mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Telstra Corporation Ltd v Optus Communications Pty Ltd (1996) 36 IPR 515
Outcome: cited
As noted, under the two-step analysis that has been described, the court cannot consider each event in isolation. Each event must be considered within the context of the advertising campaign of which it formed part: see Telstra Corporation Ltd v Optus Communications Pty Ltd (1996) 36 IPR 515 at 523-524; Trade Practices Commission v Optus Communications Pty Ltd (1996) 64 FCR 326 at 338; Astrazeneca at [24]; Johnson &amp; Johnson Pacific Pty Ltd v Unilever Australia Ltd (No 2) [2007] ATPR 42-136 at [16]. In a national advertising campaign it would ordinarily be expected that there would be a dominant message and, in such a case, particular attention should be paid to that dominant message. In Telstra Corporation at 524, that principle was stated as follows: In television and print advertising where a false dominant impression is conveyed, its message will not be ameliorated by the accuracy of the detailed message which is derived from a careful analysis of all the constituent parts of the advertisement.
Case: Trade Practices Commission v Optus Communications Pty Ltd (1996) 64 FCR 326
Outcome: cited
As noted, under the two-step analysis that has been described, the court cannot consider each event in isolation. Each event must be considered within the context of the advertising campaign of which it formed part: see Telstra Corporation Ltd v Optus Communications Pty Ltd (1996) 36 IPR 515 at 523-524; Trade Practices Commission v Optus Communications Pty Ltd (1996) 64 FCR 326 at 338; Astrazeneca at [24]; Johnson &amp; Johnson Pacific Pty Ltd v Unilever Australia Ltd (No 2) [2007] ATPR 42-136 at [16]. In a national advertising campaign it would ordinarily be expected that there would be a dominant message and, in such a case, particular attention should be paid to that dominant message. In Telstra Corporation at 524, that principle was stated as follows: In television and print advertising where a false dominant impression is conveyed, its message will not be ameliorated by the accuracy of the detailed message which is derived from a careful analysis of all the constituent parts of the advertisement.
Case: Trade Practices Commission v Sun Alliance Australia Ltd [1994] ATPR 41-286
Outcome: cited
Section 84(2)(b) is an enlarging provision intended to widen the common law principles relating to agency rendering a person's conduct that of the company if it can be said to have been "engaged in on behalf of" the company or "at the direction or with the consent or agreement of" a servant of the company: Trade Practices Commission v Sun Alliance Australia Ltd [1994] ATPR 41-286 at 41,848 and the cases cited therein and Lisciandro v Official Trustee in Bankruptcy (1996) 69 FCR 180 at 188-189 per Ryan and Drummond JJ.
Case: Mobil Oil Australia Pty Ltd v Guina Developments Pty Ltd [1996] 2 VR 34 at 38
Outcome: cited
Consistently with Dr Cusick's approach, Deltapine's argument centred around the possible redaction of material said not to be relevant to this proceeding. It seems to me with respect however that this rather misses the point. If a document is relevant to the issues in the present proceeding, that does not exclude the risk that disclosure to Professor Adang may lead (without any subjective bad faith on his part) to commercial damage to Bayer. On the contrary, the more relevant the document to this proceeding, the more sensitive and potentially damaging it would be to Bayer. Knowledge once acquired cannot be isolated within the mind behind some internal Chinese wall: see Mobil Oil Australia Pty Ltd v Guina Developments Pty Ltd [1996] 2 VR 34 at 38. 20 I think Bayer have made out a case for refusing disclosure. The hard fact is that Professor Adang is a direct commercial competitor in the field of the Patent. The documents in question are admitted to be confidential. 21 It is not clear whether refusal of disclosure to Professor Adang means that he will not be giving evidence for Deltapine. Deltapine did not assert as much before me. However, I accept that at the very least his value as a witness would be substantially affected. But I am confident that no substantial injustice will be caused to Deltapine because they propose to lead evidence from three other experts, Professor Richard Roush, Director of the Statewide IPM Program at the University of California at Davis, Professor Sarjeet Gill, Chair of the Department of Cell Biology and Neuroscience, University of California at Riverside and Dr Paul Ebert of the School of Life Sciences, University of Queensland, all of whom appear to be eminently qualified. Bayer has consented to Deltapine providing its confidential documents to both Professor Gill and Dr Ebert. Deltapine does not wish to disclose Bayer's confidential documents to Professor Roush.
