EI Dupont de Nemours & Co v Imperial Chemical Industries plc
[2002] FCA 230
•12 MARCH 2002
FEDERAL COURT OF AUSTRALIA
E I Dupont de Nemours & Company v Imperial Chemical Industries PLC [2002] FCA 230
INTELLECTUAL PROPERTY – patents – pre‑grant opposition to patent – “appeal” against decision of delegate of Commissioner of Patents that opposition to grant was unsuccessful – nature of proceeding before Court – extent to which expert evidence admissible
INTELLECTUAL PROPERTY – patents – “manner of manufacture” – whether claims lacked quality of inventiveness to be a manner of manufacture
INTELLECTUAL PROPERTY –patents – novelty – definition of “prior art base” – appropriate date at which prior art should be taken for assessment of novelty
INTELLECTUAL PROPERTY – patents – priority date – whether claim is fairly based on matter disclosed in a priority document – whether “real and reasonably clear disclosure” of matters claimed in patent application
INTELLECTUAL PROPERTY – patents – obviousness – inventive step – boundaries of “common general knoweldge”
INTELLECTUAL PROPERTY – patents – whether complete specification failed to define the invention
EVIDENCE – definition of “a fact in issue in the proceeding”
WORDS & PHRASES – “manner of manufacture”, “prior art base”, “real and reasonably clear disclosure”, “common general knowledge”, “a fact in issue in the proceeding”
Patents Act 1990 (Cth) ss 7, 18(1), 40, 43, 59, 60, 114(1), 158(2), 160, 217, Sch 1
Patents Amendment Act 2001 (Cth) Sch 1, Pt 1, s 13
Evidence Act 1995 (Cth) ss 4, 55(1), 56, 135, 140
Patents Act 1952 (Cth)
Patents Regulations 1991 (Cth) regs 3.12, 3.14ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 discussed
F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 discussed
Genetic Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 cited
Bristol-Myers Squibb Company v F H Faulding & Co Ltd (2000) 97 FCR 524 cited
NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 followed
Welch Perrin & Co Pty Limited v Worrel (1961) 106 CLR 588 cited
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 cited
R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 cited
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 cited
Nicaro Holdings v Martin Engineering (1990) 91 ALR 513 considered
MJA Scientifics International Pty Ltd v SC Johnson & Son Pty Ltd (1998) 43 IPR 287 discussed
ICI Chemicals v Lubrizol Corporation (1999) 45 IPR 577 cited
ICI Chemicals v Lubrizol Corporation (1999) 45 IPR 617 cited
ICI Chemicals v Lubrizol Corporation [1999] AIPC 91‑521 cited
ICI Chemicals v Lubrizol Corporation (1999) 47 IPR 110 cited
Pepsi Seven-Up Bottlers Perth Pty Ltd v Commissioner of Taxation (1995) 62 FCR 289 cited
Australian Gas Light Co v Valuer‑General (1940) 40 SR (NSW) 126 cited
Collector of Customs v Agfa‑Gevaert (1996) 186 CLR 389 cited
Genetic Institute Inc v Kirin-Amgen Inc (No 2) (1997) 149 ALR 247 cited
Ore Concentration Co Ltd v Sulphide Corporation Ltd (1914) 31 RPC 206 discussed
Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 applied
Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 cited
Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 applied
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 cited
Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 applied
Kimberly‑Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 177 ALR 460 applied
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 cited
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 cited
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 citedIndustrial Property Advisory Committee, Patents Innovation and Competition in Australia, 1984 at par 7.3
Phipson on Evidence, 14th Ed. at par 1‑03
Cross on Evidence, Australian Ed., Ch 6E I DUPONT DE NEMOURS & COMPANY v IMPERIAL CHEMICAL INDUSTRIES PLC
N1248 OF 1999 and N1249 OF 1999BRANSON J
12 MARCH 2002
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N1248 OF 1999
BETWEEN:
E I DUPONT DE NEMOURS & COMPANY
APPLICANTAND:
IMPERIAL CHEMICAL INDUSTRIES PLC
RESPONDENTJUDGE:
BRANSON J
DATE OF ORDER:
12 MARCH 2002
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.This proceeding be stood over to 5 April 2002 at 9.30am for the purpose of the making of orders giving effect to these reasons, including orders as to costs.
2.The parties provide to the Associate of Branson J by 28 March 2002 an agreed minute of the orders to be made (including the orders to be made as to costs) and if agreement has not by then been reached, the minutes of order for which they will respectively contend and brief outlines of submissions in support of the orders.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N1249 OF 1999
BETWEEN:
E I DUPONT DE NEMOURS & COMPANY
APPLICANTAND:
IMPERIAL CHEMICAL INDUSTRIES PLC
RESPONDENTJUDGE:
BRANSON J
DATE OF ORDER:
12 MARCH 2002
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.This proceeding be stood over to 5 April 2002 at 9.30am for the purpose of the making of orders giving effect to these reasons, including orders as to costs.
2.The parties provide to the Associate of Branson J by 28 March 2002 an agreed minute of the orders to be made (including the orders to be made as to costs) and if agreement has not by then been reached, the minutes of order for which they will respectively contend and brief outlines of submissions in support of the orders.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N1248 OF 1999 and N1249 OF 1999
BETWEEN:
E I DUPONT DE NEMOURS & COMPANY
APPLICANTAND:
IMPERIAL CHEMICAL INDUSTRIES PLC
RESPONDENT
JUDGE:
BRANSON J
DATE:
12 MARCH 2002
PLACE:
SYDNEY
REASONS FOR JUDGMENT
INTRODUCTION
The Proceedings
The applicant has instituted “appeals” against two decisions of a delegate of the Commissioner of Patents (“the delegate”) given on 11 October 1999 whereby it was decided, in each case, that the opposition of the applicant pursuant to s 59 of the Patents Act 1990 (Cth) (“the Act”) to the grant of a patent to the respondent was unsuccessful. In the one case (matter N1248 of 1999) the relevant patent application was patent application No. 658005 and in the other (matter N1249 of 1999) it was patent application No. 654176. The two appeals were heard together.
Throughout this judgment references to the Act are references to the Act as in force as at the date when the patent applications were made (see Section 13 of Part 1 of Schedule 1 of the Patents Amendment Act 2001 (Cth)).
Each of the patent applications concerns refrigerant compositions to replace the existing refrigerant compositions which contain chlorofluorocarbons (“CFCs”). In respect of each of the patent applications the applicant contents that the alleged invention:
(a)is not novel;
(b)does not involve an inventive step; and
(c)is not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies.
The applicant further contends that the complete specification of each of the patent applications fails to comply with the requirements of s 40 of the Act.
It is necessary to consider briefly the background to the alleged invention the subject of the patent applications.
Vapour Compression Refrigeration Systems
The components of a basic refrigeration system are a compressor, condenser, expansion device and evaporator. The cooling effect of a refrigeration system is achieved by the following steps:
(a)A refrigerant is boiled in the evaporator, absorbing heat through the walls of the evaporator from the refrigerated space and its contents;
(b)The refrigerant gas released by boiling the refrigerant in the evaporator is piped to the compressor where it is compressed to a high pressure. The hot gas from the compressor then passes through a closed system to the condenser. In the condenser the hot gas loses its heat through the wall of the condenser to the atmosphere and, as it cools, condenses into liquid;
(c)The cooled liquid (still under pressure) is piped towards the evaporator where the pressure is reduced thus lowering the boiling point of the liquid. The refrigerant, now under low pressure, starts to boil as it enters the evaporator. In the evaporator the refrigerant absorbs heat causing it to continue to boil until, by the time it reaches the other end of the evaporator, the heat which it has absorbed has boiled all of the refrigerant into vapour. The vapour is drawn back to the compressor and the cycle repeated.
A variety of different refrigerants is used in refrigeration systems. The refrigerant which is used will be one which is suitable having regard to the purpose for which the refrigeration system is used. For example, a standard domestic air conditioning system would normally employ a refrigerant which boils at approximately 5oC whereas a commercial freezer might require a refrigerant which boils at -40oC or below.
Prior to the 1990s, the refrigerants used in refrigeration systems were chlorofluorocarbons (“CFCs”) and hydro chlorofluorocarbons (“HCFCs”). In the 1970s it was discovered that both CFCs and HCFCs, if released into the atmosphere, would act as a catalyst to break down molecules of ozone in the earth’s ozone layer. The ozone depletion potential (“ODP”) of CFCs was higher than the ODP of HCFCs, but both CFCs and HCFCs had some ODP.
The Montreal Protocol on Substances that Deplete the Ozone Layer (“the Montreal Protocol”) was opened for signature in September 1987. Australia is a signatory to the Montreal Protocol. The Montreal Protocol provides for the phasing out of the use of CFCs. The Montreal Protocol was amended in 1990 (“the London Amendment”) to identify HCFCs as “transitional refrigerants”. In 1992 the Montreal Protocol was further amended (“the Copenhagen Amendment”) to provide a timetable for the phasing out of the use of HCFCs.
Refrigerants and Lubricants
It is convenient to incorporate into these reasons for judgment the following passages from the judgment of the Full Court in ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (“ICI Chemicals v Lubrizol Corporation”) [2000] FCA 1349, 106 FCR 214 at [10] and[12]. The accuracy of the passages was accepted in these proceedings:
“Refrigerants are classified according to a numbering system. The system is based on a three digit number, XYZ, where Z is the number of fluorine atoms in a molecule, Y is one more than the number of hydrogen atoms and X is one less than the number of carbon atoms. X is omitted if there is only one carbon atom. Customarily, the prefix “R-” precedes the number. Sometimes the word “Freon”, which means refrigerant, is used in place of that prefix. Sometimes CFC, HCFC or HFC, as the case may be, replaces it. Thus trichlorofluoromethane is R-11 (or Freon 11 or CFC 11); difluoromonochloromethane is R-22 (or Freon 22 or HCFC 22); 1,1,1,2-tetrafluoroethane is R-134a (or Freon 134a or HFC 134a). The use of a letter following the number (as in R-134a) distinguishes molecules which contain the same numbers of the same atoms but have different structures. Thus the difference between R-134 and R-134a is a difference in molecular structure, not a difference in the types or numbers of atoms contained in a molecule.
…
The broad classes of lubricants used in refrigeration systems are mineral oils and synthetic oils. Mineral oils were used with CFCs and with some HCFCs. They are readily available, safe, easily handled and effective as lubricants. They are readily compatible with CFCs in general and the widely used refrigerants, R-11 and dichlorodifluoromethane (R-12), in particular. They are not, however, miscible with HFCs, particularly R-134a, which is widely recognised as a likely candidate to replace CFCs and HCFCs. Thus, if R-134a were to be used in refrigeration, a compatible synthetic oil had to be found. A number of classes of synthetic lubricants were available. They included synthetic hydrocarbons, alkylbenzenes, esters such as dibasic acid esters, polyol esters (a class which included neopentyl esters), phosphate esters, silicate esters and polyalkyleneglycols (known as “PAGs”). In 1987, when the Montreal Protocol was opened for signature, a synthetic oil had not been identified which both was compatible with R-134a and worked satisfactorily as a lubricant in refrigeration systems. It was, of course, important, if R-134a was to live up to its promise, that a compatible and suitable lubricant be available. The evidence before the primary judge indicated that the most pressing concern was to find a lubricant which would work with R-134a in automotive engineering. There was evidence particularly that the three large American motor vehicle manufacturers, General Motors, Ford and Chrysler, were actively engaged, with potential suppliers, in the search.”
