case_text: Conde commenced proceedings in the Federal Magistrates Court to have the bankruptcy notice set aside and interim orders granting an extension of time for him to comply with the bankruptcy notice. The matter came before Wilson FM, who dismissed the application to set aside the bankruptcy notice ( Conde v Hunter [2009] FMCA 751). In his reasons for decision, his Honour found in summary as follows: Mr Conde made no attack on the form of the bankruptcy notice itself. Although Mr Conde contended that Mr Hunter did not have a final judgment or final order (the execution of which had not been stayed in terms of s 40(1)(g) of the Bankruptcy Act 1966 (Cth) (" Bankruptcy Act ")) the argument was misconceived. His Honour continued: A final order is one that disposes finally of an issue between the parties. The concept of what is a final order is discussed in cases such as Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423. In this case, the issue was who should pay the costs of the application to set aside the applicant's pleading. The order made by Judge Searles was a final order, insofar as it concerned that issue. His Honour ordered that the applicant pay the respondent's costs. There is no merit in the first ground sought to be advanced by the applicant. (at [3]) Notwithstanding Mr Conde's prospective challenge to Orders 3 and 4 of Searles DCJ, it was clear on the material before his Honour that: because the order sought to be challenged on appeal was only as to costs, leave to appeal was required by the Court of Appeal; the application for leave to appeal was filed many months out of time and therefore required an order from the Court of Appeal granting an extension of time. The Federal Magistrate noted that no contest had been made against the Orders 1 and 2 made by Searles DCJ, namely to strike out Mr Conde's amended statement of claim and give leave to Mr Conde to replead in that Court. The Federal Magistrate considered that, in those circumstances and having read Mr Conde's application to the Court of Appeal and supporting affidavit, that application to the Court of Appeal has no prospects of success. It followed that no good reason was shown for either setting aside the bankruptcy notice or extending time for compliance with it to await the outcome in the Queensland Court of Appeal. Accordingly the Federal Magistrate dismissed the application to set aside the bankruptcy notice. Appeal from decision of the Federal Magistrate In this context a "final order" is an order which "finally disposes of the rights of the parties": Bozson v Altrincham Urban District Council [1903] 1 KB 547 at 548-549, Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 per Taylor J at 439-440 (Owen J concurring), Windeyer J at 443-444; Licul v Corney [1976] HCA 6 ; (1976) 50 ALJR 439 at 444; Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 at 253-254. It is clear however that an order may in one sense be interlocutory but in another sense final: re Black ex parte Jeffery (1932) 4 ABC 157 at 161. There is long-standing authority that a costs order made at an interlocutory stage during proceedings is nonetheless a final order for the purposes of the Bankruptcy Act : re Black ex parte Jeffery (1932) 4 ABC 157 , re McAlister ex parte McAlister (1936) 8 ABC 283 , Kayo Contractors v Fernandez (1984) 71 FLR 34 and Re Gibbs; Ex parte Triscott (1995) 65 FCR 80. This will be the case only if a certificate of taxation has been issued: Stec v Orfanos [1999] FCA 457 at [18] , Franks v Warringah Council, in the matter of Franks [2003] FCA 1047.


case_outcome: cited

case_text: application for leave to appeal from the order to which a bankruptcy notice relates can constitute "proceedings to set aside a judgment or order in respect of which the bankruptcy notice was issued" for the purposes of s 41(6A) and (6C) ( Jenkins v National Australia Bank Ltd [1999] FCA 1758 , Conway v Jackson [2001] FCA 230 ; (2001) 107 FCR 201 at [20] ). However the exercise of the Court's power under s 41(6A) to extend time for compliance with the bankruptcy notice is discretionary: Conway v Jackson [2001] FCA 230 ; (2001) 107 FCR 201. In this case the Federal Magistrate refused to grant an order extending time to Mr Conde to comply with the bankruptcy notice. This is because, after consideration of the nature of the prospective application to the Court of Appeal of Queensland, the Federal Magistrate was satisfied that Mr Conde had no prospects of success in relation to either his application for an extension of time to apply for leave to appeal from the orders of Searles DCJ, or the actual application for leave to appeal. As is well known from the decision of the High Court in House v The King [1936] HCA 40 ; (1936) 55 CLR 499 at 504 in respect of appeals against the exercise of judicial discretion: It is not enough that the judges composing the appellate court consider that, if they had been in the position of the primary judge, they would have taken a different course. It must appear that some error has been made in exercising the discretion. If the judge acts upon a wrong principle, if he allows extraneous or irrelevant matters to guide or affect him, if he mistakes the facts, if he does not take into account some material consideration, then his determination should be reviewed and the appellate court may exercise its own discretion in substitution for his if it has the materials for doing so. It may not appear how the primary judge has reached the result embodied in his order, but, if upon the facts it is reasonable or plainly unjust, the appellate court may infer that in some way there has been a failure properly to exercise the discretion which the law reposes in the court of first instance. In such a case, although the nature of the error may not be discoverable, the exercise of the discretion is reviewed on the ground that a substantial wrong has in fact occurred. (at 504-505) In neither his notice of appeal nor his submissions has Mr Conde disputed his Honour's conclusions with respect to Mr Conde's prospects of success in his applications to the Court of Appeal of Queensland. It is clear that his Honour considered whether he should make an order extending time for Mr Conde to comply with the bankruptcy notice, and concluded that an application for an extension of time was unmerited in the circumstances. In light of the principles articulated in House v The King [1936] HCA 40 ; (1936) 55 CLR 499 I am unable to find that his Honour failed to properly exercise the discretion vested in him by s 41(6A). Section 41(6C) was of no apparent relevance in relation to Mr Conde's application before his Honour. In my view Mr Conde's grounds of appeal with respect to s 41(6A) and (6C) have no merit. Ground 9: Alleged conduct of Mr Hunter's solicitor Mr Conde's allegations as found in ground 9 of his notice of appeal are not supported by any evidence. In my view they are scandalous and vexatious as claimed by Mr Hunter. I also do not see the relevance of the allegations to the question whether the bankruptcy notice served on Mr Conde should be set aside. In my view this ground of appeal has no merit. Ground 10: The bankruptcy notice prejudices or delays the fair trial or proceedings in the State Courts


case_text: usual rule is that costs follow the event; accordingly the appropriate order is that Mr Conde bear Mr Hunter's costs in respect of this notice of motion. Mr Hunter has sought an order that the costs be awarded on an indemnity basis, however I am not prepared to make an order to that effect. The purpose of an order for costs is to indemnify or compensate the person in whose favour it is made, not to punish the person against whom it is made: Latoudis v Casey [1990] HCA 59 ; (1990) 170 CLR 534. A well-known summary of the principles relevant to the exercise of judicial discretion to award indemnity costs can be found in Colgate-Palmolive v Cussons [1993] FCA 536 ; (1993) 46 FCR 225 at 231-234 and InterTAN Inc v DSE (Holdings) Pty Ltd [2005] FCAFC 54 at [11] . Circumstances in which an award of indemnity costs may be warranted include commencement of proceedings where the litigant properly advised should have known there was no chance of success, allegations of fraud by the litigant knowing them to be false, evidence of particular misconduct in the litigant, and where the justice of the case justifies such an order. In this case, while I have found that Mr Conde's grounds of appeal have no arguable basis, it does not automatically follow that he should be liable to Mr Hunter for indemnity costs. The fact that a number of his claims required some consideration, and the absence of any apparent delinquency or extraneous or improper purpose in Mr Conde, in my view warrant an order for party-party costs only.


case_text: application for leave to appeal from the order to which a bankruptcy notice relates can constitute "proceedings to set aside a judgment or order in respect of which the bankruptcy notice was issued" for the purposes of s 41(6A) and (6C) ( Jenkins v National Australia Bank Ltd [1999] FCA 1758 , Conway v Jackson [2001] FCA 230 ; (2001) 107 FCR 201 at [20] ). However the exercise of the Court's power under s 41(6A) to extend time for compliance with the bankruptcy notice is discretionary: Conway v Jackson [2001] FCA 230 ; (2001) 107 FCR 201. In this case the Federal Magistrate refused to grant an order extending time to Mr Conde to comply with the bankruptcy notice. This is because, after consideration of the nature of the prospective application to the Court of Appeal of Queensland, the Federal Magistrate was satisfied that Mr Conde had no prospects of success in relation to either his application for an extension of time to apply for leave to appeal from the orders of Searles DCJ, or the actual application for leave to appeal. As is well known from the decision of the High Court in House v The King [1936] HCA 40 ; (1936) 55 CLR 499 at 504 in respect of appeals against the exercise of judicial discretion: It is not enough that the judges composing the appellate court consider that, if they had been in the position of the primary judge, they would have taken a different course. It must appear that some error has been made in exercising the discretion. If the judge acts upon a wrong principle, if he allows extraneous or irrelevant matters to guide or affect him, if he mistakes the facts, if he does not take into account some material consideration, then his determination should be reviewed and the appellate court may exercise its own discretion in substitution for his if it has the materials for doing so. It may not appear how the primary judge has reached the result embodied in his order, but, if upon the facts it is reasonable or plainly unjust, the appellate court may infer that in some way there has been a failure properly to exercise the discretion which the law reposes in the court of first instance. In such a case, although the nature of the error may not be discoverable, the exercise of the discretion is reviewed on the ground that a substantial wrong has in fact occurred. (at 504-505)


case_text: this context a "final order" is an order which "finally disposes of the rights of the parties": Bozson v Altrincham Urban District Council [1903] 1 KB 547 at 548-549, Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 per Taylor J at 439-440 (Owen J concurring), Windeyer J at 443-444; Licul v Corney [1976] HCA 6 ; (1976) 50 ALJR 439 at 444; Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 at 253-254. It is clear however that an order may in one sense be interlocutory but in another sense final: re Black ex parte Jeffery (1932) 4 ABC 157 at 161. There is long-standing authority that a costs order made at an interlocutory stage during proceedings is nonetheless a final order for the purposes of the Bankruptcy Act : re Black ex parte Jeffery (1932) 4 ABC 157 , re McAlister ex parte McAlister (1936) 8 ABC 283 , Kayo Contractors v Fernandez (1984) 71 FLR 34 and Re Gibbs; Ex parte Triscott (1995) 65 FCR 80. This will be the case only if a certificate of taxation has been issued: Stec v Orfanos [1999] FCA 457 at [18] , Franks v Warringah Council, in the matter of Franks [2003] FCA 1047.


case_title: Licul v Corney [1976] HCA 6 ; (1976) 50 ALJR 439


case_text: this case however Mr Hunter has sought an order striking out Mr Conde's notice of appeal. As a general proposition the Court may strike out a notice of appeal if the notice does not disclose any arguable basis for granting the appeal: cf Patten v New Holland Credit Australia Pty Ltd [2006] FCA 1724. Such an order is clearly by way of summary judgment. In my view the jurisdiction of the Court under s 25(2B)(aa) contemplates an order striking out a notice of appeal. At the hearing before me Mr Macklin on behalf of Mr Hunter stated that he also relied on s 31A of the Federal Court Act. Section 31A provides that the Court may give judgment if, inter alia , the Court is satisfied that a party has no reasonable prospect of successfully prosecuting a proceeding (s 31A(2)(b)). For the purposes of that section, a proceeding need not be hopeless or bound to fail for it to have no reasonable prospect of success: s 31A(3).


case_text: failure of a Court to consider an issue before it and supporting submissions may constitute a miscarriage of justice ( QBE Insurance Ltd v Switzerland Insurance Workers Compensation (NSW) Ltd [1996] HCA 1 ; (1996) 134 ALR 433) I can draw no inference that his Honour had regard only to the submissions filed by Mr Hunter and ignored either the substance of Mr Conde's case or the provisions of the Bankruptcy Act and rules. It is clear from reviewing the decision of the Federal Magistrate ( Conde v Hunter [2009] FMCA 751) that his Honour:


case_text: Conde correctly submitted that a judge may be disqualified in the event of either actual bias or the reasonable apprehension of bias. However bias is a very serious allegation which must be clearly articulated and proved by admissible evidence. Without more, the fact that a decision records findings adverse to the complainant is insufficient to establish bias: SBBS v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 361 ; (2002) 194 ALR 749 at 756, VFAB v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 872 ; (2003) 131 FCR 102. This is particularly so where the Court's findings were open on the material before it: Minister for Immigration and Multicultural and Indigenous Affairs v Jia Legeng [2001] HCA 17 ; (2001) 205 CLR 507 at 519 and 531-532.


case_text: question arises whether, in considering s 25(2B)(aa), it is necessary for the Court to also have recourse to s 31A. In a number of cases the Court has exercised power pursuant to s 25(2B)(aa) and given summary judgment without reference to s 31A: Druett v Department of Families, Community Services & Indigenous Affairs [2007] FCA 995 , Zambini v Secretary, Department of Employment and Workplace Relations [2006] FCA 1773 , Dunstan v Human Rights and Equal Opportunity Commission [2007] FCA 1326 , Rana v University of Adelaide (No 2) [2008] FCA 941. However in other cases the Court has linked the power under s 25(2B)(aa) to the jurisdiction of the Court under s 31A and summarily dismissed an appeal on the basis that the appellant had no reasonable prospect of success in prosecuting its grounds of appeal: Genovese v BGC Construction Pty Ltd [2007] FCA 923 , Bishop v Secretary, Department of Education, Employment and Workplace Relations [2008] FCA 1118.


case_text: helpful comparison may be drawn between the facts of the case before me, and those in an English case Re a Debtor (No 5982 of 1979) (1981) 78 Law Society Gazette Reports 631 (Brightman and O'Connor LJJ and Fox J, 30 January 1981). In Re a Debtor bankruptcy notices issued by petitioning creditors were based, inter alia , on orders for costs granted to them following successful summonses to strike out an application brought against them by the debtor. Certificates had been issued by the taxing officer in respect of the costs awarded. Brightman LJ, with whom O'Connor LJ and Fox J agreed, said that: the principal issue was whether the orders for costs read with the taxing officer's certificates were final orders at the date of issue of the bankruptcy notices. The debtor started with the proposition that the order striking out his cause of action was interlocutory for the purposes of s.31 of the Supreme Court of Judicature (Consolidation) Act 1925 . But it did not follow, as the debtor contended, that the orders for costs contained in the master's order and the judge's order must also be interlocutory. In his Lordship's view, in each case the order for taxation and payment of costs read with the taxing officer's certificate was a final order. (at 631) In this case the costs order made by Searles DCJ was clearly a final order for the purposes of s 40(1)(g). It follows that there was no error in the decision of the Federal Magistrate in respect of this finding, and accordingly there is no merit in Mr Conde's grounds of appeal in respect of this issue. Ground 2: The Federal Magistrate failed to identify the relevant legislation on which he relied to dismiss Mr Conde's application In my view this ground of appeal has no merit. In his judgment the Federal Magistrate specifically referred to the Bankruptcy Act and s 40(1)(g) upon which his Honour relied. His Honour's reasons for dismissing Mr Conde's application were clear, and identified relevant principles. Grounds 3, 4: The Federal Magistrate took into account only Mr Hunter's submissions, and failed to take into consideration Mr Conde's application and affidavit or the relevant legislation Second, as was observed in Re a Debtor (No 5982 of 1979) at 631 the mere fact that an order is subject to a pending appeal is not a reason for treating it as other than a final order and did not prevent the issue of a bankruptcy notice. Third, the Bankruptcy Act allows a petitioning creditor to apply for the issue of a bankruptcy notice based on a final judgment or final order. As I have already observed, it is clear on the material before the Court that the bankruptcy notice served on Mr Conde was founded on a final order of the District Court of Queensland, and properly issued. The fact that there may be related proceedings in other Courts does not prevent the proper issue of a bankruptcy notice and steps taken in pursuance of that notice. Ground 13: Whether there were clear errors of law in the proceedings that could have materially affected his Honour's decision I agree with Mr Hunter that ground 13 is vague and non-specific. In my view it has no merit. Ground 14: The Federal Magistrate was biased against Mr Conde Mr Conde submitted that the Federal Magistrate was not open-minded in hearing the application to set aside the bankruptcy notice, and was biased.


case_title: re Black ex parte Jeffery (1932) 4 ABC 157


case_title: Re Gibbs; Ex parte Triscott (1995) 65 FCR 80


case_title: re McAlister ex parte McAlister (1936) 8 ABC 283


case_title: SBBS v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 361 ; (2002) 194 ALR 749


case_title: Stec v Orfanos [1999] FCA 457


case_title: VFAB v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 872 ; (2003) 131 FCR 102


case_title: Zambini v Secretary, Department of Employment and Workplace Relations [2006] FCA 1773


case_text: The Federal Magistrate considered the second claimed breach of s 424A(1) of the Act that country information was not put to the appellant. He held, correctly, that the country information fell within the exception set out in s 424A(3)(b). His Honour accepted that the Tribunal relied in part on the information that the appellant left China legally, that the information was provided in the protection visa application and that the appellant's reference in his review application to the statement in the protection visa application did not refer to that information. However, his Honour found the appellant did provide the information that he left China legally at the hearing before the Tribunal. The Tribunal had asked specific questions about the appellant leaving China legally and the appellant had answered those questions. He held that the appellant would have clearly understood the nature and importance of what he was saying and that he had not only acknowledged the information in his protection visa application but "volunteered" that information as to how he left legally. Accordingly he found that the information was excepted by s 424A(3)(b) of the Act . In so finding he considered relevant authority including particularly: NAZY v Minister for Immigration and Multicultural and Indigenous Affairs (2005) 87 ALD 357; SZDPY v Minister for Immigration and Multicultural Affairs [2006] FCA 627 ; SZEEU v Minister for Immigration and Multicultural Affairs [2006] FCAFC 2 ; (2006) 150 FCR 214.


case_outcome: referred to

case_text: The present case is on all fours with NBKT v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 195. The appellant in NBKT provided written submissions to the Tribunal in support of her application for review (which consisted in a letter from her advisers and a statement by herself), expanding upon the claims stated in her protection visa application and introducing further claims. In NBKT Young J (with whom Gyles and Stone JJ concurred) held that by filing written submissions with the Tribunal that expressly referred to and incorporated the statement of grounds which were attached to her visa application, the appellant invited the Tribunal to refer to her protection visa application. There was therefore little doubt that she intended the Tribunal to look at the visa application and its attachments. Young J held that this was a sufficient basis for the conclusion that the information was given by the appellant in that case for the purposes of the review and was excepted by s 424A(3)(b) from the duty of disclosure. 38 The appellant's statement in his application for review and in his written submissions indicate he intended the Tribunal to look at the visa application and the statement in it and to supplement that statement by reference to the application for review and written submissions. 41 In NBKT Young J considered in obiter whether testimony at the Tribunal hearing was given by an applicant for the purposes of s 424A(3)(b) in circumstances where it consisted in responses to questions asked by the Tribunal member. Young J agreed with the approach taken by Heerey J in VWBF . 42 NBKT is Full Court authority that where an applicant adopts a protection visa application at a Tribunal hearing, whether by volunteering such adoption, or in answer to a question, the applicant gives the information in the protection visa application to the Tribunal. 43 The appellant claims that the Tribunal should have sought evidence from, or relating to, Mr Meng, his former migration agent, because he was responsible for entering incorrect information in the statement in the protection visa application. 44 For the reasons set out above the Tribunal did not have a duty to obtain evidence. There could be no non-compliance with s 424 of the Act in respect of the Tribunal's failure to obtain evidence from or about Mr Meng. 49 I am of the opinion that the appellant's express invitation to the Tribunal, in his application for review ("Section D Your reasons for making the application") to "Please read my statement submitted to the Immigration Department" constituted that statement in its entirety as "information" which the appellant "gave" for the purpose of his application. Accordingly s 424A(3)(b) of the Act had application: NBKT v Minister for Immigration and Multicultural and Indigenous Affairs at [63]. Furthermore his statement in his written submissions to the Tribunal, referred to above that he would like to provide further information, underlined his intention that the Tribunal should consider his earlier statement for the purposes of his application.


