case_text: More recently, in McGrath v Australian Naturalcare Products Pty Ltd [2008] FCAFC 2 , 165 FCR 230 the Full Court revisited the construction of s 51A(2). Emmett J, one of the members of the Full Court, there observed: [44] Under s 51A(1) of the Trade Practices Act , a representation is to be taken to be misleading if it is a representation with respect to any future matter and the maker of the representation does not have reasonable grounds for making the representation. Under s 51A(2) , the maker of the representation with respect to any future matter is to be deemed not to have had reasonable grounds for making the representation unless it adduces evidence to the contrary. However, if evidence is adduced by a representor to the effect that the representor had reasonable grounds for making the representation, the deeming provision will not operate. Where the representor adduces such evidence, it is then a matter for the Court to determine, on the balance of probabilities in the ordinary way, whether or not the representor had reasonable grounds for making the representation. This is understood to be the same approach that His Honour had previously expressed. In McGrath Allsop J also referred to the views previously expressed by Emmett J in Universal Sports and continued: [192] If evidence is adduced by the representor that is said to be evidence to the contrary, it will be for the Court to determine whether it is to the contrary in the sense just discussed. If it is, the deeming provision will cease to operate. That was the view of Emmett J, as understood by Keane JA [Downey v Carlson Hotels Asia Pacific Pty Ltd [2005] QCA 199]. That is my view. That was not, however, an expression of the view that the legal or persuasive onus has been changed by s 51A(2) , as some of the judgments in the "trend of established authority" referred to by Keane JA have stated. For instance, if evidence "to the contrary" is adduced by the representor, and if the representee itself adduces evidence tending to the lack of reasonable grounds, the matter might be equally poised. In such a case, there has been evidence "to the contrary" adduced by the representee, thereby eliminating the operation of the deeming provision, and, on the totality of the evidence, the proof of the reasonableness (or lack thereof) of the grounds is evenly balanced. Section 51A(2) does not, in my view, mean that in those circumstances the representor has not met an onus. The section does not cast the legal or persuasive onus, in such a case, on the representor. Its terms do not say so. The enactment history makes clear that the terms were deliberately chosen not to say so. Keane JA, despite his reference to the "trend of established [first instance] authority", does not say so. In my respectful view, to the extent that decisions such as IMB Group (1999) ATPR 41-704 ; Blacker [2000] FCA 681 ; Kaye [2004] FCA 1363 ; Lewarne [2007] FCA 1136 and Emerald Ocean [2006] ATPR 42-096 say, or may be taken as saying, that the legal or persuasive onus of proof is shifted to the representor by s 51A(2) , they are wrong. None examined the enactment history of s 51A. If it be thought, contrary to my reading of Keane JA's reasons, that his Honour's reference to Kaye [2004] FCA 1363 as "established authority" was a conclusion that s 51A(2) effected a reversal of the legal and persuasive onus of proof, I would be driven to the respectful view that his Honour was plainly wrong for the reasons that I have given. Perhaps not surprisingly, Emmett J also agreed with Allsop J as to the operation of s 51A(2): [2008] FCA 2 at [6] , 165 FCR at 233 4. The third member of the Full Court, Stone J, considered that the issues thrown up by s 51A(2) were best left to be resolved by a Full Court where there had been full argument and where the outcome depended on the view taken of the section: [2008] FCAFC 2 at [76] , 165 FCR at 247 8. 99 The construction given to s 51A(2) by Emmett and Allsop JJ in McGrath , it is respectfully considered, should now be applied. On the facts of the present case, however, it would not have mattered which approach was followed. 100 In the present proceeding, the bases upon which Mr Wieland believed the SLP 1100 was both a reliable machine and would prove to be a reliable machine were summarised in the following exchange with his cross-examiner: Can I go back to the penultimate proposition that I took you to that is that the Wieland SLP 1100 has proved to be a reliable crusher and you said to me that that was an accurate statement as at September 2002, correct?---Mm. What are the facts, matters and circumstances upon which you rely to allow you to express the view as at September 2002 that the Wieland SLP 1100 had, at that stage, proven to be a reliable crusher?---Well, we had one running in Australia and Peter had no issues with it. It was based on a design of a very well-known crusher, the Telsmith 25 by 40 which, you know, you can find everywhere around the world in use, so it was well-proven technology. So those two factors are the two that you've identified, one, that there was one machine that was already running in Australia?---Yes. Secondly, it was based, to use your words, on a design of another machine that had a proven track record of reliability, correct?---Correct. Now, aside from those two matters, are there any other things that spring to mind?---Yes, I mean we've got a good workshop in China with new machine tools and we make other types of equipment so they had a good level of experience for building high tolerance machines. 101 The grounds upon which Mr Wieland relied to assert that the SLP 1100 would be a reliable machine thus essentially reduced themselves to two, namely: (i) the fact that it was " heavily based " upon a design of another proven crusher, the " Telsmith 25/40 Single Toggle Jaw crusher " -- and, as Mr Wieland would have it, was not only based upon this design but was " over designed ". The SLP 1100 was said to be " an enhanced and improved design to the Telsmith " and a machine " reverse engineered " from the Telsmith; and (ii) the confidence that he had in his Chinese factory to manufacture the machine to a reliable standard. It is considered that the former ground may have gone some way towards making out the reasonable grounds for the representation that the SLP 1100 would prove to be a reliable machine; but the confidence placed upon the Chinese factory was misplaced. 105 Upon the basis of such evidence, it is considered that there were no reasonable grounds upon which any representation could be made that the SLP 1100 would be a reliable machine. Had the former approach as to the construction of s 51A(2) been applied such that there was an onus upon the Respondents to establish reasonable grounds for the making of the representation, that onus would not have been discharged. Upon the approach of Emmett and Allsop JJ in McGrath , and acting upon the basis that the Respondents did adduce " evidence to the contrary ", it is considered that there was no reasonable basis upon which Mr Wieland could have made the representations as to reliability that he in fact made. 106 It is also considered that there were no reasonable grounds for the other representation as to a future matter, namely the representation that " by installing the Second SLP 1100 Readymix Holdings and Readymix Indonesia would not have any further problems with the operation of a SLP 1100 machine ". 107 It is thus considered that there has also been a contravention of s 52 of the 1974 Act by the First Respondent, Wieland Equipment , in respect to those " future matters " relied upon by the Applicants.


case_outcome: followed

case_text: The quantum of such loss or damage to which the Applicants, or either of them, may be entitled pursuant to s 82 thus remains a matter to be assessed. For present purposes it is sufficient to note that that task will be " to select a measure of damages which conforms to the remedial purpose of the statute and to the justice and equity of the case ": Henville v Walker [2001] HCA 52 at [18] , [2001] HCA 52 ; 206 CLR 459 at 470 per Gleeson CJ. The measure of the relief available under s 82 is not to be confined by an analogy with damages in contract or tort or equitable remedies: Marks v GIO Australia Holdings Ltd [1998] HCA 69 ; (1998) 196 CLR 494. The task will be to ascertain the loss suffered by the contravening conduct and to assess the amount necessary to compensate for that loss: Henville v Walker [2001] HCA 52 at [66] , [2001] HCA 52 ; 206 CLR 459 at 482 per McHugh J. Although not confined by those analogies, they will usually be of " great assistance ": [2001] HCA 52 at [130] per McHugh J. But such analogies should not distract " attention from the primary task of construing the relevant provisions of the Act ": Murphy v Overton Investments Pty Ltd [2004] HCA 3 at [44] , [2004] HCA 3 ; 216 CLR 388 at 407 per Gleeson CJ, McHugh, Gummow, Kirby, Hayne, Callinan and Heydon JJ.


case_outcome: cited

case_title: Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 , 135 FCR 1

case_text: There has been some debate as to whether " knowledge of the essential elements of the contravention " requires knowledge that the conduct is misleading or deceptive: see Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 at [80] [88], 135 FCR 1 at 29 31 per Stone J; Cairnsmore Holdings Pty Ltd v Bearsden Holdings Pty Ltd [2007] FCA 1822 at [133] per Jacobson J.


case_title: Murphy v Overton Investments Pty Ltd [2004] HCA 3 , 216 CLR 388


case_text: Conduct is " likely to mislead or deceive " if there is a " real or not remote chance or possibility regardless of whether it is less or more than fifty per cent ": Global Sportsman Pty Ltd v Mirror Newspapers Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 87 per Bowen CJ, Lockhart and Fitzgerald JJ (applying Tillmanns Butcheries Pty Ltd v Australian Meat Industry Employees' Union (1979) 42 FLR 331 at 346 per Deane J; Sheen v Fields Pty Ltd (1984) 58 ALJR 93) ; Citrus Queensland Pty Ltd v Sunstate Orchards Pty Ltd (No 7) [2008] FCA 1364 at [97] . A corporation's state of mind is immaterial in making out a case of misleading or deceptive conduct. In Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 88 the Full Court relevantly observed: If a corporation is alleged to have contravened s 52(1) by making a statement of past or present fact, the corporation's state of mind is immaterial unless the statement involved the state of the corporation's mind. Whether or not s 52(1) is contravened does not depend upon the corporation's intention or its belief concerning the accuracy of such statement, but upon whether the statement in fact contains or conveys a meaning which is false; that is to say whether the statement contains or conveys a misrepresentation. Most commonly, such a statement will contain or convey a false meaning if what is stated concerning the past or present fact is not accurate; but a statement which is literally true may contain or convey a meaning which is false. See also: Construction, Forestry, Mining and Energy Union v Hadgkiss [2007] FCAFC 197 at [79] [83], [2007] FCAFC 197 ; 248 ALR 169 at 182 3 per Buchanan J. The liability created by s 52 , it must also be recalled, was not " designed for the benefit of persons who fail, in the circumstances of the case, to take reasonable care of their own interests ": Elders Trustee and Executor Co Ltd v E G Reeves Pty Ltd [1987] FCA 332 ; (1987) 78 ALR 193 at 241 per Gummow J. See also: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1981) 149 CLR 191 at 199 per Gibbs CJ ; Rawley Pty Ltd v Bell (No 2) [2007] FCA 583 at [212] , 61 ACSR 648 at 701 per Finn J; Webster v Havyn Pty Ltd [2004] NSWSC 227 at [73] per Palmer J.


case_title: Pereira v Director of Public Prosecutions [1988] HCA 57 , 82 ALR 217

case_text: Section 75B provides in relevant part as follows: 75B Interpretation (1) A reference in this Part to a person involved in a contravention of a provision of Part IV, IVA, IVB, V or VC, or of section 75AU, 75AYA or 95AZN, shall be read as a reference to a person who: (a) has aided, abetted, counselled or procured the contravention; ... (c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; ... Section 75B does not require that a person knew he was participating in a contravention of the Act; what is required is actual knowledge of the essential elements of the contravention and intentional participation in it: Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661 at 666 70 per Mason ACJ, Wilson, Deane and Dawson JJ; Rawley Pty Ltd v Bell (No 2) [2007] FCA 583 at [40] per Finn J; Genocanna Nominees Pty Ltd v Thirsty Point Pty Ltd [2006] FCA 1268 at [267] [280]. There may be some circumstances where knowledge may be inferred from the surrounding circumstances: cf Pereira v Director of Public Prosecutions [1988] HCA 57 at [11] , [1988] HCA 57 ; 82 ALR 217 at 219 20.


case_title: Perre v Apand Pty Limited [1999] HCA 36 , 198 CLR 180

case_text: Claims for damages for " economic loss " arising by reason of alleged negligent misrepresentations " present peculiar difficulty ": Woolcock Street Investments Pty Ltd v CDG Pty Ltd [2004] HCA 16 at [21] , [2004] HCA 16 ; 216 CLR 515 at 529 30. As Gleeson CJ, Gummow, Hayne and Heydon JJ observed: [21] Claims for damages for pure economic loss present peculiar difficulty. Competition is the hallmark of most forms of commercial activity in Australia. As Brennan J said in Bryan v Maloney [1995] HCA 17 ; [(1995) 182 CLR 609 at 632]: "If liability were to be imposed for the doing of anything which caused pure economic loss that was foreseeable, the tort of negligence would destroy commercial competition [ Dorset Yacht Co v Home Office [1970] UKHL 2 ; [1970] AC 1004 at 1027], sterilise many contracts and, in the well-known dictum of Chief Judge Cardozo [ Ultramares Corporation v Touche (1931) 255 NY 170 at 179], expose defendants to potential liability 'in an indeterminate amount for an indeterminate time to an indeterminate class'." That is why damages for pure economic loss are not recoverable if all that is shown is that the defendant's negligence was a cause of the loss and the loss was reasonably foreseeable. [22] In Caltex Oil (Australia) Pty Ltd v The Dredge "Willemstad" [1976] HCA 65 ; [(1976) 136 CLR 529] , the Court held that there were circumstances in which damages for economic loss were recoverable. In Caltex Oil, cases for recovery of economic loss were seen as being exceptions to a general rule, said to have been established in Cattle v Stockton Waterworks [(1875) LR 10 QB 453], that even if the loss was foreseeable, damages are not recoverable for economic loss which was not consequential upon injury to person or property. In Caltex Oil, Stephen J isolated a number of "salient features" which combined to constitute a sufficiently close relationship to give rise to a duty of care owed to Caltex for breach of which it might recover its purely economic loss [1976] HCA 65 ; [(1976) 136 CLR 529 at 576 8]. Chief among those features was the defendant's knowledge that to damage the pipeline which was damaged was inherently likely to produce economic loss [1976] HCA 65 ; [(1976) 136 CLR 529 at 576]. [23] Since Caltex Oil, and most notably in Perre v Apand Pty Ltd [1999] HCA 36 ; [(1999) 198 CLR 180] , the vulnerability of the plaintiff has emerged as an important requirement in cases where a duty of care to avoid economic loss has been held to have been owed. "Vulnerability", in this context, is not to be understood as meaning only that the plaintiff was likely to suffer damage if reasonable care was not taken. Rather, "vulnerability" is to be understood as a reference to the plaintiff's inability to protect itself from the consequences of a defendant's want of reasonable care, either entirely or at least in a way which would cast the consequences of loss on the defendant [Stapleton, 'Comparative Economic Loss: Lessons from Case-Law-Focused "Middle Theory"' (2002) 50 UCLA Law Review 531 at 558 9]. ... [24] In other cases of pure economic loss (Bryan v Maloney is an example) reference has been made to notions of assumption of responsibility and known reliance. The negligent misstatement cases like Mutual Life & Citizens' Assurance Co Ltd v Evatt [1968] HCA 74 ; [(1968) 122 CLR 556] and Shaddock & Associates Pty Ltd v Parramatta City Council [No 1] [1981] HCA 59 ; [(1981) 150 CLR 225] can be seen as cases in which a central plank in the plaintiff's allegation that the defendant owed it a duty of care is the contention that the defendant knew that the plaintiff would rely on the accuracy of the information the defendant provided. And it may be, as Professor Stapleton has suggested ... that these cases, too, can be explained by reference to notions of vulnerability. (The reference in Caltex Oil to economic loss being "inherently likely" can also be seen as consistent with the importance of notions of vulnerability.) It is not necessary in this case, however, to attempt to identify or articulate the breadth of any general proposition about the importance of vulnerability. This case can be decided without doing so. 186 The " peculiar difficulties " presented by this cause of action need not therefore be confronted in the present proceeding, including the question as to whether the Respondents owed a duty of care to the Applicants. " In many cases ", it has been said, " there will be no sound reason for imposing a duty on the defendant to protect the plaintiff from economic loss where it was reasonably open to the plaintiff to take steps to protect itself ": Perre v Apand Pty Limited [1999] HCA 36 at [118] , [1999] HCA 36 ; 198 CLR 180 at 225 per McHugh J. Whether or not there was a duty upon the Respondents in the present proceeding need not be resolved. 187 A hearing as to loss or damage should be held as soon as possible to bring this case, first commenced in March 2004, to conclusion. Any future hearing as to loss or damage must separately address any loss or damage suffered by each of the Applicants and the cause of action upon which reliance is sought to be placed. 188 Also outstanding is a Notice of Motion filed by the Respondents seeking further security for costs. That Motion was left outstanding pending these reasons being published. 189 The parties are to bring in such Short Minutes of Orders as are considered necessary to give effect to these reasons together with directions as to the future conduct of the proceeding, including the resolution of the Motion seeking further security. 190 Any order as to costs, it is presently considered, should await the resolution of the final hearing as to the quantification of loss of damage (if any) occasioned to the Applicants, or either of them. For present purposes, there is considered to be no reason why costs should not follow the event. It should also be noted that detailed written submissions were sought from the parties. The written submissions provided have proved to be of considerable assistance in the resolution of the issues.


case_outcome: considered

case_title: Priest v Last [1903] 2 KB 148

case_text: Even in the absence of the concession on behalf of the Respondents that a term was to be implied into the February 2003 agreement, and even in the absence of the acceptance by Mr Wieland that it was as " plain as a pikestaff " that such a term was necessary to give business efficacy to the agreement, it would have been found that such a term would also have been implied pursuant to one or other of the statutory provisions otherwise in issue. It would, for example, have been difficult for Wieland Equipment to have denied that the purpose for which the SLP 1100 was being purchased had not been made known. Not only had Mr Wieland been told of the very site to which the machine was being sent and the use to which it was to be put, it may otherwise have been safely assumed that a purchaser who purchases a rock crusher does so for the purpose of crushing rocks: cf Priest v Last [1903] 2 KB 148. There would have been no other purpose for which such a machine would be purchased. There may, however, have been some room for argument as to whether the SLP 1100 was suitable for its particular use at the Jeladri Quarry. See: Brown I, ' The Swing of the Pendulum from Caveat Venditor to Caveat Emptor ' (2000) 116 LQR 537. But all such subtleties as may have emerged became unnecessary to resolve given the course ultimately pursued by the Respondents during oral submissions. 144 It is regrettable, however, that the position as ultimately advanced by Counsel for the Respondents during the course of oral submissions was not communicated to either the Applicants or the Court at a far earlier point of time. The very purpose of requiring a written outline of submissions to be filed in advance of oral submissions is to provide notice to both the opposing party and the Court of the issues in need of resolution. Written submissions filed after the close of evidence can self-evidently take into account an assessment of the submissions which can properly be advanced upon the basis of the evidence then available. That assessment may well be different to the manner in which a case has been opened. The failure to make a decision as to the submissions to be in fact advanced, and to make a decision confining submissions to issues more limited than those foreshadowed in either an opening or in a pleading, necessarily exposes both an opposing party and the Court to the very real potential for costs and resources to be unnecessarily incurred and expended. 145 Such has been the experience in the present proceeding -- at least insofar as the Court is concerned. Needless to say, the expeditious resolution of any dispute involves an identification of the issues to be resolved at the earliest opportunity.