NATURE OF THE “APPEAL”
Chapter 5 of the Act is concerned with opposition to the grant of a standard patent. Section 59 identifies the permissible grounds of opposition and s 60 provides for a hearing and the making of a decision by the Commissioner. Section 60(4) provides that the applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under the section. The nature of the proceeding before the Court on such an appeal is to be determined by reference to the Act.
Section 160 of the Act is concerned with the powers of the Court on appeal against a decision or direction of the Commissioner. It provides:
“On hearing an appeal against a decision or direction of the Commissioner, the Federal Court may do any one or more of the following:
(a)admit further evidence orally, or on affidavit or otherwise;
(b)permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Commissioner;
(c)order an issue of fact to be tried as it directs;
(d)affirm, reverse or vary the Commissioner's decision or direction;
(e)give any judgment, or make any order, that, in all the circumstances, it thinks fit;
(f)order a party to pay costs to another party.”
The “appeal” to the Federal Court for which s 60(4) of the Act provides is a proceeding in the original jurisdiction of the Court. The powers given to the Court on such an appeal make it plain that the appeal is a hearing de novo, albeit a hearing over which the Court exercises considerable control so far as the adducing of evidence is concerned.
Section 158(2) of the Act provides:
“Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner.”
As Emmett J pointed out in F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, 99 FCR 56 at [39] the effect of s 158(2) of the Act is to treat the decision of a judge of the Court on an appeal from a decision of the Commissioner in the same way as an interlocutory judgment of a judge is treated so far as an appeal is concerned. Further, as his Honour pointed out in the same case, an opponent may have a second chance, assuming that there is no issue estoppel, to challenge the validity of a patent granted following unsuccessful opposition proceedings. A third party clearly has the right to challenge the validity of a patent by initiating revocation proceedings notwithstanding that earlier opposition proceedings have failed.
The above considerations lead Emmett J to conclude that pre‑grant opposition is intended to provide a relatively inexpensive means for resolving third party disputes as to validity. His Honour at [47] identified the purpose of pre‑grant opposition proceedings as being to provide a swift and economical means of settling disputes that would otherwise need to be dealt with by the courts in more expensive and time consuming post‑grant litigation (see also Genetic Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at 112). His Honour at [67] concluded:
“… before the Court would uphold an opposition to the grant of a patent, the Court should be clearly satisfied that the patent, if granted, would not be valid. That, however, is not to say that an opponent should not be permitted appropriate opportunity to lead evidence-in-chief as to the facts that are designed to demonstrate, with the requisite degree of clarity, that a patent, if granted, would not be valid. Where the subject matter of the patent is one of complexity, of necessity, the evidence that an opponent would be entitled to adduce would itself be of considerable complexity.”
I accept, with respect, his Honour’s conclusion as to the nature of a proceeding of this kind. Neither party to this proceeding sought to argue in support of an opposing view.
On the topic of the appropriate level of respect to be shown to the views of the delegate of the Commissioner, Mr Gleeson SC, senior counsel for the applicant, argued that where, as in this case, the Court has had the benefit of evidence additional to that available to the delegate of the Commissioner and admissions formally made by the respondent the scope for giving respect to the views of the delegate is limited. In my view, and I do not understand any party to have argued to the contrary, it is appropriate in a case of this kind for respect to be accorded to the views of the delegate, particularly where those views are informed by the technical knowledge and experience of the delegate. Nonetheless, the Court must act on the basis of the evidence before it, which may expand upon, or even differ from, that before the delegate. I accept the argument advanced by Mr Gleeson that the Court must exercise caution before attributing weight to the fact that the delegate had taken a particular view where the view of the delegate was based upon evidence which was different in a significant respect from the evidence before the Court.
In short, and to use the language of the Evidence Act 1995 (Cth) (“the Evidence Act”), while the Court must determine the proceeding on the basis of the whole of the evidence before the Court, in determining whether it is satisfied that the case of the applicant has been proved on the balance of probabilities, it may, and commonly will, take into account, amongst other things, the nature of the proceeding (see [15] above) and the fact that the subject matter of the proceeding concerns a decision of an expert administrative decision-maker (see s 140 of the Evidence Act).
PATENT APPLICATION NO. 658005 (MATTER N1248 OF 1999)
The Specification
The specification of the opposed application in this matter states that:
“The present invention relates generally to working fluid compositions contained in heat transfer devices which comprise the lubricant and a heat transfer fluid.”
After describing the operation of a basic refrigeration system and the heat transfer fluids traditionally used in them, the specification refers to the implication of chlorine containing fluoroalkanes in the destruction of the ozone layer and the resultant international agreement to limit their use and production. It notes that the use of certain fluoroalkanes and hydrofluoroalkanes in place of the chlorine containing fluoroalkanes has been proposed, and that fluoroalkanes and hydrofluoroalkanes of particular interest are those compounds which have comparable boiling points and other thermal properties to the chlorine containing fluoroalkanes which they are replacing. It noted that R‑12 is generally being replaced by a new refrigerant, R‑134a.
The specification further notes that:
“Hitherto, heat transfer devices have tended to use mineral oils as lubricants. The good solubility of chlorine containing fluoroalkanes with mineral oils allows the mineral oil to circulate around the heat transfer device together with the chlorine containing fluoroalkane, and this in turn ensures proper lubrication of the compressor.
Unfortunately, R‑134a cannot be used as a direct replacement for certain of the refrigerants which are presently in use such as R‑22 and R‑502 … since it does not possess comparable boiling characteristics and thermal properties.”
The specification describes the invention as follows:
“According to the present invention there is provided a working fluid composition comprising:
(A)a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2‑tetrafuoroethane [sic]? and pentafluoro-ethane; and
(B)a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula:
O
| |R(O-C-R1)n| |
wherein
R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol;
Each R1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and
n is an integer.
The heat transfer fluid may comprise two, three or more components. Preferred hydrofluoroalkanes and fluoroalkanes are selected from the group consisting of difluoromethane (R-32), 1,1,2,2‑tetrafluoroethane (R‑134), 1,1,1,2‑tetrafluoroethane (R‑134a), pentafluoroethane (R‑125), 1,1‑difluoroethane (R‑152a), 1,1,1‑trifluoroethane (R‑143a) and 1,1,2‑trifluoroethane (R‑143).
One suitable heat transfer fluid comprises a mixture of R- 32 and R‑125. Such a mixture may comprise equal proportions of each component on a weight basis.
The present invention is particularly concerned with the provision of a working fluid composition which provides a useful replacement for the working fluids presently in use which comprise R‑22 or R‑502 as the refrigerant and a mineral oil lubricant. A particularly desirable working fluid composition in this respect is one which comprises
(A)a heat transfer fluid comprising a mixture of:
(1)tetrafluoroethane;
(2)at least one hydrofluoroalkane selected from the group consisting of difluoromethane (R-32) and 1,1,1‑trifluoroethane (R‑143a); and optionally
(3)Pentafluoroethane (R‑125); and
wherein at least two of the components of the blend are selected from R‑134a, R‑32 and R‑125; and
(B)sufficient to provide lubrication of a lubricant which is at least partially soluble in each component of the heat transfer fluid.
The tetrafluoroethane may be 1,1,1,2‑tetrafluoroethane (R‑134a) or 1,1,2,2‑tetrafluoroethane (R‑134) or a mixture of these two isomers. Preferably, however, the tetrafluoroethane is a single isomer, and more preferably is R‑134a.
Although the heat transfer fluid may comprise more than three components, it is preferably a binary of ternary mixture. The mixture may be an azeotrope or near‑azeotrope, but will normally be zeotropic.”
After identifying certain preferred embodiments of the invention, the specification states:
“Particularly suitable ternary heat transfer fluids may be selected from:
(a)R-134a + R-32 + R-143a;
(b)R-134a + R-32 + R-125;
(c)R-134 + R-32 + R-125;
(d)R-134a + R143a + R-125.”
On the topic of lubricants the specification states:
“Suitable lubricants may be selected from those currently used with R‑134a provided that the requirement of at least partial solubility is met.
We have found that if a prospective lubricant is at least partially soluble in each component of the refrigerant mixture then it will be at least partially soluble in the refrigerant mixture itself, thereby enabling its use as a lubricant with that mixture. Such a lubricant may provide an acceptable lubricating action even if it is immiscible with one or more of the components of the refrigerant mixture or with the refrigerant mixture itself.
The lubricants for use in the working fluid compositions of the invention are those selected from the class known as neopentyl polyol esters due, inter alia, to their generally high level of thermal stability. Suitable neopentyl polyol esters include the esters of pentaerythritol, polypentaerythritols such as di‑ and tripentaerythritol, trimethylol alkanes such as trimethylol ethane and trimethylol propane, and neopentyl glycol. Such esters may be formed with linear and/or branched aliphatic carboxylic acids, such as linear and/or branched alkanoic acids, or esterifiable derivatives thereof. A minor proportion of an aliphatic polycarboxylic acid, eg. an aliphatic dicarboxylic acid, or an esterifiable derivative thereof may also be used in the synthesis of the ester lubricant in order to increase the viscosity thereof. However, where such an aliphatic polycarboxylic acid (or esterifiable derivative thereof) is employed in the synthesis, it will preferably constitute no more than 30 mole %, more preferably no more than 10 mole % of the total amount of carboxylic acids (or esterifiable derivatives thereof) used in the synthesis. Usually, the amount of the carboxylic acid(s) (or esterifiable derivative thereof) which is used in the synthesis will be sufficient to esterify all of the hydroxyl groups contained in the polyol, but in certain circumstances residual hydroxyl functionality may be acceptable.
The lubricant used in the composition of the invention is one comprising one or more compounds of general formula:
O
| |R(O-C-R1)n| |
wherein
R is the hydrocarbon radical remaining after removing the hydroxl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol;
Each R1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and
n is an integer.
The aliphatic hydrocarbyl groups specified for R1 above may be substituted, eg by pendant atoms or groups such as chloro, fluoro and bromo, and/or by in chain hetero atoms such as oxygen and nitrogen. Preferably, however, such hydrocarbyl groups are unsubstituted and, except in the case where R1 is an aliphatic hydrocarbyl group containing a carboxylic acid or carboxylic acid ester substituent, contain only carbon and hydrogen atoms.”
All of the claims defining the invention are concerned with a “working fluid composition”. Claim 1 is the only independent claim. It is expressed as follows:
“A working fluid composition comprising:
(A)a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2‑tetrafluoroethane and pentafluoroethane; and
(B)a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula:
O
| |R(O-C-R1)n| |
wherein
R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol;
each R1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; andn is an integer.”
A Manner of Manufacture
Section 18(1)(a) of the Act relevantly provides:
“… a patentable invention is an invention that, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; … .”
The question of the construction of s 18(1)(a) of the Act, including the opening words of s 18(1), has not found an easy answer. However, in Bristol-Myers Squibb Company v F H Faulding & Co Ltd (“Bristol-Myers”) (2000) 97 FCR 524 Black CJ and Lehane J, with whom in this respect Finkelstein J was in general agreement, expressed the view that the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (“Philips”) (1995) 183 CLR 655 on the question was binding on this Court. Their Honours at [20] identified the essence of the decision of the High Court in Philips in the following passage from the judgment of the majority at 663-664:
“The effect of those opening words of s 18(1) is that the primary or threshold requirement of a ‘patentable invention’ is that it be an ‘invention’. Read in the context of s 18(1) as a whole and the definition of ‘invention’ in the Dictionary in Sch 1, that clearly means ‘an alleged invention’, that is to say, an ‘alleged’ ‘manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies’. In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of ‘an alleged invention’ will, notwithstanding an assertion of ‘newness’, remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purpose of the Statute of Monopolies. That does not mean that the threshold requirement of ‘an alleged invention’ corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). It simply means that, if it is apparent on the face of the specification that the quality of the inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.”
In Bristol-Myers Black CJ and Lehane J at [30], after reviewing certain other authorities, stated at [30]:
“In our view, in the light of the authorities to which we have referred, Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step – that is, would be obvious to the hypothetical non‑inventive and unimaginative skilled worker in the field (Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 260 per Barwick CJ) – then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as “known”. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court – or the Commissioner – would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of “the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell [Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232] and in Philips. If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell. It is also, with respect, the only approach which does not, in practical terms, render s 18(1)(b)(ii) otiose. Of course, once that additional knowledge is taken into account, one is applying s 18(1)(b)(ii), not the opening words of s 18(1) – unless, perhaps, one might apply either, there being, in this respect, no difference between them.”
The delegate, in the decision from which this appeal is brought, in considering the argument that the subject matter of the claims lacked the necessary quality of inventiveness to be a manner of manufacture within the meaning of s 6 of the Statute of Monopolies, stated:
“On the face of the specification before me, it deals with compositions that are useful as an ozone friendly heat transfer composition. While the refrigerants and lubricants used are known compounds, it is apparent on the face of the specification that these compositions are asserted to have an advantage over previous compositions. In my opinion, this is sufficient for there to be an invention on the face of the specification.
Turning to the issue of collocation, it is apparent that miscibility of lubricants and refrigerants is an important issue in the art. The known properties of lubricants and refrigerants do not seem to have made it apparent that a miscible collocation would be achieved. Consequently, achieving the miscible end result is something more than the known properties of the refrigerants and lubricants. The invention is not a mere collocation.”
In my view, the decision of the High Court in Philips, as explained by the Full Federal Court in Bristol-Myers, makes it plain that the delegate rightly restricted himself on this question to a consideration of the text of the specification. I see no reason to conclude that the delegate was wrong, let alone clearly wrong, in reaching the decision that the text discloses an invention, namely an ozone friendly heat transfer composition which has advantages over previous compositions.
Similarly, in my view, the delegate has not been shown to be wrong in concluding that the text of the specification discloses more than a “mere collocation of separate parts” (see Welch Perrin & Co Pty Limited v Worrel (1961) 106 CLR 588 per Dixon CJ, Kitto and Windeyer JJ). The feature of the partial solubility of the lubricant in each component of the refrigerant mixture referred to in the text provides the element of interaction between the integers necessary in the case of a combination patent.
Novelty - Generally
Section 18(1) relevantly provides:
“… a patentable invention is an invention that, so far as claimed in any claim:
(a)…
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; … .”
Section 7(1) of the Act relevantly provides:
“For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document …;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents …, if the relationship between the documents … is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.”
Schedule 1 of the Act relevantly defines “prior art information” in the following way:
“‘prior art information’ means:
(a)for the purposes of subsection 7(1) – information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and
(b) …”
The definition of “prior art base” in Schedule 1 of the Act is as follows:
“prior art base means:
(a)in relation to deciding whether an invention does or does not involve an inventive step:
(i)information in a document, being a document publicly available anywhere in the patent area; and
(ii)information made publicly available through doing an act anywhere in the patent area; and
(iii)where the invention is the subject of a standard patent or an application for a standard patent – information in a document publicly available outside the patent area; and
(b)in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(ii)information contained in a published specification filed in respect of a complete application where:
(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B)the specification was published after the priority date of the claim under consideration; and
(C)the information was contained in the specification on its filing date and when it was published.”
Schedule 1 of the Act defines “file” as meaning “file with the Patent Office”. For this reason “a published specification filed in respect of a complete application” within the meaning of the above definition is a published Australian specification.
In short, the documentary prior art base against which novelty is to be assessed in relation to standard patents under the Act is documentary information publicly available anywhere in Australia, documentary information publicly available anywhere in the world and information contained in a prior Australian patent specification published after the priority date.
The definition of what constitutes the prior art base is one of the major changes introduced by the Act. The Act has abandoned the concept of “prior claiming” found in the Patents Act 1952 (Cth) in favour of the “whole of contents” approach. That is, under the Act, the prior art base now includes information disclosed in a published specification filed in respect of a complete application where the information, if it were the subject of a claim, would have an earlier priority date than the claim under consideration and is not limited to the claims of that specification. The conditions (B) and (C) of subparagraph (b)(ii) of the definition of “prior art base” must, of course, also be met. The Industrial Property Advisory Committee in its report Patents, Innovation and Competition in Australia, Canberra 1984 at par 7.3 stated:
“A further particular aspect of the novelty requirements is that a claim to an invention may be anticipated (i.e. rendered not novel) by a patent specification having an earlier priority date, notwithstanding that at the priority date of the claim in question, the earlier specification was unpublished and its contents were not publicly available. At present, under Australian law, such anticipation does not arise except as regards a claim which is specifically prior claimed by a claim of the earlier specification. This prior claiming approach has proved to be unsatisfactory in practice and, in our opinion, it is too narrow. In other countries there is adopted a relatively simple ‘whole contents’ approach, under which any disclosure contained in an earlier specification (not being a specification relating to an application which has lapsed or been withdrawn) may be relied upon as an anticipation for determining novelty but not obviousness. We are of the opinion that this approach should now be adopted in Australia, in relation to both standard and petty patents.”
The applicant has relevantly pleaded that:
“[t]he invention, so far as claimed in each and all of the claims [of the patent application] was published before the priority date of each such claim or is otherwise not novel in light of the following acts of publication …:
(a)Australian Application No. 54480/90 [“the Lubrizol Application”] which was open for public inspection at the Australian Industrial Property Office on 16 November 1990;
(b)Australian Patent No. 638710 [“the Lubrizol patent”] which was open for public inspection at the Australian Industrial Property Office on 16 November 1990;
(c)Australian Patent Application No. 74076/91 [“Daikin”], priority date 4 April 1990, which was open for public inspection at the Australian Industrial Property Office on 10 October 1991;
(d)Australian Patent Application No. 91433/91 [“Du Pont No 1”], priority date 17 December 1990, which was open for public inspection at the Australian Industrial Property Office on 22 July 1992;
(e)Australian Patent Application No. 91738/91 [Du Pont No 2], priority date 17 December 1990, which was open for public inspection at the Australian Industrial Property Office on 9 July 1992;
(f)Australian Patent No. AU-A-13959/92 [“the ICI Application”], which has a priority date of 18 April 1991 and was open for public inspection at the Australian Industrial Property Office on 22 October 1992;
…”
It was accepted by the parties that, in general terms, the test to be applied in respect of lack of novelty is the reverse infringement test, that is, “whether the alleged anticipation would, if the patent were valid, constitute an infringement” (see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 per Aickin J at 235 cited by Lockhart J in R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568). The reverse infringement test requires that the prior publication contain “clear and unmistakable directions to do what the patentee claims to have invented” (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 per Sachs LJ at 486).
In Nicaro Holdings v Martin Engineering (1990) 91 ALR 513 at 517 Lockhart J said:
“It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication. …” (citations omitted)
Novelty, however, is distinct from obviousness. As Sundberg J pointed out in MJA Scientifics International Pty Ltd v SC Johnson & Son Pty Ltd (1998) 43 IPR 287 at 303:
“Where the alleged anticipation does not disclose all the essential integers of the patent in suit, the fact that the skilled addressee could come from the alleged anticipation to the patent in suit without the exercise of inventive ingenuity in the light of common general knowledge does not establish lack of novelty.”
Novelty - Lubrizol
For present purposes no distinction need be drawn between the Lubrizol Application and the Lubrizol patent. I shall therefore refer only to the Lubrizol patent. The Lubrizol patent was open for public inspection at the Australian Industrial Property Office on 16 November 1990. I am satisfied that it was at that date “publicly available anywhere in the patent area” within the meaning of the definition of “prior art base” in Schedule 1 of the Act. The priority date of the claims of the Lubrizol patent is 25 April 1989. The Lubrizol patent has been held by Emmett J to be valid (see ICI Chemicals v Lubrizol Corporation [1999] FCA 345, 45 IPR 577; [1999] FCA 662, 45 IPR 617; [1999] FCA 1417, AIPC 91‑521; [1999] FCA 1636, 47 IPR 110). His Honour’s decision was affirmed by the Full Court of this Court (ICI Chemicals v Lubrizol Corporation [2000] FCA 1349, 106 FCR 214).
It is convenient to adopt Emmett J’s summary of the Lubrizol specification. In the first of His Honour’s judgments ([1999] FCA 345, 45 IPR 577) at [35]-[45] his Honour observed:
“The specification states that the alleged invention relates to liquid compositions comprising a major amount of at least one fluorine containing hydrocarbon and a minor amount of at least one lubricant. After describing the background of the alleged invention, referring to the ODP of CFCs, the patent states that HCFC-22 and HFC-134a are generally recommended as being alternatives to CFCs in refrigerant applications and that HFC-134a is particularly attractive because its ODP has been reported as being zero. The specification refers to the need for any proposed replacement refrigerant to be compatible with the lubricant in the compressor and the fact that the proposed new alternative refrigerants have solubility characteristics different from the refrigerants presently in use. The specification stated that the problem was particularly evident in automotive air conditioning since the compressors are not separately lubricated but a mixture of refrigerant and lubricant circulates throughout the entire system.
The specification also states that, in order to perform as a satisfactory refrigeration liquid, the mixture of refrigerant and lubricant must be compatible and stable over a wide temperature range. It states that it is desirable for the lubricant to be soluble in the refrigerant at concentrations of about 5 to 15% over a temperature range from minus 40ºC to 80ºC. The specification also states that the refrigeration liquid must have acceptable viscosity characteristics, even at high temperatures, and should not have a detrimental effect on materials used as seals in compressors.
All of the claims made in the specification refer to a ‘liquid composition’. The liquid composition is said to comprise two elements, being a refrigerant and a lubricant. Various alternatives of each, and combinations of those alternatives, are set out in the 26 claims. In each of the claims, more than 50% of the ‘composition’ must be refrigerant and less than 50% must be lubricant. In some of the claims a more specific proportion is specified.
The claims can be divided into three groups. Claim 1 is for:
‘ 1. A liquid composition comprising:
(A) a major amount of at least one fluorine-containing hydrocarbon containing 1 or 2 carbon atoms; and
(B) a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formulaR[OC(O)R1]n
wherein…’
Claims 4 to 9 inclusive are generally dependent on claim 1. Claim 1 and claims 4 to 9 all concern HCFCs and involve variations only in the lubricant. Lubrizol concedes that it cannot maintain those claims.
