mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: ICI Chemicals &amp; Polymers Ltd v The Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214
Outcome: cited
In these circumstances, the transitional provisions in s 234 of the 1990 Act apply. Section 234(2) and (5) provide: '(2) Where, before the commencing day: (a) a patent application had been lodged under the 1952 Act; and (b) a complete specification, or a petty patent specification, had been lodged under that Act in respect of the application; and (c) the application had not been withdrawn or finally dealt with; then, subject to this Chapter and the regulations, this Act applies on and after that day: (d) in relation to the application as if it were a complete application made under this Act; and (e) in relation to the petty patent specification as if it were a complete specification filed under this Act in respect of the application. ... (5) Objection cannot be taken to: (a) an application mentioned in subsection (2); or (b) a patent granted on such an application; and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the application or patent, as the case may be, under the 1952 Act.' The effect of these provisions is that the Enantiomer Patent can only be revoked under the 1990 Act on a ground of invalidity that would also have been available under the 1952 Act. Where the relevant ground of invalidity under the 1952 Act is narrower than the corresponding ground under the 1990 Act, the patentee has the benefit of the narrower ground. Thus, an applicant for a patent under the 1952 Act is not to be worse off than if the 1952 Act had continued to operate: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 253-254 per Lockhart J; and ICI Chemicals &amp; Polymers Ltd v The Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214 at 224 [23] per Lee, Heerey and Lehane JJ.
Case: National Research Development Corporation v Commissioner of Patents [1959] HCA 67 ; (1959) 102 CLR 252
Outcome: applied
In the course of their reasons, Brennan, Deane and Toohey JJ discussed and approved the earlier High Court decisions in Microcell and National Research Development Corporation v Commissioner of Patents [1959] HCA 67 ; (1959) 102 CLR 252 ( 'NRDC' ). There is no doubt that their Honours considered that Microcell (a decision under the Patents Act 1903 (Cth)) and NRDC (a decision under the 1952 Act) applied with equal force to s 100(1)(d) of the 1952 Act and to the threshold requirement of 'invention' in s 18(1) of the 1990 Act.
Case: Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98
Outcome: considered
Warner-Lambert also relied on the following passage from the majority reasons in Ramset at 192 [38]: 'Under that law, as the doctrine with respect to obviousness and lack of inventive step developed in the nineteenth century, it was decided that a claim for "nothing but" a new use of an old substance lacked the quality of inventiveness. There also were instances in which this lack of inventive step was admitted on the face of the specification. If so, a grant might properly be refused in the first instance on the footing that the admission of the lack of an inventive step itself disentitled the applicant to argue that even an alleged invention was disclosed. If such an application had proceeded to grant, the grant would be liable to revocation under s 100(1)(e).' Again, I do not think this passage goes so far as to support Warner-Lambert's submission that the argument that a claim lacked the quality of inventiveness because it was for nothing but a new use of an old substance could only be raised under s 100(1)(e), and not under s 100(1)(d), of the 1952 Act. The last sentence of the passage addresses the case where the lack of an inventive step is admitted on the face of the specification; in terms, a case of that kind would fall within para (e). It does not explicitly address the other cases mentioned earlier in the passage, viz, where it appears from the face of the specification that the claim is not for 'a manner of new manufacture', and where the claim is for nothing but a new use of an old substance so that it lacks the quality of inventiveness required by the 1952 Act. The majority do not say that, in cases like those, revocation is only available under s 100(1)(e), or that there can never be any overlap between the grounds in paras (d) and (e) of s 100(1). The possibility that grounds for revocation may overlap in particular cases is well recognised: see Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39 ; (1961) 180 CLR 98 at 112-113 per Windeyer J; see also Ramset at 189 [31] in the majority judgment, and at 198 [50] and 200 [55] in Kirby J's dissenting judgment.