case_text: Conduct is " likely to mislead or deceive " if there is a " real or not remote chance or possibility regardless of whether it is less or more than fifty per cent ": Global Sportsman Pty Ltd v Mirror Newspapers Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 87 per Bowen CJ, Lockhart and Fitzgerald JJ (applying Tillmanns Butcheries Pty Ltd v Australian Meat Industry Employees' Union (1979) 42 FLR 331 at 346 per Deane J; Sheen v Fields Pty Ltd (1984) 58 ALJR 93) ; Citrus Queensland Pty Ltd v Sunstate Orchards Pty Ltd (No 7) [2008] FCA 1364 at [97] . A corporation's state of mind is immaterial in making out a case of misleading or deceptive conduct. In Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 88 the Full Court relevantly observed: If a corporation is alleged to have contravened s 52(1) by making a statement of past or present fact, the corporation's state of mind is immaterial unless the statement involved the state of the corporation's mind. Whether or not s 52(1) is contravened does not depend upon the corporation's intention or its belief concerning the accuracy of such statement, but upon whether the statement in fact contains or conveys a meaning which is false; that is to say whether the statement contains or conveys a misrepresentation. Most commonly, such a statement will contain or convey a false meaning if what is stated concerning the past or present fact is not accurate; but a statement which is literally true may contain or convey a meaning which is false. See also: Construction, Forestry, Mining and Energy Union v Hadgkiss [2007] FCAFC 197 at [79] [83], [2007] FCAFC 197 ; 248 ALR 169 at 182 3 per Buchanan J. The liability created by s 52 , it must also be recalled, was not " designed for the benefit of persons who fail, in the circumstances of the case, to take reasonable care of their own interests ": Elders Trustee and Executor Co Ltd v E G Reeves Pty Ltd [1987] FCA 332 ; (1987) 78 ALR 193 at 241 per Gummow J. See also: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1981) 149 CLR 191 at 199 per Gibbs CJ ; Rawley Pty Ltd v Bell (No 2) [2007] FCA 583 at [212] , 61 ACSR 648 at 701 per Finn J; Webster v Havyn Pty Ltd [2004] NSWSC 227 at [73] per Palmer J. 109 Section 75B provides in relevant part as follows: 75B Interpretation (1) A reference in this Part to a person involved in a contravention of a provision of Part IV, IVA, IVB, V or VC, or of section 75AU, 75AYA or 95AZN, shall be read as a reference to a person who: (a) has aided, abetted, counselled or procured the contravention; ... (c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; ... Section 75B does not require that a person knew he was participating in a contravention of the Act; what is required is actual knowledge of the essential elements of the contravention and intentional participation in it: Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661 at 666 70 per Mason ACJ, Wilson, Deane and Dawson JJ; Rawley Pty Ltd v Bell (No 2) [2007] FCA 583 at [40] per Finn J; Genocanna Nominees Pty Ltd v Thirsty Point Pty Ltd [2006] FCA 1268 at [267] [280]. There may be some circumstances where knowledge may be inferred from the surrounding circumstances: cf Pereira v Director of Public Prosecutions [1988] HCA 57 at [11] , [1988] HCA 57 ; 82 ALR 217 at 219 20.


case_outcome: applied

case_text: The contravening conduct of the Respondents may have caused loss or damage if that conduct was an inducement to the decision to purchase the SLP 1100: Lam v Ausintel Investments Australia Pty Ltd (1989) 97 FLR 458 at 477 8 per Gleeson CJ (Samuels AJA and Meagher JA agreeing). The " causative threshold " remains a matter of judgment: Ricochet Pty Ltd v Equity Trustees Executors and Agency Co Ltd [1993] FCA 99 ; (1993) 41 FCR 229 at 235. Lockhart, Gummow and French JJ there observed (at 235): A finding that a misrepresentation might have induced a decision will not of itself establish as a matter of probability that it did. Consistently with that finding, it may be that, on the balance of probabilities, a party was induced to make a decision by a combination of factors including the misrepresentation. Assuming a non-trivial contribution to the causative process by the misrepresentation, then it may be actionable. Ultimately, the "causative threshold" beyond which liability attaches to a misrepresentation which is one of a number of factors inducing a decision that produces loss, will be a question of judgment. This is a familiar process adverted to in various related contexts by Mason CJ in March v E & M H Stramare Pty Ltd (supra) and in this Court in Elna Australia Pty Ltd v International Computers (Aust) Pty Ltd (No 2) [1987] FCA 230 ; (1987) 16 FCR 410 at 418 419 and Pavich v Bobra Nominees Pty Ltd [1988] ATPR 49 ,849. (See also Munchies Management Pty Ltd v Belperio (1988) 84 ALR 700 at 712). But the mere possibility that a misrepresentation might have induced a course of action by the representee can never of itself attach liability under s 82 to the making of it.


case_title: RPS v The Queen [2000] HCA 3 , 199 CLR 620

case_text: The explanation provided by Mr Wieland as to why the inspections may well have occurred at an earlier point of time, namely that the dates appearing on the records are the dates upon which those " in the office " subsequently completed the records, is rejected. Such an explanation is inconsistent with that which the records expose -- the records requiring those conducting the inspections to certify that which they found and to state (for example) the " date of testing ". Mr Wieland ultimately accepted that the explanation he was advancing as a " possibility " was but " speculation ". In such circumstances, there is no reason not to find that the test records were carried out upon the dates set forth. The findings of fact that the machines were inspected on the dates appearing on the face of individual documents, it is considered, is supported by both the form of the documents themselves and the conclusion that Mr Wieland's evidence, especially in this respect, was considered to be unpersuasive. Moreover, those findings of fact are only further reinforced by the absence of any evidence being called from those persons employed in the Chinese factory to either support the " speculation " of Mr Wieland or to expressly state what the practice was in respect to the dating of inspection reports: cf Jones v Dunkel (1959) 101 CLR 298 at 308 per Kitto J. Given the importance of the dates upon which inspections did in fact occur, being evidence centrally relevant to when the SLP 1100s were manufactured and were in fact in operation, it is considered that those persons who in fact completed the inspection reports (or at least perhaps one of them) could have shed light on the matter and would have been expected to have done so: cf RPS v The Queen [2000] HCA 3 at [25] , [2000] HCA 3 ; 199 CLR 620 at 632 per Gaudron ACJ, Gummow, Kirby and Hayne JJ.


case_title: Sheen v Fields Pty Ltd (1984) 58 ALJR 93


case_title: Tillmanns Butcheries Pty Ltd v Australian Meat Industry Employees' Union (1979) 42 FLR 331


case_text: In order for the Applicants to recover damages under s 82 they must show that their loss or damage was occasioned " by " the contravening conduct. Sub-section (1) of s 82 of the 1974 Act thus provides as follows: Subject to subsection (1AAA), a person who suffers loss or damage by conduct of another person that was done in contravention of a provision of Part IV, IVA, IVB or V or section 51AC may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention. With reference to the term " by ", Mason CJ, Dawson, Gaudron and McHugh JJ observed in Wardley Australia Ltd v Western Australia [1992] HCA 55 ; (1992) 175 CLR 514 (at 525): By virtue of s 82(2) of the Act, the period of limitation begins to run at the time when the cause of action under s 82(1) accrues. As loss or damage is the gist of the statutory cause of action for which s 82(1) provides [Elna Australia Pty Ltd v International Computers (Australia) Pty Ltd (No 2) [1987] FCA 230 ; (1987) 16 FCR 410 at 418], the cause of action does not accrue until actual loss or damage is sustained. The statutory cause of action arises when the plaintiff suffers loss or damage "by" contravening conduct of another person. "By" is a curious word to use. One might have expected "by means of", "by reason of", "in consequence of" or "as a result of". But the word clearly expresses the notion of causation without defining or elucidating it. In this situation, s 82(1) should be understood as taking up the common law practical or common-sense concept of causation recently discussed by this Court in March v Stramare (E & M H) Pty Ltd [1991] HCA 12 ; [(1991) 171 CLR 506] , except in so far as that concept is modified or supplemented expressly or impliedly by the provisions of the Act. Had Parliament intended to say something else, it would have been natural and easy to have said so.


case_title: Webster v Havyn Pty Ltd [2004] NSWSC 227


case_title: Woolcock Street Investments Pty Ltd v CDG Pty Ltd [2004] HCA 16 , 216 CLR 515