case_title: SZDPY v Minister for Immigration and Multicultural Affairs [2006] FCA 627


case_text: Although it is not necessary in the present case in order to establish the application of s 424A(3)(b) , the answers given by the appellant in the course of the oral hearing before the Tribunal also rendered the protection visa application information which the appellant "gave" the Tribunal for the purposes of the review. The appellant gave oral testimony that the statement in the visa application might be inaccurate as well as incomplete. He said he had not read that statement. However he relied on his written submissions to correct the statement if it was inconsistent with the written submissions, and also sought to supplement the statement generally. This testimony also supports the inference that the appellant intended the written submissions to be read with the statement in the protection visa application. In SZDXA v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FMCA 842 an appeal determined in SZEEU v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 2 ; (2006) 150 FCR 214 the appellant submitted that his statement, but not the balance of the visa application form or the copied pages of the passport, had been incorporated into the application for review by the Tribunal. The information critical to succeeding on the basis of non-compliance with s 424A was contained in the copied pages of the passport rather than in the statement. Moore J, with whom Weinberg J and Allsop J agreed, held that the appellant had not established the fact that the copies pages were not incorporated by having been enclosed with the application for review. Moore J also held that information about the appellant having a business visa and travelling for work interests fell within s 424A(3)(b) when that was information given by the appellant in evidence before the Tribunal. 40 The approach taken in SZEEU to the SZEEU appeal itself could be regarded as inconsistent, indicating that Moore J considered that an applicant's adoption at a Tribunal hearing of what is contained in his protection visa application does not transform its contents into information provided by the applicant in his application for review. In VWBF v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 851 Heerey J considered the SZDXA and SZEEU appeals and concluded that information is given for the purposes of s 424A(3)(b) if the application conveys to the Tribunal, whether in answer to a question posed by the Tribunal, or by volunteering the information to the Tribunal. Where an applicant says at the hearing that he relies on what was said in his protection visa application then what is in the protection visa application is information given for the purposes of the application for review, within s 424A(3)(b).


case_text: The Federal Magistrate considered the second claimed breach of s 424A(1) of the Act that country information was not put to the appellant. He held, correctly, that the country information fell within the exception set out in s 424A(3)(b). His Honour accepted that the Tribunal relied in part on the information that the appellant left China legally, that the information was provided in the protection visa application and that the appellant's reference in his review application to the statement in the protection visa application did not refer to that information. However, his Honour found the appellant did provide the information that he left China legally at the hearing before the Tribunal. The Tribunal had asked specific questions about the appellant leaving China legally and the appellant had answered those questions. He held that the appellant would have clearly understood the nature and importance of what he was saying and that he had not only acknowledged the information in his protection visa application but "volunteered" that information as to how he left legally. Accordingly he found that the information was excepted by s 424A(3)(b) of the Act . In so finding he considered relevant authority including particularly: NAZY v Minister for Immigration and Multicultural and Indigenous Affairs (2005) 87 ALD 357; SZDPY v Minister for Immigration and Multicultural Affairs [2006] FCA 627 ; SZEEU v Minister for Immigration and Multicultural Affairs [2006] FCAFC 2 ; (2006) 150 FCR 214. 39 Although it is not necessary in the present case in order to establish the application of s 424A(3)(b) , the answers given by the appellant in the course of the oral hearing before the Tribunal also rendered the protection visa application information which the appellant "gave" the Tribunal for the purposes of the review. The appellant gave oral testimony that the statement in the visa application might be inaccurate as well as incomplete. He said he had not read that statement. However he relied on his written submissions to correct the statement if it was inconsistent with the written submissions, and also sought to supplement the statement generally. This testimony also supports the inference that the appellant intended the written submissions to be read with the statement in the protection visa application. In SZDXA v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FMCA 842 an appeal determined in SZEEU v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 2 ; (2006) 150 FCR 214 the appellant submitted that his statement, but not the balance of the visa application form or the copied pages of the passport, had been incorporated into the application for review by the Tribunal. The information critical to succeeding on the basis of non-compliance with s 424A was contained in the copied pages of the passport rather than in the statement. Moore J, with whom Weinberg J and Allsop J agreed, held that the appellant had not established the fact that the copies pages were not incorporated by having been enclosed with the application for review. Moore J also held that information about the appellant having a business visa and travelling for work interests fell within s 424A(3)(b) when that was information given by the appellant in evidence before the Tribunal. 40 The approach taken in SZEEU to the SZEEU appeal itself could be regarded as inconsistent, indicating that Moore J considered that an applicant's adoption at a Tribunal hearing of what is contained in his protection visa application does not transform its contents into information provided by the applicant in his application for review. In VWBF v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 851 Heerey J considered the SZDXA and SZEEU appeals and concluded that information is given for the purposes of s 424A(3)(b) if the application conveys to the Tribunal, whether in answer to a question posed by the Tribunal, or by volunteering the information to the Tribunal. Where an applicant says at the hearing that he relies on what was said in his protection visa application then what is in the protection visa application is information given for the purposes of the application for review, within s 424A(3)(b).


case_text: The approach taken in SZEEU to the SZEEU appeal itself could be regarded as inconsistent, indicating that Moore J considered that an applicant's adoption at a Tribunal hearing of what is contained in his protection visa application does not transform its contents into information provided by the applicant in his application for review. In VWBF v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 851 Heerey J considered the SZDXA and SZEEU appeals and concluded that information is given for the purposes of s 424A(3)(b) if the application conveys to the Tribunal, whether in answer to a question posed by the Tribunal, or by volunteering the information to the Tribunal. Where an applicant says at the hearing that he relies on what was said in his protection visa application then what is in the protection visa application is information given for the purposes of the application for review, within s 424A(3)(b). 41 In NBKT Young J considered in obiter whether testimony at the Tribunal hearing was given by an applicant for the purposes of s 424A(3)(b) in circumstances where it consisted in responses to questions asked by the Tribunal member. Young J agreed with the approach taken by Heerey J in VWBF .


case_text: authorities reveal that an applicant for a protection visa must advance whatever evidence or arguments he or she wishes to rely on in support of his or her claim for a protection visa ( Abebe v The Commonwealth [1999] HCA 14 ; (1999) 197 CLR 510 at [189] ; NARE of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCAFC 135 at [15] ). As Wilcox J observed in Prasad v Minister for Immigration & Ethnic Affairs (1985) 6 FCR 155 at 169-170: 'The circumstances under which a decision will be invalid for failure to inquire are, I think, strictly limited. It is no part of the duty of the decision-maker to make the applicant's case for him. It is not enough that the court find that the sounder course would have been to make inquiries.'


case_text: important aspect of the inquiry as to whether it would be expedient in the interests of justice to allow the appellant to raise before this Court an issue not raised before the Federal Magistrates Court is the apparent merit of the issue. The appellant placed reliance on the High Court decisions in Pyrenees Shire Council v Day [1998] HCA 3 ; (1998) 192 CLR 330 and Crimmins v Stevedoring Industry Finance Committee [1999] HCA 59 ; (1999) 167 ALR 1. These cases concerned the law of negligence; it was in that private law context that the High Court gave consideration in each case to whether an affirmative common law duty of care required a statutory or public authority to exercise a power. The present case by contrast concerns public law principles of judicial review.


case_outcome: applied

case_text: the appellant's supplementary written submissions do not suggest that the Tribunal knew or ought to have known that the appellant had approached or would approach the Jordanian Embassy in Canberra. It was at the heart of the appellant's claim to be entitled to a protection visa that he was unable or, owing to a well-founded fear of being persecuted, was unwilling to avail himself of diplomatic or consular protection extended by Jordan to its nationals in Australia ( Minister for Immigration & Multicultural Affairs v Khawar [2002] HCA 14 ; (2002) 210 CLR 1 at [17] - [21] ). In the circumstances, unless advised to the contrary, the Tribunal might reasonably regard it as unlikely that the appellant had approached or would approach the Jordanian Embassy for any reason. It is also understandable that the appellant's supplementary submissions do not suggest that the Tribunal knew, or ought to have known, that he had arranged, or would arrange, to obtain a new Jordanian passport issued in Jordan at a time when he was in Australia. The appellant accepts that it was unwise and foolish for him to have taken this step. The fresh grounds of appeal upon which the appellant's supplementary submissions indicate that he wishes to rely are all dependent on the contention that the decision of the Tribunal is affected by error because it failed of its own motion to investigate whether the expiry of the appellant's travel documents meant that the appellant had a well-founded fear of persecution for reason of political opinion in Jordan.


case_text: the appeal was first called for hearing the appellant handed to the Court written submissions which he said had been prepared for him by a lawyer. The content and language of the written submissions are consistent with their having been prepared by a lawyer notwithstanding that they contain the assertion 'I have been unable to obtain legal assistance' and are signed by the appellant personally. For the reason which I gave in NADG of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2002] FCA 893 at [8] - [11] , I consider that if the written submissions were prepared by a lawyer they should have been signed by that lawyer. The written submissions identify three purported errors said to affect the judgment of the Federal Magistrates Court. As the first respondent's legal representative had received no notice of the appellant's intention to rely on these purported errors it was necessary to adjourn the appeal hearing. The first respondent's solicitors thereafter filed written submissions in response to those handed to the Court by the appellant. When the hearing of the appeal resumed the appellant was represented by counsel but his counsel was not the person who had prepared his written submissions.


