mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Licul v Corney [1976] HCA 6 ; (1975) 180 CLR 213
Outcome: cited
A determination whether a decision is interlocutory or final is frequently one of much difficulty. The usual formulation, that a judgment is interlocutory in nature if it does not 'finally dispose of the rights of the parties', does not resolve that difficulty. That formulation is derived from the judgments of the High Court in Hall v Normal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at p 440, and in Licul v Corney [1976] HCA 6 ; (1975) 180 CLR 213. 32 See also in this context the judgment of Lindgren J in Macteldir Pty Ltd v Dimoski [2006] FCA 489 ; (2006) 152 FCR 487 , where his Honour said at p 489, par 6, discussing whether an order of dismissal was final or interlocutory: 'Whether a judgment if final, rather than interlocutory, usually depends on whether it finally determines the rights of the parties in respect of the matter of dispute between them: Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at 443 per Windeyer J; Licul v Corney [1976] HCA 6 ; (1976) 180 CLR 213 at 225; Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 ('Carr') at 248; Re Luck [2003] HCA 70 ; (2003) 203 ALR 1 ('Luck') at [4]. In Carr at 248 and in Luck at [4], it was observed that in applying this test, the Court must have regard to the legal effect, as distinct from the practical effect, of the judgment. In those cases, the full expression used was 'finally determine[s] the rights of the parties in a principal cause pending between them'.
Case: Noble v Murgha [2005] FCAFC 211
Outcome: cited
Noble v Murgha [2005] FCAFC 211 is a recent illustration of the difficulty which in that case occurred in the context of parties to a native title claim. Noble v Murgha was an application for leave to appeal from a decision of Dowsett J on 31 March 2005 to remove the applicant of a native title claim pursuant to s 66B of the Act. The Full Court (North, Weinberg and Greenwood JJ) said at par 2: 'Although the matter before this Court is, in form, an application for leave to appeal, the Court has heard full argument on the merits of the appeal. Whether, in truth, his Honour's judgment was interlocutory, or whether it was actually final in character, is by no means an easy question to resolve. Fortunately, we are able to determine this application without any elaborate discussion of that question.'
Case: Macteldir Pty Ltd v Dimoski [2006] FCA 489 ; (2006) 152 FCR 487
Outcome: cited
See also in this context the judgment of Lindgren J in Macteldir Pty Ltd v Dimoski [2006] FCA 489 ; (2006) 152 FCR 487 , where his Honour said at p 489, par 6, discussing whether an order of dismissal was final or interlocutory: 'Whether a judgment if final, rather than interlocutory, usually depends on whether it finally determines the rights of the parties in respect of the matter of dispute between them: Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at 443 per Windeyer J; Licul v Corney [1976] HCA 6 ; (1976) 180 CLR 213 at 225; Carr v Finance Corporation of Australia Ltd (No 1) [1981] HCA 20 ; (1981) 147 CLR 246 ('Carr') at 248; Re Luck [2003] HCA 70 ; (2003) 203 ALR 1 ('Luck') at [4]. In Carr at 248 and in Luck at [4], it was observed that in applying this test, the Court must have regard to the legal effect, as distinct from the practical effect, of the judgment. In those cases, the full expression used was 'finally determine[s] the rights of the parties in a principal cause pending between them'.
Case: Niemann v Electronic Industries Ltd [1978] VR 431
Outcome: cited
The decision for which leave is sought involved the exercise of judicial discretion. On an appeal from such an exercise, the appeal court is not entitled to try the issue afresh or to substitute its own discretionary judgment in place of one already pronounced. It is only if the appeal court is satisfied that the discretion of the primary judge miscarried that it can properly intervene: Niemann v Electronic Industries Ltd [1978] VR 431 at p 436.
Case: Australian Coal and Shale Employees' Federation and another v The Commonwealth and others (1953) 94 CLR 631
Outcome: cited
Further there is a strong presumption, on an appeal, in favour of the correctness of the decision the subject of that appeal as explained by Kitto J in Australian Coal and Shale Employees' Federation and another v The Commonwealth and others (1953) 94 CLR 631 at p 627: 'So, too, there are to be found in many of the cases decided upon the wider question as to the proper attitude of a court of appeal to any judgment given in exercise of a discretion, statements appearing to limit the function of the appellate court to correcting errors of principle. Yet in that wider area it is clear that such statements are not exhaustive. I shall not repeat the references I made in Lovell v. Lovell [1950] HCA 52 ; (1950) 81 CLR 513 to cases of the highest authority which appear to me to establish that the true principle limiting the manner in which appellate jurisdiction is exercised in respect of decisions involving discretionary judgment is that there is a strong presumption in favour of the correctness of the decision appealed from, and that that decision should therefore be affirmed unless the court of appeal is satisfied that it is clearly wrong. A degree of satisfaction sufficient to overcome the strength of the presumption may exist where there has been an error which consists in acting upon a wrong principle, or giving weight to extraneous or irrelevant matters, or failing to give weight or sufficient weight to relevant considerations, or making a mistake as to the facts. Again, the nature of the error may not be discoverable, but even so it is sufficient that the result is so unreasonable or plainly unjust that the appellate court may infer that there has been a failure properly to exercise the discretion which the law reposes in the court of first instance: House v. The King [1936] HCA 40 ; (1936) 55 CLR 499.'