case_text: Claims for damages for " economic loss " arising by reason of alleged negligent misrepresentations " present peculiar difficulty ": Woolcock Street Investments Pty Ltd v CDG Pty Ltd [2004] HCA 16 at [21] , [2004] HCA 16 ; 216 CLR 515 at 529 30. As Gleeson CJ, Gummow, Hayne and Heydon JJ observed: [21] Claims for damages for pure economic loss present peculiar difficulty. Competition is the hallmark of most forms of commercial activity in Australia. As Brennan J said in Bryan v Maloney [1995] HCA 17 ; [(1995) 182 CLR 609 at 632]: "If liability were to be imposed for the doing of anything which caused pure economic loss that was foreseeable, the tort of negligence would destroy commercial competition [ Dorset Yacht Co v Home Office [1970] UKHL 2 ; [1970] AC 1004 at 1027], sterilise many contracts and, in the well-known dictum of Chief Judge Cardozo [ Ultramares Corporation v Touche (1931) 255 NY 170 at 179], expose defendants to potential liability 'in an indeterminate amount for an indeterminate time to an indeterminate class'." That is why damages for pure economic loss are not recoverable if all that is shown is that the defendant's negligence was a cause of the loss and the loss was reasonably foreseeable. [22] In Caltex Oil (Australia) Pty Ltd v The Dredge "Willemstad" [1976] HCA 65 ; [(1976) 136 CLR 529] , the Court held that there were circumstances in which damages for economic loss were recoverable. In Caltex Oil, cases for recovery of economic loss were seen as being exceptions to a general rule, said to have been established in Cattle v Stockton Waterworks [(1875) LR 10 QB 453], that even if the loss was foreseeable, damages are not recoverable for economic loss which was not consequential upon injury to person or property. In Caltex Oil, Stephen J isolated a number of "salient features" which combined to constitute a sufficiently close relationship to give rise to a duty of care owed to Caltex for breach of which it might recover its purely economic loss [1976] HCA 65 ; [(1976) 136 CLR 529 at 576 8]. Chief among those features was the defendant's knowledge that to damage the pipeline which was damaged was inherently likely to produce economic loss [1976] HCA 65 ; [(1976) 136 CLR 529 at 576]. [23] Since Caltex Oil, and most notably in Perre v Apand Pty Ltd [1999] HCA 36 ; [(1999) 198 CLR 180] , the vulnerability of the plaintiff has emerged as an important requirement in cases where a duty of care to avoid economic loss has been held to have been owed. "Vulnerability", in this context, is not to be understood as meaning only that the plaintiff was likely to suffer damage if reasonable care was not taken. Rather, "vulnerability" is to be understood as a reference to the plaintiff's inability to protect itself from the consequences of a defendant's want of reasonable care, either entirely or at least in a way which would cast the consequences of loss on the defendant [Stapleton, 'Comparative Economic Loss: Lessons from Case-Law-Focused "Middle Theory"' (2002) 50 UCLA Law Review 531 at 558 9]. ... [24] In other cases of pure economic loss (Bryan v Maloney is an example) reference has been made to notions of assumption of responsibility and known reliance. The negligent misstatement cases like Mutual Life & Citizens' Assurance Co Ltd v Evatt [1968] HCA 74 ; [(1968) 122 CLR 556] and Shaddock & Associates Pty Ltd v Parramatta City Council [No 1] [1981] HCA 59 ; [(1981) 150 CLR 225] can be seen as cases in which a central plank in the plaintiff's allegation that the defendant owed it a duty of care is the contention that the defendant knew that the plaintiff would rely on the accuracy of the information the defendant provided. And it may be, as Professor Stapleton has suggested ... that these cases, too, can be explained by reference to notions of vulnerability. (The reference in Caltex Oil to economic loss being "inherently likely" can also be seen as consistent with the importance of notions of vulnerability.) It is not necessary in this case, however, to attempt to identify or articulate the breadth of any general proposition about the importance of vulnerability. This case can be decided without doing so.


case_outcome: discussed

case_text: for the applicant made passing reference to the need to avoid a multiplicity of proceedings. He submitted that, subject to Anshun principles ( Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589 (" Anshun ")), the proposed amendments should be allowed to avoid a multiplicity of proceedings. There are difficulties with that submission and they were not addressed in submissions by either the applicant or the respondents. It seems to me that it would be a surprising construction of O 13 r 2(2) to give it the effect that a party has a right to amend at any stage unless it can be said that Anshun principles preclude a further proceeding. Even if this is the correct construction of the sub-rule, there seem to me some possible difficulties in applying the Anshun principles on an application to amend. In AON Risk Services Australia Limited v Australian National University [2009] HCA 27 ; (2009) 83 ALJR 951 ("AON"), the High Court addressed a rule (r 501 Court Procedure Rules 2006 (ACT)) in similar terms to O 13 r 2(2) and some of these difficulties (at [32]-[34] per French CJ; at [86]-[88] per Gummow, Hayne, Crennan, Kiefel and Bell JJ). In the absence of detailed submissions about the operation of O 13 r 2(2) and the way in which the matter was argued, I will consider the application for leave to amend under O 13 r 2(1). The High Court considered the scope of a similar rule (r 502) in AON . The Court Procedure Rules 2006 (ACT) also included r 21 which was in the following terms: "(1) The purpose of this chapter, and the other provisions of these rules in their application to civil proceedings, is to facilitate the just resolution of the real issues in civil proceedings with minimum delay and expense. (2) Accordingly, these rules are to be applied by the courts in civil proceedings with the objective of achieving (a) the just resolution of the real issues in the proceedings; and (b) the timely disposal of the proceedings, and all other proceedings in the court, at a cost affordable by the respective parties. (3) The parties to a civil proceeding must help the court to achieve the objectives. (4) The court may impose appropriate sanctions if a party does not comply with these rules or an order of the court." In his reasons for judgment, French CJ said that the efficient use of public resources was a relevant consideration in the exercise of the discretion in r 502 and its equivalents ([24], [27]). Justices Gummow, Hayne, Crennan, Kiefel and Bell dealt with r 502 and r 21 together, but their Honours' reasons (at [92]) suggest that they considered that the objectives specified in r 21 and the principles of case management were, in any event, an accepted aspect of the system of civil justice administered by courts in Australia. Their Honours said (at [102]-[103]): "The objectives stated in r 21 do not require that every application for amendment should be refused because it involves the waste of some costs and some degree of delay, as it inevitably will. Factors such as the nature and importance of the amendment to the party applying cannot be overlooked. Whilst r 21 assumes some ill effects will flow from the fact of a delay, that will not prevent the parties dealing with its particular effects in their case in more detail. It is the extent of the delay and the costs associated with it, together with the prejudice which might reasonably be assumed to follow and that which is shown, which are to be weighed against the grant of permission to a party to alter its case. Much may depend upon the point the litigation has reached relative to a trial when the application to amend is made. There may be cases where it may properly be concluded that a party has had sufficient opportunity to plead their case and that it is too late for a further amendment, having regard to the other party and other litigants awaiting trial dates. Rule 21 makes it plain that the extent and the effect of delay and costs are to be regarded as important considerations in the exercise of the court's discretion. Invariably the exercise of that discretion will require an explanation to be given where there is delay in applying for amendment. The fact that an explanation had been offered for the delay in raising the defence was regarded as a relevant consideration in J L Holdings . Generally speaking, where a discretion is sought to be exercised in favour of one party, and to the disadvantage of another, an explanation will be called for. The importance attached by r 21 to the factor of delay will require that, in most cases where it is present, a party should explain it. Not only will they need to show that their application is brought in good faith, but they will also need to bring the circumstances giving rise to the amendment to the court's attention, so that they may be weighed against the effects of any delay and the objectives of the Rules. There can be no doubt that an explanation was required in this case." (Citation omitted.) The explanation for the delay in bringing forward the amendments in relation to the retrofit kit is not entirely clear. However, there is no reason to think that there was a tactical reason for not bringing them forward earlier. The most likely explanation is that the significance of the evidence about the retrofit kit was not appreciated by the applicant's officers or by the pleader. It was only when the evidence had to be reduced to writing and filed with the Court that minds were focused. The fact that the timetable will be put back if the amendments are allowed is significant. That results in further delay and additional expense and, from the respondents' point of view, the worry of unresolved litigation.


case_outcome: referred to

case_text: was referred to a number of authorities, but I do not need to go through them in detail. The general principles are well known. They are summarised by Branson J in Reading Australia Pty Ltd v Australian Mutual Provident Society (1999) 217 ALR 495 ; [1999] FCA 718 at [6] - [9] . They were applied by Kenny J in Fleming's Nurseries Pty Ltd v Hannaford [2008] FCA 591. Orders separating liability from damages or an account of profits are often made in intellectual property cases. In Liberty Financial Pty Ltd v Scott [2003] FCA 226 at [40] , Weinberg J expressed the view that intellectual property cases, or at least intellectual property cases other than patent cases, should be treated no differently from other commercial cases. I do not need to enter that debate because this is not an intellectual property case. The claims made by the applicant include claims made under the Corporations Act and the TPA. In any event, there is no fixed and invariable rule that an order for the determination of separate questions will be made in intellectual property cases.


case_title: Liberty Financial Pty Ltd v Scott [2003] FCA 226


case_text: for the applicant made passing reference to the need to avoid a multiplicity of proceedings. He submitted that, subject to Anshun principles ( Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589 (" Anshun ")), the proposed amendments should be allowed to avoid a multiplicity of proceedings. There are difficulties with that submission and they were not addressed in submissions by either the applicant or the respondents. It seems to me that it would be a surprising construction of O 13 r 2(2) to give it the effect that a party has a right to amend at any stage unless it can be said that Anshun principles preclude a further proceeding. Even if this is the correct construction of the sub-rule, there seem to me some possible difficulties in applying the Anshun principles on an application to amend. In AON Risk Services Australia Limited v Australian National University [2009] HCA 27 ; (2009) 83 ALJR 951 ("AON"), the High Court addressed a rule (r 501 Court Procedure Rules 2006 (ACT)) in similar terms to O 13 r 2(2) and some of these difficulties (at [32]-[34] per French CJ; at [86]-[88] per Gummow, Hayne, Crennan, Kiefel and Bell JJ).


