case_text: The applicants also sought general damages on an alternative basis. As I stated in Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589 (" New Cover "), in a case of design infringement, general damages may be awarded on the basis of the diminution of the value of the Review Design as a chose in action. The manner in which such damages are to be assessed is discussed in New Cover and applies in this case as well. As in New Cover , there is no satisfactory evidence as to the sales history of the Review Design, but there is some evidence as to the value to Review of its designs and the image they created. Adopting the approach as outlined in New Cover , if it had been necessary to do so, I would have assessed the effect of infringement at the time it occurred (and had it been made out) on the potential market for the Review Dress at $3,500. 70 In the circumstances of this case, had the claim for infringement been made out, a further question would have arisen as to whether Redberry could successfully invoke s 75(2)(b) of the Designs Act. 71 Kun Ming Liu, Redberry's managing director, secretary and shareholder, gave evidence that Redberry sourced its garments from China, where other persons manufactured them, and imported them into Australia for wholesale sale. Mr Liu's evidence was that Redberry, through its buyer, bought ready-made garments or commissioned garments after having seen the manufacturer's sample. Mr Liu denied that Redberry arranged for the manufacture of any particular garment. He was unable to say, however, whether the Redberry garments in question in this case had been bought ready-made or commissioned after the buyer was given a sample. 72 Mr Liu stated that, at the time of trial, Redberry employed a buyer named Sui Qiang Ke to select garments from suppliers and manufacturers in Guangzhou, but that Mr Ke had not bought the Redberry garment. Mr Liu stated that, between February 2006 and February 2007, Redberry had employed another person based in China to assist Mr Ke, by the name of Qi Hong Wang. Mr Liu's evidence was that Ms Wang had not worked for Redberry since that time and he had been unable to contact her. By implication, it was Ms Wang who had been the buyer for the Redberry garments. 73 There was no evidence, documentary or otherwise, identifying the manufacturer in China of the Redberry garments. Mr Liu sought to explain what might be seen as an evidentiary deficiency by reference to the failure to find Ms Wang. Further, Mr Liu's evidence was that Redberry did not keep records beyond five years (a period corresponding with taxation law provisions). This did not, however, explain the lack of records that would have identified the manufacturer of the Redberry garments since the documents in question would presumably have related to a period less than five years ago. I accept that the deficiencies in the documentary record produced to the Court were thus not adequately explained. These deficiencies weighed against accepting Mr Liu's evidence. 74 On balance, however, whilst there were some unexplained deficiencies and inconsistencies in Mr Liu's evidence, I would ultimately accept his evidence as essentially truthful. The applicants failed to persuade me that I should not do so. As I have said, Mr Liu was (amongst other things) Redberry's managing director and was knowledgeable about the generality of his company's business. Difficulties with his evidence arose from the fact that he had virtually no facility in English language. I formed the impression that, overall, he gave his evidence truthfully even if this reflected his distinctive and perhaps culturally-conditioned understanding of what had occurred and what was required in answering the questions addressed to him. I accept that Redberry did not employ its employees to make the garments in question. Mr Liu's evidence left open the possibility, however, that Redberry commissioned another person to make the garments to a sample that Redberry's buyer had been shown. Accordingly, had the buyer's direction to make the garments and/or the making of the garments taken place in Australia , then Redberry might properly have been regarded as having made the garments in contravention of s 71(1)(a) of the Designs Act. In this event, Redberry would have been liable for a primary infringement, as opposed to a secondary infringement and Redberry would have been unable to rely on s 75(2)(b) of the Designs Act. I discuss below the significance of the fact that, on Mr Liu's evidence, the buyer commissioned the making of the garments in China , where the garments were manufactured. 83 The applicants sought additional damages under s 75(3) of the Designs Act. I would not regard such additional damages as having been warranted, even if the infringement claim were made out. I refer to the general principles concerning additional damages as outlined in New Cover at [53]. 84 If Redberry infringed, its conduct in importing and selling the Redberry garments in July 2006 was in ignorance of Review 2's design rights and at a time when the existence of such rights had only briefly been a matter of public record. Redberry's infringing conduct (if this is what it was) could not on any view be considered flagrant: see also [79] above. Redberry apparently ceased the conduct of which the applicants complain when it became aware of their claim and, in any case, before the issue of proceedings. The amount of profit to Redberry was modest less than $2000. 85 In substance, the applicants' case on additional damages rested on allegations as to the "the closeness of copying" and that it was "the apparent business practice of Redberry and/or related entities to engage in copying the garment designs of other designers". Ultimately, notwithstanding the submissions of the applicants' counsel to the contrary, I would regard the evidence designed to support these allegations as irrelevant and, therefore, inadmissible. Put another way, the evidence that the applicants sought to have admitted under s 97 of the Evidence Act 1995 (Cth) is not so admissible because it would not have the significant probative value that the provision requires. Two of the applicants' other garments were the subject of specific cross-examination. PS 10 and PS 13 and PS 11 and PS 14 (being two sets of identical Review and Redberry garments) were put to Mr Liu in cross-examination and he conceded, as indeed he had to do, that they were very much the same. Indeed, they were plainly identical or virtually identical. At most, however, this evidence, if admissible, established that, on at least two occasions, Redberry had imported and sold by wholesale garments that were copies of Review garments. (Other labels were also canvassed in cross-examination, but nothing additional need be said about this.) In the designs context, copying per se is not unlawful, however, and does not establish a design infringement.


case_outcome: cited

case_title: Jones v Dunkel (1959) 101 CLR 298

case_text: Counsel for the applicants argued that, when Redberry called Mr Liu, it called the wrong witness, and that it should have called the buyer, Mr Ke. In relation to the absence of Mr Ke, he relied on the rule in Jones v Dunkel (1959) 101 CLR 298 (" Jones v Dunkel "). The applicants' counsel argued that the inference as to Redberry's status as a manufacturer might, in the absence of testimony from Mr Ke, be more comfortably drawn against Redberry. I reject this submission. The evidence was that Mr Ke had not bought the garments in question. This being so, it might fairly be thought unnecessary and even inappropriate to call him. In this circumstance, the absence of testimony from Mr Ke does not justify an application of the rule in Jones v Dunkel . 76 In this context too, counsel for the applicants relied on the similarity between the Redberry garment and the Review Design, as supportive of the fact that the manufacturer of the Redberry garments had copied the Review Design. This would not, however, provide any evidence that Redberry (as opposed to someone else) made the garments in question. Counsel for the applicants also sought to rely on evidence that the applicants and other persons had alleged on other occasions that Redberry had copied garments and thereby infringed copyright and trade mark. For the reasons explained below, however, I would not regard this evidence as admissible.


case_text: As noted above, however, if Redberry's buyer commissioned the making of the garments, the buyer did so in China, where the garments were manufactured. Section 21(1)(b) of the Acts Interpretation Act 1901 (Cth) provides that, in any Act, unless the contrary intention appears, "references to localities jurisdictions and other matters and things shall be construed as references to such localities jurisdictions and other matters and things in and of the Commonwealth". This provision reflects the common law presumption that statutes are read "as being prima facie restricted in their operation within territorial limits": see Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309 at 363 per O'Connor J, discussed in DC Pearce and RS Geddes, Statutory Interpretation in Australia (6 th ed, 2006) at [5.5]. The effect of s 21(1)(b) of the Acts Interpretation Act 1901 (Cth) is implicitly acknowledged in s 4 of the Designs Act. Section 21(1)(b) of this Act operates to confine the making or offering to make, with which s 71(1)(a) of the Designs Act is concerned, to a making or an offering to make in Australia (as s 4 of the Designs Act reflects): compare Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 (" Hella-Australia "), which Gummow J cited with approval in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (" Carnival Cruise ") at 509. In Hella-Australia , Street J refused an interlocutory injunction on the basis that an article did not infringe a registered design under s 30(b) of the Designs Act 1906 (Cth) unless the design had been applied to the article in Australia. Following Hella-Australia , Parliament amended s 30, with the result that the importation and sale of articles to which the design had been applied outside Australia were also infringements: see Designs Amendment Act 1967 (Cth) ("the 1967 Amendment") and Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 at 293. Although Hella-Australia concerned a provision in the former Act, nonetheless it and the authorities referred to in Carnival Cruise and Carnival Cruise itself, establish that, absent contrary statutory intent, infringements must occur within Australia. Accordingly, on the evidence, Redberry's liability could not arise under s 71(1)(a) but only under s 71(1)(b), (c), (d) or (e).