Case: Williams and others v Spautz (1991 1992) [1992] HCA 34 ; 174 CLR 509
Outcome: cited
The High Court in Williams and others v Spautz (1991 1992) [1992] HCA 34 ; 174 CLR 509 referred at p 528 to a statement In re Marjory [1955] Ch 600 by the Lord Evershed., where the Master of the Rolls said: '...court proceedings may not be used or threatened for the purpose of obtaining for the person so using or threatening them for some collateral advantage to himself, and not for the purpose for which such proceedings are properly designed and exist; ...' 47 Accepting that leave should not be granted so as to enable a determination of whatever treaty rights may or may not exist in Mr Gamogab, nonetheless, it seems to me that the primary judge found that there was a legitimate interest which resided in Mr Gamogab which enabled him to be considered for joinder as a respondent in the native title determination application proceedings. 48 It seems to me that the focus on the Treaty as the basis for the exercise of a discretion against the joinder of Mr Gamogab is, at least arguably, quite misplaced. The focus on the Treaty has to be seen in the context of the submission that was made by the applicants in the principal proceedings: that Australian migration, fisheries, and associated legislation made it unlawful, at least for PNG non-Treaty groups, to access the claim area, inconsistent with their continued use of the claim area in accordance with their customary law.
Case: Australian Securities and Investments Commission v Commercial Nominees of Australia Ltd [2002] NSWSC 576 ; (2002) 42 ACSR 240
Outcome: referred to
The Court has clear power under s 601EE to order winding up of a managed investment scheme which has not been registered in contravention of s 601ED(5). The range of orders which may be made is unrestricted: s 601EE(2), and see the observation of Barrett J in Australian Securities and Investments Commission v Commercial Nominees of Australia Ltd [2002] NSWSC 576 ; (2002) 42 ACSR 240 at [13] and of White J in Re Stacks Managed Investments Ltd (as responsible entity of Premium Mortgage Income Fund) [2005] NSWSC 753 ; (2005) 219 ALR 532 at [32] .
Case: Re Stacks Managed Investments Ltd (as responsible entity of Premium Mortgage Income Fund) [2005] NSWSC 753 ; (2005) 219 ALR 532
Outcome: referred to
The Court has clear power under s 601EE to order winding up of a managed investment scheme which has not been registered in contravention of s 601ED(5). The range of orders which may be made is unrestricted: s 601EE(2), and see the observation of Barrett J in Australian Securities and Investments Commission v Commercial Nominees of Australia Ltd [2002] NSWSC 576 ; (2002) 42 ACSR 240 at [13] and of White J in Re Stacks Managed Investments Ltd (as responsible entity of Premium Mortgage Income Fund) [2005] NSWSC 753 ; (2005) 219 ALR 532 at [32] .
Case: Australian Softwood Forests Pty Ltd v Attorney-General (NSW) [1981] HCA 49 ; (1981) 148 CLR 121
Outcome: referred to
A management investment scheme is defined in s 9 of the Act. In essence, it requires a "program or plan of action": see Australian Softwood Forests Pty Ltd v Attorney-General (NSW) [1981] HCA 49 ; (1981) 148 CLR 121 at 129, which involves the pooling of funds of a number of persons: see Australian Securities and Investments Commission v Enterprise Solutions 2000 Pty Ltd (2000) 35 ACSR 620. There must be consideration for the pooling of funds in the grant of rights or interests to benefits to be generated from the use of those funds: Australian Securities and Investments Commission v Knightsbridge Managed Funds Ltd [2001] WASC 339 at [46] . The scheme must therefore contemplate the generation of benefits under a common enterprise that is, financial benefits or benefits which are rights or interests in property from the funds contributed. And, the contributors should not have the day to day control of the operations of the scheme, ie they should not engage in the acts which constitute its management or the carrying out of its activities: see Australian Securities and Investments Commission v Pegasus Leveraged Options Group Pty Ltd [2002] NSWSC 310 ; (2002) 41 ACSR 561 at [55] .
