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[1999] FCA 1191
Federal Court of Australia
1999-08-30
Burchett J, Tamberlin J, Tamberlin JJ, Branson JJ
Original judgment source is linked above.
(a) orders 1, 2, 5, 6, 7 and 8 made on 16 September 1998; and
(a) The amended application dated 16 November 1995 be dismissed;
(c) It be declared that Australian Patent 586633 was at all times invalid; and
(d) The applicants, Kimberly-Clark Australia Pty Limited, pay the costs of the proceeding of the respondents, Arico Trading International Pty Limited, Arie Kliger and Francesco Martin Otero.
NB: Settlement and entry of orders is dealt with in Order 36 of the Federal Court rules.
REASONS FOR JUDGMENT WILCOX AND BRANSON JJ: 1 We have had the advantage of reading in draft the reasons for judgment of Tamberlin J. We gratefully adopt his Honour's outline of the factual and statutory background of this appeal. We regret that we have taken a different view from his Honour as to the proper outcome of the appeal. 2 In our view, the appeal can be decided by reference solely to s 40(2)(a) of the Patents Act 1990 (Cth) ("the Act"). 3 Section 40 of the Act is concerned with specifications. Section 40(2) provides as follows: "(2) A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and (c) [not here relevant]." 4 In Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 94-95 Gummow J observed of the comparable provision of the Patents Act 1952 (Cth): "As s 40 itself indicates, the task of the body of the specification is fully to describe the invention including the best method of performing it known to the applicant. The descriptions primarily is addressed to "all and sundry who may wish to construct the device after the patent has expired": … The function of the claims is to define the invention and mark out the ambit of the patentee's monopoly, and primarily is addressed to potential rivals: … The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement of all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification." [citations omitted] 5 In Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company (1997) 37 IPR 523 at 530 Carr J, with whom Jenkinson and Sackville JJ agreed, referred with apparent approval to Gummow J's approach in the context of the current Act. 6 In the Patent Gesellschaft AG case at 530 Carr J expressed the relevant test under s 40(2)(a) of the Act in this way: "The specification contains a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject and also makes it plain, to persons having reasonable skill, how to perform the invention." [citation omitted] 7 In this case the complete specification provided an "abstract of the disclosure" in the following terms: "A unitary disposable diaper with elasticised legs is provided having a fluid pervious liner a fluid impervious backing with absorbent material positioned there between. A fecal containment flap is positioned along each side of the diaper and extends inward from the lateral edges." 8 As the section of the specification headed "Summary of the Invention" makes clear, the claimed invention relates to the "fecal containment flap" rather than to the "unitary disposal diaper with elasticised legs" itself. It is the case of the respondent that the core of the invention is an inner barrier comprised of liquid pervious flaps. 9 As Burchett J noted, the detailed description of the invention set out in the complete specification does not until the last paragraph refer to the material from which the flaps should be made. It is not entirely clear whether this paragraph is intended to refer to a particular embodiment of the invention or to the invention generally. It may be, as Tamberlin J has considered, that the paragraph relates only to one embodiment of the invention. If its operation is so limited, the specification says nothing as to an essential integer of the claimed invention itself. 10 The paragraph, which makes reference to the material from which the flaps should be made, reads as follows: "The flap material is preferably soft, comformable and vapour and/or fluid permeable. A suitable material made of a fine mesh with a basic weight of 0.7 to 0.8 ounces per square yard and may be a spunbonded diaper liner of the type used throughout the diaper." 11 The learned primary judge construed the first sentence of the above paragraph on the basis that the word "preferably" qualifies only the word soft or, at least, does not qualify the word "permeable". We do not find it necessary to form a view as to whether or not his Honour was right to adopt this construction. There is, in our view, nothing ambiguous about the expression "vapour and/or fluid permeable". The expression encompasses: (1) vapour permeable but not fluid permeable; (2) vapour and fluid permeable; and (3) fluid permeable but not vapour permeable. The expression cannot fairly be interpreted so as to call necessarily for a material which is fluid permeable. That is, on one available construction of the specification, it says nothing as to an essential feature of the claimed invention; on the other available construction, it is misleading as to that essential feature. 12 The fact, as his Honour noted, that the claims defining the invention are confined to articles with "fluid pervious flaps" is not, in our view, of assistance in determining whether the complete specification describes the invention fully. Whilst reference to the claims may be made to assist in the construction of doubtful passages in the body of the specification (Evans and J and J Taunton v Hoskins & Sewell Ld [1907] RPC 517 per Vaughn Williams J at 522; Kauzal v Lee (1936) 58 CLR 670 at 687) we are unable to regard the description of the flap material contained in the paragraph set out above as relevantly doubtful in meaning. Unlike the specification considered by the High Court in Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588, this is, as we read it, a specification in which the requirement that the flaps be liquid permeable appears for the first time in the claims (see Welch Perrin & Co Pty Ltd v Worrel per Dixon CJ, Kitto and Windeyer JJ at 614). 13 The learned primary judge also placed weight, at least so far as the argument that the claims were not fairly based on the specification was concerned, on evidence which he described as expert evidence that - "The person skilled in the art at the priority date would unhesitatingly have chosen liquid pervious flaps, as he would have appreciated immediately the need to protect the baby's skin from irritation produced by the trapping of urine between an impervious flap and the elasticized leg gathers, which would be designed to be impervious." 