E. I. Du Pont De Nemours and Company v Imperial Chemical Industries PLC - [2006] FCA 1402 - FCA 2006 case summary — Zoe

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E. I. Du Pont De Nemours and Company v Imperial Chemical Industries PLC

[2006] FCA 1402

Federal Court of Australia|2006-10-31|Before: Branson J, Gyles J

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At a glance

Source facts

Court

Federal Court of Australia

Decision date

2006-10-31

Before

Branson J, Gyles J

Source

Original judgment source is linked above.

Judgment (58 paragraphs)

[1]

REASONS FOR JUDGMENT 1 A Divisional Application for a patent by the first respondent, Imperial Chemical Industries PLC (ICI), has been accepted by a delegate of the second respondent, the Commissioner of Patents. The applicant, E. I. Du Pont de Nemours and Company (Du Pont), has filed a notice of opposition to ICI's application. Du Pont contends that there are issue estoppels between ICI and Du Pont to the effect that the alleged invention as defined in all of the claims of the opposed application is not novel arising from: (1) the reasons for judgment and orders of Branson J in Federal Court of Australia proceeding N1248 of 1999; (2) the reasons for judgment and orders of the Full Court of the Federal Court of Australia (on appeal from Branson J) in proceeding N360 of 2002. Du Pont seeks relief to give effect to those estoppels. 2 ICI raises procedural and substantive issues in opposition to that claim for relief. I do not need to deal with all of those issues as, in my opinion, the applicant's claim fails at the threshold - there is no identity between any issue decided by Branson J or the Full Court, on the one hand, and any issue which falls for determination in relation to this opposed Divisional Application, on the other. It will be necessary to trace the various proceedings in a little detail in order to explain that conclusion. 3 On 12 March 2002 Branson J delivered reasons for judgment in two proceedings: N1248 of 1999, which related to Patent Application No 658005 and N1249 of 1999, which related to Patent Application No 654176. Each was an 'appeal' against a decision of a delegate of the Commissioner of Patents. Du Pont was the 'appellant' in each case and ICI was the respondent in each case, ICI being the applicant for each patent and Du Pont the unsuccessful opponent in each case. Two 'appeals' were heard together and decided at the same time in the same set of reasons (E I Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; (2002) AIPC 97-788; [2002] FCA 230).

[2]

Proceeding N1248 of 1999 - Patent Application No 658005 4 The description of the invention in the complete specification commences: 'The present invention relates generally to working fluid compositions contained in heat transfer devices which comprise the lubricant and a heat transfer fluid.' 5 Branson J dealt with the claims as follows (at [22]): 'All of the claims defining the invention are concerned with a "working fluid composition". Claim 1 is the only independent claim. It is expressed as follows: "A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2‑tetrafluoroethane and pentafluoroethane; and (B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula: O | | R(O-C-R1)n | | wherein R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol; each R1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and n is an integer." ' [emphasis added] 6 It is also relevant to note claims 2, 3, 4 and 16, which were as follows: '2. A working fluid composition as claimed in claim 1 wherein the heat transfer fluid (A) is a binary mixture consisting substantially of 1,1,1,2-tetrafluoroethane and difluoromethane.

[8]

It will be appreciated that the binary mixtures of R-134a and R-32 and the ternary mixtures of R-134a, R-32 and R-125 which form the subject of the above Examples can also be used in combination with other neopentyl polyol ester type lubricants to yield viable working fluid compositions. Moreover, binary mixtures of R-134a and R-32 and ternary mixtures of R-134a, R-32 and R-125 comprising different proportions of the constituent hydrofluoroalkanes to the mixtures exemplified above can also be used in combination with neopentyl polyol ester type lubricants to yield viable working fluid compositions.' 8 It should be noted that refrigerants are classified according to a numbering system. It is sufficient for present purposes to know that difluoromethane is known as R-32, 1,1,1,2-tetrafluoroethane is known as R-134(a) and pentafluoroethane is known as R-125. 9 Patent 54480/90, known as 'the Lubrizol Patent', was relied upon by Du Pont before the delegate as anticipating the patent under consideration. Branson J adopted a summary of the specification of that Patent from the judgment of Emmett J in ICI Chemicals v Lubrizol Corporation (1999) 45 IPR 577, at [35]-[45] as follows: 'The specification states that the alleged invention relates to liquid compositions comprising a major amount of at least one fluorine containing hydrocarbon and a minor amount of at least one lubricant. After describing the background of the alleged invention, referring to the ODP of CFCs, the patent states that HCFC-22 and HFC-134a are generally recommended as being alternatives to CFCs in refrigerant applications and that HFC-134a is particularly attractive because its ODP has been reported as being zero. The specification refers to the need for any proposed replacement refrigerant to be compatible with the lubricant in the compressor and the fact that the proposed new alternative refrigerants have solubility characteristics different from the refrigerants presently in use. The specification stated that the problem was particularly evident in automotive air conditioning since the compressors are not separately lubricated but a mixture of refrigerant and lubricant circulates throughout the entire system.

[46]

(B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula: [formula follows]' That claim is similar in scope (although not in form) to claim 4 of the Parent Application and is similar to claim 10 of Application 654176. A delegate of the Commissioner refused the Divisional Application on the basis it lacked novelty and refused an opportunity to propose further amendments. One ground of that decision was that there was an issue estoppel created by the judgment of Branson J but for the fact that the parties were not the same. (Re Application by Imperial Chemical Industries PLC (2003) 60 IPR 610). 23 On 24 October 2003 ICI appealed against that decision to the Court and the matter came on before Crennan J. Du Pont sought leave to appear before Crennan J as amicus curiae and submitted that it was an abuse of process for ICI to reargue before Crennan J a matter decided by Branson J. Leave was refused (Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399;(2004) 63 IPR 476; (2004) AIPC 92-055 at [36]). The matter proceeded in the absence of Du Pont. 24 In the course of rejecting Du Pont's application for joinder, Crennan J said (at [45]): 'It is relevant to note that it was sufficient for her Honour's [Branson J's] disposal of the proceeding before her to find that Claim 1 of the parent application lacked novelty over the Lubrizol patent. In making that ultimate finding of fact, it was not necessary for her Honour to deal with Claim 4 of the parent application, that is the claim to the specific ternary mixture of HFCs which the applicant now claims. Furthermore, her Honour's finding that integer (A) of the Lubrizol patent encompassed ternary and higher mixtures of HFCs and her implicit finding that the Lubrizol patent taught mixtures of HFCs is not to be confused with, or taken to be equivalent to, a much narrower finding that integer (A), or the Lubrizol patent as a whole, taught that is, disclosed for novelty purposes) the specific ternary mixture of HFCs which the applicant now claims. Her Honour made no such narrow finding and her judgment (at [144]) suggests to me that this was deliberate rather than constituting some inconsistency in her Honour's reasons. Such a narrow finding was unnecessary because it could not be said that the question of whether or not the Lubrizol patent taught the specific ternary mixture of HFCs now sought to be claimed "was a fact fundamental to the decision arrived at" as that phrase is explained by Dixon J. in Blair v Curran (1939) 62 CLR 464 at 532. For me to now consider that narrow issue, on evidence which was not before her Honour, cannot impugn her Honour's decision in relation to a much wider question of anticipation.' 25 On 16 December 2004 it was ordered that the appeal be allowed, that the decision of the delegate be set aside and that the matter be remitted to the delegate to reconsider the application and amendments proposed by the applicant in accordance with the Court's reasons for judgment (see Imperial Chemicals Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 319; (2004) 63 IPR 476; (2004) AIPC 92-055 at [87]). 26 Crennan J said (at [64]-[68]): 'Questions of anticipation can be difficult in cases where a broad chemical claim in an alleged anticipatory document, in its terms, encompasses many, even thousands of compounds. Questions can arise as to whether such a broad claim in a patent (or even a divisional thereof) discloses, sub silentio, a particular compound from the broad class, which is the subject matter of a later application.

[51]

Decision 28 In my respectful opinion, the decision and reasoning of Crennan J were correct. The decision by Branson J as to the lack of novelty of Application 658005 was entirely based upon consideration of claim 1 in the light of the Lubrizol patent and the Full Court, on the leave application, approached the matter in the same way. Branson J noted that claim 1 was the only independent claim and dealt with it. It followed that all dependent claims, including claim 4, fell with the invalid principal claim 1. The fact that ICI might have sought to amend claim 4 is not relevant. It did not do so. What Crennan J called the narrow question simply never arose before, and was not considered by, Branson J. This explains the apparent contradiction between the approach to novelty taken in relation to Application 654176, on the one hand, and Application 658005 on the other, in the same set of reasons. When Branson J focused upon the refrigerant aspects of claim 4, she approached the issue in the same way and reached the same conclusion in substance as that later reached by Crennan J. If Du Pont's analysis were correct, the inconsistency between the two approaches by Branson J would be startling. Furthermore, it would be surprising if Branson J and the Full Court had dealt with the question of novelty of claim 4 of Application 658005 in the pre-emptory way that they respectively did if it had been considered as an independent claim. It is most unlikely that either would have disposed of the question without even noticing or discussing the issues which would clearly arise in that event, as exemplified by the decision of Branson J in relation to Application 654176 and Crennan J in relation to the Divisional Application in suit here. 29 As there is no identity between any issue found by Branson J, confirmed by the Full Court, on the one hand, and any issue for determination in the present application, on the other, there can be no issue estoppel (Kuligowski v Metrobus (2004) 220 CLR 363 at [21], [40]-[54]). 30 I cannot see that the questions raised by Du Pont as to the propriety of the filing of the Divisional Application by ICI have any relevance to establishing the issue estoppels pleaded. 31 The proceeding should be dismissed. The applicant is to pay the costs of the respondents. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles.