Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260

Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 - HCA 2004 case summary — Zoe

[16]

The background to integer (iv). At one time, a typical key controlled latch assembly included a single key-operated lock. The key hole of the lock was on the outside of the door. A person outside the door could use the key to release the latch and unlock the door. A person inside the door could release the latch, not by using a key, but instead by using a handle or knob. This arrangement is described in integers (i)-(iii) and (v) of claim 1. An "actuator" is something that causes an operation to occur. Thus the handle or knob is described in integer (iii) as a "first actuator operable from an inner side of the assembly". The "second actuator" in integer (v) refers to a device, usually a key-operated tumbler, which enables movement of the latch bolt to the release position from the outside of the door.
The disadvantage of this arrangement was that an unauthorised person could open the door without having the key. For example, burglars could smash a pane of glass in or adjacent to the door and reach the inside handle or knob to gain entry. Or burglars could enter the premises through a window too small to permit the passage of bulky goods and open the door without a key from the inside in order to depart through it with the bulky goods which they had stolen.
The introduction of integer (iv). Latches including integer (iv) were developed to overcome this shortcoming. Integer (iv) is a second key-operated lock on the inside of the door, located on the inside handle or knob. The purpose of the second lock was to enable the inside handle or knob to be locked into position, using the key, so that the handle or knob could not then be used to release the latch and open the door from the inside. While overcoming the disadvantage discussed above, this permitted the latch to be released using the key from the outside of the door, regardless of whether the inside handle had been locked into position. In integer (iv) the second lock facilitating the locking of the inside handle or knob (the "first actuator") is described as "locking means operable from said inner side of the assembly".
The problem created by integer (iv). However, a problem arose with latches incorporating integer (iv). The body of the Patent specification described the problem thus:

[34]

Commencement of proceedings. Doric commenced proceedings in the Federal Court of Australia pursuant to s 128 of the Act. It alleged that the Patentee had made unjustified threats of proceedings for infringement of the Patent against it and its two distributors. The Patentee cross-claimed for infringement of claims 1-8, 12-15, 17, 20, 22, 23 and 30-32. Doric in turn cross-claimed against the Patentee seeking revocation of the Patent on various grounds. These were that the alleged invention was not novel, contrary to s 18(1)(b)(i) of the Act; that the alleged invention was obvious and involved no inventive step, contrary to s 18(1)(b)(ii) of the Act; that the alleged invention was not useful, contrary to s 18(1)(c) of the Act; that the specification did not fully describe the invention claimed, contrary to s 40(2)(a) of the Act; that certain of the claims were not clear, or not clear and succinct, contrary to s 40(3) of the Act; and that none of the claims were fairly based on the matter described in the specification, contrary to s 40(3) of the Act.
The conclusions of the trial judge. After a 10 day trial, Hely J dealt with the many issues arising out of these complex controversies in a chiselled, economical and speedily delivered judgment. He found that the manufacture and sale of Doric's products had infringed claims 1-6, 12-15, 20 and 30-32[4], but not claims 7, 8, 17, 22 and 23[5]. He rejected all of Doric's attacks on validity save two: he found that claims 1-32 were not fairly based on the matter described in the specification[6], and he found that claims 1-6, 12, 31 and 32 were not novel[7]. He made an order revoking claims 1-32 of the Patent.
The appeal to the Full Court. Initially, the parties formulated numerous complaints about the trial judge's conclusions, but they then abandoned most of them. The Patentee pressed grounds of appeal to the Full Court against the trial judge's orders only so far as they were based on his conclusions (a) that claims 1‑32 were invalid for not being fairly based on the matter described in the specification, and (b) that claims 7, 8, 17, 22 and 23 had not been infringed. For its part, Doric, so far as it pressed a notice of contention, sought to support the trial judge's revocation order on the grounds that the invention was not novel and that the complete specification did not describe it fully.
The Full Court's disposition of the appeal. The Full Court (Wilcox, Branson and Merkel JJ) dismissed the appeal by upholding the trial judge's conclusion on but one of the many issues before him - that claims 1-32 were invalid because they were not fairly based on the matter described in the specification[8]. Full argument was presented to the Full Court over three days on all remaining live issues, but it did not need to decide, and did not decide, either the issues raised by the Patentee's appeal on infringement, or the notice of contention issues (although Wilcox J, with whom Branson J agreed, gave some consideration to the latter[9]).
The appeal to this Court. The Patentee has obtained special leave to appeal in relation to the Full Court's decision to uphold the trial judge's orders on the ground that claims 1-32 are not fairly based on the matter disclosed in the specification.
Claim 1 as the basis for discussion. Although the Patentee does not challenge the trial judge's findings that claims 1-6, 12, 31 and 32 lack novelty, the trial judge's findings that claims 7, 8, 13‑15, 17, 20, 22, 23 and 30 are novel are not challenged by Doric. (The Patentee foreshadowed an application to the Federal Court to amend some claims, but nothing turns on that for present purposes.) These latter claims are all ultimately dependent on claim 1. Their validity is a live issue for this Court in relation to fair basing, and remains a live issue (though not in this Court) in relation to obviousness and sufficiency of description. Hence, as indicated above, it is convenient to adopt the course taken in the courts below of analysing the fair basis objection by reference to claim 1.

