Kimberly-Clark Aust v Arico Trading

[2000] HCATrans 430

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S75 of 2000

B e t w e e n -

KIMBERLY-CLARK AUSTRALIA PTY LTD

Appellant

and

ARICO TRADING INTERNATIONAL PTY LTD

First Respondent

ARIE KLIGER

Second Respondent

FRANCISCO MARTIN OTERO T/A KOALA NAPPY EXPRESS

Third Respondent

GLEESON CJ
McHUGH J
GUMMOW J
HAYNE J
CALLINAN J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON THURSDAY, 5 OCTOBER 2000, AT 10.22 AM

Copyright in the High Court of Australia

MR D.K. CATTERNS, QC:   May it please the Court, I appear with my learned friend, MS S.J. GODDARD, for the appellant.  (instructed by Sprusons: Solicitors)

MRS A.C. BENNETT, SC:   May it please the Court, I appear with my learned friend, MS K.J. HOWARD, for the respondents.  (instructed by Banki Haddock Fiora)

GLEESON CJ:   Yes, Mr Catterns.

MR CATTERNS:   Your Honours, the issue presented by the appeal is whether the complete specification of the appellant’s patent complies with section 40(2)(a) of the Patents Act.  The question of law involved in determining that seems, at least on our side, to be whether their Honours, Justice Wilcox and Justice Branson, who were in the majority in the Full Court of the Federal Court, were right in imposing what we are calling, as a shorthand, an essential features requirement on the body of the specification, namely, that the specification should specify what the essential features are, whereas we submit that that is the task of the claims.

It appears from our friends’ written submission that there is a little, perhaps disagreement, about what the true ratio of their Honours is, and we will come to that, but the way the issue arises, we submit, can be seen from the pleadings which are in volume 1.  At page 10, following the cross‑claim for revocation, there are, as required by the Act and regulations, particulars of invalidity beginning with novelty, the question of manner of manufacture in 1(a) dealt with by this Court in Ramset, obviousness in paragraph 2, and in particular paragraph 3:

The specification of the patent does not comply with subsection 40(2)(a) of the Act in that the complete specification does not describe the invention fully, including the best method known to the applicant for the patent of performing the invention.

PARTICULARS

(c)      If the use of “fluid pervious” flaps is an essential feature of the claims it is not described as an essential feature of the “invention” in the body of the specification.

And, your Honours, we respectfully submit that that is what their Honours Justices Wilcox and Branson held.  It is correct, in fact, as to the body of the specification, but wrong in law, because that is not the test under section 40(2)(a).

Your Honours, may I just briefly, without of course going in detail to our written submissions, remind your Honours what the role of the specification is in modern patent law including, in particular, under the 1990 Patents Act.  It is, as his Honour Justice Gummow has pointed out in a couple of cases which we cite, Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd and with a Full Bench, CCOM Pty Ltd v Jiejing, twofold function:  first, to provide the consideration for the grant of a limited statutory monopoly, whereby you teach skilled addressees in their relevant field of art how to work or how to perform the invention so that they can work it when the patent expires or, alternatively, if they get a licence they can know how to work it.

That, your Honours, we submit, is the task of describing the invention fully in terms of 40(2)(a) teaching how to work it, not specifying what the essential features are.  The second function of a specification is to end with a claim or claims which define, as distinct from describe, the invention, that is to mark out the ambit of the monopoly so that people in the relevant art know what they can and cannot do.  That is the task of defining.  It is our essential – to coin a phrase, it is our submission that those two tasks, “describe” and “define”, are now and have been for more than a century completely distinct functions.

McHUGH J:   Yes, but that is not the way the case is put against you, is it?  What is said against you is that you are putting up a straw man to knock over and that you do not really face up to what the real case against you is and that is that their Honours in the majority found that when you looked at the whole of this document there was no sufficient instruction to the reader of the document how to make or construct what was this invention.  Now, that may be right or may be wrong but that is the argument.

MR CATTERNS:   Your Honour, that raises the legal question.  There is no question in the world that the claims do say that.  There is no question in the world that the body as distinct from the claims does not.

GUMMOW J:   Say what?

MR CATTERNS:   Instruct the reader that an essential feature is fluid pervious flaps, the body as distinct from the claims.  But, your Honour, there is no question at all that the skilled reader was taught how, physically, to make it.  There is no doubt at all that they know how to make it.  The question is are they told that they must make it with liquid impervious flaps, which would not infringe or with liquid pervious flaps, which would.

We submit, your Honour, and we will take your Honours to some authorities, that it is the job of the claims to tell you that.  “Instruction” is not really the right word, it is the job of the claims to define it in those terms and it is the job of the body of the specification to tell you how to make it.  There is no doubt that they are told how to make it, let us say optionally, liquid pervious or liquid impervious.  There is some evidence that we will go to shortly of what a skilled reader would do reading the specification, and a finding by his Honour Justice Burchett about what a skilled reader would do reading the specification.  So, your Honour, we do not, with respect, agree that it is a straw man.  We submit it is the ratio and it is a narrow legal point because the facts ‑ ‑ ‑

GUMMOW J:   If you go to paragraph 2 of your opponent’s written submissions, the last five or six lines there, and then if you go to paragraph 10, that may crystallise what is put against you, in a way.

MR CATTERNS:   Yes, your Honour.  Our friends do not seem to wish to propound the essential features approach that we submit is the ratio of their Honours; but in paragraph 2 of our friends’ submission – and we do not want to construe our friends’ submissions – really, they just restate it.  Instead of saying “the body of the specification failed to specify the essential features”, our friends use the words “integers, each essential to achieve the alleged ‘new working’ and necessary to the invention”.  That is just another way of saying the same thing.  But, your Honours, the nub of it is, paragraph ‑ ‑ ‑

GUMMOW J:   Maybe they are saying, “The complete specification fails to describe the invention fully because it does not direct”, as distinct from permit, “the inclusion of certain integers”.

MR CATTERNS:   Yes, your Honour, and we respectfully adopt that distinction.  It is not the function of the specification to direct people.  The two functions in the section, which we will come to shortly, are ‑ ‑ ‑

GUMMOW J:   I said “direct” because that is the word that is used in paragraph ‑ ‑ ‑

MR CATTERNS:   I know, your Honour, but that is part of the error, with respect.

McHUGH J:   But the inventive step which you claim was providing an inner barrier to make a waste containment pocket of which an essential integer was that it should be fluid pervious.

MR CATTERNS:   Yes, essentially, your Honour.

McHUGH J:   Would the skilled reader understand that he or she had to construct that from the total specification?

MR CATTERNS:   Yes, your Honour, as held by his Honour Justice Burchett at page 368, line 37:

On the uncontradicted evidence, the expert reader of the specification –

that is as a whole, answering your Honour’s question –

would understand the disclosure made by it to be directing him, as a practical matter, to make a disposable nappy falling within the terms of claims 1 and 2.

May I remind your Honours that that evidence was uncontradicted.

McHUGH J:   The question is “falling within the terms of claims 1 and 2”.

GLEESON CJ:   Did Justice Burchett direct his mind to this issue?  I had an impression, perhaps erroneously, that the point on which the respondents succeeded in the Full Court was not a point that was prominent at the hearing before Justice Burchett.

MR CATTERNS:   Your Honour, with respect, that is right, but the answer to your Honour’s question is “yes”, as follows.  His Honour largely dealt with this matter as a question of fair basis, as your Honours can see in the passages around 368.

McHUGH J:   That was what I was just going to put to you, that at line 35 immediately before the sentence to which you referred, his Honour was talking in the context of “fair basis”, so it was a subsection (3) point.

MR CATTERNS:   Yes, your Honour, so far, so good.  But his Honour continues over these next few pages continuing the discussion of “fair basis”.  As your Honours can see in the pleading, the very same point, namely this sufficiency point, was picked up in the “fair basis” points and just adopted in the “fair basis” points.  It was run, as his Honour the Chief Justice suggests, principally as a “fair basis” point before his Honour Justice Burchett.  But his Honour goes on to apply this, we submit, on the question of sufficiency.  I get that at 371 where his Honour goes on at about line 22 continuing to discuss the word “pervious” and the balance that is required between acting as a barrier but also allowing fluid to pass back when it is trapped between the flap and the skin.  Coming to the point, on page 372 his Honour rejects an argument about the special meaning of “pervious” and at line 20 says:

It follows also that I do not accept arguments, based on the concept of liquid perviousness, or on the other alleged disconformities between the claims and the specification, by which counsel contended that the claims were not “clear and succinct” within s 40(3)…..and that the claims did not “define” the invention within s 40(2) or describe it fully within the same provision, the effect of which was stated by Carr J –

So we respectfully submit that, although it is completely clear that that finding I took your Honours to was principally with respect to the question of “fair basis”, his Honour applied it on page 372 to the question of sufficiency.  That really gets us to the legal question.

