mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399
Outcome: cited
my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.
Case: Jango v Northern Territory (No 4) (2004) 214 ALR 608
Outcome: cited
submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: cited
is required is that there be a real and reasonably clear disclosure in the body of the specification, taken as a whole, of the invention that is claimed in the claims so that those who may wish to exploit the invention as claimed after the patent has expired will be enabled to do so: see, for example, Soci&eacute;t&eacute; Des Usines Chimiques Rh&ocirc;ne-Poulenc v Commissioner of Patents [1958] HCA 27 ; (1958) 100 CLR 5 at 11 per Fullagar J; F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 at 539; CCOM v Jiejing at 281-282; Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood v Doric ) at [69].
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202
Outcome: referred to
history of the emergence of obviousness or lack of inventive step as a distinct ground of invalidity has been recently traced by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 ( Lockwood v Doric (No 2) ) at [38] [49], and by a Full Court of this Court in Ajinomoto Co Inc v NutraSweet Australia Pty Ltd [2008] FCAFC 34 at [63] [91]. I need not discuss that history.
Case: Makita (Australia) Pty Ltd v Sprowles (2001) 52 NSWLR 705
Outcome: referred to
relies on a passage from the well-known judgment of Heydon JA (as his Honour then was) in Makita (Australia) Pty Limited v Sprowles (2001) 52 NSWLR 705 ( Makita ) at [85]: In short, if evidence tendered as expert opinion evidence is to be admissible, it must be agreed or demonstrated that there is a field of "specialised knowledge"; there must be an identified aspect of that field in which the witness demonstrates that by reason of specified training, study or experience, the witness has become an expert; the opinion proffered must be "wholly or substantially based on the witness's expert knowledge"; so far as the opinion is based on facts "observed" by the expert; they must be identified and admissibly proved by the expert, and so far as the opinion is based on "assumed" or "accepted" facts, they must be identified and proved in some other way; it must be established that the facts on which the opinion is based form a proper foundation for it; and the opinion of an expert requires demonstration or examination of the scientific or other intellectual basis of the conclusions reached: that is, the expert's evidence must explain how the field of "specialised knowledge" in which the witness is expert by reason of "training, study or experience", and on which the opinion is "wholly or substantially based", applies to the facts assumed or observed so as to produce the opinion propounded. If all these matters are not made explicit, it is not possible to be sure whether the opinion is based wholly or substantially on the expert's specialised knowledge. If the court cannot be sure of that, the evidence is strictly speaking not admissible, and, so far as it is admissible, of diminished weight.
Case: Merck Frosst Canada Inc v Canada (Minister of National Health and Welfare) (2000) 8 CPR (4 th ) 48
Outcome: referred to
the Canadian case Pfizer Canada Inc v Apotex Inc (1998) 78 CPR (3d) 3, the court stated that the doctrine of equivalents applies to compositions where there is equivalence between chemical ingredients. That approach was followed in the Canadian case Merck Frosst Canada Inc v Canada (Minister of National Health and Welfare) (2000) 8 CPR (4 th ) 48. In the later case, the court stated, quoting from the earlier one, that "basically, there is equivalence when the substituting ingredient or device 'performs substantially the same function in substantially the same way to obtain the same result'". Accordingly, the court accepted expert evidence that the chemical properties and activities of the substituted ingredient were similar to those of the ingredient that it replaced. That evidence showed that both compounds were electron withdrawing groups and would therefore allow a particular reaction to occur, resulting in the same products. Importantly, the court accepted expert evidence that "a person reasonably skilled in the art would have known of the inter-changeability of that ingredient not contained in the patent with the one that was". Accordingly, the court found infringement proved. The evidence
Case: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228
Outcome: cited
is common ground that the basic test for lack of novelty in Australia is the "reverse infringement test", which was enunciated by Aickin J in the following well-known passage in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235: The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement ... This rule is stated in Blanco White TA, Patents for Inventions and the Protection of Industrial Design (5 th ed, Stephens, London, 1983) at [4-102] as follows: The test for lack of novelty is essentially the same as the test for infringement; that is to say, a prior use will invalidate a claim if it was such that it would infringe that claim if carried out after the grant of the patent concerned; while a prior disclosure will invalidate if it contains a clear description of, or clear instructions to do or make, something that would infringe if carried out after grant. Lundbeck submits that there are two elements of the reverse infringement test: first, that the alleged anticipation must disclose all of the essential features of the particular claim it is said to anticipate; and, second, that the alleged anticipation must have enabled the addressee to carry out the invention. Alphapharm submits: "The submissions of Lundbeck misapplied the doctrine of enabling disclosure, even assuming it applies in Australia". Alphapharm submits, however, that the applicability of the doctrine need not be decided because there is no dispute that the Australian Citalopram Patent "enabled" the racemate, that is, the positive enantiomer, but only with the negative enantiomer in equal proportions. Clearly, the issue of the proper construction of claim 1 discussed above directly arises.
