ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46

FEDERAL COURT OF AUSTRALIA

ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 Appeal from: Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588

File number: VID 711 of 2016

Judge(s): GREENWOOD, RARES AND MOSHINSKY JJ

Date of judgment: 28 March 2018

Catchwords: INTELLECTUAL PROPERTY – consideration of an application for leave to appeal and an appeal under s 60(4) of the Patents Act 1990 (Cth) (the "Act") from a decision of the Commissioner's delegate rejecting all grounds of opposition – consideration of questions of construction of the Patent Application including the claims and the specification – consideration of the principles of construction INTELLECTUAL PROPERTY – consideration of the ground of want of novelty – consideration of whether the claims as construed are anticipated by a prior published product INTELLECTUAL PROPERTY – consideration of the historical development in Australia of the statutory formulation contained in s 18(1)(c) of the Act that an invention is a patentable invention for the purposes of a standard patent "if the invention, so far as claimed in any claim, is useful" – consideration on the question of utility of earlier formulations engaging the grounds on which a patent might be repealed by the writ of scire facias – consideration of The Patents, Designs and Trade Marks Act 1883 (UK), the Report of the United Kingdom Board of Trade (the "Sargant Committee Report") of 1931, the Patents and Designs Act 1907-1932 (UK), the Report of the United Kingdom Board of Trade (the "Swan Committee Report") of 1947, the Patents Act 1949 (UK), the Report of 1952 of the "Dean Committee" established by the Commonwealth Attorney-General (which led to the Patents Bill 1952 (Cth)), and the Patents Act 1952 (Cth) INTELLECTUAL PROPERTY – consideration of the question of utility of whether a failure to attain an element of a composite promise comprising two or more elements renders the invention, so far as claimed in any claim, inutile – consideration of the authorities on that question