If you read the document and stop at the claims, it is optional.  If you read the document as a whole, including the claims, you know that to perform the invention claimed it would be liquid pervious flaps; if you want to avoid infringement, as the respondents submitted they had done, you make them with liquid impervious flaps, but there is no question at all you know how to make it either way.

GUMMOW J:   What was the debate about infringement?

MR CATTERNS:   A number of debates, your Honour, including whether or not the flaps were liquid pervious.  When you dropped a drop of fluid on them, water on them say, it held the drop until you touched it.

GUMMOW J:   So there was an allegation of infringement of claim 1, was there?

MR CATTERNS:   Yes, your Honour, and claim 2.

GUMMOW J:   What is the difference between claim 1 and 2?

MR CATTERNS:   Your Honour, the backing sheet in claim 1 is – perhaps if I could go to it, your Honour.  We claimed infringement of all but, your Honours, it narrowed down to claims 1 and 2.  At page 191 your Honours can see at line 7 on the page:

a liquid pervious bodyside liner, coterminous with said back sheet –

and there is a slightly different description of the physical object in claim 2, but the particular point, your Honour, was the liner did not go all the way to the edges of our friend’s product ‑ it missed the edges by a centimetre or so ‑ and there was an argument about whether that was coterminous as a matter of substance and held yes.

GUMMOW J:   And what else?

MR CATTERNS:   That was the principal difference.  So, your Honour, the first argument on the infringement was whether or not the flaps were liquid pervious because, as I say, when you put a drop of water on them it did not go through unless you touched them or rubbed them, held it is a practical matter in use and that, therefore, they were liquid pervious.  Your Honour, there was also some other arguments, including the fact that the bodyside liner was made up of two parts joined together, whether it could be said to be coterminous.

GLEESON CJ:   And what issues remain in the appeal?

MR CATTERNS:   Your Honour, if we were successful and the matter was remitted, there would be a question of novelty in relation to one specification, called the Beckestrom specification ‑ ‑ ‑

McHUGH J:   What about fair basis?

MR CATTERNS:   I was going to come to that, yes, your Honour, and then fair basis.  Your Honour, in our submission, the fair basis question – this is in some ways more realistically a fair basis question, as it was run with respect at trial, and the question would be whether it provides fair basis to have in the claims a narrowing to liquid pervious flaps when they are described as optional in the body.  We give your Honours references to the Full Court of the Federal Court here in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd saying in a case of an optional disclosure that it was, citing the Court of Appeal in AMP v Hellerman in the United Kingdom, also where an optional disclosure was held to provide fair basis.

The question is, “Is there a real and reasonably clear disclosure to a skilled addressee that supports the claim?”  And, your Honours, if we succeed, that would be a matter to be dealt with by the Full Court on which Justice Tamberlin has already expressed a view in our favour.

GUMMOW J:   This is footnote 5, is it, in your submission?

MR CATTERNS:   Yes, your Honour, it is.  I think that is page 7, your Honour.

GUMMOW J:   “Description of an integer as optional can provide fair basis”?

MR CATTERNS:   Yes, your Honour, and we give the references to the RGC Case and the AMP v Hellerman Case.

GUMMOW J:   They are not the first cases on that point surely.

MR CATTERNS:   No, they are not, your Honour.  We picked RGC because it was the latest and an Australian case and a Full Court.  Your Honour, it is pretty clear now, we would submit, that the test of fair basis is real and reasonably clear disclosure, see CCOM Pty Ltd v Jiejing Pty Ltd, picking up his Honour Justice Fullagar in the Rhone-Poulenc Case.

GLEESON CJ:   In drafting a document like this what would be the purpose of making an essential integer optional in a specification?

MR CATTERNS:   Your Honour, the history is this, and I will take your Honours to it:  we described the invention broadly.  The nub of our invention was the provision of a diaper with the flaps as a containment pocket.  The nub of it was not pervious versus impervious and as the document was filed originally ‑ ‑ ‑

GUMMOW J:   And that excites your opponent, who cannot restrain herself, but what was the inventive step?  How do we find that?