Case: Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 194 ALR 485
Outcome: cited
The danger of hindsight was also referred to by Lord Diplock in Technograph Printed Circuits Ltd v Mills-Rockley (Electronics) Ltd [1972] RPC 346 at 362 (and approved by the High Court in Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 194 ALR 485 at 491) in these terms: 'Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.
Case: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [1999] HCA 66 ; (2001) 201 CLR 1
Outcome: cited
Having regard to the terms of the claims in suit and to the principles of construction set out in the authorities (see Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [1999] HCA 66 ; (2001) 201 CLR 1 at 16; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475-476; Stena Rederi Aktiebolag v Austral Ship Sales Pty Ltd (2007) 73 IPR 257 at 263-264), I am persuaded that for the wear assembly to work in a practical manner and withstand the forces brought to play on it, it would be impractical to require the boss to be attached only to the front face or bevelled ramp. The expression "digging edge" should not be interpreted so narrowly.
Case: Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: cited
The respondents say there was a lack of fair basis in the present case because the specifications of the patents in suit do not provide real and reasonably clear disclosure of the invention. The relevant principles as to fair basis were set out in Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 at 294ff. 89 I do not accept this submission of the respondents. For reasons given above, I consider the disclosure is not limited to a rigid lock which operates as a "shear" member. Rather, it includes a lock with an adjustment assembly which in fact operates in the way claimed. Accordingly, the specification provides a sufficient disclosure for the adjustment assembly in the terms of the claim. 90 I direct the parties to consult with a view to agreeing upon and sending to my Associate in chambers Short Minutes of Order giving effect to the above reasons. If the parties are unable to agree, they are to send to my Associate in chambers competing Short Minutes of Order with brief reasons.
Case: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228
Outcome: considered
The dangers inherent in drawing conclusions with the benefit of hindsight have been emphasised in the authorities. As Aickin J pointed out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 242: '... subsequent analysis of an invention "the dissection of the invention" is not often helpful in resolving the question of obviousness. It has been criticized as being a mistaken approach, see Blanco White, Patents for Inventions , 4 th ed. (1974), at par.4-214. This matter was also discussed by Menzies J in Commonwealth Industrial Gases Ltd. v M.W.A. Holdings Pty. Ltd. where he commented on the undesirability of analysis by hindsight because once one sees an invention it may very often appear very simple and one may then wonder why no one previously had thought of so simple an improvement device.'
Case: Populin v HB Nominees Pty Ltd (1982) 41 ALR 471
Outcome: cited
Having regard to the terms of the claims in suit and to the principles of construction set out in the authorities (see Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [1999] HCA 66 ; (2001) 201 CLR 1 at 16; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475-476; Stena Rederi Aktiebolag v Austral Ship Sales Pty Ltd (2007) 73 IPR 257 at 263-264), I am persuaded that for the wear assembly to work in a practical manner and withstand the forces brought to play on it, it would be impractical to require the boss to be attached only to the front face or bevelled ramp. The expression "digging edge" should not be interpreted so narrowly.
Case: Stena Rederi Aktiebolag v Austral Ship Sales Pty Ltd (2007) 73 IPR 257
Outcome: cited
Having regard to the terms of the claims in suit and to the principles of construction set out in the authorities (see Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [1999] HCA 66 ; (2001) 201 CLR 1 at 16; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475-476; Stena Rederi Aktiebolag v Austral Ship Sales Pty Ltd (2007) 73 IPR 257 at 263-264), I am persuaded that for the wear assembly to work in a practical manner and withstand the forces brought to play on it, it would be impractical to require the boss to be attached only to the front face or bevelled ramp. The expression "digging edge" should not be interpreted so narrowly.
Case: Technograph Printed Circuits Ltd v Mills-Rockley (Electronics) Ltd [1972] RPC 346
Outcome: considered
The danger of hindsight was also referred to by Lord Diplock in Technograph Printed Circuits Ltd v Mills-Rockley (Electronics) Ltd [1972] RPC 346 at 362 (and approved by the High Court in Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 194 ALR 485 at 491) in these terms: 'Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.
