Neurizon Pty Ltd (ACN 077 012 376) v Lth Consulting and Marketing Services Pty Ltd (ACN 061 363 139)

[2003] FCA 338

FEDERAL COURT OF AUSTRALIA

Neurizon Pty Ltd (ACN 077 012 376) v LTH Consulting and Marketing Services Pty Ltd (ACN 061 363 139) [2003] FCA 338

NEURIZON PTY LTD (ACN 077 012 376) v LTH CONSULTING AND MARKETING SERVICES PTY LTD (ACN 061 363 139) AND GOLDEN CASKET LOTTERY CORPORATION LIMITED (ACN 078 785 449) AND GOLDEN CASKET LOTTERY CORPORATION LIMITED (ACN 078 785 449) AND TAB QUEENSLAND LIMITED(ACN 085 691 738) AND NEURIZON PTY LTD (ACN 077 012 376)

Q 171 OF 2001

DOWSETT J
24 FEBRUARY 2003
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 171 OF 2001

BETWEEN:

NEURIZON PTY LTD (ACN 077 012 376)
APPLICANT

AND:

LTH CONSULTING AND MARKETING SERVICES PTY LTD (ACN 061 363 139)
FIRST RESPONDENT

GOLDEN CASKET LOTTERY CORPORATION LIMITED (ACN 078 785 449)
SECOND RESPONDENT

GOLDEN CASKET LOTTERY CORPORATION LIMITED (ACN 078 785 449)
CROSS-APPLICANT

TAB QUEENSLAND LIMITED (ACN 085 691 738)
FIRST CROSS-RESPONDENT

NEURIZON PTY LTD (ACN 077 012 376)
SECOND CROSS-RESPONDENT

JUDGE:	DOWSETT J
DATE:	24 FEBRUARY 2003
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. The respondent has asked me to make further findings as to the adequacy of the specification for the purposes of par 40(2)(a) of the Patents Act 1990 (Cth) (the “Act”). It is common ground that the pleadings did not raise non-compliance with that paragraph as an aspect of the matters for ventilation between the parties. The respondent submits that, nonetheless, it was a live issue at the trial, and in its outline of argument, which I will make exhibit 1A in these proceedings, it alleges that the matter was ventilated in the written submissions at paragraphs 4.1, 4.2.1, 4.2.4, and 4.5 of the applicant’s submissions, and at paragraphs 160 to 163, 165 to 167, 174 and 217 to 224 of the respondent’s submissions.

2. As to the respondent’s submissions, pars 160 to 167 contain various general propositions of law which are not specific to this case.  Paragraph 174 is to similar effect.  Paragraph 217, as far as I can see, relates to fair-basing, as does pars 218, 219, 220, 221, 222, and 223.  Paragraph 224 is in the alternative and is as follows:

   If the said Claims (and those dependent on them) are construed so as not to have those aforesaid integers or limitations, (which is denied) than in those respects the Specification does not fully describe the invention.

3. It is said that this paragraph raises reliance upon par 40(2)(a) of the Act. If it does, then it is difficult to know the respects in which the specification is said to be inadequate. When I raised that matter with counsel today, he indicated that, in effect, the particulars of the allegation could now be found in pars 13 to 22 of the respondent’s submissions filed for the hearing today. That is, of course, many months after both the trial and the publication of my reasons.

4. Nonetheless, the respondent persists in the assertion that the matter was alive at the trial, but does not suggest that any of the so-called particulars of par 224 were expressly identified at the trial or directly ventilated in the context of a complaint of non-compliance with the provisions of par 40(2)(a).

5. The references given to the submissions made on behalf of the applicant are similarly unenlightening.  Paragraphs 4.1, 4.2, and 4.3, deal with the content of s 40.  It is true that express reference is made to subss 40(2) and 40(3), and that the text of par 40(2)(a) appears at par 4.2.1.  Thereafter, there is some discussion of the case law, and at pars 4.4 to 4.8, specific findings are addressed.  Paragraph 4.4.1 concerns a specific legal submission made by the respondent that a claimed invention of this kind must set out steps or elements comprising the method.  Those findings appear to relate to claims pursuant to par 40(2)(b) and subs 40(3), which are specific sections canvassed in the respondent’s pleading.

6. Paragraph 4.5 requests a finding that:

   … the Specification does not only describe the invention by calculating the probability of a gaming machine winning a prize prior to the decision to award a prize.

7. I will return to this paragraph in a moment.  Paragraph 4.6 clearly relates to par 40(2)(b).  Paragraph 4.7 relates to subs 40(3), and par 4.8 also relates to subs 40(3).  Thus it appears that the only paragraph in the applicant’s outline, which could be said to suggest that par 40(2)(a) applies, for present purposes, is par 4.5, which requests the negative finding to which I have referred.  However, when one goes back to the respondent’s pleading, it appears that such a finding has been prompted by par 35 of the pleading, and that paragraph relates expressly to pleaded non-compliance with par 40(2)(b) and subs 40(3).  In those circumstances, I am unable to infer from the outlines that the question of compliance or otherwise with par 40(2)(a) was a live issue at the hearing.

8. It seems to me that that shortcoming is not something that can be easily remedied, having regard to the nature of the so-called particulars of par 224 which are now to be found in the outline presented by the respondent in support of today’s proceedings.  In any event, given that reliance upon par 40(2)(a) was not pleaded by the respondent in the defence, and that I am not satisfied that it was otherwise a matter clearly in issue between the parties at the trial, it follows that I do not consider that it should be raised now, and, in those circumstances, the question of making further findings of fact does not arise.

9. I make it clear, that, at this stage, I have not considered the appropriateness or otherwise of allowing the respondent to amend its pleadings at this stage.  That should be addressed as a separate question to which I now turn.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.

Associate:

Dated:            16 April 2003

Counsel for the Applicant and Second Cross Respondent:	Ms K E Downes
Solicitor for the Applicant and Second Cross Respondent:	Phillips Fox
Counsel for the First and Second Respondents and Cross-Applicant:	Mr R G Bain QC Mr S J Lee
Solicitor for the First and Second Respondents and Cross-Applicant:	Clarke and Kann
The First Cross-Respondent did not Appear.
Dates of Hearing:	24 February 2003
Date of Judgment:	24 February 2003