MR CATTERNS:   Your Honour, we find that by working out what the – may I just say this, your Honour.  Of course the specification does not have to state it as held in many cases.  It can be remembered from a dream.  A US inventor might not know what the state of common general knowledge is in Australia and therefore you do not have to say what your inventive step.

GUMMOW J:   No, but the summary of the invention might give a hint, might it not, on page 2?

MR CATTERNS:   Yes, your Honour.  Yes.

McHUGH J:   I mean, if you look at the opening words of the specification at 185 it is hard to come to any other conclusion but that the draftsperson thought that 185 through to 190 fully described the invention.  It starts off:

The following statement is a full description of this invention, including the best method –

et cetera, et cetera.

MR CATTERNS:   Yes, your Honour, going through to, as your Honour says – but, your Honour, I submit the specification goes through past 190 and includes the claims.

McHUGH J:   I know it does and I know that is the point that you make.  What I was saying to you though is that it appears that the draftsperson thought the full description of this invention was between 185 and 190 rather than 185 and following right through to the end, including the claims.

MR CATTERNS:   Your Honour, I, with respect, do not get that from the bottom of page 185.  The document is a whole document.  May I, in partial, in answer to your Honour but also to his Honour the Chief Justice’s question:  the specification was written by an American who has rights under the Paris Convention to apply in Australia within a year and, your Honours, he writes his invention describing it and you describe it as broadly as you can.

GUMMOW J:   First of all, you start off by saying what is defective in the present state of knowledge.

MR CATTERNS:   And they do that, your Honour.  That at page 187.

GUMMOW J:   That is the first two paragraphs, is it not?

MR CATTERNS:   And then, your Honours, the ‑ ‑ ‑

GUMMOW J:   Just slow down a minute, Mr Catterns.  Just slow down a minute.

MR CATTERNS:   Sorry, your Honour.

GUMMOW J:   So, the first two paragraphs tell you what is wrong, in particular lines 18 to 20, do they not?

MR CATTERNS:   Yes, your Honour.  That begins to be the prior art, and they have ‑ ‑ ‑

GUMMOW J:   Yes.  Then you get told what the summary of the invention is at the top of the next page.

MR CATTERNS:   Yes, your Honour, that is right, your Honour.  Your Honours, picking at pages 188 to 190 for a moment ‑ ‑ ‑

GUMMOW J:   Then you are given what you are told is a detailed description.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   Then you are given claims.

MR CATTERNS:   Yes, your Honour.  Your Honour, what happened here, as happens in many cases, is ‑ ‑ ‑

GUMMOW J:   No reference in the summary to “impermeable” or “permeable”.

MR CATTERNS:   That is right, your Honour.  So what happened was the inventor described – we accept, your Honour, that the crucial part of the inventive step was ‑ ‑ ‑

GUMMOW J:   That may be part of the fair basis problem you have to face up to sooner or later.

MR CATTERNS:   Yes, your Honour, of course, but it is not a sufficiency problem, we submit.

GUMMOW J:   No.

MR CATTERNS:   So, your Honours, the inventor describes their invention, picking up his Honour the Chief Justice’s question, broadly, as optional because it is not the end of the world if they are impermeable, as we know from the fact, as pointed out by Justices Wilcox and Branson, that Proctor & Gamble sold one that was impermeable with success.  So it is described broadly and, your Honours, if I may go to the document we originally filed - it is a little bit out of the order I was going to go - but if your Honours would go to page 300 in volume 2, this is the document that we initially filed in Australia and, your Honours, it is word for word the same so far as the descriptions go.  So, it goes through to page 303 where there is the description:

The flap material is preferably soft –

et cetera –

and/or fluid permeable.

But then, your Honours, crucially, the claims were different, as originally applied for in Australia.  At page 304 – this is answering your Honour the Chief Justice directly – we claimed diapers with flaps, as your Honours can see at line 21:

two flaps extending toward each end –

indifferently as to whether they were liquid pervious or not.  Put a better way, not limited, and in patent jargon, of course, your Honours, that means it is broader.  Then, as is conventional and as is contemplated by section 40, there is a dependent claim which just means a narrower claim adding another integer, to the diaper of claim 1 wherein the flap is fluid permeable.  So, your Honours, what has happened is in prosecution we abandoned claim 1.  Now the reason is not in evidence, but it is probably because the examiner, at page 306 at the bottom of the page, says, I reject the specification on the grounds that it “is not novel” over a number of prior specifications, one of which your Honours will see – I am sorry, photocopying with my handwriting as is – was one of the specifications in the case alleged on novelty.

Following that, and not necessarily because of it, but it may well be because of it, we amended, and your Honours can see at 310 – following correspondence where we say, “Here is a statement of proposed amendments”, we amended, in effect, to claim what had been claimed to, the narrower claim.  So we chose one of the two options.  As his Honour Justice Gummow points out, that is a fair basis question:  Is the selection of one of the two options fairly based?  Is that supported by a description?  To put it another way, or the right way, is there a real and reasonably clear disclosure?  We submit yes, and that is a matter on ‑ ‑ ‑

GUMMOW J:   It is a pity all these questions were not decided by the Full Federal Court.  It really is.  Neither of the parties bear responsibility for it but it is a pity.  What is the difference between claim 1 as originally framed?  Just explain that to me again.

MR CATTERNS:   I am sorry, your Honour, it is at 304.  It is worded differently, but in particular at line 21, your Honour sees “the flaps”?

GUMMOW J:   Yes.

MR CATTERNS:   They are not limited as to fluid pervious.

GUMMOW J:   I see.

MR CATTERNS:   It is in claim 2 and the specification uses “pervious” and “permeable” interchangeably.

GUMMOW J:   Yes, I see, thank you.

MR CATTERNS:   In claim 2 there is the narrowing.  What we have done is ‑ ‑ ‑

GUMMOW J:   It looks as if the narrowing was in the light of some prior art.

MR CATTERNS:   Yes, your Honour, exactly.  There was also some evidence of things happening in America and there is also a desire generally to have your patent the same in different countries, otherwise, if you ever come to amend, the argument is you have been covetous and it is a discretionary ground.  That is the other possible – as I say, there is no evidence about the reasoning, but one of those two possibilities.  So what we have done here is we filed a description which is optional, we all agree, and we have now, for the reasons which we can see or guess, narrowed our claim to be liquid pervious.  I accept that that is a “fair basis” question and we submit that it is fairly based on optional, but we submit it is not a sufficiency question.  If it were, you would always have to state in the body of the specification as essential features all of the other little integers.  Looking at page 304, including that it is essential that the flap contains spaced parallel elastic members.

GUMMOW J:   Of every claim.

MR CATTERNS:   Yes, your Honour, otherwise our friends will say the specification ‑ ‑ ‑

GUMMOW J:   Not just claims 1 and 2.

MR CATTERNS:   No, your Honour.  I just picked 6 then as an example.  Otherwise our friends will say this specification is defective because it does not direct you to have in the body spaced parallel elastic members.  That is why his Honour Justice Burchett is right when he made that finding of fact I took your Honours to in reading the document as a whole.  To make it means choose the right fabric, stick it together in the right way, have the right shape, have the right elastic, and that is what you need to be told how to do.  If you want to know what infringes and what does not, you look at the claim.  You can choose so far as the body goes:  permeable or not.  If you want to know the ambit of monopoly, you go to the claim which defines it.  The one thing that is for sure here is that the skilled addressee knows physically how to make it.  Our submission is that section 40(2)(a) is only about that.  Do you know how to make it?  It is not a question of directing you one way or the other.

GUMMOW J:   Mrs Bennett says, “What is the ‘it’?”.

MR CATTERNS:   That is an interesting thing, and his Honour Justice McTiernan says in AMP v Utilux, which I will come to, which we submit is right on the point, he says the “it” is, looking at the summary, “an elastic leg unitary disposable diaper which has an elasticised flap and which is more precisely, or more narrowly defined in the claims as possessing liquid pervious flaps”.  Really, your Honours, that is why I submit it is a legal question.  Perhaps two questions:  whether we could read the document as a whole in satisfying the requirement of 40(2)(a) to describe, but really, whether or not it is a function of the specification, in describing the specification, to state what is essential.

May I just remind your Honours that this idea of essential features, comes from a different ‑ ‑ ‑

McHUGH J:   But does the skilled reader who wants to make the nappy, which constitutes this invention, know what nappy he has to make?  Does he make or does she make a nappy with fluid pervious flaps or one with fluid impervious?

MR CATTERNS:   But your Honour, with respect, they are not playing a game of seeing how ‑ ‑ ‑

McHUGH J:   That is what I do not understand and why the “and/or” in the earlier part throws me into confusion.  What is the point of it?  You seem to be saying, “Well, because of what is in the claims, you can ignore the “and/or””.

MR CATTERNS:   No, your Honour.  The way these things work, I respectfully submit, is a skilled addressee who would know something about the art contrary to what their Honours said.  A skilled addressee is taken to know something about the art.  They read these thing as a whole.  They do not – why I said “game”, your Honours – they do not play some sort of artificial game with themselves, rule a line at page 390 and say, “I cannot read the next two pages, how do I go?”.

You read the document as a whole, you see there are two options, you see that only one of the options is claimed.  Then you say to yourself, “Okay, if I want to do what is claimed, I will get a licence, or wait 20 years and then I know how to do it”, and there is no question at all they know how to do it, or they say, “Well, here is a bit of extra free advice from the patentee where they told us about impervious flaps and they have not claimed it, I can go and do that if I want to”.  Your Honour, reading the document just in a modern, practicable way, there is no trouble.

McHUGH J:   Do not worry about reading it in a modern, practical way, the question is, does it comply with section 40?

MR CATTERNS:   Yes, your Honour.  May I go to that?

McHUGH J:   Does it describe the invention fully?

MR CATTERNS:   Yes.  Well, your Honour, what does “describe” mean?  We have both given your Honours a definition.  It means to tell you everything about.  First of all, can I just get a couple of propositions out of this.  First, looking at the section just as a matter of statutory construction, there is a distinction.  First proposition.  Describe and define are separate concepts in subsection (2)(a), “Describe the invention fully”, and subsection (b) or paragraph (b), “end with a single claim or claims defining the invention.”

So our first proposition is that there are two different things, two separate requirements, set out in the section.  Our second proposition is that the specification is a document as a whole, looking at (b), with ends with a claim or claims defining the invention.  In other words, the claims are part of the specification.

Your Honours, thirdly, the concept of describing the invention fully includes saying what the best method known to the applicant of performing the invention is, so the concept of performing the ‑ ‑ ‑

GUMMOW J:   But there may be other methods.

MR CATTERNS:   Yes, your Honour, but they are methods of performing the invention and so, in other words, the concept of description includes performing the invention.  That is our submission.

GUMMOW J:   All I am saying to you is the invention may be capable of being performed other than by use of the best method, which indicates why one has various claims about other things.

MR CATTERNS:   Exactly, your Honour.  But you can also perform the invention, which I have generally described, in a way which does not infringe my claims because I have drawn my claims more narrowly for some reason or another.  So, your Honours, that is our third ‑ ‑ ‑

McHUGH J:   I know you got special leave by throwing this case up as a great point of principle.

MR CATTERNS:   It is, your Honour.

McHUGH J:   Yes.  I am still to be persuaded that it is anything more than a pleading point.

MR CATTERNS:   No, your Honour.  We respectfully submit that if this essential features argument is right and you have to state in the body of the specifications ‑ ‑ ‑

McHUGH J:   No, but you keep saying that.  Your opponent does not say that.  Your opponent’s argument is sure you can look at the whole of the document but when you look at this document you do not know where you are.

MR CATTERNS:   No, your Honours.  Our friends will not let us read the whole document to – our friends will not, as I understand their argument.  But, your Honour, with respect, in the questions your Honour puts to me is doing the same thing arguendo as their Honours Justices Wilcox and Branson because your Honour is saying, “When I read to page 390 I only see optional and I don’t see what is known as the essential feature, namely the fluid permeable flaps.”

Our submission is that why this case is worth special leave is, if that is the law, people will have to write specifications differently.  They will have to say in the body of their specification what is and is not essential as distinct from the claims.

McHUGH J:   They generally do, do they not?

MR CATTERNS:   Your Honour, they had to until 1883.

McHUGH J:   Well, that is a long time ago.

MR CATTERNS:   Yes, your Honour. 

GUMMOW J:   But they have not since.

MR CATTERNS:   They have not had to, no, your Honour.

GUMMOW J:   No, and that is why ‑ ‑ ‑

McHUGH J:   They have not had to since but they generally do.

MR CATTERNS:   They do, your Honour.  Often there is a consistory clause.

McHUGH J:   Yes.

MR CATTERNS:   The High Court says in Welch Perrin, which I will go to shortly, you do not have to any more.  The reason you had to do it, your Honours, is that you had to know, as we go back to the 1852 Act which we cite, what the claim is.  Originally, of course, your Honours, patents were granted on the title.  That is it.  That was your monopoly.  You got your monopoly by putting forward a title, then a provisional specification in 1852 and so on, and claims became mandatory in 1883.

