FEDERAL COURT OF AUSTRALIA
SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425
Keep reading for free
Create a free CaseChat account to read SNF (Australia) Pty Ltd v BASF Australia 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
One click creates your free account or signs you in.
By continuing you agree to the Terms and Privacy Policy.
Details
- Case
- [2019] FCA 425
- Decision Date
CaseChat Overview and Summary
SNF (Australia) Pty Ltd appealed against decisions of the delegate of the Commissioner of Patents, concerning the refusal of patent applications related to mining processes. BASF Australia Ltd opposed the grant of the patents, asserting lack of novelty, inventive step, and secret use. The Federal Court was required to determine the validity of the patent applications, focusing on the novelty, inventive step, and secret use of the claimed processes. The Court found that SNF had not established any of the grounds for appeal, including lack of novelty, inventive step, and secret use. The Court concluded that the processes claimed in the patent applications were novel and involved an inventive step over the prior art. The alleged secret use was not substantiated. The Court dismissed the appeals and upheld the delegate's decisions. The orders included dismissing the appeals, allowing the patent applications to proceed to grant, and directing the appellant to pay the respondent's costs. The Court also stayed the operation of certain orders for 21 days and dismissed the respondent's cross-appeal with no order as to costs.
Orders
Orders of the court
1. The appellant’s appeal be dismissed.
2. Australian patent application no. AU 2013204568 (as amended) proceed to grant.
3. The appellant pay the respondent’s costs of and incidental to the appeal.
4. There be a stay on the operation of orders 2 and 3 for 21 days subject to further order.
5. The respondent’s cross-appeal be dismissed with no order as to costs.
6. Any previous orders made under ss 37AF and 37AG of the Federal Court of Australia Act 1976 (Cth) be varied, if necessary, so as to permit publication of the Court’s reasons.
7. Liberty to apply.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
In these reasons, in terms of the respondent to the appeals I will generally refer to BASF, save for when I need to refer to Ciba directly in discussing contemporaneous conduct and dealings before the priority date.TECHNICAL BACKGROUND For the most part, the following matters that I have described in this section were common general knowledge as at the priority date and do not appear to be in dispute. It is useful to set these out in order to appreciate the later discussion of the relevant technical issues. In part, I have drawn upon the helpful discussion of some of these matters given by Dr Ross de Kretser, an expert witness called by SNF. Before getting into the detail, let me set out a mini glossary. Terms or expressions used in the relevant field include the following:(a)“beach angle” refers to the slope or angle of a deposit (relative to underlying material) which forms a stack or heaped geometry;(b)“beneficiation” is a process of concentrating the value(s) in an ore by separation from waste material;(c)“bimodal distribution of particle sizes” means there are two distinct sizes of particles within the solid material. Often these are referred to as “fines” and “coarse” fractions;(d)“co-disposal” means, in simple terms, the disposal of a combination of both coarse and fine tailings particles. In some cases this will involve a clearly bi-modal size distribution which has both coarse and fine particles;(e)“flocculants” are high molecular weight polymers that induce aggregation of solid particles. This occurs by individual flocculant molecules co-adsorbing on two or more solid particles and binding them together. Due to the increase in their size, the bound solids (often called “aggregates”, “floccules” or “flocs”) have a faster settling rate, but a much lower density, than the individual solids particles;(f)“intrinsic viscosity” is a measure of the capability of a polymer in solution to enhance the viscosity of the solution. It is related to the volume per unit mass occupied by flocculant molecules in solution and is measured in the unit “dL/g”, which is decilitres per gram;(g)“rheology” is the study of deformation and flow of fluid matter;(h)“spirals” are equipment used in mineral processing industry to beneficiate an ore by means of the forces imposed on particles as they flow under gravity in a spiralling motion;(i)a “stack” or a “heaped geometry” is a deposit of material which is characterised by being larger at the bottom than at the top;(j)“tailings” are the end product of a mineral processing operation. Tailings are what remain of an ore after the value(s) (e.g. alumina, coal, copper, diamond, gold, nickel, uranium, zinc) have been extracted during the processing operation; and(k)“yield stress” means, in simple terms, a measure of the minimum force required to be applied to an object to make it deform (i.e. begin to behave as a fluid). Mineral processing is the processing of mined materials to separate the valuable component of the ore such as alumina, coal, copper, diamond, gold, nickel, uranium, zinc from the waste material i.e. the tailings. Such processing usually produces tailings that have the following characteristics:(a)First, they are in slurry form, comprising process water and particulate matter.(b)Second, the particulate matter is comprised of large amounts of quartz/silica, various types of clays, and other minerals depending on the host rock for the ore.(c)Third, the particle size of the particulate matter depends on the level of grinding required for mineral extraction which in many cases is related to the type of mineral and nature of the deposit.(d)Fourth, in many operations, multiple tailings streams are generated with different characteristic particle size distributions. For example, in mineral sands processing, slimes (fine) and sand (coarse) streams are generated from different parts of the processing circuit. Sand streams are also generated in alumina refining in addition to the fine red mud tailings. In coal processing a coarse reject stream is commonly generated in addition to the fine tailings.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
In summary, SNF has failed to establish a lack of novelty.CONCLUSION SNF has made out none of its grounds on the present appeals, namely, its grounds concerning lack of inventive step, secret use and lack of novelty. Accordingly, its appeals in each case will be dismissed with costs. The orders in each appeal that I propose to make appear at the outset to these reasons. Let me conclude with one final observation. The hearing of these appeals has not proceeded smoothly. The three weeks initially set aside for the hearing turned out to be inadequate. The hearing had to be adjourned over for a further week of evidence months later, and then further adjourned for several days of closing addresses. The substantial adjournments were necessary to accommodate the other significant commitments of counsel, witnesses and the Court. I make no criticism. It is what it is. But the sheer length, complexity and delays involved in these appeals does give cause to reflect on the following questions. Should appeals of this type be permitted to proceed as rehearings de novo allowing the parties to run any ground they like, whether raised before the delegate or not, and upon any evidence they choose, whether adduced or available to be adduced before the delegate or not? Or should they be permitted to proceed only upon the grounds and evidence led before the delegate with truly fresh evidence only being permitted in exceptional circumstances? Or should there be no appeal at all from the decision of the delegate, but only judicial review permitted demonstrating jurisdictional error? Or should there be an appeal for error of law only, and perhaps only with leave? Now these are policy questions, and legislative amendment would be necessary. But on any view it is not sufficient to tinker with the problem by fiddling with the standard of proof, which provided no real solution to deal with the length and complexity of what unfolded before me, notwithstanding the case management techniques available. But perhaps a more robust approach can be taken. One solution may be to put the parties on a chess clock to limit a hearing of the present type to 5 days rather than 5 weeks. And instead of 20 volumes of double-sided material as the standard length of a court book, this could be severely confined. Further, perhaps it is time for appellate courts to show some guidance in permitting short form reasons. Anyway, these reasons should not be further drawn out.
Ratio Decidendi
Legal Principle Established
Full text does not contain this section.