NOT FOR DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA ) ) VICTORIA DISTRICT REGISTRY ) V. No. G 91 of 1987 ) ) GENERAL DIVISION BETWEEN : R. D. WERNER CO. INC. Applicant and BAILEY ALUMINIUM PRODUCTS PTY. LTD. Respondent COURT: NORTHROP J. io ATE : 18 MAY 1987 PLACE: MELBOURNE EX TEMPORE REASONS FOR JUDGMENT I should indicate at the very beginning that I propose to give leave to appeal in this case. The applicant makes this application for leave to appeal from the judgment given by King J. in the Supreme Court of Victoria on 2 April 1987. The application is brought pursuant to sub-section 25(2) of the Federal Court of Australia Act 1976 and pursuant to Order 52 of the Federal Court Rules and the applicant has an option of makj the application before the Court constituted by a sj a Full Court. ~ Under sub-section 148(2) of the Patents Act 1952, where a judgment or order of a prescribed Court, and here the Supreme Court 15 a prescribed Court, appealed from was pronounced or made in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner of Patents, an appeal to the Federal Court of Australia does not lie without leave of the Federal Court. In the present case, the proceedings before King J. were in the nature of an appeal from a decision of a delegate of the Commissioner dated 5 July 1984 to the effect that the opposition lodged by the present applicant, R.D. Werner Co. Inc., against the grant of a standard patent to Bailey Aluminium Products Pty. Ltd., on the letters patent application no. 517200 be dismissed. The Supreme Court dismissed that appeal and ait is from that order of the Supreme Court that the present application is made. Using the language of the patents jurisdiction, the proceedings before King J. were opposition proceedings based upon sub-section 59(1) of the Patents Act and a number of grounds of opposition were stated, including grounds (g) and (h); (g) being that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim, and (h) being that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia. During the hearing of the application, reference was made also to paragraph (1), namely, that the complete specification does not comply with the requirements of 5.40, but for the purposes of this application I do not propose to consider that matter any further. I merely mention it to note that 1t was raised and argued. It should be noted further that under 5.148 of the Patents Act, an appeal lies to the Federal Court of Australia from a judgment or order of a prescribed Court exercising jurisdiction under the Act. The prescribed Court, in this case would be the Supreme Court of Victoria. Under s.99 of the Patents Act, any person may present a petition to a prescribed Court for the revocation of a patent and 5.100 specifies the grounds of revocation. Paragraph 100(1)(g) is equivalent to paragraph 59(1)(h), namely, that the invention, so far as claimed in any claim of the complete specification, or in the claim of the petty patent specification, as the case may be, was not novel in Australia on the priority date of that claim. The patent application relates to a mechanism by which rungs of metal, normally aluminium, ladders are swaged to secure them to the uprights of the ladder. There is in existence a specification for a similar type of mechanism held by the applicant where the mechanism operates in such a way that of the two arms of the mechanism, only one arm moves and that arm also moves the ladder parts so as to bring the two parts of the mechanism against each other under pressure to enable the swaging to occur at the same time on each side of the ladder. The patent, the subject of the present application, differs from that in that the two arms of the mechanism work or move but the ladder remains' substantially stable. I do not propose to go through the whole question of the legal principles involved, but the Federal Court in a number of decisions has expressed principles to be applied in considering applications for leave to appeal. Most of these cases relate to leave to appeal from decisions of Supreme Courts under the Income Tax Assessment Act 1936 (Cth), and for present purposes I refer to Federal Commissioner of Taxation v. Forsyth (1979) 37 F.L.R. 430. In that case reference is made to two earlier cases, namely, Lombardo v. Federal Commissioner of Taxation (1979) 9A.T.R. 550 per Toohey J. and Federal Commissioner of Taxation v. Nixon (1979) 37 F.L.R. 135. Those cases refer to the difficulty of a_ single Judge of this Court exercising power in such a way as to express an opinion as to the correctness or otherwise of a decision of a Judge of a Supreme Court when considering whether leave to appeal should be granted. In Federal Commissioner of Taxation v. Forsyth, I made reference to that fact and referred to the other authorities at p.432. The same difficulty arises in the present case and it 1s not appropriate that I should express any views as to the correctness or otherwise of the judgment of King d.. I am satisfied on the material before the Court that the appeal 15 genuine and that there 15 a substantial or real question to be raised on the appeal. This substantial or real question relates to the proper construction to he given to the provisions of 5.59 of the Patents Act, Particularly the two paragraphs I referred to earlier, and expressions of opinion both in the High Court, in the Federal Court of Australia in Dennison Manufacturing Co. v. Monarch Marking Systems Inc. (1983) 66 A.L.R. 265, and in the Supreme Court of New South Wales in Windsurfing International Inc. v. Petit 3 I.P.R. 449. It also involves a consideration and application of a number of principles expressed in the High Court, for instance, in Griffin v. Isaacs (1942) 12 Official Journal of Patents Trade Marks and Designs 739, Hume Pipe Company (Australia) Ltd. v. Monier Industries Ltd. (1943) 13 Official Journal of Patents Trade Marks and Designs 575 and the more recent decision of the High Court in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Ltd. (1980) 144 C.L.R. 253. It is not for me to attempt to analyse those various expressions of opinion or how they are to be applied to the facts of this case. That will be a matter for the Full Court to determine. It is sufficient for me to say that, in my opinion, the appeal does give rise toa consideration of these questions of law. It was argued against the granting of leave that the judgment under appeal should not be considered as a final judgment in that the present applicant could bring proceedings under s.99 of the Patents Act where the very same issues could be raised in the hearing before the Supreme Court. If those proceedings failed, that would be a final decision and the applicant would then have an appeal as of right to this Court. It seems to me that that argument Should not be accepted in this case for a number of reasons. First, the granting of a patent itself, although it does not prevent other proceedings being taken under s.99, does give rise to a position where the public generally can perceive the existence of the patent which, according to the submissions of the applicant, has some taint of incorrectness about it, and it would be unsafe to allow that patent to remain in existence when it is subject to attack under 5.99, particularly when the applicant, by being forced to go through other proceedings to raise the very same issue, could bring the matter before the Full Court but only after the expenditure of a large amount of money. It seems to me in these circumstances that the Court should have regard to the fact that the questions raised here should be determined by a Full Court without forcing the applicant to go through the charade of other proceedings under the Patents Act. Having decided, as I have, that this is a genuine appeal which raises for determination serious questions of law, it seems to me that leave should be granted. This isa case where there is no question of the credibility of witnesses to be decided by the Court. The facts have been found and the issue 1s the application of the law to those facts. The real nub of the question is set out at pp.17-18 of the judgment of King J.. At p.18 he says:- "The above differences in mechanical operation of the pieces of apparatus under consideration stem from Greenman describing apparatus with one movable connection forming assembly and Claim 1 describing apparatus with two such assemblies. I think that they confirm the view which I had already formed that prior publication of the Greenman apparatus did not clearly disclose a workshop variation or a mechanical equivalent of the invention claimed in Claim 1 of the specification in suit." That paragraph refers to phrases which have been used in other cases but his Honour did not refer specifically to the provisions of the Act itself. He adopted glosses on those sections and then decided the case by reference to those glosses, and it is because of this that counsel for the applicant has made an attack on the reasons for judgment of King J.. I express no views on that but, in my view, that does support clearly the fact that here there are substantial questions to be raised on the appeal. On an appeal of this kind, the Full Court is able to draw inferences from the undisputed facts found by the trial Judge, and such application and inferences are equally questions of law as well as the correct construction and application of 5.59 of the Patents Act. They all give rise to, on the facts of this case, substantial or real questions to be answered on the appeal, and accordingly, leave to appeal is granted. I certify that the seven (7) preceding pages are a true copy of the Reasons for Judgment herein of the Honourable Mr. Justice R.M. Northrop. Associate | cleo. Loa)... 18 May 1987