the production of an enantiomerically impure final product. As I shall explain, scientists at Lundbeck attempted to resolve citalopram by classical resolution techniques using diastereoisomers, by using new resolving agents, by attempting to resolve derivatives and by using techniques of asymmetric synthesis, all over the period 1980 to 1988. In addition, they attempted to resolve citalopram using analytical chiral HPLC from 1983 to 1987. None of these techniques were successful. The claimants accepted that citalopram is not easily resolved by making diastereoisomers. However, they submitted the skilled addressee would not regard failure in relation to this molecule as the end of road. I accept that this was so. But the work Lundbeck undertook illustrates that the road to which the claimants referred was long and uncertain. The Product Claims The word "routine" that has become a common feature in formulations of the obviousness test in Australia (see [180] above) is more comfortably applicable to discussions of methods than products. However, the "matter of routine" test can be applied to product claims. The question to be asked is whether it would have been a matter of routine for those skilled in the art to adopt the goal of obtaining the enantiomers of citalopram for use of one of them as a drug for the treatment of depression. In Astra , the High Court described (at [53]) the reformulation of the "Cripps question" by Graham J in Olin at 187-188. Their Honours stated that that approach should be accepted. Adapting that test to the circumstances of the present product claims, I would state the test as follows: Would the hypothetical addressee or team as at 14 June 1988, equipped with the Australian Citalopram Patent and possessed of the common general knowledge within the field at that time, adopt as a matter of routine the aim of obtaining the (+)-enantiomer of citalopram in the expectation that it might well produce a useful alternative to, or a better drug than, citalopram? While I think that the hypothetical addressee or team in 1988 would have recognised the possibility of an advantage in obtaining the enantiomers because of the possibility of the therapeutic benefits of the racemate being found to reside in one of them, I do not think that the goal of obtaining the enantiomers would have been adopted as a matter of routine, as is required for the Australian test of obviousness to be satisfied. The Joint Report Again, a convenient starting point is the Joint Report. Professors Banwell and Davies were asked: "What were the motivations (chemically and academically, but excluding regulatory) for obtaining the enantiomers of a known racemate?"


case_outcome: distinguished

case_text: submits that it is no more permissible to read in the word "pure" than it was to read the qualifier "drainage" into the claims in the patent specification in Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29 ( Atlantis ). The invention in that case was entitled in the complete specification "Drainage Cell" and was stated to relate to "the provision of adequate drainage by artificial means" and to have particular application in the area of landscape gardening". However, the claims simply described a rigid cell structure. A Full Court of this Court held that the claims were unambiguous and were simply in respect of the rigid structure without any limitation by reference to the purpose of "drainage". In my view, the facts in Atlantis are distinguishable. There was no question in Atlantis of whether the object was claimed an object in its own right. Quite apart from: the expert evidence that, where no purity is specified in relation to a compound, chemists read in a 95% purity criterion; and the references to "individual", "pure", separated" and "isolated" elsewhere in the Patent, I would have understood an unqualified reference to (+)-citalopram, whether in the open literature or in a patent, to refer to that compound when other than merely part of the unresolved racemate. Alphapharm draws attention to the fact that both Professors Banwell and Davies said that from the formula for the racemic mixture (citalopram) they could deduce the formulae for the (+)-enantiomer and the (-)-enantiomer. I do not think this fact to be persuasive as to how claim 1 is properly to be construed. Alphapharm draws attention to the Patent's title as it existed prior to amendment and to the terms of overseas Escitalopram Patents.


