mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Conor Medsystems, Inc v The University of British Columbia (No 2) (2006) 68 IPR 217
Outcome: cited
also referred to the recent decision of Finkelstein J in Conor Medsystems, Inc v University of British Columbia (No 2) (2006) 68 IPR 217. His Honour considered the meaning of the words "is not entitled to the patent" which appear in the ground of revocation under s 138(3)(a) of the Act . His Honour said at [19]: respondents also contend that, having regard to the use of the present tense in s 138(3)(a) , a condition precedent to a revocation order is a finding that the patentees were not entitled to the patent at the time of the application for revocation (or perhaps at the time of the hearing). I am far from persuaded that this construction is correct and it seems to be contrary to the views of Cooper J in Stack v Brisbane City Council (1999) 47 IPR 525, 536 and Crennan J in JMBV Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 , [130]-[131]. But even if this construction were correct, the way in which I would read the section is that if a person were not entitled to the patent at the time of grant then, at least in most cases, that non-entitlement would be (as here) a continuing state of affairs. So there is really nothing in the point." My reasons for reaching this conclusion may be stated briefly . Ultimately, the relevant time at which (or period in which) utility is to be assessed is a matter of construction of the Act and informed by authorities construing cognate legislation. I am not aware of any authority in this country or the United Kingdom which decides that a patent, in order to be immune from revocation on the grounds relating to utility, must concern an invention which not only was useful at the time of grant but also remained useful during the period of the statutory monopoly. There is authority to the contrary: Lane Fox v Kensington and Knightsbridge Electric Lighting Company . While s 138(3)(b) is expressed in the present tense - "that the invention is not a patentable invention" - that formulation raises for consideration whether the invention is useful for the purposes of s 18(1)(c). It therefore directs attention to whether the invention is useful at the time it was sought to be patented. This construction appeared to be favoured by Finkelstein J: see Conor Medsystems, Inc v University of British Columbia (No 2).
Case: Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513
Outcome: followed
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 Gummow J (at 524 and 542) cautioned against the Court construing a patent by seeking to place itself in the position of a reader skilled in the art without expert evidence which would permit it to view the patent through the eyes of such a reader. Those observations were made in relation to a claim of lack of novelty. However, it would appear that they are also pertinent to the assessment of utility, at least where the patent concerns matters not demonstrably within the domain of ordinary human experience such as simple mechanical devices. This is the import of observations of Gummow J in Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 232 referring, in turn, to the observations of Menzies J in Welch Perrin &amp; Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 601.
Case: Deputy Commissioner of Taxation v Broadbeach Properties Pty Ltd; Deputy Commissioner of Taxation v MA Howard Racing Pty Ltd; Deputy Commission of Taxation v Neutral Bay Pty Ltd [2008] HCA 41 ; (2008) 82 ALJR 1411
Outcome: cited
things may be said, with respect, in relation to that passage in Peekhurst . Firstly, it is predicated upon what has later been shown to be a false line of Queensland authority in respect of statutory demands for taxation debts; see Deputy Commissioner of Taxation v Broadbeach Properties Pty Ltd; Deputy Commissioner of Taxation v MA Howard Racing Pty Ltd; Deputy Commission of Taxation v Neutral Bay Pty Ltd [2008] HCA 41 ; (2008) 82 ALJR 1411. Secondly - and more pertinently for present purposes - it is evident from the passage quoted that his Honour's attention was not drawn to a line of New South Wales authority in respect of legislation in that State analogous to the Building and Construction Industry Payments Act and the interrelationship between adjudications under that Act and the setting aside of statutory demands pursuant to the Corporations Act on the basis of there being, in terms of that legislation, a dispute or offsetting claim.
