British-American Tobacco Company Ltd v Phillip Morris Ltd
[1996] FCA 910
•21 OCTOBER 1996
CATCHWORDS
DISCOVERY AND INTERROGATORIES - discovery and inspection of documents - whether appropriate in Australian proceedings to limit discovery by reference to the term "unprivileged" as it appears in a letter of request issued by a foreign court - whether the ordinary rule that discovery require the listing of all relevant documents, both privileged and unprivileged, should be applied - whether category of documents requested for discovery relevant to obviousness under s 59(1) Patents Act 1952 - whether category of documents requested for discovery relevant to common general knowledge - whether opportunity to cross examine a party at a previous date relevant to categories of documents discoverable - consequences of failure to comply with directions as a result of a misunderstanding.
PATENTS - patent applications - appeal and cross appeal from decision of Commissioner of Patents in opposition proceedings - discovery of documents - whether category of documents requested for discovery relevant to obviousness under s 59(1) Patents Act 1952 - whether category of documents requested for discovery relevant to common general knowledge
Patents Act 1952 s 59(1), s 40
Federal Court Rules O 15 r 15, O 15 r 2
Evidence Act 1995 (Cth) s 199
Trade Practices Commission v CC (NSW) Pty Ltd (1995) 131 ALR 581 at 590
Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 95 ALR 533
Commonwealth of Australia v Northern Land Council (1991) 30 FCR 1 at 24, 25
Grant v Downs (1976) 135 CLR 674
Trade Practices Commission v Port Adelaide Wool Co Pty Ltd (1995) 60 FCR 366
Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
BRITISH‑AMERICAN TOBACCO COMPANY LIMITED v PHILIP MORRIS LIMITED
No. NG 822 of 1994
CORAM:Lehane J
PLACE:Sydney
DATE:21 October 1996
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION ) No. NG 822 of 1994
ON APPEAL FROM A DELEGATE OF THE COMMISSIONER OF PATENTS
BETWEEN:BRITISH‑AMERICAN TOBACCO COMPANY LIMITED
Applicant
AND:PHILIP MORRIS LIMITED
Respondent
PHILIP MORRIS LIMITED
Cross‑Appellant
BRITISH‑AMERICAN TOBACCO COMPANY LIMITED
Cross-Respondent
CORAM:Lehane J
PLACE:Sydney
DATE:21 October 1996
MINUTE OF ORDERS
THE COURT ORDERS THAT:
The applicant make discovery of all documents which are or have been in its possession, custody or control in accordance with the list of Categories of Documents for Discovery forwarded to it by the respondent on 3 May 1995, except that the applicant need not discover any document falling within paragraph 1(a) unless it also falls within one of the categories in paragraph 1(b).
The applicant pay the respondent's costs of the motion.
Orders 1 and 2 are to take effect on and from 18 November 1996 unless otherwise ordered.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION ) No. NG 822 of 1994
ON APPEAL FROM A DELEGATE OF THE COMMISSIONER OF PATENTS
BETWEEN:BRITISH‑AMERICAN TOBACCO COMPANY LIMITED
Applicant
AND:PHILIP MORRIS LIMITED
Respondent
PHILIP MORRIS LIMITED
Cross‑Appellant
BRITISH‑AMERICAN TOBACCO COMPANY LIMITED
Cross-Respondent
CORAM:Lehane J
PLACE:Sydney
DATE:21 October 1996
REASONS FOR JUDGMENT
LEHANE J: This is a motion by which the respondent (which is also the cross‑applicant) seeks orders requiring the applicant (and cross‑respondent) to make discovery of documents falling within specified categories. The proceedings in which it arises are an appeal and a cross‑appeal from a decision of a delegate of the Commissioner of Patents in opposition proceedings. The respondent opposed, apparently on each of the grounds listed in subs 59(1) of the Patents Act 1952 (the 1952 Act), the grant to the applicant of a patent for which it had applied on 21 May 1986. Because the application had not been finally dealt with before the commencing day of the Patents Act 1990 (the
1990 Act), Part V of the 1952 Act continues to apply and the available grounds of opposition are those specified in s 59 of the 1952 Act: see subs 234(2)(3) and (5) of the 1990 Act.
Factual background
The application relates to "ultra‑slim" cigarettes. It involves a combination claim, the combination being of three integers: circumference, packing density and what is called static burn rate. The conventional wisdom, it is said, was that an ultra‑slim cigarette could not be made which, if acceptable in other respects, would "smoulder" in a reliable manner. However, a cigarette made in accordance with the claim would do so and would provide other benefits including (by comparison with conventional cigarettes) increased efficiency in the use of tobacco, a reduction in the amount of filter material required, lower static burn rate, reduced sidestream smoke and "improved subjective firmness".
It is unnecessary to descend into the detail of the comprehensive grounds of objection; the respondent relied before the delegate on want of novelty, obviousness and failure to apply with the requirements of s 40 of the 1952 Act. The delegate dismissed the objections based on want of novelty and failure to comply with s 40 but upheld the objection based on obviousness. The respondent supports the delegate's decision on obviousness and cross‑appeals against the delegate's rejection of other grounds of opposition, relying on the cross‑appeal on each of the grounds provided for in paras (c), (d), (e), (f), (h) and (i) of subs 59(1) of the 1952 Act.
Further Background - the US proceedings
Proceedings are on foot in the United States between corporations related to the parties: Brown & Williamson Tobacco Corporation, which I am told is a subsidiary of the applicant's holding company, has sued Philip Morris Inc (the respondent's parent company) for infringement of a US patent in respect of the claimed invention to which the Australian patent application relates: both the Australian application and the US patent claim a convention priority based on a British patent application lodged by the applicant on 24 May 1985. Philip Morris Inc, by way of defence to the US infringement proceedings, says that the US patent is invalid. I am told that the issues in the US proceedings are in substance similar to those in these proceedings. The United States District Court in which the US proceedings have been commenced issued to the Master of the Queen's Bench Division of the High Court of Justice in England a letter of request under the Hague Convention of 16 March 1970 on the Taking of Evidence in Civil or Commercial Matters; the letter of request sought an order of the High Court for the production by the applicant of documents falling within a series of specified categories and the taking of oral evidence of "the most knowledgeable employees of BATCO" (particularly the alleged inventor, a Mr Luke). An order was made by a Master of the Queen's Bench Division in accordance with the letter of request; although there is apparently a question as to whether the order was properly made having regard to the terms of the relevant English legislation, documents were produced and oral evidence was taken as contemplated by the letter of request and the order. It will be necessary later in
these reasons to consider in more detail the categories of documents specified in the letter of request and the order.
Discovery in these proceedings
Consent orders made Gummow J on 16 February 1995 included directions that by 30 March 1995 the parties exchange lists of categories of documents which they wished to be discovered, that by 11 May 1995 they file and serve verified lists of documents in the categories sought (or ordered by the Court) and that by 18 May 1995 they permit inspection of documents. Lists of categories were exchanged. After some negotiation, agreement was reached as to the categories of documents of which the respondent was to give discovery. No corresponding agreement was reached as to the discovery to be given by the applicant. In that state of affairs, there was a further directions hearing on 16 June 1995, before Burchett J.
For reasons which will become apparent, it is necessary to refer in some detail to what took place before his Honour on that day. The solicitor for the applicant commenced the substantial discussion of the outstanding discovery issues as follows:
This case is part of an international dispute between these two companies. In particular the equivalent US patent which is in the name of a subsidiary of the applicant in this case is the subject of infringement proceedings and a challenge to validity which has been going on for some time now. In that case Philip Morris sought to obtain documents from British American Tobacco, the parent company of the plaintiff in the US proceedings by way of a request under the Hague Convention. British American Tobacco gave
substantial document production of its documents in response to Philip Morris' request.
What we had proposed to Philip Morris in these proceedings ... was that that document production be the discovery to be given by British American Tobacco in this case, and that is where the impasse has occurred. The respondent has said that it does not accept that that discovery would be appropriate. It is the view of British American Tobacco that the additional categories which have been put forward by Philip Morris would necessitate revisiting a huge discovery, which was in effect done for the purpose of the American proceedings, to no particular avail. We have proposed to them that we give them the discovery they got in effect in the United States ...
... What we would propose to do is in effect give the US discovery to Philip Morris and if Philip Morris is dissatisfied with that it is our belief that what Philip Morris should do is put on an application to the Court for particular discovery ... If it can show ... that there is a basis for believing that there are other documents which would be discoverable, then an order for specific discovery should be made.
His Honour then asked counsel for the respondent what objection he had to that proposal. Counsel replied that the American proceedings involved a claim for infringement as well as a claim for invalidity whereas what was involved in these proceedings was "simply an issue of validity". His Honour responded to the effect that that seemed an unlikely objection as it meant only that the American discovery would probably be wider than that required for the purposes of these proceedings. Counsel then referred to particular matters arising under the Australian legislation which would not be relevant to the US proceedings, for instance questions relating to common general knowledge in Australia. His Honour retorted:
But that is the very sort of point [the solicitor for the applicant] is raising. If you get discovery in accordance with the American [proceedings] and you find when you get the documents that they do not cover some aspect which is explicable by reason of differences between the American issues and our
issues, well then you make an application for particular discovery to cover the point. But the fact is that discovery procedures in America are notoriously more detailed and thorough than ours. And the proposition is with such thorough interlocutory and, particularly discovery procedures, you end up knowing all about the other side's case as well as your own ...
After some further discussion his Honour made the following suggestion to counsel for the respondent:
Why do you not provide him with those categories which are identical with the American and which you propose, plus the categories that are additional to the American that you say are required. It may be that there will be no further argument. If there is an argument there will be something that I can intelligently consider.
Counsel responded that that was precisely what he had been about to propose and, after further discussion which adds little for present purposes, his Honour made directions accordingly.
Subsequent correspondence between the parties failed, however, to produce agreement. The principal difficulty which emerged was that they were at cross purposes as to what had been discussed, agreed and directed on 16 June 1995. Correspondence from the respondent's solicitors indicated that they regarded the starting point as the discovery made by the plaintiff (i.e. the applicant's sister corporation) in the US proceedings. The applicant's solicitors, on the other hand, made it clear that their understanding of what had been proposed, agreed and directed was that the respondent would nominate those categories of documents required to be produced by the applicant under the English order
made in accordance with the letter of request from the US court and then would propose additional categories required to take account of the differences between the issues in the two proceedings.
The terms of his Honour's directions, whether as recorded in the transcript or as noted in his associate's report of listing, do not resolve the ambiguity. The report of listing records the direction as being that "the respondent is to identify those categories of documents in the US proceeding proposed for these proceedings ... ". My view is that those concerned in the directions hearing misunderstood each other as to what was proposed and agreed.
The passage I have quoted from his submissions leave no room for doubt that the solicitor for the applicant intended to refer to the documents produced in response to the letter of request. However, his later reference to the "huge discovery ... done for the purpose of the American proceedings" and to "the discovery they got in effect in the United States", while clearly enough intended by him as a reference to the same particular discovery - or, more accurately, production - given in England for the purpose of the US proceedings, plainly suggested to his Honour something a great deal wider: in effect, a general discovery made by the plaintiff in the US proceedings. His Honour obviously had in mind a discovery which, to the extent that the issues in the US proceedings coincided with those in these proceedings, would be likely to reveal at least as much as would be revealed by general discovery in these proceedings. It is evident, I think, that the reference to the letter of request and to the fact that the party producing in response to it
was the applicant in these proceedings, not the plaintiff in the US proceedings, did not suggest to his Honour that something considerably more limited was proposed. Perhaps slightly more surprisingly - because presumably the respondent was aware of what had happened and was happening in the US and England - counsel for the respondent appears to have understood what was proposed in the same way as his Honour did and that same understanding is, as I have said, reflected in later correspondence from the respondent's solicitors.
After a further exchange of correspondence which demonstrated merely that the parties were at odds over their respective obligations, the respondent, by leave of Burchett J, on 17 July 1995 filed the present notice of motion and supporting affidavit. Directions were made by his Honour for the filing of additional affidavit material and written outline submissions; documents were filed substantially in accordance with those directions. There is one other matter to mention before turning to the substance of the motion: on Friday, 23 August 1996 the applicant filed and served an affidavit of a partner in the firm of solicitors acting for the applicant to which were exhibited five folders of documents said to conform to the relevant categories specified in the letter of request (and to be copies of the documents produced under the order made in response to the letter of request). Those documents had been in the possession of the applicant's solicitors for approximately nine months.
Categories sought and those offered
The categories of documents of which the respondent seeks discovery are set out as follows in Schedule A to the notice of motion:
1.(a) All documents relating to the alleged invention, and any other cigarettes produced by the Applicant/Cross‑Respondent with a circumference of less than 21mm, whether the document came into existence before or after the priority date.
(b)Without limiting the scope of 1(a), the documents sought include:
(i)documentation of the research, development and experimental work regarding the alleged invention or cigarettes of a circumference of less than 21mm;
(ii)market research reports and market information referred to, whether by the alleged inventor or any other employee of the Applicant/Cross-Respondent, in connection with the alleged invention or cigarettes of a circumference of less than 21mm; and
(iii)all technical documents and reports referred to, whether by the alleged inventor or any other employee of the Applicant/Cross-Respondent, in connection with the alleged invention or cigarettes of circumference of less than 21mm.
2.All documents relating to the manufacture, distribution and sale, as well as any measurements or tests carried out upon any example of the same, before the priority date, of:
(i)cigarettes with a circumference of less than 21mm; and
(ii)"Ten Cent Cigarettes", produced by East African Tobacco Company Limited, a subsidiary of the Applicant/Cross-Respondent, between 1955 and 1974.
3.(a) All documents relating to cigarette manufacturing techniques, in Australia, as at the priority date.
(b)All documents relating to the models and capacity of Molins, Hauni or other make of cigarette manufacturing machinery available to the Applicant/Cross‑Respondent (or its subsidiaries/affiliated companies), in Australia, as at the priority date; including, but not limited to, the following types of documents:
(i)spare parts lists;
(ii)adjustment part lists;
(iii)instruction manuals; and
(iv)correspondence between BAT and cigarette machine manufacturers in relation to production of cigarettes of circumference of less than 19mm.
The documents offered (and copies of which have recently been produced) are those falling within categories described in the letter of request as follows:
1)Unprivileged inventor's documents created before May 30, 1989 relating to cigarettes of a circumference of less than 21 mm, including but not limited to,
(a)invention disclosure forms,
(b)any documents relating to the conception or reduction to practice of the invention of the Luke patent, and
(c)the inventor's experimental work relating to such cigarettes;
2)Unprivileged documents created before July 22, 1985 relating to BATCO's development of cigarettes with a circumference of less than 21 mm;
3)Unprivileged documents created before May 30, 1989 relating to the preparation, filing, prosecution, oppositions, nullity proceedings or the like of patent applications worldwide that correspond to U.K. Application Serial No. 8513233, May 24, 1985;
4)Unprivileged documents relating to the manufacture and sale prior to May 24, 1985 of cigarettes with a circumference of less than 21 mm, including all such cigarettes manufactured in Africa, for example, the Ten Cent Brand;
5)Unprivileged documents created before May 30, 1989 by BATCO's Scientific Control Laboratories, in Liverpool, relating to physical measurements made on cigarettes with a circumference of less than 21 mm or standards for such measurements; and ...
The letter of request describes a sixth category of documents. It may be disregarded, being neither offered nor sought.
There is substantial overlap, but by no means complete correspondence, between the two lists. Certain of the categories in the letter of request appear to have no direct counterparts in the respondent's list. Category 3 in the respondent's list has, in turn, no counterpart in the letter of request; category 2 in the respondent's list is, if one disregards for the moment the word "unprivileged", substantially the same as a combination of categories (4) and (5) of the letter of request list except that the respondent's "any measurements or tests" may well be wider than the letter of request's "physical measurements" while the letter of request's "standards for such measurements" are no doubt included in the respondent's general words "documents relating to ... tests". There is considerable overlap between the respondent's category 1 and the letter request's categories (1) and (2) but the respondent's category is the wider.
Which are the appropriate categories?
The respondent submitted in support of its motion that documents falling within each of its categories were relevant to issues in these proceedings, particularly issues relating to novelty and obviousness. It contended that in applying O 15 r 15 of the Federal Court Rules (assuming that rule to be relevant) I should adopt the test accepted by Lindgren J in Trade Practices Commission v CC (NSW) Pty Ltd (1995) 131 ALR 581 at 590, that is, that an order for discovery should be made (only) if the court is satisfied that the order is necessary, in the sense of necessary in the interests of a fair trial or of the fair disposition of the case, that test in turn encompassing a train of inquiry described by his Honour as follows:
It is well established that it is not necessary in order for a document to "relate" to [a matter in question in proceedings] that it be admissible in evidence in relation to that matter, and that it suffices the document may lead to a train of inquiry which may advance the case of one party or damage that of his adversary.
In any event, the respondent says, it is not a question of applying O 15 r 15 because an order for discovery has already been made by Gummow J: it is now simply a matter of determining what are the appropriate categories for discovery. Prima facie, the argument continues, the respondent is entitled to proper verified discovery: see O 15 r 2. Further, the public interest requires the disclosure of all discoverable material relevant to validity before a public monopoly is granted (the respondent referred to Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 95 ALR 533). The respondent, so it
said, had, by specifying categories which to an extent coincided with and to an extent added to the letter of request categories, complied as well as it reasonably could with the directions made by Burchett J. By contrast, the applicant was attempting to avoid its obligation of proper verified discovery, offering simply to produce documents said to fall within the categories specified in the letter of request.
The applicant contended that O 15 r 15 applies and that the test of necessity
... is a reflection of the policy of judicial case management that underlies the Federal Court Rules generally. It is a broad criterion which requires consideration of the interests of justice in the particular case as well as its economic and efficient disposition.
Commonwealth of Australia v Northern Land Council (1991) 30 FCR 1 at 24, 25. The applicant relied on evidence of a partner in its firm of solicitors as to the extensive and costly exercise, involving examination of 25,000 files, some of them very old, which would be needed in order to comply with the order made in response to the letter of request; it submitted that the cost of re‑examining those files would be disproportionate to any possible benefit to be obtained from the discovery of any additional documents. It further submitted that the respondent's parent company had had ample opportunity during the cross‑examination of Mr Luke in accordance with the letter of request, to explore the possibility that additional relevant documents might exist. Counsel for the applicant also placed considerable stress on a submission that the respondent had made no real attempt to comply with Burchett J's directions: it was clear, so it was said, that the directions took as their starting point the letter of request categories and required the respondent to
nominate, from among them, those categories in which it wished to have discovery and, if it considered it necessary to do so, to nominate additional categories. Instead of doing so, the respondent, without regard to the letter of request, had simply nominated its own categories. The respondent should now examine the documents produced and, having done so, specify (as contemplated by the directions) any additional categories it then thought necessary.
There was not a great deal of concentration, in written or oral argument, on the detail of the categories in either set. The applicant did, however, point to the considerable breadth, particularly, of the respondent's category 1(a); there is also a suggestion in written submissions that category 2 disregards the requirement (under the 1952 Act) that novelty is to be determined by what was published or used in Australia and obviousness by reference to common general knowledge in Australia.
There was, on the other hand, considerable discussion of the limitation "unprivileged" as it appears in each of the letter of request categories.
The applicant's proposal was, as its counsel put it to me, not simply that it will produce, on an unverified basis, copies of the documents produced in England but that it would provide verified discovery in relation to those documents: that is, presumably, it would file and serve a list of documents (presumably the documents produced) which it would verify as comprising all documents falling within the relevant letter of request categories. However, the documents thus listed would be "unprivileged" documents: that is, as it was
put to me, it would not include particularly any documents to which legal professional privilege would attach applying the "dominant purpose" test and would thus not be admissible under s 199 of the Evidence Act 1995 (Cth). Counsel for the respondents argued, on the other hand, that discovery in any event required the listing of documents both unprivileged and privileged and that, for discovery purposes, only those documents which satisfied the "sole purpose" test as laid down by the High Court in Grant v Downs (1976) 135 CLR 674 were privileged from production. The respondent also submitted that "unprivileged" in the letter of request (and the order in response to it) may presumably cover a number of privileges under both US and English law, which might not necessarily have counterparts in Australia, in addition to legal professional privilege in the "dominant purpose" version.
I think it is convenient to deal with that issue immediately. It seems to me that it is inappropriate in Australian proceedings to limit discovery by reference to the term "unprivileged" as it appears in a letter of request issued by a United States court and in a consequent order of an English court, particularly in circumstances where there is no material before me as to the meaning of the word in that context. In any event, discovery ordinarily involves listing relevant documents, both privileged and unprivileged, and I see no obvious reason why there should be an exception to that rule in this case. That being so, as what is now sought is an order for discovery, not an order for production, there is strictly no need for me to go further. A question may arise if and when the respondent seeks production of a document for which the applicant claims privilege. The question will then be decided having regard to Australian legal principles and the requirements of
O 15 r 15: in that respect there is in my view much to be said for the approach taken by Branson J in Trade Practices Commission v Port Adelaide Wool Co Pty Ltd (1995) 60 FCR 366; but that is a question for another day.
The respondent's category 3 may, I think, be easily dealt with. It is clearly a category additional to those in the letter of request. The respondent says, rightly I think, that documents within the category would relate to common general knowledge in Australia at the relevant time. It may well be right, as the applicant said, that it is not appropriate to prove common general knowledge by mere production of documents, and I do not think it is necessary to form a view on the gloss or exception which the respondent seeks to place on that general proposition: however that may be, it seems to me clear that documents falling within the category would "relate" to the issue in the sense described by Lindgren J in the passage of his judgment in Trade Practices Commission v CC (NSW) Pty Ltd to which I have already referred.
It is convenient to turn next to category 1 in the respondent's list and the corresponding categories, (1) and (2), in the letter of request. It is clear that, in general terms, the documents in those categories are relevant to the issue of obviousness: the Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, particularly at 286-288. It follows from what I have already said that I am not inclined to limit discovery by reference to the word "unprivileged" as it appears in the letter of request. Nor is it clear to me - and it was not clarified in argument - why the other restrictions in the letter of credit categories ("inventor's documents", the particularity of (1)(a), (b) and
(c) and the dates in (1) and (2)) are necessary for the purpose of separating the relevant from the irrelevant. Thus, apart from any question about the width of the respondent's (1)(a), I think the respondent is prima facie entitled to discovery of documents falling within its category (1). I do not think that the discretionary matters which the applicant stressed in its argument should lead to a contrary result. I cannot see how the respondent will be assisted, by inspecting the documents which have been produced, in ascertaining whether there may or may not be other documents, falling within the category of which discovery would be appropriate. That is, of course, a matter peculiarly within the knowledge of the applicant. I do not think that the fact that the respondent's parent company had (and took advantage of) the opportunity to cross‑examine Mr Luke at length in relation to the US proceedings, adds much to the balance. As for the need for, and cost of, revisiting a large number of files, I am not sure that one should be overly impressed by such considerations in these days of computers and data bases: but in any event it seems to me an odd conclusion that the respondent is denied relevant and usual discovery in Australian proceedings because, different or more limited discovery was thought appropriate in an aspect of related US proceedings. Because of the misunderstanding which I have described at some length, I am disinclined to give any particular weight to the alleged failure to comply with Burchett J's directions. I do not think his Honour had in mind a list of categories such as appears in the letter of request. In any event, I see no good reason why a two stage process, of the kind on which the applicant seeks to insist, is any longer appropriate.
Category 1(a) in the respondent's list does, however, strike me as inappropriately wide. I think that I should make an order for discovery of documents falling within category 1, but limited to those documents relating to the invention or other cigarettes which fall within the classes specified in paragraph 1(b).
That brings me to category 2. In a sense, this should be the easiest of the categories because, disregarding the word "unprivileged", it almost precisely corresponds with categories in the letter of request. Bearing in mind the considerations which I have mentioned in relation to category 1, I would therefore be inclined to order discovery of documents falling within the respondent's category 2. There is, however, one complication which received passing and somewhat inconclusive mention in argument. It is that there is also before the Court a motion of the applicant seeking further and better particulars as to paragraph 1(a)(xvii) of the respondent's Grounds and Particulars of Invalidity or, in the alternative, that the paragraph be struck out. The paragraph refers specifically to the applicant's "Ten Cent Cigarettes". But even if that motion were successful, it is not obvious to me that anything would follow for the purposes of the present motion: as I understand the material, the "Ten Cent Cigarettes" are simply a subset of the cigarettes referred to in the respondent's subcategory 2(i).
Conclusion
For those reasons I propose to make orders in accordance with paragraph 1 of the Respondent's notice of motion, but limiting category 1 in the way I have mentioned. A minute of such an order is attached to these reasons, but I am prepared to hear argument as to whether for the purpose of this motion anything turns, in relation to the "Ten Cent Cigarettes", on the fact that the applicant's motion remains to be disposed of and generally as to the precise form of the order. As the respondent has been substantially successful on its motion, I think it should have its costs and that also is reflected in the minute; I am willing however, to hear counsel on that question as well. So that those matters may be argued, I propose to suspend until 18 November 1996 the operation of the orders on the respondent's motion.
I certify that this and the preceding 18 pages are a true copy of the Reasons for Judgment of the Honourable Justice Lehane.
Associate:
Dated: 21 October 1996
Heard: 26 August 1996
Place: Sydney
Decision: 21 October 1996
Appearances: Mr J M Ireland QC of counsel instructed by Allen Allen & Hemsley appeared for the applicant.
Messrs J J Garnsey QC and T J Hancock of counsel instructed by Arthur Robinson & Hedderwicks appeared for the respondent.
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