[60]

The Patentee submitted that the invention was stated in the consistory clause. The Patentee submitted that the rest of the body of the specification set out various "preferable" or "illustrative" embodiments or examples, and that the language emphasised in the quotations from the specification set out above made it plain that the invention was not limited to any one form described, and in particular to the invention urged by Doric.
Both the trial judge[12] and at least a majority of the judges of the Full Court[13] recorded agreement with the Patentee's identification of the invention in the consistory clause.
The acceptance of that submission created potential difficulties for the Patentee.
First, so broad a statement of the invention exposed it to attack on the ground that the complete specification had not described it fully, contrary to s 40(2)(a) of the Act. A limited attack of that kind was made, but it was rejected by the trial judge[14]. No broad attack based on the failure of the Patent to say how a suitable lock release means could be constructed was made: that was within the knowledge of a skilled addressee, and, as the trial judge said, any allegation of that kind would have contradicted Doric's case on obviousness[15].
Secondly, so broad a statement of an invention that was said to achieve a new result prima facie made the Patent vulnerable to attack on the ground that it was obvious in that it did not involve an inventive step, contrary to s 18(1)(b)(ii) of the Act. The trial judge found that while the problem was obvious, the solution was not, and thus he rejected that attack[16].
Thirdly, so broad a statement of achieving a new result prima facie made the Patent vulnerable to the contention that it was not novel, contrary to s 18(1)(b)(i) of the Act. The trial judge rejected this, save in relation to nine of the claims[17].
Fourthly, an invention so broadly expressed was liable to attack on the ground that the claims defining it were ambiguous and therefore not clear, contrary to s 40(3) of the Act. The trial judge rejected this attack as well[18].
Fifthly, while it might have been argued that the invention did not constitute a manner of manufacture, contrary to s 18(1)(a) of the Act, that objection was not taken.
Sixthly, the trial judge rejected a limited contention that the invention lacked utility[19].
Accordingly, before both the Full Court and this Court, leaving aside the surviving issues raised by Doric's notice of contention concerning obviousness and s 40(2)(a) of the Act, and the dispute about fair basing under present consideration, the position is that the challenges to the Patent which could have been made were not made, or, so far as they succeeded, have become academic, or were rejected by the trial judge and are not revived. The s 40(3) issue is accordingly presented to this Court in isolation.

[68]