Case: Colgate-Palmolive Company v Cussons Limited [1993] FCA 536 ; (1993) 46 FCR 225
Outcome: considered
that regard, there is a discretion to exercise. A case which has proved influential on the subject of the awarding of indemnity costs is Colgate-Palmolive Company v Cussons Limited [1993] FCA 536 ; (1993) 46 FCR 225. There, at pages 232 to 234, Sheppard J comprehensively summarises the effect of authorities in relation to the awarding of costs and, in particular, to the awarding of costs on an indemnity basis. His Honour gives some examples at item 5, page 233 to 234, of circumstances in which it has been regarded as appropriate to award costs on an indemnity basis. In so doing, his Honour is astute to preface the giving of those examples by reference to an overriding principle that there is a discretion, which is not relevantly fettered, to be exercised. This, his Honour observes that, at item 4, page 233: Most judges dealing with the problem have resolved the particular case before them by dealing the circumstances of that case and finding in it the presence or absence of factors which would be capable, if they existed, of warranting a departure from the usual rule. The categories in which the awarding of indemnity costs are appropriate are not closed. I accept, then, that though the discretion is, as I have said, unfettered in the sense that the categories are not closed, it is nonetheless a departure from a usual rule which would allow costs only on a party and party basis. One circumstance which has enlivened a disposition to award costs on an indemnity basis is the imprudent refusal of an offer to compromise. The correspondence which preceded the filing of the application was, in effect, a highly detailed rationale for why it was that a compromise of sorts ought to be achieved. That compromise may have been distasteful to Total Building Group, in light of an unfortunate falling out between it and Tesoro, but it was a compromise which had about it a compelling quality, which was, "Withdraw the statutory demand and let us litigate our differences in a court of appropriate jurisdiction." Ultimately, that realisation does seem to have come to Total Building Group, but belatedly. Part of the realisation to which it was asked to come was that the sum the subject of a statutory demand had indeed been paid to it. Perhaps that realisation also came to Total Building Group by 24 June 2009. In any event, it seems to me that the stance taken by Total Building Group in the face of the correspondence prior to 11 June 2009 was imprudent. It was submitted that the stance which came to be adopted by Total Building Group ought to be judged by reference to the material which is to be found in the affidavit filed in support of the application to set aside the statutory demand, ie, that of Mr Maggiolo. As I have already observed, that affidavit is detailed, indeed.
Case: Re Chameleon Mining NL; Chameleon Mining ML v Atanaskovic Hartnell [2009] NSWSC 602
Outcome: followed
Re Chameleon Mining NL; Chameleon Mining ML v Atanaskovic Hartnell [2009] NSWSC 602 at [65] , Austin J had occasion to consider the question of whether or not to award costs in circumstances where a statutory demand fell for dismissal. His Honour observed: In a case such as this the court's discretion as to costs will be influenced by an examination of the conduct of the parties prior to the commencement of the proceedings, with a view to determining whether either party has acted unreasonably and has thereby brought about the need for the proceedings to be taken. Like Austin J in Chameleon Mining , I respectfully agree with the approach evident in the passage from White J's judgment in Soudan Lane . Total Building Group had the benefit of an adjudication in its favour under the Building and Construction Industry Payments Act . It also had the benefit, as a consequence of that Act, of being able to register that adjudication as a judgment of the District Court.
Case: Re Minister for Immigration and Ethnic Affairs; Ex parte Lai Quin [1997] HCA 6 ; (1997) 186 CLR 622
Outcome: cited
Soudan Lane Proprietary Limited v Glen Bradshaw [2007] NSWSC 772 , White J cited the well known observations of McHugh J in Re Minister for Immigration and Ethnic Affairs; Ex parte Lai Quin [1997] HCA 6 ; (1997) 186 CLR 622 at 624-625 concerning the correct approach for a court to take on an application for costs where there has been no hearing on the merits. White J applied the principles stated by McHugh J to statutory demand proceedings in observations (at para 4 of Soudan Lane ) that I respectfully adopt: These principles are applicable to proceedings to set aside a statutory demand, but special features of such proceedings need to be taken into account in judging the reasonableness of the parties' conduct. A company faced with a statutory demand in relation to a debt, disputed in whole or in part, has no option but to commence an action under s 459G to set aside the demand within 21 days, even if the ultimate order sought will be an order under s 459H(4) varying the demand to the amount which is not genuinely in dispute. If a company were merely to pay the amount which was not genuinely in dispute, without securing or compromising the balance to the reasonable satisfaction of the creditor, it would face the prospect of winding up proceedings being brought against it, of its being presumed to be insolvent (s 459C(2)(a)) and of its being unable to oppose the winding up application on a ground upon which it could have relied for the purposes of an application to have the demand set aside unless leave is given (s 459S).
