mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 619
Outcome: applied
discovering the Patent on 6 March 2009 Sigma persisted with its commercial preparations for a launch of its product. In very similar circumstances to those here present, the High Court in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 619 ( Beecham ) dealing with balance of convenience, said at 626: The facts which appear to us to be decisive on this question may be stated quite briefly. In April 1967, after the plaintiff had been building up in Australia a substantial business in ampicillin over a period of several years, the defendant announced its intention of marketing hetacillin in Australia. The plaintiff on 10th May 1967 warned the defendant that if it began to do so proceedings for infringement of the patents would be taken. It was in the face of this warning that the defendant commenced the acts now complained of, and the action was thereafter instituted without delay. Any goodwill the defendant may since have built up for hetacillin would of course be destroyed or damaged by granting an injunction, but that was a risk the defendant took with its eyes open . If it be not restrained, it will presumably take advantage of the time before the hearing to subject the goodwill of the plaintiff's established trade in ampicillin to the prejudice of competition from a product which the defendant maintains has some points of superiority. In no meaningful sense could matters be said to be kept in statu quo if in these circumstances the defendant were left free to pursue its course, merely keeping an account of the profits it makes . (Emphases added.)
Case: GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502
Outcome: followed
considerations apply where, as here, the party seeking interlocutory relief alleges infringement and the other party alleges invalidity. As to this, in Interpharma 79 IPR 261 at [17] Jessup J said: In such a situation, it will not be enough to ask whether the applicant has shown a serious question, or a probability of success, on his or her own case. While the answer to that question may be in the affirmative, it will then be necessary to consider whether that answer should be qualified by the apparent strength of the defence. In a patent case, the fact of registration constitutes prima facie evidence of validity: AB Hassle v Pharmacia (Aust) Pty Ltd (1995) 33 IPR 63 at 69-70 ( AB Hassle ); GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 ... at [2]-[6] ... It has been said that it is for the respondent to show that want of validity is a triable question: AB Hassle at 69. This seems clear enough, but, in my opinion, the analysis needs to be taken a step further. Is it sufficient that the respondent does show a triable question on validity? In my view, if that is as far as the respondent goes, then, assuming always that the applicant has shown a triable issue on infringement, absent questions of validity, the conclusion would remain that the latter had a triable question. That is to say, as a matter of analysis, unless the case for invalidity is sufficiently strong (at the provisional level) to qualify the conclusion that, overall, the applicant has a serious question, or a probability of success, the court should move to consider the adequacy of damages, the balance of convenience and other discretionary matters. It is the applicant's title to interlocutory relief which is under consideration, and the bottom-line question, as it were, is whether the applicant has a serious question, or a probability of success, not whether the respondent does in relation to some point of defence raised or foreshadowed. The purpose of an interlocutory injunction is to preserve the status quo pending trial. What was said by Gyles J in GenRx Pty Ltd v Sanofi-Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 at [15] is applicable here. A new entrant into the market would have an effect which may be both unpredictable and irreversible. Once Sigma is in the market, it is likely that other generic manufacturers will also come in. I doubt whether, if Sigma is not restrained and Wyeth succeeds at trial, Wyeth will ever be able to resume the position it now occupies. Cf Interpharma 79 IPR 261 at [71]. In my view it is likely that Wyeth will suffer irreparable harm for which damages will not adequately compensate it, unless an injunction is granted.
Case: Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31
Outcome: cited
leading cases, including NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655 at 661-666 and Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 at [63] , establish that: (a) the opening words of s 18(1) of the Act "a patentable invention is an invention that" impose a threshold requirement that the "patentable invention" be an "invention", that is to say an alleged manner of new manufacture; (b) that requirement will not be met if, on the face of the specification, the subject matter: (i) lacks the necessary quality of inventiveness under the Statute of Monopolies ; (ii) is not new; (c) a new use of an old substance is not an invention if its known properties make it suitable for that use in such a case the new purpose is no more than analogous to the purposes for which the utility of the substance is already known; and (d) there will be an invention if the new use consists in taking advantage of a hitherto unknown or unsuspected property of the substance.