case_text: authorities reveal that an applicant for a protection visa must advance whatever evidence or arguments he or she wishes to rely on in support of his or her claim for a protection visa ( Abebe v The Commonwealth [1999] HCA 14 ; (1999) 197 CLR 510 at [189] ; NARE of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCAFC 135 at [15] ). As Wilcox J observed in Prasad v Minister for Immigration & Ethnic Affairs (1985) 6 FCR 155 at 169-170: 'The circumstances under which a decision will be invalid for failure to inquire are, I think, strictly limited. It is no part of the duty of the decision-maker to make the applicant's case for him. It is not enough that the court find that the sounder course would have been to make inquiries.' It would not be appropriate to grant the appellant leave to raise the issue simply because, as he contended, it would be just to allow him to do so (see NARE of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs at [16]). The decision of the Tribunal may only be set aside for jurisdictional error. The Tribunal did not make a jurisdictional error by failing to consider a claim which the appellant did not make. In all of the circumstances I conclude that the appellant should not be granted leave to raise before this Court the issue of whether the Tribunal was under a duty to make enquiries about whether the expiry of the appellant's passport was likely to lead to a chain of events resulting in his being persecuted for reasons of imputed political opinion should he return to Jordan. The affidavit of the appellant is therefore not admissible as its contents are irrelevant to any issue to be determined on this appeal (see [15] above). I turn, then, to the original written submissions of the appellant.


case_title: Prasad v Minister for Immigration & Ethnic Affairs (1985) 6 FCR 155


case_title: Pyrenees Shire Council v Day [1998] HCA 3 ; (1998) 192 CLR 330


case_text: first obstacle in the way of the appellant relying on these fresh grounds of appeal is that he did not rely on them before the Federal Magistrates Court. Leave is required to argue on appeal an issue not raised below. The Court must be satisfied that it is expedient in the interests of justice for the issue to be raised for the first time on appeal ( SLMB v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCAFC 129). Neither the supplementary submissions of the appellant nor his affidavit address this issue. In particular they provide no explanation of why the appellant did not tell either the Tribunal or the Federal Magistrates Court of his belief concerning the experience of his friend on return to Jordan and of his own fear of experiencing persecution in Jordan because of his claim for a protection visa (see [16] above). His contention that a Jordanian citizen who returns to that country after unsuccessfully seeking an Australian protection visa faces a real risk of persecution for reason of imputed political belief does not, it seems, depend upon the expiry of travel documentation. He has not suggested that his friend's passport had expired. Revelation of what the appellant believes happened to his friend would not have required disclosure of the appellant's unwise conduct concerning his own passport.


case_text: Mr Macaw referred to the judgment of a Full Court of this Court in Boehringer Ingelheim International GmbH v Commissioner of Patents [2001] FCA 647 ; (2001) 112 FCR 595 (" Boehringer "). He submitted that Boehringer was authority for the proposition that the requirement that a patent involve a claim to a "pharmaceutical substance per se " requires more than that a pharmaceutical substance simply forms some element of the claim or claims. Mr Macaw also relied upon Boehringer as authority for the proposition that, in order to satisfy the requirements of s 70(2)(a) , the pharmaceutical substance must fall within the scope of the claim, that is, it must be included among the things claimed.


case_outcome: followed

case_text: Dr Elliott was cross-examined at some length by Mr Caine. It is unnecessary for present purposes to set out in any great detail the nature of the cross-examination. Put simply, Mr Caine suggested to Dr Elliott that her opinion was idiosyncratic, and failed to reflect the authoritative interpretation that had been accorded to the definition of "pharmaceutical substance" by both Heerey J at first instance ( Boehringer Ingelheim International v Commissioner of Patents (2001) AIPC |P91-670), and by the Full Court in Boehringer . 68 The transcript of Mr Caine's cross-examination sheds considerable light on this issue: "MR CAINE:...Dr Elliott, just to identify it for the transcript, that is a copy of the Boehringer decision at first instance before Heerey J which is document 5 in the briefing documents that you were given for the purpose of preparing your report. Would you be good enough to go to paragraph 18 of that decision where his Honour sets out an extract from the Patent Office Manual of Practice and Procedure?---Yes, I have it. Would you go to the part of paragraph 18 where his Honour extracts from the Manual paragraph 25.2.3 which is headed, "Mixture or Compound of Substances". Do you see in the first paragraph under that sub-heading his Honour - I am sorry, the Patent Office Manual says: The definition of a pharmaceutical substance includes a mixture or compound of substances. Just pausing there, you would accept that that is part of the statutory definition in schedule 1 of the Act, would you not?---It is. Yes, and the Manual goes on to say: In the case of such mixtures or compounds the test of whether or not a substance is a pharmaceutical substance applies to the mixture or compound as a whole, not to an individual component of the mixture or compound. And then in the next paragraph the Manual says: Thus a typical ARTG registration might refer to an active ingredient in a particular carrier or excipient. In this situation the pharmaceutical substance is the active ingredient in the carrier or excipient, not the active ingredient alone. Now pausing there, do you recall reading those two paragraphs and taking them on board when you were reading Heerey Js decision for the purpose of your report?---Yes, I did. Did you - the view that you have expressed in your report as I understand it is that the pharmaceutical substance as defined in the Act should be narrowly considered as the active ingredient on its own?---I do. Yes. That is at odds, is it not, with what is set out in those two paragraphs in the Patent Office Manual?---I don't believe so and as far as the active ingredient is the pharmaceutical substance that is going to interact with the body and regardless of what the other components are, that is the product that is going to be exerting its pharmacological effect. I understand that is your view but the view expressed here in the Manual and extracted by his Honour is that it is the active ingredient, my words, together with the carrier or excipient, not the active ingredient alone. Do you see that?---For clarification I would read that saying it is the pharmaceutical substance is the active ingredient in the carrier or excipient so that they go together and that is those components are being put in the body but in fact it will be only the pharmaceutical substance that is having an effect so you can have multiple products with the same active ingredient. Yes. Why then do the words appear at the end of that sentence: Not the active ingredient alone. MS STRONG: I don't think Dr Elliott can really answer that question, your Honour. HIS HONOUR: Sorry, I didn't quite catch what you were saying, Ms Strong. MS STRONG: Well, my learned friend has asked her why there is a particular sentence put into the Patent Office Manual. I doubt that she would know why. HIS HONOUR: It seems to me this is cross-examination as to credit and quite permissible, Ms Strong. MS STRONG: If your Honour pleases. HIS HONOUR: Yes, you can ask the question again. MR CAINE: As a result of that, I will put it again if I can. What I am simply putting to you, Dr Elliott, is I understand that the view you have expressed in the report is that the pharmaceutical substance defined in the Act is to be confined to the active ingredient alone and all I am putting to you is that the Manual, the Australian Patent Office Manual, does not share your view. It says that: For the purposes of the Act the pharmaceutical substance is the combination of the active ingredient together with the carrier or excipient, not the active ingredient alone. Do you accept that your view is at odds with the Manual?---In relation to that specific paragraph? Yes?---The interpretation could be that it is. Yes, and if the Manual expresses the correct test according to law and that will be a matter for his Honour later on, you would accept that your view is at odds with that test?---If that is that particular sentence as opposed to the other guidances that are provided in that extract from the Manual which again clearly are at odds there would appear to be an internal inconsistency within that. Yes." 69 When Dr Elliott's attention was drawn to what the Patent Office Manual of Practice and Procedure ("the Manual") said about the meaning of "pharmaceutical substance", and what both Heerey J and the Full Court had said about that matter, she remained doggedly of the view that her position was correct, and what was said elsewhere was of little consequence. She regarded the Manual as leading to "confusion in terms of understanding what is the active component", and rejected its essential tenor. 70 In closing submissions, Mr Caine invited me to disregard the opinion expressed by Dr Elliott. He submitted that if her interpretation of "pharmaceutical substance" were correct, it would be impossible to obtain an extension of a patent involving any invented solution, of which only one component was of direct therapeutic use. That would be so even if the product as a whole, including inert compounds designed to achieve stability for the actual substance that exerts a therapeutic effect, had a therapeutic effect in the body (in this case a cytotoxic effect against cancer cells). 71 It is important to note that Mr Macaw expressly declined to adopt Ms Strong's submission that Pharmacia's product was not, relevantly, a "pharmaceutical substance". He confined his submission to contending that the product was not a "pharmaceutical substance per se ", essentially because it encompassed elements of process. 72 Ms Strong also made a number of submissions regarding the timing of Interpharma's application for review. She noted that s 11(4) of the ADJR Act provides this Court with the discretion to refuse to entertain an application for an order of review if "the court is of the opinion that the application was not made within a reasonable time after the decision was made " (emphasis added). She also noted that when forming its opinion, s 11(5) of that Act provides that the Court "shall have regard to the time when the applicant became aware of the making of the decision; and...may have regard to such other matters as it considers relevant." Ms Strong then sought to explain, and to justify, Interpharma's delay. 73 On this point, Ms Strong submitted that there was nothing in the evidence led on behalf of Pharmacia to suggest that it would, in any way, be prejudiced if time were extended to allow the application for review to proceed. She described that evidence as "broadbrush" and speculative. She further submitted that Interpharma had acted reasonably in assuming that the processes by which EBEWE Pharma proposed to manufacture doxorubicin EBEWE and epirubicin EBEWE for the Australian market did not come within the claims specified in the Patent. 85 The meaning of the expression "pharmaceutical substance per se " in s 70(2)(a) has been authoritatively considered by a Full Court of this Court in Boehringer . The facts of that case were set out succinctly by Heerey J, at first instance . 86 As previously indicated, the patent in that case related to compositions for the treatment of nasal hypersecretion (runny nose), containers adapted for nasal administration and containing compositions for such treatments, and methods of treating the condition. Claim 1 of the patent in that case was as follows: "A container comprising an aerosol or spray composition for nasal administration which composition comprises as active ingredient a quaternary tropane alkaloid derivative with atropine-like activity [hereafter "the Substance"], the container being provided with a nozzle adapted for nasal administration of the composition." 87 His Honour described at [4] the remaining claims in the following terms: "Claims 2 and 3 are for a container where the composition comprises or contains specified substances, being more particular forms of the Substance. Claim 4 is for a container claimed in any one of the preceding claims having a metering device. Claim 5 is for the container of claim 4 wherein the metering device is adapted to deliver specified quantities of the Substance. Claims 6 to 9 are directed to methods of treatment of nasal hypersecretion comprising the nasal administration of an effective amount of a pharmaceutical composition comprising as active ingredient the Substance or particular forms or quantities of the Substance. Claims 10 to 12 are omnibus claims. Claim 13 is for a method of treatment as claimed in claim 6 with reference to any one of the Examples. Claims 14 to 16 are directed to an aerosol or spray composition as claimed in claim 1 when used in the container of claim 1." 88 Heerey J found it useful to consider the history of s 70 in order to understand why the expression "pharmaceutical substance per se " had been introduced. His Honour observed at [8]-[13]: "Under Part IX of the Patents Act 1952 (Cth) ("the 1952 Act") a patentee could seek an extension of up to ten years if it could be shown that the patentee had been "inadequately remunerated". Section 93 directed the court to have regard to the nature and merits of the invention, the profits made by the patentee and all the circumstances of the case. In practice patentees produced substantial accounting evidence endeavouring to show great expenditure on research and development and only modest sales. Part IX applied to all patents, irrespective of subject matter. However extension applications were frequently brought in the case of pharmaceutical patents because regulatory approval requirements often meant that the product could not enter the marketplace until a substantial part of the patent protection period had already passed. The first particularised legislative treatment of pharmaceutical patents came in 1989. By the Patents Amendment Act 1989 (Cth) a new s 90 was inserted in the 1952 Act. The new s 90(1) provided: "90(1) Where: (a) a pharmaceutical substance is in substance disclosed in the complete specification of a standard patent and in substance falls within the scope of the claim or claims of that complete specification; and (b) the patentee has requested the issue of a marketing approval certificate in respect of that substance, the patentee may, by notice in writing in accordance with the prescribed form given to the Commissioner not later than 12 months before the end of the term of the patent, apply for an extension of the term of the patent in respect of that substance and any other pharmaceutical substance which is in substance disclosed in the specification and in substance falls within the scope of the claim or claims of the specification." When the 1990 Act was introduced, Part IX of the 1952 Act, as amended in 1989, was in substance re-enacted. By the Patents (World Trade Organization Amendments) Act 1994 (Cth) Div 2 of Pt 3 of Ch 6 of the 1990 Act, containing the extension provisions in ss 70 to 79, was repealed. Section 70 and related sections in their present form were introduced by the Intellectual Property Laws Amendment Act 1998 (Cth). For the first time, provision was made for the extension of not just of a "pharmaceutical patent", but a "pharmaceutical patent per se ". The 1990 Act in its present form manifests a policy which draws a distinction between, on the one hand, a pharmaceutical substance that is the subject of a patent claim and, on the other hand, a pharmaceutical substance that forms part of a method or process claim. The specific exception to the latter (an exception which proves the rule) is the provision for recombinant DNA technology in s 70(2)(b)." 