ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc

The proceedings were brought by ICI Chemicals & Polymers Ltd against Lubrizol Corporation Inc seeking revocation of Australian Patent No. 638710 (the Patent) and a declaration that threats of infringement proceedings were unjustified. Lubrizol brought cross proceedings against Woolworths Ltd, Austral Refrigeration Pty Limited, Woolworths (Victoria) Pty Limited and Lawrence Refrigeration Pty Limited for injunctions restraining them from infringing the Patent by making a liquid composition of KLEA refrigerant and EMKARATE lubricant in refrigeration systems or operating refrigeration systems which contained such a composition. Lubrizol contended that the Patent had been infringed by Woolworths having a liquid composition of KLEA and EMKARATE in the refrigeration systems at its Penrith and Safeway Milton supermarkets following a retrofit in 1993. ICI contended that the Patent should be revoked on the following grounds: (1) the alleged invention was not a patentable invention within the meaning of the Patents Act 1990 (the 1990 Act) because the alleged invention was not novel, did not involve an inventive step, was not a manner of manufacture and was not useful; (2) the complete specification for the Patent (the Specification) did not comply with the requirements of section 40(2) and section 40(3) of the 1990 Act; and (3) the Patent was obtained on a false suggestion or representation. The court dismissed the claims for revocation based on novelty, inventive step, manner of manufacture and usefulness. The court found that the Specification did not comply with section 40(2) and section 40(3) of the 1990 Act because the description of the liquid composition in the Specification did not support the width of the claims. The court found that the Patent was not obtained on a false suggestion or representation. The court found that, if the Patent was valid, there had been infringement by Woolworths, Austral, Woolworths Victoria and Lawrence. The court stood the proceedings over to enable the parties to consider the decision and indicate what further steps they wished to take.