E.I. Du Pont De Nemours and Company v Imperial Chemical Industries PlC & Anor

[2008] HCATrans 186

[2008] HCATrans 186

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S546 of 2007

B e t w e e n -

E. I. DU PONT DE NEMOURS AND COMPANY

Applicant

and

IMPERIAL CHEMICAL INDUSTRIES PLC

First Respondent

COMMISSIONER OF PATENTS

Second Respondent

THE LUBRIZOL CORPORATION

Third Respondent

Application for special leave to appeal

GLEESON CJ
GUMMOW J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 16 MAY 2008, AT 10.43 AM

Copyright in the High Court of Australia

MR S.J. GAGELER, SC:   May it please the Court, I appear with MR C.A. MOORE for the applicant.  (instructed by Addisons Commercial Lawyers)

MR D.K. CATTERNS, QC:   May it please the Court, I appear with my learned friends, MR R. COBDEN, SC and MR C. DIMITRIADIS, for the first respondent.  (instructed by Phillips Ormonde & Fitzpatrick)

GLEESON CJ:   Yes, Mr Gageler.

MR GAGELER:   Your Honours, there is a slight procedural complication that can be dealt with by consent.  The divisional application in dispute has recently been assigned by ICI to the Lubrizol Corporation for whom my learned friends also appear and we seek an order that the Lubrizol Corporation be added as the third respondent to the special leave application and to any subsequent appeal.

GLEESON CJ:   That is agreed to, is it?

MR CATTERNS:   Yes, your Honour.

GLEESON CJ:   Yes, you have that order.  Yes, thank you.

GUMMOW J:   That raises an initial question, I suppose.  As a matter of interest is this invention, or alleged invention, the subject of litigation elsewhere?  Is this an international dispute between ICI and Du Pont?

MR CATTERNS:   Not that we are aware of, your Honour.

MR GAGELER:   They are my instructions as well, your Honour.  Your Honours, the ultimate question raised in the proceeding is whether there was ‑ ‑ ‑

GUMMOW J:   Well, a preliminary question is this.  The Commissioner was joined, was she not?

MR GAGELER:   Yes, the Commissioner is a second respondent.

GUMMOW J:   To give you your section 39B jurisdiction, was it not, to give the Federal Court 39B jurisdiction?  She was sued as officer of the Commonwealth, was she not?

MR GAGELER:   Well, I do not know if that was the reason, but it certainly achieved that effect.

GUMMOW J:   Anyhow, you sought an injunction against the Commissioner continuing to discharge her statutory functions.  Now, what was the alleged or apprehended maladministration by the Commissioner?

MR GAGELER:   Well, it would not be classed as maladministration.  There was ‑ ‑ ‑

GUMMOW J:   But you seek an injunction against the Commissioner.

MR GAGELER:   Your Honour, the precise form of the injunction may need to be a matter of debate, but what was alleged was for the existence of an estoppel as between the parties to the opposition proceeding before the Commissioner of Patents.  In those circumstances, if there was an estoppel, I mean if we were right in the ultimate question ‑ ‑ ‑

GUMMOW J:   Well, the first question is could there be such an estoppel?  Can there be such an estoppel in the face of a statute?

MR GAGELER:   There can certainly be an inter partes estoppel and the proceeding before the Commissioner was inter partes.

GUMMOW J:   Secondly, if there is, why cannot the Commissioner continue to proceed?  For all we know there may be some third party with an interest in this.

MR GAGELER:   Your Honour might be right, but ‑ ‑ ‑

GUMMOW J:   Is not the scheme of the Act that one looks to what happens down in the Commissioner’s office and then after that has been pursued it comes up to the Federal Court if need be on a so‑called appeal.

MR GAGELER:   Your Honour might be right.

GUMMOW J:   And this is some pre‑emptive strike.

MR GAGELER:   It is certainly a pre‑emptive strike, but your Honour has raised ‑ ‑ ‑

GUMMOW J:   Now, it may be a good pre‑emptive strike or a bad pre‑emptive strike, but why should we get involved in it rather than letting matters work themselves out in the ordinary way through the Commissioner’s office and up through the Federal Court to here?

MR GAGELER:   Your Honour has raised some issues that simply have not been raised before, but can I try to address them sequentially?

GUMMOW J:   That is not accurate.  The Commissioner put on written submissions in the Federal Court which are – as I read it – material that did not receive attention in the Federal Court’s decisions.

