mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Stern v McArthur [1988] HCA 51 ; (1988) 165 CLR 489
Outcome: referred to
However, the Court held that there were serious questions to be tried whether the parties were engaged in trade and commerce between Australia and a place outside Australia, for the purposes of s 6(2) of the Act, and whether the head-contractor had acted unconscionably, and in contravention of s 51AA of the Act, by making demand under the mobilisation guarantees, in the sense that it had insisted on strict legal rights in circumstances which made that harsh or oppressive or caused hardship. Accordingly, the sub-contractors were entitled to injunctions in respect of the mobilisation guarantees: ( Logue v Shoalhaven Shire Council [1979] 1 NSWLR 537; Stern v McArthur [1988] HCA 51 ; (1988) 165 CLR 489 referred to). Batt J in so finding held that the effect of the Act, applying as it did to international trade and commerce, was to work a substantial inroad into the well-established common law autonomy of letters of credit and performance bonds and other bank guarantees. In that case the bank which operated in Victoria, had made a submitting appearance only. 41 This conclusion was reached although the contractor was, in calling up these guarantees, acting according to his strict legal entitlement: Stern v McArthur [1988] HCA 51 ; (1988) 165 CLR 489. See also: ACCC v CG Berbatis Holdings Pty Ltd (No 2) [2000] FCA 2 ; (2000) 96 FCR 491 at 498 adopted with approval in Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd [2001] HCA 63 ; (2001) 76 ALJR 1 Gummow and Hayne JJ.
Case: Tanwar Enterprises Pty Ltd v Cauchi [2003] HCA 57 ; (2003) 217 CLR 315
Outcome: referred to
Clough continues to contend that it would be unconscionable for ONGC to exercise or purport to exercise its apparent legal rights. It points to several equitable norms falling within the "unwritten law" for the purposes of s 51AA of the Act: (a) There is equitable relief analogous to relief against forfeiture even absent waiver or estoppel, where the first party's breach has effectively contributed to the second party's breach, equity may regard it as unconscionable for the first party to exercise its legal rights arising from the second party's breach: Legione v Hateley [1983] HCA 11 ; (1983) 152 CLR 406. See also Tanwar Enterprises Pty Ltd v Cauchi [2003] HCA 57 ; (2003) 217 CLR 315, [40], [58]. (b) Equity may restrain the exercise of legal right if it is sought to be used unconscionably in the sense of it being used unreasonably or arbitrarily: Pierce Bell Sales Pty Ltd v Frazer [1973] HCA 13 ; (1973) 130 CLR 575. (c) Equity may relieve against one party's insistence upon rights in circumstances which make that harsh or oppressive. ACCC v Samton Holdings Pty Ltd [2002] FCA 62 ; (2002) 117 FCR 301.
Case: World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181
Outcome: referred to
Section 80(2) enables the Court, where, in its opinion, it is desirable to do so, to grant an interim injunction pending determination of an application under s 80(1): ACCC v CG Berbatis Holdings Pty Ltd [2003] HCA 18 ; (2003) 197 ALR 153; ACCC v Samton Holdings Pty Ltd [2002] FCA 62 ; (2002) 117 FCR 301. This section confers a judicial discretion of the widest kind upon the Court: World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 at 185-187 per Bowen CJ.
Case: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705
Outcome: followed
A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; D&eacute;cor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell &amp; Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720.
Case: Braas &amp; Co GmbH v Humes Ltd (1993) 26 IPR 273
Outcome: followed
It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric &amp; Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; D&eacute;cor at 391, 398; Braas &amp; Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74].
Case: Breville Pty Ltd v The Warehouse Group (Australia) Pty Ltd [2005] FCA 1893
Outcome: cited
Clorox contended that the respondents' expert witnesses' evidence was inadmissible, at least to the extent that their opinions went to the construction of the claims. It was argued that in the absence of technical or scientific words or expressions requiring expert explanation, which was said not to be the case here, the task of construction of the claims was for the Court and, as such, this evidence was irrelevant and consequently inadmissible. See, for instance, the recent judgment in Breville Pty Ltd v The Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 at [34] - [36] . Clorox also submitted that certain portions of the respondents' affidavit evidence were inadmissible, again on grounds of irrelevance, as it was not for a witness to rewrite or redraft the Patent. I should note that Clorox made further submissions in respect of the admissibility of the respondents' evidence in the context of infringement and I will consider those objections when addressing infringement. 36 The respondents submitted that the evidence to which Clorox raised an objection was admissible on the basis that it responded to the evidence of Clorox's own expert witness; was of assistance to the Court in construing the relevant claims of the Patent; and that the weight to be given to such evidence was a matter for submissions.
Case: British United Shoe Machinery Co Ltd v A Fussell &amp; Sons Ltd (1908) 25 RPC 631
Outcome: followed
A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; D&eacute;cor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell &amp; Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720.
Case: CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
Outcome: followed
It is appropriate to consider the principles applicable to the construction of a patent and their application to the Patent's specification before addressing Clorox's claims of infringement: see CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 267-268 referring to Ransburg Co v Aerostyle Ltd [1968] RPC 287 per Lord Upjohn at 297. Indeed, it is important to ensure that consideration of the allegedly infringing product does not influence the determination of the proper construction of the claims.
Case: Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385
Outcome: followed
A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; D&eacute;cor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell &amp; Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720.
Case: Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106
Outcome: followed
It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric &amp; Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; D&eacute;cor at 391, 398; Braas &amp; Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74].
Case: EI Dupont de Nemours &amp; Co v Imperial Chemical Industries plc (2002) 54 IPR 304
Outcome: applied
As such, a court can have regard to evidence from experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning: see [21] above and EI Dupont de Nemours &amp; Co v Imperial Chemical Industries plc (2002) 54 IPR 304 at [41]-[60]. This is not to say that the court is thereby relinquishing its role as the ultimate arbitrator of the proper construction of the claims. The weight that a court gives to such evidence will vary from case to case. 39 In the present proceedings, the terms used in the relevant claims are unusual given the characteristics of plastic bags: see [32] [33] above. The use of particular terms, especially 'straight', must be understood by reference to what the hypothetical addressee would consider the terms to mean. Consequently, in my view the evidence adduced by the respondents provides evidence of the meaning that the notional addressee would ascribe to such terms and the evidence is admissible as relevant to the construction of the claims. 40 Counsel for Clorox accepted that in order to consider infringement a bag must be considered in the laid-flat form but contended that this could encompass a laid-flat three-dimensional form. In my view the concession as to the laid-flat form was correctly made. The language of the relevant claims, as set out above, is ambiguous when considered in isolation. The terms chosen by the patentee to describe the monopoly cannot be properly understood without reference to the specification as a whole. In particular, unless the bags are arranged in a laid-flat form, it is not sensible to refer to the front and rear panels of the bag or to the sides of the bag (whether straight or otherwise) or even to discuss the shape of the fourth side of the bag. To consider the bags in any other form or arrangement would be to deprive the essential integers of the invention of any content. While, as previously mentioned, a clear and unambiguous claim must not be varied or qualified by statements in the remainder of the specification, in the present context the language chosen is difficult to comprehend without reference to the description of the invention contained in the body of the specification. Thus, in my opinion the relevant claims each import a requirement that the language used is to be understood in light of the invention being in the laid-flat form. This does no more than give effect to the language chosen by the patentee and does not expand or narrow the relevant claims.
Case: Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491
Outcome: followed
As a general rule, the terms used in a specification should be accorded their ordinary English meaning. Put another way, the terms must be understood in a practical, commonsense manner: Electric &amp; Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513; Interlego at 478; Minnesota Mining at 270; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338.
Case: Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239
Outcome: followed
The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; D&eacute;cor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: D&eacute;cor at 391; Photocure at [170].
Case: Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442
Outcome: followed
The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; D&eacute;cor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: D&eacute;cor at 391; Photocure at [170].
Case: Glaverbel SA v British Coal Corp [1994] RPC 443
Outcome: cited
Ultimately, however, the construction of the specification is for the court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas at 485-486; Patent Gesellschaft at 455. Further, if the evidence before the court does not establish that a technical meaning is to be given to a term, it is to be given its ordinary meaning: Electric &amp; Musical Industries at 226; Minnesota Mining at 279; Patent Gesellschaft at 455; Photocure at [170].
Case: Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181
Outcome: considered
A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; D&eacute;cor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell &amp; Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 29 I also respectfully agree with Bennett J's assessment of the assistance provided by the questions in Improver , which Mr Hess referred to in his submissions. In particular her Honour said at [67]: '...I do not consider that utilisation of those questions is helpful other than, perhaps, as a "check" on the conclusion reached as to the characterisation of essential or inessential integers present in the allegedly infringing article. They are no substitute for construction of the claim to ascertain the essential and inessential integers and a determination regarding the presence of those integers for infringement.' 30 While the shape of the fourth side might accurately be described as the novel feature of the invention claimed, the patentee has chosen by the language of the claims to make the requirement that the front and rear panels be joined along straight sides an essential feature. 31 In my view, these two issues, both of which involve construction of the claims and the specification as a whole, are necessarily connected. Mr Caine's threshold question about the form in which the refuse bag of the invention is to be arranged in order to understand its features, cannot be addressed properly without considering the context in which there is a requirement that the panels be joined along three straight sides. Similarly, the meaning of 'along three straight sides' cannot be determined without reference to the appropriate arrangement.