mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230
Outcome: referred to
There was no disagreement about the expression of the principles of construction. The debate lay in the different application of them, in particular in the subtle question of the correct perspective from, or prism through, which to read the patent application. The construction of the claims takes place in the context of the specification as a whole, recognising the existence and role of the different parts thereof, the Court having placed itself in the position of someone acquainted with the state of the art: Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39]; Welch Perrin &amp; Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 610; and Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1 at 16 [24] . That said, two different people skilled in the art may take the meaning of the specification as a whole or the claims therein differently. That may reflect the perennial problem of the imprecision of language, meaning and perception or it may reflect different emphases taken from the prior art. In such cases (as to a degree is the case here) the following words of Hely J in Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at 350 [81] are apposite (in his Honour's always helpful, if I may respectfully say so, discussion of the principles of construction of patents at 347-350 [70]-[81]): "As a general rule, the terms of a specification should be accorded their ordinary English meaning. Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning. However, the construction of the specification is for the Court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way." [citations omitted] 67 The reverse infringement test cannot be applied literally: see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 528 and R D Werner &amp; Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568-569. And see generally Bristol Myers Squibb Company v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at 546-49 [60] - [68] ; Jupiter Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at 105-106; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co (2005) 68 IPR 1 at 66-69 [311]-[324]; Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 63 IPR 476 at 487-490 [60]-[68]; Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511 at 537-538 [104] - [112] .
Case: General Tire &amp; Rubber Company v Firestone Tyre and Rubber Company Ltd (1971) 1A IPR 121
Outcome: discussed
An essential step in deciding any question of novelty or anticipation is the proper construction of both the prior publication and the claims in the patent application in the light of all admissible evidence: General Tire &amp; Rubber Company v Firestone Tyre and Rubber Company Ltd (1971) 1A IPR 121 at 137-38. The matter was expressed in General Tire &amp; Rubber 1A IPR at 138 as follows: "When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new for the purposes of s 32(1)(e) falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented: Flour Oxidising Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." [emphasis added]
Case: Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 63 IPR 476
Outcome: referred to
The reverse infringement test cannot be applied literally: see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 528 and R D Werner &amp; Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568-569. And see generally Bristol Myers Squibb Company v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at 546-49 [60] - [68] ; Jupiter Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at 105-106; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co (2005) 68 IPR 1 at 66-69 [311]-[324]; Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 63 IPR 476 at 487-490 [60]-[68]; Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511 at 537-538 [104] - [112] .
Case: Jupiter Ltd v Neurizon Pty Ltd (2005) 65 IPR 86
Outcome: referred to
The reverse infringement test cannot be applied literally: see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 528 and R D Werner &amp; Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568-569. And see generally Bristol Myers Squibb Company v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at 546-49 [60] - [68] ; Jupiter Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at 105-106; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co (2005) 68 IPR 1 at 66-69 [311]-[324]; Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 63 IPR 476 at 487-490 [60]-[68]; Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511 at 537-538 [104] - [112] .
Case: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1
Outcome: referred to
There was no disagreement about the expression of the principles of construction. The debate lay in the different application of them, in particular in the subtle question of the correct perspective from, or prism through, which to read the patent application. The construction of the claims takes place in the context of the specification as a whole, recognising the existence and role of the different parts thereof, the Court having placed itself in the position of someone acquainted with the state of the art: Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 at 236 [39]; Welch Perrin &amp; Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 610; and Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1 at 16 [24] . That said, two different people skilled in the art may take the meaning of the specification as a whole or the claims therein differently. That may reflect the perennial problem of the imprecision of language, meaning and perception or it may reflect different emphases taken from the prior art. In such cases (as to a degree is the case here) the following words of Hely J in Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at 350 [81] are apposite (in his Honour's always helpful, if I may respectfully say so, discussion of the principles of construction of patents at 347-350 [70]-[81]): "As a general rule, the terms of a specification should be accorded their ordinary English meaning. Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning. However, the construction of the specification is for the Court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way." [citations omitted]
Case: Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511
Outcome: referred to
The reverse infringement test cannot be applied literally: see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 528 and R D Werner &amp; Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568-569. And see generally Bristol Myers Squibb Company v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at 546-49 [60] - [68] ; Jupiter Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at 105-106; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co (2005) 68 IPR 1 at 66-69 [311]-[324]; Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 63 IPR 476 at 487-490 [60]-[68]; Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511 at 537-538 [104] - [112] .
Case: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228
Outcome: applied
The basic test for anticipation or want of novelty is the reverse infringement test set out by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235. Assistance is derived in applying this test by adopting and adapting the words of Lord Westbury LC in Hill v Evans (1862) 31 LJ Ch 457 at 463; 1A IPR 1 at 6-7, incorporating the relevant circumstances here: "... the antecedent statement [the Bennett Patent] must be such that a person of ordinary knowledge of the subject [Mr Daley or Mr Culley] would at once perceive, understand and be able practically to apply the discovery [the terms of the Bennett Patent, a two-staged system with the second place ending with the award of the prize by the first to attain a pre-determined objective] 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 careful application of the discovery, that affords sufficient room for another valid patent." See also Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 261.
