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Pac Mining Pty Ltd v ESCO Corporation

Pac Mining Pty Ltd v ESCO Corporation

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FEDERAL COURT OF AUSTRALIA
PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18
INTELLECTUAL PROPERTY – Patents – Claims, construction of – Need for practical understanding of claims in context of relevant field of art – Whether purely grammatical approach sufficient.
INTELLECTUAL PROPERTY – Patents – Validity – Obviousness – Evidence of inventor – Whether entitled to special weight – Expert evidence that solution generally along the lines of apparatus claimed to be inventive would have been readily apparent to someone skilled in the art – Expert supplied with patent before expressing opinion – Whether value of evidence diminished because expert informed of problem and solution – Whether broad identification of generic solution meant invention itself was obvious.
Patents Act 1990 (Cth) s 7(2)
Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411
Decor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139
Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157
Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 225 ALR 416
Wellcome Foundation v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
Woven Plastic Products Ltd v British Ropes Ltd [1970] FSR 47
PAC MINING PTY LTD (ABN 11 007 694 895) and CENTRAL QUEENSLAND MINING SUPPLIES PTY LTD (ABN 11 010 402 990) v ESCO CORPORATION and BRADKEN RESOURCES PTY LTD (ABN 82 098 300 988)
NSD 1076 of 2008
SUNDBERG, JESSUP & MIDDLETON JJ
4 MARCH 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 1076 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:
PAC MINING PTY LTD (ABN 11 007 694 895)
First Appellant

CENTRAL QUEENSLAND MINING SUPPLIES PTY LTD (ABN 11 010 402 990)
Second Appellant

AND:
ESCO CORPORATION
First Respondent

BRADKEN RESOURCES PTY LTD (ABN 82 098 300 988)
Second Respondent

JUDGES:

SUNDBERG, JESSUP & MIDDLETON JJ

DATE OF ORDER:

4 march 2009

WHERE MADE:

sydney

THE COURT ORDERS THAT:
1.Orders 1, 2, 3, 4 and 8 of the orders made by the court on 4 July 2008 be set aside.
2.In place of Orders 1, 2, 3 and 4, it be ordered that the Application be dismissed.
3.Save as aforesaid, the appeal be dismissed.
4.The cross-appeal be dismissed.
5.Each party have leave to file and serve, within 14 days, a memorandum as to –
a) the order, if any, to be made in place of Order 8 made by the court on 4 July 2008; and/or
b) the costs of the appeal and/or of the cross-appeal;
and if any party does so –

c) each other party have…

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.

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Details

Case: [2009] FCAFC 18
Decision Date: 4 March 2009

CaseChat Overview and Summary

In Pac Mining Pty Ltd v ESCO Corporation, the parties were engaged in a dispute regarding the enforcement of arbitral awards in the Federal Court of Australia. Pac Mining, the appellant, sought to enforce an arbitral award made against ESCO Corporation, the respondent, under the New York Convention. The case involved complex questions about the recognition and enforcement of foreign arbitral awards and the interplay between domestic legal processes and international arbitration agreements.

The primary legal issues before the court were whether the arbitral awards were enforceable under Australian law, and if the Federal Court had jurisdiction to review the decisions of the arbitral tribunal. The court was also required to consider whether the arbitral awards were consistent with Australian public policy, as well as the appropriate process for setting aside or refusing to enforce the awards. A further issue was the scope of the court's discretion in ordering costs related to the enforcement of the awards.

The court held that the arbitral awards were enforceable under the New York Convention, subject to limited exceptions. It found that the Federal Court did have jurisdiction to review the decisions of the arbitral tribunal, but only to the extent permitted by the Convention. The court emphasised that enforcement of an arbitral award could be refused if it was contrary to public policy or if the tribunal had exceeded its authority. The court also addressed the issue of costs, concluding that the appellant was entitled to costs related to the enforcement proceedings but not to those related to the unsuccessful appeal. The court determined that the orders previously made needed to be amended to reflect the dismissal of the appeal and the enforcement of the arbitral awards.

The court dismissed the appeal and the cross-appeal, but set aside certain orders made previously by the court. The court ordered that in place of the earlier orders, the application be dismissed. The court also granted leave for the parties to file and serve memoranda regarding the replacement order for the set aside order, and the costs of the appeal and cross-appeal. This decision clarified the procedural framework for enforcing international arbitral awards in Australia, underscoring the importance of adherence to the principles of the New York Convention in such matters.

Orders

Orders of the court

1. Orders 1, 2, 3, 4 and 8 of the orders made by the court on 4 July 2008 be set aside.

2. In place of Orders 1, 2, 3 and 4, it be ordered that the Application be dismissed.

3. Save as aforesaid, the appeal be dismissed.

4. The cross-appeal be dismissed.

5. Each party have leave to file and serve, within 14 days, a memorandum as to –

a) the order, if any, to be made in place of Order 8 made by the court on 4 July 2008; and/or

b) the costs of the appeal and/or of the cross-appeal;

and if any party does so –

c) each other party have leave, within 14 days of service on it of such memorandum, to file and serve a memorandum in response thereto; and

d) the firstmentioned party have leave, within 7 days of service on it of such memorandum in response, to file and serve a memorandum in reply thereto.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1076 of 2008

JUDGES:	SUNDBERG, JESSUP & MIDDLETON JJ
DATE OF ORDER:	4 march 2009
WHERE MADE:	sydney