case_outcome: discussed

case_title: Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86


case_title: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495


case_title: Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287


case_text: Court might be aided in answering that question by evidence given by experts. Plainly enough, evidence can be given by experts of the meaning those skilled in the art relevant to the field of the invention would give to technical terms, phrases and concepts accepted within the relevant discipline. Where the specification addresses and the claims contain, technical terms, the Court must have evidence before it of the technical meaning so as to understand the meaning a person familiar with the state of the art at the priority date would attribute to those terms. A proper understanding of how a relevantly skilled reader would understand such terms enables the Court to construe the claims in the context of the specification and attribute meaning to the claims in isolating the essential integers. In undertaking that exercise, the Court will determine what weight ought to be attributed to particular expert evidence. The construction of the patent is a matter entirely for the Court aided by evidence of the understanding of the skilled reader. The proper construction of the patent is not determined by findings preferring one expert's view of the construction of the patent, over another. The patent will be construed according to the ordinary meaning to be attributed to the language of the document informed by the Court's understanding of technical terms through evidence reflecting the understanding of a person skilled in the relevant art (as to these principles generally, see Sachtler GMBH & Co. v R E Miller [2005] FCA 788 ; (2005) 65 IPR 605 per Bennett J and particularly those authorities assembled at [20], [21] and [22]). Uniline called evidence from an expert, Dr Duncan Gilmore. Dr Gilmore holds the degrees of Bachelor of Engineering, Master of Engineering Science and a Doctor of Philosophy. Dr Gilmore is a Fellow of the Institution of Engineers Australia and the Society of Automotive Engineers Australasia and a member of other professional bodies in the engineering field. Dr Gilmore has undertaken design work in relation to "hand winders" for a participant in the blinds industry and has undertaken work for Uniline. Dr Gilmore has provided a number of affidavits with reports annexed. Dr Gilmore's evidence provides an analysis and explanation of the spring clutch assembly described in the patent in suit. Dr Gilmore describes the spring, the assembly of the components, the general utility of the assembly and the functional operation of the clutch. Dr Gilmore considers in detail claim 13 of the patent in suit and at page 12 of his report dated 11 February 2008, Dr Gilmore sets out his preferred interpretation of claim 13. Dr Gilmore also expresses views about the features of assembly of Uniline's spring clutch, its functionality and whether the Uniline spring clutch embodies each of the integers falling within claim 13 of the patent in suit. Apart from the question of construction of the patent in suit and matters going to functionality of each assembly, Dr Gilmore gives evidence as to the features of the spring clutch assembly described in US Patent 643 and expresses an opinion as to whether the disclosures in that patent anticipate essential features of the patent in suit. The principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH & Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly & Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests. In that sense, the Court does not first construe the claims without reference to the specification and then determine whether ambiguity exists ( Sachtler ). The document is read in its entirety and clear meaning is to be given to the clear words of a claim. Although the Court seeks to construe the language of the claims taking account of the skilled reader's (e.g. a person skilled in the relevant art) practical and commonsense understanding of terms and particular language, clear language ought to be given its natural and apparent meaning and not read down as though the evidence of the skilled reader imported a qualification upon a claim inconsistent with that meaning. No doubt evidence of particular applied terms of art in any given field or discipline may make the construction of the language of a claim using those terms a difficult question of balance between the natural expression of the language of the claims and the conditioning influence of terms of art. Adopting a purposive approach to construction of the claims does not mean that clear limitations in the scope of the monopoly contained in the language of the claims can be avoided or the reach of the monopoly extended beyond the clear limits of the language selected. A purposive approach to construction as opposed to a purely literal one will raise the question of whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with the descriptive words or phrases used in a claim was intended to be an essential requirement of the invention. If so, as a matter of construction, a variant would fall outside the monopoly claimed even though it could have no material affect on the way the invention works. That question does not arise where the variant would in fact have a material affect upon the way the invention works ( Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 ; Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd (2004) 64 IPR 444). The construction of the language of a claim, adopted by the Court, ultimately determines infringement. The question is whether the alleged infringement is comprehended by the clear language of the claim ( Sachtler applying Catnic and PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41). Construction of the claims


case_title: Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2006) 224 ALR 168 ; (2006) 67 IPR 230

case_text: principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH & Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly & Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests. The question to be determined is whether US Patent 643 discloses to a skilled addressee with common general knowledge of the relevant art, each of the integers demanded by the claims defining the monopoly ( Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (supra) at [128] to [152]) and in that sense, the test of anticipation is the reverse infringement test. Would use of a spring clutch in accordance with the disclosures in US Patent 643 infringe claim 13? The skilled addressee must be able to read and understand the document as disclosing all of the integers of the monopoly in the combination without the exercise of "inventive ingenuity and the taking of an inventive step" ( Nicaro Holdings Pty Ltd & Ors v Martin Engineering Co. & Anor (1989) 91 ALR 513 , per Gummow J at 531 and 532) and without deducing an integer as part of a combination claim, by taking an obvious and non-inventive step to reach the combination. The disclosure in the document must be clear in the sense that the language of the document must provide unmistakable instruction to the addressee as to how the combination claimed is used, although the language of the disclosure need not be that of the claim. An anticipation of a claim is not determined merely by a textual comparison of the disclosure and the claim. The language of the disclosure might well be different to the language of the claim but the disclosure must teach the skilled addressee the invention (the combination of integers) and its use ( Pfizer (supra) at [311] to [324]; Evans Medical Ltd Patent [1998] RPC 517 at 576; Nicaro Holdings (supra))


case_text: principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH & Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly & Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests.


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


case_title: Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341


case_title: Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46


case_text: principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH & Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly & Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests. The question to be determined is whether US Patent 643 discloses to a skilled addressee with common general knowledge of the relevant art, each of the integers demanded by the claims defining the monopoly ( Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (supra) at [128] to [152]) and in that sense, the test of anticipation is the reverse infringement test. Would use of a spring clutch in accordance with the disclosures in US Patent 643 infringe claim 13? The skilled addressee must be able to read and understand the document as disclosing all of the integers of the monopoly in the combination without the exercise of "inventive ingenuity and the taking of an inventive step" ( Nicaro Holdings Pty Ltd & Ors v Martin Engineering Co. & Anor (1989) 91 ALR 513 , per Gummow J at 531 and 532) and without deducing an integer as part of a combination claim, by taking an obvious and non-inventive step to reach the combination. The disclosure in the document must be clear in the sense that the language of the document must provide unmistakable instruction to the addressee as to how the combination claimed is used, although the language of the disclosure need not be that of the claim. An anticipation of a claim is not determined merely by a textual comparison of the disclosure and the claim. The language of the disclosure might well be different to the language of the claim but the disclosure must teach the skilled addressee the invention (the combination of integers) and its use ( Pfizer (supra) at [311] to [324]; Evans Medical Ltd Patent [1998] RPC 517 at 576; Nicaro Holdings (supra)) The final ground of revocation involves a contention that SBriggs obtained the patent by fraud, false suggestion or misrepresentation ([11], s 138(3)(d) of the Patents Act ) and that the amendment to the patent ([12], [17], [18], [56] and [57]; s 138(3)(e) of the Patents Act ) was also obtained by fraud, false suggestion or misrepresentation. The question is whether the conduct of SBriggs said to bear the character required by the section, materially contributed to the Commissioner's decision to grant the patent or amend the claims. It is sufficient if the conduct is a material inducing factor which led to either of those outcomes ( Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197 ; Pfizer (supra); JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68). Sections 138(3)(d) and 138 (3)(e) do not require proof of a deliberate intention on the part of the applicant for the patent (or amendment) to deceive the Commissioner ( Pfizer ). If the representation is based upon a belief, it is relevant to consider whether the belief is false or not held reasonably ( NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542).


case_title: Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576


case_text: determining the boundaries of a claim, the specification must be read as a whole. It describes the patentee's best known method. If the language of a claim is clear and unambiguous, it is not to be rendered ambiguous, obfuscated or qualified by statements extracted from the specification as if those statements form part of the language of the claim defining the monopoly ( Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331). Although the language of the claim defines the monopoly, the claim marks out the boundary of a particular solution to a problem not solved by the prior art and thus has a context. Reference should be made to the specification to understand that context, to explain the background to the claims and to ascertain the meaning of technical terms ( Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253). Although the clear language of a claim should not be diluted, qualified or obfuscated by reference to the specification, unclear language used in a claim might usefully be made clear by reference to words used in the specification, in the relevant context ( Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1). The specification will, among other things, describe aspects of the prior art, unresolved problems in the prior art, the object the invention seeks to achieve and preferred embodiments of the invention and will recite a claim or claims staking out the patentee's exclusive ground. The Court reads that document in the logical sequence of its contentions and seeks to construe the claims, according to the words chosen in the claims, taking account of those matters, recognising that an identified embodiment or a preferred embodiment does not limit the natural language of a claim yet, the patentee may by clear language choose to limit the scope of the monopoly.