Claims 2 and 3 are dependent on claim 1. However, the variation is in relation to the refrigerant rather than the lubricant. Claim 2 varies claim 1 by providing that fluorine is the only halogen in the fluorine-containing hydrocarbon (A). That is to say, the refrigerant must be an HFC. Claim 3 varies claim 1 by providing that the refrigerant must be R-134a. Lubrizol wishes to maintain claims 2 and 3 but accepts that it will be necessary for an amendment to be made to those claims if claim 1 is deleted.
Claim 10 is relevantly in the following terms:
‘ 10. A liquid composition comprising:
(A) from 70 to 99% by weight of at least one fluorine-containing hydrocarbon containing 1 or 2 carbon atoms and wherein fluorine is the only halogen present; and
(B) from 1 to 30% by weight of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formulaR[OC(O)R1]n
wherein…’
Claims 11 to 17 are dependent on claim 10 and comprise narrowing variations of claim 10. Claim 11 involves variation of the refrigerant disclosed in claim 10 and requires that the refrigerant must be R-134a. Claims 12 to 17 inclusive involve variation of the lubricant disclosed in claim 10.
Claim 18 is in the following terms:
‘ 18. A liquid composition comprising:
(A) from 70 to 99% by weight of 1,1,1,2-tetrafluoroethane; and
(B) from 1 to 30% by weight of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing from 3 to 10 hydroxyl groups and characterized by the general formulaR[OC(O)R1]n
wherein…’
Thus, in claim 18 the refrigerant would be R-134a. Claims 19 to 26 are all narrowing variations of claim 18 in which the variation relates to the lubricant.
Each of claims 1, 10 and 18 contains a series of definitions for ‘R’, ‘R1’ and ‘n’, the variables in the formula which appears in each of the claims. The variations of the lubricant in the claims involve changes in the definitions of those variables. The lubricants which are the subject of the patent are synthetic esters. Synthetic esters are the product of the reaction of acids with alcohols. The reaction produces esters and water. The process is referred to as esterification. The claims identify the classes of acids and alcohols which are capable of producing satisfactory esters.
No claim is made for any of the compounds described in the specification. The essence of the alleged invention is the identification of a soluble organic lubricant which is suitable for use in refrigeration systems with HFCs generally and R-134a in particular. Putting it another way, the alleged invention is the identification of a lubricant having the properties described above in relation to HFCs generally and R-134a in particular.”
The respondent concedes that the Lubrizol patent discloses lubricants within the patent application. However, it contends that the Lubrizol patent does not disclose the heat transfer fluid comprising the mixtures of refrigerants set out in the claims of the specification in combination with those lubricants. The delegate accepted this contention. In his written decision of 11 October 1999 the delegate said:
“The anticipation explicitly refers to single HFC’s [sic], and especially to R-134a. Mixtures of HFC’s [sic] are mentioned…. The intellectual content of the disclosure includes mixtures of HFC’s [sic], thus including compositions of the present application.
The critical question is which mixtures are clearly disclosed, or form part of the technical information that the citation makes public. I do not believe that mixtures of any fluorocarbons should be regarded as clearly disclosed. I consider it reasonable to regard the citation as clearly disclosing mixtures of those fluorocarbons that are themselves specifically disclosed, either as individual components or components of mixtures. [In the present case, that is those that are identified by their code number, eg R-22, R-23 etc]. R-32 and R-125 are not specifically referred to in the description. Consequently it is unlikely that a reader would consider that they had been taught mixtures of HFC’s [sic] including R-32 or R-125. On this basis I consider that the Lubrizol patent does not disclose a mixture including either R-32 or R-125.”
The respondent argued that it was for the Court to construe the Lubrizol patent and that expert evidence was inadmissible except to the extent that it was necessary to explain a technical matter or anything not expressed linguistically (eg a photograph). It submitted that the Full Court in ICI Chemicals v Lubrizol Corporation was in error in adopting a different approach. The Full Court in ICI Chemicals v Lubrizol Corporation at [49] after referring to certain aspects of a patent described as “the Williamitis patent” and to aspects of another patent referred to in the Williamitis patent observed:
“To say those things, however, does not answer the question whether, with sufficient clarity, the Williamitis patent disclosed a composition made up of an HFC refrigerant and the lubricants which it described, that is – the combining of lubricants and refrigerants being of itself hardly novel – the selection of a group of esters as suitable lubricants to be combined with an HFC (see Rocky Mountain Traders Ltd v Hewlett Packard GmbH [2000] FSR 411 at 427‑428). No doubt expert evidence would have been relevant to that question. But the only evidence to which we were referred was that of Professor Rae. Professor Rae was held not to represent the skilled addressee. In any event, the passage in Professor Rae’s affidavit evidence to which we were referred, while it deals with the meanings of technical terms used, is not, we think, directed towards the present question ….”
As I understand the submission made by Mr Catterns QC, senior counsel for the respondent, it was that, because it was for the Court to construe the prior publication (in this case the Lubrizol patent), expert evidence could not be received from a skilled addressee as to what any aspect of the text of the prior publication revealed to him or her. The help that the Court could legitimately receive from a skilled addressee with respect to construing the text of (as opposed to photographs or drawing within) the prior publication was limited to evidence elucidating the meaning of technical terms or explaining the technical significance of any matter to which reference was made in the text. Reliance was placed by the respondent on the earlier Full Court decision of Nicaro Holdings Pty Ltd v Martin Engineering Co (“Nicaro”) (1990) 91 ALR 513.
In Nicaro Gummow J, with whom Jenkinson J agreed, at 523-524 said:
“Only lack of novelty was relied upon in the appeal. Much of the submissions before us concerned the construction of claim 1 in the patent and the interpretation of documents each said to amount to prior publication of the claimed invention. …
The task of the court in such a situation was explained by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485, as follows:
‘The earlier publication and the patentee’s claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. …
When the prior inventor’s publication and the patentee’s claim have respectively been construed by the court in the light of all properly admissible evidence as to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee’s claim is new … falls to be decided as a question of fact.’
It is not for the court by its own efforts to put itself in the position of a person skilled in the relevant art at the priority date of the patent ….”
At the heart of the submission advanced by the respondent, as I understand it, is the proposition that although the task of the Court is to construe the prior publication as it would have been construed by a notional skilled addressee at the relevant date, an expert witness who represents the notional skilled addressee may not be asked how he or she would have construed it at that date or even what particular aspects of the prior publication would have disclosed to him or her at that date. So, for example, objection was taken in this case to the following questions addressed to an expert witness:
“Could I direct your attention to … element A of claim 1 which speaks of a major amount of at least one fluorine containing hydrocarbon … would you have understood that in 1991 as including the situation where you have a single HFC?”
and
“… so that amongst the many things this patent would have taught you, one of them is provided you have an ester lubricant that matches the formula of B, whatever that means, then that would be a suitable lubricant to use with mixtures of HFCs?”
The Evidence Act applies in relation to all proceedings in a federal court (see s 4 of the Evidence Act) and thus applies to all proceedings in this Court. Although no provision of the Evidence Act was relied upon by the respondent as rendering evidence of the kind to which it objected inadmissible, it is necessary for consideration to be given to the Evidence Act. The central provision of the Evidence Act so far as the admissibility of evidence generally is concerned is s 56. Section 56 provides:
“(1)Except as otherwise provided by this Act, evidence that is relevant in a proceeding is admissible in the proceeding.
(2)Evidence that is not relevant in the proceeding is not admissible”.
Section 55(1) of the Evidence Act provides:
“The evidence that is relevant in a proceeding is evidence that, if it were accepted, could rationally affect (directly or indirectly) the assessment of the probability of the existence of a fact in issue in the proceeding.”
Even if it be accepted that the Evidence Act does not codify the law of evidence (see Pepsi Seven-Up Bottlers Perth Pty Ltd v Commissioner of Taxation (1995) 62 FCR 289 at 301 per Hill J), s 56 of the Evidence Act seems to me to disclose a clear intention that all issues of the admissibility of evidence are to be governed by the Evidence Act. On this basis, the respondent’s argument requires consideration to be given to whether evidence given by an expert witness in response to questions such as the above is relevant in the proceeding. That is, whether it is evidence that, if it were accepted, could rationally affect, directly or indirectly, the assessment of the probability of the existence of a fact in issue in the proceeding. The Evidence Act contains no definition of the phrase “a fact in issue in the proceeding”.
As the learned authors of Phipson on Evidence, 14th Ed, have pointed out at par 1‑03:
“No satisfactory definition of the term “fact” has been or perhaps can be given. Broadly it applies to whatever is the subject of perception or consciousness. But judicially it has generally to be distinguished from law, sometimes from opinion and sometimes from testimony and documents. It is not possible always to apply these distinctions consistently.”
It is plain that the phrase “a fact in issue in the proceeding” in s 55 of the Evidence Act is intended to carry a wide, rather than a restricted, meaning. Were the phrase to be given a narrow meaning, significant limits on the evidence able to be adduced in proceedings in federal and ACT courts would result. Indeed, a question as to the compatibility of the Evidence Act with Chapter III of the Constitution might well arise.
In my view, authorities on the distinction between questions of fact and questions of law where a Court has jurisdiction to determine only questions of law have no relevance to the determination of what is “a fact in issue in the proceeding” within the meaning of s 55 of the Evidence Act (see, for example, Australian Gas Light Co v Valuer‑General (1940) 40 SR (NSW) 126 per Jordan CJ at 137; Collector of Customs v Agfa‑Gevaert (1996) 186 CLR 389 at 394-398). Nor, in my view, are authorities on the question of what matters are for determination by a jury, or other trier of fact, and what matters are for judicial determination helpful for present purposes (see Cross on Evidence, Australian Ed., Ch 6).
Although it may not be wise to attempt a comprehensive definition of the phrase “a fact in issue in the proceeding” in the context of s 55 of the Evidence Act, it encompasses, in my view, at least all of those matters which one party must prove in order to succeed in the proceeding and that the other must prove to establish its defence.
Although the proper construction of a prior publication is not an issue of fact (it is a question of law – see [43] above) it is not an issue of pure law. That is, it is not an issue on which evidence may not be adduced. It has long been accepted that evidence may be adduced to assist the Court in the construction of technical publications such as patent specifications. The evidence that may be adduced is evidence from a person skilled in relevant art as at the date at which the publication is to be construed. The nature and extent of the evidence that may be adduced from that skilled person will, by reason of the terms of ss 55 and 56 of the Evidence Act, depend upon the proper identification of the fact in issue in the proceeding the probability of the existence of which his or her evidence could rationally affect.
It would seem that the approach of the respondent, which favours a limited role for the skilled person, is based on an assumption that the relevant facts in issue in the proceeding are the meaning of technical terms used in the publication and the technical significance of any matter to which reference is made in the text. Depending on the breadth of meaning to be afforded to the expression “technical significance of any matter” (and the respondent must be understood to have contended for a narrow meaning) this approach would significantly, in my view, restrict the evidence able to be given by the skilled person. Evidence limited by reference to a fact or facts in issue so defined would in many cases, as it seems to me, be insufficient to equip the Court to construe the publication as it would have been construed, at the relevant date, by a notional skilled addressee.
