Colgate-Palmolive Co v Cussons Pty Ltd

No judgment structure available for this case.

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 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.

JUDGE1

SHEPPARD J This is an action for the infringement of letters patent. The first applicant is the registered proprietor of the letters patent in question, namely, Australian Letters Patent No. 542136 for an invention entitled "Bottled Particulate Detergent", which were granted on 8 September 1977. Subject to a submission made by counsel for the respondent, the priority date of the letters patent was 29 September 1976. In the submission of counsel for the respondent, it ought to be found that the priority date was, at least in respect of one important matter, a date in 1982. The significance of this argument, if it were accepted, would be that the applicants' case on novelty may be more difficult for them because it would be easier for the respondent to demonstrate that the claimed invention had been anticipated.

By an agreement dated 2 January 1980 made between the first and second applicants, the second applicant was granted the non-exclusive right to use the patent the subject of the then pending application for the patent in question and the right alone or together with the first applicant to institute proceedings in respect of the infringement of the patent. By a further agreement dated 10 August 1989 made between the first and second applicants, the second applicant was granted the exclusive right to make, use, exercise and vend the invention the subject of the patent. At no time, however, has either applicant attempted to market any product in Australia which is an embodiment of the claimed invention. The first applicant markets a product in the United States known as "Freshstart" which is said to be such an embodiment.
The respondent manufactures and markets two products in Australia which are claimed by the applicants to infringe their patent. These are "Radiant Superstrength Laundry Granules" and a similar product known as "Low Suds". It is also described as "Radiant Superstrength Laundry Granules". Both products are marketed as laundry detergents, the low suds product being for front loading clothes washing machines. Each of the products consists of small granules which are predominantly blue in colour. They are contained in clear plastic bottles with screw caps. The bottles have handles which are themselves clear and form part of the container for the product. The granules contained within the handles flow freely through them and, as the bottles empty or are filled, out of or into the bottles.
The respondent has denied that it has infringed the letters patent. It also claims that the patent is invalid and has instituted a cross-claim seeking its revocation. The respondent relied upon a large number of matters. For the moment, it is sufficient to say, having regard to the Patents Act 1952, which it is agreed is the relevant Act, that the respondent asserts: that the specification does not fully describe the invention, including the best method of performing the invention known to the applicant (paras. 40(1)(a) and 100(1)(c)) of the Act; that the claim or claims are not clear and succinct nor are they fairly based on the matter described in the specification (subsec.40(2) and para. 100(1)(c)); that the invention, so far as claimed in any claim, is the subject of a claim of earlier priority date contained in the complete specification of a patent and that the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim (para. 100(1)(f)); that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim (para. 100(1)(e)); and, that the invention, so far as claimed in any claim was, before the priority date of that claim, otherwise not novel in Australia (para. 100(1)(g)).
The claims in the letters patent which are said to have been infringed are claims 1, 2, 3, 6, 7, 8, 14, 15, 16, 17, 18, 21, 22, 28 and 29. Although it will eventually be necessary to refer to a number of these claims, it is sufficient, for present purposes, to set out the first, which is the principal claim. It is as follows:-

"1. A bottled particulate detergent composition which comprises a bottle having a neck for dispensing detergent composition from the bottle, and a free-flowing particulate heavy duty detergent composition in the bottle, pourable through the neck, wherein the neck of the bottle is at the top of the bottle and the passageway of the neck is of a cross-section area less than 40% of the average cross-sectional area of the volume (sic) of the bottle, wherein the cross-section area of the bottle neck passageway is in the range from 2 to 40cm2, the particles of which detergent composition comprise a synthetic organic detergent and builder for the detergent, wherein the builder includes inorganic builder material, and wherein said particles are sized such that at least 90% thereof pass through an 8 mesh screen and are retained on a 200 mesh screen, are of a bulk density of at least 0.5 g/cc and are of a flowability at least 70% of that of clean dry sand."

It is to be observed that the patent is one dealing with detergent which is to be of a heavy duty composition in a bottle, pourable through the neck. The neck is to be of a particular size, that is to say, the area of its cross section must be within the limits referred to in the claim (the necks of the respondents' bottles are within these limits). The particles of the detergent composition are to be a synthetic organic detergent and builder for the detergent. The builder is to include inorganic builder material and the particles must be of a particular size and density and must meet the flowability standard referred to, namely, they must have a flowability of at least 70 per cent of that of clean, dry sand. Each of the claims made in the letters patent with the exception of claims 44 and 45, which are not relied upon by the applicants, commences with the words, "A bottled particulate detergent ...".
It is appropriate at this point to refer to some of the terms used in Claim 1. A detergent is a synthetic cleansing agent resembling soap in its ability to emulsify oil and hold dirt. It usually contains surfactants which do not precipitate in hard water. It may also contain certain enzymes, whitening or bleaching agents and perfume. A surfactant is an abbreviation for a substance known as a surface-active agent. This in turn refers to a soluble compound that reduces the surface tension of liquids, or reduces the interfacial tension between two liquids. In effect it is a wetting agent. A builder, in this context, is a material added to a soap or a synthetic surface-active agent to produce a mixture having enhanced detergency. One effect of the builder is to keep dirt removed or loosened by the surfactant from re-entering that which the detergent is cleaning by reason of its capacity as a wetting agent. A usual builder is sodium tripolyphosphate. In numerous places in the evidence reference will be found to tripolyphosphates. These references are to builders.
"Bulk density" is the mass of powdered or granulated solid material per unit of volume. It is to be compared with the expression "bulk factor" (not used in the specification), which is a reference to the ratio of the volume of loose powdered or granulated solids to the volume of an equal weight of the material after consolidation into a voidless solid. In the present context, bulk density is a reference to the mass, i.e. weight, of a cubic centimetre of the granules or particles of which the product consists.
Doctor S.J. Silvis is an Associate Director of Technology in charge of advanced process research for Colgate. He is a chemical engineer and has bachelor's, master's and doctor's degrees in that discipline. Between 1948 and 1952 he was Assistant Professor of Chemical Engineering of the Polytechnic Institute of New York. He has had extensive experience in the detergent industry and has written widely on the subject of detergents. He is a long time Colgate employee. Exhibited to one of his affidavits is an article entitled "Detergents" which was published in the September/October 1969 issue of a publication, "Chemical Week". In that article, Dr. Silvis said that synthetic detergents first moved into the market through an opening provided by the natural drawbacks of soap. Soap is the sodium salt of higher-molecular-weight fatty acids. It reacts with calcium and magnesium ions of dissolved mineral salts found in water to yield an insoluble precipitate. The precipitate coalesces into dark curds that adhere to fabrics being washed. The first detergents were introduced in areas where mineral content was the highest and soap-curd problems the most severe. The problem existed in soft water areas, but to a lesser degree, so detergents had a potential advantage over soap in any market.

The Specification
10. It is now appropriate to go to the specification of the letters patent in more detail. The body of the specification opens with the following paragraph:-

"This invention relates to a new, strikingly different dispensing package of heavy duty detergent composition. More particularly, it relates to a bottled particulate heavy duty detergent, the particles of which may be readily dispensed like a liquid but which product is without various disadvantages associated with liquids."

The specification goes on to say that particulate detergent compositions based on synthetic organic detergents and builder salts to improve the detergency thereof are well known and have been marketed for many years. The specification says that, in a preferred form, such particles are rounded and may be globular or may be aggregates of small numbers of globular particles, such as those which result from spray drying of a crutcher mix of the various components and subsequent screening to size. Post-spraying of liquid materials, especially heat-sensitive materials, on to the surfaces of spray dried beads is also known. However, so the specification says, it is often difficult to obtain free-flowing product containing a substantial proportion of a liquid or tacky synthetic organic detergent, such as a liquid nonionic and water soluble inorganic builder salt. Consequently, synthetic organic detergents of lesser tackiness, such as the synthetic organic anionic detergent salts, like sodium linear tridecyl benzene sulfonate (sulphonate) have been used extensively.
The specification refers to the fact that, for convenience in dispensing, liquid detergents have been marketed, often in plastic bottles. Importantly, the specification then says:-

"However, before the present invention it was not known to package a free flowing, high bulk density heavy duty detergent in a bottle from which it could be dispensed as readily as a liquid, and without various disadvantages associated with liquid detergents. Thus, the bottled particulate detergent of this invention is not subject to separation into different phases, requiring the presence of detersively non-functional ingredients, such as hydrotropes, to prevent this undesirable action. Furthermore, because the particulate product is substantially dry, aqueous or liquid phase decomposition reactions between the components thereof do not occur and incorporation of particular stabilizers or the modifications of formulas to avoid materials which tend to react in an aqueous medium are obviated. Additionally, due to the pouring out of the particulate built detergent as a composition of solid particles the detergent gels or cement-like deposits sometimes noted on the necks of dispensing bottles for liquids do not result. In short then, the present invention allows one to obtain the various advantages of particulate or powdered detergents with packaging and dispensing conveniences equal to better than those associated with bottled liquid detergents."

The specification then describes one aspect of the present invention. The description is in terms identical with what is contained in Claim 1 which I have earlier set out. Another aspect of the invention is said to provide a simple method for filling the bottles and the integral hollow handles thereof. The method is said to comprise maintaining in an upright position a bottle of elongate horizontal cross-section having long and short major and minor horizontal axes, the long axis defining a vertical plane and the short axis defining an intersecting vertical plane, with a neck at the top of the bottle near one end of the vertical plane defined by the long horizontal axis and an integral hollow handle at the other end of this vertical plane, the hollow of which handle communicates with the main volume of the bottle, and directing particulate detergent composition downwardly through the bottle neck to the main volume of the bottle to fill the main volume of the bottle and the handle thereof, the filling of the handle being effected by flow of the particulate detergent composition downwardly into the handle when the detergent composition arises above the handle without tilting the bottle or directing particulate detergent into the handle. Dimensions of the bottle are given and there is then reference to the particulate detergent composition being of a particle size such that at least 90% thereof passes through a 20 mesh screen and is retained on a 200 mesh screen, the composition being of a bulk density and of a flowability as already specified in Claim 1 earlier referred to.
The next paragraph to which I refer is as follows:-

"The present invention further provides a bottled particulate detergent, suitable as a laundry detergent, which comprises a transparent bottle having a neck portion for dispensing detergent from the bottle, the bottle being made of a thin-walled synthetic organic polymeric plastic which is essentially moisture proof ... "

and the specification goes on to describe the bottle and its dimensions in a similar way to that in which they are described in Claim 1.