MR GAGELER:   The jurisdiction of a Federal Court, having been engaged in the present case by section 39B(1) of the Judiciary Act, the making of a bona fide claim for an injunction against an officer of the Commonwealth was sufficient to engage that jurisdiction.  That claim may or may not be sustainable.  Leave that aside, the claim having been brought in the – properly brought – in the jurisdiction of the Federal Court, it tendered for the determination of the Federal Court, Justice Gyles at first instance and then the Full Court, a question as to the existence of an estoppel arising from the previous proceedings.  Now, their Honours have determined that question adversely to us that there is no estoppel.

GUMMOW J:   Exactly.

MR GAGELER:   That itself creates an estoppel, your Honour, that will cause us difficulty in any subsequent opposition proceedings that might wind their way up.

GUMMOW J:   You will have to fight it out on the merits before the Commissioner.

MR GAGELER:   Of course, but ‑ ‑ ‑

GUMMOW J:   That does not seem a public hardship.  If a patent is granted it is a quasi‑legislative Act, it is not just an inter partes operation.  Anyhow, I will not say any more about it, but what I am foreshadowing ‑ ‑ ‑

MR GAGELER:   No, no I understand what your Honour is saying, it is just that they are interesting questions ‑ ‑ ‑

GUMMOW J:   - - - for you is that if you manage to get special leave there might be an Exocet missile by way of a notice of contention from Mr Catterns.

MR GAGELER:   All I can say, your Honour, is those questions are extremely interesting and we will deal with them if and when they arise.

GUMMOW J:   Well, they might be lethal as well as being interesting.

MR GAGELER:   Well, they may be, but it is a fight that we are quite keen to have, your Honours.

GUMMOW J:   I am sure.

MR GAGELER:   At least may I put it this way, we want to stay alive to have that fight.  Your Honours, the ultimate question as your Honours are aware is whether there was in the earlier opposition proceeding between Du Pont v ICI a clear and unambiguous finding that the original Lubrizol patent was disclosed to the skilled reader a liquid composition that was made up of a lubricant and a refrigerant, the refrigerant being comprised of a mixture of three specific hydrofluorocarbons.  Now, our answer is that the finding is made and is made in clear and unambiguous terms in one paragraph in the decision of Justice Branson in those earlier proceedings and in one paragraph of the decision of the Full Court in an application for leave to appeal from Justice Branson’s decision.

It is our submission that the conclusion of the Full Court to the contrary in the present case is one that is influenced by one or both of two considerations.  One is a legally irrelevant concern that the finding of Justice Branson may have been wrong and the other is a legally erroneous or at least superfluous or at least undefined notion that the operative disclosure needed to have been enabling disclosure.  Now, your Honours, to attempt to make that good I need to show your Honours the finding in the earlier proceedings.  I then need to take your Honours to the decision of the Full Court in the present proceedings.  But to put it all in context I probably need to go very briefly to the Lubrizol patent and to the ICI patent and to the decision of the delegate in the opposition proceeding that was on appeal before Justice Branson.

The Lubrizol patent your Honours will find in the application book.  It is sufficient to go to a couple of pages within the application.  The claim relevantly is at page 188 of the application book and it is of course introduced by the specification that begins at page 160.  What is made clear by the specification is that the problem that was being addressed by the invention was to find a lubricant that worked with a non‑CFC refrigerant; that is what this was all about.  The claim that was made at page 188 – claim 1 – was in substance here was a lubricant, integer B, that worked with a class of refrigerants - non‑CFC refrigerants – which are HFC and HCFC refrigerants.

So integer B was a lubricant and integer A described HFC and HCFC refrigerants and the description in integer A is:

at least one fluorine‑containing hydrocarbon containing 1 or 2 carbon atoms –

Now, the three specific hydrofluorocarbons that matter, each answer that description.  They are each a fluorine containing hydrocarbon containing one or two carbon atoms and at least one naturally construed means two or three or more.  The specification at page 168 line 40 made clear that the specification when it was referring to at least one was meant to include mixtures.

GUMMOW J:   Do you not have to show some error in the misunderstanding of the principles of estoppel, issue of estoppel to attract a grant of special leave?

MR GAGELER:   No, I do not think I can point to an error or misunderstanding of the principles of issue estoppel, your Honour.  I can say that the Full Court was wrong and I can say that the Full Court in reaching a wrong conclusion was influenced by wrong considerations, but I cannot put it any higher than that.  So, your Honours, that is what you get from the face of the Lubrizol patent claim.

You go then to the ICI patent.  The claim is relevantly claim 1 at page 154.  Integer B is exactly the same, that is we are concerned with the same lubricant and integer A is the refrigerant – this is at page 154 – and the refrigerant is described as:

comprising a mixture of at least two hydrofluoralkanes selected from the group consisting of –

the three particular hydrofluorocarbons.  Now, when you select at least two from three you mathematically get four possibilities, three binary – that is mixtures of two and one ternary, a mixture of all three.

