mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: One.Tel Limited v Commissioner of Taxation [2000] FCA 270 ; (2000) 101 FCR 548
Outcome: referred to
The ACCC submitted that the principles governing the award of costs in cases where a matter does not proceed to a final hearing were correctly expounded by Burchett J in One.Tel Limited v Commissioner of Taxation [2000] FCA 270 ; (2000) 101 FCR 548 at 553: "In my opinion, it is important to draw a distinction between cases in which one party, after litigating for some time, effectively surrenders to the other, and cases where some supervening event or settlement so removes or modifies the subject of the dispute that, although it could not be said that one side has simply won, no issue remains between the parties except that of costs. In the former type of case, there will commonly be lacking any basis for an exercise of the Court's discretion otherwise than by an award of costs to the successful party. It is the latter type of case which more often creates problems, since there may be difficulty in discerning a clear reason why one party, rather than the other, should bear the costs. " 15 The ACCC contended that the present case fell within the first category described by Burchett J. Although in Smith v Airservices Australia Stone J made no mention of One.Tel Limited v Commissioner of Taxation , her Honour's discussion at [48]-[59], under the heading "Futility", deals helpfully with the second category of cases that his Honour identified. 32 In my view, this case falls squarely within the first category of case articulated by Burchett J in One.Tel Limited v Commissioner of Taxation . The appropriate order is that the second respondent pay the applicant's costs, any such costs to be taxed in default of agreement. I certify that the preceding thirty-two (32) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Weinberg. Associate: Dated: 11 April 2006 Counsel for the Applicant: Mr J.P. Moore Solicitors for the Applicant: Deacons Counsel for the Second Respondent Mr D.L. Bailey Solicitors for the Second Respondent: David Stagg Tonkin &amp; Co Date of Written Submissions: 9 &amp; 17 March 2006 and 4 April 2006 Date of Judgment: 11 April 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/396.html
Case: Smith v Airservices Australia [2005] FCA 997 ; (2005) 146 FCR 37
Outcome: referred to
In broad terms, the Federal Court Rules provide that where a party discontinues proceedings without the leave of the Court, the discontinuing party is liable to pay costs, unless the Court orders otherwise: see O 22 r 2 and 3, and O 62 r 26(1). No such rule is provided for where a proceeding is discontinued with the leave of the Court, although the starting point in principle is that the discontinuing party should meet the costs of the respondent: see Smith v Airservices Australia [2005] FCA 997 ; (2005) 146 FCR 37 per Stone J at [44]. 10 However, the starting point in resolving the issue is this case, namely who should bear the costs when a proceeding has been resolved by the making of consent orders, must be to consider the extent to which the ACCC succeeded in obtaining the relief that was initially sought. In that regard, the position is clear. Mr Spencer consented to the making of declarations by the Court that a series of agreements entered into by Contact Plus constituted "franchise agreements" within the meaning of clause 4 of the Code. He also consented to the making of declarations that Contact Plus had contravened the Code and therefore s 51AD of the Act , by failing to provide disclosure documents, and by failing to receive written and signed statements by the franchisees, as required. In addition, he consented to the making of directions regarding the termination of these franchise agreements, and other breaches of the Code. 11 The Court also declared, by consent, that Contact Plus had engaged in conduct that contravened ss 52 and 53 (g) of the Act regarding the representations made concerning the licence fee of $60,000 and the right of a franchisee to an area that was exclusive to that franchisee. Mr Spencer was declared to have aided, abetted, counselled or procured these contraventions of the Act , and to have been directly or indirectly knowingly concerned in, or party to, those contraventions. 12 A statement of agreed facts was appended to the consent orders that were sought. That statement contains findings of fact for the purposes of s 83 of the Act . 13 Finally, Mr Spencer agreed to injunctions in the terms sought, which would run for a period of three years from the date of the order made. He accepted orders that required him to provide each person with whom Contact Plus had entered into an agreement similar in terms to those of the franchise agreements that were the subject of this proceeding with a disclosure document that complied with the requirements of the Code, and a copy of the orders of the Court. 15 The ACCC contended that the present case fell within the first category described by Burchett J. Although in Smith v Airservices Australia Stone J made no mention of One.Tel Limited v Commissioner of Taxation , her Honour's discussion at [48]-[59], under the heading "Futility", deals helpfully with the second category of cases that his Honour identified.