An alternative approach is to identify the relevant fact in issue as the total content of the body of knowledge, skill and experience that a notional skilled addressee would be assumed to have at the relevant date. Once apprised of this content, the Court would be in a position to construe the publication as it would have been construed by the notional skilled addressee. The principal difficulty with this approach is its manifest impracticality. In most, if not all, cases it would be wholly unrealistic for a party to attempt, by the process of calling evidence from an expert witness or expert witnesses, to impart to a judge the total content of the body of knowledge, skill and experience of a notional skilled addressee.
A further alternative is to identify the relevant fact in issue as the construction that a notional skilled addressee would have placed on the publication at the relevant date. On this approach, evidence from a person with the knowledge, skill and experience of the notional skilled addressee of how he or she would have read the publication at the relevant date would be both relevant (s 55 of the Evidence Act) and, subject to the Evidence Act, admissible in the proceeding (s 56 of the Evidence Act).
In considering which of the above alternatives reflects the intention of the Evidence Act, it is, in my view, appropriate to recognise that it is relatively commonplace for judges with limited scientific higher education to be required to hear and determine proceedings, including proceedings concerning patent applications, touching on matters of considerable scientific complexity. It would be a matter of regret, in my view, if the Evidence Act were to be construed as imposing rigid limits on the nature and extent of the assistance that judges may receive from expert witnesses. A likely consequence in the area of patent law will be that the Court will more frequently call in the aid of an assessor under s 217 of the Act with consequent cost implications for parties. As to the use of an assessor see Genetic Institute Inc v Kirin-Amgen Inc (No 2) (1997) 149 ALR 247.
As it is unlikely that the legislature intended the Evidence Act to impact significantly on the nature of the evidence able to be adduced in respect of the construction of technical publications, it is useful to consider the state of the authorities prior to the enactment of the Evidence Act. Neither the researches of counsel, nor my own researches, have identified much relevant authority.
The authority (of which I am aware) which might be thought to touch most clearly on this issue is Ore Concentration Co Ltd v Sulphide Corporation Ltd (1914) 31 RPC 206, a decision of the Judicial Committee of the Privy Council. The appeal, which came from the Supreme Court of New South Wales, involved consideration of whether a patent was invalid by reason of certain previous publications including a journal article. In giving consideration to the content of the article, Lord Parmoor, delivering the advice of the Committee, at 223-224 said:
“The value of the Respondents’ evidence on the meaning and teaching of this document was much vitiated owing to the form in which certain questions were put to their expert Mr Blount. He was asked to read the document with the knowledge which he would have in 1901. A question in this form is not admissible, and the objection taken by the Counsel for the Appellants at the time was well founded. It is a general canon of construction, applicable to all documents, that the document should be construed as if the Court had to construe it at the date of publication, to the exclusion of information subsequently discovered. In Patent cases the observance of this canon of construction has great importance. It is common, in such cases, to have a number of documents placed in evidence extending over a considerable period of time, each of which is relied on as disclosed relevant information prior to the date of the Patent. If these documents require the assistance of experts to aid the Court in construction, the Court is deprived the benefit of such assistance if the witness is asked to read the document, not in reference to what was known at the date of publication, but to knowledge only acquired at some subsequent date.” (emphasis added)
Although the precise connotation of the word “read” in the above passage may be uncertain, it seems likely that the Privy Council in Ore Concentration Co Ltd v Sulphide Corporation Ltd took no objection to the expert witness, Mr Blount, being asked to read the document with his expert knowledge. The criticism made by the Committee was as to the date at which he was asked to bring his knowledge to bear.
Another case which might be thought to touch on this issue is Leonardis v Sartas No 1 Pty Ltd (“Leonardis v Sartas No 1”) (1996) 67 FCR 126. Although heard and determined after the coming into operation of the Evidence Act, the judgment of the Full Court in this case contains no express reference to the Evidence Act. In Leonardis v Sartas No 1 at 137‑138 the Full Court observed:
“…it would not be right to hold that a drawing alone could not provide fair basis for a particular integer of a claim. It is a matter of interpretation of the drawing. In principle, the problem for the Court is not different from the problem arising when words are examined in order to determine whether they provide fair basis for a particular integer of a claim. But, just as technical words or scientific concepts may require the assistance of experts to enlighten the understanding of the Court so as to put it in a position to determine such a question, so, in the case of the interpretation of a drawing, the Court may need assistance. There is no rigid rule, since whether guidance is required must always depend upon the particular issue and the particular drawing. But where a close analysis of drawings, or indeed of descriptions, in patent documents is called for, the Court may need the assistance of those with the appropriate technical expertise … In the present case, the Court does have the evidence of the engineer indicating what the relevant drawings made apparent to him. …The Court can read this material having regard to what is said in Blanco White, Patents for Inventions (5th ed., 1983) sec. 2-101 at p.9:
‘As with any other document, questions of construction of a patent specification, arising in legal proceedings, are for the court to decide as a matter of law; for this purpose the court must first instruct itself as to the technical matters involved, so as to place itself in the position of one acquainted with the art concerned - in the position, that is, of a person to whom the specification is addressed. The document must in particular be read with the skilled addressee's understanding of what the inventor is trying to achieve and his appreciation of what is important, what not.’” (emphasis added)
The reference, which I have emphasised in the above passage, to “descriptions” indicates that the Full Court did not accept, as the respondent in this case argued, that a rigorous distinction is to be drawn between the receipt of expert evidence concerning what is revealed by drawings and photographs, on the one hand, and by text on the other. Moreover, it appears that the Full Court may have considered it appropriate for an expert to give evidence of what a description in a patent specification would have made apparent to him or her.
In my view, the authorities do not demonstrate that the common law turned its face against allowing a person with the knowledge, skill and experience of the notional skilled addressee to give evidence of how he or she would have read and understood a publication. I therefore find that there is no compelling reason for construing the Evidence Act in a way which would render such evidence inadmissible. I conclude that when a court is required to construe a publication from the position of the notional skilled addressee, the relevant fact in issue within the meaning of s 55 of the Evidence Act is the construction that would be placed on the publication by the notional skilled addressee.
For the above reasons, I do not accept that the Full Court in ICI Chemicals v Lubrizol Corporation adopted an erroneous approach. I do, however, accept the alternative submission of the respondent that such expert evidence is not determinative of the construction of the document. It is evidence of how one skilled addressee would have read the document at the relevant time. It is for the Court to determine the weight, if any, to be accorded to the evidence. Ultimately it is for the Court to construe the document with the assistance of all of the relevant evidence adduced in the proceeding.
In ICI Chemicals v Lubrizol Corporation [1999] FCA 345, 45 IPR 577 Emmett J at [70]-[71] discussed the question of the appropriate date at which prior art should be taken for the purpose of making due assessment of novelty. Although it was not critical to his Honour’s reasoning, his Honour appears to have taken the view that the appropriate date was the date of the publication of the prior art and not the priority date of the specification allegedly lacking novelty. When his Honour’s judgment came before the Full Court on appeal (see (2000) 106 FCR 214), the Full Court did not find it necessary to decide the issue but it drew attention to the fact that in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 at 248 the Full Court had assumed that the skilled addressee was to consider the prior art at the priority date of the patent the claim of which are under challenge. The Full Court in ICI Chemicals v Lubrizol Corporation further drew attention to the fact that the same assumption appears to have been made by Lord Reid in C Van der Lely NV v Bamfords Ltd [1963] RPC 61 at 71 in a passage to which Gummow J in Nicaro referred with evident approval.
Understandably, counsel in these proceedings appear to have acted on the assumption that prior art is to be considered at the priority date of the patent the claims of which are under challenge. In the circumstances I shall also proceed on that basis. I note, however, that in Ore Concentration Co Ltd v Sulphide Corporation Ltd the Privy Council expressed the firm view that prior art is to be construed as at the date of its publication (see [57] above). It seems to me that this issue awaits authoritative resolution in Australia.
In urging the Court to conclude that the delegate was clearly wrong in concluding that it is unlikely that the Lubrizol patent would, at the relevant date, have disclosed to a skilled addressee a mixture including either R‑32 or R‑125, the applicant drew attention to the evidence of two expert witnesses called on behalf of the respondent. This evidence was received at trial subject to the objection taken by Mr Catterns discussed above. I was not invited to exercise the general discretion to refuse to admit evidence created by s 135 of the Evidence Act and I do not myself see any reason to do so. For the reasons given above, I consider it appropriate for such evidence to be received unconditionally. The evidence of each of the two expert witnesses is discussed in the following paragraphs.
Mr Roger Symons obtained the degree of Bachelor of Engineering from the University of Queensland in 1958 and since 1960 has worked as an air conditioning engineer. He has been a member of the Australian Institute of Refrigeration, Air Conditioning and Heating (AIRAH) since 1965 and was President of the Victorian Division of AIRAH in 1988. He has been a member of various technical committees established by AIRAH to investigate and report on various aspects of refrigeration engineering. Since 1990 he has been Technical Convenor of AIRAH and in that position carries responsibility for answering questions from members of AIRAH and the public relating to technical matters relating to refrigeration systems including the use of refrigerants and compressor lubricants which are used as part of refrigeration systems. I am satisfied that Mr Symons was, at the alleged priority date of the patent application (11 October 1991) a person skilled in a portion of the art to which the patent application relates. That is, that he could have formed part of a team the combined skills of which would be those normally employed in the art (ICI Chemicals v Lubrizol Limited [2000] FCA 345, 45 IPR 577 per Emmett J at [100]). I do not understand either party to have suggested otherwise.
Mr Symons was cross-examined concerning, amongst other things, what he would have been taught by the Lubrizol patent in 1991. During the course of his cross-examination Mr Symons agreed that the summary of the invention in the Lubrizol patent (see [44] above) would have disclosed to him in 1991 that component (A) of the liquid composition encompassed, at least, a single fluorine containing hydrocarbon, examples of which would have included R-134a, R-125, R-32 and R-143, and would also encompass blends of two, three, four or more HFCs.
Professor John Ball is the Associate Dean (Academic) and Director of Teaching Quality at the Faculty of Engineering at the Royal Melbourne Institute of Technology (“RMIT”). He attained the degree of Bachelor of Engineering, Metallurgical and Chemical from the University of Adelaide in 1961 and the degree of Masters of Engineering Science from the University of Melbourne in 1970. From 1981 to March 1991 he was employed as Chief Design Engineer at Luke Air Conditioning Pty Ltd (“Luke”). Luke manufactured large packaged water chillers which cool water for use in the air conditioning of buildings and for air conditioners for computer rooms. His duties required him to have a good knowledge of the properties of refrigerants and the performance and operation of refrigerant systems and components of refrigeration systems. I am satisfied that Professor Ball was in 1991 a person skilled in a portion of the art to which the patent application relates in the sense identified in [64] above.
Professor Ball was also cross-examined as to what he would have learned from the Lubrizol patent in 1991. He agreed that element (A) of the summary of the invention would have indicated a situation where there was a single HFC so that it would cover anything that has fluorine in one or two carbonators. Specifically he agreed that it would include R-125 together with an ester of formula (B) and similarly would include R-134a and R-32 respectively plus an ester. Further he agreed that one of the things that the Lubrizol patent would have taught him was that provided that you have an ester lubricant that matches the formula of (B) then you would have a suitable lubricant to use with any mixtures of HFCs.