14 It seems clear that the expert evidence to which his Honour referred was that given by Rodney Allan Butler ("Mr Butler"), an employee of the respondent responsible for product development of diapers. When Mr Butler's evidence as a whole is read it discloses a successful disposable nappy product launched in the United States in 1989 which had "liquid impermeable flaps", and that the respondent has since 1993 utilised an "impervious flap material" in disposable nappies in Australia. Mr Butler did give evidence that although it was a disadvantage for any fluid to pass from the crotch area of a nappy to the area outside the flap, if fluid did get passed the flap, an advantage of the liquid impervious flap was that it could pass back thus avoiding the trapping of moisture on the skin. In our view, Mr Butler's evidence, when read as a whole, does not provide a basis for a finding that "the person skilled in the art at the priority date would unhesitatingly have chosen liquid pervious flaps". 15 We consider that the complete specification does not "describe the invention fully, including the best method known to the applicant of performing the invention" within the meaning of s 40(2)(a) of the Act. The complete specification does not disclose to a person who may wish to make the invented product after the patent has expired how the product should be constructed. It would not instruct a reader of the specification who knew nothing of the prior art that an essential feature of the invention was the necessity for the flaps to be "fluid pervious" (see Sami S Svendsen Incorporated v Independent Products Canada Limited (1968) 119 CLR 156 per Kitto J at 159 and 165). 16 In our view the appeal should be allowed with costs. Orders 1, 2, 5, 6, 7 and 8 made by Burchett J on 16 September 1998 and orders 1, 4 and 5 made by Burchett J on 25 September 1998 be set aside. In lieu thereof it should be ordered: 1. The amended application dated 16 November 1995 be dismissed; 2. Australian Patent No 586633 be revoked; 3. It be declared that Australian Patent 586633 was at all times invalid; and 4. The applicant pay the respondents' costs of the trial. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Wilcox and Branson.
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
REASONS FOR JUDGMENT TAMBERLIN J 17 This appeal arises from a patent infringement suit brought by the respondent, Kimberly-Clark (Australia) Pty Limited ("KCA"), for infringement of its patent by the first appellant Arico Trading International Pty Limited ("Arico") by the importation and sale of disposable nappies, which are marketed under the name "BABY SITTER". Arico sought by cross-claim a declaration of invalidity and an order revoking the KCA patent. The primary judge found for KCA on its claim for infringement and dismissed Arico's cross-claim for invalidity. Arico now appeals against both of these findings. The issues raised include insufficient description, fair basis, novelty, manner of manufacture, and infringement.
The facts 18 The specification under consideration is a complete specification for an invention entitled "DIAPERS WITH ELASTICIZED SIDE POCKETS". The specification provides what is said to be a full description of the invention including the best method of "performing" it known to the applicant. Under the heading "ABSTRACT OF THE DISCLOSURE" it is said: "A unitary disposable diaper with elasticized legs is provided having a fluid pervious liner a fluid impervious backing with absorbent material positioned there between. A fecal containment flap is positioned along each side of the diaper and extends inward from the lateral edges." 19 The specification continues under the heading "BACKGROUND OF THE INVENTION: "Unitary disposable diapers have recently become the primary type of diaper used in this country. Disposable diapers with elasticized leg openings to provide a better fit and improved containment have recently become a significant part of the disposable diaper market. These elasticized portions are designed to fit around the legs of the baby to aid in the prevention of side leakage and they have been a substantial improvement over the conventional non-elastic disposable diaper. The elastic leg diapers however, are not completely successful in stopping explosive liquified [sic] bowel movements which often occur." 20 There is then a reference to earlier attempts which had been made to provide diapers with some additional reinforcing containment means, including the use of folded plastic strips. Under the heading "SUMMARY OF THE INVENTION" it is said: "According to this invention an elastic legged unitary disposable diaper is provided which has an elasticized flap extending inwardly from each side of the diaper and extending its entire length. This flap has elasticization means near the inner most portion so that when the diaper is worn, the flap tends to form a second inwardly facing barrier particularly adapted to contain diarrhetic bowel movements." 21 The specification then proceeds to further describe the invention and to illustrate the description by drawings. Relevantly, that portion of the specifications reads: "The invention can be more readily understood by reference to the drawings in which FIG. 1 is a perspective view of a partially opened diaper of this invention and FIG. 2 is an end view partially in cross section of the embodiment depicted in FIG. 1. FIG. 3 is a perspective view of a second embodiment and FIG. 4 is a cross-sectional view of the embodiment depicted in FIG. 3. As can be seen by reference to FIGS. 1 and 2 the diaper D is provided with a front waist portion 11b and a back waist portion 11a with each of the waist portions including two ear projections 13 which are designed to configure themselves around the baby's waist. The diaper is maintained in place by tape tab 18 and includes a fluid pervious diaper liner 10 designed to be in contact with the baby's skin a fluid impervious backing 12 which is sealed peripherally to the liner 10 and an absorbent matrix 19 positioned between the liner 10 and the backing 12. The sides of the diaper 16 include the ear projections 13 and the centrally positioned elasticized means 17 which is designed to form a barrier around the leg of the infant when the diaper is worn and is generally parallel and extends slightly beyond the central or crotch area of the diaper. According to this invention, a flap 14 which is sealed along seal line 20, is provided with elastic means 15 positioned near the inward projecting portions of the flap 14. Elastic means 15 serve to direct flap 14 to a direction substantially perpendicular to side 16. Elastic means 15 therefor [sic] serves to reorient the flap 14 in relation to the rest of the diaper profile and elastic length and strength necessary to perform this reorientation is dependent upon the textile of the liner and of [sic] the overall diaper size and would be apparent once the flap concept is disclosed, to those skilled in the art. The ends of the flap 14 are also preferably sealed to the waist end portions11a and 11b of the diaper to prevent folding outward when the diaper is being put on. Stretch elastic threads are suitable elastic means for the elasticized portion 15 of the flap 14. There are several methods of elasticizing the side of the diaper in [sic - scil. 