FEDERAL COURT OF AUSTRALIA Genetics Institute, Inc v Kirin-Amgen, Inc [1999] FCA 9 PRACTICE & PROCEDURE – whether application for leave to appeal under s 158(2) of the Patents Act 1990 (Cth) should be listed so as to allow the Court to determine any appeal without further argument Federal Court of Australia Act 1976 (Cth) subs 25(2) Patents Act 1990 (Cth) subs 158(2) Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (unreported, 24 July 1998, Black CJ) GENETICS INSTITUTE, INC v KIRIN-AMGEN, INC VG 404 OF 1998 JUDGE: BLACK CJ DATE: 6 JANUARY 1999 PLACE: MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA DISTRICT REGISTRY VG 404 OF 1998 JUDGE: BLACK CJ DATE OF ORDER: 6 JANUARY 1999 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. The application for leave to appeal be listed for hearing before a Full Court at Melbourne on 23 February 1999. 2. Written submissions of not more than 10 pages concerning the principles to be applied by the Full Court in determining whether leave to appeal should be granted be filed and served by the respondent not later than 22 January 1999. 3. Written submissions of not more than 40 pages answering the respondent's submissions, and in support of the application for leave to appeal, be filed and served by the applicant not later than 10 February 1999. 4. Written submissions of not more than 40 pages in answer to the applicant's submissions be filed and served by the respondent not later than 19 February 1999. 5. The costs of the directions hearing be reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA DISTRICT REGISTRY VG 404 OF 1998 BETWEEN: GENETICS INSTITUTE, INC APPLICANT AND: KIRIN-AMGEN, INC RESPONDENT JUDGE: BLACK CJ DATE: 6 JANUARY 1998 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 Genetics Institute Inc is the applicant for leave to appeal from a judgment of Justice Heerey upholding a decision of the Commissioner of Patents to dismiss the applicant's opposition to the grant of a patent to the respondent, Kirin-Amgen Inc. 2 The applicant requires leave to appeal by reason of subs 158(2) of the Patents Act 1990 (Cth) which provides as follows. "Except with leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner". 3 The applicant filed an application for leave to appeal and a proposed notice of appeal on 20 August 1998. The application was, in terms, an application to a Full Court. The respondent however then requested that the application be heard by a single judge, and separately from any appeal. That request was opposed by the applicant, resulting in the District Registrar referring the matter to me. I then had the matter listed for directions. 4 In the course of argument at the directions hearing the respondent abandoned its request to have the application for leave to appeal heard by a single judge, seeking only that it be heard prior to, and separately from, any appeal, and both parties now agree that the application should be listed before a Full Court. It is therefore unnecessary for me to consider the nature and effect of an applicant's so-called "right to elect" to have an application for leave to appeal under subs 25(2) of the Federal Court of Australia Act 1976 (Cth) heard by a single judge or a Full Court. 5 The question remains, however, whether the application should be heard separately from any appeal. In their submissions on this question both parties emphasised considerations relating generally to the complexity of the case, the interests of the administration of justice, and the requirements of proper case management, differing only as to what those considerations required in their application to the present case. 6 The applicant contended that the complexity of the factual and legal issues involved was such that the hearing of the application for leave to appeal would probably require a hearing of some four or five days. This estimate was made on the assumption that it would be necessary for the applicant to explore in detail the merits of its proposed appeal, in order to demonstrate, in accordance with the general principles relating to the granting of leave to appeal in this Court, that the appeal had merit and that the applicant would suffer serious injustice if leave to appeal were not granted. It was submitted that in these circumstances the application should be listed in such a way that the Court hearing the application would, if leave were granted, be in a position to determine the appeal without further argument if it saw fit to do so. Reference was made to the course taken in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (unreported, 24 July 1998, Black CJ) ("Nettlefold"). 