case_title: Reading Australia Pty Ltd v Australian Mutual Provident Society [1999] FCA 718 ; (1999) 217 ALR 495


case_text: The penalty imposed was the recording of a conviction on two counts, and an order to perform community service hours. The learned Magistrate made an order under s 120(3) for payment of costs of $115,000 'inclusive of the GST component, investigation costs, and prosecution disbursements and costs'. An appeal against the convictions, and against the order under s 120(3) was dismissed: Moore-McQuillan v WorkCover Corporation [2005] SASC 13. 5 At the completion of his sentencing remarks, the learned Magistrate said: 'I order that the payment [of the $115,000] be made as follows: The defendant is to pay the Registrar for and on behalf of the complainant the legal costs of prosecution mentioned. He is to fix the time and method of payment with the Court's unit set up for that purpose. The default of payment is pursuant to the provisions of the Criminal Law Sentencing Act [sic]. ' 6 The trustee initially took the view that the award of costs of $115,000 'has the character of a penalty or fine imposed by the Court', so that s 82(3) of the Act applies and the liability is not a debt provable in the applicant's bankruptcy. Subsequently, he said the position was unclear. He has indicated there are no funds in the bankrupt estate of the applicant to enable any dividend to be paid. He does not therefore intend to call for proofs of debt. He has nevertheless attended to provide relevant materials to the Court and to assist the Court by submissions.


case_outcome: distinguished

case_text: There is no definition of the expression 'penalties' in s 82(3). However, it has received judicial consideration. In Re Higgins; Ex parte Higgins and Nicholson (1984) 4 FCR 533 ( Higgins ), Spender J held that an award of costs in proceedings for a penalty or fine for an offence against a law was a component part of the total sum which bears a punitive character, and should be characterised as a penalty for the purposes of s 82(3) of the Act. Consequently, neither the fines imposed, nor the costs ordered to be paid, were provable in the bankruptcy. That decision was followed and applied by Farrell JR in Marshall v Western Australia (1998) 84 FCR 363. 13 However, I think it is necessary to look a little more closely at the decision in Higgins before simply applying it to the present application. The starting point is to note the overall purpose of the Act. 22 In my view, Higgins is not a decision directly on point. It too was an application under s 60(1) of the Act. Spender J made the determination that s 60(1) was not available in the particular circumstances, because the fine and costs imposed were in reality the punishment. The bankrupt was ordered to pay the fine and costs within a specified period, with a term of imprisonment in default of payment. His Honour at 537 described them as ' ... but components of a total sum which has a punitive character in that non-payment of which is visited by imprisonment'. Moreover, the costs order was made under the general discretionary power of the Magistrates Court under s 157 of the Justices Act 1886 (Qld) to order costs, and the costs were payable to the prosecuting authority (the Builders' Registration Board of Queensland) rather than to the victims of the contravening conduct. In addition, Spender J at 539 contrasted the situation with which he was faced with orders amounting to pecuniary penalties payable in consequence of the non-payment of a provable debt: see Storey v Lane (above) at 563.


case_text: There is no definition of the expression 'penalties' in s 82(3). However, it has received judicial consideration. In Re Higgins; Ex parte Higgins and Nicholson (1984) 4 FCR 533 ( Higgins ), Spender J held that an award of costs in proceedings for a penalty or fine for an offence against a law was a component part of the total sum which bears a punitive character, and should be characterised as a penalty for the purposes of s 82(3) of the Act. Consequently, neither the fines imposed, nor the costs ordered to be paid, were provable in the bankruptcy. That decision was followed and applied by Farrell JR in Marshall v Western Australia (1998) 84 FCR 363.


case_text: The Act generally operates to divest a bankrupt of his or her property, to vest that property in a trustee, and through the trustee to make it available for the payment of provable debts. Creditors generally are disentitled by s 58 from pursuing proceedings against the bankrupt to recover debts, and the bankrupt generally is also restricted by s 60(2) from pursuing proceedings the bankrupt has commenced. Hence, the assets of the bankrupt are distributed rateably among creditors, so no creditor secures an advantage over the others. Ultimately, following the discharge of the debtor from bankruptcy, the debtor may face the future free of liability for the debts existing at the time of the bankruptcy: see generally Cummings v Claremont Petroleum NL [1996] HCA 19 ; (1996) 185 CLR 124; Re McMaster (1991) 105 ALR 156.


case_title: Re McMaster (1991) 105 ALR 156


case_text: Under the earlier legislation, Re Bradbury; Ex Parte The King; Official Receiver (Respondent) (1931) 3 ABC 204 had held that a penalty for a criminal offence was not a provable debt. In that case the relevant liability comprised a fine imposed for certain offences under the Game Act 1928 (Vic) and the costs ordered to be paid (although the judgment does not separately address the characteristics of that part of the orders dealing with costs). In essence, the liability was found not to be a provable debt because it was in the nature of a punishment. The question was, however, addressed in a somewhat different context in Re Caddies; Ex parte Stapleton (1962) 19 ABC 155 ( Caddies ). The bankrupt, before his bankruptcy, had been convicted of false pretences, fined, and ordered to make restitution within three months, with a term of imprisonment in default of payment. Before the three month period had expired, he became bankrupt. He was, however, then arrested for non-payment of the fine and restitution, although the bankrupt by then had made some part payment which well exceeded the amount of the fine itself. Gibbs J at 158 held that the order of the police court was of a punitive character, in particular as the magistrate had a discretion whether to make a restitution order, and whether to order a term of imprisonment in default of compliance with it. Once the characterisation of the order as being 'something in the nature of punishment' was made, it was not an order in the nature of legal process to procure payment. The Court concluded that there was no power under the Bankruptcy Act 1924-1960 (Cth) to discharge the order upon which the bankrupt had been imprisoned. See also Commissioner for Motor Transport (NSW) v Train [1972] HCA 62 ; (1972) 127 CLR 396; Re Hollis (1968) 15 FLR 386.


case_text: Under the earlier legislation, Re Bradbury; Ex Parte The King; Official Receiver (Respondent) (1931) 3 ABC 204 had held that a penalty for a criminal offence was not a provable debt. In that case the relevant liability comprised a fine imposed for certain offences under the Game Act 1928 (Vic) and the costs ordered to be paid (although the judgment does not separately address the characteristics of that part of the orders dealing with costs). In essence, the liability was found not to be a provable debt because it was in the nature of a punishment. The question was, however, addressed in a somewhat different context in Re Caddies; Ex parte Stapleton (1962) 19 ABC 155 ( Caddies ). The bankrupt, before his bankruptcy, had been convicted of false pretences, fined, and ordered to make restitution within three months, with a term of imprisonment in default of payment. Before the three month period had expired, he became bankrupt. He was, however, then arrested for non-payment of the fine and restitution, although the bankrupt by then had made some part payment which well exceeded the amount of the fine itself. Gibbs J at 158 held that the order of the police court was of a punitive character, in particular as the magistrate had a discretion whether to make a restitution order, and whether to order a term of imprisonment in default of compliance with it. Once the characterisation of the order as being 'something in the nature of punishment' was made, it was not an order in the nature of legal process to procure payment. The Court concluded that there was no power under the Bankruptcy Act 1924-1960 (Cth) to discharge the order upon which the bankrupt had been imprisoned. See also Commissioner for Motor Transport (NSW) v Train [1972] HCA 62 ; (1972) 127 CLR 396; Re Hollis (1968) 15 FLR 386. 19 Pincus J concluded at 534 that the order for restitution was not a penalty under s 82(3) because it did not fall within the description of a 'punishment' as that term was used in the Criminal Code (Qld), and because the victim of the crime could clearly have proved in bankruptcy for the sums stolen. That is, the obligation underlying the order sought to be stayed was a debt provable in bankruptcy. His Honour preferred the 'non-punitive' characterisation of the restitution order to the views of Gibbs J in Caddies , partly in reliance upon the Queensland Court of Criminal Appeal in R v Civoniceva; Ex parte Attorney-General [1983] 2 Qd R 633 at 634-635. Hence, his Honour was able to (and did) exercise the discretionary power in s 60(1)(b) of the Act.


case_title: Commissioner for Motor Transport (NSW) v Train [1972] HCA 62 ; (1972) 127 CLR 396


case_title: Re Hollis (1968) 15 FLR 386


case_text: Re Lenske; Ex parte Lenske (1986) 9 FCR 532 concerned a debtor who had been convicted of stealing as a servant, and ordered to perform community service and to pay restitution under s 685A of the Criminal Code (Qld). The Magistrate made orders for imprisonment in default of payment of the restitution. The debtor became bankrupt on his own petition, and subsequently applied under s 60(1)(b) of the Act to stay the proceedings which were about to culminate in his imprisonment for defaulting in making the restitution ordered. Section 60(1)(b) is available only if the process to be stayed is in respect of the non-payment of a provable debt.


case_text: Pincus J concluded at 534 that the order for restitution was not a penalty under s 82(3) because it did not fall within the description of a 'punishment' as that term was used in the Criminal Code (Qld), and because the victim of the crime could clearly have proved in bankruptcy for the sums stolen. That is, the obligation underlying the order sought to be stayed was a debt provable in bankruptcy. His Honour preferred the 'non-punitive' characterisation of the restitution order to the views of Gibbs J in Caddies , partly in reliance upon the Queensland Court of Criminal Appeal in R v Civoniceva; Ex parte Attorney-General [1983] 2 Qd R 633 at 634-635. Hence, his Honour was able to (and did) exercise the discretionary power in s 60(1)(b) of the Act.


case_title: Re Sutherland-Cropper (1985) 11 FCR 156

case_text: A similar approach is reflected in the decisions of Re Sutherland-Cropper (1985) 11 FCR 156; Glass v Tarea Management (North Shore) Pty Ltd (in liq) (1990) 25 FCR 242; Re Keogh; Ex Parte Keogh v Director of Public Prosecutions (1995) 61 FCR 591 ( Re Keogh ); Re Lattouf (1994) 52 FCR 147 ( Re Lattouf ) ; Re Lattouf; Ex parte New South Wales Director of Public Prosecutions v Lattouf [1995] FCA 752 ; and Tatt v New South Wales Director of Public Prosecutions [1998] FCA 957. In each of those cases a restitution order (sometimes as a condition of a recognisance) had not been complied with following conviction for a criminal offence. Hence, s 60(1) has been found to be available to stay the enforcement of an order to make restitution, or to stay that part of the order imposing consequences for non-compliance with a condition in a recognisance requiring restitution. That approach gives effect to the purpose and effect of s 60(1) of the Act as in force since 1980 and as explained by Gibbs CJ in Storey v Lane [1981] HCA 47 ; (1981) 147 CLR 549 at 556.