case_text: Beecham Group Ltd v Bristol Laboratories Ltd (1977) 1B IPR 665 ( Beecham) , the plaintiff alleged infringement of patents for a pharmaceutical compound by the importation, offering for sale and sale in the United Kingdom of the antibiotic, Hetacillin. The plaintiff held four patents relating to a new class of semi-synthetic penicillins and to methods for their manufacture. One such penicillin was Ampicillin, a valuable antibiotic. The clinical effectiveness of Hetacillin was due entirely to Ampicillin, of which it was an acetone derivative. In the presence of water, as and when administered as an antibiotic, Hetacillin would revert into Ampicillin by a reversible chemical reaction. The Lundbecks rely on a passage from the speech of Lord Diplock, the whole of the paragraph being as follows (p 710): I have already expressed my opinion that the pith and marrow doctrine is applicable to claims for new products as well as to new processes; and I agree with the Court of Appeal that the relationship of hetacillin to ampicillin provides a clear case for its application. It was argued that what is claimed in the patents as an essential feature of the class of products to which ampicillin belongs is the presence of an amino group in the alpha position, and that this feature is absent in hetacillin. This is literally true at the time of importation and sale but it ceases to be true as soon as hetacillin is put to use for the only purpose for which it is intended. The substitution for the postulated amino group of the variant incorporated in hetacillin is evanescent and reversible and for all practical purposes of use can be regarded as the equivalent of the amino group in ampicillin. In the apt phrase used by the Court of Appeal, it is the reproduction of the substance ampicillin, albeit temporarily masked. His Lordship was addressing a product claim. In the imported hetacillin, there was a substituent for the amino group in the alpha position, but the substitution of the variant was "evanescent and reversible" and could be regarded as the equivalent of the amino group in the alpha position in the patented drug ampicillin. The Lundbecks draw an analogy with the bromo-diol's performance of the function of the cyano-diol. Wootten J was of the view (at 532) that a proper and convenient way to test the matter was to ask whether the sale of monensin sodium in Australia by another person would be an infringement of the patent. After referring to Beecham , his Honour held (at 534) that "the mere conversion of monensic acid to monensin sodium with the retention of substantially the same molecular structure and the same therapeutic effects, and involving only the use of a simple and well understood process, would fall within the 'pith and marrow' doctrine".


case_text: refers to three authorities as being relevant to the construction of the expression "pharmaceutical substance per se ": Boehringer Ingelheim International GmbH v Commissioner of Patents [2001] FCA 647 ; (2001) 112 FCR 595 ( Boehringer ); Prejay Holdings Ltd v Commissioner of Patents [2003] FCAFC 77 ; (2003) 57 IPR 424 ( Prejay ); and Pharmacia Italia SpA v Mayne Pharma Pty Ltd (2006) 69 IPR 1 ( Pharmacia ). Boehringer is not entirely on point. The patent claims were for a container comprising an aerosol or spray composition for nasal administration. The composition comprised as its active ingredient a certain pharmaceutical substance. The primary Judge, Heerey J, held that s 70(2)(a) was not satisfied because the pharmaceutical substance itself ( per se ) was not disclosed in the complete specification and did not fall within the scope of a claim of the patent specification ( Boehringer Ingelheim International v Commissioner of Patents (2001) AIPC 91-670). His Honour examined the legislative history behind ss 70 79 and concluded that patents for new and inventive processes or new and inventive modes of treatment of old or known products are not the subject of s 70: it is only patents for new and inventive products that are. Accordingly, the expression per se showed that an extension of term is to be available only where the claim is for a pharmaceutical substance as such, not a substance forming part of a method or process. The Full Court in Boehringer agreed (at [37]). Their Honours noted (at [39]) that the Second Reading Speech relating to the Intellectual Property Laws Amendment Bill 1997 (Cth), which inserted the relevant sections into the Act, spoke of "development of a new drug" and of the research and testing required before a "product" could enter the market. Their Honours also noted (at [40]) that the Explanatory Memorandum relating to that Bill spoke of the expression "pharmaceutical substance per se " as being usually restricted to "new and inventive substances". They considered that the expression "fall within the scope of the claim or claims of that specification" in s 70(2)(a) means "[b]e included amongst the things claimed " (at [42]). The decision in Boehringer does not govern the present case because claims 1 to 5 are indisputably product claims, and the pharmaceutical substance per se in question is indisputably the (+)-enantiomer of citalopram. In my view, Lundbeck seeks to draw more from the expression " per se " than was necessary in Boehringer . In Boehringer , the Court was concerned only to distinguish between a pharmaceutical substance that is the subject of a product claim (which they held to be within s 70(2)(a)) and a substance that forms part of a method or process claim (which they held not to be within s 70(2)(a)). The Court was not concerned, as I am, with a competition between two arguable "first regulatory approval dates" and with the question whether the substance the subject of a product claim in a later patent was contained in goods previously included in the ARTG. In Prejay a Full Court of this Court followed Boehringer . All of the claims were method claims, not product claims. The Commissioner's delegate refused an application for an extension. The Full Court agreed with the delegate that a substance that is mentioned in the context of a method claim does not meet the requirement of s 70(2)(a) that the substance per se fall within the scope of a claim (at [23] [24] per Wilcox and Cooper JJ, [28] per Allsop J). In Pharmacia , Weinberg J accepted the distinction drawn in Boehringer , but held (at [99]) that claim 1 of the patent before him did state "a claim to a new and inventive substance, and not to a novel process or method". Weinberg J was also not concerned with rival first regulatory approval dates or with the associated questions that are before me.