The language of the legislation suggests that it is wrong to employ reasoning relevant to one ground of invalidity in considering another.
Section 18 compared with s 40. Section 18 of the Act is in Ch 2, headed "Patent rights, ownership and validity". Section 18 sets out requirements which go to the nature and subject-matter of patents. In contrast, s 40 appears in Ch 3, which is headed "From application to acceptance", and which deals with the filing, examination and acceptance of patent applications. Section 40 sets out requirements that are certainly important: in the specification, patentees give the public directions about how the advantages of the invention may be obtained after the patent expires, while in the claims, patentees warn their rivals what they must not do before the patent expires[21]. The requirements of s 40, however, unlike those of s 18, say nothing about the nature or subject-matter of patents, and go more to the form that specifications must take. Both the differences in the requirements which ss 18 and 40 impose, and their respective locations in the Act, suggest that s 18 issues have no relevance to s 40. So far as s 18 refers to "patentable inventions" and s 40 to "inventions", that conclusion is also supported by the definition in Sched 1 of the Act of "invention" as including an "alleged invention".
Separation of matters going to and grounds of invalidity. That conclusion is also supported by the fact that the s 45(1) matters which an applicant can ask the Commissioner to conduct an examination into, the s 59 grounds on which a patent application may be opposed and the s 138(3) grounds for revoking a patent are separately stated in the paragraphs of each section.
The distinctness of the grounds of invalidity. It is common in patent infringement litigation for invalidity to be alleged, and for more than one ground of invalidity to be relied on. Certain matters of fact and construction may be relevant to more than one issue. Thus common general knowledge is relevant not only to issues of construction by the skilled addressee, which underlie the infringement inquiry and interact with issues of validity[22], but also to obviousness[23]. Other factual matters may be relevant to more than one ground of invalidity[24]. The issues may "intersect and overlap"[25]. However, as Doric conceded in this Court, the grounds of invalidity themselves are, and must be kept, conceptually distinct. In particular, as Doric also conceded, a lack of fair basing is a distinct ground for revocation. Hence the "inventiveness" or "meritoriousness" of, or the technical contribution made by, the specification are issues to be examined if there is an objection under s 18(1)(b) of the Act for want of novelty or absence of an inventive step (ie obviousness). There is no reason to introduce them into the fair basing question.
The contrary is suggested by reading in isolation a statement of Blanco White, on which the trial judge relied[26]. It is that the fair basing objection "overlaps others to a large extent". A footnote gave as illustrations of those "others" the objections based on ss 18(1)(a), 18(1)(b)(ii) and 18(1)(c) of the Act. Blanco White did not support that statement by the citation of any authority. The passage which preceded the statement contradicted it. It said[27]:

[70]

If all that is essential in assessing a fair basing objection is recourse to the contents of the specification, there is no call, for example, for an examination (except on construction questions) of common general knowledge (which is essential when considering an objection based on want of an inventive step), or of prior art (which is essential when considering novelty (s 7(1))). And Blanco White's statement is contradicted by Australian authority. A specification can comply with s 40 even though what it claims has been invented is not a patentable invention because it is not novel or it is obvious[28]. Each of the grounds of invalidity referred to in ss 18(1)(a), 18(1)(b)(i), 18(1)(b)(ii) and 18(1)(c) is distinct from the others[29]. Thus there is a "logically precise"[30] and "fundamental" difference[31] between the objection for want of novelty and the objection for want of an inventive step[32]. The lack of inventive step ground of invalidity is distinct from all the others, including fair basing[33]. A patent can be successfully challenged on the ground that the claims are not fairly based even though every other possible ground of challenge fails.
Section 40 grounds analysed. The distinctness of the grounds of invalidity can also be illustrated by comparing the fair basing objection with those most closely connected with it, namely the failure to describe the invention fully, and the failure to claim clearly and succinctly. Section 59(c) of the Act creates as grounds for opposition, and s 138(3)(f) creates as grounds for invalidity, non-compliance with s 40(2) or (3). They are commonly called "s 40 points", and they do form a genus in that it is not necessary to look at common general knowledge at the priority date, except in construing the patent[34]. But the genus contains several distinct grounds. Section 40(2) deals with the "complete specification", that is, with a document which concludes with the claims defining the invention (s 40(2)(b)), and in which the material preceding the claims is commonly called the "body of the specification", or the "specification" for short. In assessing whether a patent complies with the requirement of s 40(2)(a) that the complete specification must describe the invention fully, it is necessary to take into account the whole of the complete specification - both the body of the specification and the claims[35]. On the other hand, when assessing whether there is fair basing within the meaning of s 40(3), it is necessary to split the patent into the claims and the body of the specification, in order to see whether the former are fairly based on the matter described in the latter[36]. These statutorily compelled differences in the mode of analysis point against any overlap in the provisions when considered as grounds of opposition or invalidity.

[72]

To some extent, various of the judgments below assume that the relevant test under s 40(3) requires a comparison between the claims and the "inventive step"[37], or a comparison between the claims and the "merit" of the invention[38], or a comparison between the claims and the "technical contribution to the art" made by the patent[39].
There are some key features of the legislation which suggest that these assumptions are wrong.
The imprecision of "inventive merit". This Court has recently warned against use of the expression "inventive merit". It was employed in the 19th century to express ideas now relevant to what is novel and to what is an inventive step (ss 18(1)(b)(i) and (ii) of the Act). "The phrase invites error through imprecision of legal analysis."[40]
The language of s 40(3). Further, conceptions like "inventive step", "merit" and "technical contribution to the art" find no support in the statutory language of s 40(3). Section 40(1) speaks of a provisional specification describing "the invention" and s 40(2)(a) speaks of a complete specification describing "the invention fully". Section 40(2)(b) speaks of the claims "defining the invention". Section 40(4) speaks of the claims relating "to one invention only". Although s 40(3) does not use the word "invention", this context suggests, and the parties agreed, that the requirement in s 40(3) that the claims be fairly based on the matter described in the specification is a requirement that they be fairly based on the matter in it that discusses the "invention" (an expression which includes the "alleged invention"). In s 40(1), "invention" means "the embodiment which is described, and around which the claims are drawn"[41]. It has the same meaning in s 40(2)[42]. So far as s 40(3) implicitly refers to an invention, it must bear the same meaning there. It does not mean the "inventive step taken by the inventor" or the "advance in the art made by the inventor"[43]. Nor does it refer to inventive "merit" or to any "technical contribution to the art".
Even if s 40(3) did not impliedly refer to an invention, the language points to a comparison between the claims and what is described in the specification only, and again it does not call for any inquiry into an "inventive step", or inventive "merit" or a "technical contribution to the art".

[83]

The actual result in Mullard's Case may have been the same if s 40(3) had been in force. The conclusion was that while the invention rested on the employment of a screening grid in conjunction with a control grid, the central claim made no reference to these grids. Hence it travelled beyond the matter disclosed in the specification[51]. The idea sought to be conveyed here was sometimes expressed in the phrase "covetous claim" but, as Clauson LJ put it in a subsequent Mullard case[52], the phrase was used "in no sinister sense".
Another authority in this category is Palmer v Dunlop Perdriau Rubber Co Ltd[53]. At that time, the Patents Act 1903 (Cth) ("the 1903 Act") was in force. That authority contains statements, on which Doric placed weight, in support of allowing the appeal in that case (although the appeal was dismissed because the Court was evenly divided). Because they precede the enactment of legislation separating out fair basing as a ground of invalidity, they do not assist in construing s 40(3)[54]. The statements relied upon fasten on the difficulty that can arise in some combination claims, of covering validly more than the particular aggregation of integers stated in the claims. While to some extent the language of Rich J turns on the claim being "too wide"[55], other parts of the language employed by him and by Dixon J go more to the clarity of claims ("indefinite in the extreme"[56], "a vague claim", "most indefinite"[57]). And in saying that, outside the operation together of the specific elements of the combination, "subject matter would fail", Dixon J's reasoning appears to proceed on the basis of a lack of inventiveness, ie obviousness[58]. Further, the statements of Rich J are preceded by passages indicating that the issue under debate by him was obviousness[59]. Latham CJ, who favoured dismissing the appeal, and with whom McTiernan J agreed, said obviousness was the most difficult issue[60]. Further, the case involved a patent to achieve an old result (vulcanised battery cases) by new means. It is thus distinct from the present case, which involves a patent to achieve a new result by existing means used in combination, and which falls within the principle stated in Shave v H V McKay Massey Harris Pty Ltd[61]:

[94]