Case: Soudan Lane Proprietary Limited v Glen Bradshaw (2007) NSWSC 772
Outcome: followed
Soudan Lane Proprietary Limited v Glen Bradshaw [2007] NSWSC 772 , White J cited the well known observations of McHugh J in Re Minister for Immigration and Ethnic Affairs; Ex parte Lai Quin [1997] HCA 6 ; (1997) 186 CLR 622 at 624-625 concerning the correct approach for a court to take on an application for costs where there has been no hearing on the merits. White J applied the principles stated by McHugh J to statutory demand proceedings in observations (at para 4 of Soudan Lane ) that I respectfully adopt: These principles are applicable to proceedings to set aside a statutory demand, but special features of such proceedings need to be taken into account in judging the reasonableness of the parties' conduct. A company faced with a statutory demand in relation to a debt, disputed in whole or in part, has no option but to commence an action under s 459G to set aside the demand within 21 days, even if the ultimate order sought will be an order under s 459H(4) varying the demand to the amount which is not genuinely in dispute. If a company were merely to pay the amount which was not genuinely in dispute, without securing or compromising the balance to the reasonable satisfaction of the creditor, it would face the prospect of winding up proceedings being brought against it, of its being presumed to be insolvent (s 459C(2)(a)) and of its being unable to oppose the winding up application on a ground upon which it could have relied for the purposes of an application to have the demand set aside unless leave is given (s 459S). Like Austin J in Chameleon Mining , I respectfully agree with the approach evident in the passage from White J's judgment in Soudan Lane . Total Building Group had the benefit of an adjudication in its favour under the Building and Construction Industry Payments Act . It also had the benefit, as a consequence of that Act, of being able to register that adjudication as a judgment of the District Court. There was apparent from the correspondence which ensued prior to the filing of the application for the setting aside of the statutory demand on 11 June every reason, reasonably, to apprehend that the demand would be set aside. I have no doubt, having regard to the principles set out in the passage quoted from Soudan Lane , that this is a case where there ought to be an order for costs in favour of Tesoro on the dismissal of the application to set aside the statutory demand. The question is whether those costs should be awarded on an indemnity basis?
Case: ASIC v Eastlands Pty Ltd [2006] FCA 1702
Outcome: cited
In the event that I appointed a liquidator, it was submitted by the creditors that the liquidator be appointed as receiver of certain trust assets. In the appropriate case this could be ordered see ASIC v Eastlands Pty Ltd [2006] FCA 1702.
Case: ASIC v Westpoint Corporation Pty Ltd (2006) 56 ACSR 646
Outcome: cited
In my view, the appropriate approach is to appoint the liquidator who has power to administer any trust assets (at least at the early states) (see Crest Realty Pty Ltd (No 2) (in liquidation) (1977) 1 NSWLR 664 and Wells v Wily [2004] NSWSC 607) , and the liquidator can approach the Court if any problems arise. I would not think it desirable to separate the function of the liquidator and any receiver of the trust assets in this case, and these functions should (at least initially) be fulfilled by the same person. The liquidator may apply to the Court if his appointment needs to be extended to that of receiver of the trust assets or if he needs further assistance. Equally, if any conflict arises because of the appointment of Mr McCann to other companies associated to APM, he can apply to seek directions on how to deal with that conflict: see ASIC v Westpoint Corporation Pty Ltd (2006) 56 ACSR 646 at 652.
Case: Bahonko v Nurses Board of Victoria (No 3) [2007] FCA 491
Outcome: cited
In Woodgate v Leonard [2007] NSWSC 495 , Barrett J said (at [37]): The jurisdiction discussed in these cases is an extraordinary and protective jurisdiction. It is separate from the jurisdiction involved in protection of confidential information and the enforcement of fiduciary duty. This is made clear, in particular, in the extract from the judgment of Whealy J just quoted. The concern is with the due and proper administration of justice in a proceeding before the court. The jurisdiction exists to ensure that the integrity of the proceeding is maintained. Identification of the means needed to maintain that integrity will, of course, depend on the nature of the proceeding and its likely course. See also Bahonko v Nurses Board of Victoria (No 3) [2007] FCA 491.
Case: Boucher v Australian Securities Commission (1996) 71 FCR 122
Outcome: cited
The above considerations were all matters I could take into account in considering whether it was in the interests of justice that the proceeding be re-opened: see Smith v New South Wales Bar Association (No 2) [1992] HCA 36 ; (1992) 176 CLR 256 at 266-267, per Brennan, Dawson, Toohey JJ and Gaudron JJ; Urban Transport Authority of NSW v Nweiser (1992) 28 NSWLR 471 at 478-479, per Clarke JA (with whom Mahoney and Meagher JJA agree); Londish v Gulf Pacific Pty Ltd (1993) 45 FCR 128 at 138-139, per Neaves, Bruchett and Ryan JJ; Nikoloski v Ridge Consolidated Pty Ltd (1994) 116 FLR 192, per Higgins J; Boucher v Australian Securities Commission (1996) 71 FCR 122 at 126 at 132, per Spender, Drummond and Merkel JJ; Hindmarsh Medical Clinic v Hindmarsh Family Practice Pty Ltd (1997) 38 IPR 616 at 631-632, per Mansfield J.
Case: Commissioner of Taxation v Simionato Holdings Pty Ltd (1997) 15 ACLC 477
Outcome: cited
At the outset I set out some legal principles I rely upon for determining this proceeding: &#8226; APM bears the onus of proving its solvency: s 459C ; &#8226; In order to discharge that onus the Court should generally be presented with the "fullest and best" evidence of the financial position of APM: Commonwealth Bank of Australia v Begonia (1993) 11 ACLC 1075 at 1081; &#8226; Unaudited accounts and unverified claims of ownership or valuation are not ordinarily probative of solvency: Commissioner of Taxation v Simionato Holdings Pty Ltd (1997) 15 ACLC 477; Re Citic Commodity Trading Pty Ltd v JBL Enterprises (WA) Pty Ltd [1998] FCA 232 ; Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC 459 at 463; &#8226; The nature of a company's assets, and its ability to convert those assets into cash within a relatively short time, at least to the extent of meeting all its debts as and when they fall due, must be considered in determining solvency: Rees v Bank of New South Wales [1964] HCA 47 ; (1964) 111 CLR 210; Re Tweeds Garages Ltd [1962] Ch 406 at 410; Simionato Holdings Pty Ltd 15 ACLC 477; Melbase Corporation Pty Ltd v Segenhoe Ltd (1995) 13 ACLC 823 at 832; Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC at 465-466; &#8226; The appropriate test is the "cash flow test" rather than a "balance sheet test" of insolvency. The adoption of a cash flow test for solvency does not mean that the extent of the company's assets is irrelevant to the inquiry. The credit resources available to the company must also be taken into account: Sandell v Porter [1966] HCA 28 ; (1966) 115 CLR 666 at 671 per Barwick CJ (with whom McTiernan and Windeyer JJ agreed); Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC at 466; Taylor v ANZ Banking Group Ltd (1988) 6 ACLC 808 at 812; &#8226; The question of solvency must be assessed at the date of the hearing, although relevant future events are not to be ignored: Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC at 466-467.
Case: Commonwealth Bank of Australia v Begonia (1993) 11 ACLC 1075
Outcome: cited
At the outset I set out some legal principles I rely upon for determining this proceeding: &#8226; APM bears the onus of proving its solvency: s 459C ; &#8226; In order to discharge that onus the Court should generally be presented with the "fullest and best" evidence of the financial position of APM: Commonwealth Bank of Australia v Begonia (1993) 11 ACLC 1075 at 1081; &#8226; Unaudited accounts and unverified claims of ownership or valuation are not ordinarily probative of solvency: Commissioner of Taxation v Simionato Holdings Pty Ltd (1997) 15 ACLC 477; Re Citic Commodity Trading Pty Ltd v JBL Enterprises (WA) Pty Ltd [1998] FCA 232 ; Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC 459 at 463; &#8226; The nature of a company's assets, and its ability to convert those assets into cash within a relatively short time, at least to the extent of meeting all its debts as and when they fall due, must be considered in determining solvency: Rees v Bank of New South Wales [1964] HCA 47 ; (1964) 111 CLR 210; Re Tweeds Garages Ltd [1962] Ch 406 at 410; Simionato Holdings Pty Ltd 15 ACLC 477; Melbase Corporation Pty Ltd v Segenhoe Ltd (1995) 13 ACLC 823 at 832; Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC at 465-466; &#8226; The appropriate test is the "cash flow test" rather than a "balance sheet test" of insolvency. The adoption of a cash flow test for solvency does not mean that the extent of the company's assets is irrelevant to the inquiry. The credit resources available to the company must also be taken into account: Sandell v Porter [1966] HCA 28 ; (1966) 115 CLR 666 at 671 per Barwick CJ (with whom McTiernan and Windeyer JJ agreed); Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC at 466; Taylor v ANZ Banking Group Ltd (1988) 6 ACLC 808 at 812; &#8226; The question of solvency must be assessed at the date of the hearing, although relevant future events are not to be ignored: Leslie v Howship Holdings Pty Ltd (1997) 15 ACLC at 466-467.
