mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Burroughs Corporation (Perkins's Application ) [1974] RPC 147
Outcome: cited
submits that in relation to the new manner of manufacture criterion, the case is one of a "mere desideratum" (the expression "a mere method or mere idea or mere desideratum" was used in Burroughs Corporation ( Perkins's Application ) [1974] RPC 147). Senior counsel for Alphapharm frankly conceded that, in a sense, Alphapharm's submission in this respect rose no higher than its case on obviousness. Indeed, he conceded that it was more confined than that case because the character of a manner of manufacture must appear on the face of the specification, and common general knowledge cannot be taken into account as it can in the context of obviousness.
Case: Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719
Outcome: cited
submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.
Case: CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260
Outcome: cited
determining whether what is claimed fits the description of a "manner of manufacture", one must confine one's attention to the face of the specification: Philips v Mirabella at 663-664; Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 (Ramset) at [38] ; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260 ( CCOM v Jiejing ) at 291). The notion of a manner of manufacture does not incorporate considerations of novelty or inventiveness which are dealt with independently and comprehensively in s 18(1)(b), s 7, and the definitions of "prior art base" and "prior art information" in Sch 1: see Ramset at [30]-[34] (dealing with s 100 of the 1952 Act). What is required is that there be a real and reasonably clear disclosure in the body of the specification, taken as a whole, of the invention that is claimed in the claims so that those who may wish to exploit the invention as claimed after the patent has expired will be enabled to do so: see, for example, Soci&eacute;t&eacute; Des Usines Chimiques Rh&ocirc;ne-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5 at 11 per Fullagar J; F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; CCOM v Jiejing at 281-282; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood v Doric ) at [69].
Case: Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date
Case: D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date
Case: EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date
Case: F Hoffman-La Roche &amp; Co AG v Commissioner of Patents ( [1971] HCA 3 ; 1971) 123 CLR 529
Outcome: cited
is required is that there be a real and reasonably clear disclosure in the body of the specification, taken as a whole, of the invention that is claimed in the claims so that those who may wish to exploit the invention as claimed after the patent has expired will be enabled to do so: see, for example, Soci&eacute;t&eacute; Des Usines Chimiques Rh&ocirc;ne-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5 at 11 per Fullagar J; F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; CCOM v Jiejing at 281-282; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood v Doric ) at [69].
Case: F Hoffmann-La Roche AG v Chiron Corporation (2000) 47 IPR 516
Outcome: cited
note that my rulings in relation to Documents 4 and 5 are consistent with certain observations made on applications for orders for discovery by Burchett J in F Hoffmann-La Roche AG v Chiron Corporation (2000) 47 IPR 516 at [19] [21] and by Branson J in Lubrizol Corporation Inc v Imperial Chemical Industries plc [2000] FCA 1464 ; (2000) 50 IPR 526 at [33] (although, unlike the present case, those cases involved the exercise of a discretion and a balancing exercise).
Case: Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date
Case: General Tire &amp; Rubber Co v Firestone Tyre &amp; Rubber Co Limited [1972] RPC 457
Outcome: cited
parties rely on the following passage from the English Court of Appeal's judgment in General Tire &amp; Rubber Co v Firestone Tyre &amp; Rubber Co Limited [1972] RPC 457 at 485-486: 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 unmistakeable 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. [my emphasis] This passage has been followed in Lubrizol at [61] and in numerous other cases.
Case: Glaxo Group Ltd's Patent [2004] EWHC 477 ; [2004] RPC 43
Outcome: cited
arriving at the conclusion expressed in the last paragraph, I have read what Kitchin J has said on the present issue in Generics v Lundbeck at [231] [237] and the passages from the authorities to which his Lordship refers, namely, Richardson-Vicks Inc's Patent [1995] RPC 568 at 581 and Glaxo Group Ltd's Patent [2004] EWHC 477 ; [2004] RPC 43 at [113] . I note that my conclusion is generally in line with those three authorities.