Case: Adelmann &amp; Ham Boiler Corporation v Llanrwst Foundry Co (1928) 45 RPC 413
Outcome: cited
GMCA submitted that both patents were but an "attempt to re-design a known tool so as to achieve impermissibly, a patent monopoly over what is really a marketing idea". The alleged invention, so the argument went, citing Maugham J in Adelmann &amp; Ham Boiler Corporation v Llanrwst Foundry Co (1928) 45 RPC 413 at 420, was simply the application of a well known and well understood piece of mechanism to achieve an obvious advantage. The mere "positioning" of the handle for a known tool in order to achieve a known result was not a manner of manufacture.
Case: Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149
Outcome: cited
Claims must be determined in a practical and common sense manner: Nesbit v Impro at 95; Minnesota Mining at 274. In Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149 at 154 it was said that the claims must be as precise "as the subject admits of". The fact that Dr Stark had no problems on first reading is of significance. It is not the role of an independent expert to seek out difficulties or to read a patent with, to borrow an expression from administrative law, "an eye keenly attuned to the perception of error": Collector of Customs v Pozzolanic Enterprises Pty Ltd [1993] FCA 322 ; (1993) 43 FCR 280 at 287 quoted in Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 272. This episode reflects on Dr Stark's credibility as an independent expert. Generally I found Dr Stark lacked objectivity and detachment. He appeared keen to raise every conceivable argument in favour of the party which retained him.
Case: Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25
Outcome: cited
However, statutory rights to damages or an account of profits conferred on owners or exclusive licensees of intellectual property only have effect for the period that a plaintiff in fact has the relevant status. Thus in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25 Windeyer J held (at 36) that an account of profits should be taken to terminate as at the date the plaintiff assigned the trade mark in question and (at 41) that the assignee, having been joined as a plaintiff, should be entitled to an account of profits from the date of assignment. Similarly in Stack v Brisbane City Council (1996) 35 IPR 296 at 302 Drummond J held that where an equitable title had been converted into legal title by assignment, the assignor would have the right to an account of profits made by the infringers in the period up to the assignment and that the assignee alone would have the right to any profits made by the infringers after that date. Likewise, if an election were made for damages the assignee is the proper claimant for that relief, but only as from the date its equitable ownership became converted by registration into full legal and beneficial ownership of the patent.
Case: Collector of Customs v Pozzolanic Enterprises Pty Ltd [1993] FCA 322 ; (1993) 43 FCR 280
Outcome: cited
Claims must be determined in a practical and common sense manner: Nesbit v Impro at 95; Minnesota Mining at 274. In Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149 at 154 it was said that the claims must be as precise "as the subject admits of". The fact that Dr Stark had no problems on first reading is of significance. It is not the role of an independent expert to seek out difficulties or to read a patent with, to borrow an expression from administrative law, "an eye keenly attuned to the perception of error": Collector of Customs v Pozzolanic Enterprises Pty Ltd [1993] FCA 322 ; (1993) 43 FCR 280 at 287 quoted in Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 272. This episode reflects on Dr Stark's credibility as an independent expert. Generally I found Dr Stark lacked objectivity and detachment. He appeared keen to raise every conceivable argument in favour of the party which retained him.
Case: F Hoffman-La Roche &amp; Co v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529
Outcome: cited
The claims must be fairly based on the matter described in the specification: Patents Act s 40(3). The body of the specification must provide a "real and reasonably clear disclosure" of the invention claimed: F Hoffman-La Roche &amp; Co v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; Lockwood 1 at [69]. 33 GMCA submits that the claims are not fairly based. It says that the claims, in particular claim 1, are not limited to power saws but extend to all manner of power tools. They do not include "essential features" in the specification, viz the reciprocation frequency and stroke length ranges. They also refer to a "plurality" of positions whereas in fact there are only two. 34 Whatever may be the position in relation to claim 1, the claims from claim 3 onwards, and in particular the critical claim 6, are clearly confined to power saws.
