Viskase Corporation v Cryovac Inc [2000] FCA 1695

Viskase Corporation v Cryovac Inc [2000] FCA 1695

Viskase did not satisfy O 15A r 6(a) or (b) because the patent attorney's opinion that Viskase may have a right to revocation was a conclusion expressed in the terms of the rule, based on identified prior art but without sufficient analysis showing how the conclusion was reached. If the prior art truly anticipated...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
22 November 2000
Procedural Posture
Application for Preliminary Discovery Under O 15 a R 6 of the Federal Court Rules in Relation to Possible Patent Revocation Proceedings / Pre Action Discovery Application
Outcome
Application dismissed with costs.
Legal Topics
['pre Action Discovery' 'patent Revocation' 'obviousness' 'novelty' 'inventive Step' 'prior Art' 'discretion to Order Discovery']
['practice and Procedure' 'intellectual Property' 'patents'] ['pre Action Discovery' 'patent Revocation' 'obviousness' 'novelty' 'inventive Step' 'prior Art' 'discretion to Order Discovery']

Source-derived case record

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Procedural Posture

Application for Preliminary Discovery Under O 15 a R 6 of the Federal Court Rules in Relation to Possible Patent Revocation Proceedings / Pre Action Discovery Application

Legal Issues

  1. 1 ["Whether there was reasonable cause to believe that Viskase had or may have had a right to obtain relief revoking Cryovac's patent." 'Whether, after making all reasonable inquiries, Viskase lacked sufficient information to decide whether to commence revocation proceedings.' 'Whether the Court should exercise its discretion to order preliminary discovery of research and development, prior art, prior disclosure and commercial dealing documents.']

Ratio Decidendi

Viskase did not satisfy O 15A r 6(a) or (b) because the patent attorney's opinion that Viskase may have a right to revocation was a conclusion expressed in the terms of the rule, based on identified prior art but without sufficient analysis showing how the conclusion was reached. If the prior art truly anticipated the Cryovac Patent, Viskase had enough information to decide whether to sue; if it did not, it did not provide reasonable grounds for believing the patent invalid. In any event, the Court would not exercise its discretion to order discovery because the application rested on a slender and formulaic basis that would set too low a threshold for intrusive pre-action discovery of a...

Court Disposition

Application dismissed with costs.

Orders

  • ['The application is dismissed.' "The Applicant is to pay the Respondent's costs of the application."]