mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: ICI Chemicals v Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214
Outcome: referred to
In ICI Chemicals v Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214, the Full Court of this Court (Lee, Heerey and Lehane JJ) referred to the metaphor involving the flag and said (at 230 [51]): "In those circumstances, and in the absence of relevant expert evidence, we think that the primary judge was correct to conclude that Williamitis did not anticipate the claims of the patent in suit. A familiar metaphor illustrating the concept of anticipation is that the prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee: General Tire at 485-486. In the present case, the appellants' argument involved the skilled addressee rummaging through the Williamitis flag locker to find a flag which Williamitis possessed and could have planted."
Case: Kanzal v Lee [1936] HCA 39 ; (1936) 58 CLR 670
Outcome: referred to
Claims 1 and 2 are each claims for a combination. Each claim consists of a number of integers no one of which was not known at the priority date. However, the applicants submit that they are so arranged and related that they work together to produce a single result or a new thing. In Kanzal v Lee [1936] HCA 39 ; (1936) 58 CLR 670 Dixon and McTiernan JJ said (at 687): "Although the principles relied upon are old and simple and the features, separately considered, are used in daily practice for all sorts of purposes, the production of a new implement by their judicious use may involve an inventive step or display inventive ingenuity, if the integers are so combined and related that they work in co-operation to effect a purpose or provide an appliance which is new . " See also Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30 and Sunbeam Corporation v Morphy Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98 (" Sunbeam Corporation ") at 101 per Windeyer J.
Case: Martin Engineering v Trison Holdings (1989) 14 IPR 330
Outcome: referred to
I have already discussed the relationship between claims 1 and 2 on the one hand and claim 4 on the other (see [86]-[88] above). As a matter of construction, the claims cover a termite resistant product which is a liquid on impregnation and which becomes a solid thereafter. In those circumstances, the argument that the invention is not useful must fail. Had I construed claims 1 and 2 to include a termite resisting product which was in liquid form on impregnation and in a solid or liquid form thereafter then a real question of utility would have arisen ( Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271; Martin Engineering v Trison Holdings (1989) 14 IPR 330 at 337 per Burchett J). However, I would wish to make two points in connexion with that. First, such resulting inutility would be a reason not to construe claims 1 and 2 in that fashion, when the construction not resulting in inutility, which I have adopted, is open: Welch Perrin Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 602 per Menzies J. Secondly, it is not to be assumed that had it been necessary to deal with the question, inutility would have been made out on the facts. The respondents bore the onus on the issue of utility and there was no evidence before me as to types of liquid, evaporation rates and atmospheric conditions in the cavity. In the circumstances, it is not necessary for me to resolve that issue.
Case: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228
Outcome: referred to
It is well-established that the basic test for anticipation or want of novelty is the same as that for infringement and "one can properly ask oneself whether the alleged anticipation would if the patent were valid, constitute an infringement": Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235 per Aickin J. In that case his Honour said that as no prior document or object involved or incorporated all the integers of any one of the claims there could not possibly be an infringement.
Case: Necaro Holdings v Martin Engineering (1990) 16 IPR 545
Outcome: referred to
In the case of a combination, it is the combination which must be disclosed in the prior specification: Necaro Holdings v Martin Engineering (1990) 16 IPR 545 at 549 per Lockhart J; TA Blanco White Patents for Inventions (5 th ed, 1983) para 4.107. 103 The respondents referred to a number of alleged anticipations but emphasised three in particular. The Kennedy and Hitchen patent (published 22 May 1997) 104 The abstract of this patent is in the following terms: "A method for preventing or precluding migration of termites or insects through a possible area of migration for example between a concrete slab (13) and a brick wall (28) erected on the slab (13) including the step of applying to a possible area of migration as for example a join line (15) between the slab (13) and wall (28), a settable or curable barrier material which defines a barrier to termite or insect migration through said area. The barrier material may define a physical barrier or may incorporate a chemical to define a chemical barrier. The method may be used also for preventing termite penetration along pipes (19) penetrating a slab (13) by providing beads (68) around the pipe (19) within the slab (13) or at the junction between the pipe (19) and slab (13)."
Case: Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271
Outcome: referred to
I have already discussed the relationship between claims 1 and 2 on the one hand and claim 4 on the other (see [86]-[88] above). As a matter of construction, the claims cover a termite resistant product which is a liquid on impregnation and which becomes a solid thereafter. In those circumstances, the argument that the invention is not useful must fail. Had I construed claims 1 and 2 to include a termite resisting product which was in liquid form on impregnation and in a solid or liquid form thereafter then a real question of utility would have arisen ( Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271; Martin Engineering v Trison Holdings (1989) 14 IPR 330 at 337 per Burchett J). However, I would wish to make two points in connexion with that. First, such resulting inutility would be a reason not to construe claims 1 and 2 in that fashion, when the construction not resulting in inutility, which I have adopted, is open: Welch Perrin Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 602 per Menzies J. Secondly, it is not to be assumed that had it been necessary to deal with the question, inutility would have been made out on the facts. The respondents bore the onus on the issue of utility and there was no evidence before me as to types of liquid, evaporation rates and atmospheric conditions in the cavity. In the circumstances, it is not necessary for me to resolve that issue.
Case: Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30
Outcome: referred to
Claims 1 and 2 are each claims for a combination. Each claim consists of a number of integers no one of which was not known at the priority date. However, the applicants submit that they are so arranged and related that they work together to produce a single result or a new thing. In Kanzal v Lee [1936] HCA 39 ; (1936) 58 CLR 670 Dixon and McTiernan JJ said (at 687): "Although the principles relied upon are old and simple and the features, separately considered, are used in daily practice for all sorts of purposes, the production of a new implement by their judicious use may involve an inventive step or display inventive ingenuity, if the integers are so combined and related that they work in co-operation to effect a purpose or provide an appliance which is new . " See also Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30 and Sunbeam Corporation v Morphy Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98 (" Sunbeam Corporation ") at 101 per Windeyer J.
Case: Radiation Ltd v Galliers and Kleirr Pty Ltd [1938] HCA 17 ; (1938) 60 CLR 36
Outcome: referred to
The test for determining if a claim has been infringed by a defendant's product was stated by Dixon J (as his Honour then was) in Radiation Ltd v Galliers and Kleirr Pty Ltd [1938] HCA 17 ; (1938) 60 CLR 36 (at 51-52): "But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing. It is, no doubt, sometimes the case that an inventor explains in his specification steps or methods involving an idea, conception or principle of wider application or of deeper significance than that for which he claims. Sometimes a claim, particularly a claim for a combination, is expressly confined to a particular form of construction or the like, and in such a case it is useless for the patentee to complain that his idea of what he calls his principle has been applied in a different construction or has been expressed by means of a mechanical equivalent of some element which his claims make of the essence of his monopoly. Such cases are well illustrated by the decisions of this court in Walker v. Alemite Corporation and Shave v. H. V. McKay Massey Harris Pty Ltd But the words of James L.J. in Clark v. Adie, p. 675 must not be forgotten: 'The patent is for the entire combination, but there is, or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination.'" 58 It is necessary at this point to describe the respondents' product, the Term-Seal FRM, in some detail. 59 Pursuant to a notice to produce, samples of the Term-Seal FRM (or fibre re-inforced membrane) were produced and tendered on the hearing before me. The membrane before the application of Term-Seal Multi-Purpose became exhibit A2, three samples of the membrane with the Term-Seal Multi-Purpose applied to it (that is, what I will call the Term-Seal FRM) became exhibits A3, A4 and A5 respectively. The Term-Seal Multi-Purpose in a bucket became exhibit A6 and the same product in a jar became exhibit A7. The "recipe or formula for the Term-Seal Termite Resistant Product which is applied to the Term-Seal FRM" is part of exhibit A1. On occasions the membrane was referred to as the Mopet, which is a brand name.
Case: Sunbeam Corporation v Morphy Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98
Outcome: referred to
Claims 1 and 2 are each claims for a combination. Each claim consists of a number of integers no one of which was not known at the priority date. However, the applicants submit that they are so arranged and related that they work together to produce a single result or a new thing. In Kanzal v Lee [1936] HCA 39 ; (1936) 58 CLR 670 Dixon and McTiernan JJ said (at 687): "Although the principles relied upon are old and simple and the features, separately considered, are used in daily practice for all sorts of purposes, the production of a new implement by their judicious use may involve an inventive step or display inventive ingenuity, if the integers are so combined and related that they work in co-operation to effect a purpose or provide an appliance which is new . " See also Palmer v Dunlop Perdriau Rubber Company Limited [1937] HCA 43 ; (1937) 59 CLR 30 and Sunbeam Corporation v Morphy Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98 (" Sunbeam Corporation ") at 101 per Windeyer J. 56 The relevant comparison for determining if a claim has been infringed is between the applicants' Patent and the respondents' product. The comparison is not between the applicants' product and the respondents' product: Sunbeam Corporation at 101 per Windeyer J.
Case: Welch Perrin Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588
Outcome: referred to
I have already discussed the relationship between claims 1 and 2 on the one hand and claim 4 on the other (see [86]-[88] above). As a matter of construction, the claims cover a termite resistant product which is a liquid on impregnation and which becomes a solid thereafter. In those circumstances, the argument that the invention is not useful must fail. Had I construed claims 1 and 2 to include a termite resisting product which was in liquid form on impregnation and in a solid or liquid form thereafter then a real question of utility would have arisen ( Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271; Martin Engineering v Trison Holdings (1989) 14 IPR 330 at 337 per Burchett J). However, I would wish to make two points in connexion with that. First, such resulting inutility would be a reason not to construe claims 1 and 2 in that fashion, when the construction not resulting in inutility, which I have adopted, is open: Welch Perrin Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 602 per Menzies J. Secondly, it is not to be assumed that had it been necessary to deal with the question, inutility would have been made out on the facts. The respondents bore the onus on the issue of utility and there was no evidence before me as to types of liquid, evaporation rates and atmospheric conditions in the cavity. In the circumstances, it is not necessary for me to resolve that issue.
Case: Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262
Outcome: referred to
The attributes of the person skilled in the relevant art for the purposes of s 7(2) have been referred to in a number of authorities. For present purposes it is enough to say that the hypothetical worker must be taken to be non-inventive, although skilled in the relevant art. By reason of the conditions which prevail in modern industry, he or she may be part of a sophisticated research team, with a great amount of information available to it ( Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 at 270 per Aickin J (with whom the other members of the Court agreed); Elconnex at 507 per Burchett J). 144 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: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; (1986) 162 CLR 24
Outcome: followed
In respect to the second ground of appeal, the first respondent contended that the Tribunal considered in detail the appellant's evidence relating to his relationship with his partner. The first respondent contended that any weight to be attached to a relevant consideration is a matter of the merits and a Court should proceed with caution before it interferes with such a finding: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; (1986) 162 CLR 24 per Mason J at 42. 43 The second ground of appeal goes to the merits of the matter. The Tribunal considered the appellant's claim in respect to his relationship with his partner. Having regard to its credibility findings, it was entitled to give whatever weight was appropriate to those claims. That was a matter for the Tribunal: Minister for Aboriginal Affairs v Peko-Wallsend Ltd [1986] HCA 40 ; 162 CLR 24. Its approach was not indicative of jurisdictional error.
Case: Minister for Immigration and Multicultural and Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12
Outcome: followed
Finally, the first respondent submits that the third ground should also fail as the Federal Magistrate made no error in holding that s 427(1)(d) of the Act does not impose any duty on the Tribunal to investigate: Minister for Immigration and Multicultural and Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12 at [43] . 44 I accept the first respondent's contention in respect to the third ground. There was no obligation imposed upon the Tribunal to carry out the inquiries of which the appellant complains: Minister for Immigration and Multicultural and Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12 at [43] ; s 427(1)(d) of the Act. 45 All grounds of appeal fail. The appeal must be dismissed. The appellant must pay the first respondent's costs. I certify that the preceding forty-five (45) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lander. Associate: Dated: 7 March 2008 Counsel for the Appellant: Appellant appeared in person Counsel for the First Respondent: Ms M Allars Solicitor for the First Respondent: DLA Phillips Fox Date of Hearing: 4 March 2008 Date of Judgment: 7 March 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/269.html
Case: Australian Securities &amp; Investments Commission, In the Matter of Richstar Enterprises Pty Ltd (ACN 099 071 968) v Carey (No 3) [2006] FCA 433
Outcome: cited
On 20 April 2006 freezing orders were made against Bowesco in respect of its assets pursuant to s 1323 of the Act: Australian Securities and Investments Commission, In the Matter of Richstar Enterprises Pty Ltd (ACN 099 071 968) v Carey (No 3) [2006] FCA 433. Those orders were varied on 30 June 2006 and expressed to permit the Bowesco receivers appointed by Suncorp-Metway to exercise their powers pursuant to their appointment including their powers under s 420 of the Act.
Case: Moodemere Pty Ltd (In Liq) v Waters [1998] VR 215
Outcome: cited
The general entitlement of a receiver appointed under a charge to deduct and retain, out of the funds realised, costs, charges and expense incurred in the realisation was asserted as a matter of general principle in Moodemere Pty Ltd (In Liq) v Waters [1998] VR 215 at 222 (Murphy J) and 229 (Tadgell J). In Nicobar Pty Ltd v Abrokiss (2003) 48 ACSR 259, Young CJ said (at [60]): 'The general rule is that where a person who is a fiduciary or an officer of the court produces a fund through his own effort, he is entitled to an equitable lien over the fund in respect of defending himself against claims made against him for what he did in producing the fund.' His Honour, however, was not prepared to accept that an equitable lien might exist in the case of a privately appointed receiver, saying (at [62]): 'Although the scope of equitable liens is wide and the boundaries are flexible, and although a receiver appointed out of court owes fiduciary duties both to his appointor and perhaps also to the mortgagor, I do not consider that the principle applies to receivers appointed out of court. If this were not so, there would be little point in the authorities continuing to emphasise the fact that the receivers in the successful cases of lien were receivers appointed by the court.' His Honour referred to O'Donnell, Company Receivers &amp; Administrators at [12.109] (Update 40) and Harris &amp; Lewin Pty Ltd (in liq) v Harris &amp; Lewin Agents Pty Ltd (1975-76) CLC 40-216. He further observed that (at [64]): 'The receiver is usually the agent of the mortgagor company and may have a lien against the assets of the company, but this will not normally have force against a secured creditor.'
Case: Nicobar Pty Ltd v Abrokiss (2003) 48 ACSR 259
Outcome: cited
The general entitlement of a receiver appointed under a charge to deduct and retain, out of the funds realised, costs, charges and expense incurred in the realisation was asserted as a matter of general principle in Moodemere Pty Ltd (In Liq) v Waters [1998] VR 215 at 222 (Murphy J) and 229 (Tadgell J). In Nicobar Pty Ltd v Abrokiss (2003) 48 ACSR 259, Young CJ said (at [60]): 'The general rule is that where a person who is a fiduciary or an officer of the court produces a fund through his own effort, he is entitled to an equitable lien over the fund in respect of defending himself against claims made against him for what he did in producing the fund.' His Honour, however, was not prepared to accept that an equitable lien might exist in the case of a privately appointed receiver, saying (at [62]): 'Although the scope of equitable liens is wide and the boundaries are flexible, and although a receiver appointed out of court owes fiduciary duties both to his appointor and perhaps also to the mortgagor, I do not consider that the principle applies to receivers appointed out of court. If this were not so, there would be little point in the authorities continuing to emphasise the fact that the receivers in the successful cases of lien were receivers appointed by the court.' His Honour referred to O'Donnell, Company Receivers &amp; Administrators at [12.109] (Update 40) and Harris &amp; Lewin Pty Ltd (in liq) v Harris &amp; Lewin Agents Pty Ltd (1975-76) CLC 40-216. He further observed that (at [64]): 'The receiver is usually the agent of the mortgagor company and may have a lien against the assets of the company, but this will not normally have force against a secured creditor.'