Case: Minister for Immigration &amp; Multicultural Affairs v Hou [2002] FCA 574
Outcome: referred to
Second, it held that once a breach of condition 8202 had been established, s 116(3) and reg 2.43(2)(b) operated to make cancellation of the visa in such circumstances mandatory. The Tribunal held that it had no discretion to set aside the cancellation. In that regard it relied upon the judgments of Minister for Immigration &amp; Multicultural Affairs v Nguyen [2002] FCA 460 and Minister for Immigration &amp; Multicultural Affairs v Hou [2002] FCA 574.
Case: Minister for Immigration &amp; Multicultural Affairs v Nguyen [2002] FCA 460
Outcome: referred to
Second, it held that once a breach of condition 8202 had been established, s 116(3) and reg 2.43(2)(b) operated to make cancellation of the visa in such circumstances mandatory. The Tribunal held that it had no discretion to set aside the cancellation. In that regard it relied upon the judgments of Minister for Immigration &amp; Multicultural Affairs v Nguyen [2002] FCA 460 and Minister for Immigration &amp; Multicultural Affairs v Hou [2002] FCA 574.
Case: Minister for Immigration and Multicultural and Indigenous Affairs v Zhou [2006] FCAFC 96 ; (2006) 152 FCR 115
Outcome: applied
The Minister has conceded that the notice issued by the Institute did not comply with the requirements of s 20 of the ESOS Act and was therefore invalid. However, she has also correctly submitted that the invalidity of a s 20 notice does not lead to the invalidity of a subsequent decision of a delegate of the Minister, or the Tribunal, to cancel a visa pursuant to s 116 of the Migration Act : see Humayun and Minister for Immigration and Multicultural and Indigenous Affairs v Zhou [2006] FCAFC 96 ; (2006) 152 FCR 115. In any event, the Tribunal did not rely on the information contained in the s 20 notice when satisfying itself that the breach of condition 8202 had occurred. Accordingly, for both of those reasons, the appellant's submission that the s 20 notice was defective and invalid is of no consequence in the present appeal. 44 In Zhou , the Full Court of this Court accepted that the amendments could not assist a person whose student visa was cancelled prior to 8 October 2005. It stated (at [44]): "It may be further observed that the Migration Amendment Regulations 2005 (Cth) (No 8) have amended the provisions in Sch 5 relating to student (temporary) (class TU) visas in reg 2.43(2)(b). The effect of the amendment is to import an additional element into the matters which the Minister must consider before cancelling a visa for breach of a condition 8202. That element is that "the non-compliance was not due to exceptional circumstances beyond the visa holder's control". The effect is therefore to place the procedure under s 20 of the Overseas Students Act and s 116 of the Migration Act on a similar footing with respect to consideration of exceptional circumstances. The amendment came into effect on 7 October 2005 and so cannot assist Ms Zhou. It does however serve to address any apparent injustice implicit in the argument of "legal interaction" by reason of the fact that the requirement to attend in response to a s 20 notice afforded an opportunity for service of a s 119 notice. The necessity for this amendment is nevertheless confirmatory of the opinion we have reached that, without it, the relevant and regulatory provisions do not allow us to uphold the reasoning of the federal magistrate." 45 Following this reasoning, I reject the appellant's submission that the Minister and/or the Tribunal had an obligation to consider any "exceptional circumstances" before proceeding to cancel the appellant's visa. 46 The Minister has further submitted that the Federal Magistrate was correct in holding that the Tribunal was entitled to interpret the letter from the Institute setting out its absentee policy in the manner that it did. I agree that the Federal Magistrate was correct in so holding, particularly when regard is had to the circumstances in which the Tribunal drew the conclusions that it did.
Case: Liyanage v Minister for Immigration and Multicultural Affairs [2006] FMCA 725
Outcome: referred to
The appellant appeals from the judgment and orders of Federal Magistrate Phipps: see Liyanage v Minister for Immigration and Multicultural Affairs [2006] FMCA 725. His Honour dismissed an application for review of, and relief by way of prerogative writ in respect of, a decision of the Migration Review Tribunal dated 2 November 2005. 3 The 2 November 2005 decision affirmed a decision, made on 25 August 2004, of a delegate of the Minister for Immigration and Multicultural Affairs to cancel the appellant's Student (Temporary) (Class TU) visa, subclass 573. 4 At the time the visa was cancelled, s 116 of the Migration Act relevantly provided: "(1) Subject to subsections (2) and (3), the Minister may cancel a visa if he or she is satisfied that: ... (b) its holder has not complied with a condition of the visa; ... (3) If the Minister may cancel a visa under subsection (1), the Minister must do so if there exist prescribed circumstances in which a visa must be cancelled."
Case: Pradhan v Minister for Immigration and Multicultural Affairs [1999] FCA 1240 ; (1999) 94 FCR 91
Outcome: referred to
Last, the Tribunal found that the appellant had in fact breached condition 8202. It applied Pradhan v Minister for Immigration and Multicultural Affairs [1999] FCA 1240 ; (1999) 94 FCR 91 in concluding that the operative version of condition 8202 was that which applied on the date the visa was granted.
Case: Quan v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCA 764
Outcome: referred to
The Tribunal referred to the decisions of Quan v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCA 764 at [33] - [34] per Jacobson J and Singh v Minister for Immigration and Ethnic Affairs [1994] FCA 1011 , and found that it was required to be satisfied "to a high degree" that the information upon which the visa cancellation was based was correct.
Case: Singh v Minister for Immigration and Ethnic Affairs [1994] FCA 1011
Outcome: referred to
The Tribunal referred to the decisions of Quan v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCA 764 at [33] - [34] per Jacobson J and Singh v Minister for Immigration and Ethnic Affairs [1994] FCA 1011 , and found that it was required to be satisfied "to a high degree" that the information upon which the visa cancellation was based was correct.
Case: KGL Health Pty Limited v Mechtler [2007] FCA 1410
Outcome: related
The background to and nature of the principal proceedings in this matter are set out in a previous judgment given by me in relation to an application by the applicants for an asset preservation order: see KGL Health Pty Limited v Mechtler [2007] FCA 1410. I will not reiterate those matters. 3 The classes of documents presently in dispute are described as follows in a letter from the solicitors for the applicants to the solicitors for Rosanza dated 15 November 2007: '12. draft(s) of the contract by which the freehold was offered for sale and sold, and all other information disclosed to the purchaser and any other interested party; 13. the intended use of the property by the purchaser and any other interested party; 14. any investigations in relation to the property undertaken by your client (or its solicitors and other agents) or by the purchaser and any other interested party (including without limitation requisitions on title and replies); and 15. consideration by your client and its directors of offers to purchase[; and] 16. ... all correspondence and records of communication between your client (or its solicitors and/or other agents) and the purchaser (or its solicitors and/or other agents) concerning the purchase of the property, the intended use of the property and any claims arising by the purchaser after the sale of the property.' 4 Rosanza, by its Further Amended Cross-Claim, alleges various entitlements to damages. The first is an entitlement to damages for lost rent, other outgoings and interest up to and including the date on which the lease of the premises was terminated on 10 May 2007. The second is damages for loss as a result of the cost of restoring and reinstating the premises to a state of good repair. The third is damages for the loss of bargain on the basis that, but for alleged breaches and repudiation of the relevant lease by the applicants, Rosanza would have retained ownership of the premises at least until some time between 12 September 2009 and 2 March 2010, and in that period would have received the benefit of the lease, including rent less expenses. Finally, Rosanza claims for loss in respect of legal and other costs in connection with the default under the lease by the second applicant/first cross-respondent.
Case: Seven Network Ltd v News Ltd [2005] FCA 915
Outcome: cited
In order to justify further discovery beyond that which is verified by an affidavit of a legal practitioner, generally it needs to be shown that there is some substantial or manifest failure to produce documents. Ordinarily, an affidavit of discovery will be conclusive. Insufficiency of discovery may be shown from the pleadings, from the affidavit or from any other source that constitutes an admission of a discoverable document: see Seven Network Ltd v News Ltd [2005] FCA 915. However, in this case, no such insufficiency has been shown. It is important when framing classes for discovery that the classes of documents sought be shown to be relevant to the dispute. That is a consideration, which my comments at [8] above indicate, which applies to some of the classes in this application. This Court will endeavour to limit discovery so far as possible to ensure that it is not excessive, and that only those documents which are necessary to ensure a fair presentation of a party's case are produced: see O 15 r 15 of the Federal Court Rules and Federal Court Practice Note No. 14. 11 This application for further discovery is dismissed with costs. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate: Dated: 7 March 2008 Counsel for the Applicants: Mr A. Ogborne Solicitor for the Applicants: Bruce Stewart Dimarco Counsel for the Respondents: Mr S. Climpson Solicitor for the Respondents: Bull, Son &amp; Schmidt Date of Hearing: 5 February 2008 Date of Judgment: 7 March 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/273.html
Case: Minister for Immigration and Multicultural Affairs v Lat [2006] FCAFC 61 ; (2006) 151 FCR 214
Outcome: followed
Section 422B of the Act excludes the operation of common law principles of procedural fairness in proceedings before the Tribunal: Minister for Immigration and Multicultural Affairs v Lat [2006] FCAFC 61 ; (2006) 151 FCR 214; SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62. Those authorities establish that Div 4 of Pt 7 of the Act provides a comprehensive procedural code containing detailed provisions for procedural fairness with which the Tribunal must comply, and which excludes any other common law natural justice hearing rule. Consequently, the ground of alleged jurisdictional error argued before the Federal Magistrate could not be sustained.
Case: SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62
Outcome: followed
Section 422B of the Act excludes the operation of common law principles of procedural fairness in proceedings before the Tribunal: Minister for Immigration and Multicultural Affairs v Lat [2006] FCAFC 61 ; (2006) 151 FCR 214; SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62. Those authorities establish that Div 4 of Pt 7 of the Act provides a comprehensive procedural code containing detailed provisions for procedural fairness with which the Tribunal must comply, and which excludes any other common law natural justice hearing rule. Consequently, the ground of alleged jurisdictional error argued before the Federal Magistrate could not be sustained.