I conclude on the basis of my own reading of the Lubrizol patent and with the benefit of the evidence of Professor Ball, and to a lesser extent Mr Symons, that the delegate was clearly wrong in concluding that “it is unlikely that a reader would consider that they [sic] had been taught mixtures of HFCs including R-32 or R‑125” by the Lubrizol patent. I observe that in ICI Chemicals v Lubrizol Corporation [1999] FCA 345, 45 IPR 577 Emmett J concluded, apparently on the basis of a concession, that if the Lubrizol patent was valid it had been infringed when certain air conditioning and refrigeration systems were retrofitted using a refrigerant that was a ternary mixture of R-32, R‑125 and R‑134a and a lubricant that was a synthetic ester.
It was argued by the respondent that the single example of a blend of 2 HFCs referred to in the Lubrizol patent under the heading “Description of the Preferred Embodiments” does not teach the mixture of the patent application. The patent application requires at least 2 HFCs out of R-32, R‑134a and R‑125 and there is no mention of R‑32 or R‑125 in the Lubrizol patent. The answer to this argument in my view is that integer (A) of the invention of the Lubrizol patent is “a major amount of at least one fluorine containing hydrocarbon containing 1 or 2 carbon atoms” and the specification refers to mixtures of fluorine‑containing hydrocarbons including binary and ternary mixtures. HFCs are fluorine‑containing hydrocarbons. Even without the assistance of Professor Ball’s evidence, I would have been inclined to conclude that integer (A) is to be understood as encompassing any mixtures of HFC containing one or two carbon atoms. Read as a whole, it seems to me, that the Lubrizol patent discloses an invention principally concerned with lubricants, albeit lubricants useful within refrigerant compositions. I understand the Lubrizol patent, as it seems to me that Emmett J did also, as disclosing in integer (A) of the invention a broad class of potential refrigerants, extending beyond those identified specifically in the preferred embodiments, with which the lubricant of integer (B) might be used. With the benefit of Professor Ball’s evidence I am satisfied that a person skilled in the art to which the patent application relates would have so read it.
The fact that, as the respondent submitted, at the date of the publication of the Lubrizol patent, R‑22 was perceived as part of the solution to the problem of finding a suitable replacement refrigerant, seems to me to be of little significance. The Lubrizol patent expressly refers to a fluorohydrocarbon mixture which does not include R‑22. It cannot be understood as disclosing only mixtures which include R‑22, an HCFC.
I conclude that the Lubrizol patent does deprive the patent application of novelty.
Lest I be wrong in my above conclusion, it is appropriate for me to give consideration to the other grounds of opposition relied on by the applicant. There is, however, a significant degree of artificiality in this exercise because of the inter-connected nature of those grounds. I propose for this reason to treat the additional arguments in a more summary way than I would otherwise have considered appropriate.
Novelty – Other Publications
The applicants further argued that the alleged invention as claimed in each of the claims of the patent application was not novel having regard to the publication of Daikin, Du Pont No. 1 and Du Pont No. 2. Each of Daikin, Du Pont No. 1 and Du Pont No. 2 concerns a refrigerant mixture, as opposed to a refrigerant composition comprised of one or more refrigerants plus a lubricant. As, in my view, the lubricant is an essential integer of the alleged invention disclosed by the specification, I am satisfied that the alleged invention was not anticipated by any of Daikin, Du Pont No. 1 or Du Pont No. 2 so as to render it not novel having regard to the prior art information made available by their respective publications. It is immaterial, in my view, that each of the asserted anticipations mentions that a lubricant may be added to the refrigerant or agent which is the relevant invention. I accept the submission of the respondent that none of Daikin, Du Pont No. 1 or Du Pont No. 2 teaches the polyol ester lubricant the boundaries of which are “engineered” by the alleged invention of the specification (see ICI Chemicals v Lubrizol Corporation [1999] FCA 345, 45 IPR 577 at [86]).
This argument was, it seems to me, rejected by the Full Court of this Court in Aktiebolaget Hässle v Alphapharm Pty Ltd (“Alphapharm”) [2000] FCA 1303, 51 IPR 375 at [71]‑[72] where the Court said:
“While manufacturers’ literature may well play an important role in the work of a hypothetical formulator, as Lehane J observed at para 42, in the light of the authorities it would be a ‘bold’ submission to contend that material, which is not part of common general knowledge, can be relied upon to determine the question of obviousness. Nevertheless, by a process that his Honour characterised as taking the routine steps that the hypothetical formulator would take for the purpose of formulating a drug, such documents were held to be admissible for the purpose of raising ‘general ideas’.
If that process were permissible, the concept of common general knowledge would lose much of its significance. If it is shown that the particular skilled worker in the field would, as a matter of routine, read literature beyond the common general knowledge of the field, the distinction becomes quite meaningless. The question is not whether a skilled worker conducting a literature search would find pieces from which there might have been selective elements which make up a patent: Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 293. What might be found by a diligent searcher is not the same as ‘common general knowledge’.”
See also Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 per Aickin J at 294-295.
I therefore reject those arguments of the applicant which sought to establish obviousness on the basis of the common general knowledge as it existed in the patent area before the asserted priority date of the claims considered alone, where that common general knowledge was sought to be established by reference to particular publications not shown to be part of the common general knowledge in the field. I also reject the argument that the alleged invention the subject of the patent application would clearly have been obvious to a person skilled in the relevant art in the light of the common general knowledge (in the traditional sense) as it existed in Australia before the priority date of the claims. In particular I am not satisfied that the use of a lubricant of the formula of the ester lubricant as part of a refrigerant composition of the kind comprising the alleged invention, formed part of the common general knowledge at the relevant date.
I turn to give consideration to the arguments of the applicant which placed reliance on s 7(2) of the Act. For the purpose of these arguments, the applicant relied on certain prior art information made publicly available in a single document. The relevant documents are:
(a)Australian Patent Application No. 54480/90 (“the Lubrizol patent”) which was publicly available at the Australian patent office on 16 November 1990;
(b)International Patent Application No. PCT/US90/02069 (“the International Lubrizol patent”) which was also publicly available at the Australian patent office on 16 November 1990;
(c)Australian Patent Application No. 74076/91 (“the Daikin patent”) which was pleaded to have been publicly available at the Australian patent office on 10 October 1991; and
(d)International Patent Application No. PCT/US90/04332 (“the Allied Signal patent).
Before the applicant is entitled to place reliance on the information contained in any of the above documents, it must establish that the information was information that the hypothetical skilled worker “could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area” (see s 7(3) of the Act).
Considerable evidence was lead at the hearing as to the nature and extent of the search effort required to identify from electronic data bases the Lubrizol patent using search terms that the nature of the work in the relevant art in the patent area would suggest should be used. I do not consider it necessary to review all of that evidence. My conclusion, having given consideration to the whole of the evidence, is that although it is possible to identify the Lubrizol patent by using appropriate search terms in a search of relevant electronic data bases, the applicant has failed to establish that the patent was reasonably ascertainable in the sense required by s 7(3) of the Act. I accept the submission of the respondent that the search exercise of which the applicant called evidence was likely to have been influenced by knowledge of the result sought to be achieved, and not such as would reasonably be expected to be undertaken by the hypothetical skilled worker.
The information made publicly available in the Daikin patent and in the Allied Signal patent, even if it be assumed that each of those patents was reasonably ascertainable at the relevant time, would not, in my view, when considered together with the common general knowledge, have rendered the alleged invention obvious. The Daikin patent and the Allied Signal patent are not concerned with lubricants but are concerned solely with refrigerant compositions. The information in the patents could not supplement the common general knowledge to overcome the deficiency identified in [105] above.
Section 40
Section 40(2) of the Act relevantly provides:
“A complete specification must:
(a)describe the invention fully, including the best method known to the applicant of performing the invention; and
(b)where it relates to an application for a standard patent – end with a claim or claims defining the invention; ….”
In Kimberly‑Clark Australia Pty Ltd v Arico Trading International Pty Ltd (“Kimberly‑Clark v Arico Trading”) [2001] HCA 8, 50 IPR 513, 177 ALR 460 at [16] the High Court, in relation to s 40(2)(a), stated:
“The question … is whether the invention has been fully described in the complete specification. The text speaks here of the complete specification, not any one part thereof. From the distinction drawn in s 40(2) between describing the invention in the complete specification and defining the invention in any claims with which the complete specification ends, it does not follow that the description is to be gleaned solely from one part (the body) and that it is forbidden to obtain any assistance by regard to the remainder (the claims) of the complete specification. Rather, the text indicates that the specification must be read as a whole and that reference to the claims may dispel ambiguity or uncertainty from the body of the specification concerning the description of the invention.”
In the same case at [21], the High Court indicated that the appropriate meaning to be attributed to the word “invention” in s 40(2) of the Act is “[t]he embodiment which is described, and around which the claims are drawn.”
The applicant argued that the complete specification fails to define the invention. It is, of course, the claims that are required to define the invention. No failure to comply with s 40(2)(b) of the Act was pleaded by the applicant. The issue for present determination is whether the embodiment around which the claims are drawn has been described fully. In Kimberly-Clark v Arico Trading the High Court at [25] identified the relevant question as being “will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”. The High Court’s reference to “something” in the above passage must, I think be understood as meaning “something constituting the invention”. The disclosure required is a disclosure of the invention.
The applicant argued that the following passage from the complete specification creates insuperable difficulty in the interpretation of the patent so as, as I understand it, to render the description of the invention insufficient:
“Suitable lubricants may be selected from those currently used with R‑134a provided that the requirement of at least partial solubility is met.
We have found that if a prospective lubricant is at least partially soluble in each component of the refrigerant mixture then it will be at least partially soluble in the refrigerant mixture itself, thereby enabling its use as a lubricant with that mixture. Such a lubricant may provide an acceptable lubricating action even if it is immiscible with one or more of the components of the refrigerant mixture or with the refrigerant mixture itself.”
The introduction to the Examples of the complete specification confirms the significance of the quality of partial solubility in the lubricant. It states:
“Examples
The working fluid compositions of the invention which were investigated in the following Examples comprised a lubricant and a heat transfer fluid which was either a binary mixture of 1,1,1,2‑tetrafluoroethane (R‑134a) and difluoromethane (R-32) or a ternary mixture of 1,1,1,2‑tetrafluoroethane (R‑134a), difluoromethane (R‑32) and pentafluoroethane (R‑125).
1,1,1,2‑tetrafluoroethane, difluoromethane and pentafluoroethane are at least partially soluble in each of the lubricants tested which means the converse is true, ie, each of the lubricants tested will be at least partially soluble in each of these hydrofluoroalkanes. Moreover, each lubricant tested is at least partially soluble in the binary or ternary mixtures themselves.
Fluoroalkane heat transfer fluids such as R‑134a have different solubility characteristics to chlorine containing fluoroalkanes and tend to be insufficiently soluble in mineral oils to allow the latter to be used as lubricants.” (emphasis added)
I note, incidentally, that the above reference to “insufficiently soluble”, as opposed to “insoluble”, is troubling in the context of the specification as it might be thought to imply a degree of solubility (ie a partial solubility) which is nonetheless insufficient for use as a lubricant.
I note further that the specification provides:
“The lubricant may optionally further include one or more polyalkylene glycols provided the lubricant meets the requirement of partial solubility.”
The “requirement of partial solubility” I understand to be the requirement of being partially soluble in each component of the refrigerant mix even if immiscible with one or more of them (see [113] above).
Mr Symons and Professor Ball who, as is noted above, were both called on behalf of the respondent, gave evidence that the terms “soluble” and “miscible” are interchangeable. On the basis of their evidence the paragraph which starts “We have found that …”, which is set out in [113], is incomprehensible. While witnesses called on behalf of the applicant did not, as I understand their evidence, consider that the terms “soluble” and “miscible” are ordinarily interchangeable, they did have difficulty understanding the respective meanings to be attributed to them in the specification.
Having regard to the expert evidence which touched on the meaning, if any, to be attributed to the above passage from the complete specification, it is not, I conclude, open to me to accept the invitation of Mr Catterns to attribute a sensible and useful meaning to it.
Nor do I consider that the passage can be put to one side on the basis that, from a practical point of view, the public is fairly given possession of the invention by the complete specification (see CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 282). It seems to me that the words “We have found that …” indicate that the contents of the passage are intended to constitute a significant aspect of the alleged invention in the sense of the embodiment which is described in the specification and around which the claims are drawn. This is confirmed, in my view, by the wording of claim 1 of the specification. Claim 1 (the only independent claim) requires a lubricant “which is at least partially soluble in each component of the heat transfer fluid …”
I conclude that the complete specification does not describe the invention fully as the disclosure, by reason of the incomprehensibility of a crucial passage and the uncertainty of meaning of the expression “partially soluble”, would not allow an addressee of the specification to produce something within each claim without new inventions or additions or, prolonged study of matters presenting initial difficulty. In view of my earlier conclusions, it is unnecessary for me to give consideration to the issue of whether the Court may, in an appeal of this kind, allow an amendment to be made.
PATENT APPLICATION NO. 654176 (MATTER N1249 OF 1999)
The Specification
The specification in this matter states that:
“This invention relates to refrigerant compositions for cooling and heating applications and to the use of such refrigerant compositions in heat transfer devices, in particular refrigeration systems. The invention relates, in particular, to refrigerant compositions containing low temperature refrigerants, by which is meant refrigerants intended to achieve and maintain temperatures of the order of ‑30oC and below, for example ‑50oC and even ‑65oC.”
After referring to the need to replace fully and partially halogenated chlorofluorocarbon refrigerants by materials having zero ozone depletion potential, and the desirability of using refrigerants which have relatively short atmospheric lifetimes, the following consistory statement is made:
“According to the present invention there is provided a refrigerant composition comprising:
(i)a refrigerant comprising a ternary or higher mixture of:
(a)tetrafluoroethane and/or heptafluoropropane;
(b)difluoromethane and/or 1,1,1 – trifluoroethane; and optionally
(c)pentafluoroethane; and
(ii)a lubricant comprising a polyalkylene glycol and/or an ester.”
The specification exemplifies the refrigerant integer of the alleged invention by a table showing mixtures of R‑32, R‑134a and R‑125 in varying percentage ratios. The table is designed to allow significant aspects of the performance of the refrigerant mixtures to be compared with the performance of the refrigerants R‑22 and R‑502. The specification states that:
“The refrigerant will be formulated into a refrigerant composition together with a lubricant. Polyalkylene glycols and especially esters are the lubricants used in the refrigerant compositions of the invention.”
The specification contains thirteen claims. Only claims 1 and 10 are independent claims.
In his written reasons for decision the delegate described the two independent claims as follows:
“Claim 1 is directed to a composition ‘comprising’ two integers, designated I and II. I consider that in the context of a composition of a refrigerant and lubricant, it is reasonable to construe the composition as including other standard additives (such as antioxidants). Thus I construe ‘comprising’ in an inclusive sense.
Integer I is a refrigerant that is itself a ternary or higher mixture of refrigerants. One of the components is identified as ‘tetrafluoroethane’, which can exist in two isometric forms: R-134 and R-134a. I consider that the generic name should be regarded as referring to either of the forms. However, I believe that tetrafluoroethane cannot make up two of the components of the mixture, ie. it is either R-134 or R-134a that is included.
The refrigerants are presented as a list, which can be simplified to:
(a)(R-134 or R-134a) and/or (R-227ea);
(b)(R-32) and/or (R-143a); and optionally
(c)(R-125).
I consider that mixture must have three or more refrigerants selected such that there must be component (a) AND component (b) present, AND OPTIONALLY component (c). The refrigerant does not contain anything outside components (a), (b) and (c).
Integer II is a lubricant ‘comprising’ a glycol and/or an ester. Lubricants are often mixtures of compounds, so it would be expected that ‘comprising’ is used in an inclusive sense.
Claim 10 is directed to a composition ‘comprising’ two integers I and II. For the reasons stated above, I consider that ‘comprising’ is used in an inclusive sense. Integer I is defined as ‘comprising’ three refrigerants: R‑134a, R‑32 and R‑125. While mixtures of a large number of refrigerants are not normal, in the context of the specification I can see no reason why this mixture should not include additional refrigerants (higher mixtures are envisaged by the specification, and specifically included within the scope of claim 1). Integer II is the same as that in claim 1.”
Priority Date
The patent application, which was dated 1 April 1992, claimed priority from a Convention application GB (United Kingdom) 9108527 filed on 18 April 1991. The delegate concluded that each of the claims of the patent application was entitled to priority from the date of basic application GB 9108527. The respondent seeks to uphold the conclusion of the delegate. The applicant by its further amended notice of appeal pleaded:
“The earliest priority date of each claim of the complete specification of the patent application is 15 July 1996, which is the date of the second Statement of Proposed Amendments. Alternatively, the earliest priority date is 15 July 1994, which is the date of the first Statement of Proposed Amendments. Alternatively, the earliest priority date of each claim of the complete specification of the patent application is 1 April 1992, which is the date that the patent application was filed.”
It is necessary to give consideration to whether the claims of the patent application are fairly based on matter disclosed in the Convention application. If they are not, consideration must be given to whether the claims claim matter that was in substance disclosed as a result of the filing of the patent application, alternatively, by the filing of the first Statement of Proposed Amendments or, in the further alternative by the filing of the second Statement of Proposed Amendments. As Fox J, with whom Spender J agreed, observed in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 at 385:
“This test calls on judgment, but one based on a comparison of documents.” (citations omitted)
As to the AU-A‑13959/92 specification filed in Australia on 1 April 1992, the applicant draws attention to the following disclosures contained therein:
“According to the present invention there is provided a refrigerant which comprises a ternary or higher mixture of:
(a)tetrafluoroethane and/or heptafluoropropane;
(b)difluoromethane (HFC-32) and/or 1,1,1-trifluoroethane (HFC-143a); and optionally
(c)pentafluoroethane (HFC-125).
The refrigerant of the invention will normally be formulated into a refrigerant composition which comprises, in addition to the refrigerant, one or more additives of the type which are conventionally used in refrigerant compositions. Particular mention may be made of a lubricant ….
The heptafluoropropane may be 1,1,1,2,3,3,3-heptafluoropropane (HFC-227ea) or 1,1,1,2,2,3,3-heptafluoropropane (HFC-227ea) or a mixture of these two isomers.
Although the refrigerant may comprise more than three of the above specified components, the refrigerant is preferably a ternary mixture. The mixture may be an azeotrope but will normally be zeotropic.
…
As stated above, the refrigerant may and usually will be formulated into a refrigerant composition together with a lubricant. Any conventional lubricant may be employed, but polyalkylene glycols and especially esters are preferred. By selecting a lubricant with a high thermal stability, it is possible to operate with higher compressor discharge temperature than is currently possible using conventional hydrocarbon lubricants and this can improve the thermodynamic efficiency of the refrigeration system.”
Virtually identical disclosures are made by GB 9108527.
The applicant stressed that the following emerges from the above disclosures:
(a)the invention provides a refrigerant composition comprising a ternary or higher mixture of several identified HFCs;
(b)the use of a lubricant is optional;
(c)there is some preference for lubricants with high thermal stability – but no teaching as to what chemical classes these comprise or the principles for selection of them;
(d)PAGs and especially esters are preferred – but are not essential even where a lubricant is formulated into the refrigerant composition; and
(e)any conventional lubricant may be employed (eg a mineral oil).
The applicant submitted that, by contrast, the matter claimed in the thirteen claims which now comprise the claims of the patent application may be summarised as follows:
(a)it is essential to the invention as claimed that the invention is not merely a refrigerant but is a refrigerant composition which includes a lubricant;
(b)the lubricant must, excepting claim 11, be one of the following:
(i)a PAG;
(ii)an ester;
(iii)a blend of a PAG and an ester.
(c)in claim 11, the lubricant must be an ester.
The respondent submitted that the priority document GB 9108527 contains a real and reasonably clear disclosure of the lubricant integer of the claims and that no question of selection arises. The respondent asserted that the passage about lubricants which appears in the specification as filed (AU-A-13959/92) appears in identical form in Application 654176. This is not strictly correct. The opening sentence in the specification as filed appears in [125] above. The opening sentence of the corresponding passage in Application 654176 reads:
“As stated above the refrigerant will be formulated into a refrigerant composition together with a lubricant.”
That is, the words “may and usually” do not appear in the passage in Application 654176.
On this application it is necessary first to compare the claims in the patent application with the matter set out in the priority document GB 9108527 for the purpose of determining whether it is clear that the claims in the patent application are not fairly based on matter disclosed in GB 9108527. As the Full Court pointed out in Leonardis v Sartas No 1 (1996) 67 FCR 126 at 139-140:
“In interpreting the expression ‘fair basis’, one should not understand the word ‘fair’ as connoting any idea of equity. ‘What is required to be fair is not the applicant’s claim to priority but the basis which one document affords for a claim in the other’: Re Stauffer Chemical Co’s Application [1977] RPC 33 at 52, per Buckley LJ. Later in his judgment, Buckley LJ said (at 54):
‘If a new feature were a development along the same line of thought which constitutes or underlies the invention described in the earlier document, it might be that that development could properly be regarded as fairly based on the matter disclosed in the earlier document, and that the new process described in the later document which incorporates that development could as a whole be regarded as fairly based upon the matter disclosed in the earlier document. If, on the other hand, the additional feature involves a new inventive step or brings something new into the combination which represents a departure from the idea of the invention described in the earlier document, it could not, I think, be properly described as fairly based upon the earlier document.’”
Following the decision of the Full Court in Leonardis v Sartas No 1 it is clear, in my view, that in applying the test of whether each of the claims of the patent application is fairly based on matter disclosed in the priority document GB 9108527, the appropriate approach is that adopted by Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 where, with respect to an issue of “internal fair basing”, his Honour said:
“… the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
Where the issue is whether a claim is fairly based on matter disclosed in a priority document, as opposed to whether it is fairly based on matter described in the specification, the above passage from the judgment of Gummow J is to be understood as though the references to “the body of the specification” were replaced with the words “the priority document”. The approach of asking whether a claim was “plainly foreshadowed” in the matter disclosed in the priority document must, since Leonardis v Sartas No 1, be eschewed (Leonardis v Sartas No 1 at 141).