Conflation of obviousness and s 40(2)(a) with fair basing. The reasoning of the trial judge is of some importance to Doric, because no judge in the Full Court specifically adopted the trial judge's reasoning, and Doric, while not actually conceding that the reasoning in the Full Court was wrong, said it did not wish "to take too much time" defending it, defended it with very little relish and conceded that its primary approach was not to be found there. But some of the difficulties in the Full Court's reasoning are also present in that of the trial judge. One difficulty was an apparent conflation of the issue of fair basing with the issue of insufficiency of description or the issue of obviousness. The best Doric could do was to deny that in the courts below there was, despite appearances, any conflation of that kind, but to concede that if the conflation had taken place, the reasoning was unsustainable. The denial fails and the concession is sound. However, there are additional difficulties in the reasoning.
Wilcox J. In a section of his reasons headed "Discussion about fair basis, insufficiency and obviousness", Wilcox J expressed agreement with the trial judge's conclusions on fair basing[80]. He then discussed obviousness in a fashion critical of the trial judge, but later said that it was not necessary to express any final conclusion about obviousness, nor to express a view on sufficiency of description. At the start of that section of his reasons, he said that there was a common fundamental question affecting the three issues referred to in the heading: "what, exactly, was the invention the subject of the patent?"[81] That is true, in the sense that once that question is answered, it becomes possible to consider whether the invention is fully described, whether the claims are fairly based on it, and whether it is obvious. But the question must precede, rather than accompany or follow, any resolution of those three issues. The correct way of answering the question is to examine the body of the specification in order to see what it describes as the invention. This Wilcox J did not immediately do. Instead of discussing the issue of "invention" - part of the s 40(3) question - he discussed the issue of "inventive step" which relates to the s 18(1)(b)(ii) question of what a skilled but non-inventive worker would have seen as obvious in the light of common general knowledge. His Honour said that at the trial the Patentee had adopted an inconsistent case about what the invention was. Whether or not that is so, Wilcox J then observed that, as in this Court, the Patentee "took the unequivocal position that the inventive step was the addition of the widely-expressed sixth integer." He then said[82]:

[103]

The expression "merit" is derived from Lord Macmillan's speech in Mullard's Case[87]. But, as discussed above[88], "merit" plays no role in the statutory test, and Lord Macmillan's approach is no guide to the meaning of s 40(3). It follows that the test applied by Merkel J was incorrect.
Further, the distinction drawn between those forms of lock release that were "invented" by the Patentee and those that were not has several difficulties.
First, the distinction fails to apply the correct test, which calls for a comparison of the claim or claims with the matter described in the specification - not just with a preferred embodiment.
Secondly, the distinction reveals a confusion between the question "What is the invention here?" - the answer to which is "A new combination of integers including integer (vi)" - and the question whether each integer was an invention or an inventive step (the passage uses both expressions). Claim 1 does not claim a monopoly in any integer by itself. Paragraph (ii) of s 18(1)(b), applied to the patent in suit, requires that the combination claimed in claim 1 involve an inventive step, not that each or any integer involve an inventive step. It is only necessary that each integer form part of a full description of the invention (s 40(2)(a)), and that in their totality in any given claim they be described clearly and succinctly and be fairly based (s 40(3)). All the integers were either conceded or found to be part of a full description and to be clear and succinct. The inventiveness of particular integers is irrelevant, both to the inventiveness of a combination of them and to whether there is fair basing.
Thirdly, the distinction also contradicts (without any reasoning, as Doric accepted) the trial judge's conclusion that the specification taught that a "lock release means" may take "any suitable form"[89] and that, on the evidence, and having regard to common general knowledge in the field at the priority date, the invention was not obvious and involved an inventive step[90].
The trial judge. The reasoning of the trial judge was as follows[91]. The trial judge, having repeated the statement of principle by Barwick CJ in Olin[92], recorded Doric's submission that claim 1 travelled beyond the matter disclosed in the specification, because while the Patentee had come up with a particular device - the preferred embodiment - which solved the problem identified in the Patent, the Patent went further and claimed all ways of solving that problem. He then recorded the Patentee's submission that "the words in the specification match the words of the claim, hence the claims are necessarily 'fairly based' on the specification." He said[93]:

[110]

