Case: Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; (1999) 92 FCR 106
Outcome: discussed
Though styled an "appeal" in the Act, the proceedings before the Court are in the original jurisdiction of the Court dealing with the matter afresh in the way discussed in New England Biolabs Inc v F Hoffman-La Roche AG [2004] FCAFC 213 ; (2004) 141 FCR 1 at 10-14 [23] - [46] . Thus, it is unnecessary to analyse in any detail the reasoning of the delegate based on such evidence as was before him. Nevertheless, it may be appropriate for the Court to accord respect and a degree of weight to the views of the delegate informed as they were by his experience and technical skill: Corporation of the City of Enfield v Development Assessment Commission [2000] HCA 5 ; (1999) 199 CLR 135 at 154-55 [45] - [47] ; Eclipse Sleep Products Inc v Registrar of Trade Marks [1957] HCA 86 ; (1957) 99 CLR 300 at 321-22; and E I Du Pont de Nemours and Company v ICI Chemicals and Polymers Ltd (2006) 66 IPR 462 at 469 [14]. The circumstances that would affect the weight to be given to the views of the delegate include the differences or similarities between the material placed before the delegate and the evidence led before the Court. There was such a difference here. I will return to this issue in due course. It is also necessary to recognise the nature of the judicial task thus described. In Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; (1999) 92 FCR 106 at 111-112 [17] and [19], the Full Court said the following, illuminating the nature of the judicial task of the Court: "During the hearing there was some discussion as to the possibility of the owner of a patent the grant of which was unsuccessfully opposed, defending a revocation proceeding instituted by the pre-grant opponent by raising an issue estoppel in respect of the findings of fact of the single judge. In the present case, however, the respondent has conceded that no issue estoppel would apply to the findings of fact of Heerey J in any revocation proceeding instituted by the applicant in respect of the patent. In any event, the difference between the issue determined by his Honour in the pre-grant opposition proceeding, and the issue that would arise for determination in any revocation proceeding instituted by the applicant, is in our view sufficient to preclude the operation of issue estoppel principles in that second proceeding. The overriding issue in the pre-grant opposition proceeding before Heerey J was whether it was practically certain that the patent to be granted on the specification would have been invalid on the ground that the content of the specification was not in accordance with the requirements of s 40 of the Patents Act 1952 (Cth) ( Genetics Institute Inc v Kirin-Amgen Inc (No 3) (1998) 156 ALR 30 at 39-41). Even if revocation of the patent was subsequently sought by the applicant on the virtually identical ground of non-compliance with subs 40(2) or subs 40(3) of the current Act (see par 138(3)(f) of the Act), the issue for determination by the judge hearing that revocation application would be whether the patent should be revoked for the specification's non-compliance with subs 40(2) or subs 40(3). The decision of Heerey J that it was not practically certain that the patent should be so revoked would be inconclusive of this issue. Accordingly, there would be no scope for the operation of an issue estoppel in relation to the decision of Heerey J in any post-grant revocation proceeding instituted by the applicant in respect of the current patent. ... As the parties in the present case accepted, the purpose of pre-grant opposition proceedings is to provide a swift and economical means of settling disputes that would otherwise need to be dealt with by the courts in more expensive and time consuming post-grant litigation; that is, to decrease the occasion for costly revocation proceedings by ensuring that bad patents do not proceed to grant. This purpose is reflected in the explanation by the Minister for Science for the Federal Government's policy decision to retain pre-grant opposition proceedings in Australia, despite the recommendation of the 1984 Industrial Property Advisory Committee Report Patents, Innovation and Competition in Australia (IPAC Report) that they be abolished (recommendation 29). 'Pre-grant opposition provides a relatively inexpensive mechanism for resolving third party disputes as to validity. Opposition procedures will be made more stringent in order to expedite the determination of oppositions." [(1986) 56 No 47 Official Journal of Patents, Trade Marks and Designs 1475.]'" [emphasis added] 7 In Austal Ships Pty Ltd v Stena Rederei Aktiebolag (2005) 66 IPR 420 at 422 [6] Bennett J noted the expression of the issue by Emmett J in F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 ; (2000) 99 FCR 56 where, after an examination of the authorities governing the nature of the opposition proceeding, including the decision of the Full Court in Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; 92 FCR 106 , his Honour said the following at 70-71 [66] and [67]: "I have been taken to a number of other authorities in which questions have arisen as to the nature of the evidence that should be permitted in proceedings such as these. I do not regard any of those authorities as decisive one way or the other. As I have said, however, I do draw some comfort from the cases to which I have just referred for my conclusion, based on the scheme of the legislation, that there is a significant distinction to be drawn between the nature of an opposition proceeding under s 60 (or under the 1990 Act for that matter), on the one hand, and proceedings for revocation on other. The former is, in a sense, in the nature of an interlocutory proceeding, although any analogy tends to be misleading. There are some suggestions in early High Court authorities, that an opposition proceeding is in the nature of a summary proceeding ... Either analogy might suggest that the question to be determined in an opposition proceeding is whether there is a serious question as to whether or not a patent, if granted, might be valid. If there is, then the application should proceed to grant. The language employed in the cases to which I have referred suggests that it should appear clear to the Court that no patent granted in respect of the specification would be valid. I consider that, before the Court would uphold an opposition to the grant of a patent, the Court should be clearly satisfied that the patent, if granted, would not be valid. That, however, is not to say that an opponent should not be permitted appropriate opportunity to lead evidence-in-chief as to the facts that are designed to demonstrate, with the requisite degree of clarity, that a patent, if granted, would not be valid. Where the subject matter of the patent is one of complexity, of necessity, the evidence that an opponent would be entitled to adduce would itself be of considerable complexity." [citations omitted] 9 What lies behind this approach is the purpose of pre-grant opposition proceedings, as discussed by the Full Court in Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; 92 FCR 106 at [19] , in the second emphasised passage cited above. 10 The parties were agreed that the amendments effected by the Patents Amendment Act 2001 (Cth) do not affect the approach of the Court in this respect in this case. 11 The cases referred to by Emmett J in F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 ; 99 FCR 56 and the decision of the Full Court in Genetics Institute Inc v Kirin-Angen Inc [1999] FCA 742 ; 92 FCR 106 lead to the conclusions that the issue for resolution by the Court is whether it can be concluded clearly or as a matter of practical certainty that the opposition is well made and that the patent, if granted, would be bad, and that the issue for resolution by the Court is not whether the matters grounding the opposition (here want of novelty and obviousness) have been made out in the manner required in revocation proceedings. 12 I am bound by Genetics Institute Inc v Kirin Angen Inc [1999] FCA 742 ; 92 FCR 106, and, by comity, would respectfully follow the views of Emmett J in F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 ; 99 FCR 56, Bennett J in Austal Ships 66 IPR 420 and Branson J in E I Dupont de Nemours v Imperial Chemical Industries 54 IPR 304 .