Case: Brother Industries, Ltd v Dynamic Supplies Pty Ltd (2007) 73 IPR 507
Outcome: related
These reasons arise from an application by the applicants ("Brother") for an order for costs on an indemnity basis, having been substantially successful in proceedings against the respondent ("Dynamic Supplies") concerning infringement of trade marks and other matters: see Brother Industries, Ltd v Dynamic Supplies Pty Ltd (2007) 73 IPR 507. The application for indemnity costs relies not only on Dynamic Supplies' rejection of several offers of compromise made by Brother before the hearing but also on the manner in which the litigation was conducted by Dynamic Supplies. 2 Three offers of compromise were made by Brother to Dynamic Supplies before the hearing on trade mark infringement. The first and second offers were in virtually identical terms, so it is convenient and sufficient for the purposes of O 23 r 11(4) of the Federal Court Rules 1979 (Cth) simply to look at the first and third offers, which are substantially different, and compare them with the relief ultimately granted in the orders of the Court. O 23 r 11(4) provides that if an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment on the claim to which the offer relates which is not less favourable than the terms of the offer, then, unless the Court otherwise orders, the applicant is entitled to an order against the respondent for costs incurred in respect of the claim up to the day when the offer was made taxed on a party-party basis and after that day taxed on an indemnity basis. The objective of this provision is clearly to encourage settlement of litigation. 3 When considering the application of the above provision, the task of the Court is to consider the relevant offer of compromise, compare it with the orders actually made by the Court and determine whether the offer made is less favourable to the offeree than the final relief in the proceeding. If it is, then indemnity costs will not be awarded, subject to the discretion of the Court.
Case: Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225
Outcome: considered
Under s 43(2) of the Federal Court Act 1976 (Cth), the Court has a discretion as to costs orders. As a general principle, costs are awarded on a party-party basis unless there are special or unusual circumstances. Some of the broad classes of circumstances in which the exercise of discretion to award indemnity costs may be appropriate are set out in the judgment of Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 233-234. These include the undue prolongation of a case by groundless contentions, an imprudent refusal of an offer of compromise and the making of allegations which ought never to have been made. Another relevant consideration for the award of indemnity costs is where the applicant, properly advised, should have known that he or she had no chance of success: see Fountain Selected Meals (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401.
Case: Dukemaster Pty Ltd v Bluehive Pty Limited [2003] FCAFC 1
Outcome: cited
The authorities establish that, where an applicant's offer of compromise is not accepted by the respondent and the applicant subsequently obtains a more favourable result from the Court, an order for payment for costs on an indemnity basis does not automatically follow: see Dukemaster Pty Ltd v Bluehive Pty Limited [2003] FCAFC 1 at [7] . Where the requirements of O 23 r 11(4) are satisfied, the entitlement to an order for costs on an indemnity basis in respect of costs incurred after the date of the offer is subject to the discretion of the Court. When considering the exercise of this discretion, it is necessary to take into account whether it was imprudent or unreasonable to expect the offeree to accept the offer of compromise, having regard to the context and circumstances in which it was given: see Seven Network Ltd News Ltd [2007] FCA 1489 at [39] .
Case: Fountain Selected Meals (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397
Outcome: cited
Under s 43(2) of the Federal Court Act 1976 (Cth), the Court has a discretion as to costs orders. As a general principle, costs are awarded on a party-party basis unless there are special or unusual circumstances. Some of the broad classes of circumstances in which the exercise of discretion to award indemnity costs may be appropriate are set out in the judgment of Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 at 233-234. These include the undue prolongation of a case by groundless contentions, an imprudent refusal of an offer of compromise and the making of allegations which ought never to have been made. Another relevant consideration for the award of indemnity costs is where the applicant, properly advised, should have known that he or she had no chance of success: see Fountain Selected Meals (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 at 401.
Case: Seven Network Ltd News Ltd [2007] FCA 1489
Outcome: cited
The authorities establish that, where an applicant's offer of compromise is not accepted by the respondent and the applicant subsequently obtains a more favourable result from the Court, an order for payment for costs on an indemnity basis does not automatically follow: see Dukemaster Pty Ltd v Bluehive Pty Limited [2003] FCAFC 1 at [7] . Where the requirements of O 23 r 11(4) are satisfied, the entitlement to an order for costs on an indemnity basis in respect of costs incurred after the date of the offer is subject to the discretion of the Court. When considering the exercise of this discretion, it is necessary to take into account whether it was imprudent or unreasonable to expect the offeree to accept the offer of compromise, having regard to the context and circumstances in which it was given: see Seven Network Ltd News Ltd [2007] FCA 1489 at [39] .
Case: Minister for Immigration and Multicultural and Indigenous Affairs v NAMW [2004] FCAFC 264 ; (2004) 140 FCR 572
Outcome: applied
Although not specifically addressed in the appellant's submissions for completeness I should express my view that, in relation to these photographs, the Tribunal did not come under an obligation under s 424A(1) because of the exemption in s 424A(3)(a). It is clear that the information in the photographs was 'not specifically about the applicant or another person' and, as Merkel and Hely JJ commented in Minister for Immigration and Multicultural and Indigenous Affairs v NAMW [2004] FCAFC 264 ; (2004) 140 FCR 572 at [138] : '... the reference in s 424A(3)(a) to the class of persons is not another criterion to be met but ... is designed to underline the specificity required by precluding any argument that reference to a class could be taken as a reference to all individuals (including for example, an applicant) falling within it.' In this regard see also VHAP of 2002 v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs (2004) 80 ALD 559 at [14].