The delegate identified differences between the matter set out in GB 9108527 and the claims of the patent application and their significance in the following passage of his written decision:
“a) The use of a lubricant is essential
The basic document foreshadowed the inclusion of a polyalkylene glycol or ester lubricant, but did not exemplify this. I consider that the reference to the lubricant is as a trivial component – something that would be included as a matter of routine, and is not in itself inventive. In the present claims the lubricant is included. This is not a new feature. The lubricant claimed is essentially that which was foreshadowed. This appears to be no more than elevating to the claim a feature that was optional in the basic.
b)The lubricant can be a mixture of a polyol and an ester
The basic document referred to the lubricant in the following terms:
‘The refrigerant composition may and usually will contain a lubricant. Any conventional lubricant may be employed but polyalkylene glycols and especially esters are preferred.’
…
This suggests to me that polyalkylene glycols and esters are alternative lubricants (with esters being especially preferred). I do not read this passage as suggesting the use of a mixture of polyalkylene glycol and an ester. Integer II includes the possibility of either lubricant separately (the ‘or’ option), as well as a mixture of the two (the ‘and’ option). If the use of a mixture represents an inventive step or a departure from the idea of the invention, then this aspect is not fairly based on the basic document.
The use of a mixture of the two preferred lubricants does not seem to me, prima facie, to be an inventive advance. It is more in the nature of a development along the same line as that already disclosed. I consider that this feature should be regarded as fairly based on the basic document.
c)The refrigerant is a ternary or higher mixture, rather than a binary or ternary mixture
It is true that the binary mixture has been discarded in the present claims, and the focus is on the ternary mixtures. The ternary mixture described in the basic document is selected from the same five refrigerants as listed in the opposed specification. Thus there is a broad statement that is equivalent to that in the opposed specification. There is no specific exemplification of the ternary mixture in the basic. The broad statement is sufficiently precise to provide a fair basis for the claim.
The basic document does not explicitly mention higher mixtures. However, at its broadest, the basic document relates to mixtures of CFC’s [sic] (selected from five listed CFC’s [sic]) that can be used to replace HCFC’s [sic]. Binary and ternary mixtures are preferred forms. Consequently the basic is not totally silent on higher mixtures – they are implicit in the broadest statement. Additionally, an explicit extension to higher mixtures is not prima facie an inventive step. I am satisfied that this aspect is fairly based on the basic document.”
The delegate concluded that “[t]he claims are entitled to priority from GB 9108527, and thus take 18 April 1991 as their priority date.”
In my view, a fair reading of the patent application discloses that it is concerned with refrigerant compositions (ie compositions which include both a refrigerant element and a lubricant element). By contrast, in my view, a fair reading of GB 9108527 discloses that it is concerned with refrigerant mixtures to which a lubricant may, but need not, be added to make a refrigerant composition. That is, as it seems to me, the nature of the respective inventions is different. To use the language of Buckley LJ in Re Stauffer Chemical Co’s Application, the patent application, in my view, represents a departure from the idea of the invention described in GB 9108527.
I do not consider that it was reasonably open to the delegate to characterise the references in the claims to a lubricant or lubricants as trivial components which would be included as a matter of routine. Each of the claims is drawn so as to make a lubricant, being either an ester or a PAG, a necessary element of the refrigerant composition claimed. Consequently it is plain that the claims do not extend to mere compositions of refrigerants. Indeed the body of the specification has, in effect, been redrawn by amendment to provide an internal fair basis for claims which have as a necessary element a lubricant being either an ester or a PAG. This was apparently done to avoid suggested anticipation by prior art information concerned solely with refrigerant compositions. In my view, this constitutes more than elevating to the claims a feature that was optional in GB 9108527. First, what was identified as optional in GB 9108527 was the utilisation of any conventional lubricant, although esters and PAGs were described as preferable. The evidence before me, but not before the delegate, is that in fact the only lubricants which could be added to the refrigerant compositions disclosed in GB 9108527 are esters or PAGs, but this is not a matter disclosed in GB 9108527. It was apparently something discovered later than the date of GB 9108527. Secondly, and perhaps more importantly, the patent specification identifies the invention to which it relates by reference to the lubricant element. That is, the invention to which that specification relates may be understood as residing in the working relationship between the refrigerant blend which comprises integer I and the lubricant which comprises integer II of the invention. The invention described in GB 9108527 was an invention of a different kind.
I conclude that the claims of the patent application are not fairly based on matter disclosed in GB 9108527. The first of the potential priority documents which discloses matter on which the claims of the patent specification is fairly based is, in my view, the Statement of Proposed Amendments dated 15 July 1994, which for the first time required the presence of an ester or PAG based lubricant.
The respondent adopted the position that if the Court determined that the earlier priority date for this application was 15 July 1994 or 15 July 1996 it would not contest the asserted invalidity of the patent application.
However, lest I be wrong in my above conclusion, I will give consideration to the other grounds of opposition relied on by the applicant. As in matter N1248 of 1999, this consideration will be more summary than would have been the case had I not reached the above conclusion.
A Manner of Manufacture
Section 18(1)(a) of the Act, which includes the requirement that a patentable invention be “a manner of manufacture within the meaning of section 6 of the Statute of Monopolies” is relevantly set out in [23] above. A discussion of the relevant authorities is to be found in [24] and [25] above.
Although the invention disclosed by the text of the specification might desirably be more explicitly identified, it seems to me that the text can be understood as disclosing an invention, namely an ozone friendly refrigerant composition particularly suitable to circumstances in which the refrigerants R‑22 and R‑502 are to be replaced.
I am not satisfied that it is apparent on the face of the specification that the subject matter of the claims is, by reason of absence of the quality of inventiveness, not a “manner of manufacture” within the meaning of s 6 of the Statute of Monopolies.
Novelty
The statutory provisions touching on the requirement that a patentable invention be “novel” are set out, and discussed, in [29]-[33] and [35]-[37] above.
The applicant, in contending that the alleged invention was not novel, relied on the following publications:
(a)the Lubrizol Application;
(b)Daikin;
(c)Du Pont No 1;
(d)Du Pont No 2;
(e)the Dow Chemical Patent 4,851,144 (“Dow Chemical”);
(f)the Kyodo Oil Application 23588/92 (“Kyodo Oil”); and
(g)the ICI application the subject of proceeding N1248 of 1999 (“ICI Application in N1248 of 1999”).
Consideration is given to the Lubrizol Application in [38] and [39] above. The respondent concedes that the Lubrizol Application discloses the ester lubricants within the claims of the patent application.
In giving consideration to the Lubrizol Application the delegate, in the decision from which this appeal is brought, drew the same distinction between its “intellectual content” and what it would make public to the instructed reader as he drew in his decision from which the appeal in matter N1248 of 1999 was brought. He concluded, as he had in that decision that while the intellectual content of the disclosure includes mixtures of HFCs, thus including compositions of the present application, it did not in fact disclose a mixture including R‑32, R‑125 or R‑227ea. For the reasons given in [68] above, I conclude that the delegate erred in reaching the above conclusion and that the Lubrizol Application does disclose ternary and higher mixtures of HFCs.
The above conclusion does not, however, lead inevitably to the conclusion that the Lubrizol Application contains “clear and unmistakable directions to do what the patentee claims to have invented” (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 per Sachs LJ at 486). Having regard to the highly particularised blends of refrigerants claims by the patent application, I conclude that it is not clearly established that the Lubrizol Application deprives the claims of novelty.
As to the ICI Application in N1248 of 1999, the respondent adopted the approach that the relevance of this publication so far as novelty is concerned depended upon the respective priority dates of the two applications. In matter N1248 of 1999 I have taken the view that, on the assumption that I am wrong in concluding that the claims of the patent application lack novelty, the decision of the delegate that the claims are entitled to a priority date of 11 October 1991 should not be disturbed (see [96] above). On this basis, having regard to my conclusion on this appeal that the priority date of the claims of the patent specification is not earlier than 15 July 1994, the ICI Application in N1248 of 1999 is to be taken to deprive the patent application of novelty.
Broadly for the reasons given above in [73] above in respect of the appeal in N1248 of 1999, I am not satisfied that any of Daikin, Du Pont No 1 or Du Pont No 2 deprives the patent application of novelty. Nor, in my view, does Dow Chemical which does not disclose blends of refrigerants which comprise integer I of the alleged invention. As to Kyodo Oil, I do not consider it necessary to determine whether it was part of the prior art base as it existed before the priority date of the claims of the patent application. I am not satisfied that it discloses the blends of refrigerant which comprise integer I of the alleged invention.
Obviousness
The statutory provisions touching on the requirement that a patentable invention is one that involves an inventive step are set out, and discussed, in [97]-[104] above. For essentially the reasons given in [105] above, I conclude that the applicant has not made out this ground of objection.
Section 40
Section 40(2) of the Act is set out in [110] above. Section 40(3) of the Act provides:
“The claim or claims must be clear and succinct and fairly based on the matter described in the specification.”
The relevant authorities touching on the proper construction of s 40(2) are referred to in [111]-[112] above. The appropriate approach to the issue of whether the claims are fairly based on the matter described in the specification is that adopted by Gummow J in Rehm Pty Ltd v Webster Security System (International) (see [130] above).
The applicant contended that the specification fails to describe the invention the subject of the specification. To the extent that the contention was based on the assertion that that which is described is neither novel nor inventive, the contention, in my view, invites a construction of s 40 of the Act which Kimberly-Clark Australia v Arico Trading reveals to be in error (see [111]-[112] above).
The applicant argued that the specification does not teach the types and manner of formulation of the lubricants so that the skilled worker can work the invention without the need for further experimentation. I am not satisfied that it has been clearly demonstrated that the disclosure in the specification would not “enable the addressee of the specification to produce something within each claim without new instructions or additions or prolonged study of matters presenting initial difficulty” (Kimberly-Clark v Arico Trading at [25]). The delegate concluded, and I am not satisfied that his conclusion has been shown to be erroneous, that the full range of lubricants would apparently produce a workable system, although some lubricants would be better than others. Moreover, all evidence called on behalf of the respondent (ie the evidence of Mr Terry Lawrence, Mr Symons and Professor Ball), which I accept, is that they would have been able to identify suitable lubricants with the assistance of lubricant suppliers. I do not understand s 40 of the Act to require a description sufficient to allow the skilled addressee personally to manufacture every element of the invention.
In the issue of whether the claims are fairly based on the matter described in the specification, I see no reason to interfere with the conclusion of the delegate that “[t]here is a real and reasonably clear disclosure that a range of lubricants can be used.”
I conclude that it is not clear that the delegate erred in concluding that the specification provided a fair basis for the claims.
CONCLUSION
For the reasons set out above, in each of the matters N1248 of 1999 and N1249 of 1999, the decision of the delegate will be reversed and the opposition to the grant of the standard patent upheld. The parties will have an opportunity to agree minutes of the orders to be made, including the order to be made as to costs.
I certify that the preceding one hundred and fifty-three (153) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson. Associate:
Dated: 12 March 2002
Counsel for the Applicant: Mr J T Gleeson SC with Mr C A Moore Solicitor for the Applicant: Coudert Brothers Counsel for the Respondent: Mr D K Catterns QC with Mr R Cobden and Mr C Dimitriadis Solicitor for the Respondent: Phillips Ormonde Fitzpatrick Date of Hearing: 8-12, 15 October 2001 Date of receipt of last written submissions: 15 January 2002
Date of Judgment: 12 March 2002
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