Case: Merck &amp; Co Inc v GenRx Pty Ltd (2006) 70 IPR 286
Outcome: cited
similar situation existed in Interpharma 79 IPR 261 where the alleged infringer had proceeded with its preparations to enter the market "with its eyes wide open". Jessup J said at [77] that this significantly compromised that party's attempt to resist an injunction which went no further than to maintain the status quo. See also Pharmacia Italia 67 IPR 397 at [38] and Merck &amp; Co Inc v GenRx Pty Ltd (2006) 70 IPR 286 at [19].
Case: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655
Outcome: cited
leading cases, including NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655 at 661-666 and Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 at [63] , establish that: (a) the opening words of s 18(1) of the Act "a patentable invention is an invention that" impose a threshold requirement that the "patentable invention" be an "invention", that is to say an alleged manner of new manufacture; (b) that requirement will not be met if, on the face of the specification, the subject matter: (i) lacks the necessary quality of inventiveness under the Statute of Monopolies ; (ii) is not new; (c) a new use of an old substance is not an invention if its known properties make it suitable for that use in such a case the new purpose is no more than analogous to the purposes for which the utility of the substance is already known; and (d) there will be an invention if the new use consists in taking advantage of a hitherto unknown or unsuspected property of the substance.
Case: Pharmacia Italia SpA v Interpharma Pty Ltd (2005) 67 IPR 397
Outcome: cited
balance of convenience favours the grant of relief. At best Sigma's trade in Evelexa-XR has just commenced. It launched its product on 1 May 2009, the same day on which Wyeth commenced its cross claim. Sigma has commenced taking orders on the basis that the product will be delivered to pharmacies for sale by 1 June 2009. However there is no evidence that any supply contract has been entered into. On the other hand Wyeth has an established trade. It is much more likely to suffer from a disturbance of the status quo than is Sigma. The relevance of this comparison between a new entrant and an established participant in a market is shown by cases such as Appleton (1983) 3 NSWLR at 219 and Pharmacia Italia SpA v Interpharma Pty Ltd (2005) 67 IPR 397 ( Pharmacia Italia ) at [52]. A similar situation existed in Interpharma 79 IPR 261 where the alleged infringer had proceeded with its preparations to enter the market "with its eyes wide open". Jessup J said at [77] that this significantly compromised that party's attempt to resist an injunction which went no further than to maintain the status quo. See also Pharmacia Italia 67 IPR 397 at [38] and Merck &amp; Co Inc v GenRx Pty Ltd (2006) 70 IPR 286 at [19].
Case: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79
Outcome: applied
Court then approved the following passage from Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 (Gummow J): The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification. The High Court then said (at [69]): Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.
Case: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405
Outcome: cited
(a) and (c) are related in this sense, that whether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties' substantive cases will often be an important consideration to be weighed in the balance: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at [416]; Interpharma Pty Ltd v Commissioner of Patents (2008) 79 IPR 261 ( Interpharma ) at [16].
Case: Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225
Outcome: referred to
The Court has an absolute and unfettered discretion to award costs but that discretion must be exercised judicially: see Trade Practices Commission v Nicholas Enterprises Pty Ltd (1979) 42 FLR 213 at 219. Any departure from the ordinary rule that costs should be paid on a party-party basis requires the presence of something special or unusual in the conduct of the case to be demonstrated: see Preston v Preston [1981] 3 WLR 619 at 637. The types of case in which it may be appropriate to award indemnity costs do not fall in any closed categories: see Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991). One type of case in which it has been held that indemnity costs might be ordered is that in which an applicant pursues a hopeless case. In Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 Woodward J said: "I believe that it is appropriate to consider awarding "solicitor and client" or "indemnity" costs, whenever it appears that an action has been commenced or continued in circumstances where the applicant, properly advised, should have known that he no chance of success. In such cases the action must be presumed to have been commenced or continued for some ulterior motive, or because of some wilful disregard of the known facts or the clearly established law. Such cases are, fortunately, rare. But when they occur, the Court will need to consider how it should exercise its unfettered discretion." See also the authorities collected by Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 230-234.
