ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc - [1999] FCA 662 - FCA 1999 case summary — Zoe

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ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc

[1999] FCA 662

Federal Court of Australia|1999-05-20|Before: Emmett J

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Source facts

Court

Federal Court of Australia

Decision date

1999-05-20

Before

Emmett J

Source

Original judgment source is linked above.

Judgment (64 paragraphs)

[1]

REASONS FOR JUDGMENT 1 On 31 March 1999, I published my reasons for conclusions which I had reached on the question of validity of the Patent and on the question of infringement, on the assumption that the Patent is valid. One of the questions which arose concerning validity of the Patent was alleged failure to comply with section 40 of the 1990 Act. Specifically, ICI contended that, as a consequence of the abandonment by Lubrizol of claims 1 and 4 to 9, the remaining claims do not conform to the Specification in that the Specification is too wide. It was said that, in those circumstances, the remaining claims are not fairly based on the matter described in the Specification as is required by section 40(3) of the 1990 Act. I concluded that amendment would be required to achieve conformity between the body of the Specification and the claims which are maintained and that in the absence of such amendment, there is a failure to comply with section 40. However, I considered that the consequences of that conclusion should await further argument on the question of amendment under section 105 of the 1990 Act (see paragraphs 158-161). 2 On 27 April 1999, the solicitors for ICI wrote to the solicitors for Lubrizol inquiring how Lubrizol intended to proceed in the matter. The letter intimated that, if Lubrizol intended to apply for amendment of the Patent under section 105 of the 1990 Act, ICI would oppose the application. The letter suggested that directions be given requiring Lubrizol to file any application for an order directing amendment under section 105 after the expiration of the period required by the Rules in relation to advertisement of the proposed amendment. ICI's solicitors also invited Lubrizol to give discovery in respect of various matters. The matters included the following: (a) the date on which Lubrizol first became aware of the use of HCFC refrigerants with the lubricants described in the Patent;

[2]

[7]

FURTHER ARGUMENT 6 A Court should not announce a judgment against a person on a ground which that person has not had an opportunity to argue. However, a sufficient opportunity to argue a ground is given when the ground is logically involved in a proposition that has been raised in the course of argument before the Court or is to be considered by the Court as an unconceded step in determining the validity of a conclusion for which one of the parties contends - Autodesk Inc. v Dyason (No. 2) (1993) 176 CLR 300 at 308. 7 A fortiori, where, in the course of argument, one party has raised a ground in express terms, the other party will have had sufficient opportunity to argue that ground. Jurisdiction to permit further argument on such a question ought not to be exercised for the purpose of enabling one party to re-agitate arguments already considered by the Court. Nor should such a jurisdiction be exercised simply because the party seeking the opportunity of further argument has failed to present the argument in all its aspects or as well as it might have been put. Normally, in order to enliven the exercise of such a jurisdiction, it must be established that the Court has apparently proceeded according to some misapprehension of the facts or the relevant law and that such misapprehension cannot be attributed solely to the neglect or default of the parties seeking the opportunity for further argument - per Mason CJ in Autodesk Inc. at 303. 8 Non-compliance with section 40(3) was one of the grounds of invalidity set out in the Amended Particulars of Invalidity filed by ICI in the proceeding. However, the particulars of that ground did not raise the contention that the consequence of abandonment of claims 1 and 4 to 9 ("the Abandoned Claims") would be that the Specification does not comply with section 40(3). Further, the detailed written submissions prepared by ICI on the question of validity did not advance that contention. The basis for Lubrizol's request that I hear further argument is that, because of those circumstances, counsel for Lubrizol did not fully appreciate that ICI was advancing the contention and, accordingly, did not make any submissions in response to the contention. 9 The matter of disconformity between the Remaining Claims and the body of the Specification was raised clearly enough in the course of oral argument. However, it is fair to say that senior counsel for ICI did not put the matter at the forefront of his submissions. The matter arose in connection with the argument as to whether the Patent was obtained on a false suggestion or representation. That was the context in which senior counsel for ICI referred to Weiss v Lufft (1941) 65 CLR 528, the authority upon which ICI based its contention as to nonconformity. However, I am satisfied that the contention was fairly raised on behalf of ICI. It was raised clearly enough for me to accept it and reach the conclusion contended for by ICI in that regard. 10 I should say that, in preparing my earlier reasons, I assumed that the absence of response from Lubrizol on the matter of disconformity was an indication that Lubrizol accepted ICI's contention and that any adverse consequences as far as Lubrizol was concerned would be dealt with by an application to amend under section 105 of the 1990 Act. Because of the assumption I made, I did not deal with the question at any length. 11 ICI contended that Lubrizol's failure to make any response to ICI's contentions concerning disconformity was an incident of the forensic strategy that Lubrizol adopted in the proceeding. As early as 23 October 1998, following the filing of ICI's evidence, which discussed the disclosures made in the Williamitis Patent, Lubrizol informed ICI of its decision that it would not "submit to the Court that claim 1 is valid in the form in which it is expressed". ICI contended that Lubrizol's strategy was adopted to minimise the extent and impact of any proposed amendments. It was suggested that an inference should be drawn that that strategy was adopted in order to avoid or delay the impact of cases which suggest that "once you get into amendment you must provide complete discovery and you must bare your soul in order to gain the benefit of indulgence from the Court" - see for example Wimmera Industrial Minerals Pty Ltd v R.G.C. Mineral Sands Ltd (1998) 40 IPR 110 and the United Kingdom authorities there referred to. 12 In addition, ICI contended that for Lubrizol to suggest now that the disconformity alleged does not affect the validity of the Remaining Claims is to question the very basis of Lubrizol's success on the question as urged by Lubrizol. That is to say, the central proposition of Lubrizol's case, as it developed during the trial was that claims limited to HFCs, as distinct from HCFCs, were novel in the context of the Williamitis Patent and involved an inventive step. It was contended by ICI that my conclusion at paragraphs 158 to 161, to which I have referred above, follows as a consequence of the legal and factual case advanced by Lubrizol, which focussed on the criticality of HFCs in Lubrizol's claims in comparison with the specification of the Williamitis Patent which mentioned HFCs amongst other compounds. 13 ICI contended, therefore, that because the question of disconformity was properly raised, Lubrizol should be required to adopt one of the following courses: (a) to seek to amend, as contemplated in my original reasons, thereby giving rise to questions of discretion and an alternative priority date;

[12]

"Claims 2, 3 and 10-27 are not fairly based on the matter described in the complete specification. PARTICULARS (i) The claims are limited to cases in which component A of the liquid composition includes at least one fluorine-containing hydrocarbon wherein fluorine is the only halogen present, or is 1,1,1,2-tetrafluoroethane, respectively. (ii) The specification does not support the selection of such components over the other refrigerants disclosed, being fluorine-containing hydrocarbons which also contain halogens other than fluorine. (iii) In the alternative to (ii), the specification is inconsistent with the alleged invention as claimed in the claims in that it describes compositions being fluorine-containing hydrocarbons which are not so limited." 15 In all of the circumstances, I do not consider that I should draw an inference that Lubrizol made a deliberate decision not to make submissions on the question of disconformity. I am satisfied that the failure on the part of Lubrizol to address that question was the result of a misapprehension on the part of counsel for Lubrizol. That misapprehension may have been contributed to, at least in part, by the absence of reference to the question of disconformity in the Particulars of Invalidity and in the written submissions. I do not intend, by that comment, to suggest any criticism of ICI or those representing ICI. On the other hand, even if Lubrizol's position as to abandonment of the Abandoned Claims was not made clear initially, the question of disconformity could have been raised to cover the contingency that ICI succeeded in relation to the Abandoned Claims but failed in respect of the Remaining Claims. 16 This is not a case where orders have been made. Further, the question now raised does not involve any further evidence and the matter was raised as soon as practicable after my earlier reasons had been delivered. Indeed, I am concerned that, in the circumstances, I may have proceeded according to a misapprehension of the facts and the law. I am not satisfied that any such misapprehension should be attributed to the neglect or default of Lubrizol. I consider, therefore, that the interests of justice require that I should have regard to such further submissions as Lubrizol wishes to make in answer to the contention advanced on behalf of ICI on the question of disconformity.

[15]

19 ICI relied on the proposition that, once the Abandoned Claims are removed from the Specification, any references in the body of the Specification to a refrigerant containing chlorine have nothing to do with the invention to which the Patent would then relate. The foreshadowed amendments were said to demonstrate that the body of the Specification is too broad and too general for the Remaining Claims to be fairly based on the matter described in it. 20 The term "fairly based" was first introduced into Australian patent law by the 1952 Act. In the 1952 Act, the term was used in several contexts. In one context, it described the relationship between the claims defining the invention and the matter described in the complete specification. In another it was a criterion for fixing the priority date of a claim of a complete specification that is fairly based on matter disclosed in a preceding provisional specification. The term was also used elsewhere in the 1952 Act, for example, with respect to international applications - see generally CCOM Pty Ltd v Jiejing Pty Ltd (1994) 28 IPR 481 at 496-497. 21 The relationship between the claims defining the invention and the matter described in the complete specification was the subject of section 40(2) of the 1952 Act. That provision is identical to section 40(3) of the 1990 Act. The term "fairly based", when introduced in section 40(2) of the 1952 Act, was apparently a response to the growth of a body of case law dealing with the proposition that a claim should not be wider than warranted by the disclosure made in the body of the specification. At the time of the introduction of the term "fairly based" into Australian patent law, it was not designed to restrict the rights of patentees or applicants for patents. 22 It has been suggested that the meaning of the term, however, was to be understood in the light of the earlier case law. From early in the eighteenth century, letters patent were granted subject to a proviso that obliged the inventor "to describe and ascertain the nature of the said invention, and in what manner the same is to be performed". That proviso was the origin of the modern specification. The proviso served two distinct functions. One was the delimitation of the invention so as to define the monopoly and thereby protected the interests of the grantee. The other was the disclosure of the manner in which the invention was to be performed and thereby protected the interests of the public. The consideration for the monopoly was the free use by the public of the invention at the end of the term of the monopoly, with adequate directions as to how to perform it - see CCOM Pty Ltd v Jiejing Pty Ltd at 497. 23 It is the duty of an inventor, in his or her application for a patent, to give full practical information to the public. Accordingly, the inventor will be bound if, for example, the invention is a process, to include quantities and times that are the best he or she knows. On the other hand, it would be unfair to hold the inventor to such an invention when carried out only with the best quantities and times, because a person could then take the invention in substance if he or she did not take it in quite the best way. The value of the grant would then be virtually nothing - per Fletcher Moulton LJ in British United Shoe Machinery Co. Ltd v A. Fussell & Sons Ltd (1908) 25 RPC 631 at 649-650. 24 Thus, the patentee had an interest in stating his invention in its most general form whereas he was also under a duty to state the invention in its best and therefore in a very special form. For that reason, the practice developed of introducing into specifications language intended to distinguish between that which was there for the practical information of the public and that which was there for the delimitation of the invention. That practice gave rise to the separate part of the specification primarily designed for delimitation, namely, the claims. The body of a specification, on the other hand, must contain sufficient disclosure to the public to support the claims. Clearly, if the disclosure is too narrow for the claims, the claims may not be fairly based on the body of the specification. However, if the body of the specification is so wide that, as a practical matter, it does not disclose to the public the way in which the invention is to be made or used, the specification will not satisfy one of the requirements for the grant of a monopoly for the invention. 25 In Welch Perrin & Co. Pty Ltd v Worrel (1961) 106 CLR 588, the High Court referred to the usual or customary form of a specification. The specification in that case began, after the title, with a preamble stating the subject to which the invention related. That corresponds with the material in the Specification under the heading "Field of the Invention". In accordance with common forms, the specification in Welch Perrin & Co. Pty Ltd went on, by stating the objects of the invention, to show in what ways it was claimed to be in advance of what was previously known. That corresponds with the material under the heading "Background of the Invention" in the Specification. 26 Next, according to the High Court, one might expect to find in a modern specification a general description of what the inventor asserted his invention consisted of, commonly called a "consistory clause". However, that is not an essential part of the body of a specification. It is not required by the legislation and its purpose may be quite well met by the claims themselves. Section 40 of the 1952 Act expressly required the claim or claims to define the invention, as their Honours observed. The High Court referred to the usual practice of using, in the consistory clause, the wording of the broadest of the claims - see generally Welch Perrin & Co. Pty Ltd at pages 610-612. 27 It is common practice for a specification to contain a series of claims descending to more and more particularity in later claims in the hope that, if the earlier should be said to be too wide, the later would be valid and effective to catch some infringers - Welch Perrin & Co. Pty Ltd at 618. Lubrizol relied on the approach adopted by the High Court in that case for the proposition that, while such a form of drafting may make it easier to escape infringement in respect of a narrower claim, there is no suggestion that such a form of drafting will lead to the narrower claim ceasing to have a fair basis because of wider language in the body of the specification. It is no objection to any particular claim that it claims a monopoly for less than every feature described in the body of the relevant specification. It could not be the case, for example, that a claim is restricted to the precise embodiment which is depicted in the body of the specification - see Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 497.

[19]

"A complete specification must fully describe and ascertain the invention and the manner in which it is to be performed and must end with a distinct statement of the invention claimed." 32 The invention in Weiss v Lufft related to improvements in and relating to rotary intaglio printing. Starke J considered (at page 534) that the amended claim under consideration in that case was so ambiguous that it ought not to be allowed unless radical alterations were made in the body of the specification, bringing it more in accord with the directions contained in section 36 of the Act. Williams J (at page 539) considered that the specification before the Court did not, even in relation to the original claims, describe the invention, because it purported to describe as an invention the whole press, whereas the invention was restricted to certain of its parts. 33 The observations of Williams J at 541, to which I referred in my earlier reasons, must be understood in the light of those other comments. Thus, any statement that the body of a specification must conform to the invention delimited in the claims must be understood in the context of sections 40(2) and 40(3), as the successors of section 36 of the 1903 Act. 34 The body of the Specification presently under consideration refers to liquid compositions wherein the fluorine-containing hydrocarbons may also contain some other halogen such as chlorine (pages 6 and 8). At page 8, the Specification states that "in one preferred embodiment the hydrocarbon contains only carbon, hydrogen and fluorine". The phrase emphasised indicates that it is by no means essential that there be no chlorine. The Specification also gives specific examples of fluorine-containing hydrocarbons useful in the invention. The examples comprise three HCFCs as well as HFC-134a. The three HCFCs, of course, contain chlorine. The amendments foreshadowed by Lubrizol are calculated to limit the body of the Specification to refrigerants in which the only halogen present is fluorine, thereby excluding chlorine: that is to say, to limit the matter to HFCs to the exclusion of HCFCs. That is a radical change. 35 If the invention disclosed by the Patent extends to compositions involving refrigerants that include chlorine, as contemplated by the Abandoned Claims, the invention was anticipated by the Williamitis Patent. That is the basis upon which Lubrizol has abandoned these claims. I have held that the Williamitis Patent, on the other hand, does not anticipate the Remaining Claims. I have found that the essence of the invention for which a patent could be granted is the identification of a soluble organic lubricant, having the properties which I identified in my earlier reasons, which is suitable for use in refrigeration systems with HFCs generally and R-134a in particular. That is to say, it is not concerned at all with refrigerants containing chlorine. 36 The question now under consideration is whether the Remaining Claims are fairly based on the matter that is disclosed in the body of the Specification. Put more precisely, the question is whether a claim for an invention consisting of a composition of an organic lubricant and a refrigerant which must not contain chlorine can be said to be fairly based on matter which says that the refrigerant can contain chlorine. 37 ICI contended that there was a failure to comply with the requirement of section 40(3) because the body of the Specification was "indifferent" to the question of whether or not the refrigerant contains chlorine. Senior counsel for ICI said that the Specification, without amendment, "does not teach you anything special about HFCs". He pointed out that, bearing in mind that the claims are not for a lubricant but for a composition, "there is no teaching [in the Specification] that [compositions] which have HFCs are better [than those that do not]".

[22]

Clearly that statement is wrong, once the claims in the Specification are limited to refrigerants which are HFCs and do not extend to refrigerants which are HCFCs. 39 Lubrizol contended, in essence, that claims will be fairly based on matter disclosed in a specification if that matter fairly and adequately discloses to the public the manner of performance, manufacture or use of the invention described in those claims. The matter contained in the body of the Specification does disclose, so it was contended, the manner of performing the invention disclosed in the Remaining Claims. The circumstance that it also discloses the manner of performing some different composition is, so Lubrizol contended, not to the point. 40 Thus, chlorine is not mentioned as such in the description of the refrigerant in the consistory clause, even though that description does not exclude chlorine. The description of the refrigerant refers to fluorine, hydrogen and carbon as the elements which must be present in the refrigerant of the invention. They, to use the expression adopted by counsel for Lubrizol, are "the three building blocks in the refrigerant". It was said that, as a matter of construction, the sentence which refers to chlorine was simply saying that, in its broadest form, other building blocks can be added to the basic three but that that is something which is extra to "the three core elements". 41 Under the heading "Description of the Preferred Embodiments" in the Specification, the description of the refrigerant refers to "the fluorine-containing hydrocarbons" as containing "at least one C-H bond as well as C-F bonds". Once again, however, the Specification goes on to refer to the possibility that the refrigerant may also contain carbon chlorine bonds "in addition to these two essential types of bond". That, according, to Lubrizol's contention, is additional information to the requirement of carbon-hydrogen bond and carbon-fluorine bonds as "core essential bonds". 42 The description of the refrigerant then proceeds to state that the refrigerant may contain other halogens such as chlorine. Lubrizol relied on the following as the key sentence for fair basis: "However, in one preferred embodiment, the hydrocarbon contains only carbon, hydrogen and fluorine."

[23]

Thus, it was said that there is a basis contained in the Specification for the Remaining Claims. If the only requirement for a claim to be fairly based on the matter contained in a specification is that the manner of performance of the invention comprised in that claim be disclosed in the specification, that requirement is satisfied in relation to the Remaining Claims by the material to which I have just referred. That material discloses how to perform the invention in so far as it consists of a composition of a lubricant and a refrigerant which does not contain chlorine. 43 However, as I have said, the essence of the invention comprised in the Remaining Claims is the identification of a soluble organic lubricant that is suitable for use in refrigeration systems with HFCs. Yet, the Specification clearly contemplates that the invention might be performed with a refrigerant that includes chlorine. Once one accepts that the grant does not extend to the Abandoned Claims, there is matter contained in the Specification that is simply wrong. 44 Where there are several claims in a specification, some claims will be based on only a part of the matter contained in the body of the specification. As I have said above, that of itself is not a basis for complaint. However, if the Specification, when originally lodged, omitted the Abandoned Claims, there would have been a real tension between the disclosure of the invention in the body of the Specification and the delimitation of the invention in the Remaining Claims. It would not so much be a question of disclosure of additional, albeit irrelevant, information. The statements to which I have referred are simply wrong as to what comprises the invention. In that sense, I consider that the Remaining Claims are not fairly based on the matter contained in the Specification, as a whole. They are limited to refrigerants which do not contain chlorine, but the Specification says that the refrigerant element in the composition in which the invention consists can contain chlorine. 45 In the light of the tension between the body of the Specification and the invention as delimited by the Remaining Claims, doubt is raised as to the manner in which the invention so delimited is to be performed. In circumstances where the body of the Specification states that a refrigerant containing chlorine may be comprised in the composition in which the invention consists, there must be doubt created, even in the mind of the skilled reader, as to what was intended by the inventor. 46 Of course, if the history of the application is examined and the presence of the Abandoned Claims in the unamended form of the Specification is observed, the tension can be explained. In other words, the reader would see that claims were originally made but that the grant of a patent was subsequently revoked by consent, in so far as it related to those claims. Nevertheless, as the Specification presently stands, it does not make clear that an essential element of the invention, as delimited in the Remaining Claims and to which the grant of monopoly is limited, is that the refrigerant in the composition must not contain any halogen other than fluorine. 47 That is simply not stated in the Specification as it stands. Indeed, the Specification expressly says the contrary. In the circumstances, I do not consider that the invention comprised in the Remaining Claims is fairly based on the matter contained in the Specification. It follows that the conclusion which I reached in my earlier reasons should stand. 48 ICI has foreshadowed that it will oppose any amendment of the Specification to remove the matter relating to HCFCs. That question is not yet before me. It will only arise if an application is made on behalf of Lubrizol under section 105 of the 1990 Act. Accordingly, I propose to direct the parties to bring in short minutes relating to any proposed application by Lubrizol for amendment pursuant to section 105 of the 1990 Act. I certify that the preceding forty-eight (48) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc

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Judgment (64 paragraphs)

Ozone depletion potential as reported in Process Engineering, pp. 33-34, July 1988.

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