The Authorities
122 GSK relied on a number of authorities concerned with the correction of errors in patent specifications which it contended supported its position.
123 The first of these was Simpson v Holliday (1865) 12 LT 99. That case concerned, amongst other issues, allegations that the patent was void for insufficiency and inutility because the specification described two different processes one of which required the application of heat and another that did not. In the Court of Appeal in Chancery, Lord Westbury LC, when addressing the defendant's contention that the scope of the invention as described in the specification extended to a process that was useless, said at 99-100:
If a specification alleges a particular process, which may be slow, troublesome and expensive, is effective, and the statement is untrue, the vice is not removed by the fact that the same specification also describes another process which is efficient and which is stated to be speedy, certain and economical. When it is said that an error in a specification, which any workman of ordinary skill and experience would perceive and correct, will not vitiate a patent, it must be understood of errors which appear on the face of the specification, or the drawings it refers to; or which would be once discovered and corrected in following out the instructions given for any process or manufacture, and the reason is, because such errors cannot possibly mislead. But the proposition is not a correct statement of the law, if applied to errors which are discoverable only by experiment and further inquiry.
124 On appeal, Lord Chelmsford (with whom Lord Cranworth agreed) said at 320-321:
It was contended, on the part of the Appellants, that the word "or" in the specification ought to be read "and." But there is nothing in the terms of the descriptions, nor upon the face of the specification itself, which would justify the Court in thus changing the form of the expression. It was also said that there was a considerable body of evidence to shew that skilled persons, to whom the specification must be taken to be addressed, found no difficulty in working it out, and applied heat in the process as a matter of course. This, however, cannot have any effect upon the construction of the specification. It merely proves that the description, though erroneous, is not likely to mislead skilled workmen. That the description may induce the necessity of experiments appears from the evidence of an experienced chemist, who says, "If I found there was no action without heat, I should heat it immediately."
125 We do not think either of these statements of principles is of any real assistance in this case. Their Lordships were concerned with the sufficiency of the description of an invention and whether the patent might not be void if the skilled addressee could work out that it was necessary to perform the invention in a useful manner. Importantly, the fact that the skilled addressee might have no difficulty in working out that it was necessary to apply heat, and that the skilled addressee was not likely to be misled by the specification, was not considered sufficient to avoid the conclusion that the patent was void.
126 GSK also relied on the decision of Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479, which is the decision that is cited by Mr Bodkin in support of the statement in his work to which we previously referred. In Sartas, claim 12 was to:
A spacer for a building foundation form work arrangement wherein a plurality of boxes are located in spaced apart relationship to define therebetween channels, the spacer including outermost engaging surfaces adapted to engage against both sides adjoining a corner of a first box, and at the same time against both corners [sides] adjoining a corner…
(emphasis added)
127 It was common ground before Gummow J that the word "corners" should read "sides". His Honour said at 488:
One preliminary point should be mentioned. It concerns the fifty-first word in claim 12. This reads "corners". If the claim is read in this form it is clear that there is no infringement. At the trial, in the end it was accepted by all counsel that "corners" should read "sides". If the significance of the discrepancy concerned no more than the parties presently before the court, then there might be scope for application of a principle that no formal amendment was necessary because the true meaning was apparent as a matter of construction; cf Fitzgerald v Masters (1956) 95 CLR 420 at 426-7; Watson v Phipps (1985) 63 ALR 321 at 322; 60 ALJR 1 at 3.
But, of course, the specification operates to confer rights in rem and the legislation makes specific provision for amendment. Further, I was told that infringement litigation concerning the patent is on foot in another court against [third] parties …
Accordingly, on the last day of the trial, 2 September 1994, I gave directions for the advertisement of a motion seeking amendment of claim 12. The notice of motion will be made returnable no earlier than 14 days after delivery of these reasons for judgment. In the meantime, it was accepted that I should proceed to determine this case on the footing that claim 12 uses the term "sides" rather than "corners".