Case: Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511
Outcome: considered
The holding and the rationale of Philips were recently applied in Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 68 IPR 511 ( 'Merck' ). At 529 [63], the Full Court (comprising Heerey, Kiefel and Dowsett JJ) said that Microcell , NRDC and Philips established the following propositions: '1. The opening words of s 18(1) ("a patentable invention is an invention that") impose a threshold requirement that the "patentable invention" be an "invention", that is to say an "alleged" "manner of new manufacture" within s 6 of the Statute of Monopolies ( Philips at CLR 663; ALR 121; IPR 453). 2. That requirement will not be met if, on the face of the specification, the subject matter: (a) lacks the necessary quality of inventiveness under the Statute of Monopolies ( Phillips at CLR 664; ALR 122; IPR 454) (b) is not new ( NRDC at CLR 262, ALR 115; IPR 65, Philips at CLR 664; ALR 122; IPR 454) 3. A new use of an old substance is not an invention if its known properties make it suitable for that use in such a case the new purpose is "no more than analogous to the purposes for which the utility of the substance is already known" ( NRDC at CLR 262; ALR 115; IPR 65) 4. But there will be an invention if the new use consists in taking advantage of a hitherto unknown or unsuspected property of the substance ( NRDC at CLR 262; ALR 115; IPR 65).' Subject to one matter, I consider these propositions are equally applicable to s 100(1)(d) of the 1952 Act. The qualification is that I am not sure what is meant by proposition 2(b) or that it adds anything to proposition 2(a). 200 In the present case, Warner-Lambert did not dispute that the US Patent is incorporated into the specification for the Enantiomer Patent. Ranbaxy's argument therefore does not require me to look beyond the face of the specification. This view is supported by the decisions of the Full Court in Merck at 518-523 [27]-[39] and Bristol-Myers at 536 [30] and Heerey J in Wrigley at 314 [87]-[93].
Case: Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 19 IPR 275
Outcome: approved
This submission correctly identifies the causal connection that is required. It is not necessary to show that 'but for' the suggestion or representation no grant would have been made. In Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 19 IPR 275 (' Prestige '), Lockhart J said at 279-280: 'I agree in substance with the statement in Blanco White [Patents for Inventions, 5th ed] that conduct "calculated substantially to influence the [Commissioner's] decision under the [1952] Act whether or not to grant the patent" is the proper test. I would state the test, however, in different terms, namely, whether the conduct constituting the false suggestion or representation materially contributed to the Commissioner's decision to grant the patent even if other circumstances or causes also played a part in the making of that decision. It is sufficient if the conduct is a material inducing factor which led to the grant. It goes too far to say that the false suggestion or representation must be material in the sense that without it the patent would not have proceeded to grant.' See also Gummow J at 296.
Case: JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68
Outcome: approved
This test was approved by the Full Court in Pfizer at 80-83 [394]-[403] and by Crennan J in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at 94 [134]-[136]. There is no requirement of a deliberate intent to deceive: Pfizer at 80 [394]. Insofar as the representation is based on belief, it is relevant to consider whether the belief is false or not reasonably held: see NSI Dental at 579 [207] per Tamberlin J.
Case: Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79
Outcome: applied
These provisions are directed to the question whether the invention enables the addressee to attain the result promised by the patentee in the patent specification: see Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79 ( 'Rehm' ) at 96; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267 per Lockhart J; Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 ( 'Old Digger' ) at [216]; Wrigley at [134]-[141]. Want of utility in this sense is different from want of utility in the broader commercial sense that the invention is useless for any purpose whatsoever: see Alsop's Patent (1907) 24 RPC 733 at 752; and Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 431. 370 In Rehm , Gummow J explained the governing principles at 96, as follows: 'The basic principle has been formulated as follows in Fawcett v Homan (1896) 13 RPC 398 at 405 per Lindley LJ: "If an invention does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention." What the invention is intended to do is a matter to be gathered from the title and the whole of the specification: Blanco White, Patents For Inventions , SS 4 403. A distinction may be drawn between a case where a patentee claims a result and bases his claim on the production of that result and the case where a patentee merely points to certain advantages that will accrue from the use of his invention: Fox H G, Canadian Patent Law and Practice , 4th ed, pp 152 4.' See also TA Blanco White, Patents for Inventions , 5 th edn, Stevens &amp; Sons, London, 1983 ( 'Blanco White' ) at [4-402] and [4-403]; and Terrell on the Law of Patents , 14 th edn, ed D Young et al, Sweet &amp; Maxwell, London, 1994 at [5.121]-[5.128]. 371 As the latter part of the passage from Rehm suggests, the grounds of utility and false suggestion or misrepresentation can overlap. False suggestion or misrepresentation is a wider concept; it extends to representations that are extraneous to the specification and representations that do not attract the inutility ground. Blanco White states at [4-405]: 'It is not easy to distinguish between the sort of failure to fulfil a promise of results made in the specification that will amount to lack of utility and the sort that merely amounts to a false representation and accordingly will invalidate only if the patent has been "obtained" upon it. The distinction has been phrased as one between a promise of results and a mere wrong statement of the purposes for which that which is attained can be used; also as one between a promise of results and a "mere puff", or between a false representation of the attributes of the product claimed and an accurate representation as to its attributes coupled with an expression of an "over-sanguine and erroneous view of its character."' See also Hatmaker v Joseph Nathan Co Ltd (1919) 36 RPC 231 at 239 and Old Digger at [216].