Case: Foggin v Lacey (2003) 57 IPR 225
Outcome: cited
The principles are stated by Gummow J in Wanem Pty Ltd v John Tekiela [1990] FCA 372 ; (1990) 19 IPR 435 at 440, cited with approval by the Full Court in Foggin v Lacey (2003) 57 IPR 225 at [13]. Gummow J said: ...(i) first impressions are important in determining whether there is an infringement of a design, (ii) an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye notwithstanding slight differences, (iii) the question must be looked at as one of substance and by examining the essential features of the design, (iv) a closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation, (v) precise mathematical comparisons or matters of measurements or ratios, which form no part of the mental picture which the eye conveys to the brain of shape or configuration suggested by the design, are not to be applied as the test of infringement; appearance to the eye is the critical issue, and (vi) questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement, lest the registration be sapped of its worth to the registered owner. 116 As the Full Court in Foggin noted, it is for the Court to rule on the meaning of the design and question of infringement as determined by reference to the eye of the consumer. 117 My first, and continuing, impression is that product B is significantly different in appearance from the Design. In particular the shank is quite different. What is in issue here is an everyday product. To the lay person this looks like a saw, obviously not a hand saw but one with some attachment in the shape of the shank. I regard this as more important than differences in angles and proportions. Put simply, the Design shows a saw blade with a shank; product B is a saw with a different sort of shank. 118 As might be expected experts on either side gave differing views. Professor Redmond thought that the dominant aspect of the Design was the blade and that product B was "closely similar, such that it has the same appeal to the eye as the design in the (Design)". He saw the shank as an "attachment device" but the saw blade was the "core or crucial visual element". The shank was "peripheral" or "of less significance". Nevertheless I think the ordinary consumer would see a panel saw blade as a piece of metal with teeth along the bottom and a sloping top. The shank is at one end, and thus is in a literal sense peripheral, but it is, and would be seen as, an integral and distinctive part of the article.
Case: General Tire &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457
Outcome: cited
In the case of an anticipation in documentary form, the document must contain "clear and unmistakable directions to do what the patentee claims to have invented": General Tire &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 486. 44 Although GMCA originally pleaded some 22 anticipations, by trial these had been reduced to 13. In final submissions only seven were relied on. The general comment can be made that although some of the devices could perhaps as a matter of physical possibility be used as a jigsaw there was no clear direction that this was their intended use. 45 This device was in evidence and is also described in the Bosch 1993/94 Catalogue. It is described as a "multisaw" and is pictured as being used in panel saw mode. There are photographs of various blade accessories such as a rasp, file and various brushes and also the statement: "In addition, the Bosch jigsaw accessory range is available for the multisaw".
Case: Grant v Commissioner of Patents (2006) 69 IPR 221
Outcome: referred to
Much of this argument overlapped with GMCA's case on description, utility, novelty and obviousness. To the extent that it did not, it must be rejected. The alleged invention did not involve an abstract idea, like that considered in Grant v Commissioner of Patents (2006) 69 IPR 221. It concerned machines and their operation and thus "something of a corporeal and substantial nature": R v Wheeler (1819) 2 B &amp; Ald 345 at 350, cited in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 72 IPR 447 at [66] ( Lockwood 2 ).
Case: Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1
Outcome: cited
In any case, the specification does not put forward the "major vector element" as something "contribut(ing) to the achievement of the invention". The invention is not for a method of holding a power saw; it is for a power saw capable of fulfilling different functions. As already explained, the (perhaps overly scientific) term "vector" is but a word used in describing these two functions. The specification contains quite detailed explanations and diagrams of the preferred embodiment. There is no obligation on a patentee to describe more than a single preferred form of the invention. The ground of insufficiency is not made out merely because it is said there are other ways of carrying out the invention as to which the specification is not sufficiently precise: No-Fume Ltd v Frank Pitchford &amp; Co Ltd (1935) 52 RPC 231 at 248. The test is whether the disclosure in the specification will "enable the addressee to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty": Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [25] . This requirement has been satisfied.
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 72 IPR 447
Outcome: cited
Much of this argument overlapped with GMCA's case on description, utility, novelty and obviousness. To the extent that it did not, it must be rejected. The alleged invention did not involve an abstract idea, like that considered in Grant v Commissioner of Patents (2006) 69 IPR 221. It concerned machines and their operation and thus "something of a corporeal and substantial nature": R v Wheeler (1819) 2 B &amp; Ald 345 at 350, cited in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 72 IPR 447 at [66] ( Lockwood 2 ).
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: cited
GMCA say that the specification "does not explain how [counsel's emphasis] the major vector element contributes to the achievement of the invention (which is said to be a useful tool)". Reliance was placed on a passage in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 at [99] ( Lockwood 1 ). However, that passage is not in point. It is in the context of a fair basing argument and says that a claim cast in the form of a consistory clause is not fairly based if other parts of the specification show that the invention is narrower than that consistory clause. The inquiry, their Honours stress, is into what the body of the specification read as a whole discloses as the invention.