In oral submissions to this Court, counsel for Doric found the first two sentences of the last paragraph something of an embarrassment and was not able to say what the point of including them was unless they related to the next two sentences. If they do, the Full Court's confusion between issues of obviousness and fair basing would appear to exist here as well. That is also suggested by the fact that in one of the English cases[97] from which the expression "technical contribution to the art" is derived, it appears under the heading "Claims to known or obvious desiderata" and precedes a discussion of invalidity on grounds of obviousness. But putting those first two sentences aside, the following difficulties remain.
The first is that the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification.
The second is that in the passages quoted above, the trial judge defined the invention relatively narrowly as "the use of the outside lock to release the lock on the inside handle, coupled with the disclosure of one way of doing that". That is contradicted by other passages[98] in which the trial judge accepted that the invention was as described in the consistory clause set out in the specification - a "lock release means which is responsive to operation of the second actuator to render the locking means inactive."
The third is that the use of the word "real" suggests that the trial judge was applying a test which looked beyond the description of the invention as it appeared in the specification for some preferred embodiment of, or some optimal method of performing, the invention.
Fourthly, the trial judge relied on the proposition, seemingly asserted by Blanco White, that the fair basing objection overlaps with obviousness, which was criticised above[99].
Finally, it is necessary to consider the trial judge's citation of Atlantis Corporation Pty Ltd v Schindler[100] for the proposition that to couch a claim "in the same terms as the description of the invention in the specification" did not of itself, by that mere "coincidence of language", establish fair basing. That proposition is correct, but it is not fatal to the Patentee's position in this case. A "coincidence of language" between a claim and part of the body of a specification does not establish fair basing if that part of the language of the specification does not reflect the description of the invention in the light of the specification as a whole. In the Atlantis Case, the specification, read as a whole, described an apparatus limited to a particular use as a sub-soil drainage system. The claims, however, were "pure apparatus" claims without that limitation on use. The Full Court of the Federal Court of Australia refused to construe them narrowly so as to conform with the description in the specification. A statement in the specification of a description of the invention in similar language to the first claim was not treated as the description of the invention. While the Full Court did not engage in close textual analysis, it did distinctly hold that the statement in the specification[101]:

[114]

Perhaps in recognition of its difficulty in supporting that reasoning at both levels in the Federal Court, Doric sought to outflank it by advancing two groups of further submissions. One group related to matters of statutory construction, the other to cases on the legislation.
Doric submitted that the expression "fairly based" is a composite expression, not calling for any separate inquiry into "fairness" and "basis". The expression required that the claim must fairly reflect what the specification teaches or describes to the addressee. It required a "qualitative" comparison between the claim and the matter described (ie the matter describing the invention fully pursuant to s 40(2)(a)). The matter to be described is "[t]he embodiment … around which the claims are drawn."[102] The claim should not be "wider than warranted by the disclosure made in the body of the specification."[103] This "qualitative" comparison was, it was repeatedly said, a "matter of substance". These contentions were said to be supported by the history of fair basing before it became expressed as a statutory test in the 1949 UK Act and the 1952 Act[104]: but it must be said that no part of the identified history suggested any particular solution to the present problem.
The essential difficulty with these arguments is that they never made it plain what quality was being sought or used as the basis of comparison. They tended towards circularity: it is not helpful to say that in making a qualitative comparison for the purposes of fair basing, the relevant quality is fairness. They contended that the quality was "fairness" in the sense of what was "reasonable" or "warranted" or "commensurate", but these expressions take the inquiry no further. The arguments asserted that the measure of fairness or reasonableness was that the claim must not travel beyond the disclosure, but this begs the question of what the disclosure was. Nor were the arguments advanced by the insistence that the matter was one of substance, not form.
Doric contended that if its arguments were rejected and the consistory clause on which the Patentee relied was sufficient to provide a fair basis, s 40(3) could be satisfied in every case by an assertion of the kind it contained. That is not so. Section 40(3) would only be satisfied if the specification read as a whole corresponded with the consistory clause; it cannot be satisfied by mere assertion in a consistory clause.
Doric argued that what was called above the "consistory clause" was not a true consistory clause, because it did not commence with the words "What I claim is". It argued that consistory clauses date from a time before the Patents, Designs, and Trade Marks Act 1883 (UK), s 5(5), which for the first time made it compulsory to list the claims separately. Consistory clauses continued after that time, even though they were no longer necessary. Doric submitted that to contend that integer (vi) of claim 1 was fairly based on the consistory clause was "purely circular", since the consistory clause was only a hangover from the time when it performed the function of the modern claim. That contention might have force if nothing else in the specification supported the consistory clause. But Doric conceded that the consistory clause was not itself impermissible. The consistory clause is supported by those parts of the specification describing features that "generally" or "preferably" exist, and which, while explaining the invention in detail by reference to the drawings, stress several times that the drawings are merely illustrative of how the invention might be put into effect, not exhaustive.
Further, there are examples of cases in which courts have refused to construe the specification as disclosing an invention limited to the preferred embodiment because of statements that it is not so limited, and have treated the consistory clause as disclosing the invention[105]. Indeed, the employment of consistory clauses "co-extensive with or equivalent to the widest claim" was said by Blanco White in 1955, after the precursors to s 40(3) of the Act had come onto the statute book, to be usual[106]. This was referred to without disapproval by Dixon CJ, Kitto and Windeyer JJ, who also said that in a modern specification, after a statement of the objects of the invention, "one might expect to find a general description of what the inventor asserts his invention consists of, commonly called a 'consistory clause'. This, however, is not an essential part of the body of a specification."[107]