Case: Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676
Outcome: approved
These provisions are directed to the question whether the invention enables the addressee to attain the result promised by the patentee in the patent specification: see Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79 ( 'Rehm' ) at 96; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267 per Lockhart J; Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 ( 'Old Digger' ) at [216]; Wrigley at [134]-[141]. Want of utility in this sense is different from want of utility in the broader commercial sense that the invention is useless for any purpose whatsoever: see Alsop's Patent (1907) 24 RPC 733 at 752; and Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 431. 371 As the latter part of the passage from Rehm suggests, the grounds of utility and false suggestion or misrepresentation can overlap. False suggestion or misrepresentation is a wider concept; it extends to representations that are extraneous to the specification and representations that do not attract the inutility ground. Blanco White states at [4-405]: 'It is not easy to distinguish between the sort of failure to fulfil a promise of results made in the specification that will amount to lack of utility and the sort that merely amounts to a false representation and accordingly will invalidate only if the patent has been "obtained" upon it. The distinction has been phrased as one between a promise of results and a mere wrong statement of the purposes for which that which is attained can be used; also as one between a promise of results and a "mere puff", or between a false representation of the attributes of the product claimed and an accurate representation as to its attributes coupled with an expression of an "over-sanguine and erroneous view of its character."' See also Hatmaker v Joseph Nathan Co Ltd (1919) 36 RPC 231 at 239 and Old Digger at [216].
Case: Alsop's Patent (1907) 24 RPC 733
Outcome: approved
These provisions are directed to the question whether the invention enables the addressee to attain the result promised by the patentee in the patent specification: see Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79 ( 'Rehm' ) at 96; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267 per Lockhart J; Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 ( 'Old Digger' ) at [216]; Wrigley at [134]-[141]. Want of utility in this sense is different from want of utility in the broader commercial sense that the invention is useless for any purpose whatsoever: see Alsop's Patent (1907) 24 RPC 733 at 752; and Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 431.
Case: Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424
Outcome: cited
These provisions are directed to the question whether the invention enables the addressee to attain the result promised by the patentee in the patent specification: see Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79 ( 'Rehm' ) at 96; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267 per Lockhart J; Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 ( 'Old Digger' ) at [216]; Wrigley at [134]-[141]. Want of utility in this sense is different from want of utility in the broader commercial sense that the invention is useless for any purpose whatsoever: see Alsop's Patent (1907) 24 RPC 733 at 752; and Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 431.
Case: Hatmaker v Joseph Nathan Co Ltd (1919) 36 RPC 231
Outcome: cited
As the latter part of the passage from Rehm suggests, the grounds of utility and false suggestion or misrepresentation can overlap. False suggestion or misrepresentation is a wider concept; it extends to representations that are extraneous to the specification and representations that do not attract the inutility ground. Blanco White states at [4-405]: 'It is not easy to distinguish between the sort of failure to fulfil a promise of results made in the specification that will amount to lack of utility and the sort that merely amounts to a false representation and accordingly will invalidate only if the patent has been "obtained" upon it. The distinction has been phrased as one between a promise of results and a mere wrong statement of the purposes for which that which is attained can be used; also as one between a promise of results and a "mere puff", or between a false representation of the attributes of the product claimed and an accurate representation as to its attributes coupled with an expression of an "over-sanguine and erroneous view of its character."' See also Hatmaker v Joseph Nathan Co Ltd (1919) 36 RPC 231 at 239 and Old Digger at [216].