'and'] this particular feature being well known in the art is not part of this invention. These flaps typically form a gap about 2-1/2 inches wide between them when the diaper is opened. A typical elastic thread useful for this invention is about 1/16 inch wide and stretched to about 3 times its original length to a tension of between 30-60 grams with the side flaps at its narrowest dimension being about 2-1/4 inch wide. This produces an elasticized edge which is about 1-1/4 inch from the longitudinal center line of the diaper. The embodiment depicted in FIGS. 3 and 4 is one in which the width of the flap 14 is extended on each side so that the inward edges of the flap are almost touching each other. A second elastic means 150 is provided. The elastic member 15 has less tension then [sic] the elastic member 150 with the result that the flap should depress like a trap door by the weight provided by the body waste and then return to place. This particular configuration is especially useful in isolating fecal material from the wearer's skin and should be particularly beneficial for older children and for incontinent adults. It should be noted that diapers as used in this specification also refer to incontinent garments which are similar in purpose to a diaper although due to the size of the wearer have a larger configuration. The flap material is preferably soft, conformable and vapor and/or fluid permeable. A suitable material made of a fine mesh with a basis weight of 0.7 to 0.8 ounces per square yard and may be a spunbonded diaper liner of the type used throughout the diaper." 22 Following the detailed description of the invention in the specification, there are twenty-six claims. It is sufficient for present purposes to set out the first three: "The claims defining the invention are as follows:
Relevant legislation 25 The requirements for patent specifications are set out in s 40 of the Patents Act 1990 (Cth) ("the Act") which reads: "s 40 Specifications (1) A provisional specification must describe the invention. (2) A complete specification must: (a) describe the invention fully, including the best method known to the applicant of performing the invention; and (b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and (c) where it relates to an application for a petty patent - end with a single claim, or a single independent claim and not more than 2 dependent claims, defining the invention. (3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification. (4) The claim or claims must relate to one invention only. 26 Section 43 is concerned with priority dates and reads: "s 43 Priority dates (1) Each claim of a specification must have a priority date. (2) The priority date of a claim is: (a) the date of filing of the specification; or (b) where the regulations provide for the determination of a different date as the priority date- the date determined under the regulations." 27 Regulation 3.12 of the Patents Regulations reads as follows: "Priority dates generally 3.12(1) …the priority date of a claim of a specification is the earlier of the following dates: (a) the date of filing of the specifications; (b) if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority document in which the matter was first disclosed; … (2) for the purposes of paragraph (1)(b): (a) if the application that relates to the specification containing the claim is a complete application - a provisional application that is associated with that completed application in accordance with section 38 of the Act … is a priority document …" 28 The patent was granted under the Patents Act 1952 (Cth). However, by operation of s 233 of the 1990 Act, the 1952 Act patent may only be revoked under the 1990 Act, on a ground which would have been available against the patentee under the 1952 Act: see N V Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 43 FCR 239 at 253-4 per Lockhart J. In the present case nothing turns on the change in statutory regime. 29 The relevant priority date in this case is 2 July 1984, because the patent relies on an earlier United States grant. Principles of Construction 30 The drafting of patent specifications has developed into an art form designed to cover and reconcile competing objectives with a view to achieving a delicate balance between breadth of coverage and validity. It has long been recognised that the approach to be taken to the construction of a specification calls into play some additional considerations to those usually applicable in the construction of a contract or deed. This is because the patent operates as a "public instrument" and defines and operates a monopoly conferred by statute. Some of the relevant considerations were conveniently summarised, for present purposes, by Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400 as follows: "(1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly. (2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. (3) Nevertheless, in approaching the task of construction, one must read the specification as a whole. (4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification. (5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. (6) A patent specification should be given a purposive construction rather than a purely literal one. (7) In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood. (8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance. (9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right. (10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date." 31 See also Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242-3, per Lord Diplock, C Van Der Lely NV v Ruston's Engineering Co Ltd [1985] RPC 461. 32 I now turn to the specific issues which have been raised. Failure to describe the invention fully. 33 When asked to specify the inventive step protected by the KCA patent, counsel for KCA identified it as being the provision of an inner barrier to make a waste containment pocket. One essential integer was that the barrier should be "fluid pervious". 34 The attack made by Arico on the specification under this head is that the claims which define the invention make it apparent that one essential integer is that the flaps must be "liquid pervious" and that this has not been fully described. This requirement is found in the language of claims 1 and 2. The summary of the invention states that "the flap has elasticization means near the inner most portion so that when the diaper is worn the flap tends to form the second inwardly facing barrier particularly adapted to contain diarrehetic bowel movements". It is submitted that although the first two claims in terms require "liquid pervious" flaps, this is not a requirement which is fully described in the detailed description in the body of the specification. It is said that there is no mention of the fluid pervious nature of the flaps in the first embodiment of the invention, and that this characteristic is only referred to as being "preferable" or an alternate possibility in the second embodiment. Therefore, it is said, the specification does not comply with s 40(2)(a) of the Act and the patent should be revoked for insufficient description. 