[115]

The second category of Doric's arguments depended on authority.
First, Doric submitted that its case was supported by Biogen Inc v Medeva plc[108]. It submitted that since there was sufficient description under s 40(2)(a) if the disclosure enabled the addressee to produce one thing within each claim, it was necessary to have "a robust law of fair basis". Counsel for Doric continued: "If you only have to enable something within the claim and that is all the consideration you give, then how can it be fair to claim every possible way of achieving that result?" However, the introduction of the type of fair basing achieved in Biogen Inc v Medeva plc is impermissible in Australia for the reasons given above[109]. Further, the word "fair" in that submission is used in a wholly different sense from the word "fairly" in s 40(3). The words "fairly based" refer to a relationship between what is claimed in the claims and what is described in the body of the specification. They do not refer to abstract fairness.
Secondly, Doric relied on Mullard Radio Valve Co Ltd v Philco Radio and Television Corporation of Great Britain Ltd[110] and Palmer v Dunlop Perdriau Rubber Co Ltd[111]. These authorities are not of assistance because they antedate the precursors of s 40(3) and for other reasons given above[112].
Thirdly, Doric relied on some more modern cases. But, on analysis, these favour the Patentee rather than Doric.
One was Olin Corporation v Super Cartridge Co Pty Ltd[113]. The invention related to a process for the manufacture of reusable plastic shotgun cartridge cases. The process had two key elements - the use of compressive deformation (as opposed to tensile deformation) and the carrying out of the process at particular low temperatures. Some of the claims were limited by reference to both elements. Some, claims 10-13, were not, since they did not refer to compressive deformation. Jacobs J therefore held that those claims were not fairly based on the two key elements disclosed in the specification[114], and his decision on this point was upheld on appeal[115]. That conclusion did not depend, however, on the fact that the specification set out "aspects of the invention in much the same language as that of the subsequent claims"[116]. It depended on the body of the specification being construed as a whole to reach the conclusion that the invention had the two elements of compressive deformation at low temperatures, and the passages omitting compressive deformation as being loose or stray in nature, and not a decisive guide to the construction of the whole.
Doric submitted that Olin decided that a claim based on a consistory clause cannot be fairly based. It did not. Rather, as the Patentee submitted, the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention[117]. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.
These points are reflected in the statements in an Australian text[118]:

[118]

Doric's reliance on the decision of the Full Federal Court in Atlantis Corporation Pty Ltd v Schindler[119] also was misplaced. The invention in that case was said in its title to relate to the provision of adequate drainage by artificial means with particular application to landscape gardening. The consistory clause described a particular apparatus but went on immediately to state that the invention taught a method of providing drainage utilising that apparatus. Claim 1 claimed the apparatus but with no limitation to its use for the purpose of drainage. Claim 1 was held to be unambiguous, not to be construed with such a limitation respecting drainage (as the primary judge McLelland CJ in Eq had construed it[120]) and so to be not fairly based.
Although Doric did not explicitly request this Court to change settled principles in Australia respecting fair basing, it advanced arguments which could only be accepted if the law were changed. Thus its reliance on Biogen Inc v Medeva plc[121] was an implicit invitation to adopt for s 40(3) the United Kingdom construction of a different provision.
Doric contended, in effect, that success for the Patentee would be in various ways objectively "unfair", and hence that the claims were not "fairly based". But the kinds of unfairness it complained of, if remediable at all, had to be remedied under other heads of invalidity. If they could not be remedied under those heads, their "unfairness" did not mean that the claims were not "fairly based" on the matter described, and to hold otherwise would radically change the law. One source of these unfairnesses was said to be the fact that s 40(2)(a), on the construction given by this Court in Kimberly-Clark, is complied with if the complete specification enables the addressee to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty[122]: but Doric, whilst willing to attempt to sap life from Kimberly-Clark, prudently eschewed any attack upon that binding authority.
For the above reasons the appeal must be allowed.

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