There are additional statements made similar to those made in the passage above but put somewhat differently. I do not need to refer to the detail of these.
Reference is then made to a number of diagrams which are described.
Specific reference is made to the shape of the bottles. It is said that they may be of various shapes but, "as distinguished from jars and other containers, they include a neck portion which is relatively narrow and has a small opening or passage therein, compared to the average cross-sectional area of the bottle volume."
I next refer to two significant paragraphs which are as follows:-

"The free-flowing particulate detergent composition inside the bottle preferably has a high bulk density and such particle size distribution as to promote flow and venting of gas, thereby minimizing the tendency to bridge in the container or in restricted portions thereof. The detergent composition comprises a synthetic organic detergent and a builder for the detergent, and may include various adjuvant materials normally present and desirable in detergent compositions and not of such properties as to make the composition unsuitable for the present purposes. The synthetic organic detergent may be any suitable surface active agent of the anionic, nonionic, cationic, ampholytic or amphoteric types but of these the anionic and nonionic materials are highly preferred, with the nonionics being most suited for the present compositions. Usually, cationic detergents will be omitted from the present products and this is especially so when anionics are being employed. Although nonionic detergents are preferred, mixtures of nonionic and anionic detergents are sometimes even more preferred."

I should pause here to explain the meaning of "ionic", "anionic", "nonionic", "cationic", "ampholytic" and "amphoteric". An ion is an isolated electron or an atom or molecule which by loss or gain of one or more electrons has acquired a net electric charge. A nonionic detergent is a detergent with molecules that do not ionise in aqueous solution. An anionic detergent, on the other hand, is a class of detergent having a negatively charged surface-active ion. A cationic detergent is a member of a group of detergents that have molecules usually containing an ammonium salt cation with a group of 12 to 24 carbon atoms attached to the nitrogen atom in the cation. A cation is a positively charged atom or group of atoms. An ampholytic detergent is a detergent that is cationic in acidic solutions and anionic in basic solutions. An amphoteric detergent is one that has both acidic and basic characteristics.

It is to be noted that the specification prefers nonionic detergents but the terms of the second of the paragraphs to which I have referred are very wide and cover five different types of detergent.
The reach of what follows both in relation to the range of possible detergents, all apparently well known, which are covered is, not to overstate the matter, enormous. No less extensive is the description of the compositions that may be used for the builder. The specification says that water soluble salts are highly preferred, particularly the phosphates. But the specification goes on to say that organic builders such as sodium citrate, sodium gluconate, trisodium nitrilotriacetate and other organic compounds known to have builder activity and which are capable of being made into a free-flowing detergent product, may also be employed often in mixture with inorganic materials. Specific examples of phosphate builder salts are then given. These include sodium tripolyphosphate.
The specification next refers to the method of manufacture. The ingredients are mentioned first and the specification continues:-

"The particulate detergent may be made of such formula by any suitable means, including spray drying the entire formula of heat stable substances, but to obtain best flowability, least dust, highest bulk density and least undesirable chemical reactions and decompositions of components it is preferred to manufacture a base bead comprising substantially only builder with (preferably) or without water and to post-add detergent to it, such as a liquid nonionic detergent or a mixture of anionic and nonionic detergents (although anionic detergent may sometimes preferably be spray dried with the builder). Usually when the detergent particles are made by such preferred methods about 60 to about 98% of the base beads are of detergent builder having porous outer surfaces and skeletal internal structures and from about 2 to about 40% by weight is of a synthetic organic detergent material, such as one which is liquid or tacky at a temperature below 40o C. and which is disposed internally within said beads so that the outer surfaces of the beads are substantially free of said detergent and therefore are free flowing."

The specification then goes on to deal with preferred embodiments. There there occurs the following paragraph.

"No matter how the particulate detergent is made it has been found that to produce the bottled product of this invention it is important that the final detergent product be of particle sizes such that at least 90% thereof passes through an 8 mesh screen and is retained on a 200 mesh screen (U.S. Sieve Series) and that the particles are of a bulk density of at least 0.5 g./cc. and a flowability of at least 70% of that of clean dry sand. Preferably at least 90% of the detergent composition passes through a 20 mesh screen and is retained on a 200 mesh screen and more preferably over 95% of it is in the range of 40 mesh to 200 mesh, with less than 0.5% passing through a 200 mesh sieve. The bulk density is preferably in the range of 0.55 to 0.8 g./cc. and the flowability is preferably at least 75% of that of clean dry sand and may approach or equal 100%.

As would be understood by one skilled in the art, the term percent flowability refers to the comparative flow ratio of equal volumes of experimental material and a control material, with both passing through the same size orifice or other flow restricting passageway.

Although predetermined volumes of test and control materials may be passed through any predetermined sized restriction passageway, the following described procedure was used in arriving at the present flowability of the present detergents. A two-quart jar equipped with a cap having about a one-inch diameter circular hole therein, was filled with the detergent particles to be tested, and inverted. The time for gravity flow of the contents out of the jar was measured. Subsequently, the same test was repeated using clean dry sand. The percent flowability of the particular detergent, compared to that of the sand, was calculated by dividing the time required to empty the jar of sand by the time required to empty the jar of the detergent and multiplying this value by one hundred percent. Although any free-flowing material, such as sand may be used as a control material, the present percent flowability figures were obtained using sand which was capable of passing through a 20 on 60 mesh screen (U.S. Sieve) subsequent to it being dried in an oven for approximately two hours at 100o C. and cooled just prior to screening."

Except for the first of them, each of the paragraphs just quoted was added to the specification in March 1982 after questions had been raised by the examiner dealing with the application for the letters patent. This is a matter upon which counsel for the respondent places reliance. The point counsel makes is that the applicants need to establish that the words of the first of the quoted paragraphs were sufficiently meaningful without the additional paragraphs if the patent is to have a priority date in 1976 rather than in 1982.
Further description of the manufacturing process follows but it is not relevant to set it out.
The specification then turns to the cap for the bottle which, it is said, may be of any suitable structure and material. Screw caps were preferred because of their ready availability, trouble-free sealing and measuring capabilities. Notwithstanding that these were preferable the specification goes on to describe a number of other types of caps.
The specification then returns to methods of manufacture and says:-

"Methods for the manufacture of free flowing high bulk density particulate detegents of the desired particle size are known in the art and may be used according to the invention. Thus, controlled spray drying, spray cooling, agglomeration, solidification, abrading crystalline materials, etc., have been described and are useful. The nonionic detergent may be incorporated into base particles or may be integrally formed with the particles so long as the particles are of desired sufficiently round or rounded structure to be free flowing and have any liquid or tacky detergent material internally held within the interstices in the particle and not on the surface thereof (normally less than 20% will be on the surface and preferably less than 10%). After manufacture of the detergent particles they are filled into the bottles and the bottles are capped by a method like that or equivalent to that illustrated in FIG. 6 but other more complicated and less satisfactory filling techniques may also be utilized. After sealing in the bottle the shelf life of the product is almost limitless, as a practical matter in most cases being at least three years without any undesirable changes."

There follows a paragraph referring to the advantages of "the invented product". It is as follows:-

"The invented product possesses a multitude of advantages, many of which have already been mentioned. A comparatively inexpensive and readily obtainable container with a built in hollow handle may be employed with conventional sealing means that results in the product having excellent storage properties. The particles are attractively rounded and of uniform shape and flow like a liquid. They are heavy enough so as to be measurable in a comparatively small cap and so as to have a multiplicity of washing quantities containable in a reasonably sized bottle, about 10 to 20 washes per quart, normally about 12. Commercial liquid detergents yield only about 8 washes per quart (such figures being for top loading washing machines). Additionally the cap can be graduated for finer measurings. The product is easily manufactured and allows the convenient incorporation of normally heat-unstable components therein. Also, on storage, due to the fact that it is not in a liquid phase, stability is promoted. This allows the use in the formulation of certain normally less stable and more effective detersive ingredients."

The use of the expression "invented product" in the opening words of this paragraph raises in one's mind the question of what it is the invention consists. What are its elements or essential features? That is the initial question to be determined. But, before that task is attempted, there is a good deal more to which reference should be made.
The specification goes on to describe five examples. These are introduced by the words, "The following examples illustrate but do not limit the invention." Each of them involves a nonionic detergent. I do not refer to the detail of these examples, but mention some aspects of the descriptions of two of them. Example 1 indicates how to make spray dried base beads. These are said to be of internal structure and outer surface characteristics being rounded solid particles of irregular configuration having sponge-like porous outer surfaces and skeletal internal structures, in contrast to conventional spray dried detergent beads which have a substantially continuous outer surface and a hollow core therein. The base beads are introduced into a batch rotary drum blender and are post-sprayed at 49o C. with Neodol 25-7 and minor proportions of colouring agent, perfume and brighteners to produce the final product, the components of which are described. Neodol 25-7 is mentioned earlier in the specification where it is said that, preferably, the nonionic detergents include, but are not limited to, ethoxylated aliphatic alcohols which are then described. Particularly suitable nonionic organic detergents of such type are said to be manufactured by the Shell Chemical Company and marketed under the trade mark "Neodol" which is shown, in the specification, to be a registered trade mark. The specification continues by saying that, of the various Neodols available, Neodol 25-7 and Neodol 45-11 are particularly preferred.
The description of example 1 concludes with a statement that, instead of making the detergent composition particles according to the foregoing described method, products of the same bulk density, particle size and flowability, which are also non-tacky, are made by spray cooling, agglomeration and abrasion techniques, known in the art for manufacturing particulate detergent, and useful bottled particulate detergents result having the desirable detergency properties mentioned. However, those made by the method described in example 1 are considered to be superior to the products made by such other techniques, usually being more attactive, freer flowing and of greater bulk density than products of similar compositions.
I do not refer to the detail of examples 2, 3 and 4. In relation to example 5 it is to be noted that it is said that detergents and similar products made by other manufacturing techniques, such as those described which result in the same detergent particle characteristics, are similarly satisfactory. The specification, when dealing with example 5, continues:-

"The present invention is of a new commercial detergent product, a bottled particulate heavy duty detergent. It avoids problems associated with the use of liquids and for the first time allows the commercially acceptable use of particulate heavy duty detergent powders in a manner similar to that in which heavy duty liquid detergents have been used, but without the disadvantages of such liquids. The bottles used are moisture proof, promoting storage stability. They are attractive, relatively small, re-sealable, easy to handle and yet, they allow the use of powdered detergents where previously only liquids could be employed, with the disadvantages inherent in liquids. The inventive concept and the realization of that concept in the reduction to practice and production of a commercially viable product with the particular desirable characteristics of the various components of which it is composed represent significant advantages in the heavy duty laundry detergent art."