7 The respondent, on the other hand, argued that it was quite wrong that an application for leave to appeal should occupy four or five days, particularly where the application was for leave to appeal from a decision of a single judge upholding a decision of the Commissioner of Patents under subs 158(2) of the Patents Act. The respondent contended that the language, policy and legislative history of that section support the conclusion that applications of this nature should be determined in accordance with more stringent principles than other applications for leave to appeal from a decision of a single judge of the Federal Court. Specifically, the applicable principles should, it was said, be much the same as those relating to applications for special leave to appeal to the High Court of Australia. The respondent submitted that the hearing of the application for leave to appeal in the present case should occupy less than half a day, and in any event nothing like the four or five days estimated by the applicant. 8 In some cases it will be desirable to list an application to a Full Court for leave to appeal in such a way as will enable the Full Court to consider together the arguments on the application for leave to appeal and on the appeal itself. That was the course adopted in Nettlefold where, as it happened, leave was granted and the appeal allowed after hearing argument on both issues during the course of a single day. The position here is quite different. The applicant for leave wishes to develop its argument in support of the grant of leave to appeal over a period of some days. Another point of difference is that the respondent wishes to argue that the application should be determined according to different principles to those generally applied when leave to appeal is sought in this Court and that the application for leave ought therefore to be treated as a short discrete matter. 9 In deciding how this matter should be listed the determining consideration in my mind is that it is unacceptable that an application for leave to appeal in relation to the pre-grant opposition to a patent should occupy some four to five days, even assuming the case to be one of considerable complexity and novelty. If argument of that duration were allowed on an application for leave to appeal the requirement for leave would lack the substance that the legislature intended to should have. 10 Without, however, in any way prejudging the outcome of Dr Bennett's argument about the principles that should govern the grant of leave in a case such as this, I consider that more than the suggested half day should be set aside for the hearing of the application for leave to appeal. I propose to list the matter so that a whole day is, if necessary, available for argument on the application for leave to appeal, but I do not propose at this point to set aside further time for the possible hearing of the appeal if leave is granted. 11 The extent of the argument on the application for leave to appeal will of course depend on the principles to be applied and their content is one of the matters in issue. It would not however be satisfactory to determine first, as a separate matter on a separate day, the issue of what principles are to be applied when leave to appeal is sought in a case such as this since that would involve delay that should be avoided. I consider that the appropriate course in these circumstances is to make orders for written submissions, commencing with written submissions from the respondent as to the principles to be applied in determining the application for leave to appeal, followed by submissions from the applicant for leave to appeal. The applicant's submissions would answer the respondent's submissions about the principles to be applied and would put the applicant's arguments as to why leave should be granted on two bases – first, on the basis that the principles for which the applicant contends are to be applied, and secondly on the basis that the principles for which the respondent contends are to be applied. The respondent would then answer the applicant's submissions. 12 I propose to fix 23 February 1999 as the date for the hearing of the application for leave to appeal. I do so on the footing that neither senior nor junior counsel for the respondent were, as I was informed, available at any time during the March portion of the next Full Court sittings. On the basis therefore that the hearing date is 23 February 1999 I will make the following orders for written submissions. · That written submissions of not more than 10 pages concerning the principles to be applied by the Full Court in determining whether leave to appeal should be granted be filed and served by the respondent not later than 22 January 1999. · That written submissions of not more than 40 pages answering the respondent's submissions, and in support of the application for leave to appeal, be filed and served by the applicant not later than 10 February 1999. · That written submissions of not more than 40 pages in answer to the applicant's submissions be filed and served by the respondent not later than 19 February 1999. 13 I will reserve the costs of the directions hearing. I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Black Associate: Dated: 6 January 1999 Counsel for the Applicant: Mr D. Shavin, QC Mr B. Caine Solicitor for the Applicant: Davies Collison Cave Solicitors Counsel for the Respondent: Ms A. Bennett, QC Ms K. Howard Solicitor for the Respondent: Sprusons Solicitors Date of Hearing: 17 November 1998 Date of Judgment: 6 January 1999