Case: Australian Securities and Investments Commission v Enterprise Solutions 2000 Pty Ltd (2000) 35 ACSR 620
Outcome: cited
A management investment scheme is defined in s 9 of the Act. In essence, it requires a "program or plan of action": see Australian Softwood Forests Pty Ltd v Attorney-General (NSW) [1981] HCA 49 ; (1981) 148 CLR 121 at 129, which involves the pooling of funds of a number of persons: see Australian Securities and Investments Commission v Enterprise Solutions 2000 Pty Ltd (2000) 35 ACSR 620. There must be consideration for the pooling of funds in the grant of rights or interests to benefits to be generated from the use of those funds: Australian Securities and Investments Commission v Knightsbridge Managed Funds Ltd [2001] WASC 339 at [46] . The scheme must therefore contemplate the generation of benefits under a common enterprise that is, financial benefits or benefits which are rights or interests in property from the funds contributed. And, the contributors should not have the day to day control of the operations of the scheme, ie they should not engage in the acts which constitute its management or the carrying out of its activities: see Australian Securities and Investments Commission v Pegasus Leveraged Options Group Pty Ltd [2002] NSWSC 310 ; (2002) 41 ACSR 561 at [55] .
Case: Australian Securities and Investments Commission v Knightsbridge Managed Funds Ltd [2001] WASC 339
Outcome: referred to
A management investment scheme is defined in s 9 of the Act. In essence, it requires a "program or plan of action": see Australian Softwood Forests Pty Ltd v Attorney-General (NSW) [1981] HCA 49 ; (1981) 148 CLR 121 at 129, which involves the pooling of funds of a number of persons: see Australian Securities and Investments Commission v Enterprise Solutions 2000 Pty Ltd (2000) 35 ACSR 620. There must be consideration for the pooling of funds in the grant of rights or interests to benefits to be generated from the use of those funds: Australian Securities and Investments Commission v Knightsbridge Managed Funds Ltd [2001] WASC 339 at [46] . The scheme must therefore contemplate the generation of benefits under a common enterprise that is, financial benefits or benefits which are rights or interests in property from the funds contributed. And, the contributors should not have the day to day control of the operations of the scheme, ie they should not engage in the acts which constitute its management or the carrying out of its activities: see Australian Securities and Investments Commission v Pegasus Leveraged Options Group Pty Ltd [2002] NSWSC 310 ; (2002) 41 ACSR 561 at [55] .
Case: Australian Securities and Investments Commission v Pegasus Leveraged Options Group Pty Ltd [2002] NSWSC 310 ; (2002) 41 ACSR 561
Outcome: referred to
A management investment scheme is defined in s 9 of the Act. In essence, it requires a "program or plan of action": see Australian Softwood Forests Pty Ltd v Attorney-General (NSW) [1981] HCA 49 ; (1981) 148 CLR 121 at 129, which involves the pooling of funds of a number of persons: see Australian Securities and Investments Commission v Enterprise Solutions 2000 Pty Ltd (2000) 35 ACSR 620. There must be consideration for the pooling of funds in the grant of rights or interests to benefits to be generated from the use of those funds: Australian Securities and Investments Commission v Knightsbridge Managed Funds Ltd [2001] WASC 339 at [46] . The scheme must therefore contemplate the generation of benefits under a common enterprise that is, financial benefits or benefits which are rights or interests in property from the funds contributed. And, the contributors should not have the day to day control of the operations of the scheme, ie they should not engage in the acts which constitute its management or the carrying out of its activities: see Australian Securities and Investments Commission v Pegasus Leveraged Options Group Pty Ltd [2002] NSWSC 310 ; (2002) 41 ACSR 561 at [55] .
Case: Allsop Inc v Bintang Ltd (1989) 15 IPR 689
Outcome: referred to
An appropriate starting point is the decision of the Full Court of this Court in Allsop Inc v Bintang Ltd (1989) 15 IPR 686. After referring to the fact that there must be an inventive step, although it can be a small one, and the fact that the cases time and again have warned against the "seductive clarity of hindsight", the Court said (at 701): "But although a simple idea may be inventive, it is essential for validity that there be inventiveness. Though small, it must be present. As was said in Graham v John Deere Co, supra, at 15, there is a 'requirement that the subject matter sought to be patented must be beyond the skill of the calling'. The question, as Lord Herschell said in Vickers, Sons &amp; Co Ltd v Siddell [1890] 15 App Cas 496 at 502 is whether the subject of the patent 'was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end, or whether it required some invention to devise it'. In R D Werner &amp; Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 523; 85 ALR 679 at 689, Lockhart J said: 'There must ... be some difficulty overcome, some barrier crossed'. He cited a dictum of Cotton LJ that 'it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown in the particular thing'. When the principles which surround that question have been stated, the question itself remains one of fact involving an evaluation of the claimed invention in the light of the evidence. It has been described as a 'jury question': Wellcome Foundation case at (CLR) 280."