Case: Crema (Vic) Pty Ltd v Land Mark Property Developments (Vic) Pty Ltd (2006) 24 ACLC 889
Outcome: cited
In addition to what I have concluded above, there are other matters which demonstrate that APM has not discharged the onus of proving solvency:- (i) APM has failed to comply with the statutory demand of the creditors, and that of a supply creditor, T &amp; G Welding Pty Ltd. (ii) APM has been in default under mortgages over its property, and has no immediate or foreseeable capacity to service the mortgages. (iii) The application for winding up was made on 15 March 2007, over six months ago. On 18 June 2007, in the written submissions of APM, it was stated: [APM] is able to raise sufficient funds with which to pay for its short term creditors and it is anticipated that it will receive further funds in the near future from the sale of a properties [sic] . It is conceded that there are other further supporting creditors. [APM] will be able to use the funds that it is capable of raising and which it is anticipated of receiving in the near future with which to pay these debts. This has not eventuated despite the time lapse and there is no evidence to suggest that there will be sufficient funds to pay creditors in the near or reasonably near future. All the evidence relied upon by APM over recent months simply raised possibilities which have not eventuated. (iv) APM has been involved in disputes and legal proceedings with a number of people in addition to the Supreme Court proceedings mentioned above. The proceedings instituted already do not appear to be capable of resolution in the short term. (v) APM's books and records are incomplete and unsubstantiated. There have been a number of suggestions by APM since this matter was first heard to the effect that the new director Mr Fisher would take steps to put the books of accounts in order these suggestions have not been fulfilled and even Mr Miller in his report of 30 August 2007 necessarily relied upon incomplete and unsubstantiated records. (vi) No director can make a declaration of solvency. The then current directors of APM on 9 June 2006 resolved that APM was solvent as at that date, but this is obviously not sufficient to persuade me that the company was solvent at the date of hearing of this application. (vii) No cash flow statement or projections have been provided by APM despite ample opportunity to do so in these proceedings. (viii) There is no material to demonstrate that the company, in its attempts to refinance or obtain sufficient funding, will succeed in the foreseeable future or at all see Crema (Vic) Pty Ltd v Land Mark Property Developments (Vic) Pty Ltd (2006) 24 ACLC 889, at [172] per Dodds-Streeton J; Re Presha Engineering (Aust) Pty Ltd (1983) 1 ACLC 675 at 677 and Ace Contractors Staff Pty Ltd v Westgarth Development Ltd (1999) FCA 728 ;
Case: Expile Pty Ltd v Jabb's Excavations Pty Ltd (2002) 194 ALR 138
Outcome: cited
As I indicated above, the enquiry I needed to undertake was in respect of the solvency of APM. The factors leading to its current position may be relevant if they could impact upon APM's ability to pay its creditors in the near or foreseeable near future. The "fraud" allegations would hardly impact upon that issue following upon the evidence that had been presented to me by APM, particularly through the report of Mr Miller of 30 August 2007. There is also the need for finality in litigation and the particular need for prompt resolution of winding up applications putting aside the public interest, there is, as this case shows, the possibility of the evidence becoming stale or out of date: see Expile Pty Ltd v Jabb's Excavations Pty Ltd (2002) 194 ALR 138 at [9].