Case: H Lundbeck A/S v Generics (UK) Ltd [2008] EWCA 311
Outcome: referred to
the reasons set out above were being proofread in preparation for delivery of judgment, the English Court of Appeal on 10 April 2008 gave judgment in H Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311 , the appeal from the judgment of Kitchin J in Generics v Lundbeck previously noted. With respect, I do not think it necessary to incorporate references to their Lordships' reasons, which are, generally speaking, consistent with what I have written above. I certify that the preceding seven hundred and eighty-five (785) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren. Associate: Dated: 24 April 2008 Proceeding NSD 1120 of 2005 Counsel for the Applicant/Cross Respondent (Alphapharm Pty Ltd): Mr DK Catterns QC, Mr S Burley SC and Mr JS Cooke Solicitor for the Applicant/Cross Respondent (Alphapharm Pty Ltd): Mallesons Stephen Jaques Counsel for the Respondent/First Cross Claimant (H Lundbeck A/S) and for the Second Cross Claimant (Lundbeck Australia Pty Ltd): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Respondent/First Cross Claimant (H Lundbeck A/S) and for the Second Cross Claimant (Lundbeck Australia Pty Ltd): Corrs Chambers Westgarth Proceeding NSD 1870 of 2005 Counsel for the Applicant (Lundbeck Aust Pty Ltd): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Applicant (Lundbeck Aust Pty Ltd): Corrs Chambers Westgarth Counsel for the First Respondent (the Secretary of the Department of Health &amp; Ageing of the Commonwealth of Australia): Mr G Kennett Solicitor for the First Respondent (the Secretary of the Department of Health &amp; Ageing of the Commonwealth of Australia): Australian Government Solicitor Counsel for the Second Respondent (Alphapharm Pty Ltd): Mr DK Catterns QC, Mr S Burley SC and Mr JS Cooke Solicitor for the Second Respondent (Alphapharm Pty Ltd): Mallesons Stephen Jaques Proceeding NSD 954 of 2006 Counsel for the Applicant (Arrow Pharmaceuticals Pty Ltd): Mr C Dimitriadis Solicitor for the Applicant (Arrow Pharmaceuticals Pty Ltd): Blake Dawson Waldron Counsel for the Respondent (H Lundbeck A/S): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Respondent (H Lundbeck A/S): Corrs Chambers Westgarth Proceeding NSD 1078 of 2006 Counsel for the Applicant (H Lundbeck A/S): Mr D Shavin QC and Ms KJ Howard SC Solicitor for the Applicant (H Lundbeck A/S): Corrs Chambers Westgarth The First Respondent (Commissioner of Patents) did not appear, having filed a submitting appearance. Counsel for the Second Respondent (Alphapharm Pty Ltd): Mr DK Catterns QC, Mr S Burley SC and Mr JS Cooke Solicitor for the Second Respondent (Alphapharm Pty Ltd): Mallesons Stephen Jaques Dates of Hearing: 11, 12, 13, 16, 17, 18, 19, 23, 24, 26 April 2007; 1, 7, 8, 9, 10, 11 May 2007 Date Last Written Submission Received: 21 November 2007 Date of Judgment: 24 April 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/559.html
Case: Harrington-Smith v State of Western Australia (No 2) [2003] FCA 893 ; (2003) 130 FCR 424
Outcome: referred to
is necessary to distinguish between two potential meanings of the notion of a "basis rule". The expression may be used to refer to a supposed rule that evidence of expert opinion is not admissible unless the expert identifies the assumed factual basis for his or her opinion, thereby distinguishing between what is opinion and what is not. This goes to the form taken by the expert's evidence. The provisions of s 79 of the Evidence Act tend to have the practical effect of requiring attention to the form that expert evidence takes: HG v The Queen [1999] HCA 2 ; (1999) 197 CLR 414 at [39] per Gleeson CJ. As I noted in Harrington-Smith v State of Western Australia (No 2) [2003] FCA 893 ; (2003) 130 FCR 424 at [25] , in the absence of a distinction between opinion and assumed factual basis, the Court may not be able to be satisfied:
Case: HG v The Queen [1999] HCA 2 ; (1999) 197 CLR 414
Outcome: cited
is necessary to distinguish between two potential meanings of the notion of a "basis rule". The expression may be used to refer to a supposed rule that evidence of expert opinion is not admissible unless the expert identifies the assumed factual basis for his or her opinion, thereby distinguishing between what is opinion and what is not. This goes to the form taken by the expert's evidence. The provisions of s 79 of the Evidence Act tend to have the practical effect of requiring attention to the form that expert evidence takes: HG v The Queen [1999] HCA 2 ; (1999) 197 CLR 414 at [39] per Gleeson CJ. As I noted in Harrington-Smith v State of Western Australia (No 2) [2003] FCA 893 ; (2003) 130 FCR 424 at [25] , in the absence of a distinction between opinion and assumed factual basis, the Court may not be able to be satisfied: