Iluka Midwest Ltd v Technological Resources Pty Ltd - [2002] FCA 49

FEDERAL COURT OF AUSTRALIA
Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49
PATENTS – opposition proceedings – interim decision of a Delegate of the Commissioner of Patents upholding opposition but granting leave to amend the specification to cure deficiencies in the specification – final decision to grant the patent – after the final decision opponent appeals against interim and final decision – whether appeal against interim decision out of time – whether opponent is entitled to rely on grounds of appeal that relate to matters decided by the interim decision – whether leave to appeal out of time should be granted
Patents Act 1990 (Cth) ss 59, 60 and 61
Federal Court Rules O 58 r 4
R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340 - considered
F Hoffman La-Roche AG v New England Biolabs Inc (2000) 99 FCR 56 – cited
Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 - cited
Broken Hill Pty Co Ltd v American Can Co [1980] VR 143 – applied
Acushnet Co v Spalding Australia Pty Ltd (1990) 18 IPR 364 - cited
L. Oertling Ltd. And Anr.’s Application for a Patent [1959] R.P.C.148 - considered
Rose Bros. (Gainsborough) Ltd.’s Application (Amendment) [1960] R.P.C. 247 - considered
Ratnam v Cumarasamy [1965] 1 WLR 8 - cited
Gallo v Dawson (1990) 93 ALR 479 - cited
Jackamarra v Krakouer (1998) 195 CLR 516 - cited
Kabushiki Kaisha Universal v Aristocrat Leisure Industries Pty Ltd [1998] AIPC 91-396 - cited
ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED) v TECHNOLOGICAL RESOURCES PTY LIMITED
V 1056 OF 2001
JUDGE:         MERKEL J
DATE:           6 FEBRUARY 2002
PLACE:         MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V1056 OF 2001

BETWEEN:

ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED)
APPLICANT

AND:

TECHNOLOGICAL RESOURCES PTY LIMITED
RESPONDENT

JUDGE:

MERKEL J

DATE OF ORDER:

6 FEBRUARY 2002

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT within fourteen days the parties bring in agreed minutes of orders that give effect to my reasons for judgment and, in so far as any matters cannot be agreed upon, written submissions be filed and exchanged about those matters within a further seven days.
Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V1056 OF 2001

BETWEEN:

ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED)
APPLICANT

AND:

TECHNOLOGICAL RESOURCES PTY LIMITED
RESPONDENT

JUDGE:

MERKEL J

DATE:

6 FEBRUARY 2002

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

The present matter concerns the grounds of appeal that are available as of right to a party to a pre-grant opposition who appeals under s 60 of the Patents Act 1990 (“the Act”) to the Federal Court against a decision of the Commissioner of Patents made in the course of the opposition.
The applicant (“Iluka”) and the respondent (“Technological Resources”) are mineral…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Iluka Midwest Ltd v Technological Resources Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2002] FCA 49
Decision Date: 6 FEBRUARY 2002

CaseChat Overview and Summary

The case before Merkel J in the Federal Court of Australia concerns a patent application for a process of upgrading titaniferous material by removing impurities. The applicant, Iluka Midwest Ltd, opposed the grant of a patent on the basis of lack of novelty and non-compliance with the specification requirements. After an interim decision upholding the opposition but allowing leave to amend the specification, the applicant appealed against both the interim and final decisions granting the patent. The court had to determine whether Iluka could appeal against the interim decision out of time and rely on grounds that were only applicable to the interim decision. The court considered the statutory scheme and relevant authorities, and held that the interim decision determined the grounds of novelty and fair basis generally, and not only those particularised, argued or pressed at the hearing. Therefore, Iluka could not as of right rely on grounds that must be taken to have been decided by the interim decision. The court refused Iluka's application for leave to appeal out of time against the interim decision, as Iluka had not shown special circumstances to justify the extension of time. The court also held that it would be an abuse of process and vexatious for Iluka to rely on grounds of appeal that only related to matters decided in the interim decision if no appeal had been brought in respect of the interim decision. The court ordered that Iluka pay Technological Resources' taxed costs of and incidental to the motions.

Orders