case_title: Glass v Tarea Management (North Shore) Pty Ltd (in liq) (1990) 25 FCR 242


case_text: A similar approach is reflected in the decisions of Re Sutherland-Cropper (1985) 11 FCR 156; Glass v Tarea Management (North Shore) Pty Ltd (in liq) (1990) 25 FCR 242; Re Keogh; Ex Parte Keogh v Director of Public Prosecutions (1995) 61 FCR 591 ( Re Keogh ); Re Lattouf (1994) 52 FCR 147 ( Re Lattouf ) ; Re Lattouf; Ex parte New South Wales Director of Public Prosecutions v Lattouf [1995] FCA 752 ; and Tatt v New South Wales Director of Public Prosecutions [1998] FCA 957. In each of those cases a restitution order (sometimes as a condition of a recognisance) had not been complied with following conviction for a criminal offence. Hence, s 60(1) has been found to be available to stay the enforcement of an order to make restitution, or to stay that part of the order imposing consequences for non-compliance with a condition in a recognisance requiring restitution. That approach gives effect to the purpose and effect of s 60(1) of the Act as in force since 1980 and as explained by Gibbs CJ in Storey v Lane [1981] HCA 47 ; (1981) 147 CLR 549 at 556. 24 The power under s 60(1)(b) is discretionary. In this matter, I am satisfied on the evidence that the applicant is bankrupt, and is unable to satisfy the costs order. He is a disability pensioner. He has no employment. That is also in part demonstrated by the processes against him under the Sentencing Act since the costs order was made, and which have not resulted in him paying the costs order. The prospect of further enforcement procedures under the Sentencing Act imposing more disadvantage, without him having the capacity to meet the costs order, stands strongly in favour of exercising the discretion in his favour: see Storey v Lane (above) at 558. There appear to be no features of the applicant's circumstances which point in a contrary direction: cf Re Keogh at 596 ; Re Lattouf at 153. The second respondent, which is the beneficiary of the cost order, has not put forward any such countervailing considerations. I am therefore of the view that the order sought by the applicant should be made.


case_title: Re Lattouf (1994) 52 FCR 147


case_title: Re Lattouf; Ex parte New South Wales Director of Public Prosecutions v Lattouf [1995] FCA 752


case_title: Tatt v New South Wales Director of Public Prosecutions [1998] FCA 957


case_text: A similar approach is reflected in the decisions of Re Sutherland-Cropper (1985) 11 FCR 156; Glass v Tarea Management (North Shore) Pty Ltd (in liq) (1990) 25 FCR 242; Re Keogh; Ex Parte Keogh v Director of Public Prosecutions (1995) 61 FCR 591 ( Re Keogh ); Re Lattouf (1994) 52 FCR 147 ( Re Lattouf ) ; Re Lattouf; Ex parte New South Wales Director of Public Prosecutions v Lattouf [1995] FCA 752 ; and Tatt v New South Wales Director of Public Prosecutions [1998] FCA 957. In each of those cases a restitution order (sometimes as a condition of a recognisance) had not been complied with following conviction for a criminal offence. Hence, s 60(1) has been found to be available to stay the enforcement of an order to make restitution, or to stay that part of the order imposing consequences for non-compliance with a condition in a recognisance requiring restitution. That approach gives effect to the purpose and effect of s 60(1) of the Act as in force since 1980 and as explained by Gibbs CJ in Storey v Lane [1981] HCA 47 ; (1981) 147 CLR 549 at 556. 22 In my view, Higgins is not a decision directly on point. It too was an application under s 60(1) of the Act. Spender J made the determination that s 60(1) was not available in the particular circumstances, because the fine and costs imposed were in reality the punishment. The bankrupt was ordered to pay the fine and costs within a specified period, with a term of imprisonment in default of payment. His Honour at 537 described them as ' ... but components of a total sum which has a punitive character in that non-payment of which is visited by imprisonment'. Moreover, the costs order was made under the general discretionary power of the Magistrates Court under s 157 of the Justices Act 1886 (Qld) to order costs, and the costs were payable to the prosecuting authority (the Builders' Registration Board of Queensland) rather than to the victims of the contravening conduct. In addition, Spender J at 539 contrasted the situation with which he was faced with orders amounting to pecuniary penalties payable in consequence of the non-payment of a provable debt: see Storey v Lane (above) at 563. 24 The power under s 60(1)(b) is discretionary. In this matter, I am satisfied on the evidence that the applicant is bankrupt, and is unable to satisfy the costs order. He is a disability pensioner. He has no employment. That is also in part demonstrated by the processes against him under the Sentencing Act since the costs order was made, and which have not resulted in him paying the costs order. The prospect of further enforcement procedures under the Sentencing Act imposing more disadvantage, without him having the capacity to meet the costs order, stands strongly in favour of exercising the discretion in his favour: see Storey v Lane (above) at 558. There appear to be no features of the applicant's circumstances which point in a contrary direction: cf Re Keogh at 596 ; Re Lattouf at 153. The second respondent, which is the beneficiary of the cost order, has not put forward any such countervailing considerations. I am therefore of the view that the order sought by the applicant should be made.


case_text: To establish this ground the applicant must show that there was no evidence or other material upon which the President of HREOC could reasonably be satisfied that the decision of the NDPSC was not inconsistent with or contrary to any human right: Australian Broadcasting Tribunal v Bond [1990] HCA 33 ; (1990) 170 CLR 321 at 357-358 (per Mason J). 42 The applicant properly and candidly conceded that on the evidence and material before HREOC, it was open for different people to reach different conclusions. So much was conceded in his written submissions when he stated that " the preponderance of detailed evidence presented in this case favours the position of the applicant." Where the preponderance of evidence lies is not a question for the Court to resolve. The question for the Court is whether there was evidence or other material to justify the decision made by HREOC. There clearly was. That is reason enough to conclude that the asserted ground is not made out.


case_text: Secondly, where, as here, HREOC decided not to continue to inquire into an act or practice in respect of which a complaint was made to it, HREOC was required " forthwith [to] give notice in writing to the complainant of that decision and of the reasons for that decision" : s 20(4) of the HREOC Act. It did so. Those reasons " are not to be construed minutely and finely with an eye keenly attuned to the perception of error" : Collector of Customs v Pozzolanic Enterprises Pty Ltd (1993) 43 FCR 280 at 287. Moreover, the reasons are not required to refer expressly to every argument and all the evidence that might be relevant to its determination of factual issues: cf Guo Wei Rong v Minister for Immigration and Ethnic Affairs (1995) 38 ALD 38 at 52-53. 54 Secondly, HREOC's reasons for decision are not required to deal with every aspect of the material provided by the Department or the applicant: Guo Wei Rong v Minister for Immigration and Ethnic Affairs (1995) 38 ALD 38. It follows that, even if the applicant had been able to show that the decision did not make express reference to some aspect of the material that he had advanced, this, standing alone, would not establish that HREOC had not observed the procedures required of it by law. 55 Thirdly, HREOC's decision was a decision clearly open to it on the material before it. Much of the applicant's complaints, both in respect of the complaint about failure to comply with procedures and more generally, proceeded from the position that it was enough for him to demonstrate reviewable error to show that HREOC had accepted the NDPSC's view, and thereby rejected the applicant's view, of the plant. That premise is not right. In general terms, the NDPSC considered that the plant, as a known hallucinogenic substance with potential hazards and risks both to users and the wider community, posed a serious risk to public health and safety. The applicant held a contrary view. He claimed that there was no evidence that the plant was a risk to national security, public safety, health or morals; that it had not been demonstrated that the plant was a hallucinogen; that no deaths, injuries, hospitalisation or serious complications had been linked to the plant and that there was no evidence that the plant could become a substance of abuse through its importation into Australia. The question for HREOC was not which of these views was to be preferred. The immediate question, as pointed out earlier in these reasons, was whether to continue to inquire into the complaint. That, in turn, invited attention to whether the decision of NDPSC was inconsistent with or contrary to a human right. That was the question that HREOC considered and determined. 56 Many of the matters relied upon by the applicant were cast in terms that appeared to be directed to seeking a review of the merits of the decision made by HREOC but, on further analysis, were directed to challenging the initial decision of the NDPSC to place the plant into Sch 9 of the Poisons Standard. Merits review of any decision is beyond the duty and jurisdiction of this Court in the exercise of its judicial review power. In the present case, the position is further removed - the applicant, in substance if not in form, seeks merits review of a decision that is not before the Court. That is not permitted or possible. 57 Some of the matters raised by the applicant appeared to be a complaint that HREOC took into account irrelevant considerations or that HREOC was motivated by improper purposes. These matters may raise other and different grounds of review, namely s 5(1)(e) , (2)(a) and 2 (c) of the ADJR Act . However, these matters may be put to one side. There is nothing to suggest that HREOC exercised its power to not to continue to inquire into the complaint made by the applicant under s 20(2)(a) of the HREOC Act for a purpose other than that for which it was conferred. Further, there is no evidence that HREOC was motivated by " factors other than legal factors, such as the time-consuming nature and complexity of this case, the lack of prospects for a reasonable settlement and a desire to remove the case from the Commission's ongoing commitments" or that NDPSC was motivated by improper purposes including " religio-political factors" . 58 The applicant contended that HREOC took into account an irrelevant consideration. The 'irrelevant consideration' was described by the applicant as the 'slippery slope' argument. That assertion fails at the outset. 59 HREOC addressed the 'slippery slope' argument by summarising the positions adopted by NDPSC and the applicant in relation to the matter in the following terms: "The Department states that in addition to being a consideration that is not currently required under the TGA Act and the Regulations in the scheduling of substances in the Poisons Standard, the result would be catastrophic if, despite the strict scheduling of substances (such as Schedule 9 substances), individuals would be allowed to use hallucinogenic substances such as LSD and cannabis for religious reasons or beliefs, despite the known health and safety risks of these substances. The Department maintains that an individual would not only risk harm, injury or death to himself, but to other members of the public as well. ... [The applicant denies] that if the plant were made available for religious purposes that this would contribute to a 'slippery slope' whereby 'others could seek the de-scheduling of other hallucinogenic substances.'" 60 HREOC considered the parties' respective position as part of its evaluation of the information provided to it. At its highest, the argument was a factor put to HREOC by the NDPSC to which the applicant responded. HREOC's treatment of the 'slippery slope' argument does not reveal that it took into account an irrelevant consideration in the exercise of its power.


case_text: HREOC has not amplified what it meant by the reference, in its decision, to the level of restriction adopted by NDPSC being "proportionate to the potential risks associated with the use of the plant". However, what HREOC said in its reasons is in no way inconsistent with it applying what the applicant says is the proper construction of Art 18(3) and, in particular, giving that article the meaning described in General Comment 22 by reference to the notion of the restriction being "directly related and proportionate". It follows that, to make good his complaint of error of law, the applicant must seek to argue from the actual conclusion reached by HREOC that it must have understood the relevant legal test incorrectly. It may be accepted that there may be cases in which such reasoning is permissible. (It is reasoning of a kind that may be said to be analogous to the last category of cases described in House v The King [1936] HCA 40 ; (1936) 55 CLR 499 at 505 as warranting appellate intervention in a discretionary decision.) But it is reasoning that is available only if no answer to the relevant question is possible except the answer for which the applicant contends that total prohibition of use of the plant cannot be said to the "least restrictive" interference with the use of the plant that is consistent with the object of public health and safety. The premise was not made good. 35 Under this heading, the applicant also referred the court to a number of events which he described as evidence " raising the possibility of interference by organisations or individuals with knowledge of the plant" and which occurred on or about the same time as the plant was placed into Sch 9 of the Poisons Standard. The events identified by the applicant were the correction to the spelling of the scientific name of the plant in the applicant's medical records and the circumstances of his medical detention on 10 May 2001 the fact that the first known official reference to the plant in Australia was in a minute prepared by an officer of the TGA on 11 April 2001, the fact that the applicant was waiting for his paper entitled " Antidepressant effects of the herb salvia divinorum" to be published in the Journal of Clinical Psychopharmacology and a conversation the applicant had with a "US journalist". The coincidence of the timing of these events was said by the applicant to provide evidence that the plant was placed into Sch 9 for reasons other than health and safety. The complaint on this basis is entirely misconceived. In substance and in form, it seeks a review of the decision of the NDPSC. That is not open. Insofar as the applicant seems to suggest that HREOC took into account irrelevant considerations or was motivated by improper purposes, there is nothing to support the applicant's assertion that any of these events taken singularly or cumulatively motivated HREOC or, for that matter, the NDPSC. 36 The complaint of error of law fails.


case_title: Minister for Immigration and Ethnic Affairs v Teoh [1995] HCA 20 ; (1995) 183 CLR 273

case_text: It is unnecessary, in these circumstances, to embark upon the larger and more difficult question presented by the Commonwealth's submission that the construction of Art 18(3) of the ICCPR presents no question of law but presents only a question of fact. The corollary of the Commonwealth's submission was said to be that the proper construction of Art 18 was a matter for HREOC, was a question of fact which was at large and was therefore not a matter which was subject to judicial review under this ground of review. The correctness of that submission is not self-evident. Resolution of it would require examination and consideration of what question or questions of law are presented by the construction of s 20 of the HREOC Act when that section takes as its point of reference a human right as defined in the text of an international instrument, the ICCPR, set out in the Schedule to the Act and which, on the present state of the authorities, is not incorporated into municipal legislation: cf Minogue v Human Rights and Equal Opportunity Commission [1999] FCA 85 ; (1999) 84 FCR 438 at [34] - [38] and Minister of State for Immigration and Ethnic Affairs v Teoh [1995] HCA 20 ; (1995) 183 CLR 273 at 286-287 (per Mason CJ and Deane J).


case_text: In considering the applicant's various grounds of complaint, it is of the first importance to restate some of the well-established principles in this field. First, this is not a reconsideration of the merits of the decision. As was said by Brennan J in Attorney-General (NSW) v Quin [1990] HCA 21 ; (1990) 170 CLR 1 at 35-36: "The duty and jurisdiction of the court to review administrative action do not go beyond the declaration and enforcing of the law which determines the limits and governs the exercise of the repository's power. If, in so doing, the court avoids administrative injustice or error, so be it; but the court has no jurisdiction simply to cure administrative injustice or error. The merits of administrative action, to the extent that they can be distinguished from legality, are for the repository of the relevant power and, subject to political control, for the repository alone." See also NAIS v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 77 ; (2005) 80 ALJR 367 at [14] -16] and Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 271-272 (per Gummow J).


case_title: Minogue v Human Rights and Equal Opportunity Commission [1999] FCA 85 ; (1999) 84 FCR 438


case_title: NAIS v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 77 ; (2005) 80 ALJR 367


case_text: Section 5(1)(b) of the ADJR Act provides that a decision may be reviewed on the ground that " procedures that were required by law to be observed in connection with the making of the decision were not observed" . This ground of review has been described as 'procedural ultra vires'. It is concerned with determining the validity of an act done in breach of a statutory provision. Any distinction between directory and mandatory requirements is not relevant: Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28 ; (1998) 194 CLR 355 at 390-391. The acts to which this ground of review is directed are usually requirements laid down by an Act to reach a decision within a certain period of time or after a period of consultation. 51 The applicant has not identified a procedure prescribed by the HREOC Act which HREOC has not observed. Instead, under this heading, the applicant asserts that HREOC failed to perform its functions under ss 11(1)(f) and 20(1) of the HREOC Act in that it failed to give proper consideration to the evidence before it. In support of that contention, the applicant referred to what he described as 10 matters of "key evidence" that the President of HREOC had failed to consider. The matters were said by the applicant to be: (1) the plant was non addictive; (2) the plant was non toxic; (3) there were no health warnings in relation to the plant; (4) the lack of experience and expertise in the Department; (5) the Department breached s 52E(1)(b) of the TGA in that the Department failed to take into account " the risks and benefits associated with the use of a substance "; (6) the Department placed the plant into Schedule 9 for reasons other than public health and safety (7) possible bias in HREOC's decision making process. At the hearing, the applicant disavowed any suggestion that HREOC was biased; (8) the NDPSC was motivated by improper purposes including " religio-political factors" ; (9) evidence of "behind the scenes" discussions. Three examples were provided. First, an internal review document provided by the TGA in which a Dr P Chipman stated that " Customs might have expressed concern to the TGA by way of telephone calls and it is possible that telephone discussions between the two agencies may not have been filed" . The second example provided as evidence of possible collusion or interference in the decision making process was the " surprisingly prompt knowledge by the NDPSC ... of US Congressional Bill HR 5607 at the 15-17 October, 2002 meeting of the NDPSC, which Bill had only been introduced into Congress on the 10 th October 2002" . The third example was an assertion by the applicant that he " was advised by a US journalist that information pertaining to Australia's prohibition of [the plant] may have been leaked to the US Drug Enforcement Agency" and " [t]his may have occurred just prior to the unsuccessful US Bill HR 5607 which sought to prohibit [the plant] in that country" ; (10) the concern expressed in the Australian Parliament by Lindsay Tanner that the TGA was unable to identify an authorative scientific source for the plant when considering whether it should be included in Sch 9 and the fact that this was not referred to by HREOC in its decision. 52 The applicant's contention that HREOC failed to perform its functions under ss 11(1)(f) and 20(1) of the HREOC Act in that it failed to give proper consideration to the matters listed in the preceding paragraph establishes no basis for review under this heading. Neither the general allegation nor any of the specific matters identified by the applicant concerns a procedure prescribed by the HREOC Act which HREOC has not observed. That is reason enough to conclude that the asserted ground is not made out.


case_title: Waterford v Commonwealth [1987] HCA 25 ; (1987) 163 CLR 54

case_text: Thirdly, there is no error of law simply in a decision-maker making a wrong finding of fact: Waterford v Cth [1987] HCA 25 ; (1987) 163 CLR 54 at 77 (per Brennan J). Where different conclusions are reasonably open on the facts, the determination of which is the correct conclusion is a question of fact, not law: Williams v Williams Pty Ltd [1971] 1 NSWLR 547 at 557 (per Mason JA).