Case: Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253
Outcome: applied
question of what was obvious is assessed from the perspective of the hypothetical non-inventive skilled addressee or team in the field of the invention, taking into account "what was known or used" (referred to as "common general knowledge"): Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 ( Minnesota v Beiersdorf ). This position is now effectively codified in ss 7(2) and 18(1)(b) of the Act, provided s 7(3) is put to one side. In Minnesota v Beiersdorf at 292-295 and in Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 ( Astra ) at [57] it was held in relation to s 100(1)(e) of the 1952 Act that publications are not to be taken into account unless their content was part of common general knowledge at the priority date. Accordingly, the issue is not whether it was obvious to conduct a literature search of a particular kind with a view to acquiring information, but whether the information that would have been obtained from the search had already entered the body of common general knowledge: Minnesota v Beiersdorf at 295; Astra at [45]. No question arises in this case regarding the results of a routine literature search. In Minnesota v Beiersdorf , Aickin J described the notion of common general knowledge (at 292): The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. As noted earlier, it was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is "generally accepted without question" or "generally regarded as a good basis for further action" by the bulk of those in the art: Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315 ; (2002) 56 IPR 248 at [100] , quoting Blanco White TA, Patents for Inventions and the Protection of Industrial Design (5 th ed, Stephens, London, 1983) at [4-207].
Case: Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315 ; (2002) 56 IPR 248
Outcome: cited
Minnesota v Beiersdorf , Aickin J described the notion of common general knowledge (at 292): The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. As noted earlier, it was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it. The question is whether it is "generally accepted without question" or "generally regarded as a good basis for further action" by the bulk of those in the art: Minnesota Mining and Manufacturing Co v Tyco Electronics Pty Ltd [2002] FCAFC 315 ; (2002) 56 IPR 248 at [100] , quoting Blanco White TA, Patents for Inventions and the Protection of Industrial Design (5 th ed, Stephens, London, 1983) at [4-207].
Case: National Research Development Corporation v Commissioner of Patents [1959] HCA 67 ; (1959) 102 CLR 252
Outcome: cited
Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 ( Gambro ), Allsop J pointed out (at [353]) that it is wrong to divide up the inventive process into conception and practical implementation: it is the whole that must be considered and it suffices that there is only one inventive step involved (see also National Research Development Corporation v Commissioner of Patents [1959] HCA 67 ; (1959) 102 CLR 252 at 262).
Case: Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208
Outcome: cited
submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.
Case: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date
Case: Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513
Outcome: cited
my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.
Case: NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381
Outcome: cited
history of the emergence of obviousness or lack of inventive step as a distinct ground of invalidity has been recently traced by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 ( Lockwood v Doric (No 2) ) at [38] [49], and by a Full Court of this Court in Ajinomoto Co Inc v NutraSweet Australia Pty Ltd [2008] FCAFC 34 at [63] [91]. I need not discuss that history. Lundbeck submits that it has not been accepted in this Court that an expert's opinion is inadmissible if it is based on assumed or accepted facts that are not identified and proved, citing: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 ( Sydneywide ) at [16] per Branson J and [87] per Weinberg and Dowsett JJ); Neowarra v Western Australia (No 1) [2003] FCA 1399 ; (2003) 134 FCR 208 at [16] , [21] [27] per Sundberg J; Jango v Northern Territory (No 4 ) (2004) 214 ALR 608 at [19] per Sackville J; NutraSweet Australia Pty Ltd v Ajinomoto Co Inc [2005] FCA 1524 ; (2005) 67 IPR 381 at [33] per Finkelstein J; Cadbury Schweppes Pty Ltd v Darrell Lee Chocolate Shops Pty Ltd [2006] FCA 363 ; (2006) 228 ALR 719 at [7] per Heerey J.
Case: Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236
Outcome: cited
my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.
Case: Olin Mathieson Chemical Corporation v Biorex Laboratories Limited [1970] RPC 157
Outcome: cited
High Court also held in Astra (at [50] [53]) that obviousness was to be determined by asking whether a hypothetical non-inventive skilled addressee, equipped with the common general knowledge as at the priority date, would have taken steps towards the invention "as a matter of routine" in the expectation that they might well produce the invention or some other useful result (endorsing statements in Wellcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 ( Wellcome ) at 286 and Olin Mathieson Chemical Corporation v Biorex Laboratories Limited [1970] RPC 157 ( Olin ) at 187-188). The High Court has therefore insisted on the two elements: (1) being led as a matter of routine to the desired result; and (2) having a reasonable expectation of achieving that result.