Case: Minnesota Mining &amp; Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253
Outcome: cited
Claims must be construed in a practical, common sense manner, and are valid so long as they provide a workable standard suitable to the intended use: Minnesota Mining &amp; Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 at 273; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95. 78 Claims must be determined in a practical and common sense manner: Nesbit v Impro at 95; Minnesota Mining at 274. In Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149 at 154 it was said that the claims must be as precise "as the subject admits of". The fact that Dr Stark had no problems on first reading is of significance. It is not the role of an independent expert to seek out difficulties or to read a patent with, to borrow an expression from administrative law, "an eye keenly attuned to the perception of error": Collector of Customs v Pozzolanic Enterprises Pty Ltd [1993] FCA 322 ; (1993) 43 FCR 280 at 287 quoted in Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 272. This episode reflects on Dr Stark's credibility as an independent expert. Generally I found Dr Stark lacked objectivity and detachment. He appeared keen to raise every conceivable argument in favour of the party which retained him.
Case: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56
Outcome: cited
Claims must be construed in a practical, common sense manner, and are valid so long as they provide a workable standard suitable to the intended use: Minnesota Mining &amp; Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 at 273; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95. 78 Claims must be determined in a practical and common sense manner: Nesbit v Impro at 95; Minnesota Mining at 274. In Cleveland Graphite Bronze Co v Glacier Metal Co Ltd (1950) 67 RPC 149 at 154 it was said that the claims must be as precise "as the subject admits of". The fact that Dr Stark had no problems on first reading is of significance. It is not the role of an independent expert to seek out difficulties or to read a patent with, to borrow an expression from administrative law, "an eye keenly attuned to the perception of error": Collector of Customs v Pozzolanic Enterprises Pty Ltd [1993] FCA 322 ; (1993) 43 FCR 280 at 287 quoted in Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 272. This episode reflects on Dr Stark's credibility as an independent expert. Generally I found Dr Stark lacked objectivity and detachment. He appeared keen to raise every conceivable argument in favour of the party which retained him.
Case: Nicaro Holdings Pty ltd v Martin Engineering Co (1990) 16 IPR 545
Outcome: cited
It is not in dispute that GMCA has offered for sale and sold in Australia two allegedly infringing products, referred to in this case as T1 and T2. Black &amp; Decker has to show that the GMCA products take each and every essential integer of the claims relied on (claims 1 and 3 to 8 of the Standard Patent): Nicaro Holdings Pty ltd v Martin Engineering Co (1990) 16 IPR 545 at 559-560. 73 A photograph of T1: 74 The only integers in contest are those designated 1.8 and 1.9 in claim 1 of the Patent. Integer 1.8 it will be recalled is as follows (emphasis added): and wherein the handle is positioned such that a force applied thereto by the user in a first of the said plurality of positions comprises a major vector transmitted along a line of action extending substantially parallel to the line of linear reciprocation. Integer 1.9 is in the same terms save only that the word "parallel" is replaced by the word "transverse". These integers obviously relate to the operation of the device in its panel saw (integer 1.8) and jigsaw (integer 1.9) modes.
Case: No-Fume Ltd v Frank Pitchford &amp; Co Ltd (1935) 52 RPC 231
Outcome: cited
In any case, the specification does not put forward the "major vector element" as something "contribut(ing) to the achievement of the invention". The invention is not for a method of holding a power saw; it is for a power saw capable of fulfilling different functions. As already explained, the (perhaps overly scientific) term "vector" is but a word used in describing these two functions. The specification contains quite detailed explanations and diagrams of the preferred embodiment. There is no obligation on a patentee to describe more than a single preferred form of the invention. The ground of insufficiency is not made out merely because it is said there are other ways of carrying out the invention as to which the specification is not sufficiently precise: No-Fume Ltd v Frank Pitchford &amp; Co Ltd (1935) 52 RPC 231 at 248. The test is whether the disclosure in the specification will "enable the addressee to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty": Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [25] . This requirement has been satisfied. 35 The reciprocation frequency and stroke length ranges are matters of guidance for the skilled addressee. They are not essential to the working of the claimed invention. As Maugham LJ said in No-Fume at 248, the specification does not have to define ... all the proportions, or all the dimensions, or all the temperatures, or all the materials which would give a similar or like result. 36 The preferred embodiment makes it clear that only two uses are disclosed. 37 The invention, so far is claimed in any claim, must be useful: Patents Act s 18(1)(c). This means that the invention as claimed must produce the desired result.