Colgate-Palmolive Co v Cussons Pty Ltd - [1993] FCA 297

Re: COLGATE-PALMOLIVE COMPANY and COLGATE-PALMOLIVE PTY. LIMITED
And: CUSSONS PTY. LIMITED
No. NG594 of 1989
FED No. 297
Number of pages - 65
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Sheppard J(1)

CATCHWORDS

Patents - infringement and validity - specification claiming patent for bottled particulate detergent composition - invention involving a bottle having a neck for dispensing detergent composition from the bottle and a free-flowing particulate heavy duty detergent composition in the bottle - specification of size of bottle - detergent composition to be comprised of a synthetic organic detergent and builder for the detergent - detergent composition to be of specified particulate size and to have a flowability of at least 70 per cent of that of clean dry sand - identification of invention claimed in specification - whether invention sufficiently described in specification - whether specification described best method of performing the invention known to the applicant - whether claimed invention obvious - whether claimed invention novel - significance of requirement that detergent composition be of a flowability of at least 70 per cent of that of clean dry sand - analysis of complex chemical and technical evidence.

Patents Act 1952, ss.40, 100

HEARING

SYDNEY, 30 April, 1-2, 6-9, 13-17, 22-24 May, 5 June, 26 August, 11, 18 October, 4, 6-7, 11-14, 18-21, 25-29 November, 2 December 1991, 11, 17 June 1992 and 30 April 1993.

#DATE 11:5:1993

Counsel for the Applicants: D.E. Grieve, QC, and D.K. Catterns, QC

until 6 May 1991; thereafter T. Simos, QC and D.K. Catterns, QC

Solicitors for the Applicants: Mallesons Stephen Jaques

Counsel for the Respondent: R.J. Ellicott, QC and A.J. Bannon

Solicitors for the Respondent: Allen Allen and Hemsley

ORDER

THE COURT ORDERS THAT:-

1. The application be dismissed.

2. Australian letters patent No. 542136 be revoked.

3. The respondent serve on the Commissioner of Patents a copy

of these orders.

4. Upon the applicants undertaking to file and prosecute an

appeal with expedition, orders 2 and 3 be stayed pending the determination of the appeal or until further order.

5. The applicant pay to the respondent its costs of the

application and the cross-claim.

6. Liberty to the respondent within 28 days after the disposal

of all appeals from these orders, to apply for an order that the costs which the respondent is entitled to recover from the applicants be assessed or taxed on an indemnity basis insofar as those costs relate to the issues concerning the use of unvented jars in testing flowability and whether the specification described or claimed in whole or in part an invention for a new and novel detergent composition.

7. In the event that the respondent exercises the liberty to

apply reserved in para.6, liberty to the applicants to seek an order that there be no order as to the costs of the issues concerning the process of the manufacture of the respondent's products Radiant and low suds Radiant and whether the patent in suit was…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1993] FCA 297
Decision Date: 11 MAY 1993

CaseChat Overview and Summary

Colgate-Palmolive Co, the applicant, sought to have Australian letters patent No. 542136, owned by Cussons Pty Ltd, the respondent, revoked. The dispute centred around allegations of patent infringement and the validity of the patent, which claimed a patent for a bottled particulate detergent composition. The composition involved a bottle with a neck for dispensing the detergent, and a free-flowing particulate heavy-duty detergent composition in the bottle. The patent specified the size of the bottle and required the detergent composition to consist of a synthetic organic detergent and a builder for the detergent. The composition needed to have a specified particulate size and a flowability of at least 70 per cent of that of clean dry sand. The court needed to determine whether the invention was sufficiently described in the specification and if it represented the best method of performing the invention known to the applicant at the time. The court also had to consider whether the claimed invention was obvious or novel, with a particular focus on the significance of the requirement that the detergent composition must have a flowability of at least 70 per cent of that of clean dry sand.

The court analysed the complex chemical and technical evidence presented in the case. It found that the specification did not sufficiently describe the invention, and that the best method of performing the invention known to the applicant at the time was not adequately disclosed. The court held that the claimed invention was obvious and not novel. As a result, the patent was revoked. The court ordered that the application be dismissed, the patent be revoked, and the respondent serve a copy of these orders on the Commissioner of Patents. The applicant was also ordered to pay the respondent's costs of the application and the cross-claim. Additionally, the respondent was granted liberty to apply for an order that the costs relating to the issues concerning the use of unvented jars in testing flowability and the specification's description or claim of a new and novel detergent composition be assessed or taxed on an indemnity basis. The applicants were granted liberty to seek an order that there be no order as to the costs of certain other issues.

Orders

Orders of the court

THE COURT ORDERS THAT:-

1. The application be dismissed.

2. Australian letters patent No. 542136 be revoked.

3. The respondent serve on the Commissioner of Patents a copy

of these orders.

4. Upon the applicants undertaking to file and prosecute an

appeal with expedition, orders 2 and 3 be stayed pending the determination of the appeal or until further order.

5. The applicant pay to the respondent its costs of the

application and the cross-claim.

6. Liberty to the respondent within 28 days after the disposal

of all appeals from these orders, to apply for an order that the costs which the respondent is entitled to recover from the applicants be assessed or taxed on an indemnity basis insofar as those costs relate to the issues concerning the use of unvented jars in testing flowability and whether the specification described or claimed in whole or in part an invention for a new and novel detergent composition.

7. In the event that the respondent exercises the liberty to

apply reserved in para.6, liberty to the applicants to seek an order that there be no order as to the costs of the issues concerning the process of the manufacture of the respondent's products Radiant and low suds Radiant and whether the patent in suit was obtained on a false suggestion or representation, nor as to the costs of the proof by the applicants of each of the matters set out in the notice to admit facts dated 11 February 1991.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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