Case: Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 ; (2006) 149 FCR 386
Outcome: referred to
The re-examination procedure under Chapter 9 of the Act was discussed by Lindgren J in Emperor Sports v Commissioner of Sports [2005] FCA 996 ; (2005) 146 FCR 159 (" Emperor Sports ") and then on appeal by the Full Court of this Court: Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 ; (2006) 149 FCR 386. The particular facts of that case were different from those in this case in that in Emperor Sports the Commissioner of Patents was asked to re-examine a complete specification under s 97(2) of the Act . She did so and she decided to revoke the patent. The patentee appealed against the Commissioner's decision under s 101(4) of the Act . Lindgren J allowed the appeal. He referred to the purpose of the re-examination provisions. In that context he referred to the report dated 29 August 1984 of the Industrial Property Advisory Committee, "Patents, Innovation and Competition in Australia" to the Minister for Science and Technology, and relating to the introduction of post-grant re-examination. He referred to the position in the United States and in that context he referred to a statement in Congress (HR Rep No 96-1307 at 3-4) on the purpose of the re-examining statute (35 USC SS302) (at [104]-[105]). Speaking generally, it seems that the re-examining procedure enables a party to utilise the expertise of the Patent Office to decide appropriate questions with a view, if possible, to avoiding the expense of legal proceedings.
Case: Emperor Sports v Commissioner of Sports [2005] FCA 996 ; (2005) 146 FCR 159
Outcome: referred to
The re-examination procedure under Chapter 9 of the Act was discussed by Lindgren J in Emperor Sports v Commissioner of Sports [2005] FCA 996 ; (2005) 146 FCR 159 (" Emperor Sports ") and then on appeal by the Full Court of this Court: Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 ; (2006) 149 FCR 386. The particular facts of that case were different from those in this case in that in Emperor Sports the Commissioner of Patents was asked to re-examine a complete specification under s 97(2) of the Act . She did so and she decided to revoke the patent. The patentee appealed against the Commissioner's decision under s 101(4) of the Act . Lindgren J allowed the appeal. He referred to the purpose of the re-examination provisions. In that context he referred to the report dated 29 August 1984 of the Industrial Property Advisory Committee, "Patents, Innovation and Competition in Australia" to the Minister for Science and Technology, and relating to the introduction of post-grant re-examination. He referred to the position in the United States and in that context he referred to a statement in Congress (HR Rep No 96-1307 at 3-4) on the purpose of the re-examining statute (35 USC SS302) (at [104]-[105]). Speaking generally, it seems that the re-examining procedure enables a party to utilise the expertise of the Patent Office to decide appropriate questions with a view, if possible, to avoiding the expense of legal proceedings.
Case: Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway ) [2002] HCA 21 ; (2002) 76 ALJR 816
Outcome: referred to
In this case there is no information which falls within the terms of s 7(3). None of the witnesses who gave evidence relevant to the question of obviousness identified prior art information, either a single piece or a combination, which they said a person skilled in the relevant art could before 21 December 1998 (that is, the priority date of the Patent) be reasonably expected to have ascertained, understood and regarded as relevant (or, in an appropriate case, combined). In those circumstances it is not necessary to consider the extent of the relaxation of the rules under the repealed s 100(1)(c) of the Patents Act 1952 (Cth) effected by s 7(3): Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 (" Elconnex "); Tidy Tea Ltd v Unilever Australia Pty Ltd (1995) 32 IPR 405 (" Tidy Tea "); Firebelt Pty Ltd v Brambles Australia Ltd (t/as Cleanaway) [2002] HCA 21 ; (2002) 76 ALJR 816 at 821-823 [31] - [36] (" Firebelt "). 146 Part of the above passage was cited with approval by the High Court in Firebelt at [21]. See also Aktiebolagett H&auml;ssle v Alphapharm [2002] HCA 59 ; (2002) 212 CLR 411, at 421-432 [42]-[49] (Gleeson CJ, Gaudron, Gummow and Hayne JJ). 147 I turn now to apply these principles to the facts. 148 Mr Langley gave the clearest and most concise evidence as to what was the common general knowledge in the relevant art before the priority date. The facts I now set out are based on his evidence.
Case: Hill v Evans (1862) 4 De G F &amp; J 288
Outcome: referred to
In Bristol-Myers v F H Faulding [2000] FCA 316 ; (2000) 97 FCR 524 at 546, Black CJ and Lehane J considered the case in which the anticipation was a paper anticipation. Their Honours referred with approval to the following passage from the speech of Lord Westbury in Hill v Evans (1862) 4 De G F &amp; J 288; 45 ER 1195: "The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed: -- the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. ... The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application. The reason is manifest, because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the use of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it. Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There may be a latent truth in the words of a former writer, not known even to the writer himself; and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world. Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use." Black CJ and Lehane J, after referring to more recent authorities, said (at 548 [67]): "What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it."