When you then go to the decision of the delegate that was under appeal before Justice Branson you see the relevant part of that decision at the bottom of page 228 and what the delegate was there saying right at the bottom just up from line 50 that “a purely intellectual exercise” reading the Lubrizol patent would of course disclose a mixture of these three hydrofluorocarbons, but the question is what it would teach or instruct an informed reader.  That is undoubtedly the question, but the delegate took the view that it would not teach or instruct the informed reader of the particular mixtures that are specified in the ICI patent.  So that was the decision that was under appeal to Justice Branson. 

The decision of Justice Branson then begins at page 243 and the critical finding is at page 264 in paragraphs [68], [69] and [71].  Paragraph [68] she disagrees with the decision of the delegate and in paragraph [69], in words that are too long for me to read, what she makes abundantly clear, in our submission, is that she is finding herself and on the basis of the expert evidence before her, which included cross‑examination, that the Lubrizol patent disclosed in integer A any mixture of hydrofluorocarbons containing one or two carbon atoms and that sort of mixture specifically included the mixtures of the three hydrofluorocarbons in the ICI patent.  She refers in paragraph 69 not only to binary mixtures, but to ternary mixtures.

That finding, in our submission, is repeated and reinforced in the decision of the Full Court that begins at page 284 with the critical finding at page 289, here in paragraph 18 and paragraph 19, and concluded in paragraph 20.  Paragraph 18 is again too long to read, but what is said at the end is in the last two sentences:

Clearly, each of those compounds –

that is the three particular hydrofluorocarbons, is encompassed within the description in the Lubrizol patent:

Thus, the use of a liquid composition described in Claim 1 of [the ICI patent] is clearly disclosed by the Lubrizol Patent.

What is said then at the end of paragraph 19 is that the ICI patent:

is not an instance of the selection of something disclosed by the Lubrizol Patent by way of a further inventive step.  It is no more than a particular example –

one could say four particular examples –

of the invention disclosed by the Lubrizol Patent.

That conclusion, it is said, is “crystal clear”.

One then goes to the decision of the Full Court in the present case and Justices Weinberg and Stone in the application book at page 46, having set out the arguments and having set out the principles governing estoppel in terms of which we cannot complain, defer to the reasoning of Justice Bennett.  So in the application of all of those principles at the bottom of page 46 they said look at what Justice Bennett said and Justice Bennett – if I can deal with her very quickly – at page 58, having spent pages examining the evidence that was before Justice Branson and drawing her own conclusions from that evidence, said at page 58, top of the page:

There was no discussion by Branson J of the enabling disclosure of a specific composition or of mixtures containing HFCs not described in the Lubrizol patent . . . There was no finding of novelty that referred to specific binary or ternary combinations of the refrigerant.

She, at page 61 about line 42, says that:

The Full Court did not discuss enabling disclosure -

and then when she gets to her conclusion which is expressed at page 70, paragraphs 171 and 172 she says one construction of:

Branson J’s finding was that all four of the combinations of –

the particular three hydrofluorocarbons –

were anticipated by the Lubrizol Patent –

but that is not, she says the only possible interpretation.  One of the reasons for saying that is, she says, in the second‑last sentence of paragraph 171:

Where a broad class is claimed and a later patent application claims specific members of the class, issues of enabling disclosure and selection would normally arise.

They did not arise here and so that suggests, she says, that perhaps there was no such specific finding.  Now, there are a couple of problems about what her Honour says there.  She leaves out any reference to the Full Court where the position is really quite clear.  In dealing with Justice Branson really she fails to identify any credible alternative construction of what Justice Branson must have been saying.  Can she really be interpreted as referring just to binary combinations?  She must have been referring to one or all of the four possible combinations and the four possible combinations is the most satisfactory reading.

Finally, your Honours, she relies on this notion of enabling disclosure which we do not understand.  It appears to be terminology introduced in the United Kingdom under European influence, if the court pleases.

GLEESON CJ:   We do not need to hear you, Mr Catterns.

The applicant accepts that there was no error by the Full Court of the Federal Court in its appreciation of the relevant principles of issue estoppel as the appellant contends applying to patent litigation of the present character, nor given the situation in which the opposition proceedings will now be determined by the Commissioner in accordance with the Patents Act 1990 (Cth), do we consider that the interests of justice call for any intervention by this Court.

The application is dismissed with costs.

We will adjourn for a short time to reconstitute.

AT 11.05 AM THE MATTER WAS CONCLUDED