128 His Honour, who delivered reasons for judgment on 2 December 1994, found that claim 12 was not infringed and was also invalid for reasons that had nothing to do with the error in that claim. However, he indicated at 512 that he would not make final orders until after he had disposed of the motion seeking the amendment of claim 12.
129 An appeal to the Full Court was allowed in part but not in relation to the infringement issue: Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 (Burchett, Hill and Tamberlin JJ). The Full Court described the error in claim 12 as "an obvious falsa demonstratio" and noted that Gummow J made an order on 19 December 1994 amending the patent to correct the error. Our review of the Court's records confirms that his Honour made orders on 19 December 1994 correcting the error in claim 12 before making an order revoking the patent.
130 We do not think that Sartas assists GSK's position. On the contrary, the procedure followed by Gummow J in that case is consistent with the view that the error in claim 12 could only be corrected by amendment.
131 The next decision relied on by GSK was that of Judge Birss QC (as he then was) in Lizzanno Partitions (UK) Limited v Interiors Manufacturing Limited [2013] EWPCC 12. The case concerned a patent for internal glass partitions that included a gasket comprising hollow tubing made from a "non-rigid" material. His Honour noted that the specification stated that the hollow tube could be made of any suitable non-rigid material and that usually the hollow tube will comprise a plastic material such as uPVC (an abbreviation for unplasticised PVC). But his Honour also found that this would be potentially confusing as no skilled addressee would regard uPVC as a non-rigid material. Indeed, his Honour found that "[n]o-one would think that the patent really meant that one could use uPVC."
132 Claim 10 required that the gasket be made of uPVC. On the question of the infringement of this claim, Judge Birss QC said at [78]:
The argument is I think that because it is obvious that the references to uPVC in the specification are a mistake, the true interpretation of claim 10 is that it is a claim to PVC and not uPVC. I do not propose to spend much time on this. I do not agree. It is one thing to read the description fairly, realise that the reference to uPVC there must be the result of an error and so read the document as a whole bearing in mind that uPVC is not flexible plastic; it is quite another to come to a conclusion that a patent claim to uPVC actually means something else. For that to get off the ground the correction of the mistake would have to be clear as well but it is not. Perhaps the patentee genuinely thought uPVC was flexible and meant to claim it. This would still not affect the overall interpretation of the patent but it would not justify reading claim 10 as if it was a claim to PVC. I reject the allegation of infringement of claim 10.
133 Properly understood, this case does not assist GSK. Judge Birss QC was unwilling to read uPVC to mean PVC in claim 10 even though no skilled addressee would understand the patent to teach the use of uPVC in the invention described in the specification.
134 GSK also relied on a decision of the High Court of Eire in Farbwerke Hoechst Aktiengesellschaft v Intercontinental Pharmaceutical (EIRE) Limited [1968] FSR 187. In that case Kenny J concluded that there was an error in dependent claim 8 which referred to a "formula R1 - NH2 in which R and R1 have the meanings given above". In fact, claim 1 (on which claim 8 was dependent) defined R1, R2 and R3 but not R. Kenny J said at 189:
As there is no R in any of the claims, the reference to it in claim 8 is an obvious error and the sentence should read "in which R1, R2 and R3 have the meanings given above". This error did not mislead any of the expert scientists who gave evidence or who have acted as counsel in this case and does not invalidate the patent (see the speech of Lord Westbury in Simpson v Holliday (1866) L.R. 1 H.L. 315) [sic].
135 We do not doubt that the result in Farbwerke Hoechst was correct, but not because the error would not mislead the skilled addressee. It seems to us to be a perfectly reasonable construction of claim 8 to say that R1, R2 and R3 are to take their meaning from claim 1. While it is true that R was not defined in claim 1 (or anywhere else it seems), it is also true that R was not itself used in the formula in claim 8. So the definition of R in claim 8 was truly otiose, and could be disregarded on that basis. We do not think that approach involves any re-writing of the claims. The position would be quite different if R had been used in the formula.