The words emphasised, although contained in the description of an example, seem to suggest that the invention consists, at least in part, of a new commercial detergent product. The words that follow appear to cut this down because they suggest that the invention is a bottled particulate heavy duty detergent. But one needs to give all the words effect and there is a question of what was intended by the expression "a new commercial detergent product".
The final paragraph of the description of example 5 is:-

"The invention has been described with respect to illustrations and examples thereof but is not to be limited to these because it is evident that one of skill in the art, with this specification before him, will be able to utilize substitutes and equivalents without departing from the invention."

Although this paragraph appears at the end of the description of example 5, it may have been intended to be a paragraph referring to all the examples. It is not important to determine whether this is so or not.

There then follow the claims made in the specification which have already been referred to. I emphasise, however, that each claim opens with the words, "A bottled particulate detergent composition ... ", that is, apart from the last two claims, which are not relevant. The respondent is not said to have infringed those claims.

The Width of the Specification
36. A fair reading of the specification discloses that it is intended to cover the following:-

1(a) A bottled particulate detergent which comprises a bottle having a neck for dispensing detergent composition from the bottle and a free flowing particulate heavy duty detergent composition in the bottle.

(b) The detergent will be pourable through the neck of the bottle.

(c) The passageway of the neck is of a cross-sectional area less than 40 per cent of the average cross-sectional area of the volume of the bottle. I pause to say that, at one stage, I had a problem with this expression because it refers to the area of the volume of the bottle. But, on the basis that volume can be said to be equivalent to the height of the bottle multiplied by its cross-sectional area, the problem disappears. The calculation needed for an irregularly shaped bottle may be tedious but it is possible.

(d) The bottle may have an integral hollow handle the interior of which connects with other internal portions of the bottle, the hollow handle "including a portion of internal cross-sectional area" in the range from one to 10 square centimetres (claim 2).

(e) The bottle neck passageway and the internal cross-sectional area of the hollow handle may vary from the dimensions in paras. (c) and (d) (claim 3).

(f) The cross-sectional area of the bottle neck passageway must be in the range of two to 20 square centimetres.

(g) The particles of the detergent composition comprise a synthetic organic detergent, and builder for the detergent, wherein the builder includes inorganic builder material, and wherein the particles are sized such that at least 90 per cent of them pass through an 8 mesh screen and are retained on a 200 mesh screen.

(h) The particles are of a bulk density of at least 0.5 grams per cubic centimetre.

(i) The particles are of a flowability of at least 70 per cent of that of clean dry sand.

Each of these characteristics is taken from claim 1 unless otherwise indicated.

2. The specification envisages a wide range of bottles of various shapes and sizes. A bottle may have its cap at its top or on its side. The bottles may have hollow handles through which the granules will move, no handles at all, or handles which are not hollow or, although hollow, are not connected to the main part of the bottle. The bottle need not be transparent, although it may be (claim 7). The bottles may be made of polyvinyl chloride (claim 15), but they need not be.

3. The specification envisages an equally wide range of caps. They may or may not be screw tops. They may be press fitted. They may include a slide valve mechanism to open a dispensing package. In such cases the neck may be made flatter than for the screw caps. It may be non-existent other than as an opening in a bottle wall; see page 23 of the specification. The material for the construction of the cap may be any suitable material.

4. The specification is for heavy duty detergents. The applicants' evidence is that this expression refers only to laundry detergents. But the specification has to be read as a whole. There is reference to laundry detergent in claim

6. But the first five claims, including claim 1, do not use that expression. Claim 1 is the governing claim for the first 15 claims. The fact that laundry detergent is mentioned in a subsidiary claim and not in the governing claim or in a number of others which are dependent on that claim, suggests, on ordinary principles of construction, that the author of the specification is using the expression "heavy duty detergent" in a wider sense than laundry detergent. Support for that view is to be found elsewhere in the specification. For instance, it says, "The present invention further provides bottled particulate detergent, suitable as a laundry detergent ..." (p 4b). The words I have emphasised do not support the view that the author intended that heavy duty detergent and laundry detergents were expressions which were to have the same meaning. The ordinary use of language requires the conclusion that the first includes the second but has a wider reach. It is true that in the description of example 5 (see p 35) it is said that the various components of which the invention is composed represent significant advantages in the "heavy duty laundry detergent art". But that statement appears in the course of the description of one of the examples. It does not appear in the general body of the specification nor in the majority of the claims. There is much to be said for the view advanced by counsel for the respondent that the term "heavy duty detergents" and similar expressions are of uncertain meaning. A reference to part of Dr. Silvis' evidence tends to bear this out. I do not refer to the entirety of it, but, amongst other things, he said that there was a well known industrial meaning of the expression. He said that heavy duty detergents everywhere he had been meant detergents formulated to wash clothes. Light duty detergents were those used for washing fine fabrics like nylons and silks, and also for dishes. Later he said that a detergent was a light duty detergent, as distinct from a heavy duty one, if it did not have sufficient builder in it, not sufficient surfactant and did not have "those key ingredients in there that are required for washing the collars." His evidence continued:-

"... really what you're saying is that you can't judge whether or not something is a heavy duty detergent by reference to the amount of surfactant in it? ---You would have to know its conditions of use. Some of these industrial users that wash - say the laundries, the big laundries, they may use lower concentrations. Purchase lower concentration but then use it at a higher concentration in the wash water. So that it would be effectively getting the same - doing the same thing. So, it varies, that's all.

I appreciate you say it varies, but you can't define what is a heavy duty detergent by reference to the amount of surfactant that is in the detergent, is that what you're saying? ---I am saying that you would have to know all the conditions under which it's going to be used and then do your calculation to see if that comes under the heading of a heavy duty detergent. But doesn't that mean that in some circumstances a surfactant that has, say 12 per cent - I'm sorry? ---Detergent.

In some circumstances, a detergent that has say 12 per cent surfactant may not be a heavy duty detergent - - -? ---Yes.

- - - depending on the circumstances? --- Absolutely.

You agree with that? ---Yes.

On the other hand, you're saying that on some occasions a surfactant which has five per cent, depending on the circumstances in which it's used can be a heavy duty detergent? ---Depending upon the formulation.

So before you know what a heavy duty detergent is you need to know a great deal about the circumstances in which it's going to be used, is that right? ---That's right. Its purpose. What its purpose is.

And that means, in turn, that you are saying that's your undersanding how people in the trade or the industry would regard - that's how they would determine rather, what was or was not a heavy duty detergent? ---They would want to know what it was designed for. Was it designed for washing the clothes? That would come under the category of heavy duty detergent and I think that the evidence is quite clear in many publications where they'll list heavy duty detergents, light duty detergents and so on and under the category of heavy duty detergents there's always the washing compounds for washing clothes."

5. "The synthetic organic detergent" (in the sense of the surfactant) may be any suitable surface active agent of the anionic, nonionic, cationic, ampholytic or amphoteric types although, of these, anionic and nonionic materials are "highly preferred" with the nonionics being "most suited for the present compositions". There is then a good deal of information given about nonionic detergents. Neodol is referred to. Similar information is given about anionic and cationic detergents, although elsewhere it is said that usually cationic detergents will be omitted from "the present products" and that this is especially so when anionics are being employed. There is no similar information given in relation to ampholytic or amphoteric "types" (p 12 of the specification). But all these varieties are subsumed within the specification so that when one comes to the claims and reads of a particulate detergent composition, the whole range of detergents mentioned in the body of the specification is embraced. This is emphasised by the statement (p 16 of the specification) that further descriptions of various suitable detergents, including descriptions of classes of detergents to which those mentioned earlier belong, are to be found in a work, McCutcheon's Detergents and Emulsifiers, 1973 Annual, and in Surface Active Agents, Vol. II, by Schwartz, Perry and Berch (Interscience Publishers, 1958) "the descriptions of which are incorporated herein by reference".

6. A similar unlimited range of substances is referred to as suitable for use as builders. It is said that the buider is "very preferably" an inorganic material. Water soluble salts are "highly preferred", particularly the phosphates. More along the same lines follows. It is sufficient to say that the specification contemplates a vast range of substances which may be used as builders and that not all of these are inorganic.

The "built detergent composition particles" will normally contain "about (sic) 50 to 98% of builder and the balance of synthetic organic detergent. It will usually contain from 30 to 80 % of builder, 2 to 35 % or 40 % of synthetic organic detergent" and percentages of other materials as well as 3 to 15 % of moisture (p 19 of the specification).

7. The width of the range of materials suitable to be used as detergents and builders and the range of the percentages of them which may be used demonstrate that the specification has cast a very wide net. Moreover, the reach of the specification includes existing substances, i.e. detergents and builders well known in the industry at the priority date. This is clear from a reading of the specification as a whole, but is brought home by reference to the two texts referred to in 4 above.

8. The same is true of the manufacturing processes which may be used. There is an emphasis on, and a description of, the spray drying processes described by Dr. Silvis and other witnesses. The specification says that "methods for the manufacture of free flowing high bulk density particulate detergents of the desired particle sizes are known in the art and may be used according to the invention. Thus, controlled spray drying, spray cooling, agglomeration, solidification, abrading crystalline materials, "etc." have been described and are useful. The spray drying process is described in example 1; see pp 16-18 (supra). It seems unlikely then that the statement made in example 5 (p 35 of the specification) that the invention is of "a new commercial detergent product" was intended to be a reference to an element or component of the invention. The words that follow, notwithstanding what I have previously said, "a bottled particulate heavy duty detergent" must be the key. That is the expression used in all but two of the claims.

9. Throughout the body of the specification care has been taken to use a wide range of alternatives. This occurs in relation to bottles and caps, the product itself - laundry detergents are only one aspect of what the specification purports to cover - and the range of materials, and types of materials, suitable for use as detergents (surfactants) and builders and the proportions or percentages of these substances which may be used. Throughout, except in its statement of the claims, the specification is pervaded with words or expressions such as "preferably", "preferred", "highly preferred", "normally", "any suitable means", "usually preferred" and so on. It is all very well to refer to the need to describe the best method of performing the invention known to the applicant (para. 40(1)(a) of the Act) or to describe embodiments or preferred embodiments, but the author of the specification here has, in my opinion, been at considerable pains to keep all possible options open.

The Way the Case was Opened
37. So far I have said little about flowability. It is an important aspect of the case. When the case was opened, it was the critical issue. It was at the heart of the respondent's defence to the case on infringement and it was (and still is) an independent element in its case on invalidity. The applicants' case was opened as one involving infringement of a combination patent in the sense in which that expression has been judicially defined. Reference was made to In the Matter of Klabers Patent, (1906) 23 RPC 461 where Lord Davey said (at 469):-

"A proper combination for a Patent is the union of two or more integers, every one of which elements may be perfectly old, for the production of one object which is either new, or at any rate is for effecting an old object in a more convenient, cheaper, or more useful way. But the point in a combination patent must always be that the elements of which the combination is composed are combined together so as to produce one result."

This passage was applied by Dixon J (as he then was) in Palmer v. Dunlop Perdriau Rubber Co. Limited (1937) 59 CLR 30 at 73; see also Fisher and Paykel Health Care Pty. Ltd. v. Avion Engineering Pty. Ltd. (1991) 103 ALR 239.

Counsel for the applicant said that the combination in the present case was particulate laundry detergent, that is, laundry detergent in powder rather than liquid form, and a plastic bottle. It was the applicant's case, so counsel said, that that form of packaging for that particular product was more convenient and more useful than cardboard cartons which were invariably used until the priority date in 1976. Bottles were not used, so counsel said, for a number of reasons. There was always moisture in laundries; they were wet areas. Detergent in powder form had a propensity to cake and to form into lumps so that the particles stuck together. When caking occurred, the powder became less pourable and less easily measurable.
Counsel said that the two elements of the patent were particulate laundry detergent meeting the various integers set out in the claims to which he said he would come in due course, and plastic bottles having the integers also set out in the claims. In broad terms, these were comparatively narrow necked bottles made of clear plastic that were capped with a screw cap. Counsel said that it would have been possible, on his case, to obtain a patent in respect of an invention for particulate laundry detergent alone, but that that was not claimed in the specification in suit. It was claimed in another patent which had been granted (a reference to a patent which is described in some of the material as "the beads patent". I shall make further reference to the beads patent a little later). Counsel conceded that it would not have been possible to obtain a patent previously for bottles having the specifications provided for in the present specification.
Counsel qualified his assertion that the particulate detergent described in the subject letters patent was the subject of another patent by saying that the other patent did not exhaust the description of what was involved. He added, "There are other detergents that are within the description of the detergents described in this patent which are without the description of our patented detergent." The following discussion then ensued:-

"MR GRIEVE: ... The invention embraces but is limited to the combination of a powdered detergent that is capable of being efficiently poured into a plastic bottle of the dimensions stipulated - - -

HIS HONOUR: What, during the manufacture? MR GRIEVE: During the manufacturing process. And it is also capable of being stored between manufacture and use in that bottle in a way that won't see adulteration occur and is, lastly, capable of being poured out of that bottle by the consumer in an effective way.

So far as the detergent component of the composition is

concerned, it has a number of characteristics which are set out as integers in the various claims and we will come to them shortly, but those characteristics are key to the nature of the invention in that they define what type of detergent can be so put into, stored within and poured out of a bottle of those dimensions.

By way of example, one such characteristic is the characteristic of what is called flowability, a word that may well be often used during the course of these proceedings.

........ ........ ........ ........ ........ ........ .... HIS HONOUR: And I can patent that because nobody else has done that and that's certainly new and it's not obvious and it's very useful, so here it is and then I say: Well, now, I want a container for it, what happens if I leave it in a box? Well, the box gets opened and it's in the laundry and it's humid and it might even be wet from water that's spilt on the floor or something like that.

If that happens it might cake again so I need to keep it sealed. How will I seal it? I"ll put it in a bottle and I can put a top on it and screw it down tightly. What sort of bottle? I will need one out of which it will flow sufficiently well to enable the user of the washing machine to pour it. What sort of bottle should I get? And you want to say that having got a satisfactory bottle for it you can combine the detergent in the bottle and there's again novelty and it's not obvious and it's certainly useful. MR GRIEVE: That's right, your Honour. HIS HONOUR: Well, is that what this case is about? MR. GRIEVE: That's largely what it's about."

The Course of the Case
41. The case was opened on 30 April 1991. It continued on 1 and 2 May 1991 on which days evidence was led. On 2 May 1991 the matter was stood over to 6 May 1991 because of my unavailability on 3 May. When the hearing resumed on 6 May 1991, the identity of counsel for the applicants had changed. Mr. Simos, QC, had replaced Mr. Grieve, QC The reason for the change was an unforeseen circumstance having nothing to do with the case itself.

The proceedings took the usual course of the applicants presenting their case on infringement first of all, and the respondent then answering that case and, at the same time, presenting its case in support of invalidity and revocation. The applicants' case in reply to that case was then made. The applicants' case on infringement had closed on 2 May and the respondent's first witness had been called and was in the witness box at the time of the adjournment on that day. The case proceeded uneventfully thereafter until 16 May 1991 when a question asked Mr. P.J. Blancquart alerted me to a possible problem.
Mr. Blancquart, who was called in the respondent's case, is a self-employed consultant to the manufacturing and engineering industry and claims to have particular expertise in relation to the manufacture of detergents. Between 1975 and 1987, he was employed by Lever and Kitchen Pty. Limited. Lever and Kitchen manufactures and packages soap and detergent products. During the last seven of these years, that is, between 1980 and 1987, he was Chief Engineer for three of Lever and Kitchen's companies and a member of the executive committee reporting to the board. During 1984 and 1985, he was factory operations manager for the powdered detergent plant.
For reasons which will subsequently emerge, there is a substantial challenge made by the applicants to the reliability of the evidence of Mr. Blancquart. That is a matter to which I need to come, but for the moment it can be put on one side. In the course of his cross-examination on 16 May 1991 Mr. Blancquart gave the following evidence:-

"Mr. Blancquart, I want you to consider this question as at September 1976. I want you to assume that a skilled person in the detergent industry has read and understood the patent specification and has decided that he wishes to make by the agglomeration method, a particulate detergent composition having the properties set out in claim one, namely that it should be a free-flowing particulate heavy duty detergent composition, et cetera, the particles of which detergent composition comprise synthetic organic detergent and builder for the detergent, wherein the builder includes inorganic builder material and wherein said particles are sized such that at least 90 per cent thereof pass through an 8 mesh screen, and are retained on a 200 mesh screen, are of a bulk density of at least point 5 grams per cc and are of a flowability at least 70 per cent of that of clean dry sand, and that that person is entitled to undertake appropriate trial and error experimentation to achieve that result. I put it to you that the probability is that he could produce such a product with those properties by the agglomeration method?

........ ........ ........ ........ ........ ........ .... HIS HONOUR: And is common general knowledge of a skilled person? ---If we split the question trying to understand better what we're talking about. If he reads the specification and uses the description in the specification, try to apply that to agglomeration with let's say the normal kind of testing directly related to examples and the like, I would say that you cannot do that process by agglomeration. MR. SIMOS: And what about having determined that he can't do it in that way, he brings to bear his general knowledge on the subject matter? ---He would have to apply himself, if you like, to develop a different approach. In other words he cannot read in that patent, or he would have really to do it, he would have to develop something else to it which is not this close in that patent. In other words that patent does not clearly to me teach me, or I would clearly by agglomeration. There are some additional features there which would be required.

What would they be? ---I do not want to say that those features are let's say, new or unique, but it would take a little bit of work that could be done, but that would not fit within this any more.

But it could be done even though it wouldn't fit within the patent. I mean within the examples of the patent? ---Well, it is done presently by a lot of people, so it ... can be done.

And he could have worked it out? ---Not - if he stays in the line of this patent - - -

........ ........ ........ ........ ........ ........ ... It's a very difficult situation. There are various skills that you can, you know in combination, that you can really play with, and so I'm sorry, but I cannot really be so black and white, if you like, in my answer. And I say - let's say categorically that if I read this I'm - it's a good average developer and I'm asked to do it by agglomeration and to stay along what is here I would say, well, you know, I've not enough indication that patent ought to do it. That's definitely the situation, and then I would say as well that some roots in that patent are not compatible with agglomeration and I don't think that I can explain it, it's simply because that patent relies on the hydration of STPP (sodium tripolyphosphate) following the record which is quite different to any other roots, and specially the fact that you are hydrating an STPP and then changing that structure by moving up and down temperatures, and it's obviously not readily available in that fashion when you do a dry mix, it's a different process.

What I'm putting to you is that you would bring your general knowledge to bear and with trial and error, experimentation, the probability is that eventually, with all the knowledge that the skilled addressee has generally, you would be able to do it? ---Without any inventive action, if you like to put it that way, I would have been able at the time to develop that kind of product."

On 22 May 1991, counsel for the respondent, subject to certain outstanding matters, closed his case on infringement and invalidity. The first witness called in response to that case was Dr. S.J. Silvis to whom I have referred earlier. Towards the end of the day I asked Dr. Silvis what it was in the patent itself, as he understood it, which was the essence of the invention. His evidence continued:-

"What is it that has been invented in this new process, new product, new whatever you like. What is it essentially that is new, that's taught the world something they didn't have before? ---As I told you earlier, I don't understand patents at all, how they are constructed, how they are put together and what the critical things are in a particular patent, but the thing that is novel here is that you can take a powder detergent for the laundry, a powder detergent, put it in a bottle where now it won't cake. It remains free flowing. Is there some part of this specification that tells me how to make the detergent so that it will not cake? ---I think that to someone who knew their business would look at this and say, 'I know what's going on here, one is that moisture is bad'.

You see, I've been sitting here for nearly four weeks and I wish somebody would tell me because I haven't understood it yet. I just don't know what it is that this patent has done and I thought that you might be able to help me? ---It has made a - what I consider to be a really unusual product, a detergent product that we just didn't have before. It is resistant to caking, it is very free flowing. Is there some part in the description or the examples or somewhere else which tells me how I can make one of these particulate detergents that won't cake? ---I think it does but - - -

Well, do you know where that is? ---Well yes; I think it does in the way it describes the handling of the phosphate. If you have had experience with phosphate before this patent, you would know what the situation is with the moisture versus the tripolyphosphate. You would know that. Tripolyphosphate, you tried to hydrate, that is in all the textbooks and you can see various references to that. You want to hydrate the tripolyphosphate, but when you spray it you have a distribution, as I told you before, you have got moist material and you have got over dried material and the moisture is going to - that everybody knows. So when someone with some reasonable skill reads this patent and he sees the way the phosphate is handled and what the final product is, the - some you are trying to hydrate and the others you are trying to hydrate and the others you are trying to keep anhydrous and then you end up with that final product, 10 per cent moisture, but that is all bound moisture, I think he sees very clearly that that is the way to do it. With that moisture bound in that way it is going to stay free flowing and you don't have to worry about caking.

