British American Tobacco (Investments) Ltd v Philip Morris Ltd [1999] FCA 1203

British American Tobacco (Investments) Ltd v Philip Morris Ltd [1999] FCA 1203

The allegation that 'Ten Cent Cigarettes' were 'known' in Australia does not sufficiently plead or evidence prior publication, novelty, or obviousness grounds for patent invalidity because there is no evidence any such cigarettes or their characteristics were actually disclosed, used, or published in Australia (as defined by the Patents Act 1952) before the priority date. Mere inference from foreign sales, migration, or reminiscence does not justify the pleading. Paragraph 1(a)(xvii) and related cross-references in the amended grounds and particulars of invalidity must be struck out as unsustainable in law or fact.

Jurisdiction
Australia
Judgment Date
01 September 1999
Procedural Posture
Motion in Appeal and Cross Appeal From Opposition Proceedings Decision (patents) / Interlocutory Motion to Strike Out Pleadings
Outcome
Paragraph 1(a)(xvii) of the amended grounds and particulars of invalidity struck out; leave granted to file further amended particulars by 22 September 1999; costs of the motion reserved.
Legal Topics
['pleadings and Particulars' 'patent Invalidity Grounds' 'prior Publication' 'novelty' 'inventive Step' 'manner of Manufacture' 'opposition Proceedings']
['intellectual Property' 'patents' 'civil Procedure'] ['pleadings and Particulars' 'patent Invalidity Grounds' 'prior Publication' 'novelty' 'inventive Step' 'manner of Manufacture' 'opposition Proceedings']

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Procedural Posture

Motion in Appeal and Cross Appeal From Opposition Proceedings Decision (patents) / Interlocutory Motion to Strike Out Pleadings

Legal Issues

  1. 1 ["Whether the particulars regarding 'Ten Cent Cigarettes' sufficiently support alleged grounds of patent invalidity (prior publication, lack of novelty, obviousness, want of manner of manufacture) under the Patents Act 1952 (Cth)" 'Whether impugned paragraphs of amended grounds and particulars of invalidity should be struck out']

Ratio Decidendi

The allegation that 'Ten Cent Cigarettes' were 'known' in Australia does not sufficiently plead or evidence prior publication, novelty, or obviousness grounds for patent invalidity because there is no evidence any such cigarettes or their characteristics were actually disclosed, used, or published in Australia (as defined by the Patents Act 1952) before the priority date. Mere inference from foreign sales, migration, or reminiscence does not justify the pleading. Paragraph 1(a)(xvii) and related cross-references in the amended grounds and particulars of invalidity must be struck out as unsustainable in law or fact.

Court Disposition

Paragraph 1(a)(xvii) of the amended grounds and particulars of invalidity struck out; leave granted to file further amended particulars by 22 September 1999; costs of the motion reserved.

Orders

  • ['Paragraph 1(a)(xvii) of the amended grounds and particulars of invalidity be struck out.' "Respondent have leave to file and serve, not later than 22 September 1999, further amended grounds and particulars of invalidity incorporating further particulars, in relation to 'Ten Cent Cigarettes', of the grounds in...