So, your Honours, I do respectfully submit that this is a crucial legal question because, if we are wrong, you write specifications differently.  If we are wrong, you never say optional because even though that is okay for fair basis, it is not for sufficiency because you had to say you must do this in the body.

GUMMOW J:   It would mean that the cases in which optional has not invalidated for reason of fair basis were wrongly decided because they should have been invalidated for want of sufficiency.

MR CATTERNS:   Yes, your Honour, but pleading matters and so on.

McHUGH J:   When did “fair basis” come into the law?

MR CATTERNS:   I think 1883, your Honours.  His Honour ‑ ‑ ‑

McHUGH J:   I thought it was later than that.  I may be wrong.

MR CATTERNS:   In the 1852 Act, I beg your pardon.

McHUGH J:   Yes.

MR CATTERNS:   It is discussed in CCOM, your Honour, by the Full Court, but before the 1852 Act cases such as Mullard v Philco in England had a defacto “fair basis” rule where in Mullard v Philco the claims were broader than the specification because they did not have one of the anodes or cathodes; they were not limited to that and that pattern was invalidated on that ground.  So, your Honours, we submit they are different areas of law and if our friends are right, we submit then there is a problem in writing specifications, which if that is the law, that is the law, of course.

GUMMOW J:   Well, it means there is going to be a lot of invalid patents.

MR CATTERNS:   Well, that is my submission.  I do not want to weary the Court with floodgates.

GUMMOW J:   It is not quite a light fingers as all of that.

MR CATTERNS:   But, your Honour, what I get from that, yes, and every dependent claim of every patent, unless you have written a consistory clause carefully for every single claim, saying, “In one way I do this.  Such and such is essential”, or something like that.  So, your Honours, our third proposition on section 40 was that the concept of description includes performing the invention.  That is what it is about, we say; it is the consideration.

Your Honours, just a couple more propositions about section 40:  fourth, the words “the nature of the invention” do not appear.  Now, your Honours, our friends make much of the words “the nature of the invention” and the passage their Honours quote from the patent Gesellschaft Case, uses that phrase – those words.

GUMMOW J:   Where is that?

MR CATTERNS:   Can I just use our submission, your Honour; is that a convenient place to look at it?  It is at the top of our page 10.  Your Honours, on this his Honour Justice Carr, speaking with any other members of the court agreed says:

The specification contains a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject ‑ ‑ ‑

GUMMOW J:   Yes, I know.  Has anyone used it before 1997 in the Federal Court at first instance?

MR CATTERNS:   I am not sure, your Honour, but we give the history of it.  The four cases that support it there, your Honour, it is very clear, we submit, are Edison & Swan – these are the ones cited by Justice Carr – Samuel Taylor, AMP v Utilux and Valensi and, your Honours, as we attempt to demonstrate, we submit, successfully, over the next few pages, all of that goes back to the 1852 Act, because in the Samuel Taylor Pty Ltd v SA Brush Co Ltd Case, his Honour Justice McTiernan sets out at length a passage from the judgment of Justice Lindley, which your Honours see at the top of page 11 – I will not take your Honours to it – but when your Honours go to Edison & Swan, Lord Justice Lindley, although the case is dated after 1883, it concerned Edison’s patent which was granted under the earlier 1852 Act, and it was required under the 1852 Act to tell you what the nature of the invention was, because there were no claims.

GUMMOW J:   What happened to Edison’s patent?

MR CATTERNS:   I think revoked, your Honour, on the ground of sufficiency.  My first proposition is that that phrase “the nature of the invention” does not appear in section 40.  You have to say what the nature of your invention is when you are describing it.  It is a much lesser requirement, as our friends say.  You are saying this is a diaper with flaps, if that is the nature of the invention, but that does not mean you have to describe essential features.  The words “the nature of the invention” were in the 1852 Act in England, stayed in the 1883 Act in England, even when the requirement for claims was put in the 1883 Act, were in the Queensland Colonial Act our friends gave your Honours a copy of, were not in the 1903 Patent Act with respect to a complete specification.  I will give your Honours a bundle in a while if I may.

GUMMOW J:   Just before I get too dizzy with all of this, what is Lord Justice Lindley saying in that passage at the top of page 11?

MR CATTERNS:   He is saying that there are ‑ ‑ ‑

GUMMOW J:   He says two things.