So it's the anti-caking property - quality that occurs? --- In my mind that's the whole thing. You can put this in a bottle where other detergents I'm convinced you could not. And it won't cake in the bottle? ---Doesn't cake in the bottle, and in the house where you can take and pour it and - resealable, it's got so many advantages; it's really something."

Towards the end of the day it was suggested to Dr. Silvis by counsel for the respondent that there was nothing in the patent that taught how to stop a detergent caking. This was followed by a question from me which asked what in the specification told one how to make the product so that it would not cake. The witness' answer was, "... to someone skilled, it is in there. But as I described before, that you would extract from what they say there." The matter was then left until the following morning.
On the morning of 23 May 1991, Dr. Silvis' evidence proceeded as follows:-

"I would say that someone would have to be skilled in the manufacture of detergents to appreciate what's in that patent. When I read it, and I've been handling the raw materials from the early 1950s and I have sprayed an awful lot of detergents, have gone around the world starting factories, making spray detergents and when I read that patent it was absolutely clear as to what the inventor had done. Always throughout the manufacture of detergents, basically tripolyphosphate has been the builder that goes with the surfactant and everyone knew that you should hydrate the tripolyphosphate as best you can because that holds the moisture - that keeps the moisture in a bound condition. It isn't free to migrate and doesn't give you the caking that most of us are concerned with, and, of course, reduces - when you get the moisture it reduces your flowability. When you read the patent, there's a two step operation. In the first case - in the first part of the operation, they put in tripolyphosphate at a particular temperature at which it hydrates very rapidly, so that first portion goes in there and is - they say in the patent - totally hydrated. Now, we do know - again, being skilled in the art, you do know that if you hydrate tripolyphosphate and then dry it, that portion - you can take off the unbound moisture from that particular particle, but you also begin to take off the moisture that's hydrated to the tripolyphosphate. When you do that, the tripolyphosphate breaks down into trisodium - tetrasodium pyrophosphate and trisodiumphosphate; it breaks into two compounds. The trisodiumphosphate is useless; it doesn't do anything for you. The tetrasodium pyrophosphate is pretty good but not as good as tripolyphosphate, so you want to avoid the breakdown of tripolyphosphate. So, what the inventor did, he said, okay, I want to bind the moisture, that's the way I read it. I want to bind that moisture that I'm going to leave in my final product, so I'll hydrate the - that portion of the tripolyphosphate that will hold that quantity of water for me. Then I'll put in an additional amount of tripolyphosphate, which I will not hydrate and I'll spray that altogether. The unbound moisture will come off and there'll be still plenty of tripolyphosphate in that final product well beyond where that moisture content is and that water will be in the form of a hydrate. Your product should be free flowing. Then if you read through the entire patent you see free flowing, in a bottle, it pours out of a bottle. There's a section in the patent, I looked last night just on this point, and it does say it's satisfactory in the bottle up to three years. So, that tells to me the entire story, and that's the invention - - -

HIS HONOUR: The essence of it is the two stage addition of the tripolyphosphate? ---Absolutely.

That's what you see the essence of this being? ---I see that as the basic thing. It does tell you some other things, if you want to consider other processing it will - by reading through that you can then begin to use that information to do something in the other processing, but that's another story. But, there's no question it was an extremely clever and unique thing to do.

The addition of the second batch of the tripolyphosphate? --- That's correct, and doing that you raise the temperature of the crutcher batch. After you've done the initial hydration you raise the temperature to a point where you don't hydrate the tripolyphosphate. Tripolyphosphate, as most people know, will hydrate slowly at lower temperatures - low temperatures. As you increase the temperature, tripolyphosphate hydrates faster and faster; the rate of hydration increases, up to a maximum of about 140 degrees Fahrenheit, which is 60 degrees centigrade; that's its maximum hydration rate. Then, as you continue to heat - get warmer temperatures and you add tripolyphosphate to the higher temperatures, its rate of hydration slows down. Above 90 degrees centigrade, it is considered not to hydrate at all. There may be some hydration but very, very little - minimal. And, so, that was the technique; hydrate that first portion, heat the temperature - heat the mix up to 90 degrees - above 90 - 93, put in the second portion which isn't hydrated and then spray that mixture."

The Adjournment
48. A matter that should be mentioned at this stage is that on 17 May 1991 the applicants through their counsel sought to read a further affidavit of Dr. D.V. Clark. She had given evidence of the comparative flowability of Radiant and samples of sand. This evidence was given in relation to the question of infringement on which, it will be recalled, the applicants gave their evidence first. By 17 May 1991, when Dr. Clark's further affidavit was sought to be read, the evidence to be led by the respondent on the question of flowability and thus on that aspect of the applicants' case on infringement had been led. A critical expert for the respondent's case, Dr. J.C. Williams, had returned to Bradford in England where he lived. Counsel for the respondent objected to the affidavit being read. The view I took of the matter was that the affidavit was relevant on the issue of validity as well as on the issue of infringement and that it would be difficult to exclude it in relation to that issue. Once that was decided, it became impractical to keep it out on the issue of infringement but leave it in on the issue of validity. That was the purport of a decision which I made on 17 May 1991. I therefore foreshadowed that I would allow the affidavit to be read but that there might be questions of costs associated with the need to bring Dr. Williams back to Australia to give more evidence. The question of what precise orders should be made was left in abeyance.

A few days later counsel saw me in Chambers. It was agreed that, when certain evidence concluded a few days from then, the matter would have to go over. It was envisaged that the hearing would resume on 8 July 1991. That, however proved not to be convenient, not so far as the Court was concerned - it could have proceeded with the matter then - but so far as counsel and the parties were concerned. In the upshot it resumed on 4 November 1991. Directions hearings were held on 5 June 1991 and 18 October 1991. The last day of the May hearings was 24 May 1991.
Dr. Silvis' evidence did not conclude on 24 May and it was recognised that he would need to come back. It is relevant, however, to refer to some of the evidence given by him on 24 May. He then returned to the evidence he had given about the two-stage process. He was asked why, if the surfactant went on last, there was not tackiness. His evidence continued:-

"What is it about the way that the tripolyphosphate then is that prevents what would normally otherwise happen as I understand it, namely this problem of tackiness if you have a substantial quantity of surfactant? ---Your Honour, that, to me, is the heart and soul of this whole patent. The bead is - the bead that's made by this process in the patent is porous throughout the entire - apparently. It's porous? ---It's porous and I would liken it to - I don't know whether you've seen these little thistles with all these little spokes on them?

Yes? ---Apparently the bead is somewhat similar to that. It's porous and the material can get sucked in. You know there is such a thing called capillary action. Capillary action, yes? ---And that action sucks a material down into a crevice - - -

So although it's sprayed on, it goes inside? ---It goes inside and because the surface is extremely porous there's only small amounts of it exposed. Most of it is open for the material to go in. So, percentage-wise, there's only a little bit on the surface. That must be the answer because it does flow very freely, almost as though nothing had been added to it. That's how freely it flows. And yet if you take the spray dried beads from a spray tower which are spheres, almost like a tennis ball with a hole in it - when I say a ping pong ball, that's smoother, and with a hole in the side, you've got that whole surface - when you spray that with a non-ionic afterwards that whole surface gets wet. It's got no place to go. It just sort of lays on the surface. There's nothing to suck it in. It's got a solid surface almost.

Well, is the porosity brought about by the two stage process? ---It must be, it must be because it is a completely different bead. You take that bead and post-add a nonionic to it, you can put 20 per cent on it and it still remains perfectly free flowing. Try to do with a spray dry bead you simply can't do it."

The witness was then asked about agglomeration as distinct from spray drying. He was reminded that the patent claimed agglomeration as well as spray drying. Dr. Silvis described a method of reaching the same result as could be reached by spray drying by agglomeration. After a lengthy description of this process, it was pointed out to him that the process he had described was not in terms to be found in the specification. He agreed that it was not spelt out in the patent and added, "But my feeling would be that if I read that patent that would be - and I knew that you could get that kind of a bead that would remain free flowing and wouldn't cake in a bottle then I think I could envision - but that happens to be my particular business, process development." His evidence continued:-

"I was going to say to you how much hindsight do you think has gone into that view? It is very hard especially with your own particular experience? ---Yes. But I think people with my experience - I would say people at Ballestra (a reference to a company), for example, who sell not only spray towers but agglomeration processes. I think - I know, for example, the director of research at that company and I think that he, very quickly, if he read the patent would describe a process much the way I described it."

The Applicants' Case in Support of Validity in May 1991
52. During the May hearings, there was provided by the applicants an outline of alternative submissions in support of the validity of the patent. Amongst other things they said that, at the priority date of the patent:-

(a) Heavy duty (laundry) detergents possessing the characteristics claimed were not known.

(b) It was not known to package a heavy duty detergent of any known kind in a bottle having the characteristics claimed.

(c) A fortiori, it was not known to package a heavy duty detergent of the type claimed in a bottle of the type claimed.