case_title: Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9 ; (1980) 144 CLR 253

case_text: determining the boundaries of a claim, the specification must be read as a whole. It describes the patentee's best known method. If the language of a claim is clear and unambiguous, it is not to be rendered ambiguous, obfuscated or qualified by statements extracted from the specification as if those statements form part of the language of the claim defining the monopoly ( Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331). Although the language of the claim defines the monopoly, the claim marks out the boundary of a particular solution to a problem not solved by the prior art and thus has a context. Reference should be made to the specification to understand that context, to explain the background to the claims and to ascertain the meaning of technical terms ( Minnesota Mining and Manufacturing Co. v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253). Although the clear language of a claim should not be diluted, qualified or obfuscated by reference to the specification, unclear language used in a claim might usefully be made clear by reference to words used in the specification, in the relevant context ( Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1). The specification will, among other things, describe aspects of the prior art, unresolved problems in the prior art, the object the invention seeks to achieve and preferred embodiments of the invention and will recite a claim or claims staking out the patentee's exclusive ground. The Court reads that document in the logical sequence of its contentions and seeks to construe the claims, according to the words chosen in the claims, taking account of those matters, recognising that an identified embodiment or a preferred embodiment does not limit the natural language of a claim yet, the patentee may by clear language choose to limit the scope of the monopoly. A question arises as to the significance of claim 14 of the patent as an aid to the construction of claims 1 to 13. Claim 14 claims the spring clutch of claim 13 where the spring "is of unitary construction". Claim 14 was introduced into the patent by amendment by leave granted by IP Australia on 1 November 2006 consequent upon an application made by the patentee on 24 October 2006. Amendments to claim 13 were made at the same time (see [17] and [18] of these reasons). Mr Hunter gave evidence that claim 14 does not add anything to the scope of claims 1 to 13 as those claims comprehend a helical spring of unitary construction with reverse winding and a plurality of helical springs of alternate winding which operate in the same way as a spring clutch incorporating a spring of unitary construction with reverse winding. In that sense, it is not said by Mr Hunter or SBriggs that claim 14 aids in the construction of claims 1 to 13 on the footing that claim 14 prescribes a monopoly directed to the integers of claim 13 limited to a unitary spring and thus claim 13 must address something other than a spring clutch incorporating a unitary spring. It is not said that, by inference drawn from claim 14, claims 1 to 13 are directed to multiple adjacent separate springs of alternate winding. SBriggs says claims 1 to 13 bring within the monopoly a helically reverse wound unitary spring and a plurality of springs that cause the spring clutch of Exhibit 1 to operate in the same way as a spring clutch incorporating a reverse wound unitary spring. As Mr Hunter points out, it is then difficult to see exactly what claim 14 adds to the scope of claims 1 to 13, on that view of those claims. Mr Hunter is correct in this respect. The language of claim 13 requires as an essential integer of the monopoly, the presence of a single reverse wound unitary spring. The introduction into the patent of claim 14 (in its current amended terms) with the result that selective engagement of the tabs of the helical spring of claims 1 to 12 , was elevated into an amended claim 13 as part of a redefined control means (see claim 13(3)(a) and (b)), does not say anything about the helical spring of claims 1 to 12. In order to construe the language of claims 1 to 13 post-amendment in a way which extends the integers of those claims to multiple separate springs of alternate winding, further amendments would have been necessary to claims 1 to 13 to adopt clear language that brought a plurality of springs within the boundaries of the monopoly. That result does not arise simply by inference from an amendment to claim 14 (and related amendments to claim 13). The express reciting in claim 14 of a spring of unitary construction adds nothing to claims which address a single unitary spring of reverse winding. Having regard to the construction adopted in relation to claims 1 to 13, it follows that the threats of infringement proceedings made by SBriggs by the letter from its solicitors to Uniline dated 4 April 2007 and the further letter dated 16 July 2007 from those solicitors to the patent attorneys for Uniline are unjustifiable as no infringement is made out. The Amended Cross-Claim for infringement of the patent in suit fails. Issues going to validity of the patent assuming the "counter-factual" (construction) hypothesis General approach Claim 13 of the patent in suit demands the presence of a single unitary reverse wound spring engaging a longitudinal slot and key device. Plainly, that invention is not anticipated by US Patent 643. If claim 13 extends to the inclusion of a plurality of multiple springs of alternate winding with tabs engaged by the control device of claim 13, is that invention disclosed by US Patent 643? Each expert has sought to answer that question by applying a different method of analysis. Mr Hunter isolated the essential features of claim 13 (and other claims upon which it depends) and compared those features with the invention disclosed by US Patent 643, that is, the novel elements claimed for the invention (Table A, para 38, Hunter affidavit, 6 March 2008). Mr Hunter could not see all the integers of claim 13 in the integers of the invention of US Patent 643 (claims 3, 4, 5, 6, 7, 9, 12, 13 (as to a helical spring for the purposes of claims 3 7, 9 and 12; and as to the feature of a single longitudinal opening defined by edges selectively engaging one or more of the tabs of the spring) and 14). Thus, no anticipation arises in his view. Mr Hunter separately considered the essential features with the prior art disclosures identified in US Patent 643 (Table B, para 38, Hunter affidavit, 6 March 2008). Mr Hunter could not see all of the integers of claim 13 in the prior art (claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, claim 13 (because the prior art does not disclose alternate wound springs, but otherwise all essential elements of claim 13 disclosed) and 14). Mr Hunter did not accept as correct, the methodological approach adopted by Dr Gilmore to determining anticipation by looking to the prior art disclosures of US Patent 643 and the disclosures in that part of US Patent 643 which identify features of novelty in the invention (and ultimately the integers of the claims of that patent) so as to put the disclosures together to see and understand whether the combination of claim 13 of the patent in suit is disclosed in US Patent 643. SBriggs says that, unremarkably, US Patent 643 discusses the prior art and then distinguishes the invention from it. It does so, in part, by depicting embodiments of the invention in drawings 7 to 13 and distinguishing the invention from the prior art depicted in drawings 1 to 6. The specification describes the shortcomings of prior art clutches manifested in variations in frictional drag due to differential radial loads at bearing surfaces of prior art clutches (see [127] and [128] of these reasons). SBriggs says that the specification teaches away from the prior art and combinations evident in the prior art. It says Mr Hunter, as a skilled addressee, is led away from the prior art configuration of a single longitudinal slot to the particular features of US Patent 643 in which novelty is claimed as determined by the integers of those claims. Mr Hunter cannot see the combination of a plurality of springs of alternate winding engaging a non-complex single longitudinal slot and key device, in any of those claims. Mr Hunter separately compares the prior art of Figures 1 to 6 with the discussion of the prior art and concludes that the integers of claim 13 are not disclosed in the prior art. In particular, the prior art does not disclose springs of alternate winding. Moreover, US Patent 643, it is said, does not claim a clutch that includes a second shaft with a single longitudinal opening with edges of that opening that selectively engage one or more of the tabs, as claim 13 of the patent in suit requires. The method adopted by Mr Hunter might usefully lead the skilled addressee to an answer to the question of whether the integers of claim 13 are anticipated by US Patent 643. Mr Hunter has sought to find that answer by looking to the prior art disclosures. He has looked to the discussion of the invention, the assertions of novelty and the integers of the claims of US Patent 643 to see if he can find the integers of claim 13 revealed in those claims. If the answer to either inquiry conducted by Mr Hunter is yes, the method would usefully reveal anticipation. If the answer to either inquiry is no, the method may simply reflect an impermissibly restricted inquiry. In determining whether a document, in this case US Patent 643, discloses the integers of claim 13, it is legitimate to look to the whole of the document to isolate the presence or disclosure of elements of the combination of claim 13 in the prior art (and relevant drawings) and in the discussion of the advantages of the invention over the prior art, the integers of the claims recited in the patent and drawings embodying the invention. The disclosures in the patent taken as a whole may reveal to a skilled addressee, the combination of the claim in the patent in suit. If, however, the combination is to be found in a combination of disclosures rather than a disclosed combination , the skilled addressee must see and reach the combination without calling in aid his own inventive skills or ingenuity in making the combination. Nor will the disclosures anticipate the combination of claim 13 (assuming the counter-factual) even though putting together the combination might be obvious to a person skilled in the relevant art (whether Dr Gilmore or Mr Hunter or any other skilled addressee). US Patent 643 does not disclose the combination of a plurality of springs of alternate winding engaging a non-complex single longitudinal slot and key configuration to facilitate smooth transition of rotational forces between the input and output shafts of a spring clutch. The patent addresses use of multiple springs (some of which may be reverse wound in one embodiment) to support the output load in a way that overcomes an asymmetrical application of supporting forces (that produces reaction forces at the bearing surface within the clutch) by configuring a clutch employing a multiplicity of springs so as to support the load with very nearly a pure couple of forces without producing reaction forces in the bearings as a direct result of the forces produced by the springs. The invention thus eliminates frictional drag and US Patent 643 is entirely directed to that objective. The discussion in US Patent 643 of firstly the disadvantages of prior art clutches and secondly, the manner of overcoming frictional drag by a pure couple of forces, does not disclose the combination of claim 13 of the patent in suit. To the extent that such a combination might be revealed to a person skilled in the art, such a person would need to apply an inventive step in doing so. Thus, applying the counter-factual, US Patent 643 does not anticipate the combination of claim 13 of the patent in suit. False suggestion


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


case_text: a purposive approach to construction of the claims does not mean that clear limitations in the scope of the monopoly contained in the language of the claims can be avoided or the reach of the monopoly extended beyond the clear limits of the language selected. A purposive approach to construction as opposed to a purely literal one will raise the question of whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with the descriptive words or phrases used in a claim was intended to be an essential requirement of the invention. If so, as a matter of construction, a variant would fall outside the monopoly claimed even though it could have no material affect on the way the invention works. That question does not arise where the variant would in fact have a material affect upon the way the invention works ( Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 ; Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd (2004) 64 IPR 444). The construction of the language of a claim, adopted by the Court, ultimately determines infringement. The question is whether the alleged infringement is comprehended by the clear language of the claim ( Sachtler applying Catnic and PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41). Construction of the claims The point of this discussion is that it may tell the Court something about construction of the claims. If the claims are confined to a single unitary reverse wound spring, might that integer be regarded as an inessential integer if there is no functional difference between a spring clutch that includes such a spring and a spring clutch that incorporates three separate springs in adjacent alignment reflecting alternate winding. Would persons with practical knowledge and experience in the subject matter addressed by the invention understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variation would fall outside the monopoly claimed even though it could have no material affect upon the working of the invention. Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd (supra) noted that such a question would not arise where the variation would in fact have a material affect upon the working of the invention. The Improver or protocol questions ( Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181) pose questions, the answers to which assist construction . That is to say, the questions test whether a reasonable person skilled in the art reading the language of the claims in context would think that the patentee was intending to confine the monopoly to the natural or primary meaning of the words selected or, alternatively, would such a person think that the patentee was intending to include within that meaning a variant of no material functional difference ( Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231). Mr Hunter and SBriggs concede that claims1, 2, 8, 10 and 11 of the patent in suit have been anticipated by reason of figure 12 in US Patent 643 (Table A, para 38, Hunter affidavit, 6 March 2008). Figure 12 shows two helical springs of reverse winding. At column 7, line 8 of US Patent 643, a reference is made to a complex arrangement of interleaved springs which will afford the advantages of the invention. An example is given of three springs which could be interleaved and used with a housing engaging three keys placed in a particular way. At line 13 of column 7, another way is described to bring the tabs of a spring close together. The specification says this: Yet another way to bring the spring tangs [another word which describes tabs of a spring] close together along the spring axis is to use two springs, one spring wound with a clockwise helix , and the other with a counterclockwise helix . FIG 12 depicts a possible spring configuration for such a spring. These springs could be used in place of springs 95 and 97 of the clutch of FIGS 10 and 11 to provide the benefit of our invention for loading in one direction. [emphasis added] The above reference suggests that two springs of reverse winding might be used in the depiction in the Figure 10 drawing. Figures 10 and 12 are Schedules 7 and 8 to these reasons. Claim 1 of US Patent 643 is in these terms: 1. A spring clutch for lowering and raising a window shade comprising: a shaft; at least first and second helically wound axially mounted springs having first and second ends for making frictional contact with the shaft; first engaging means corresponding to each of said at least first and second springs for selectively applying a tightening force to one of the said ends of each of said springs for inhibiting rotation thereof with respect to said shaft; second engaging means for selectively applying a loosening force to the other of the said ends of each of said springs for promoting rotation thereof with respect to said shaft; wherein each of said first engaging means is radially and symmetrically disposed about said shaft for substantially eliminating radial bearing forces.


case_title: Kirin-Amgen Inc. v Hoechst v Marion Roussel Ltd (2004) 64 IPR 444

case_text: a purposive approach to construction of the claims does not mean that clear limitations in the scope of the monopoly contained in the language of the claims can be avoided or the reach of the monopoly extended beyond the clear limits of the language selected. A purposive approach to construction as opposed to a purely literal one will raise the question of whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with the descriptive words or phrases used in a claim was intended to be an essential requirement of the invention. If so, as a matter of construction, a variant would fall outside the monopoly claimed even though it could have no material affect on the way the invention works. That question does not arise where the variant would in fact have a material affect upon the way the invention works ( Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 ; Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd (2004) 64 IPR 444). The construction of the language of a claim, adopted by the Court, ultimately determines infringement. The question is whether the alleged infringement is comprehended by the clear language of the claim ( Sachtler applying Catnic and PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41). Construction of the claims


case_title: PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41


case_text: point of this discussion is that it may tell the Court something about construction of the claims. If the claims are confined to a single unitary reverse wound spring, might that integer be regarded as an inessential integer if there is no functional difference between a spring clutch that includes such a spring and a spring clutch that incorporates three separate springs in adjacent alignment reflecting alternate winding. Would persons with practical knowledge and experience in the subject matter addressed by the invention understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variation would fall outside the monopoly claimed even though it could have no material affect upon the working of the invention. Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd (supra) noted that such a question would not arise where the variation would in fact have a material affect upon the working of the invention. The Improver or protocol questions ( Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181) pose questions, the answers to which assist construction . That is to say, the questions test whether a reasonable person skilled in the art reading the language of the claims in context would think that the patentee was intending to confine the monopoly to the natural or primary meaning of the words selected or, alternatively, would such a person think that the patentee was intending to include within that meaning a variant of no material functional difference ( Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231). Although it is true that the initial affidavit of Dr Gilmore made no reference to the points of differentiation, by reference to questions of misalignment of tabs, in the functional operation of a spring clutch incorporating three separate springs as compared with the functional operation of a spring clutch of claim 13 incorporating a single unitary reverse wound spring, the evidence of Mr Hunter and Dr Gilmore in its totality, as persons skilled in the relevant art, is such that it is simply not possible to conclude that a variation from the language of the claims of the patent in suit constituted by the use of three separate adjacent springs loaded onto shaft 1 in the manner of Exhibit 1, has no material affect upon the way the invention of claim 13 works, for the purposes of question 1 of the Improver questions. If two experts emblematic of persons skilled in the relevant art (at least for the purposes of these proceedings), cannot agree that a spring clutch incorporating three separate adjacent springs positioned on shaft 1 of a spring clutch in the manner of Exhibit 1, functions in a way which would reflect no material affect upon the evident functionality of a spring clutch incorporating a single unitary spring of reverse winding, the Court cannot be satisfied that the variation has no material affect upon functionality. The question is not to be resolved by simply accepting one person skilled in the art over another but by approaching construction taking account of the total evidence of those skilled in the art. The weight of the evidence having regard to Dr Gilmore's evidence is such that it cannot be said or found that no material affect by the use of the variant is established. That being so, Improver questions 2 and 3 do not arise. Even if I accept entirely the evidence of Mr Hunter and reject the evidence of Dr Gilmore on this aspect of the case (thus answering Improver question 1, yes) and assume or accept that the variant of adopting three adjacent separate springs of alternate winding was obvious at the date of publication of the patent in suit to a reader skilled in the relevant art (thus answering the second Improver question, yes), the answer to the third Improver question must necessarily be, no. Here, the patentee has selected language that defines a monopoly in terms of a single spring engaging a non-complex single longitudinal slot and key configuration of two shafts (coaxial with a first shaft) to achieve identified advantages of the invention. A single spring is essential to the claims. It is the integer which enables the spring clutch to discharge its clutching function. A skilled reader would understand from the language of the claims in the context of the specification that the patentee intended that strict compliance with the primary meaning of the language of the claims was an essential requirement of the invention. Moreover, Mr Hunter acknowledges that multiple springs can work in a spring clutch when they are all wound in the same direction. Having adopted the construction of the claims reflected in these reasons, that construction determines infringement. The Uniline spring clutch does not incorporate a single unitary spring of reverse winding and thus no infringement arises. The implications of claim 14