case_title: Williams v Williams Pty Ltd [1971] 1 NSWLR 547


case_text: In its written submissions CSR suggested that a document is discoverable if it is "reasonable to suppose" that it "contains information that may not must either directly or indirectly enable the party seeking the affidavit to advance [its] own case or damage that of [its] adversary": Commonwealth v Northern Land Council (1991) 30 FCR 1 at 23-4; and that a document will answer that description if it may fairly be expected to lead to a train of enquiry which may have either of those consequences. However, at the hearing of the motion, counsel for CSR conceded that the "train of enquiry" test, articulated in Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55, has now been superseded by O 15 of the Rules. General discovery will not routinely be ordered in every case. Practice Note 14 gives an indication at a practical level of how O 15 may operate. The Practice Note reflects a policy designed to reduce the burden of discovery. It notes that general discovery will not be ordered as a matter of course, and that orders for discovery will usually be limited to the documents required to be disclosed by O 15 r 2(3). O 15 r 2(3) provides that the documents required to be disclosed by a party making discovery are: (a) documents on which the party relies; and (b) documents that adversely affect the party's own case; and (c) documents that adversely affect another party's case; and (d) documents that support another party's case.


case_title: Compagnie Financiere et Commerciale du Pacifique v Peruvian Guano Company (1882) 11 QBD 55


case_title: Wellcome Foundation Limited v VR Laboratories (Aust) Property Limited [1981] HCA 12 ; (1981) 148 CLR 262

case_text: In Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited [1981] HCA 12 ; (1981) 148 CLR 262 at 270, Aickin J (with whom the other members of the Court agreed) said that where the patentability of an invention is challenged on the ground of obviousness: ... the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field. 23 It is the common general knowledge in Australia which is material to the question of obviousness and not the common general knowledge in the country of origin: Wellcome Foundation 148 CLR at 284 285. The issue of obviousness "must be judged at the priority date": at 283. It is generally considered appropriate for the patentee to give discovery of its research, development and experimental work in connection with the alleged inventions: Lubrizol Corporation Inc v Imperial Chemical Industries PLC (2000) 50 IPR 526 at [22] per Branson J; F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295 at 297 per Burchett J; Wellcome Foundation 148 CLR at 287 per Aickin J. Tamberlin J concluded in Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235 at [7] that the appropriate formulation in relation to discovery of research material is to extend it to research or studies "in the course of which the invention was made". 30 While it accepts that documents relevant to an alleged lack of inventive step and an absence of a manner of manufacture should be confined to those created before the priority date ( Wellcome Foundation ) [1981] HCA 12 ; 148 CLR 262, CSR submitted that no such temporal limitation should be imposed in relation to documents relating to the allegation of false suggestion or misrepresentation. It said that the documents to be discovered should extend to the date of the making of the alleged representations. Those representations were made on 2 and 22 February 1999 and 2 March 1999 (in relation to Rockwool Patent #1) and 9 January 2004 (in relation to Rockwool Patent #2).


case_text: It is the common general knowledge in Australia which is material to the question of obviousness and not the common general knowledge in the country of origin: Wellcome Foundation 148 CLR at 284 285. The issue of obviousness "must be judged at the priority date": at 283. It is generally considered appropriate for the patentee to give discovery of its research, development and experimental work in connection with the alleged inventions: Lubrizol Corporation Inc v Imperial Chemical Industries PLC (2000) 50 IPR 526 at [22] per Branson J; F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295 at 297 per Burchett J; Wellcome Foundation 148 CLR at 287 per Aickin J. Tamberlin J concluded in Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235 at [7] that the appropriate formulation in relation to discovery of research material is to extend it to research or studies "in the course of which the invention was made".


case_text: It is the common general knowledge in Australia which is material to the question of obviousness and not the common general knowledge in the country of origin: Wellcome Foundation 148 CLR at 284 285. The issue of obviousness "must be judged at the priority date": at 283. It is generally considered appropriate for the patentee to give discovery of its research, development and experimental work in connection with the alleged inventions: Lubrizol Corporation Inc v Imperial Chemical Industries PLC (2000) 50 IPR 526 at [22] per Branson J; F Hoffmann-La Roche AG v Chiron Corporation (2000) 171 ALR 295 at 297 per Burchett J; Wellcome Foundation 148 CLR at 287 per Aickin J. Tamberlin J concluded in Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235 at [7] that the appropriate formulation in relation to discovery of research material is to extend it to research or studies "in the course of which the invention was made". 28 Beyond the issue of research and development, Burchett J also held in Hoffmann-La Roche 171 ALR at [16] that "documents concerning any test to evaluate or determine the validity of the patent in any respect falling within any of the grounds in issue upon the pleadings" should be discovered.


case_title: Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [2001] FCA 235


case_text: In relation to manner of manufacture, the Full Court decisions in Bristol-Myers Squibb Company v FH Faulding [2000] FCA 316 ; (2000) 97 FCR 524 and Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 establish that a party challenging the validity of a patent on this ground must demonstrate such invalidity by reference to matters that are apparent on the face of the specification, in light of the common general knowledge: see also Commissioner of Patents v Microcell Limited [1958] HCA 58 ; (1959) 102 CLR 232; NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited [1995] HCA 15 ; (1995) 183 CLR 655. Rockwool, relying upon these cases, said it should not be required to discover any documents solely on the ground that they are relevant to the manner of manufacture. 26 Philips [1995] HCA 15 ; 183 CLR 655 was considered by the Full Federal Court in Bristol-Myers [2000] FCA 316 ; 97 FCR 524, where Black CJ and Lehane J said the following in relation to the requirement that a patentable invention be a manner of new manufacture (at [19] and [30]): A "patentable invention" must be an "invention" as defined, and thus a "manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies " The primary judge held, following NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655, that the opening words of s 18(1) impose a threshold requirement of inventiveness: a requirement independent of the specific provisions of s 18(1)(b) as to novelty and an inventive step, judged by comparison with the prior art base as it existed before the priority date. His Honour held that the claimed invention... did not meet that threshold requirement. He held also that it did not involve an inventive step when compared with the prior art base. His Honour's conclusions were based upon two findings. One of them involved an application of the well known principle which denies patentability to a claimed invention which is "nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable": Commissioner of Patents v Microcell Ltd [1958] HCA 58 ; (1959) 102 CLR 232 at 251... The majority of the High Court in Philips explicitly say that their observations about a case where want of the threshold requirement of inventiveness is not apparent on the face of the specification are not necessary to their decision. And, in discussing the commencement point (what is "known") of the inquiry about inventiveness, their Honours refer only to the Microcell principle. In our view, in the light of the authorities to which we have referred, Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step... then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as "known". If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court or the Commissioner would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips . If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell. 39 It said that in light of the decisions in Bristol-Myers [2000] FCA 316 ; 97 FCR 524 and Merck [2006] FCAFC 91 ; 154 FCR 31, any documents relating to Rockwool's internal research programs, particularly on fibre types other than the HT fibres the subject of the Rockwool patents, cannot be relevant to the issue of manner of manufacture.


case_text: In relation to manner of manufacture, the Full Court decisions in Bristol-Myers Squibb Company v FH Faulding [2000] FCA 316 ; (2000) 97 FCR 524 and Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 establish that a party challenging the validity of a patent on this ground must demonstrate such invalidity by reference to matters that are apparent on the face of the specification, in light of the common general knowledge: see also Commissioner of Patents v Microcell Limited [1958] HCA 58 ; (1959) 102 CLR 232; NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited [1995] HCA 15 ; (1995) 183 CLR 655. Rockwool, relying upon these cases, said it should not be required to discover any documents solely on the ground that they are relevant to the manner of manufacture. 39 It said that in light of the decisions in Bristol-Myers [2000] FCA 316 ; 97 FCR 524 and Merck [2006] FCAFC 91 ; 154 FCR 31, any documents relating to Rockwool's internal research programs, particularly on fibre types other than the HT fibres the subject of the Rockwool patents, cannot be relevant to the issue of manner of manufacture.


case_text: In relation to manner of manufacture, the Full Court decisions in Bristol-Myers Squibb Company v FH Faulding [2000] FCA 316 ; (2000) 97 FCR 524 and Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 establish that a party challenging the validity of a patent on this ground must demonstrate such invalidity by reference to matters that are apparent on the face of the specification, in light of the common general knowledge: see also Commissioner of Patents v Microcell Limited [1958] HCA 58 ; (1959) 102 CLR 232; NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited [1995] HCA 15 ; (1995) 183 CLR 655. Rockwool, relying upon these cases, said it should not be required to discover any documents solely on the ground that they are relevant to the manner of manufacture. 26 Philips [1995] HCA 15 ; 183 CLR 655 was considered by the Full Federal Court in Bristol-Myers [2000] FCA 316 ; 97 FCR 524, where Black CJ and Lehane J said the following in relation to the requirement that a patentable invention be a manner of new manufacture (at [19] and [30]): A "patentable invention" must be an "invention" as defined, and thus a "manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies " The primary judge held, following NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655, that the opening words of s 18(1) impose a threshold requirement of inventiveness: a requirement independent of the specific provisions of s 18(1)(b) as to novelty and an inventive step, judged by comparison with the prior art base as it existed before the priority date. His Honour held that the claimed invention... did not meet that threshold requirement. He held also that it did not involve an inventive step when compared with the prior art base. His Honour's conclusions were based upon two findings. One of them involved an application of the well known principle which denies patentability to a claimed invention which is "nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable": Commissioner of Patents v Microcell Ltd [1958] HCA 58 ; (1959) 102 CLR 232 at 251... The majority of the High Court in Philips explicitly say that their observations about a case where want of the threshold requirement of inventiveness is not apparent on the face of the specification are not necessary to their decision. And, in discussing the commencement point (what is "known") of the inquiry about inventiveness, their Honours refer only to the Microcell principle. In our view, in the light of the authorities to which we have referred, Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step... then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as "known". If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court or the Commissioner would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips . If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell.