mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Conor Medsystems Inc v University of British Columbia (No 3) (2006) 228 ALR 515
Outcome: cited
The sufficiency of a patent has been described as "a pure question of fact in respect of which there may be discovery": Conor Medsystems Inc v University of British Columbia (No 3) (2006) 228 ALR 515 at [4]. 31 In Hoffman-La Roche 171 ALR at [11], Burchett J expressed the view that discovery of research documents "for a reasonable period beyond [the priority] date" may be justified where sufficiency of description is in issue, so long as the research is related to the disclosure contained in the specification. His Honour considered it unnecessary to decide whether an allegation of misrepresentation would provide a further ground for such discovery. However the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416 held that sufficiency should be assessed having regard to the common general knowledge and prior art existing immediately before the priority date: at [328], cited in Conor 228 ALR [4]. The parties did not address this particular issue in their submissions on the present motion. In relation to the issue of false suggestion, CSR sought to rely upon certain observations made by Emmett J in ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577. That case was not concerned with issues of discovery; nevertheless CSR asserted that Emmett J's reasoning supports their application insofar as his Honour found that the relevant section of the Patents Act was concerned with statements of fact about which the applicant (for the patent) had knowledge and about which the Patent Office ordinarily would not (at [184]); and that it is not necessary to show that no grant would have been made "but for" the false suggestion or representation, so long as the representation was a "material inducing factor which led to the grant": at [170]. It is not immediately apparent how those passages assist CSR beyond the wording of s 138 itself.
Case: Pfizer-Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416
Outcome: discussed
In Hoffman-La Roche 171 ALR at [11], Burchett J expressed the view that discovery of research documents "for a reasonable period beyond [the priority] date" may be justified where sufficiency of description is in issue, so long as the research is related to the disclosure contained in the specification. His Honour considered it unnecessary to decide whether an allegation of misrepresentation would provide a further ground for such discovery. However the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416 held that sufficiency should be assessed having regard to the common general knowledge and prior art existing immediately before the priority date: at [328], cited in Conor 228 ALR [4]. The parties did not address this particular issue in their submissions on the present motion. In relation to the issue of false suggestion, CSR sought to rely upon certain observations made by Emmett J in ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577. That case was not concerned with issues of discovery; nevertheless CSR asserted that Emmett J's reasoning supports their application insofar as his Honour found that the relevant section of the Patents Act was concerned with statements of fact about which the applicant (for the patent) had knowledge and about which the Patent Office ordinarily would not (at [184]); and that it is not necessary to show that no grant would have been made "but for" the false suggestion or representation, so long as the representation was a "material inducing factor which led to the grant": at [170]. It is not immediately apparent how those passages assist CSR beyond the wording of s 138 itself.
Case: ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577
Outcome: considered
In Hoffman-La Roche 171 ALR at [11], Burchett J expressed the view that discovery of research documents "for a reasonable period beyond [the priority] date" may be justified where sufficiency of description is in issue, so long as the research is related to the disclosure contained in the specification. His Honour considered it unnecessary to decide whether an allegation of misrepresentation would provide a further ground for such discovery. However the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416 held that sufficiency should be assessed having regard to the common general knowledge and prior art existing immediately before the priority date: at [328], cited in Conor 228 ALR [4]. The parties did not address this particular issue in their submissions on the present motion. In relation to the issue of false suggestion, CSR sought to rely upon certain observations made by Emmett J in ICI Chemicals and Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577. That case was not concerned with issues of discovery; nevertheless CSR asserted that Emmett J's reasoning supports their application insofar as his Honour found that the relevant section of the Patents Act was concerned with statements of fact about which the applicant (for the patent) had knowledge and about which the Patent Office ordinarily would not (at [184]); and that it is not necessary to show that no grant would have been made "but for" the false suggestion or representation, so long as the representation was a "material inducing factor which led to the grant": at [170]. It is not immediately apparent how those passages assist CSR beyond the wording of s 138 itself.
Case: Eli Lilly and Company v Pfizer Ireland Pharmaceuticals [2004] FCA 850 ; (2004) 137 FCR 573
Outcome: cited
CSR referred to several authorities indicating that the Category 9 documents are not protected from disclosure by the doctrine of legal professional privilege: see, e.g. Eli Lilly and Company v Pfizer Ireland Pharmaceuticals [2004] FCA 850 ; (2004) 137 FCR 573. However, those authorities do not assist CSR in relation to the question of relevance. Furthermore, even if the Category 9 documents were privileged, such privilege would not relieve Rockwool of any obligation to provide discovery of them.
