British-American Tobacco Ltd v Philip Morris Ltd [1996] FCA 990

British-American Tobacco Ltd v Philip Morris Ltd [1996] FCA 990

Although the respondent's further particulars were inadequate, the known manufacture and sale for a substantial period of Ten Cent Cigarettes by the applicant's subsidiary in African countries, their alleged matching characteristics, their widespread use, material suggesting knowledge by the applicant in London, and the fact that relevant matters were peculiarly within the applicant's knowledge provided a sufficient foundation to allow discovery before requiring full particulars. Discovery was not mere fishing, and there was reasonable cause to believe the respondent may have good objections based on want of novelty, obviousness, or lack of newness or inventiveness. The applicant's motion...

Jurisdiction
Australia
Judgment Date
15 November 1996
Procedural Posture
Appeal From a Delegate of the Commissioner of Patents / Interlocutory Motion by the Applicant Seeking Further and Better Particulars Or, Alternatively, That Paragraph 1(a)(xvii) of the Respondent/cross Applicant's Grounds and Particulars of Invalidity Be Struck Out
Outcome
Applicant's motion dismissed; costs reserved.
Legal Topics
['further and Better Particulars' 'strike Out' 'discovery Before Further Particulars' 'prior Publication' 'want of Novelty' 'obviousness' 'inventive Step' 'manner of Manufacture' 'common General Knowledge in Australia']
['practice and Procedure' 'patents'] ['further and Better Particulars' 'strike Out' 'discovery Before Further Particulars' 'prior Publication' 'want of Novelty' 'obviousness' 'inventive Step' 'manner of Manufacture' 'common General Knowledge in Australia']

Case Brief

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Procedural Posture

Appeal From a Delegate of the Commissioner of Patents / Interlocutory Motion by the Applicant Seeking Further and Better Particulars Or, Alternatively, That Paragraph 1(a)(xvii) of the Respondent/cross Applicant's Grounds and Particulars of Invalidity Be Struck Out

Legal Issues

  1. 1 ['Whether the respondent should be ordered to provide further and better particulars of how the Ten Cent Cigarette was published in Australia on or before the priority date.' 'Whether paragraph 1(a)(xvii) of the Grounds and Particulars of Invalidity should be struck out for lack of evidentiary grounding.' 'Whether the inferences pleaded by the respondent involved logic or impermissible guesswork.' 'Whether discovery should be allowed before requiring the respondent to supplement its particulars.' 'Whether there was reasonable cause to believe the respondent may have good objections based on want of novelty, obviousness, or lack of newness or inventiveness.']

Ratio Decidendi

Although the respondent's further particulars were inadequate, the known manufacture and sale for a substantial period of Ten Cent Cigarettes by the applicant's subsidiary in African countries, their alleged matching characteristics, their widespread use, material suggesting knowledge by the applicant in London, and the fact that relevant matters were peculiarly within the applicant's knowledge provided a sufficient foundation to allow discovery before requiring full particulars. Discovery was not mere fishing, and there was reasonable cause to believe the respondent may have good objections based on want of novelty, obviousness, or lack of newness or inventiveness. The applicant's motion...

Court Disposition

Applicant's motion dismissed; costs reserved.

Orders

  • ["The applicant's motion be dismissed." 'Costs be reserved.']