Commissioner of Patents v Sherman [2008] FCAFC 182

FEDERAL COURT OF AUSTRALIA

Commissioner of Patents v Sherman [2008] FCAFC 182

PATENTS – appeal under s 60(4) of the Patents Act 1990 (Cth) against the Commissioner's decision on an opposition to a grant of patent – whether tender of evidence as to the Commissioner's decision, including the material on which it was based, inadmissible in the trial in this Court – whether Evidence Act 1995 (Cth) applies to such evidence – nature of opposition proceeding before the Commissioner – nature of appeal under s 60(4) of the Patents Act – effect of s 160(a) of the Patents Act – effect of O 58 r 8 of the Federal Court Rules – admissibility of evidence at the trial governed by Evidence Act 1995 (Cth) EVIDENCE – admissibility of evidence as to the Commissioner's decision and the material on which it was based – whether evidence as to the Commissioner's decision irrelevant – whether evidence as to the material on which the Commissioner's decision was based inadmissible as hearsay – evidence about the Commissioner's decision relevant as jurisdictional fact and as the opinion of a person with technical expertise – this evidence and material on which the Commissioner's decision was based is admissible under the Evidence Act 1995 (Cth) PRACTICE AND PROCEDURE – whether leave to appeal against evidentiary ruling ought to be granted – case raises a matter of public importance – leave granted Patents Act 1990 (Cth) ss 60(4), 160 Evidence Act 1995 (Cth) ss 4(1), 8(1), 9(1), 48(1)(b), 56(2), 59, 60, 76, 77, 79, 140, 190(3)(b) Federal Court of Australia Act 1976 (Cth) ss 24, 24(1A), 38(1) Federal Court Rules (Cth) O 58 r 8 Epeabaka v Minister for Immigration and Multicultural Affairs (1997) 150 ALR 397 referred to Jafferjee v Scarlett (1937) 57 CLR 115 cited Kaiser Aluminum & Chemical Corporation v Reynolds Metal Company (1969) 120 CLR 136 referred to Commissioner of Patents v Microcell Limited (1959) 102 CLR 232 cited Denison Manufacturing Company v Monarch Marking Systems Incorporated (1983) 76 FLR 200 cited F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 referred to Caroma Sales Pty Ltd v Philmac Pty Ltd [1972-73] ALR 427 referred to Brickwood Holdings Pty Ltd v ACI Operations Pty Ltd [1983] 2 VR 587 referred to European Community v Commissioner of Patents (2006) 68 IPR 539 referred to Cadbury Schweppes Plc v Effem Foods Pty Ltd (2006) 69 IPR 584 cited Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386 referred to E I Du Pont de Nemours and Company v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392 referred to E I Du Pont de Nemours and Company v ICI Chemical Industries Plc (2002) 54 IPR 304 referred to Neumann v Sons of the Desert SL [2008] FCA 1183 cited Titan Mining & Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73 referred to R v Australian Broadcasting Tribunal; Ex parte Hardiman (1980) 144 CLR 13 cited Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 referred to Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 10 cited Soncini v Registrar of Trade Marks (2001) 109 FCR 548 cited Fina Research SA v Halliburton Energy Services Inc [2002] FCA 1505 cited Commissioner of Taxation v Finn (1960) 103 CLR 165 cited Federal Commissioner of Taxation v Lewis Berger & Sons (Australia) Ltd (1927) 39 CLR 468 cited Federal Commissioner of Taxation v Sagar (1946) 71 CLR 421 cited Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618 referred to THE COMMISSIONER OF PATENTS v BERNARD CHARLES SHERMAN