Case: Mulley v Manifold [1959] HCA 23 ; (1959) 103 CLR 341
Outcome: cited
It is convenient to deal with Categories 1 to 4 of the claimed further discovery together, as they fall under the general rubric of Project Sleipner activities. I am not persuaded that the documents in respect of which further discovery is sought in those four categories are documents which fall within the reach of O 15 r 2(3) of the Rules. There is no material which, to my mind, reveals that Rockwool has not addressed in its discovery the prior art directly relevant to the assertion that the alleged inventions are not novel. Indeed, as I understood the submissions for CSR, the dispute arises because it claims that an incorrect assessment has been made by Rockwool about the materiality of the documents in Categories 1 to 4 rather than that their relevance has not been assessed at all by Rockwool. Of course, Rockwool's assessment of the extent to which such documents should be discovered is not conclusive. That is a matter for the Court. But, on the other hand, the existence of a document or documents which possibly touch upon an issue in question in the proceeding is not itself sufficient to order its discovery: Mulley v Manifold [1959] HCA 23 ; (1959) 103 CLR 341 at 344 345. That is a matter to be decided by the Court from the pleadings and the evidence on the application.
Case: Astra-National Productions Ltd v Neo-Art Productions Ltd [1928] WN 218
Outcome: cited
The class of the first category of documents, in my view, is not, by its description or by such information as there is as to its likely contents, of such a nature as to satisfy the "relevance" hurdle of O 15 r 2(3). The conferences and meetings referred to, and including the presentations by an employee or employees of Rockwool in April 1994 and in September 1992, are obviously not confined to the product claims concerning MMV fibres in Rockwool Patent #1 or the method of producing MMV fibres in Rockwool Patent #2. The fact that, at such conferences and meetings, there would have been information sharing between informed persons in the general industry does not indicate or tend to indicate that the information included information about the prior art concerning or leading up to the particular claims made in the two patents. Accordingly, I do not consider that there is a prima facie case that the conferences and meetings included in the exposure of information concerning whether the claimed inventions the subject of those patents involved an inventive step compared to the prior art. It is a case of the material relied upon by CSR not taking me over that threshold test. See the discussion by Tomlin J in Astra-National Productions Ltd v Neo-Art Productions Ltd [1928] WN 218 at 219. 58 That conclusion reflects the view I have come to, notwithstanding the careful and helpful submissions of senior counsel for CSR, that discovery in this matter should be confined to documents which relate directly to the particular issues concerning the validity of the two Rockwool patents in suit, and that wider inquiry of material concerning Project Sleipner generally or relating to other fibres or processes than the particular products and process the subject of the two patents will not expose documents which fall within the coverage of O 15 r 2(3) of the Rules. 59 I have reached the same conclusion in relation to the Category 1 documents, insofar as CSR contended that they may expose that the claimed characteristics of elements of the Rockwool Patents were previously well known and recognised by manufacturers of MMV fibres, so that documents of that class may support CSR's third ground of alleged invalidity. It is necessary for a prima facie case to be made out that the category of documents sought to be discovered, including of the two particular presentations specified, may adversely affect the case of Rockwool or may support the case of CSR. I am not satisfied that they might do so.
Case: Applicant S1746 of 2003 v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCA 1591
Outcome: referred to
On 25 August 2004 the Minister's solicitor filed an application for summary dismissal which was made returnable on 1 September 2004. However, the applicant on 31 August 2004 filed a notice of discontinuance. Undeterred, on 24 September 2004 he made an application to this court for an extension of time to file and serve a notice of appeal against Einfeld J's decision. On 9 December 2004, Bennett J dismissed that application saying that she was of the view that the applicant had no prospects of success in an appeal based on a new argument put forward, if it were a new argument, and had not demonstrated any special reasons for the exercise of a discretion to extend the time for filing a notice of appeal: Applicant S1746 of 2003 v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCA 1591 [36].