case_text: point of this discussion is that it may tell the Court something about construction of the claims. If the claims are confined to a single unitary reverse wound spring, might that integer be regarded as an inessential integer if there is no functional difference between a spring clutch that includes such a spring and a spring clutch that incorporates three separate springs in adjacent alignment reflecting alternate winding. Would persons with practical knowledge and experience in the subject matter addressed by the invention understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variation would fall outside the monopoly claimed even though it could have no material affect upon the working of the invention. Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd (supra) noted that such a question would not arise where the variation would in fact have a material affect upon the working of the invention. The Improver or protocol questions ( Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181) pose questions, the answers to which assist construction . That is to say, the questions test whether a reasonable person skilled in the art reading the language of the claims in context would think that the patentee was intending to confine the monopoly to the natural or primary meaning of the words selected or, alternatively, would such a person think that the patentee was intending to include within that meaning a variant of no material functional difference ( Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231).


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


case_title: Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20


case_title: Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178


case_title: PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18


case_text: says that if the claims of the patent, properly construed, include within the monopoly a spring clutch comprised of a plurality of springs with reverse windings and tabs, such claims are not fairly based upon disclosures in the body of the specification. Uniline says that the invention as claimed by the terms of the monopoly might well be narrower than the disclosures contained in the specification but the claims cannot travel beyond the disclosures in the body of the specification. Uniline asks, consistent with Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 , whether there has been a real and reasonably clear disclosure in the body of the specification of that which is claimed or, put another way, whether the claims travel beyond the disclosures in the specification ( Olin Corporation v Super Cartridge Co. Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236). I have construed the claims to require a single unitary reverse wound spring as an essential integer. Those claims so construed are consistent with the disclosures in the specification. If, however, an assumption is made that the proper construction of the claims brings within the scope of the monopoly a plurality of springs of alternate winding, do the claims travel beyond the specification? The specification contemplates an invention answering the problems of the prior art by providing for a bi-directional spring clutch that confers the advantages of a single spring engaging a non-complex slot and key engagement mechanism or control means. The specification plainly discloses the use of multiple springs sequentially engaged in prior art spring clutches by a complex configuration of openings and barriers as an aspect of a prior art bi-directional clutch. If the counter-factual hypothesis is adopted that the claims include use of a plurality of springs, that hypothesis would seem to follow necessarily from an acceptance of the proposition that the object of the invention, properly construed, is to avoid a plurality of springs in combination with a complex configuration of openings and barriers. Therefore, on that hypothesis of construction, a plurality of springs engaging a slot and key control means (that is, a non-complex control means) is sufficiently disclosed by the specification by reason of the description of the object of the invention and the claims are thus, upon the counter-factual, fairly based. However, neither the object nor the claims contemplate a plurality of springs as an integer of the claimed invention. If the object of the invention is construed to require the presence of the two identified advantages (within the invention and thus the monopoly), claims which, upon the counter-factual hypothesis, include a plurality of springs of alternate winding, travel beyond the disclosure. Inutility


case_title: Olin Corporation v Super Cartridge Co. Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236


case_text: question to be determined is whether US Patent 643 discloses to a skilled addressee with common general knowledge of the relevant art, each of the integers demanded by the claims defining the monopoly ( Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (supra) at [128] to [152]) and in that sense, the test of anticipation is the reverse infringement test. Would use of a spring clutch in accordance with the disclosures in US Patent 643 infringe claim 13? The skilled addressee must be able to read and understand the document as disclosing all of the integers of the monopoly in the combination without the exercise of "inventive ingenuity and the taking of an inventive step" ( Nicaro Holdings Pty Ltd & Ors v Martin Engineering Co. & Anor (1989) 91 ALR 513 , per Gummow J at 531 and 532) and without deducing an integer as part of a combination claim, by taking an obvious and non-inventive step to reach the combination. The disclosure in the document must be clear in the sense that the language of the document must provide unmistakable instruction to the addressee as to how the combination claimed is used, although the language of the disclosure need not be that of the claim. An anticipation of a claim is not determined merely by a textual comparison of the disclosure and the claim. The language of the disclosure might well be different to the language of the claim but the disclosure must teach the skilled addressee the invention (the combination of integers) and its use ( Pfizer (supra) at [311] to [324]; Evans Medical Ltd Patent [1998] RPC 517 at 576; Nicaro Holdings (supra))


case_title: Evans Medical Ltd Patent [1998] RPC 517


case_text: final ground of revocation involves a contention that SBriggs obtained the patent by fraud, false suggestion or misrepresentation ([11], s 138(3)(d) of the Patents Act ) and that the amendment to the patent ([12], [17], [18], [56] and [57]; s 138(3)(e) of the Patents Act ) was also obtained by fraud, false suggestion or misrepresentation. The question is whether the conduct of SBriggs said to bear the character required by the section, materially contributed to the Commissioner's decision to grant the patent or amend the claims. It is sufficient if the conduct is a material inducing factor which led to either of those outcomes ( Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197 ; Pfizer (supra); JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68). Sections 138(3)(d) and 138 (3)(e) do not require proof of a deliberate intention on the part of the applicant for the patent (or amendment) to deceive the Commissioner ( Pfizer ). If the representation is based upon a belief, it is relevant to consider whether the belief is false or not held reasonably ( NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542).


case_title: JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 ; (2005) 67 IPR 68)


case_title: NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542


case_text: to the second representation concerning the amendments, the statements in the documents dated 24 October 2006 concern the effect of the prior art. A statement made by an applicant in good faith to the Commissioner concerning the effect of the prior art is unlikely to provide a basis for concluding that such a statement of opinion is false, when that opinion is subsequently shown to be incorrect ( ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc. (2000) 106 FCR 214). A statement made expressing an opinion about the relationship or otherwise between disclosures in the prior art and changes to the scope of the monopoly defining the claims, so as to address differentiation of the invention from elements of the prior art, simply reflects a debate between the Commissioner and the applicant about the scope of the claims and the effect of proposed changes to the language of the claims judged against the prior art. Statements about those matters are simply, as in this case, argumentative statements going to matters of opinion about which minds might, in good faith, differ. There is no suggestion of bad faith on the part of SBriggs. The suggestion in this case is that SBriggs proposed an amendment which had the effect of impermissibly broadening the scope of claims 1 to 13 by reference to the express limitation contained in claim 14. Claim 14 is limited in its terms to a spring of unitary construction. Claims 1 to 13 are not said to bear an inclusive construction of multiple springs of alternate winding as a matter of inference from claim 14. They are said to bear that construction for the reasons earlier identified. The amendments proposed by SBriggs either narrow the scope of two claims to better differentiate the invention from the prior art or not. Whether that statement is true or correct is simply a matter of debate between the applicant and the Commissioner. As Mr Hunter says, claim 14 adds nothing to claims 1 to 13. No false statement or misrepresentation arises out of putting a view of the effect of the changes. Accordingly, declarations will be made that threats of patent infringement proceedings made by SBriggs on 4 April 2007 by its solicitors and a further letter by its solicitors dated 16 July 2007 are unjustifiable. SBriggs shall be restrained from further threats of patent infringement. The Amended Cross-Claim of SBriggs by which relief is sought for infringement of claim 13 of the patent in suit, is to be dismissed. The Amended Further Cross-Claim by Uniline by which revocation of the patent in suit is sought, which only arises if infringement is found, is to be dismissed. I certify that the preceding one hundred and forty-four (144) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate: Dated: 16 March 2009 Counsel for the Applicant: Mr Crowe SC and Mr Cooper Solicitor for the Applicant: DLA Phillips Fox Counsel for the Respondents: Mr Musgrave Solicitor for the Respondents: Mallesons Stephen Jaques Date of Hearing: 14, 15, 16 and 17 April 2008 Date of Judgment: 16 March 2009 SCHEDULE 1 SCHEDULE 2 SCHEDULE 3 SCHEDULE 4 SCHEDULE 5 SCHEDULE 6 SCHEDULE 7 SCHEDULE 8 SCHEDULE 9 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/222.html


case_text: The grounds in a notice of appeal from the Tribunal "would properly assume the resolution of the question of law in favour of the applicant": Australian Telecommunications Corporation v Lambroglou (1990) 12 AAR 515 at 524 per Ryan J. Such grounds should show "the links between the question of law, the circumstances of the particular case and the orders sought on the appeal": Birdseye v Australian Securities and Investments Commission [2003] FCAFC 232 ; (2003) 76 ALD 321 at [18] per Branson and Stone JJ (with whom Marshall J at [61] agreed).


