mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Willey v Synan [1935] HCA 76 ; (1935) 54 CLR 175
Outcome: cited
The application for security for costs must therefore be dismissed. It is not necessary therefore to say anything about the applicant's submissions as to the substantive merits of the respondents' case or the quantum of the amount of security sought. I would only say that there does seem to be force in the submission of Mr McGowan SC that the respondents are in a real sense the moving party since in their cross-claim they seek removal of the applicant's trade marks, which is something they would have to achieve anyway to obtain registration of their own marks. In substance, so it is said, the applicant is defending its property from attack: Maatschappij Voor Fondsenbezit v Shell Transport and Trading Co [1923] 2 KB 166 at 177, Willey v Synan [1935] HCA 76 ; (1935) 54 CLR 175, Re Travelodge Australia Ltd (1978) 21 ACTR 17.
Case: Maatschappij Voor Fondsenbezit v Shell Transport and Trading Co [1923] 2 KB 166
Outcome: cited
The application for security for costs must therefore be dismissed. It is not necessary therefore to say anything about the applicant's submissions as to the substantive merits of the respondents' case or the quantum of the amount of security sought. I would only say that there does seem to be force in the submission of Mr McGowan SC that the respondents are in a real sense the moving party since in their cross-claim they seek removal of the applicant's trade marks, which is something they would have to achieve anyway to obtain registration of their own marks. In substance, so it is said, the applicant is defending its property from attack: Maatschappij Voor Fondsenbezit v Shell Transport and Trading Co [1923] 2 KB 166 at 177, Willey v Synan [1935] HCA 76 ; (1935) 54 CLR 175, Re Travelodge Australia Ltd (1978) 21 ACTR 17.
Case: White v Butt [1909] 1 KB 50
Outcome: cited
In postulating the availability of an order for security for costs, their Honours were alluding to the situation where an impecunious plaintiff is backed by a non-party which has an interest in the plaintiff succeeding in the litigation; cf Federal Court Rules O 28 r 3(1)(b), White v Butt [1909] 1 KB 50 at 55-56. In such a case, an order for security for costs against the plaintiff will, as a matter of practicality, require the non-party to provide the security. Failure to make such an application for security for costs at an early stage may, as a matter of discretion, tell against the later making of such an order against the non-party. In the present case there is no question this Court has jurisdiction to make an order for security for costs against the applicant, which of course is a party; the problem for the respondents is that the statutory pre-condition for such an order has not been established.
Case: Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 
Outcome: cited
The latter decision has subsequently been discussed by the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 , particularly at [36] [40] per Brennan CJ, Gaudron, McHugh and Gummow JJ and in Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 ; (2007) 81 ALJR 1070 at [106] [107]. It is made clear that external evidence cannot be relied upon. The same ground of invalidity was examined in some detail by the Full Court in Merck &amp; Co Inc [2006] FCAFC 91 ; 154 FCR 31 at [20] [75] (cf at first instance Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182 , (2004) 63 IPR 85 at [80] [97]). The true scope of this ground of invalidity is difficult to discern in a case such as the present where the claims are for conventional products (albeit defined by chemical formula) and processes for the manufacture of products compared, say, with Merck &amp; Co Inc [2006] FCAFC 91 ; 154 FCR 31 which dealt with a variation of a dosage regime. It is clear that the grounds of novelty and obviousness must be considered as such rather than through this prism ( CCOM Pty Ltd [1994] FCA 1168 ; 51 FCR 260 at 295 295). 132 "Utility" in this sense "depends upon whether, by following the teaching of the complete specification, the result claimed is produced" ( Advanced Building Systems [1998] HCA 19 ; 194 CLR 171 at [24] ). The result claimed may cover two aspects one is physically producing a result and the other is producing a result that is useful. Useful in this sense does not mean commercially successful. Put another way, Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 96 approved the following statement of general principle: "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."
Case: Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182 , (2004) 63 IPR 85
Outcome: cited
The latter decision has subsequently been discussed by the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 , particularly at [36] [40] per Brennan CJ, Gaudron, McHugh and Gummow JJ and in Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 ; (2007) 81 ALJR 1070 at [106] [107]. It is made clear that external evidence cannot be relied upon. The same ground of invalidity was examined in some detail by the Full Court in Merck &amp; Co Inc [2006] FCAFC 91 ; 154 FCR 31 at [20] [75] (cf at first instance Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182 , (2004) 63 IPR 85 at [80] [97]). The true scope of this ground of invalidity is difficult to discern in a case such as the present where the claims are for conventional products (albeit defined by chemical formula) and processes for the manufacture of products compared, say, with Merck &amp; Co Inc [2006] FCAFC 91 ; 154 FCR 31 which dealt with a variation of a dosage regime. It is clear that the grounds of novelty and obviousness must be considered as such rather than through this prism ( CCOM Pty Ltd [1994] FCA 1168 ; 51 FCR 260 at 295 295).
Case: Bristol-Myers Squibb Co v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 
Outcome: cited
It was submitted on behalf of Sanofi-Aventis that neither PCR 4099 nor either of the enantiomers of that compound were "taught" in the sense of recommended by the French patent, citing 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. That case concerned a method of administration of a naturally occurring drug to a patient. The full passage is as follows: "What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it." 63 That language is quite conventional in relation to a dose regime. The actual decision in the case was that there was anticipation of the dosage regime claimed in the patent in suit by the earlier publication which included the following ( Bristol-Myers Squibb Co [2000] FCA 316 ; 97 FCR 524 at [71] ): "Further studies to evaluate the feasibility of shorter infusion time, 3 hours versus 24 hours and a lower 135mg/m2 versus a maximum tolerated dose of 175mg/m2 are now in progress in relapsing ovarian cancer patients both in Canada and in Europe. Already more than 200 patients have been entered into this four-arm randomized, NCIC guided international study. Indeed, the 3 hours infusion time administration schedule proved to be feasible, if given concomitantly to profylactic [sic] measures as high dose dexamethasone, cimetidine and difenhydramine. This makes even outpatient treatment with this first available representative of this new class of antitumor agents possible." (cf Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 at 60). In any event, the problem does not arise in the present case. The invention disclosed and claimed by the French patent necessarily carried the implication of a direction, recommendation or suggestion. That is the consideration for which the monopoly was granted.
Case: C Van der Lely NV v Bamfords Ltd [1963] RPC 61 
Outcome: cited
The qualification is expressed in various places including by Lord Reid in C Van der Lely NV v Bamfords Ltd [1963] RPC 61 at 71: "But Lord Westbury must have meant experiments with a view to discovering something not disclosed. He cannot have meant to refer to the ordinary methods of trial and error which involve no inventive step and are generally necessary in applying any discovery to produce a practical result." In that case, the question was whether a skilled reader would infer from photographs of a machine in magazine articles that the rake wheels of the alleged anticipating machine were ground driven rather than gear driven. It is interesting that Lord Reid went on to say ([1963] RPC 61 at 72): "The appellants' first argument is that it is not enough that the photograph should disclose a probability that the wheels were ground driven. There cannot be anticipation, they say, unless this is shown clearly and unmistakably. I cannot accept that argument. I would agree that the anticipating material must be as good for practical purposes as the material in the appellants' specification. But I can see no practical difference between a definite statement of fact and material from which the skilled man would clearly infer its existence. So the question is whether the typical skilled man would infer ground drive from the photograph. It would not be enough that a quick-witted man would guess that. But in this case I think that it is proved that the ordinary skilled man would have had good grounds for reaching the conclusion that these wheels were ground driven. He could not have been certain, but practical men act on something less than absolute certainty."
Case: F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 
Outcome: cited
Counsel for Sanofi-Aventis submitted that enabling disclosure, not mere disclosure, is required for anticipation, citing, most recently, Lindgren J in Alphapharm Pty Ltd [2008] FCA 559 at [160] [161] and the decision of the House of Lords in SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323. By way of introduction, it is worth remarking that the phrase "enabling disclosure" was brought to prominence by the speech of Lord Hoffmann in Biogen Inc v Medeva plc [1996] UKHL 18 ; [1997] RPC 1 , (1996) 36 IPR 438. That decision concerned the requirements for a valid patent under the 1997 United Kingdom Act (based upon the European Patent Convention) but did not concern the question of anticipation. The most important question was whether a later patent could claim an earlier priority date because it was "supported" by the earlier specification. That is a concept similar to, but narrower than, whether a later patent is fairly based upon an earlier specification in our law (cf F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 ; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260 ; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274). It may be accepted that, in the case of a claim for a chemical compound by formula, in order to be valid, the specification would have to disclose how it might be manufactured (s 40). The phrase was also used in the speech of Lord Oliver in Asahi Kasei Kogyo KK's Application [1991] RPC 485 , to which I shall return. The phrase is reasonable shorthand in relation to the disclosure required for there to be anticipation of a process or method claim but, in my opinion, has little, if any, relevance to anticipation of a product claim or a claim for a chemical compound by formula. Indeed, it is apt to mislead in relation to the latter. For a product claim, the novelty must lie in the product not the means of producing it ( May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255 at 281 282). By the same token, a new process to obtain an old product will have novelty.
Case: Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 , (2002) 76 ALJR 816
Outcome: cited
The position established in Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was of relatively short duration. Until then, the wider view of Williams J in HPM Industries Pty Ltd v Gerard Industries Ltd [1957] HCA 47 ; (1957) 98 CLR 424 had applied (see Graham Hart (1971) Pty Ltd v SW Hart &amp; Co Pty Ltd [1978] HCA 61 ; (1978) 141 CLR 305 per Aickin J at 329 330). The 1990 Act widens the prior art base, but does not change the nature of the issue. Leaving aside Aktiebolaget [2002] HCA 59 ; 212 CLR 411 , the principal survey of the topic by the High Court since Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 , (2007) 81 ALJR 1070 , particularly at [31] [66]. That case did not involve the problem that arises here. It is noteworthy that the Court said of the 1990 provisions (at [127]): "As stated above, by enlarging the prior art base through including relevant prior disclosures beyond those disclosures proven to be part of the common general knowledge, these provisions raise the threshold for inventiveness. However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention." (Emphasis added.) (cf Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 , (2002) 76 ALJR 816 at [33] as to combination patents.) The applicants do not seek to utilise the contents of the prior specification as an admission as to common general knowledge (cf Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 , 81 ALJR 1070 at [105] [109]). Rather, it is a statement of the nature of the inventive step that is claimed (cf in another context, Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; (1959) 102 CLR 232).
Case: Flour Oxidizing Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428
Outcome: discussed
The source, Flour Oxidizing Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 , concerned an invention for "[i]mprovements in conditioning or improving the quality of recently ground flour, semolina, or the like", one of the claims of the relevant patent being for a "process of conditioning flour and the like, passing the same with full exposure through an atmosphere containing a gaseous oxide of nitrogen or chlorine or bromine oxidising agent in the gaseous or vapourised state". The alleged anticipation being discussed by Parker J in the relevant passage ( Flour Oxidizing Co Ltd 25 RPC 428 at 457) was entitled "[i]mprovements in and relating to the treatment of alimentary substances and beverages" essentially by subjecting the substances to the action of electricity.
Case: Graham Hart (1971) Pty Ltd v SW Hart &amp; Co Pty Ltd [1978] HCA 61 ; (1978) 141 CLR 305
Outcome: cited
The position established in Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was of relatively short duration. Until then, the wider view of Williams J in HPM Industries Pty Ltd v Gerard Industries Ltd [1957] HCA 47 ; (1957) 98 CLR 424 had applied (see Graham Hart (1971) Pty Ltd v SW Hart &amp; Co Pty Ltd [1978] HCA 61 ; (1978) 141 CLR 305 per Aickin J at 329 330). The 1990 Act widens the prior art base, but does not change the nature of the issue. Leaving aside Aktiebolaget [2002] HCA 59 ; 212 CLR 411 , the principal survey of the topic by the High Court since Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 , (2007) 81 ALJR 1070 , particularly at [31] [66]. That case did not involve the problem that arises here. It is noteworthy that the Court said of the 1990 provisions (at [127]): "As stated above, by enlarging the prior art base through including relevant prior disclosures beyond those disclosures proven to be part of the common general knowledge, these provisions raise the threshold for inventiveness. However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention." (Emphasis added.) (cf Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 , (2002) 76 ALJR 816 at [33] as to combination patents.) The applicants do not seek to utilise the contents of the prior specification as an admission as to common general knowledge (cf Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 , 81 ALJR 1070 at [105] [109]). Rather, it is a statement of the nature of the inventive step that is claimed (cf in another context, Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; (1959) 102 CLR 232).
Case: Hill v Evans (1862) 1A IPR 1 , (1862) 4 De GF &amp; J 288, (1862) 31 LJ Ch 457 , (1862) 6 LT 90, (1862) 45 ER 1195 
Outcome: applied
The usual starting point in discussion of anticipation is the judgment of Lord Westbury LC in Hill v Evans (1862) 1A IPR 1 , (1862) 4 De GF &amp; J 288, (1862) 31 LJ Ch 457 , (1862) 6 LT 90, (1862) 45 ER 1195 , particularly the following (1A IPR 1 at 6 7): "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. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. ... There is not, I think, any other general answer that can be given to this question than this: that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication." None of the reports set out the particulars of the plaintiff's patent. For those details it is necessary to go to the related case of Hills v London Gaslight Co 5 H and N 312, referred to by Lord Westbury LC in Hill v Evans (1862) 1A IPR 1 at 3. The description of the invention was "an improved mode of compressing peat and of manufacturing gas and of obtaining certain substances applicable to purifying the same". It consisted of passing gas through a mixture with the object of purifying the gas and then renovating the purifying material. Each of the specifications cited against Hill's patent was also process or method patent. Heard's was a patent for the application of lime in the purification of gas, croll's patent was directed to an improved method of purifying coal gas from ammonia and Laming's patent also dealt with the process of purification of gas. The general statements by Lord Westbury LC need to be understood in the context of the facts of that case. With a qualification to be mentioned, the principle was established that all integers of an invention must be in the prior specification if novelty is to be defeated. In the case of a process or method, that means each integer of the process or method.
Case: HPM Industries Pty Ltd v Gerard Industries Ltd [1957] HCA 47 ; (1957) 98 CLR 424 
Outcome: cited
The position established in Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was of relatively short duration. Until then, the wider view of Williams J in HPM Industries Pty Ltd v Gerard Industries Ltd [1957] HCA 47 ; (1957) 98 CLR 424 had applied (see Graham Hart (1971) Pty Ltd v SW Hart &amp; Co Pty Ltd [1978] HCA 61 ; (1978) 141 CLR 305 per Aickin J at 329 330). The 1990 Act widens the prior art base, but does not change the nature of the issue. Leaving aside Aktiebolaget [2002] HCA 59 ; 212 CLR 411 , the principal survey of the topic by the High Court since Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 , (2007) 81 ALJR 1070 , particularly at [31] [66]. That case did not involve the problem that arises here. It is noteworthy that the Court said of the 1990 provisions (at [127]): "As stated above, by enlarging the prior art base through including relevant prior disclosures beyond those disclosures proven to be part of the common general knowledge, these provisions raise the threshold for inventiveness. However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention." (Emphasis added.) (cf Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 , (2002) 76 ALJR 816 at [33] as to combination patents.) The applicants do not seek to utilise the contents of the prior specification as an admission as to common general knowledge (cf Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 , 81 ALJR 1070 at [105] [109]). Rather, it is a statement of the nature of the inventive step that is claimed (cf in another context, Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; (1959) 102 CLR 232).
Case: Imperial Chemicals Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2004) 213 ALR 399 , (2004) 63 IPR 476 , (2005) AIPC 92-055 
Outcome: considered
Crennan J made a passing reference to patents of addition (to which I shall return) and selection patents in Imperial Chemicals Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2004) 213 ALR 399 , (2004) 63 IPR 476 , (2005) AIPC 92-055 at [66] . Her Honour also referred to a decision of Delegate Barker in University of Georgia Research Foundation Inc v Biochem Pharma Inc (2000) 51 IPR 222 , (2001) AIPC 91-676. It is quite clear from that decision that the Commissioner of Patents has applied the IG Farbenindustrie AG's Patents (1930) 47 RPC 289 principles for many years (see also Pfizer Inc v Commissioner of Patents [2005] FCA 137 ; (2005) 141 FCR 413 at [10] and [11]). Gummow J made a delphic reference to the topic in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 529, (1990) 16 IPR 545 , (1990) AIPC 90-670 where, after reference to the decision of Falconer J in Re Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 613 at 629 633, he said: "[s]election patents may require special attention, but that is a matter for another day." As I said earlier, the decision of Falconer J appeared to be and, in my opinion, was, a departure from the manner in which the law of anticipation had been understood in the United Kingdom and in Australia up to that time.