89 Heerey J went on to say at [14]-[16]: "Broadly speaking, a claim in relation to a pharmaceutical substance can be made in three ways (i) a new and inventive product alone; (ii) an old or known product prepared by a new and inventive process; (iii) an old or known product used in a new and inventive mode of treatment. What is clear in s 70 is that only the first type of claim to a pharmaceutical product is to be subject to extension rights. So far as a new process is concerned, it is only when the new process answers the particular description in s 70(2)(b) (recombinant DNA process) that it can be the subject of an extension. As counsel for the Commissioner submitted, the policy to be deduced in the light of the legislative history is that Parliament has decided that what is intended to be fostered is primary research and development in inventive substances, not the way they are made or the way they are used, with the sole (and important) exception of recombinant DNA techniques, this being an area particularly worthy of assistance for research and development. In the light of this history, the relevance of the expression " per se " becomes clear. Section 70(2)(a) is only to make extension rights available when the claim is for a pharmaceutical substance as such, as opposed to a substance forming part of a method or process." 90 His Honour next referred to the Manual, a work used as an internal guide to the administration of the Patents Act , and available to the patent attorney and legal professions. He drew attention, in particular, to the following passages from the Manual: "25.2.2 Pharmaceutical Substance per se Except for substances produced by a process involving the use of recombinant DNA technology, an extension of term is only available in respect of a pharmaceutical substance per se being within the scope of a claim of the patent. The explanatory memorandum to the Intellectual Property Laws Bill of 1997 noted that, except for substances produced by a process involving the use of recombinant DNA technology, claims to pharmaceutical substances per se would usually be restricted to new and inventive substances. The memorandum also mentioned a number of specific instances where an extension would not be available: 'Patents that claim pharmaceutical substances when produced by a particular process (product by process claims) will not be eligible unless that process involves the use of recombinant DNA technology. Claims which limit the use of a known substance to a particular environment, for example claims to pharmaceutical substances when used in a new and inventive method of treatment, are not considered to be claims to pharmaceutical substances per se .' This distinction is specifically evident as between the reference in the Act to 'pharmaceutical substances per se ', and to 'pharmaceutical substances when produced by a process that involves the use of recombinant DNA technology'. The use of the word ' per se ' requires the claim to the substance to be unqualified by process, temporal, or environmental, components. Thus, in order that the term of a patent be extended, the patent must contain one or more claims in the form: a) A substance of formula **** b) Substance X mixed with substance Y Examples of claims that are not directed to substances per se are: a) Substance X when used ... b) Substance X for use ... c) Substance X when produced by method Y d) An antiseptic comprising substance X [unless the label 'antiseptic' was clearly non-limiting on the scope of the claim.] e) A method of preparing substance X f) A substance of formula ..., where component Y is produced by ... g) [A specified quantum] of substance X h) 'Swiss' style claims referring to substance X i) Use of substance X in the treatment of Y In limited circumstances, a substance could be new and inventive but can only be defined by reference to the process in which it was made (for example, compound X obtainable by process Y) because the chemical structure or composition is undetermined. In such circumstances, a claim which defines the substance by reference to such method steps would be a claim to the substance per se . 25.2.3. Mixture or Compound of Substances The definition of a pharmaceutical substance includes a mixture or compound of substances. In the case of such mixtures or compounds, the test of whether or not a substance is a pharmaceutical substance applies to the mixture or compound as a whole, not to an individual component of the mixture or compound. Thus, a typical ARTG [Australian Register of Therapeutic Goods] registration might refer to an active ingredient in a particular carrier or excipient. In this situation, the pharmaceutical substance is the active ingredient in the carrier or excipient not the active ingredient alone. Of course, under patent law a patent is not granted for a substance capable of being used as a medicine if it is a mere mixture of known ingredients. Similarly, a collocation of known integers with no working interrelationship is not patentable. Consequently, while the ARTG may contain many entries involving an active substance with different carriers or excipients, separate patents corresponding to the differing ARTG entries are unlikely to have been granted. 25.2.4 'within the scope of the claim' The mere fact that a substance is mentioned in a claim does not mean that the substance is within the scope of the claim. The phrase 'in substance fall within the scope' has been the subject of judicial interpretation in the context of amendments. In The Distillers Co. Ld.'s Application , (1953) 70 RPC 221 at page 223 the test for 'in substance fall within the scope' was stated to be: 'would the amendment make anything an infringement which would not have been an infringement before the amendment?' This was considered by the Commissioner in Astra Lakemedal AG 29 IPR 183, (1994) AIPC |P91-087, in deciding that a substance was not in substance within the scope of certain claims. On appeal to the Federal Court in Astra Lakemedal AG 31 IPR 1, the Commissioner's decision was overturned, having regard to the words 'to which the application relates' as present in the then s. 70 (and which are not present in the present legislation)." 91 His Honour said that he found this material to be of assistance, though he recognised that it was not extrinsic material of the normal type. Importantly, he implicitly approved of the examples set out at [25.2.2] as aiding in the interpretation of the expression "pharmaceutical substance per se " considered in the light of the history of the relevant section, and its evident purpose. 92 Not surprisingly, having regard to the nature of the claims relied upon in that case, Heerey J concluded that all of them were for "modes of treatment involving the Substance, not for the Substance in itself". Accordingly, the application to review the Commissioner's refusal to grant the extension was dismissed. 93 On appeal, the Full Court in Boehringer (Wilcox, Whitlam and Gyles JJ) held that the decision at first instance was correct. The Court noted that it had been conceded by counsel for the appellant that a container was fundamental to each of the claims, in the sense that, absent a container as described claim 1, there would be no infringement of the patent. However, it had been submitted that the requirements of s 70(2)(a) were met, and that Heerey J had erroneously interpreted paragraph (a) "as requiring the claim or claims of the patent to exclusively define a pharmaceutical substance per se or to be limited or confined to a pharmaceutical substance per se ". It had been further submitted that the paragraph required "no more than that a pharmaceutical substance... be included in one or more of those claims as an essential feature", and that all the relevant claims in that case had specifically included as an essential feature a pharmaceutical substance per se . The appellant submitted that it did not matter that each claim also included one or more other elements. 94 The Full Court regarded these submissions as being tantamount to an argument that the words " per se " made no substantial contribution to, and provided no limitation upon, the statutory provisions of s 70(2)(a). The Court rejected that argument. It referred with approval, at [34] and [37], to the submission of the respondent that the introduction of the words " per se " by the 1998 amendments indicated a clear intention, on the part of the legislature, to limit the operation of s 70 to patents disclosing and claiming a pharmaceutical substance "by or in itself, intrinsically, essentially" ( New Shorter Oxford English Dictionary ), or "taken alone; essentially; without reference to anything else" ( Butterworth's Australian Legal Dictionary ). 95 The Full Court noted that the appellant's argument, if accepted, would have the effect of reading out of s 70(2)(a) the words " per se ". In addition, the Court regarded the second reading speech and the explanatory memorandum as providing no support to the appellant's argument; quite the contrary. The emphasis in those materials was upon the development of new drugs, not drugs in combination with other elements. The explanatory memorandum, in particular, excluded the application of the new provisions to "new processes of making pharmaceutical substances or new methods of using pharmaceutical substances, where the substances themselves are known". 105 As extracted at [88] and [89] of these reasons for judgment, in Boehringer , Heerey J at first instance distinguished a pharmaceutical substance that is the subject of a patent claim from a pharmaceutical substance that forms part of a method or process claim. His Honour said that, broadly speaking, a claim could be made in relation to a pharmaceutical substance in three ways: (a) a new and inventive product alone; (b) an old or known product prepared by a new and inventive process; or (c) an old or known product used in a new and inventive mode of treatment. 106 It is important to note that Heerey J did not distinguish between the "active ingredients" in a compound, and other components of that compound, in the way that Dr Elliott did. Nor did the Full Court. 107 His Honour's approval of the Manual, and its analysis of the concept of a pharmaceutical substance which was generally accepted as correct by the Full Court, cannot be reconciled with Dr Elliott's view that the introduction of any non-active ingredient into a product prevents it from being a pharmaceutical substance. For one thing, her approach would effectively mean that s 70 had almost no function to perform. Almost every pharmaceutical product will consist of a combination of individual substances, some of which may be intrinsically therapeutic (active ingredients), while others serve different, albeit essential, roles. To restrict the capacity to extend a patent to those unlikely cases where every component of the compound is itself therapeutically useful would be to deprive the section of any real utility, and largely defeat the purpose of its enactment. 108 For the reasons already given in the Pharmacia Proceeding, I reject Interpharma's alternative contention that claim 1 does not, by reason of any reference that it makes to process elements, disclose a "pharmaceutical substance per se ". 109 This makes it unnecessary for me to consider whether to grant Interpharma an extension of time within which to bring its application for review under the ADJR Act . It also makes it unnecessary to consider whether, as a matter of discretion, I would refuse relief to Interpharma, under the Judiciary Act , because of the lengthy delay that took place between the time the Commissioner granted the extension, and the institution of the Interpharma Review Proceeding. The simple fact is that, as in the case of Mayne, Interpharma cannot make good its contention that claim 1 does not involve a "pharmaceutical substance per se". For that reason, Interpharma's application must be dismissed, with costs. I certify that the preceding one hundred and nine (109) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Weinberg. Associate: Dated: 29 March 2006 Matter No VID429 of 2003 Counsel for the Applicants: Mr B. Caine SC with Ms H. Rofe Solicitors for the Applicant: Allens Arthur Robinson Counsel for the Respondents: Mr R.C. Macaw QC with Mr A.J. Ryan Solicitors for the Respondents: Clayton Utz Matter No VID1274 of 2005 Counsel for the Applicant: Ms E. Strong SC Solicitors for the Applicant: Stephens Lawyers Counsel for the First Respondent: No appearance for the First Respondent Counsel for the Second Respondent Mr B. Caine SC with Ms H. Rofe Solicitors for the Second Respondent: Allens Arthur Robinson Dates of Hearing: 7 and 8 February 2006 Date of Judgment: 29 March 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/305.html