case_title: Birdseye v Australian Securities and Investments Commission [2003] FCAFC 232 ; (2003) 76 ALD 321


case_title: Brennan v Comcare (1994) 50 FCR 555

case_text: Under s 24 of the 1988 Act, Comcare is liable to pay compensation to an employee where they suffer an injury that results in permanent impairment. Section 124 is a transitional provision setting out the compensation payable under the 1998 Act in respect of impairment occurring prior to its commencement. Section 124(3) provides that a person is not entitled to compensation under s 24 of the 1988 Act in respect of a permanent impairment where there was no entitlement to receive lump sum compensation under the legislation in force at the time the impairment occurred. Under the previous legislation relevant to the applicant, the Compensation (Commonwealth Government Employees) Act 1971 (Cth) (the 1971 Act), no lump sum compensation was payable for permanent loss arising from a psychiatric condition because such a condition was not among the various forms of "loss", such as loss of hearing or loss of an arm at or above the elbow, specified in s 39. It was thus accepted that the applicant's impairment, once it had become permanent, would be compensable by way of lump sum under the 1988 Act but not the 1971 Act. The time at which the applicant's impairment became permanent and the legislation in force at the time therefore determines whether the applicant is entitled to compensation: Brennan v Comcare (1994) 50 FCR 555 at 570. 3 An impairment is permanent if it is likely to continue indefinitely: 1988 Act, s 4. That state of affairs must have been reached before the commencement date of the 1988 Act for s 124(3) to apply: Brennan v Comcare at 570. In the present case, the degree of the applicant's impairment was not in issue. It would be a matter for primary assessment by Comcare in the event of the applicant succeeding on this appeal. 4 Comcare submitted to the Tribunal that the applicant's condition had become permanent before 1 December 1988 and had not deteriorated or become worse thereafter so as to provide a basis for a claim based on a new impairment. 5 The applicant is aged 52. From the age of 19 she worked in a clerical position with the Commonwealth Public Service. In 1981 she transferred to the Social Security branch office at Glenorchy working in clerical and counter duties. Later she was promoted to a position involving regular face to face contact with benefit recipients and applicants. From time to time some of these individuals became stressed and angry and would be abusive and threatening. Sometimes such individuals recognised the applicant when she was away from the office and would insult her and behave offensively.


case_outcome: referred to

case_title: Comcare v Levett (1995) 60 FCR 14

case_text: Counsel for the applicant referred to Comcare v Levett (1995) 60 FCR 14 at [18]-[19]. In that case the employee had suffered a compensable injury to his back before 1 December 1988 which resulted in impairment, but not a permanent impairment. After that date the impairment became permanent. The Full Court held that he was not excluded from receiving compensation by s 124(3). 44 Counsel for the applicant contended that, by a parity of reasoning, the same result would follow if the applicant's injury was not permanent before the relevant date, improved thereafter, but still later became worse and permanent. Counsel pointed to Dr Sale's opinion already noted that in his examination in 1990 the applicant was not incapacitated for work. Counsel said that it was "a startling non sequitur" that since the applicant was permanently impaired in 2007 she must have been permanently impaired on 1 December 1988 even though she was not impaired in 1990. This arose, counsel said, from confusion between the concepts of injury and impairment. Section 24(2)(b) of the 1988 Act requires, for the purpose of determining whether an impairment is permanent, regard to be had to the likelihood of an improvement. Therefore it is not possible to say with the benefit of hindsight that because the worker is now impaired she must have been always impaired. 45 However, as previously noted, the impairment must have been permanent, that is to say likely to continue indefinitely, and that state of affairs must have been reached before the commencement date of the 1988 Act, if the applicant is to be excluded from lump sum compensation under that Act.


case_text: On its face the notice of appeal does raise a question of law as required by s 44 of the Administrative Appeals Tribunal Act 1975 (Cth). Whether facts fully found fall within the provisions of a statute properly construed is usually a question of law: Hope v City of Bathurst [1980] HCA 16 ; (1980) 144 CLR 1 at 7. The formal requirement for a notice of appeal specified in O 53 r 3(2)(b) of the Federal Court Rules has been satisfied.


case_text: However, as noted by Gummow J in TNT Skypak International (Aust) Pty Ltd v Federal Commissioner of Taxation [1988] FCA 119 ; (1988) 82 ALR 175 at 178, in comparing the requirements of s 44 with the former provisions for appeals to the Taxation Board of Review: The existence of a question of law is now not merely a qualifying condition to ground the appeal, but also the subject matter of the appeal itself...


case_text: In its written submissions on penalty the CPSU submitted, for the first time, that as there were at the relevant time 38,418 CPSU members within the APS whose employment was affected by the DEWR memorandum, the Commonwealth committed 38,418 contraventions of the WR Act by issuing the memorandum. It submitted: '2. It is not unusual to use the singular term when referring to a composite number of penalties arising from a single act. Where multiple penalties are applied in respect of a single act which gives rise to a breach of the WRA, it is common for the orders made by the Court, and the case law, to refer to the penalties imposed as a composite "penalty" . In such cases an order may be made for a single penalty, but the maximum available penalty is determined by the number of persons whose position was relevantly altered giving rise to individual breaches. 3. See for example Commonwealth Bank of Australia v Finance Sector Union of Australia at first instance and on appeal where a single penalty was imposed by Merkel J and apportioned between the breaches. The parties, the primary Judge, and Full Court referred consistently to this composite penalty as a single penalty. 4. Accordingly, the use of the singular word "penalty" may properly be taken to refer to a composite penalty arising from a number of breaches which arise from a single act. In the present case the [Further Amended Statement of Claim] permits such an approach.' 11 Nothing in the reasons for judgment in Commonwealth Bank of Australia v Finance Sector Union of Australia (2007) 157 FCR 329 at first instance or on appeal suggests that the issue of the nature of the claim in respect of penalty that the respondent was required to meet arose for determination in that case. Nor, at least before the Full Court, was any significance ascribed to the use of the word 'penalty' as opposed to 'penalties'. 12 In my view it would be unfair to the Commonwealth to allow the applicants now to depart from what, in my view, they claimed by the amended application; namely an order that the Commonwealth pay a single penalty in respect of the issuing of the DEWR Advice. I accept the submission of the Commonwealth that had it been aware that the applicants sought the imposition of a penalty in respect of each CPSU member within the APS it would have tested the applicants' evidence of the extent of CPSU membership. It may be that in this circumstance the Commonwealth would also have investigated more thoroughly the impact of the DEWR Advice on individual APS employees or different categories of APS employees within the various Departments and agencies. 13 The maximum penalty for a body corporate for a contravention of Part XA of the WR Act is 300 penalty units (s 298U(a)(i) of the WR Act). This translates to $33,000 (s 4AA(1) of the Crimes Act 1914 (Cth)). 14 In Commonwealth Bank of Australia v Finance Sector Union of Australia at [181] I observed: "The authorities accept that the matters to be taken into account in determining whether particular conduct under the Act calls for the imposition of a penalty, and assuming that it does, the amount of the penalty, include: (a) the circumstances in which the relevant conduct took place (including whether the conduct was undertaken in deliberate defiance or disregard of the Act); (b) whether the respondent has previously been found to have engaged in conduct in contravention of Pt XA of the Act; (c) where more than one contravention of Pt XA is involved, whether the various contraventions are properly seen as distinct or whether they arise out of the one course of conduct; (d) the consequences of the conduct found to be in contravention of Pt XA of the Act; (e) the need, in the circumstances, for the protection of industrial freedom of association; and (f) the need, in the circumstances, for deterrence. ( Construction, Forestry, Mining & Energy Union v Coal & Allied Operations Pty Ltd (No 2) (1999) 94 IR 231 at [8]; Australian Workers Union v Johnson Matthey (Aust) Ltd [2000] FCA 728 at [5] ; Employment Advocate v National Union of Workers (2000) 99 IR 376 at 377 at [5]; Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v DMG Industries Pty Ltd (2000) 102 IR 175 at [10]; Australian Nursing Federation v Alcheringa Hostel Inc [2004] FCA 375 ; (2004) 136 FCR 530 at [44] ; and Alfred v Walter Construction Group Ltd [2005] FCA 497 at [10] .)'


