Case: Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589
Outcome: considered
The present motion depends solely upon a plea of res judicata. Issue estoppel is not raised. The difference between the two defences was addressed in the reasons of the majority of the High Court (Gibbs CJ, Mason and Aickin JJ) in Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589 at 597 as follows: 'The distinction between res judicata (in England called "cause of action estoppel") and issue estoppel was expressed by Dixon J. in Blair v. Curran ... in these terms: "In the first the very right or cause of action claimed or put in suit has in the former proceedings passed into judgment, so that it is merged and has no longer an independent existence, while in the second, for the purpose of some other claim or cause of action, a state of fact or law is alleged or denied the existence of which is a matter necessarily decided by the prior judgment, decree or order." The distinction was restated by Fullagar J. in his dissenting judgment in Jackson v. Goldsmith ... . His Honour expressed the rule as to res judicata by saying: "where an action has been brought and judgment has been entered in that action, no other proceedings can thereafter be maintained on the same cause of action. This rule is not, to my mind, correctly classified under the heading of estoppel at all. It is a broad rule of public policy based on the principles expressed in the maxims 'interest reipublicae ut sit finis litium' and 'nemo debet bis vexari pro eadem causa.' " His Honour went on to discuss issue estoppel, citing the comment of Dixon J. in Blair v. Curran ...: "A judicial determination directly involving an issue of fact or of law disposes once for all of the issue, so that it cannot afterwards be raised between the same parties or other privies." ' 23 The Council does not presently rely on the extended notion of estoppel for which the decision in Anshun is authority. 24 At par 15 of its written submissions, the Council identifies the various elements necessary to establish its plea of res judicata: '(a) the judgment was a final judgment on the causes of action it addressed. The fact that there are some other causes of action yet to be litigated in that action does not change the status of the judgment; a fortiori given the Court's separation of issues, by order, in the earlier proceedings. (b) it was a judgment on the merits, following a trial. (c) there was relevantly an identity of parties the present Applicant was an applicant in the previous proceedings and the present Respondent was one of the respondents. The relevant cause of action was pursued against the present Respondent. Other causes of action were pursued against other respondents. (d) The causes of action were the same in each proceeding.' For present purposes, elements (c) and (d) are of primary relevance. 25 For present purposes it may be accepted that the Council is an authority of the kind contemplated in s 162 and that it has engaged in, or authorized conduct which amounts to exploitation of the invention as disclosed in the current patents. The Council's submission is that the question of GST's entitlement to remuneration for such exploitation was determined against it in the previous proceedings. This submission seems to depend upon the proposition that a patentee's rights pursuant to Ch 17 are derived from the "invention" rather than from the relevant patent. The chapter certainly contemplates exploitation of an invention prior to grant of a patent and the fixing of the terms for such exploitation, including remuneration. In the course of argument the parties identified numerous difficulties in understanding the operation of the chapter. In the end, they may not matter for present purposes, but I will set out my understanding of the chapter and say a little about comparable legislation in the United Kingdom.