case_text: Mr Caine next referred to the requirement under s 70(2)(a) that a patent disclose and include within the scope of the claims a pharmaceutical substance per se . He rejected Mayne's submission that the Patent did not disclose or claim a pharmaceutical substance per se , but rather a pharmaceutical substance produced by a defined process or method. He submitted that the question whether claim 1, as currently formulated, identified a pharmaceutical substance per se , or extended into the realms of process or method, had to be approached as a matter of substance, and not form. That is, it was a question to be resolved by considering the scope of the claim "broadly, that is to say in a general sense": Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 per Gummow J, cited with approval by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 at [69] .


case_outcome: discussed

case_text: VID 439 of 2003 ("the Pharmacia Proceeding") concerns the scope of the final injunction to be granted and, in particular, its duration, in a matter that was heard by Crennan J: Pharmacia Italia SpA v Mayne Pharma Pty Ltd (2005) 222 ALR 552 ("the Pharmacia Infringement Proceeding"). Her Honour found that Mayne Pharma Pty Ltd and the Faulding Co respondents ("Mayne") had infringed Pharmacia Italia SpA's ("Pharmacia") patent, Australian patent no. 598197 ("the Patent"). The injunction that she granted on 8 September 2005 restrains Mayne from infringing certain claims of the Patent until 19 June 2006, the end of the original term of the Patent, or until "such later date as the Court may hereafter order". Mayne objects to any further order being made that would extend the term of that injunction, namely to cover the period of the Patent's extension from 19 June 2006 to 19 June 2011. 3 In the second proceeding before the Court, VID 1274 of 2005 ("the Interpharma Review Proceeding"), Interpharma Pty Ltd ("Interpharma") challenges the decisions of the Commissioner of Patents ("the Commissioner") to: (a) accept an application for an extension of the term of the Patent; (b) fail to refuse to accept an application for an extension of the term of the Patent; and (c) to grant an extension of the term of the Patent. 4 It does so pursuant to s 5 of the Administrative Decisions (Judicial Review) Act 1977 (Cth) ("the ADJR Act ") and s 39B(1) of the Judiciary Act 1903 (Cth) ("the Judiciary Act "). Interpharma has also applied to the Court for rectification of the Register of Patents pursuant to s 192 of the Patents Act 1990 (Cth) ("the Patents Act "). The basis of that claim is that the Register erroneously records the Patent as having been extended to 19 June 2011. 14 According to Crennan J, at [4] of her reasons for judgment, the primary issue in relation to infringement was whether Mayne's product had "not been reconstituted from a lyophilizate", as that phrase appeared in claim 1 of the Patent. A secondary issue identified by her Honour was whether Mayne avoided infringement on the specific occasions on which they used sodium hydroxide, in addition to hydrochloric acid, to adjust the pH of the solution, given that claim 1 of the Patent refers to the pH being adjusted "solely with a physiologically acceptable acid". 15 On 5 August 2005, Crennan J delivered judgment. Aspects of the dispute between the parties that were dealt with by Crennan J provide relevant background to the proceedings currently before me. Her Honour found that the Patent had been infringed. However, she did not make final orders on that day. Rather, she ordered: "The parties to prepare short minutes of final orders on liability in accordance with these reasons and include any other orders or directions as appropriate for the further disposition of the matter." 16 Pursuant to her Honour's orders, each party prepared proposed minutes of final orders. On 8 September 2005, Crennan J made orders by consent, including the following order: "Until 19 June 2006 or such later date as the Court may hereafter order , the respondents and each of them, whether by themselves, their directors, officers, servants or agents or otherwise, be restrained in Australia from exploiting any anthracycline glycoside ready-to use solution as claimed in any of claims 1 to 30 (inclusive), 5 to 10 (inclusive), 13 to 15 (inclusive), 18, 19, 22, 25 and 26 of Australian patent no. 598197, save that the respondents may until further order exploit: i. doxorubicin hydrochloride injection; and ii. daunorubicin hydrochloride injection." (emphasis added) 17 The orders reflect the reasons given in her Honour's judgment. However, they gave rise to the further issue that is now the subject of the two proceedings presently before this Court. In the Pharmacia Proceeding, Mayne contends that the term of the injunction granted by Crennan J should not be extended to 19 June 2011 to cover the extension of patent granted by the Commissioner, but rather should end on 19 June 2006. In the Interpharma Review Proceeding, Interpharma challenges the validity of the extension itself. 18 Of relevance to both proceedings currently before the Court, Crennan J, at [5], summarised the three aspects of the invention to which the Patent relates: "(a) a pharmaceutical product, being a stable intravenously injectable ready-to-use solution of an antitumor anthracycline glycoside, for example, doxorubicin; (b) a process for preparing such a solution, [providing] the same in a sealed container; and (c) a method for treating tumours by the use of the ready-to-use solution." 19 These three aspects of the invention are reflected in the 26 claims of the Patent which define the invention. Using the language adopted by Crennan J in her judgment at [19], Pharmacia submits that there are 20 product ("solution") claims, four "process" claims and two "method" claims. Of course, whether that is in fact a wholly accurate characterisation of the claims is the very point in issue in the proceedings before me. 20 The parties do not contend that all the claims are in issue. Relevantly, claims 3 to 19, and claim 22 (described by Crennan J as the "solution" claims), are dependent on claim 1. If claim 1 is not properly to be characterised as a "solution" claim, but does, in fact, incorporate significant elements of "process", Pharmacia acknowledges that none of the remaining "solution" claims can lawfully be the subject of an extension. The parties are agreed that resolution of the construction of claim 1 will resolve the controversy between them. It is convenient therefore, to deal with each of the alleged "process" features in the context of claim 1. 21 Claim 1, in its current form, is in the following terms: "1. A sterile, pyrogen-free, anthracycline glycoside solution which comprises a physiologically acceptable salt of an anthracycline glycoside dissolved in a physiologically acceptable aqueous solvent therefor at an anthracycline glycoside concentration of from 0.1 to 50 mg/ml, which has not been reconstituted from a lyophilizate and the pH of which has been adjusted [to] from 2.5 to 5.0 solely with a physiologically acceptable acid." 22 As will be seen, in broad terms Mayne focuses upon the terms "dissolved", "not being reconstituted from a lyophilizate" and "adjusted" as the basis for its submission that claim 1 contains elements of process that prevent it from being the subject of a lawful extension. I should interpolate that it was common ground between the parties that the word "to", which appears in square brackets in claim 1, as set out above, but does not appear in the claim as it actually stands, should be read into it. It does not matter, for present purposes, whether that is because the word was excluded inadvertently, or whether it is necessary to insert it in order to give sensible meaning to the claim. 36 Mr Macaw QC, on behalf of Mayne, submitted that the various claims of the Patent that Crennan J found had been infringed (namely, claims 1 to 3, 5 to 10, 13 to 15, 18, 19, 22, 25 and 26) were not claims to a "pharmaceutical substance per se " within the meaning of s 78(1)(b)(i) , and therefore do not warrant any protection by injunctive relief beyond the expiry date of the original term of the Patent, 19 June 2006. 37 Mr Macaw submitted that claim 1 (and therefore the dependent claims as well) was a "product by process" claim, because of the various process elements that were included in the claim, as formulated. He contended that the introduction of "process elements" as part of the description of the product prevented claim 1 from being a claim to a "pharmaceutical substance per se ". 38 According to Mr Macaw, it followed that any infringing activity on Mayne's part was, and is, by way of exploitation of a form of the invention other than a "pharmaceutical substance per se ". As a result, by reason of section 78(1)(b)(i) , the final injunction to be granted should not continue for the extended period of the Patent but, rather, should end at the expiry of the original patent period, on 19 June 2006. 44 Mr Macaw noted that in addition to manufacturing epirubicin hydrochloride solution, Mayne manufactured anthracycline glycoside solutions such as doxorubicin hydrochloride and daunorubicin hydrochloride, neither of which was alleged, nor found by Crennan J, to infringe the Patent in the Pharmacia Infringement Proceeding. Mr Macaw contended that the scope of the injunction should therefore be limited, on a permanent basis, to include only the epirubicin hydrochloride solution that was found to infringe, and not the other anthracycline glycoside solutions, such as doxorubicin hydrochloride and daunorubicin hydrochloride, that Mayne produces. 45 It seems that the position regarding these other anthracycline glycoside solutions remains somewhat uncertain. Order 1 of the orders made by Crennan J on 8 September 2005 reflected an agreement between the parties, on an interim basis, that doxorubicin hydrochloride and daunorubicin hydrochloride should be excluded from the scope of the injunction. There was also an agreement that they be excluded from any order for damages, or an account of profits, again on an interim basis only, pending Pharmacia having further time to consider its position in relation to them. Mr Macaw submitted that given that Pharmacia had now had that opportunity, but was unprepared to commit itself to a stance, the interim position should be made permanent. 46 In the course of oral submissions Mr Macaw referred to Mayne's licence to produce doxorubicin hydrochloride and daunorubicin hydrochloride and the question of "the appropriate formulation of the injunction". He stated: "[T]he parties have attempted a commercial resolution of that matter and my instructions are that it's close and we would seek merely have that aspect of the matter adjourned to a date to be fixed" . 47 Mr Caine SC, on behalf of Pharmacia, did not have anything to say regarding this matter. It may be, therefore, that the form of the injunction granted by Crennan J will have to be varied irrespective of the outcome of this proceeding, in order to make it clear that Mayne's entitlement to manufacture its non-infringing products is not in any way impaired by that injunction. 48 Finally, Mr Macaw referred to order 2 of Crennan J's orders of 8 September 2005. That order is in the following terms: "Save for the samples referred to at paragraph 27 to 29 of the affidavit of Joanna Elizabeth Johnson sworn on 7 September 2005, the respondents, within 21 days of the date of this Order, destroy all epirubicin hydrochloride ready-to-use solutions in their possession, custody, power or control, the sale, supply or use of which by the respondents, their servants or agents or by any person to whom such epirubicin hydrochloride solution were to be supplied would be in breach of the foregoing injunction." 49 Mr Macaw contended that it was implicit that the injunction should not prevent use of the retained samples, referred to in order 2, for the particular purposes identified in the affidavit of Joanna Elizabeth Johnson sworn on 7 September 2005. In relation to this matter, Mr Macaw stated: "...I don't think I need to trouble your Honour with [the samples point] , because I understand that it's not contentious. We'll hand your Honour a form of the order which incorporates those which accommodates those matters... in due course, but we apprehend to say that that's not an issue. HIS HONOUR: So, on any view the injunction would be limited if the injunction extends beyond June of this year in the weigh [sic] group. MR MACAW: Would in any event be limited, yes. HIS HONOUR: Yes, I follow." 50 Mr Caine did not have anything to say about this matter. Accordingly, it may be necessary, once again, to vary the terms of the injunction to reflect any agreement that is reached between the parties regarding this issue. 51 Mr Caine did not contend that the "process" or "method" claims defining the invention (by which he meant claims 2, 20, 21 and 23-26) could provide a basis for the extension of the term of the Patent. He agreed that the claims in issue were limited to claim 1, and claims 3 to 19. Claim 22, though not regarded as a "process" or "method" claim, was expressly abandoned by Mr Caine during the course of the hearing. 52 Mr Caine submitted that the solution that was the subject of the Patent was plainly a "pharmaceutical substance" within the meaning of Schedule 1 of the Patents Act . He further submitted that claim 1 involved a claim in relation to a pharmaceutical substance per se. In simple terms, he argued that the injectable ready-to-use solution was a mixture of substances which had particular characteristics. Those characteristics were what I referred to in argument as "descriptors", enabling the substance to be readily defined, and differentiated from other pharmaceutical substances that were not within the protection of the Patent. 59 Finally, Mr Caine referred to the judgment of Crennan J in the Pharmacia Infringement Proceeding. He noted that her Honour had found Mayne liable for infringing Pharmacia's patent rights, and submitted that it was at least implicit in her Honour's reasoning that Mayne had been seeking to exploit a form of the invention that was a pharmaceutical substance per se . It was equally implicit in that reasoning that the product was in substance disclosed in the complete specification of the Patent and that its product fell within the scope of the relevant claims of that specification, as Boehringer required. Accordingly, he submitted, Mayne would not be able to avoid infringement by reason of s 78(1)(b)(i). It followed that the term of the injunction granted by Crennan J should extend to 19 June 2011. 60 Interpharma seeks an order of review under s 5 of the ADJR Act of the following decisions of the Commissioner: (a) the decision of 24 October 2001 to accept Pharmacia's application for an extension of the term of the Patent filed on 14 March 2001; (b) the failure on or about the 24 October 2001 to refuse Pharmacia's application for an extension of the term of the Patent; (c) the decision to grant an extension of the term of the Patent by certificate dated 6 April 2002 for five years to 19 June 2011. 61 Ms Strong SC, who appeared on behalf of Interpharma, submitted that each of these decisions was of an administrative character, and that Interpharma was, and is, a "person aggrieved" within the meaning of s 5 of the ADJR Act . Pharmacia did not take issue with these contentions. 74 Ms Strong argued that it was not until Interpharma was in a position to market doxorubicin EBEWE, in about August 2005, after the judgment of Crennan J in the Pharmacia Infringement Proceeding had been delivered, that it was reasonable to expect Interpharma to challenge the extension of the Patent. Interpharma had filed its application for review of the Commissioner's decisions on 11 October 2005, not long after her Honour's judgment had become available. According to Ms Strong, "[f]rom August 2005, Interpharma moved with great expedition". 75 It should be remembered that Interpharma also relied upon s 39B of the Judiciary Act in challenging the validity of the Commissioner's decision to grant the extension of the Patent. Ms Strong noted that there was no specific time limit, under the Federal Court Rules , for the grant of certiorari, which was the principal remedy sought. It was only necessary, as a matter of discretion, to persuade the Court that relief should not be withheld by reason of excessive delay. She submitted that in context, the delay was adequately explained. 76 Finally, Ms Strong sought to invoke s 192 of the Patents Act , as a separate basis upon which relief should be granted. That section allows for rectification of the Register. She submitted that the need to ensure that the Register was properly maintained justified the relief sought, no matter how long, or how unjustified, the delay might be. 102 It follows that, in my view, the injunction granted by Crennan J, with some minor modifications, should continue over the life of the extension of the Patent, until 19 June 2011. I will order that the parties file proposed minutes of orders giving effect to these reasons for decision. The proposed minutes of orders should also deal with any other matters the parties consider appropriate, such as the resolution of the issues discussed above at [43]-[50]. 103 That takes me to the Interpharma Review Proceeding. The first issue to be determined in that proceeding is whether claim 1 relevantly describes a "pharmaceutical substance", putting to one side any additional requirements imposed by the words " per se ". 104 In that regard, I reject the evidence given by Dr Elliott. I accept that she is a highly qualified expert, and that she genuinely holds the opinions that she expressed in her report. However, she was cross-examined to very good effect by Mr Caine who demonstrated, to my satisfaction, that Dr Elliott's view of s 70(2)(a), and the meaning of the expression "pharmaceutical substance" in the context of that section, did not accord with the law as authoritatively determined in Boehringer .


case_text: In addition, Mr Macaw referred to the later judgment of a Full Court of this Court in Prejay Holdings Ltd v Commissioner of Patents (2003) 57 IPR 424 (" Prejay "), where the decision in Boehringer was expressly approved. The Court in Prejay held that s 70(2)(a) requires a pharmaceutical substance itself to be an integer of a claim in the relevant patent. It is not enough that the substance appears in a claim in combination with other integers, or as part of the description of a method (or process) that is the subject of a claim. The Court noted at [24] that "[t]he policy adopted in s 70 was to confine extensions to patents that claim invention of the substance itself". 41 Mr Macaw submitted that claim 1 had the following process components, and therefore was not a claim to a pharmaceutical product per se : "(a) the product of claim 1 must be made by a process other than by reconstitution from a lyophilizate (in a vial immediately prior to administration); (b) the salt of the active ingredient must have been dissolved in an aqueous solvent; (c) the product must be made by a process of adjustment of the pH into a range of between 2.5 and 5.0; (d) that adjustment must solely have been done with a physiologically acceptable acid." 42 According to Mr Macaw, it was not any anthracycline glycoside solution that would infringe claim 1, but only a solution obtained in accordance with the process integers of that claim. He referred to a series of amendments that Pharmacia had made to the form in which claim 1 was drafted at various stages. He contended that by adding "pH adjustment integers", for example, Pharmacia appeared to have made a conscious decision to include a process element in the claim, thereby widening the scope of the protection sought for its product. It was in part for this reason that Mr Macaw contended that the product of claim 1 was defined by the process by which it was obtained. 54 In his submissions, Mr Caine distinguished claim 1 from the claims considered in Boehringer, and in Prejay . He noted that in Boehringer the claim had not been limited to a pharmaceutical substance alone, but included a container with a nozzle designed to deliver that substance. He also noted that in Prejay the claim had been expressed in terms of a method for treating menopausal women using a transdermal patch to provide continuous dosages of progesterone and estrogen. He submitted that in each case, whilst the invention claimed was patentable, the claim related to a known substance coupled with a novel delivery system. He contended that this was in marked contrast to the invention the subject of the Patent, which claimed a new and inventive pharmaceutical substance, on its own.