Case: IG Farbenindustrie AG's Patents (1930) 47 RPC 289
Outcome: applied
This construction of the specification is consistent with the character of the Enantiomer Patent. It is, in effect, a selection patent: ie the compounds of the Enantiomer Patent have been selected from the broad class of compounds disclosed by the 981 Patent on the ground that those compounds have unexpected properties. The criteria for the grant of a selection patent were considered in IG Farbenindustrie AG's Patents (1930) 47 RPC 289 ( 'IG Farbenindustrie' ) at 322-323 and are quite stringent: the selection must be based on some substantial advantage gained or some substantial disadvantage avoided; the whole of the selected members must possess the advantage in question; and the selection must be in respect of a quality of a special character which may fairly be said to be peculiar to the selected group. The authorities also require that the advantages gained, or disadvantages avoided, by the selection must be expressly identified in the body of the specification. Blanco White states at [4-511]: 'Where the patent is a "selection patent," there is an additional requirement for sufficiency that the special advantage obtained from the selection must be stated in the specification. More generally, the advantage resulting from the invention must be stated whenever failure to do so leaves the invention inadequately defined.' In IG Farbenindustrie at 323, Maugham J said: '"I must add a word on the subject of the drafting of the specification of such a patent. It should be obvious, after what I have said as to the essence of the inventive step, that it is necessary for the patentee to define in clear terms the nature of the characteristic which he alleges to be possessed by the selection for which he claims a monopoly. He has in truth disclosed no invention whatever if he merely says that the selected group possesses advantages. Apart altogether from the questions of what is called sufficiency, he must disclose an invention; he fails to do this in the case of a selection for special characteristics, if he does not adequately define them".' In the Enantiomer Patent specification, Warner-Lambert has defined the claims of unexpected and surprising inhibition of cholesterol biosynthesis by means of the CSI Table at pg 8 of the specification.
Case: May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255
Outcome: approved
The decision in May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255 provides a useful illustration of the application of these principles in circumstances which are not unlike this case: see also E.I. Du Pont Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303.
Case: E.I. Du Pont Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303
Outcome: cited
The decision in May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255 provides a useful illustration of the application of these principles in circumstances which are not unlike this case: see also E.I. Du Pont Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303.
Case: Badische Anilin Und &amp; Soda Fabrik v Levinstein (1887) 4 RPC 449
Outcome: approved
Warner-Lambert submitted that Lipitor's commercial success demonstrates that the compounds claimed by the Enantiomer Patent (including claim 6) are undoubtedly useful. It also submitted that Ranbaxy's intention to market its own version of atorvastatin calcium in Australia supports the view that the compound has surprising activity and consequently utility. These submissions are misdirected. Utility in patent law is directed to the results promised by the specification, and not to the broader question of commercial or financial success: see Terrell on the Law of Patents at [5.128]; Badische Anilin Und &amp; Soda Fabrik v Levinstein (1887) 4 RPC 449 at 462. 379 Ranbaxy has succeeded in its challenge to the validity of the Enantiomer Patent. Accordingly, it is entitled to an order revoking the Enantiomer Patent. 380 Warner-Lambert has succeeded in its cross claim that Ranbaxy's intended importation and sale of its product will infringe the 981 Patent. It is entitled to a permanent injunction restraining Ranbaxy during the term of the 981 Patent, and any extension of that term, from infringing the 981 Patent.
Case: Re South African Supply and Cold Storage (1904) 2 Ch 268
Outcome: applied
The scheme is a scheme for the reconstruction of the company. It passes the test set out by Buckley J in Re South African Supply and Cold Storage (1904) 2 Ch 268 at 286. The undertaking is being transferred to persons who are not outsiders so that substantially the same business will be carried on by substantially the same persons who previously conducted the business. 14 I have been provided with a helpful written outline of pSivida Ltd's submissions. In accordance with the practice usually followed, I will mark the outline of submissions as MFI 1, but will not make any further reference to them in these reasons. 15 I am satisfied that I should make orders in accordance with the short minutes of order which I have now signed and dated and placed with the Court papers. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson. Associate: Dated: 15 May 2008 Counsel for the Plaintiff: I M Jackman SC Solicitor for the Plaintiff: Blake Dawson Date of Hearing: 1 May 2008 Date of Judgment: 1 May 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/627.html
Case: Royal Victorian Institute for the Blind Ltd v RBS.RVIB.VAF Ltd [2004] FCA 735 ; (2004) 206 ALR 581
Outcome: followed
In accordance with the approach taken in Royal Victorian Institute for the Blind Ltd v RBS.RVIB.VAF Ltd [2004] FCA 735 ; (2004) 206 ALR 581 at [17] and SGIC Insurance Ltd v Insurance Australia Ltd (2004) 51 ACSR 470 at [6], New pSivida Inc has been joined as a defendant in this application.
Case: SGIC Insurance Ltd v Insurance Australia Ltd (2004) 51 ACSR 470
Outcome: cited
In accordance with the approach taken in Royal Victorian Institute for the Blind Ltd v RBS.RVIB.VAF Ltd [2004] FCA 735 ; (2004) 206 ALR 581 at [17] and SGIC Insurance Ltd v Insurance Australia Ltd (2004) 51 ACSR 470 at [6], New pSivida Inc has been joined as a defendant in this application.