Case: Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397
Outcome: referred to
The Court has an absolute and unfettered discretion to award costs but that discretion must be exercised judicially: see Trade Practices Commission v Nicholas Enterprises Pty Ltd (1979) 42 FLR 213 at 219. Any departure from the ordinary rule that costs should be paid on a party-party basis requires the presence of something special or unusual in the conduct of the case to be demonstrated: see Preston v Preston [1981] 3 WLR 619 at 637. The types of case in which it may be appropriate to award indemnity costs do not fall in any closed categories: see Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991). One type of case in which it has been held that indemnity costs might be ordered is that in which an applicant pursues a hopeless case. In Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 Woodward J said: "I believe that it is appropriate to consider awarding "solicitor and client" or "indemnity" costs, whenever it appears that an action has been commenced or continued in circumstances where the applicant, properly advised, should have known that he no chance of success. In such cases the action must be presumed to have been commenced or continued for some ulterior motive, or because of some wilful disregard of the known facts or the clearly established law. Such cases are, fortunately, rare. But when they occur, the Court will need to consider how it should exercise its unfettered discretion." See also the authorities collected by Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 230-234.
Case: Inspector General in Bankruptcy v Bradshaw [2006] FCA 22
Outcome: referred to
There is no doubt that the Court has a discretion, in the interests of justice, to order that Mr Bulic's case should be reopened so that he can adduce further evidence and advance further argument: see Inspector General in Bankruptcy v Bradshaw [2006] FCA 22 at [24] . The availability of "fresh evidence" will, in some circumstances, warrant the reopening of a case. 22 Mr Bulic submits that the documents would establish a number of negative propositions. They are that: &#8226; There are no documents held by the respondent which contain any direct proof of Mr Bulic's indebtedness in the sum alleged. &#8226; The files appear to have been "culled" and are incomplete. It is also suggested that the documents appear, in some instances, to be confusing and self contradictory. The balance inquiries which, it is said, should be examined by an expert accountant are numerous. They are printouts of computer records on various dates between 1990 and 1992. They relate to each of the four accounts held by Mr Bulic with the respondent and its predecessor. Each records debit and credit entries over a particular period. They appear to have been printed at the instigation of bank officers and used as the basis for the calculation of Mr Bulic's indebtedness from time to time. 23 The respondent accepts that the Court has a discretion to reopen the case but submits that there is nothing in the newly produced material which would warrant such a step being taken. This is because there is nothing in that material which could reasonably be regarded as advancing the case already put by Mr Bulic. It contends that, on the contrary, there is certain documentary material which confirms Mr Bulic's indebtedness to it, in the amounts alleged, at relevant times.
Case: Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991)
Outcome: cited
The Court has an absolute and unfettered discretion to award costs but that discretion must be exercised judicially: see Trade Practices Commission v Nicholas Enterprises Pty Ltd (1979) 42 FLR 213 at 219. Any departure from the ordinary rule that costs should be paid on a party-party basis requires the presence of something special or unusual in the conduct of the case to be demonstrated: see Preston v Preston [1981] 3 WLR 619 at 637. The types of case in which it may be appropriate to award indemnity costs do not fall in any closed categories: see Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991). One type of case in which it has been held that indemnity costs might be ordered is that in which an applicant pursues a hopeless case. In Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 Woodward J said: "I believe that it is appropriate to consider awarding "solicitor and client" or "indemnity" costs, whenever it appears that an action has been commenced or continued in circumstances where the applicant, properly advised, should have known that he no chance of success. In such cases the action must be presumed to have been commenced or continued for some ulterior motive, or because of some wilful disregard of the known facts or the clearly established law. Such cases are, fortunately, rare. But when they occur, the Court will need to consider how it should exercise its unfettered discretion." See also the authorities collected by Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 230-234.
Case: Trade Practices Commission v Nicholas Enterprises (1979) 42 FLR 213
Outcome: referred to
The Court has an absolute and unfettered discretion to award costs but that discretion must be exercised judicially: see Trade Practices Commission v Nicholas Enterprises Pty Ltd (1979) 42 FLR 213 at 219. Any departure from the ordinary rule that costs should be paid on a party-party basis requires the presence of something special or unusual in the conduct of the case to be demonstrated: see Preston v Preston [1981] 3 WLR 619 at 637. The types of case in which it may be appropriate to award indemnity costs do not fall in any closed categories: see Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991). One type of case in which it has been held that indemnity costs might be ordered is that in which an applicant pursues a hopeless case. In Fountain Selected Meats (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401 Woodward J said: "I believe that it is appropriate to consider awarding "solicitor and client" or "indemnity" costs, whenever it appears that an action has been commenced or continued in circumstances where the applicant, properly advised, should have known that he no chance of success. In such cases the action must be presumed to have been commenced or continued for some ulterior motive, or because of some wilful disregard of the known facts or the clearly established law. Such cases are, fortunately, rare. But when they occur, the Court will need to consider how it should exercise its unfettered discretion." See also the authorities collected by Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 230-234.
Case: Minister for Immigration and Ethnic Affairs v Singh (1997) 72 FCR 288
Outcome: referred to
Lloyd-Jones FM accepted the essence of the Minister's submissions advanced regarding the lack of viability of the appellants' claims as putative refugees. The Minister submitted that the Tribunal correctly determined their application adversely to them as at the date of the determination. In purportedly applying Minister for Immigration and Ethnic Affairs v Singh (1997) 72 FCR 288 at 294 (Black CJ, Lee, von Doussa, Sundberg and Mansfield JJ), the Tribunal was evidently of the view that the appellant husband's circumstances the subject of his claims had not changed sufficiently since leaving Sir Lanka, and that the claimed threats were no more than further instances of circumstances which the Tribunal considered to have been evident at the time of the appellant husband's departure for Australia.
Case: WAEE v Minister for Immigration and Multicultural and Indigenous Affairs (2003) 75 ALD 630
Outcome: referred to
The appellants further submitted that 'it may strongly be inferred that the Tribunal failed to consider an issue and overlooked the material in the newspaper article', the appellants relying on the following dicta of the Full Court decision (French, Sackville and Hely JJ) in WAEE v Minister for Immigration and Multicultural and Indigenous Affairs (2003) 75 ALD 630 at [47], in principled support of that proposition: '[47] The inference that the tribunal has failed to consider an issue may be drawn from its failure to expressly deal with that issue in its reasons. But that is an inference not too readily to be drawn where the reasons are otherwise comprehensive and the issue has at least been identified at some point. It may be that it is unnecessary to make a finding on a particular matter because it is subsumed in findings of greater generality or because there is a factual premise upon which a contention rests which has been rejected. Where, however, there is an issue raised by the evidence advanced on behalf of an applicant and contentions made by the applicant and that issue, if resolved one way, would be dispositive of the tribunal's review of the delegate's decision, a failure to deal with it in the published reasons may raise a strong inference that it has been overlooked.' 20 Though I am not required to make any observation upon the extent of the potential persuasiveness of any segment of the evidence adduced to the Tribunal, I would observe nevertheless that the evident nature and implications of that assault upon a person having a public and at least quasi-political profile would have had inherent potential to be as unforgettable as they would allegedly have been significantly intimidating.
Case: Iyer v Minister for Immigration and Multicultural Affairs [2000] FCA 52
Outcome: referred to
Counsel for the Minister drew attention to Iyer v Minister for Immigration and Multicultural Affairs [2000] FCA 52 at [36] (O'Connor J), Addo v Minister for Immigration and Multicultural Affairs [1999] FCA 940 at [24] (Spender, O'Connor and Emmett JJ), and Re Minister for Immigration and Multicultural Affairs; ex parte Durairajasingham [2000] HCA 1 ; (2000) 168 ALR 407 at [64] - [66] (McHugh J sitting as a single justice of the High Court), in support of the contention that s 430 of the Act does not impose any duty to deal with adverse material. Counsel submitted in that regard that '[t]he significance of these authorities is that it is not open to a court to infer from the fact that evidence adverse to the findings made by a Tribunal has not been mentioned that it has not been properly considered'.