case_title: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79


case_text: AWB Limited v Cole [No 2] (2006) 233 ALR 453 at 460-463 [26]-[40], Young J reviewed the authorities from which (without reciting the authorities to which his Honour referred) I have taken the following principles: (1) As a general rule the starting point is that all issues of fact and law should be determined at the one time. (2) A party seeking the determination of separate questions must satisfy the Court that it is "just and convenient" for the order to be made. The order must be made on concrete facts, either established or agreed, for the purpose of quelling a controversy between the parties so as to produce a conclusive or final judicial decision on the issue, which is of a real, not hypothetical, importance to the determination of the controversy. (3) There are special problems where the separate issue involves a mixed question of fact and law, although it may still be able to be decided as a separate issue. However, care must be taken in precisely formulating the question and specifying the facts upon which it is to be decided. (4) The Court must have all relevant matters before it as a precondition of it being asked to exercise its discretion if the separate question involves the grant or refusal of declaratory relief. (5) It may still be appropriate to determine a separate question even if it will not resolve all the issues, provided that there is a strong prospect that the parties will agree upon the result when the core of the dispute has been decided or if the decision will obviate unnecessary and expensive hearings of other questions. (6) Generally speaking an issue will not be appropriate for separate determination if it is simply one of two or more alternative ways in which an applicant or plaintiff frames its case and its determination would leave other significant issues unresolved. (7) It is relevant to consider whether:


case_text: Australia and the administrators argued that questions 1 and 2 were founded on the false assumption that apart from cl 7.1, the plaintiffs had an unqualified right, superior to Lehman Australia itself, to conduct, prosecute or resolve litigation with that company's insurers. It argued that the construction of cl 11.5 was not a matter of controversy and that it related only to claims against Lehman Australia being released. It argued that this construction would defeat the plaintiffs' contention that cl 11.5 was wider than its apparent terms. (As appears above, Lehman Bros disputes this construction.) Lehman Australia also argued that if the impugned provisions could not be supported by Pt 5.3A of the Act, then the deed would still be valid but those clauses would not be an operative part of the deed. Lehman Australia argued that if question 6 were answered "no", it would not follow that the deed would then become ineffective or void. Accordingly it argued that question 6 was of no utility to resolve any issue. Lehman Australia referred to the dangers of separate issues discussed in Tepko Pty Ltd v Water Board [2001] HCA 19 ; (2001) 206 CLR 1 and Bass v Permanent Trustee Co Ltd [1999] HCA 9 ; (1999) 198 CLR 334. In Woolcock Street 216 CLR at 524-525 [7] Gleeson CJ, Gummow, Hayne and Heydon JJ stressed the importance of recognising that there may be difficulties in using procedures for separate issues in cases in which it is necessary to consider developing, as distinct from applying, common law principles and continued: "The dangers of developing common law principle against an artificially constricted body of fact are self-evident. That is why, in some cases, even if the parties join in asking a court to determine a question separate from trial of the facts, it may be prudent for the court to decline to answer the question presented as being one which it is inappropriate to answer ( Bass v Permanent Trustee Co Ltd [1999] HCA 9 ; (1999) 198 CLR 334 at 357-358 [51] - [53] ). Indeed, as Bass v Permanent Trustee Co Ltd illustrates ( Bass [1999] HCA 9 ; (1999) 198 CLR 334 at 359 [56] . See also Malika Holdings Pty Ltd v Stretton [2001] HCA 14 ; (2001) 204 CLR 290 at 308-309 [61] .), in some circumstances to answer a question may be contrary to the judicial process. If the question is answered, it is important to identify any limitations which the procedure adopted may impose on the breadth of any principle that is to be identified as having been established or applied." If some or all of the separate questions can be answered they may prove decisive and, in any event, will clarify the future extent of the controversy so as to facilitate its efficient management. As Gleeson CJ, Gaudron, McHugh, Gummow, Hayne and Callinan JJ pointed out in Bass 198 CLR at 356 [48], a crucial difference between an advisory opinion and a declaratory judgment "... is the fact that an advisory opinion is not based on a concrete situation and does not amount to a binding decision raising a res judicata between parties". What the plaintiffs seek will lead to a binding decision on a concrete situation, at least on the issues of construction and, if the questions as to power or any of them are answered in their favour, will be likely further to narrow the controversy considerably.


case_text: the evidence will be relevant to whether the meaning of the expression "Claims" when used in the impugned clauses extends to any claims that might be made against Lehman companies other than Lehman Australia, notwithstanding the definition of "Claims" in the deed. While, no doubt, substantial arguments will be used to illuminate the rival constructions, little evidence will be relevant to placing the Court into the position that a reasonable person in the position of the parties would have occupied so as to be able to understand the genesis of the transaction, the background, context and circumstances by reference to which the deed was resolved to be made: Toll (FGCT) Pty Ltd v Alphapharm Pty Ltd [2004] HCA 52 ; (2004) 219 CLR 165 at 178-180 [36] , [41] per Gleeson CJ, Gummow, Hayne, Callinan and Heydon JJ; Royal Botanic Gardens and Domain Trust v South Sydney City Council [2002] HCA 5 ; (2002) 186 ALR 289 at 292-293 [9] - [12] per Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ; Bowen Investments Pty Ltd v Tabcorp Holdings Ltd [2008] FCAFC 38 ; (2008) 166 FCR 494 at 510-512 [50] - [53] where I considered the authorities.


case_text: these reasons, I am satisfied that I should order a hearing under O 29 r 2 that the separate questions be heard before the rest of the proceedings. In my opinion, the questions of construction and (if possible) power should be decided by a Full Court exercising the original jurisdiction so that, the balance of the proceedings can be tried more efficiently and expeditiously. I propose to reserve the separate questions for hearing by a Full Court pursuant to s 25(6) of the Federal Court of Australia Act 1976 (Cth). The power of a single judge sitting in the Court's original jurisdiction to reserve a question for consideration by a Full Court can only be exercised in a matter where an appeal would lie to a Full Court: s 25(6). An appeal, by leave, from an order answering the separate questions, would lie to a Full Court under s 24(1) and (1A) of the Federal Court of Australia Act . Therefore, under s 25(6) of the Act, a single judge has power to reserve for consideration and determination by a Full Court, those questions and the question of whether any amendment or addition to those questions is necessary and, if so ought be made, so as to enable the Full Court to determine the proper construction of cll 7, 9 and 11 of the deed and their validity: Henderson v Pioneer Homes Pty Ltd [1979] HCA 55 ; (1979) 142 CLR 294 at 298-299 per Stephen, Mason and Wilson JJ. There is an important public interest in the prompt determination of these proceedings so that the administrators and the creditors know their positions, particularly if the deed is invalid or the impugned provisions are found to be void or are varied. In addition, the administration of Lehman companies in other jurisdictions and the positions of insurers may be affected by the final decision of this Court. Answers to these questions will provide a suitable means of moving more promptly and efficiently to the final resolution of this complex matter. The parties should prepare an agreed bundle of documents constituting the factual matrix together with the deed and prepare a timetable for submissions. I will direct the parties to bring in short minutes to give effect to these reasons. I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rares. Associate: Dated: 23 July 2009 Counsel for the First, Second and Third Plaintiffs: N C Hutley SC, A Coleman and D Sulan Solicitor for the First, Second and Third Plaintiffs: Piper Alderman Counsel for the First, Second and Third Defendants: B A Coles QC and P Kulveski Solicitor for the First, Second and Third Defendants: Clayton Utz Counsel for the Fourth Defendant: D Williams SC and J Castaldi Solicitor for the Fourth Defendant: Dibbs Barker Counsel for the Fifth Defendant: T F Bathurst QC and E Hyde Solicitor for the Fifth Defendant: Jones Day Counsel for the Amicus Curiae D Barnett Solicitor for the Amicus Curiae Australian Securities and Investments Commission Date of Hearing: 3, 10 and 21 July 2009 Date of Judgment: 23 July 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/784.html


case_text: Bros was joined as the fifth defendant at its request on 16 July 2009. It argued that it wished to lead unspecified further evidence as to the surrounding circumstances of the making of the deed, as well as evidence that would support its rectification claim. It did not elaborate how this evidence could go beyond the evidence of the factual matrix on which the parties to the proceedings may rely on issues of construction, in order to establish the relevant common intention of the parties, being the creditors (including Lehman Asia), Lehman Australia and the administrators: cf Pukallus v Cameron [1982] HCA 63 ; (1982) 180 CLR 447 per Wilson J at 452, with whom Gibbs CJ agreed at 448, per Brennan J at 456. Lehman Bros argued that if the questions were answered favourably to the plaintiffs then one of two results followed, either the deed was not a deed of company arrangement and fell outside the scope of Pt 5.3A or, it fell within the scope of the Part but was void. In the latter case remedial options in Pt 5.3A were available and there would be substantial arguments that the Court should exercise a discretion to give effect to the wish of the majority of creditors by value and number voting at the meetings. On the other hand, Lehman Bros accepted that if the plaintiffs were correct and the Court could not make any orders remedying the deed, it would seek termination of the deed, as well as the plaintiffs, since its rights were prejudiced. Lehman Bros argued that it had only agreed to subordinate its debt in the proposed arrangement in order to obtain the releases.


case_title: Royal Botanic Gardens and Domain Trust v South Sydney City Council [2002] HCA 5 ; (2002) 186 ALR 289