35 In support of the submission that the description is insufficient to satisfy s 40(2)(a) the appellants referred to the decision of Kitto J in Sami Svendsen Incorporated v Independent Products Canada Limited (1968) 119 CLR 156, where at 165 his Honour said: "… I am of opinion, first, that the specification as a whole offends against s 40(1) [equivalent to s 40(2) of the 1990 Act] by not describing the invention, since it does not enable the reader to discern what was the invention in the total thing that it describes; and, secondly, that the claims themselves offend against s 40(1) by defining as the invention something that was much more extensive than the invention, …" (Emphasis added) 36 In that case one of the inventors made a "clear admissions" which left "no room for doubt" in the mind of the Court that the specification did not describe the invention: see p 165 It was a strong case, on the evidence, of a total failure to describe the invention. The description in that case also employed the expression "preferably", but Kitto J attached no significance to this: see 119 CLR at 158. 37 The question posed in Svendsen was whether it was possible to "discern" the invention from the language used. The resolution of this question will, of course, depend on the language of each specification under consideration. It is not necessary that the description should spell out what is the "inventive step" but rather the task is to give a description of the invention such that a qualified reader should be able to discern what is the invention. 38 As Carr J pointed out in Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company (1997) 37 IPR 523 at 530, there is support in the authorities for the proposition that: "[a]… specification contains a full description if it makes the nature of the invention plain, to persons having reasonably competent knowledge of the subject and also makes it plain, to persons having reasonable skill, how to perform the invention: … Samuel Taylor Pty Ltd v SA Brush Co Ltd (1950) 83 CLR 617 at 624-5." (Emphasis added). 39 In the present case the claims indicate that the requirements for fluid pervious flaps are an essential integer in the definition of the invention. In order to determine whether this feature is "fully described" in the body of the specification it is necessary to take into account several aspects of the description. 40 The first is that it is important to note that the function of the flaps is said to be that when the diaper is worn it tends to form a second inwardly facing "barrier" particularly adapted to "contain" explosive bowel movements. The words "barrier" and "contain" do not, of course, necessarily denote complete stoppage or obstruction but are apt to include a retardation process which would still enable fluids to be absorbed by the absorbent material in the diaper. 41 Second, in the description of the first embodiment there is a reference to an elastic means which serves to re-orient the flap and to the elastic length and strength necessary to perform this re-orientation, as being dependent on the textile of the liner and on the overall diaper size. KCA submits that from this language it would be apparent that once the flap concept is disclosed to those skilled in the art, this calls for a liquid pervious flap. It is said that this requirement is sufficient to disclose to an experienced person skilled in the art that the flap must be "fluid" pervious. I do not agree. I do not think that the reference in the first embodiment to elastic length and strength of the textile conveys any message as to whether the material is "fluid" pervious. 42 Third, in relation to the second embodiment there is the statement that the flap material is "preferably soft, conformable and vapour and/or fluid permeable". It is said by KCA that this statement, read in context and in a purposive way, is sufficient to indicate that the flaps must be fluid pervious. It is also said that as this is the final paragraph in the description preceding the claims, its contents should be read as qualifying both the first and second embodiments. This latter submission cannot be accepted. It is apparent that the two embodiments are separately described and that the relevant language relates only to the second embodiment. 43 There was some discussion during the hearing whether the term "preferably" qualified all the following words or only the word "soft". Burchett J considered that the proper construction was that the word only qualified the term "soft" so that the substance of the description was to the effect that the flap material was required to be vapour and/or fluid permeable. Arico does not agree with this construction and submits that the expression "preferably" qualifies everything which follows. However, even on the construction favoured by the trial judge, Arico contends that the provision of alternatives does not make it clear whether the flap material is to be vapour or fluid permeable or both and therefore the description is uncertain or ambiguous. It further says that this ambiguity, combined with the other uncertainties generated by reference to the expressions "barrier" and "containment", demonstrates that the invention has not been fully described as required by the section. This is said to be because these references are inconsistent and uncertain. Arico submits that the notion of a barrier adapted to contain fluid, is not consistent with the quality of permeability. In response, KCA submits that the fluid pervious material can serve as a barrier or a containment by slowing down or blocking to some extent the passage of the fluids and is consistent with the notion of being fluid pervious. I agree with this response. 44 The alternative construction of the "preferably" clause by Arico is that it should be read as indicating that the material may be preferably vapour and/or fluid permeable. On this construction, it is submitted by Arico that the description has two difficulties. First, that the expression "preferably" makes the permeability requirement optional and not essential, and secondly that the words "vapour and/or fluid permeable" demonstrate uncertainty as to what precisely is required as part of the description of the invention. For example, it is not clear whether vapour permeability or fluid permeability alone would be sufficient. 45 There are problems with the extent of disclosure of permeability in the body of the specification arising from the use of the expression "preferably". It is not clear whether the term applies to the expression "fluid permeable". If it does not apply to these words then the flaps, at least in the second embodiment, were required to be vapour and/or fluid permeable. If, on the other hand, the expression does qualify the words "fluid permeable" then permeability is not mandatory but it is preferable. However, any ambiguity inherent in the expression is, in my view, resolved in the light of the first and second claims which make it clear that liquid perviousness is required. 46 It was contended for Arico that in considering the adequacy of the description it is not possible to do so by reference to the language used in the claims. 47 As the authorities cited earlier indicate, it is necessary to read the specifications as a whole when considering whether there is a sufficiently full description of the invention. In a complete as opposed to a provisional specification, resort can be had to the claims to clear up ambiguity or uncertainty in the description. This simply is another way of saying that the whole instrument is to be considered. As T A Blanco White points out in his work on Patents for Inventions (1983) 5th ed, at 2-103: "A specification is a single document and like any other document, must be read as a whole. It is necessary to read the body before proceeding to the claims … A claim must be treated as part of the entire document, not as a separate document …Reference may also be made to the claims to assist in construing a doubtful passage in the body." (Emphasis added) 48 The authority given for the latter proposition is Evans v Hoskins and Sewell Ltd [1907] 24 RPC 517 at 522 where Vaughan Williams LJ said: "If the Claim clears up something which in the other part of the text might be doubtful, it seems to me that the Court may, and is bound, in a Specification, to take into consideration in construing it everything you find in the Specification…" 49 In Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 597-8, in the context of a complete specification, as in the present case, Menzies J looked at the specification as a whole, including the claims, to find a description of the invention: "I consider, however, that in this case it is possible upon consideration of the specification as a whole including the claims, to find a description of the invention and that in so far as any claim does not claim that invention, it is itself invalid, … I nevertheless regard the complete specification as fully describing the invention in the manner already stated." (Emphasis added) 50 These remarks of his Honour were endorsed on appeal by Dixon CJ, Kitto and Windeyer JJ at 614, where their Honours added: "The words on which the appellant relies do not really operate to incorporate into the description of the invention the body of the specification matters which appear for the first time in the claims …" 51 In the present case, the feature of being "liquid pervious" cannot be said to appear for the first time in the claims as a requirement of the invention: see also Svendsen. It is highlighted as the "preferred" approach in the second embodiment. 52 In Kauzal v Lee (1936) 58 CLR 670, the specification description of the sheep drencher there in question stated (at 671): "Preferably, however, the reservoir is of such size and shape that it may be comfortably suspended from the shoulders of the operator ..." 53 In the joint judgment of Dixon and McTiernan JJ, their Honours said at 687, in relation to the expression "preferably": "The reference in the present claim to the plunger removes one difficulty arising from the body of the specification. It removes the uncertainty created by the use of the words 'preferably' and 'preferred' in referring to the apparatus illustrated in the drawings and describing it as 'plunger-operated'" (Emphasis added) 54 These observations make it clear that an ambiguity or uncertainty in the description as to what is the invention can be made good by reference to the claims. 55 It was also submitted for Arico that there is a difference between an obligation to "fully describe" an invention and an obligation to "disclose" the nature of the invention. In my view, there is no difference. The basic issue is whether the body of the specification, when read in the context of the whole instrument, makes a real and reasonably clear disclosure of what is claimed so that the invention is broadly described: see Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 92, citing Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 at 304. 56 In the present case, in my view, a reasonably skilled and experienced reader would discern from the language used in the body of the specifications with respect to the second embodiment, when read as a whole together with the claims, that an essential integer of the invention is that the flaps must be of fluid pervious material. 57 It is correct that the expression "fluid pervious" is a relative one which can cover a range of degrees of perviousness and to that extent it could be described as an "inexact" standard. However, bearing in mind that the addressee is a skilled competent workman who is permitted to undertake non-inventive trials in order to determine the optimum degree of permeability, the specification, in my view, should not be revoked on this basis. The requirement of a relative criterion does not of itself make the description insufficient. This is illustrated by the case law. In Nesbit Evans at 95, Lindgren J (with whom Hill J agreed) said that: "… it is not unusual for a claim to define an invention partly by the use of a relative expression which necessitates the exercise of judgment … and so long as the claims provide a workable standard suitable for the intended use, they will be valid … The expressions in question must be understood in a practical, common sense manner." 58 In that case the relative expression considered by his Honour was "radius comparable to the average length of a human thigh bone" and it was held that this inexact expression was not ambiguous. In the leading case of Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253 at 273 ff, Aickin J considered and found unambiguous the inexact requirement that tape should be "relatively inextensible". His Honour characterised the expression as a simple and pragmatic criterion and one likely to be understood by those who use surgical tape or who would after expiration of the patent wish to manufacture it. At 274, his Honour said that: "Lack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use …" 59 In Leonardis v Sartas (No 1) Pty Ltd (1996) 67 FCR 126 ("Leonardis"), the Court referred to expressions "substantially", "relatively small" and "substantial effect" in a specification, but held that they did not prevent or defeat a "fair basing" claim. 60 The above authorities lead me to the conclusion that the expressions "fluid permeable" or "pervious" are not too uncertain to provide an adequate description of the required standard. 61 For these reasons the submission that the invention is not fully described in the specification is rejected
Fair basing 62 The submissions on fair basing overlap but are not identical to those in the full description requirement. The requirement in s 40(3) of the Act is that the claims must be "clear and succinct and fairly based on the matter described in the specification". While the expression "fairly based" has received a deal of judicial attention in the context of claims based on a provisional specification, the Court has not been referred to any direct line of authority in the case of a complete specification. 63 The principles relevant to fair basing were recently considered by the Full Court in Leonardis. The judgment of the Court contains a comprehensive review of the authorities relating to fair basing. The case was concerned with the question whether there was fair basis for the claims to be found in a provisional specification in relation to the pouring of concrete. It is not necessary to re-canvas the authorities there referred to for the purposes of this appeal. See also the discussion by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd [1999] FCA 628 at par 195-200. 64 There is no doubt that drawings can be taken into account and indeed relied on solely to ascertain the essential integers of the invention: see Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 at 11. In that case, Fullagar J referred to the need for a "real and reasonably clear disclosure of the invention". 65 One approach to questions of fair basing, which has received wide acceptance, is that accepted by Lloyd-Jacob J in Mond Nickel Co Ltd's Application [1956] RPC 189 at 194, where his Lordship said it was necessary to investigate the following three questions: 1. Whether the alleged invention as claimed can be said to have been broadly described in the provisional specification. 2. Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed? 3. Does the claim include as a characteristic of the invention a feature as to which the provisional specification is wholly silent? 66 As will be apparent, the Mond Nickel case concerned the construction of a provisional specification to determine whether there had been sufficient disclosure. The questions posed by his Lordship contemplate a broad approach to the questions as opposed to a narrow or technical approach. The decision does not provide a conclusive test applicable in all circumstances, but it is helpful in determining an issue of fair basing to take the answers to the questions there posed into account. In so doing, however, attention must not be distracted from the central issue, which is whether the claims extend beyond the disclosure made in the complete specification considered as a whole. 67 As far as the first requirement is concerned, in the present case the abstract discloses a faecal containment flap. It indicates that the purpose of the flap is to "contain" material, and when read with other parts of the description, it is evident that this material includes liquefied matter from bowel movements, particularly those of an explosive nature. This is followed by a reference to the description that "the flap tends to form a second inwardly facing barrier". This reference to "barrier" is consistent with the absence of a complete restriction and with a slowing down process, as is the following phrase, which refers to the flap being "particularly adapted to contain bowel movements". In its second embodiment, the flap is described as being a "vapor and/or fluid permeable". It is not suggested that the word "fluid permeable" has any connotation other than that the material is fluid pervious. (In the Macquarie Dictionary (1995 reprint), the expression "permeable" is used as a synonym for "pervious"). Having regard to these features it can be concluded that the invention has been both fully and broadly described in the complete specification. The first question posed by Lloyd-Jacob J in Mond Nickel, should therefore be answered in the affirmative. 68 The second question is whether there is anything inconsistent between the specification and the claims. While it is correct that expressions are used in the abstract and description of the invention such as "containment", "stopping" "barrier" and "isolating", these expressions are not inconsistent, when used in the context in which they are used, with the basic concept of fluid "pervious" flaps. Each of the above expressions is capable of referring to a retarding process or a process of restricting and slowing down the passage of fluids. By way of example, a barrier may be placed across a river or stream with a view to slowing down the speed at which the water flows. Similarly, the word "contain" carries the connotation of restricting the rate of flow as in the expression, for example, "containment to manageable proportion", or "containment of flood waters". The question should be answered in the negative. 69 The third question posed by the Mond Nickel criteria is whether the claim included a characteristic feature as to which the specification is wholly silent. The description of the invention in the present case cannot be said to be wholly silent as to the requirement of the material being "liquid pervious". It refers to "fluid permeable" which in substance is identical. Accordingly, the three criteria prescribed in Mond Nickel are satisfied in the present case. 70 It should be noted in relation to the Svendsen case, that although Kitto J there refers to the specification not describing the invention because it does not enable the reader to discern what was the invention in the total thing that it describes, his Honour does not suggest that it is necessary for the draftsman specifically to identify the inventive step as being an inventive step. It is sufficient that the invention itself is described in such a way as to enable a skilled and experienced person to "discern" the integers of the invention. The relevant integer in this case is the liquid pervious quality of the flaps. These are within the description of "fluid permeable" used in the body of the specification in relation to the second embodiment. This is not a case where the claims can be said to travel beyond what is set out in the description. In the present case the integer of the flaps being liquid permeable is narrower than the description which refers to the flap material being "vapour and/or fluid permeable". Accordingly the claim is narrower in ambit than the description. 71 I do not consider that lack of fair basis as a ground of invalidity has been made out.
Novelty 72 Arico submits that the invention as claimed was not new because it was disclosed by the Beckestrom patent which was published in Australian before the priority date. 73 The test for lack of novelty was stated by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235: "The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether anticipation would, if the patent were valid, constitute an infringement." 74 It is common ground that the prior anticipation must disclose to a skilled addressee with common general knowledge of the art, the whole of the claimed invention including every essential integer subject only to the substitution of inessential mechanical equivalents for inessential integers: see Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 527-8. 75 The primary judge on the present case rejected the arguments based on novelty. 76 The Beckestrom patent is entitled "Protection against incontinence or diaper". The invention is related to protectors against incontinence or diaper having a liquid-tight outer layer such as a plastic sheet on which an absorbent layer is fixed. The disadvantage of such protectors was that they would tension against the skin when they attached to the thighs, so that movement of the thighs could affect the position of the diaper and its sealing ability, giving rise to risk of leakage. The object of the invention was: "…to design a protector of the aforementioned type in such a way that it provides a reliable liquid-tight sealing of the crotch area also during thigh movements." 77 The aim was therefore to provide "liquid-tight sealing" whether the wearer moved or not. The purpose is to provide a more effective seal during thigh movement, thereby preventing any leakage. 78 The nature of the invention is further spelled out as follows: "According to the invention, the improvement of known protectors of this type is achieved in that the outer liquid-tight layer [under the absorbent pad] is provided with relatively wide lateral portions which are folded inwards and extend along the entire length of the protector. These are connected at their ends to the mid section of the outer layer and have an elastic band, an elastic thread or such like arranged at the inner free edges on the opposite side. The distance between the inner free lateral edges is approximately half that of the width of the absorbent layer in its mid section. When the diaper is placed between the thighs at the crotch, the elastic edges form creases at the thighs and seal against the same. Usually, the diaper is held in place with a pair of briefs or a girdle or such like. The connection between the elastic lateral edges and the mid section of the absorbent layer is achieved according to the invention by means of inwardly folded lateral flaps of the outer layer which function as the folds of an easily moveable bellow. The mid section of the absorbent layer can thus make substantial movements in various directions as the bellow folds are unfolded to a greater or lesser extent, without transmitting these movements to the sealing lateral edges. The seal is hereby maintained with greater security. The diaper is also more comfortable to wear." 79 There are folded side flaps which have a top layer of liquid-permeable woven or non-woven textile material which is connected to the side flaps. There is then a velcro strip fixed to the middle area and which holds the diaper in position. 80 The fitting of the diaper is described as follows: "When the diaper is grasped at its ends and pulled up between the thighs to the position of use, the elastic edges 19, 20 will come into sealing and elastic contact with the thigh creases in the crotch. The a pair of briefs is put on which presses the absorbent layer 10 into the crotch between the legs. The portions 17A, 18A of the side flaps 17, 18 will be folded up thereby to a greater of lesser extent and form a moveable connection between the lateral edges 19, 20 and the mid section 11 of the absorbent layer 10, so that it can move relatively freely without affecting the lateral edge 19, 20 and their seal." 81 Claim 3 of Beckestrom refers to liquid permeable material being fixed onto the inwardly folded side flaps. 82 From the above it can be seen that the purposes of the inventions are different. The KCA invention is designed to provide a further internal barrier which can cope with explosive liquefied bowel movements by providing an inwardly facing barrier adapted for that purpose. The Beckestrom invention is, on the other hand, directed to seal the crotch area during particular types of body movement, namely thigh movement. It is directed to sealing rather than containment. It is an essential integer of the KCA patent that the flap would serve to form or define an internal barrier or containment whereas there is no such requirement in the Beckestrom patent. 83 Moreover, Beckestrom provides for the mid section of the absorbent layer to move in various directions as the material unfolds and it contemplates flaps which function as the folds of a moveable bellow. This requirement is not found in the KCA patent. 84 In addition, in Beckestrom the side flaps are shown as being formed from the impervious backing sheet and do not satisfy the KCA requirement that they should be "fluid pervious". 85 For these reasons, the Beckestrom patent does not affect the novelty of the KCA patent. Manner of Manufacture 86 Arico submits, for essentially the same reasons as given in the submissions on novelty that the KCA patent does not disclose an invention and that it shows no more than a mere analogous use of the diaper the subject of the Beckestrom patent . 87 The question pressed is whether the specification only discloses a new use of a particular known invention: Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 250. This challenge is available where there is no disclosure or there is no new method of manufacture or improvement suggested. 88 The KCA patent was granted under the Patents Act 1952. As Burchett J stated, it would be erroneous in the absence of the lack of an inventive step being shown on the face of the specification, to consider matters that could be raised on grounds of obviousness or lack of novelty in a case under the 1952 Act. This is in accordance with the High Court's decision in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 188-190. The Full Federal Court was there held to have erred in considering matters that could have arisen under obviousness or lack of novelty but which were not raised under these challenges. Accordingly, in the present case the disclosure in Beckestrom, which was a prior document, should not be taken into consideration. On this appeal obviousness was not argued and for reasons given earlier the argument based on lack of novelty has been rejected.
Infringement 89 The relevant principles when considering questions of infringement are well settled. It is necessary to take into account the substance of the matter and to take a purposive approach to the meaning of the claim. As Menzies J pointed out in Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 168, if the alleged infringement differs materially from an essential feature of the plaintiffs claim, there can be no infringement. However, at 167 his Honour said: "Patent rights are not to be set at nought by such a subterfuge which … added nothing to the equipment and was made merely in an attempt to take full advantage of the invention while avoiding infringement of the plaintiff's letters patent by a modification so small as to be insignificant." 90 This principle is echoed by Burchett J in the present case where he refers to "token strips" not defeating patent rights. 91 In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 286, Aickin J said: "…it remains the law that a defendant may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim." 92 In Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, the House of Lords held that a variation of a rear support member differing from the vertical by 6° to 8ş had a "negligible effect on the structural function of the member" and therefore did not defeat the claim for infringement. Lord Diplock, in that case, emphasised that a patent application must be given a purposive construction. See also Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, where the purposive test propounded by Lord Diplock was taken to be the correct approach to determine the meaning of the claim, and in particular in establishing what were the essential integers. 93 Arico relies on two requirements of the KCA patent claims 1 and 2 which are said to be absent from the Arico nappy. It contends that the first claim requires that the liquid pervious bodyside liner be coterminous with the back sheet and that this is not the case in the Arico nappy. It is also said that claim 2 requires that the bodyside liner together with the back sheet should define the waist and crotch sections and that this is not the case in the Arico nappy. It further submits that in claims 1 and 2, as a separate integer, the fluid pervious flaps must be attached to or formed from the body sideliner. Because of the distinction, it is said that the flaps cannot be at the same time attached to and different from the bodyside liner and yet be the bodyside liner itself. In the case of Arico's nappy, it is submitted, the flaps are attached to but not formed from the liner, and that it is the flaps that are coterminous with the edges of the back sheet, with the bodyside liner being restricted to covering the absorbent pad. Because KCA chose to require that the bodyside liner be coterminous with the back sheet, Arico submits that therefore there is no infringement because this feature is missing from its product. 94 Burchett J did not consider that the construction of the bodyside liner avoided infringement. His Honour pointed out that the claims did not specify that this integer must compromise a seamless sheet of homogenous material but only that it should be liquid pervious. His Honour considered that as a matter of substance the composite body sideliner of the Arico product was coterminous with the back sheet, and that in combination with the back sheet it defined the waist and crotch section. His Honour was satisfied on the evidence that the added material both in the bodyside liner and in the flaps used in the Arico nappy were liquid pervious. His Honour was of the view that "token strips" at the sides could not be allowed to defeat the rights conferred on KCA under the patent. He considered that Arico had left out no essential elements of the invention but had put in something extra which did not affect the way the nappy operated. 95 KCA submitted on the appeal that the modification made in the Arico nappy was so small as to be insignificant and that it should not avoid infringement. It pointed out that the claims did not require that the bodyside liner must be of homogenous material. The evidence did not indicate that the modifications made any difference to the way in which the nappy operated and to that extent the variation is of no significance. As counsel for KCA pointed out, no witness was called by Arico to explain the development of or any advantages of the Arico flap design. 96 The white bodyside liner in Arico's nappy does not extend so that it co-extensive or coterminous with the back sheet material defining the waist and crotch sections, but the blue material attached to the bodyside liner does so extend and that material is of a liquid pervious nature as found by his Honour. For all practical purposes the bodyside liner is, as his Honour indicated, coextensive with the back sheet. The small additional strip is really of a token nature and is of no significance when regard is had to the substance of the essential integers of the invention. 97 The blue material in the Arico nappy also forms the flaps. The specification does not require that the material forming the flaps must be the same as that of the bodyside liner. It may be formed from it or it may be attached to it. The important requirement is that the material must be liquid pervious. Indeed, the word "attached" indicates that the flaps can be different to the bodyside liner material or can be the same. The finding of his Honour that the material is liquid pervious therefore leads to the conclusion that the essential integers are present in the Arico product; and to the extent that there is any difference, such difference is so insignificant as to provide no defence to the infringement claim in the present case. 98 Accordingly, I consider that there has been an infringement of the KCA patent by the Arico product. 99 Arico also submitted that his Honour's analysis of Beckestrom is in contrast to his analysis of the Arico nappy for the purposes of ascertaining infringement. However, the short answer to this submission is that the integers said to be absent from the Arico nappy are different from those which distinguished the Beckestrom patent. In the case of the Arico nappy, reliance was placed on the absence of co-extensiveness and the requirement of attachment of the flaps to the body sideliner, whereas in Beckestrom the concern was with the absence of the waste containment pocket. 100 For the above reasons I am not satisfied that his Honour erred in finding that there was an infringement.
Conclusion 101 The appellant has not made out the grounds for revocation of the patent and the respondent has made out its case of infringement. Accordingly, the appeal should be dismissed with costs. I certify that the preceding eighty-five (85) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin .
Associate: Dated: 30 August 1999 Counsel for the Appellants: A Bennett SC K Howard
Solicitor for the Appellants: Banki Haddock Fiora
Counsel for the Respondent: D K Catterns QC S J Goddard
Solicitor for the Respondents: Sprusons Solicitors
Arico Trading International Pty Ltd
Kimberly-Clark Australia Pty Ltd
(1988) 81 ALR 79
(1997) 37 IPR 523
(1936) 58 CLR 670
(1961) 106 CLR 588
(1968) 119 CLR 156
(1993) 43 FCR 239
(1988) 13 IPR 385
(1997) 39 IPR 56
(1980) 144 CLR 253
(1996) 67 FCR 126
(1958) 100 CLR 5
(1977) 137 CLR 228
(1990) 91 ALR 513
(1959) 102 CLR 232
(1998) 194 CLR 171
(1970) 180 CLR 160
(1950) 83 CLR 617
(1988) 11 IPR 289
(1982) 41 ALR 471