Case: SAAP v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 24 ; (2005) 215 ALR 162
Outcome: applied
As long as the information derived from the photographs was even part of the reason for the Tribunal's rejection of the appellant's application then a failure to comply with s 424A will amount to jurisdictional error; see SZEEU at [182] per Weinberg J and [215]-[216] per Allsop J. In SAAP v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 24 ; (2005) 215 ALR 162 McHugh J and Hayne J (with whom Kirby J agreed on this point) were quite clear that the bearing of a breach of procedural fairness on the ultimate decision is not relevant to the question of relief; see also Re Refugee Tribunal; ex parte Aala [2000] HCA 57 ; (2000) 204 CLR 82 at 109, [59] . The adverse inferences that the Tribunal drew about the appellant's credibility were central to its ultimate decision and it is not necessary for me to consider whether there is a discretion to refuse relief where there is a completely independent ground for the decision; see however M Izzo, "High Court on procedural fairness: SAAP and VEAL", (2006) 13 AJ Admin L 186.
Case: SZEEU v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 2 ; (2006) 150 FCR 214
Outcome: applied
The Federal Magistrate dismissed the appellant's claim that there had been a breach of s 424A because, in his Honour's view the use that the Tribunal made of these photographs that was only one of a number of factors that led the Tribunal to form an adverse view of the appellant's credibility. As pointed out in the appellant's written submissions his Honour's judgment was delivered before the judgment of the Full Court in SZEEU v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 2 ; (2006) 150 FCR 214 and therefore it is not surprising that he failed to apply the principles identified by the majority of the Full Court in that case. 22 As long as the information derived from the photographs was even part of the reason for the Tribunal's rejection of the appellant's application then a failure to comply with s 424A will amount to jurisdictional error; see SZEEU at [182] per Weinberg J and [215]-[216] per Allsop J. In SAAP v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 24 ; (2005) 215 ALR 162 McHugh J and Hayne J (with whom Kirby J agreed on this point) were quite clear that the bearing of a breach of procedural fairness on the ultimate decision is not relevant to the question of relief; see also Re Refugee Tribunal; ex parte Aala [2000] HCA 57 ; (2000) 204 CLR 82 at 109, [59] . The adverse inferences that the Tribunal drew about the appellant's credibility were central to its ultimate decision and it is not necessary for me to consider whether there is a discretion to refuse relief where there is a completely independent ground for the decision; see however M Izzo, "High Court on procedural fairness: SAAP and VEAL", (2006) 13 AJ Admin L 186.
Case: VAF v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 206 ALR 471
Outcome: referred to
The meaning of 'information' in the context of ss 424 and 424A of the Migration Act was considered by the Full Federal Court in Win v Minister for Immigration and Multicultural Affairs [2001] FCA 56 ; (2001) 105 FCR 212. Win concerned the Tribunal's treatment of an anonymous letter containing allegations adverse to the appellant's credibility that was sent to the Department of Immigration and Multicultural Affairs. The Court found that the meaning of 'information' in s 424A was the same as that in s 424. The Court referred (at 217) to the Macquarie Dictionary's definition of the word 'information', which included 'Knowledge communicated or received concerning some fact or circumstance' (see also Tin v Minister for Immigration &amp; Multicultural Affairs [2000] FCA 1109 at [53] ). The definition in the Oxford English Dictionary , also referred to by the Full Court, included 'Knowledge communicated concerning some particular fact, subject or event; that of which one is apprised or told.' The Full Court considered that 'information', for the purpose of ss 424 and 424A encompassed 'assertions made by a person ... that particular aspects of an applicant's account of events are untrue'. It is clear that the Full Court's focus in Win was not upon the anonymous letter itself, but upon the assertions contained within the letter. This approach was followed in VAF v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 206 ALR 471 where (at 477) Finn and Stone JJ also focused on what does not constitute information: 'The word does not encompass the tribunal's subjective appraisals, thought processes or determinations ... nor does it extend to identified gaps, defects or lack of detail or specificity in evidence or to conclusions arrived at by the tribunal in weighing up the evidence by reference to those gaps ...'