case_text: On 6 September 2007 I published reasons for judgment in this matter: CPSU, the Community and Public Sector Union v Commonwealth of Australia [2007] FCA 1397. I concluded that the circulation of certain memoranda of advice by the Department of Employment and Workplace Relation ('the DEWR Advice') resulted in contravention by the Commonwealth of s 298K(1) of the Workplace Relations Act 1996 (Cth) ('the WR Act'). I also concluded that by denying the second and fifth applicants approval to access leave on 15 November 2005 because they proposed to attend the Day of Protest organised to demonstrate opposition to proposed amendments to the WR Act, the Commonwealth breached two industrial instruments, namely the Australian Customs Service Certified Agreement 2004-2007 ('the ACS Agreement') and the Stay Here and Grow DEST Certified Agreement 2002-2005 ('the DEST Agreement'). 2 The proceeding was stood over to a date to be fixed for the purpose of making orders giving effect to my reasons for judgment and orders as to the penalties, if any, appropriate to be imposed. The parties were directed to provide to my Associate, if possible, an agreed minute as to the orders to be made (other than as to penalties) and written submissions on the order or orders, if any, as to penalty which they respectively contended should be made. The parties were invited to indicate in their respective written submissions if they sought a further oral hearing. Neither party so indicated.


case_text: The question of whether a single act which has an impact on a number of employees in a manner proscribed by s 298K(1) of the WR Act results in one contravention or in a contravention in respect of each affected employee is answered by authority that I should follow; the number of contraventions equals the number of affected employees (see particularly Maritime Union of Australia v Geraldton Port Authority (No 2) (2000) 94 IR 404 at [41] and CPSU, the Community and Public Sector Union v Telstra Corporation Limited (2001) 108 IR 228 at [3]). 23 Orders are commonly made that a penalty imposed under the WR Act be paid to an industrial organisation where that organisation instituted the proceeding in question to protect the legitimate interests of its individual members (see CPSU v Telstra at [20]-[28]). In this case the Commonwealth, understandably in the circumstances, did not seek an order that any penalty imposed be paid into the Consolidated Revenue Fund. 24 It will be ordered that the penalty imposed be paid to the CPSU. I certify that the preceding twenty-four (24) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson. Associate: Dated: 30 October 2007 Counsel for the Applicant: Ms C Howell Solicitor for the Applicant: Slater & Gordon Counsel for the Respondent: Mr S D Robb QC and Mr R F Crow Solicitor for the Respondent: Australian Government Solicitor Date of Judgment: 30 October 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1634.html


case_text: The question of whether a single act which has an impact on a number of employees in a manner proscribed by s 298K(1) of the WR Act results in one contravention or in a contravention in respect of each affected employee is answered by authority that I should follow; the number of contraventions equals the number of affected employees (see particularly Maritime Union of Australia v Geraldton Port Authority (No 2) (2000) 94 IR 404 at [41] and CPSU, the Community and Public Sector Union v Telstra Corporation Limited (2001) 108 IR 228 at [3]). 14 In Commonwealth Bank of Australia v Finance Sector Union of Australia at [181] I observed: "The authorities accept that the matters to be taken into account in determining whether particular conduct under the Act calls for the imposition of a penalty, and assuming that it does, the amount of the penalty, include: (a) the circumstances in which the relevant conduct took place (including whether the conduct was undertaken in deliberate defiance or disregard of the Act); (b) whether the respondent has previously been found to have engaged in conduct in contravention of Pt XA of the Act; (c) where more than one contravention of Pt XA is involved, whether the various contraventions are properly seen as distinct or whether they arise out of the one course of conduct; (d) the consequences of the conduct found to be in contravention of Pt XA of the Act; (e) the need, in the circumstances, for the protection of industrial freedom of association; and (f) the need, in the circumstances, for deterrence. ( Construction, Forestry, Mining & Energy Union v Coal & Allied Operations Pty Ltd (No 2) (1999) 94 IR 231 at [8]; Australian Workers Union v Johnson Matthey (Aust) Ltd [2000] FCA 728 at [5] ; Employment Advocate v National Union of Workers (2000) 99 IR 376 at 377 at [5]; Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v DMG Industries Pty Ltd (2000) 102 IR 175 at [10]; Australian Nursing Federation v Alcheringa Hostel Inc [2004] FCA 375 ; (2004) 136 FCR 530 at [44] ; and Alfred v Walter Construction Group Ltd [2005] FCA 497 at [10] .)'


case_text: Allstate Life Insurance Co and Ors v Australia and New Zealand Banking Group Limited (No 13) [1995] FCA 1459 , where the respondents had been successful in meeting appeals dealing with a discrete question and the Court had ordered that the appellants pay the respondents' costs of the appeals, Lockhart, Lindgren and Tamberlin JJ observed: [4] The proceeding has been set down for hearing commencing on 18 March 1996 and unless settled may subsist for a substantial time. The litigation is complex. It is unlikely that final judgment will be given until late 1996 or even later. The successful parties to the appeals before this Court will therefore, in the ordinary course of events, not recover their costs for a long time. [5] It would be wrong if the successful parties do not enjoy the fruits of their order for costs for such a long time. The parties entitled to the benefit of the order for costs which this Court has made in appeals from interlocutory orders should not be deprived of that benefit until the case has been finally disposed of. In my view similar principles apply in this case. The respondents, who were successful in respect of issues arising in relation to Pt A para 7 of the application, have incurred costs to which they are now entitled. The applicant's claims in the substantive proceedings will not be heard until early 2010. There is no justification for leaving a determination of costs arising from the separate hearing of Pt A para 7 of the application until that time. 2. Basis of costs award The respondents submit that they should both be entitled to an award of costs on an indemnity basis. Mr Troy Thomas In relation to Mr Troy Thomas, the applicant submits that there was no basis for a claim that Mr Thomas had incurred separate costs and in any case that an award of costs should not be on an indemnity basis. However the respondents submit that:


case_title: Chaina v Alvaro Homes Pty Ltd [2008] NSWCA 353


case_text: is well settled that the purpose of an order for costs is to indemnify or compensate the person in whose favour it is made, not to punish the person against whom it is made: Latoudis v Casey [1990] HCA 59 ; (1990) 170 CLR 534 , De Alwis v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 77. Although the usual rule is that costs be awarded against the unsuccessful party on a party-party basis, the Court has a discretion to award costs on an indemnity basis in appropriate cases: Colgate-Palmolive v Cussons [1993] FCA 536 ; (1993) 46 FCR 225 at 231-234. Circumstances where the Court may consider awarding costs on an indemnity basis include: As I observed in the judgment, notwithstanding that Mr Troy Thomas was required to meet the proceedings, HFAT did not open a case against him, nor did HFAT produce evidence in support of its claims against him in terms of Pt A para 7. Indeed, the applicant conceded in its submissions that, given the state of the evidence, there was no sufficient basis for an order against Mr Troy Thomas in relation to this aspect of the application. I consider that the claims against Mr Troy Thomas in terms of Pt A para 7 were of the nature described in Colgate-Palmolive (1993) 46 FCR and InterTAN [2005] FCAFC 54 , namely allegations which ought never to have been made, and which had no chance of success. Taking this view, and particularly in light of the fact that Mr Troy Thomas was required to take steps to defend himself against the applicant's case including engaging legal representation, I consider that the case against Mr Troy Thomas exhibits special features justifying the Court exercising its discretion to order costs incurred by him to be paid on an indemnity basis. Mr Rhys Thomas


case_text: is well settled that the purpose of an order for costs is to indemnify or compensate the person in whose favour it is made, not to punish the person against whom it is made: Latoudis v Casey [1990] HCA 59 ; (1990) 170 CLR 534 , De Alwis v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 77. Although the usual rule is that costs be awarded against the unsuccessful party on a party-party basis, the Court has a discretion to award costs on an indemnity basis in appropriate cases: Colgate-Palmolive v Cussons [1993] FCA 536 ; (1993) 46 FCR 225 at 231-234. Circumstances where the Court may consider awarding costs on an indemnity basis include:


case_title: Degmam Pty Ltd (in liq) v Wright (No 2) [1983] 2 NSWLR 354


case_text: Horizontal Falls Adventure Tours Pty Ltd (ACN 108 455 410) v Thomas (No 2) [2009] FCA 1084 ("the judgment") I dismissed the claim of the applicant. The applicant sought relief pursuant to Pt A para 7 of the application filed 13 May 2007. After delivering judgment I ordered the parties to file and serve separate submissions as to costs incurred in respect of hearings leading to the judgment. Except as provided by any other Act, the award of costs is in the discretion of the Court: s 43(2) of the Federal Court of Australia Act 1976 (Cth). Two clear issues for determination arise from these submissions. They are: Whether costs should be reserved until the conclusion of the substantive proceedings; and In light of the concession of the applicant that costs should follow the event whether the respondents' costs should be awarded on a party-party basis or an indemnity basis. 1. Should costs be reserved? The applicant has submitted that costs should be reserved to the trial of the balance of the proceedings, when the Court will have a more extensive understanding of the parties' conduct, and will be able to form a more informed and balanced view of where costs should ultimately fall.


case_title: InterTAN Inc v DSE (Holdings) Pty Ltd [2005] FCAFC 54

case_text: I observed in the judgment, notwithstanding that Mr Troy Thomas was required to meet the proceedings, HFAT did not open a case against him, nor did HFAT produce evidence in support of its claims against him in terms of Pt A para 7. Indeed, the applicant conceded in its submissions that, given the state of the evidence, there was no sufficient basis for an order against Mr Troy Thomas in relation to this aspect of the application. I consider that the claims against Mr Troy Thomas in terms of Pt A para 7 were of the nature described in Colgate-Palmolive (1993) 46 FCR and InterTAN [2005] FCAFC 54 , namely allegations which ought never to have been made, and which had no chance of success. Taking this view, and particularly in light of the fact that Mr Troy Thomas was required to take steps to defend himself against the applicant's case including engaging legal representation, I consider that the case against Mr Troy Thomas exhibits special features justifying the Court exercising its discretion to order costs incurred by him to be paid on an indemnity basis. Mr Rhys Thomas


case_outcome: applied

case_title: Hart v Comcare [2005] FCAFC 16

case_text: This is the second occasion upon which this matter has been before the Court by way of an appeal under s 44 of the Administrative Appeals Tribunal Act 1975 (Cth) against a decision of the Administrative Appeals Tribunal dismissing a claim for compensation under the provisions of the Safety, Rehabilitation and Compensation Act 1988 (Cth) ("the SRC Act "). If the Tribunal in this matter had been able to deal with the applicant's claim on the basis of what was understood to be the true construction of s 4 of the SRC Act at the time of Mr Wiegand's first appeal to the Tribunal, he would have been awarded the compensation he claimed. As the law is now to be understood in light of the decision of the Full Court in Hart v Comcare [2005] FCAFC 16 , the Tribunal acknowledged it had no option but to dismiss the application to it given its findings. 2 At the hearing of this application before me I permitted Mr Wiegand, with the concurrence of Comcare, to raise a new question of law. That new question impugned two critical findings of the Tribunal on the basis that there was no evidence to support either of them. To anticipate what I have to say, I am not satisfied that the Tribunal erred in the way suggested. In these circumstances, as Mr Wiegand reluctantly conceded, I would be obliged to apply Hart and dismiss the application. 3 Mr Wiegand was employed in the Australian Taxation Office from May 1986 until January 1998. In May of 1998 he made his claim for compensation attaching a medical certificate from a psychiatrist which contained a diagnosis of major depression with the stated date of injury as approximately January 1998. The Tribunal indicated in its reasons that the causes of this condition were a large number of "situations and events" which occurred during Mr Wiegand's employment by the ATO: "Whilst his evidence suggests that some particular events had a more significant effect on him than others, I find that the combination of a large number of employment related situations and events (including those to which I have referred in paragraphs 13 and 15 above), or Mr Wiegand's perception of them, led to his developing major depression. I further find that he was suffering from this condition, or an aggravation of this condition, as at 2 January 1998, when he failed to return to work at the ATO, and that this condition was materially contributed to by his employment": Reasons par 48. I would note in passing that par 13 refers to eleven "situations and events" and par 15 to 21 "other situations and events". Only one of these was not employment related. 4 Later in its reasons the Tribunal observed (at par 51) that a large number of the asserted stressors took place prior to October 1995; that Dr Coyte's opinion Dr Coyte was Mr Wiegand's treating psychiatrist was that they had an increasing and compounding effect; and that the pre October 1995 stressors materially contributed to the subsequent development of Mr Wiegand's depression. 13 Accordingly in light of Hart , it confirmed Mr Wiegand's disentitlement to compensation. 14 In Hart , a claimant for compensation under the SRC Act complained of depression, anxiety and adjustment disorder caused by events associated with three applications for promotion in the Department of Defence. The Tribunal in that matter found that the adjustment disorder was first suffered during the events at the time of, and connected with, the procedures employed in relation to three promotions for which the appellant had applied unsuccessfully. It found that her condition was materially contributed to (a) by the failure to obtain promotions and (b) by the events at the time of, and connected with, the procedures employed in the process leading up to the decisions as to the promotions. While it recognised that any disease suffered as a result of the failure to obtain promotion was excluded by s 4(1) , disease resulting from the other concurrent cause was not. Accordingly it determined that compensation was payable to the applicant in that case. 15 An appeal to this Court resulted in the appeal being allowed and the decision of the Tribunal being set aside. The primary Judge found that the distinction drawn between the two causes was in the circumstances "spurious". On appeal to the Full Court, the appellant argued that the distinction was a valid one: where there were two operative causes, one being compensable and the other not, given the beneficial purpose of the legislation, the approach taken by the Tribunal in that case ought be adopted. For its part on the appeal Comcare raised by way of Notice of Contention that the findings made by the Tribunal were sufficient to meet the words of the proviso, such that there was no "injury" as defined. 16 The Full Court in a joint judgment agreed with that contention. It said at [20] that: "The task is one of statutory construction. This is a beneficial statute. Nevertheless, comformably with that, it is necessary to construe the words used by the Parliament. The so-called proviso in the definition does not exclude causes. It provides that if a disease of injury which would otherwise fall within the definition ('any such') is one which answers a description (relevantly here: 'suffered as a result of ... the failure to obtain a promotion'), the disease or injury is not an 'injury' as defined. The words are satisfied here. There was no debate that the factual findings made by the Tribunal amount to a conclusion that the disease or injury suffered was as a result of the failure to obtain the promotions. In order to succeed, the appellant must assert, as she does, that operative causes are not excluded and that given the provision's purpose some modifier should be read into the words to restrict the effect of the exclusion to circumstances where there were no other employment related causes. We do not agree. The operation of the provision had the evident purpose of removing from the field of compensation a disease, injury or aggravation which was a result of something. We see no evident purpose to remove from the field of compensation a disease, injury or aggravation which was only a result of that thing. The words do not readily admit that construction. The cases on multiple causes in tort or general law do not assist that enquiry. It will in any case be for the Tribunal to examine the facts, assess the reasons for the disease, injury or aggravation and come to conclusions in respect thereof. Whether in any given case, those findings allow a conclusion that the condition was suffered as a result of one or more of the matters referred to in the proviso, may be a factual question, or perhaps a legal question. Here, however, the findings were clear. The failure to obtain the promotions materially contributed to the condition and there is no issue but that the condition was suffered as a result of the failure to obtain the promotion." 17 Subject to what I have to say about Mr Wiegand's no evidence claim, in light of the findings made and the decision in Hart the present application must be dismissed. While I am obviously bound to apply Hart , I consider that it produces a harsh outcome in cases such as the present where a psychiatric condition is the product of the cumulative effect of quite some number of stressors experienced over a long period of time, which stressors happen to include a very small number that fall within the s 4(1) exclusion. 18 As I have indicated, Mr Wiegand accepts that unless he can impugn the findings made by the Tribunal in relation to the 1989 promotion and the 1997 compassionate leave, his application must be dismissed because of Hart's case. He challenges both of those findings on the basis that there was no evidence to support them.