It was said that the inventors had postulated a new class of detergents not previously known, namely, those possessing the characteristics claimed and that they saw that such detergents would have the advantages of being able to be packaged in bottles. It was also said that the inventors identified a class of bottles suitable for packaging those detergents, namely, bottles possessing the characteristics claimed. These matters were said to constitute the inventive step or steps.
There followed, on 13 May 1991, a further alternative submission outlining certain matters in support of the validity of the patent. It was said that, at the priority date, laundry detergents having in combination all the relevant properties claimed were not known nor was it obvious to make such detergents. The identification of such a class of laundry detergents thus involved an inventive step; a patent claiming such class of detergents without more would have been a valid patent. Finally, it was said that the effect of claiming such detergents in bottles as claimed narrowed the ambit of the claims of the patent to the relevant class of detergents when contained in such bottles, but the narrowing did not invalidate the patent.
On 24 May 1991, a further document was handed up. It dealt with infringement (with which I shall deal later) and fair basing. It was said that the respondent apparently intended to submit that the claims were not fairly based as they included a product which was made using anionic surfactant as well as a product made by the agglomeration method, whereas the body of the specification did not disclose how to make a product having the properties claimed using anionic surfactant, or by agglomeration. The document concluded by saying that the applicants claimed that the disclosure of the matters disclosed in the body of the specification were sufficient to enable the skilled addressee, in the light of common general knowledge, to make a product having the properties claimed using anionic surfactant or by the agglomeration method.
It is worth observing at this point that the case being made by the applicants concerning the validity of the patent had undergone a substantial change from the one which was opened and which relied, as I understood the opening, on there being a combination patent arising from two known integers. The inventive step was in the combination, that is, the putting of a free flowing detergent into a bottle. The applicants' case, in the three weeks or so that followed, had altered. It is not going too far to say that it had been rethought. This occurred, I think, partly because of a feared weakness in a case based merely on the putting of the material into a bottle into which and from which it would flow freely and also because of what had come out of the applicants' evidence, particularly that of Dr. Silvis.

The Beads Patent
57. It is appropriate to interrupt this account of the course of the proceedings by a reference to the beads patent. Reference to it will make what follows a little clearer.

The beads patent is Australian Patent number 514802. Its priority date is, subject to some matters that were put to me by counsel for the applicants, 26 February 1976. The registered proprietor of it is the first applicant and the invention is entitled, "Free Flowing Builder Beads and Detergents".
The specification opens with the following description of the invention:-

"The present invention pertains to the manufacture of free flowing detergent builder beads capable of carrying relatively large amounts of various surface active agents and other liquid or semisolid materials. Specifically the invention provides a method for producing spray dried base builder beads that are oversprayed with synthetic detergents such as nonionics, anionics and cationics or combinations thereof to produce granular detergent formulations of improved detergency and solubility and that contain relatively large amounts of the synthetic detergent component while retaining free flowing properties. The invention is particularly useful in providing a granular free flowing detergent having a high content of nonionic synthetic organic detergent. As used herein the terms overspray and post spray are equivalent and should be taken to include any suitable means for applying a liquid or liquifiable substance to the spray dried base builder beads of the invention, including, of course, the actual spraying of the liquid through a nozzle in the form of fine droplets."

There follows information about the prior art, to which I do not refer, and then a heading, "Summary of the Invention". Amongst other things, it is there said that in one specific aspect, the invention provides a method for producing spray dried builder beads that are suitable for carrying relatively large amounts "i.e. about 2 to about 40 % by weight, preferably from about 12 to about 40 %, of various detergent ingredients such as anionic, nonionic, cationic surface active agents, optical brighteners, bluing agents, soil release agents ...". The summary goes on to say that the post-added detergent ingredients are applied in liquid form on to the base beads by any suitable means, preferably by spraying in the form of fine droplets from a spray nozzle while the beads are being agitated. It is then said:-

The Witnesses - Some General Comments
135. I have now referred to sufficient of the evidence to come directly to the question of validity and then to the question of infringement. But I should make it clear that I have not by any means referred to the entirety of the evidence or mentioned the names of all the witnesses who gave evidence. I shall mention the evidence of two further witnesses when I come to the question of novelty, but, subject to that, I do not intend to refer to any additional evidence. Here and there I have said one or two things about my impression of witnesses with whose evidence I have dealt. I propose to make some further comments, one general and two particular.

I do not take an adverse view of the honesty or integrity of any witness called in the case, at least so far as their evidence dealt with the matters in contest between the parties. Witnesses came from the United Kingdom and the United States as well as from this country. Some were employees or former employees of one or other of the parties; others were consultants, some with an academic background and some with a background in a relevant section of industry. Yet others were industry witnesses but were not employees of either of the parties. They were not consultants but gave an account of their own experience relevant to one or other of the matters in question in the case. It may be true to say that those who were employees, or former employees, of one or other of the parties may have had some unconscious bias which tended to make them advocates for the party which had called them. To a lesser degree, the same may be true of some of the consultants. But that is a not uncommon state of affairs and does not detract from the creditworthiness of any of the witnesses. One simply needs to endeavour to take care to make allowances for this circumstance.
Two witnesses I should mention in particular are Dr. Silvis and Mr. Blancquart. I think that, to an extent, Dr. Silvis was an advocate for the applicants' cause. But he has had a vast experience in the detergent industry and is a well respected authority on most matters in question in the case. He gave his evidence honestly and, I think, genuinely attempted to help the Court understand what it was that the patent in suit is about. My only criticism of him is that he is, I think, "a Colgate man". He is a most loyal employee. That is not at all to his discredit, but it does mean that some of what he has said has had to be treated with a degree of circumspection.
Mr. Blancquart's evidence is, in one respect, tarnished. I do not go to the detail of the evidence, but it emerged during his cross-examination that a formal qualification he claimed to have obtained from a polytechnic at Mons in Belgium was not one which he in fact received. Nor does he have the "doctoral degree" which he claimed to have from the Aachen University in Germany. To the extent that his first affidavit suggests otherwise, it is false.
His testimony in this respect redounds to his discredit. The lies he told were stupid. Whatever his academic record was, or was not, he did in fact have a long experience in the detergent industry in Australia and was, if not by formal qualification, then by experience, well qualified to give the evidence he gave. Despite the obvious criticism which can be made and indeed, was made, by counsel for the applicants, I am satisfied that I should accept the evidence he gave in relation to the matters in dispute between the parties as evidence which may be relied upon. I have not, however, felt the need to refer to much of the detail of his evidence because it was not different from that of other witnesses called in the respondent's case.

Validity - Description of the Invention
140. Paragraph 40(1)(a) of the Act requires that the specification describe the invention. That is its first limb. The purpose of this requirement is obvious. The claims must be fairly based on the description (subsec. 40(2)). If the invention is not described, or if there is uncertainty about what it is that has been invented, one cannot determine whether a particular product claimed to be an infringement does or does not infringe the patent. Furthermore, and perhaps more importantly, the claims will not perforce define the invention as required by para. 40(1)(b).

In my opinion the most elusive question in this case is, what is the invention? I feel constrained to say that the specification is drawn in such a way as to make the task of finding out what the invention is an extremely difficult one. It is clear from the account of Dr. Silvis' evidence earlier given that he, notwithstanding his great experience, was confused about it. Others have had the same problem. A number of the respondent's witnesses referred to the difficulty of divining what the invention was.
I have earlier (under the heading, "The Width of the Specification") referred to the width or reach of the specification. In summary, my conclusions were that it applied to all heavy duty (a term of uncertain meaning) detergents provided that:-

(a) They were packaged in bottles or containers of a wide range of shapes and sizes so long as the necks or openings and cross-sectional measurements fell within those specified; there was no limit on the type of lids or caps which might be used; these could be of any type whatsoever.

(b) The detergent product had a bulk density of 0.5 grams per cubic centimetre and a flowability of 70 percent of that of clean dry sand.

(c) The detergent, in the sense of the surfactant, was nonionic, anionic, cationic, amphoteric or ampholytic.

(d) The builder was one of a great variety of suitable substances.

(e) The detergent product was manufactured by one of a wide variety of methods, namely, spray drying, spray cooling, agglomeration and abrasion techniques known in the art for manufacturing particulate detergent (p 31 of the specification).

If the patent in suit is valid, it gives the applicants a monopoly in respect of all heavy duty detergent products provided they are of the requisite bulk density and flowability and are marketed in one of an almost limitless range of bottles or containers so long as their sizes and shapes fall within the not inconsiderable ranges of measurements for which the specification provides.
It is plain from the analysis of the specification that has been undertaken that there is not claimed to be anything new or remarkable about the detergent product itself. The invention, if there be an invention, lies in putting into bottles a detergent product which will not be affected by set caking in the bottles brought about by the migration of moisture. There was nothing inventive involved in manufacturing such a product. Many people in the industry knew how to achieve that in 1976. At least by November 1991 that was common ground in the case. What the applicants contend, however, is that, until their invention, no-one had thought of marketing a detergent in a bottle. The industry did not turn its mind to the problem because, until the patent in suit, it had not occurred to people engaged in the industry that there might be an advantage in detergent being sold in bottles rather than in cartons. They therefore did not avail themselves of the technology which in fact existed to produce a product that would not "set cake" in the bottle. Their frame of mind was such that they did not need to make such a product. But, if the need had arisen, it is common ground that the product could have been made from a variety of surfactants and builders by a variety of methods including both spray drying and agglomeration techniques.
So the invention was, as Mr. Grieve, QC, had said at the beginning of the case, one which took two known integers, a detergent product with certain properties and a bottle and put them together. The inventiveness was in the putting of the two together. I do not need to consider whether the patent, if otherwise valid, would be a true combination patent in the sense referred to by Lord Davey in Klabers' case (supra). It is enough to say that, if there be an invention, it lies in the putting of heavy duty detergents having the requisite bulk density and flowability into bottles confident in the knowledge that neither set caking nor hygroscopic caking will occur provided, in the latter case, that the lids or caps of the bottles are closed. That is the invention which the applicants claim.
Notwithstanding the complexity (unnecessary complexity in my opinion) in which such a simple idea is expressed in the specification, I think that the specification does describe such an invention. But I must say that I have not reached that conclusion lightly. The opposite conclusion is well open as is the suggestion that the specification was deliberately written as it was to make it appear that there was more in the claimed invention than there really is.
There are, however, some particular problems which I have not yet taken into account in saying what I have. Firstly, I have great difficulty with the expression "heavy duty detergents" with the meaning of which I have earlier dealt. I think it is of uncertain meaning. Dr. Silvis' evidence earlier quoted (pp 24-25 supra) provides support for that view. That matter goes to the heart of the invention and the validity of the patent. I would not lightly take the view that an expression such as "heavy duty detergents" used in letters patent was of uncertain meaning. But I have reached that conclusion in this case. That is not the only basis, or for that matter, the strongest basis upon which the validity of the patent ought to be impeached. But in my opinion, it is a basis for that impeachment and the patent's invalidity.
The other matter concerns the general question of flowability. I think the evidence has unmasked a real problem about the use of the expression "of a flowability at least 70 percent of that of clean dry sand". I think that this is another expression of uncertain meaning. It is uncertain because it does not specify the type of sand which needs to be used to test the product, whether it be an embodiment made by the applicants or an embodiment made by someone else which is claimed to be an infringement. Relative flowability is a critical element in relation to this invention. If a product has a relative flowability of less than 70 per cent of clean dry sand, it will not be a product which is made in accordance with the invention and will not be an infringement. The evidence to which I have referred concerning the sand to be used for the comparison establishes that different results will be achieved depending on what sort or type of sand is used. It may be that the commonsense of it is to test the embodiment or the claimed embodiment against sand having particles of a mean size similar to the sizes of the particles of the product. But that is nowhere spelt out in the specification and one is left with the impression that any sand will do. If this be right, it means that there will be an infringement if the comparison test results in a flowability greater than 70 per cent no matter what sand is used for the comparison and no matter that some sands do not show that the requisite degree of flowability has been achieved.
There are further difficulties. By reason of the failure of the specification to instruct the reader to use a vented jar, the description of the jar test is inadequate. Accordingly that part of the specification needs to be ignored. What is left? All that is left is the statement in the second paragraph quoted on p 13 hereof that the detergent is to have a flowability of at least 70 percent of that of clean dry sand. Nothing more is said. How to test whether that is so or not is not spelt out. For the various reasons which have been discussed that statement is, of itself, quite inadequate to describe what needs to be done. Again, when one takes into account the numerous varieties of sand which there are and their different flow characteristics, one is driven to the conclusion that a failure to specify the type of sand other than by reference to its cleanness and dryness is insufficient so that the patent is invalid for want of description in this regard also.
A final matter to be mentioned is the statement made in the second of the paragraphs quoted on p 14 hereof that "any free flowing material, such as sand, may be used as a control material". There is no specification of what that free flowing material may be. This statement is remarkable for the confusion it may cause. For the detergent product to be within the claims made in the specification, it must have a flowability of at least 70 per cent of clean dry sand. No other material is mentioned. What is the skilled worker to make of the invitation to use some other control material? It may be "such as sand", but it will not be sand; otherwise it would not be mentioned. The reference to it operates to produce further uncertainty about the flowability requirement. It reinforces me in my conclusion that the specification fails to specify, with any precision, the essentials of the test for flowability.