Case: Bienstein v Bienstein [2003] HCA 7 ; (2003) 195 ALR 225 at 231
Outcome: applied
I do not have to form a final view about those matters because my function is to consider the application as an interlocutory application in which leave to appeal must be obtained. In Bienstein v Bienstein [2003] HCA 7 ; (2003) 195 ALR 225 at 231 it was said at paragraph [29]: 'An applicant for leave must establish that the decision in question is attendant with sufficient doubt to warrant the grant of leave. He must also show that substantial injustice will result from refusal of leave to appeal.' 16 I am of the opinion that there is no sufficient doubt to warrant the grant of leave on the basis of the material in the application for leave to appeal or the applicant's affidavit of 12 December 2005, the draft notice of appeal, or the matters referred to in the judgment below. For those reasons the application is dismissed. 17 The Minister has applied for an order for costs fixed in the sum of $800. I note that in the court below, his Honour made an order that the applicant pay the costs on an indemnity basis. I am of the opinion that it is an appropriate case in which to make an order in the terms sought. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rares. Associate: Dated: 15 March 2006 Applicant: In Person Counsel for the Respondent: A Markus Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 1 March 2006 Date of Judgment: 1 March 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/224.html
Case: Wilson v Minister for Aboriginal and Torres Strait Islander Affairs [1996] HCA 18 ; (1996) 189 CLR 1
Outcome: followed
In Zubair v Minister [2004] FCAFC 248 ; (2004) 139 FCR 344 at 352-354 [28] - [32] a Full Court of this Court held that any error affecting the decision of a delegate, including one which may go to jurisdiction, could not be relied on to challenge the subsequent decision on a merits review before the Tribunal. That is because the function of the Tribunal on review is to arrive at the correct and preferable decision: see Wilson v Minister for Aboriginal and Torres Strait Islander Affairs [1996] HCA 18 ; (1996) 189 CLR 1 at 18. Secondly, by electing to challenge the adverse decision by way of merits review an applicant invites the reviewer to apply to him or her a fair procedure in arriving at that correct and preferable decision. Therefore, one ignores the alleged errors attending the making of the original decision: see too: Twist v Randwick Municipal Council [1976] HCA 58 ; (1976) 136 CLR 106 at 116.
Case: Twist v Randwick Municipal Council [1976] HCA 58 ; (1976) 136 CLR 106
Outcome: followed
In Zubair v Minister [2004] FCAFC 248 ; (2004) 139 FCR 344 at 352-354 [28] - [32] a Full Court of this Court held that any error affecting the decision of a delegate, including one which may go to jurisdiction, could not be relied on to challenge the subsequent decision on a merits review before the Tribunal. That is because the function of the Tribunal on review is to arrive at the correct and preferable decision: see Wilson v Minister for Aboriginal and Torres Strait Islander Affairs [1996] HCA 18 ; (1996) 189 CLR 1 at 18. Secondly, by electing to challenge the adverse decision by way of merits review an applicant invites the reviewer to apply to him or her a fair procedure in arriving at that correct and preferable decision. Therefore, one ignores the alleged errors attending the making of the original decision: see too: Twist v Randwick Municipal Council [1976] HCA 58 ; (1976) 136 CLR 106 at 116.
Case: Zubair v Minister [2004] FCAFC 248 ; (2004) 139 FCR 344
Outcome: followed
In Zubair v Minister [2004] FCAFC 248 ; (2004) 139 FCR 344 at 352-354 [28] - [32] a Full Court of this Court held that any error affecting the decision of a delegate, including one which may go to jurisdiction, could not be relied on to challenge the subsequent decision on a merits review before the Tribunal. That is because the function of the Tribunal on review is to arrive at the correct and preferable decision: see Wilson v Minister for Aboriginal and Torres Strait Islander Affairs [1996] HCA 18 ; (1996) 189 CLR 1 at 18. Secondly, by electing to challenge the adverse decision by way of merits review an applicant invites the reviewer to apply to him or her a fair procedure in arriving at that correct and preferable decision. Therefore, one ignores the alleged errors attending the making of the original decision: see too: Twist v Randwick Municipal Council [1976] HCA 58 ; (1976) 136 CLR 106 at 116. 14 Whether or not Zubair would otherwise apply to the present applicant, one has only to consider the persistent litigation brought by the applicant challenging the rejection of his claims by the Tribunal to see that his Honour was justified in coming to the conclusion that the proceedings below ought be dismissed.
Case: Re ACM Gold Ltd (1992) 34 FCR 530
Outcome: referred to
By making the order that a meeting of members be convened to consider the proposed arrangement, the Court did no more than indicate that it was satisfied that the proposed arrangement outlined in the explanatory statement warranted consideration by members and the exercise of their commercial judgment, and that if the resolution proposed to be put at the meeting was passed by the majorities prescribed by s 411(4)(a)(ii) of the Act such a decision by the members could support an order by the Court that the proposed arrangement be approved. (See: Re ACM Gold Ltd (1992) 34 FCR 530 per O'Loughlin J at 535). 12 The requirement of s 411(17)(a) of the Act that the Court be satisfied that the arrangement has not been proposed for the purpose of enabling the takeover provisions of Ch 6 of the Act to be avoided, obliged the Court to consider whether a "break fee" of $2,600,000.00 that the directors of the plaintiff had bound the plaintiff to pay to IAMGOLD if another offer to buy the shares of the plaintiff caused the members to reject the proposed arrangement, could have affected the market in the plaintiff's shares and have infringed the spirit of the provisions of Ch 6 of the Act . Section 602 of the Act provides that it is a purpose of Ch 6 to ensure that acquisition of control over the voting shares of a corporation "takes place in an efficient, competitive and informed manner". (See: Re Northumberland Insurance Co Ltd (No 3) (1977) 3 ACLR 15). Observations on such a question are made in ASIC Policy Statements PS 60 (at 60.1 60.10) and PS 142 (at 142.18 142.19). In the absence of any relevant evidence, and on the assumption that ASIC has given due consideration to the question and has not elicited any material relevant to the purpose of the proposal that should be put before the Court, the Court may be satisfied that the purpose of IAMGOLD in participating in the proposed arrangement was to implement a merger with the plaintiff in the most efficient way and not to avoid the provisions of Ch 6. (See: Re ACM Gold Ltd per O'Loughlin J at 535-543).
Case: Re Archaean Gold NL (1997) 23 ACSR 143
Outcome: referred to
An 'ex parte' application made under s 411(1) of the Act obliges the plaintiff to draw to the Court's attention any potential problems in the application. (See: Re Archaean Gold NL (1997) 23 ACSR 143 per Santow J at 148). In addition, in some circumstances it may be necessary for the application to be conducted as an inquisitorial proceeding to enable the Court to determine whether it is satisfied that it is appropriate to make an order under s 411(1) of the Act . Of course, if an objector to the proposed arrangement has been given leave by the Court to be heard on the application, or has been joined as a defendant to the application, the proceeding can be conducted as an adversarial hearing in the ordinary way. (See: Statewest Credit Society Limited v Home Building Society Limited [2005] FCAFC 273).
Case: Statewest Credit Society Limited v Home Building Society Limited [2005] FCAFC 273
Outcome: referred to
An 'ex parte' application made under s 411(1) of the Act obliges the plaintiff to draw to the Court's attention any potential problems in the application. (See: Re Archaean Gold NL (1997) 23 ACSR 143 per Santow J at 148). In addition, in some circumstances it may be necessary for the application to be conducted as an inquisitorial proceeding to enable the Court to determine whether it is satisfied that it is appropriate to make an order under s 411(1) of the Act . Of course, if an objector to the proposed arrangement has been given leave by the Court to be heard on the application, or has been joined as a defendant to the application, the proceeding can be conducted as an adversarial hearing in the ordinary way. (See: Statewest Credit Society Limited v Home Building Society Limited [2005] FCAFC 273).
Case: Re Sonodyne International Ltd (1995) 13 ACLC 221
Outcome: referred to
Before making an order under s 411(1) the Court must be satisfied that the proposed explanatory statement provides sufficient disclosure of matters relevant to the proposed arrangement and be able to form the opinion that acceptance of such an arrangement by members could be regarded by reasonable business people to be a decision made for the benefit of members. (See: Re Sonodyne International Ltd (1995) 13 ACLC 221). 6 In the instant case the proposed arrangement to be put to the members for acceptance was that the whole of the shareholding in the plaintiff be acquired by IAMGOLD Corporation ("IAMGOLD") and that the plaintiff become a wholly owned subsidiary of IAMGOLD. In its terms the proposed arrangement, if approved by the Court, would effect a compulsory acquisition of all of the shares in the Plaintiff without compliance with the takeover provisions of Ch 6 of the Act . 7 Given that the proposed arrangement would bind all members (notwithstanding the terms of s 414 of the Act ) the Court had to have regard to whether the explanatory statement provided sufficient detail of the benefits and detriments of the proposed arrangement for members to be sufficiently informed to be able to make a commercial judgment on whether the proposed arrangement was in their interests. That is to say, the Court had to be satisfied that all information a member may regard as material to a decision on the proposed arrangement appeared to have been adequately disclosed.
Case: Re NRMA Ltd (No 2) [2000] NSWSC 408 ; (2000) 34 ACSR 261
Outcome: referred to
Having regard to the fact that the members of the plaintiff were sufficiently informed by the explanatory statement to be able to determine for themselves whether it was in their interests for IAMGOLD to acquire their shares, and did so in overwhelming numbers, and having regard to the fact that all requirements of the Act have been met, I am satisfied that the Court should approve the arrangement pursuant to s 411(6) of the Act. (See: Re NRMA Ltd (No 2) [2000] NSWSC 408 ; (2000) 34 ACSR 261 per Santow J at 270). 14 Accordingly the order sought by the plaintiff that the proposed arrangement be approved will be made. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lee. Associate: Dated: 13 March 2006 Counsel for the Applicant: L Wilk (24, 25 January 2006) S M Davies; L Wilk (13 March 2006) Solicitors for the Applicant: Blake Dawson Waldron Date of Hearing: 24, 25 January 2006, 13 March 2006 Date of Judgment: 13 March 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/230.html