Validity - Description of the Best Method of Performing the Invention
151. Paragraph 40(1)(a) of the Act requires the specification to describe the best method of performing the invention which is known to the applicant. That is the second limb of the paragraph. There are two matters to be discussed. The first concerns the absence of any description of any method of manufacture except the spray drying method. The specification also claims spray cooling, agglomeration and abrasion techniques (p 31 of the specification). None of these other methods is described. Witnesses were questioned about the agglomeration method and what that might involve. There is no evidence about the spray cooling method or abrasion techniques.

In the way the applicants' case was eventually put, neither the spray drying method nor any other method of manufacture was involved in the invention. The claims in the patent in suit were said to be claims limited by result. It was, if not throughout the case, then in the final stages of it, common ground that skilled workers in the industry knew how to make free flowing detergent products by any of the stated methods in such a way that they would not cake in bottles as a result of moisture migration. Most skilled workers in the industry did not turn their minds to this problem because they did not need to. It had no relevance to what they were doing; but they could have made a suitable product by any of the methods of manufacture had they turned their minds to it. There was nothing new involved in any method of manufacture. That being so, the failure of the specification to describe the agglomeration or any other method of manufacture other than the post- spray drying method, was not part of the description which para. 40(1)(a) of the Act required.
The second matter concerns flowability. Subject to one matter of difficulty, I am of opinion that in this respect the specification does fall foul of the second limb of para. 40(1)(a). The specification purports to describe a method of testing the relative flowability of a detergent product compared with that of clean dry sand. The method taught is the jar test performed by Dr. Clark. But the description of the test is not only inadequate; it also fails to describe the best method of conducting the test known to the applicants. This is demonstrated by the failure of the specification to mention the need for a jar which is vented and by the applicants' Standard Practice Instructions referred to by Professor Bagster. I do not return to the detail of that evidence, but I should make it clear that I reject Dr. Silvis' evidence that an ordinary skilled worker would realise the need to use a vented jar. If this is so apparent, why did the applicants give Dr. Clark an unvented jar or, when she used such a jar, ask her to redo the tests using a vented jar? In relation to the practice directions, there is there much more detail of what needs to be done than is provided in the specification. It is true that the practice directions in evidence are dated 28 February 1977, some five months after the priority date of the patent in suit, but there is nothing to suggest that those directions were new or different from the practice which had been followed in previous years.
The outstanding matter, about which I think there is some difficulty, concerns the question whether the description of the test of flowability forms part of the description of the best method of performing the invention. Is testing the flowability of the product part of the act of performing the invention or is it simply a check or test to be conducted on an embodiment which has been manufactured? The required level of flowability - 70 per cent of the flowability of clean dry sand - is an essential feature or element of the invention. The invention will not have been performed unless the resulting embodiment has the required flowability. Is this sufficient to warrant the conclusion that failure to describe the best method of testing flowability known to the applicants is a failure to describe an essential part of the best method of performing the invention? I do not think that the question is without difficulty, but, having given it due consideration, I think the specification does not, in this respect, comply with the second limb of para. 40(1)(a) of the Act with the consequence that the patent is invalid on that ground.

Validity - Obviousness
155. One of the leading authorities on obviousness is Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited (1980) 144 CLR 253. The judgment of Aickin J in that case has been followed and applied on many occasions. What Aickin J. said (at 293-4) is of some significance for this case as is the dictum (quoted there by Aickin J) from the judgment of Fletcher-Moulton LJ in British Westinghouse Electric and Manufacturing Co. Limited v. Braulik (1910) 27 RPC 209 where his Lordship said (at 230) that he viewed with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, was not an invention because when it had once been established it was easy to show how it might be arrived at by starting from something known and taking a series of apparently easy steps. His Lordship said that this ex post facto analysis of invention was unfair to the inventors and, in his opinion, was not countenanced by English Patent Law.

The important thing to remember and to keep steadily in mind is the danger of applying hindsight. When a court comes to consider whether a claimed invention is obvious, it comes to the question with the benefit (in one sense the disadvantage) of then existing knowledge and practice. It is most difficult to go back, but that is what one must endeavour to do. One therefore needs to take the greatest care to endeavour to see that hindsight plays no part in the decision making process.
I have earlier described my understanding of the essence of the invention which the applicants claim. It is said to provide the ability to market in a bottle a detergent product that will remain pourable throughout its expected life. It will not set cake because it will have been manufactured by a process which avoids that problem. But the invention does not lie in that process. It exists, if it exists at all, in manufacturing such a detergent so that it can be marketed in a bottle from which it will pour freely.
The question then is whether the claimed invention is obvious. I have reached the conclusion that it is. I find it difficult to give comprehensive reasons for this conclusion. My conclusion is based on my inability to accept as inventive the placing of a known substance with certain properties, or a substance which persons of ordinary skill can make if they choose to do so, not by elaborate research and consideration of large numbers of expired patents and articles and so on in scientific journals but by reason of their own skill and knowledge, into a container as common as a plastic bottle. I have earlier demonstrated the enormous reach of the specification. To take a view different from the one I have expressed, would confer upon the applicants a very substantial monopoly in return for a minimum of inventiveness. The applicants emphasise that, until the patent, no-one had thought of putting such a detergent in a bottle. That statement needs to be qualified, but I shall indicate why that is so when I deal with novelty. For the moment I assume it to be correct. Making available the detergent in bottles may have been thought to be a good marketing idea. Undoubtedly it was, at least to a degree, and resulted in there becoming available a useful product. I say that not unmindful of submissions by counsel for the respondent that the claimed invention was not useful.

The evidence discloses that bottled detergents are not preferred by the majority of consumers to those sold in cartons. Nor are they preferred by manufacturers. This may be partly due to the reaction of the market but, in earlier years, it was due to the comparative cost of cardboard cartons and bottles. Cartons were substantially cheaper than were bottles. They were also considered to be more acceptable from an environmental standpoint. The differential between the cost of the two may not now be so great because of the increasing use of barrier cartons which are more expensive than ordinary ones. But, as earlier mentioned, the applicants, who are significant suppliers of a variety of laundry detergents to the Australian market, have not marketed Freshstart or any other product contained in bottles in this country. Their sales figures for the United States, although showing that Freshstart has a not insubstantial share of the market, do not suggest that its sales are particularly startling. Laundry detergents sold in cartons, including some manufactured by the first applicant or companies associated with it, compete more than adequately with Freshstart.
There is not, therefore, in this case any suggestion of the meeting of "a long felt want", nor any surge in the market showing decided preferences by consumers for bottled detergents. The respondent has been marketing its Radiant products here for some time now, but it has by no means captured the market.
These matters are not explained by the existence of the first applicant's patent. The applicants' own conduct and marketing experience tells against such a view and there is no evidence to suggest that others have been inhibited in marketing detergents in bottles by the existence of the patent.
In the result, I conclude that the patent is invalid because the claimed invention is obvious and lacks inventiveness.

Invalidity - Novelty
163. In the respondent's submission, the claimed invention has been anticipated by a number of patents, some Australian and some United States. These are in evidence. It is also submitted that the invention was anticipated many years ago by the marketing in bottles of a wide variety of detergent products. Some of these were marketed and still are marketed in Australia; others are marketed in overseas countries. In this respect, I need to refer to some further evidence. Mr. L. Showyin is the Technical Director of Samuel Taylor, a Division of R and C Products Pty. Limited which is a subsidiary of Reckitt and Coleman Australia Limited. Mr. Showyin said that since at least 1966 Reckitt and Coleman or one of its subsidiaries had sold a powdered toilet cleanser packaged in a plastic bottle in Australia under the trademark "Harpic". Between 1966 and 1973 Harpic was packaged in a blow moulded plastic bottle with a plastic screw top. It was sold in all the States of Australia. During that period, it was distributed through all major supermarkets and advertised in all States on television or in newspapers. In 1973, the design of the bottle was changed to a more streamlined shape. Between 1973 and 1976, Harpic continued to be sold in all States in that packaging and, as was the case with its predecessor, was distributed through all major supermarkets and advertised in all States on television and in newspapers.

Since 1968, Reckitt and Coleman, or one of its subsidiaries, has sold in Australia a powdered denture cleanser packaged in a plastic bottle with a plastic screw top under the trademark "Steradent". Steradent was marketed between 1968 and 1976 in all States and was advertised in all States on television and in newspapers.
Mr. Showyin said that, prior to September 1976, Harpic contained a synthetic organic detergent and an inorganic builder, namely, sodium bicarbonate. He acknowledged in cross-examination, however, that the sodium bicarbonate was used to cause the product to foam. He said that prior to 1976 the particles of Harpic were of a size such that at least 90 per cent passed through a British standard sieve 7 mesh screen and were retained on a British standard sieve 200 screen. Prior to September 1976, the bulk density of Harpic was in excess of 0.5 grams per cubic centimetre.
Prior to September 1976, Steradent contained a synthetic organic detergent and an inorganic builder, namely, trisodium phosphate. The size of the particles of Steradent were such that they met the screen test met by Harpic.
Mr. Showyin said that, prior to September 1976, both Harpic and Steradent were properly described as "heavy duty" products in their particular field of use, that is, toilet bowl cleaning and denture cleaning respectively.
Neither in his affidavits nor in his cross-examination does Mr. Showyin deal with the flowability of the product, but it is not suggested in the evidence that there was ever any problem about its flowability within the bottles which contained it, or when it was poured from those bottles.
Mr. D.T. Watson is the General Manager of Bushland Products Pty. Limited. He has held that position since November 1972 when he joined the company as its General Manager. When Mr. Watson joined Bushland in November 1972, it had been marketing a powdered laundry detergent under the brand name "Bushland" for some time. The product was well established in the Australian market. In 1972, the detergent was being manufactured and packaged by a subcontractor. In March 1973, Bushland began manufacturing the laundry detergent at its plant in Girraween near Sydney. It has continued to manufacture and market its own laundry detergent since then.
In manufacturing its detergent in the earlier years (the process has not changed), Bushland used a spray blending process whereby the liquid ingredients were sprayed on to the dry powdered components in a rotary blender. The liquid ingredients were neutralised and/or absorbed to create an essentially dry, free flowing powder. The powder consisted essentially of sodium carbonate, sodium sulphate, sodium tripolyphosphate and some other chemicals together with an anionic surfactant which Mr. Watson mentions. It also contained a nonionic surfactant and a brightening agent.
At first, the Bushland product was packaged in clear plastic bags. The bags were sealed with wire ties and placed in heavy duty cardboard cartons. In late 1973, Bushland stopped packaging its detergent in this way and began using a high density polyethylene blow moulded plastic bottle. The neck of the bottle was shortened to create a bottle with a larger neck to which a flat clip-on lid was added.
Between 1973 and 1976, the principal markets for Bushland detergent were in New South Wales and Queensland. Sales during this period were of the order of 60,000 bottles per month. Mr. Watson said that the detergent packaged in the plastic bottles was "a very free flowing high density particulate detergent". Different formulations of the detergent were used but the density was always maintained at about .9 to 1.0. I am uncertain whether this is a reference to bulk density. Mr. Watson recalled no problem in relation to caking inside the plastic bottle. He did not believe that a decrease in the size of the neck of the bottle would have made any significant difference in the performance or usefulness of the product.
In 1976, Bushland decided to return to packaging in cartons because of environmental concerns in some areas of the community about the use of plastic containers.
There is evidence called in the applicants' case which suggests that the Bushland product is of a different kind from that manufactured by the respondent and different again from products contemplated by the specification. There is some evidence also that there was a caking problem with the Bushland product and that it was not always as free flowing as Mr. Watson had said, but no tests were done. I see no reason to doubt Mr. Watson's evidence about the matter. He has no interest in the outcome of this case and he knew his company's product best. It is true to say, however, that the container used for the product in the years 1973 to 1976 was the container used was outside the specification because the area of the opening exceeded 40 square centimetres although only by a small margin.
The principles which guide me are summarised by Gummow J in Yamazaki Mazak Corporation v. Interact Machine Tools (N.S.W.) Pty. Limited (1991) 22 IPR 79 where his Honour said (at 91):-

"Where the patent under challenge claims a combination and the alleged anticipation does not incorporate the integers of the combination claim, so that the alleged anticipation would not constitute an infringement, there is no anticipation: Meyers Taylor Pty. Ltd. v. Vicarr Industries Ltd. (1977) 137 CLR 228 at 235, per Aickin J. Where the alleged anticipation is a prior patent specification, there may be fertile ground for debate in a comparison with the specification in suit as to whether the prior disclosure sufficiently reveals the essential integers. The alleged anticipation is to be treated as read by a skilled addressee. The disclosure will fall short of an anticipation of the combination claimed, if what is required of the skilled addressee is the exercise of inventive ingenuity of the taking of any inventive step, or if an essential integer is missing, or if what has been substituted for an integer is more than the substitution of a 'mechanical equivalent' for an inessential integer: Nicaro Holdings Pty. Ltd. v. Martin Engineering Co. ((1990) 91 ALR 513) at 527-31."

I think it is plain that the claimed invention was anticipated by the Bushland's bottle. The starting point for making good this conclusion is to emphasise yet again that there was not (and the applicants do not claim that there was) anything inventive or remarkable about the detergent product itself. The invention, if there be one, consists of putting a known substance into a bottle into which and from which it will flow freely. That is what is said not to have occurred to anyone prior to the patent in suit. But it had occurred to Bushland; it had packaged laundry detergent in this way between 1973 and 1976. It is true that the Bushland's bottle would not have been a bottle affected by any of the claims of the specification because its neck was slightly larger than the largest neck contemplated by the specification. But the difference is between 40.7 square centimetres and 40 square centimetres, a difference which is minimal. The important thing is that a laundry detergent was successfully packaged in a bottle of a size close to that of bottles contemplated by the specification well before the priority date of the patent. If the invention consists of putting a product which is unremarkable into a bottle, then this invention has been anticipated.
I do not need to decide whether the claimed invention was also anticipated by the Harpic and Steradent products. Whether it was or not depends on whether heavy duty detergents which are the subject of the applicants' patent, must always be laundry detergents. If, contrary to the view I have earlier expressed, that is so, then I think the better view is that the claimed invention was not anticipated by the Harpic or the Steradent products or, more correctly, packaging. There is a question whether the Steradent product was, in any event, a heavy duty detergent, although, on the basis of Dr. Silvis' evidence earlier referred to, it would seem to me that it may well have been. Harpic is a heavy duty detergent and was so described by Mr. Showyin. In the view that I take of the proper construction of the patent, the packaging of the Harpic product was also an anticipation of the invention.
There is evidence, to which I have not referred, of a number of detergent products which are marketed in overseas countries in bottles. By no means all of these are laundry detergents. I have not thought it necessary to deal with this evidence because of the view I have formed based on the Bushland's product and also on the Harpic product.
In reaching my conclusion on novelty, I have not referred to the patents which counsel for the respondent submitted had anticipated the invention. I have not done so because these relate to the detergent product itself and not to the packaging of it. They were relied upon because counsel, when they addressed, could not have been sure what my ultimate conclusion about the invention would be.

Validity - Some General Matters
180. Counsel for the respondent advanced a great many submissions in support of their claim that the patent in suit is invalid. I have dealt with a number of these and reached the conclusion that the patent is invalid. I do not need to deal with other submissions which were relied upon, but I indicate that submissions were made that the patent is invalid because the specification was not fairly based on the description of the invention in the specification, that the patent was not useful and that the patent was obtained on a false suggestion or representation. There were some other matters relied upon which, in the view that I have taken of the matter, do not arise. These concerned a matter mentioned early in these reasons concerning the priority date of the patent, prior claiming and that the patent was not a true combination patent. I note these matters, but I do not propose to deal with them otherwise.

Infringement
181. In the way that I have approached the case, the only question is whether the applicants have established that the respondent's product had a flowability of at least 70 per cent of that of clean dry sand. As previously mentioned, the second paragraph of the specification quoted on p 13 hereof does not give any guidance on the way in which relative flowability is to be determined. The guidance one is given comes in the paragraphs which were added to the specification in 1982 after the examiner had raised problems about this matter. There were then inserted the second of the paragraphs quoted on p 13 and the two paragraphs quoted on p 14. The second of these paragraphs opens with the words, "Although predetermined volumes of test and control materials may be passed through any predetermined sized restriction passageway, the following described procedure was used in arriving at the present flowability of the present detergents." I have not earlier said anything about those words, but there is a question about their meaning and their significance. I propose to assume, however, that the reference to "the present detergents" is a reference to detergents which are referred to in the specification, that is, the wide range of detergent products which it purports to affect. The specification is thus saying that, in determining the question of relative flowability, one is forced to follow the method provided for in the added paragraphs because that is how the percentage rate of flow was arrived at. So the reference is to the jar test and the jar test alone. The test required the measurement of the period of time taken for the gravity flow of the contents out of the jar in the case of both the product and the sand and the comparison of the two results.

The case eventually made by the applicants on infringement did not rely on their jar testing. One of the principal reasons for this must have been that the tests were carried out not using a vented jar which is in accordance with the specification. The evidence upon which the applicants rely is the later evidence of Dr. Clark concerning her observations when she used the Flowrig. That is an entirely different test from the jar test. The essential difference is that it measures flow after flow has commenced. It does not measure flow of a material from the time the material is in a steady state and begins to flow out of a container such as a jar. By the time the material reaches the first mark, that is, the higher of the two elastic bands on the cylinder, it is moving. That is an entirely different test from the one which the specification contemplates in the new paragraphs and, in the light of the way those paragraphs open, it must be a test of that kind that the author of the specification had in mind when the relative flowability of the product was being referred to.
It follows that there is no acceptable evidence that the respondent's products had, within the meaning of the specification, a flowability of 70 per cent of that of clean dry sand. The applicants have not proved their case. Their action for infringement must therefore fail.

Conclusion
184. In summary, then, I have reached the conclusion that the applicants' application should be dismissed and that the respondent's cross-claim for revocation of the patent succeeds. I do not propose now to make formal orders. The matter will be listed after the parties and their legal advisers have had an opportunity of considering what I have said. When the matter is again in the list, counsel for the respondent are to bring in short minutes of order to give effect to my decision. I shall then deal with any argument which there is in relation to costs but my provisional view is that the applicants should pay the costs of the application and of the cross-claim.

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Citations

Colgate-Palmolive Co. & Anor. v Cussons P/L [1993] FCA 297

Most Recent Citation

McQueen v Minister for Immigration, Citizenship, Migrant Services and Multicultural Affairs (No 3) [2022] FCA 258

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Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9

[1993] FCA 297

11 MAY 1993