MR CATTERNS:   - - - two requirements which are in section 9 of the 1852 Act.  You have to particularly describe and ascertain the nature of his particular invention.

GUMMOW J:   Yes.  Then he comes back to that.  He says:

The first condition imposes upon the Patentee the necessity of stating…..what his invention really is…..so that they may know what they are not –

That is claims type language.

MR CATTERNS:   Exactly, your Honour.  So our submission is that the idea of describing and ascertaining the nature of the invention in the old law meant claims.

GUMMOW J:   And then he says, “The second condition ‑ ‑ ‑

McHUGH J:   What he called “The second condition” was really the sufficiency.

MR CATTERNS:   What I call sufficiency, your Honour, yes.  So, although it did not matter in that Patent Gesellschaft Case, which was precisely about sufficiency, how to make the boat to carry sheep to the Middle East and get food on conveyor belts past their pens, the words “the nature of the invention” which appear in his Honour Justice Carr’s little passage at the top of page 10 are historically derived from the claim part of the requirement in the 1852 Act.  So we submit that the content now of the requirement of sufficiency, namely to fully describe the invention, is to tell you how to do it and has nothing to do with defining it in terms of essential features or integers.  That is a requirement of claims.

McHUGH J:   That was the problem in the SA Brush Company Case.

MR CATTERNS:   Could not make it.

McHUGH J:   They did not want anybody to know how to make them.

MR CATTERNS:   They did not tell you how to glue the brushes in, your Honour, yes.

McHUGH J:   Yes.

MR CATTERNS:   Valensi, which is the other one of the cases cited, is another one of the cases cited by his Honour Justice Carr.

GUMMOW J:   What happened in Valensi?  What was the defect in it?

MR CATTERNS:   That is (1973) RPC 337. That was the colour television.

GUMMOW J:   Colour television, yes.

MR CATTERNS:   That it was invalid, your Honour, that insufficiency had been established, it being a question of how much – that is the case which discusses, amongst other things, the amount of work that you can rely on the skilled addressee to have to do at page 377.  At the bottom of 377 their Lordships say:

Further, we are of the opinion that it is not only inventive steps that cannot be required of the addressee…..he is not to be called upon to make a prolonged study of matters which present some initial difficulty:  and, in particular, if there are actual errors in the specification ‑ ‑ ‑

GUMMOW J:   Yes.  Now, is there any question of inutility in the present patent?

MR CATTERNS:   No, your Honour.

GUMMOW J:   So there is no question that it will not work unless it has the permeable material or pervious material?

MR CATTERNS:   My answer to your Honour’s question is, that is right, but, of course, your Honour, a utility is something within the claims is not useful.

GUMMOW J:   Yes.

MR CATTERNS:   Your Honours, this Court in a highly different context recently of the constitutionality of the plant breeders’ rights, Grain Pool of Western Australia v Commonwealth (2000) 46 IPR 515, in paragraph 78 paraphrased, for different purposes I accept, your Honours, section 40(2)(a) as:

The requirement that the patentee sufficiently specify the working of the invention –

and, your Honours, that is what we submit this is about, that was what Valensi was about and that is what Edison & Swan was about.  May I remind your Honours that, as their Honours Justices Wilcox and Branson point out, impermeable flaps are useful, Proctor and Gamble sold them. 

Your Honours my proposition about section 40 – sorry to go back there – is that the words “the nature of the invention” do not appear and I tried to explain why they have not been part of Australian law since 1903.  They were in there in relation to the provisional, as a historical matter, and it is the provisional that was dealt with by the Dean Report, as I will come to later, your Honours.  A further proposition about section 40 is that the words “essential features” do not appear.

As I have submitted to your Honours, if our friends were right and you have to say in the body of the specification, give a direction or state what is essential, then dependent claims would not work.  A minor point, perhaps, but just as a matter of context, in section 40(2) itself, the concept of dependent claims appears.  It relates only there to petty patents because with a petty patent you must have only dependent claims.  You are only allowed three claims and the second two must be dependent, so my proposition is that – we have made submissions already about the difficulties for dependent claims if our friends in the Full Court are right, well, here are dependent claims being expressly contemplated.

Your Honours, a further proposition that we get from section 40 is that the requirement of sufficiency (2)(a) is an entirely distinct requirement from “fair basis”, subsection (3).  Your Honours remember that the other context in which fair basis arises is in arguments about priority date which is section 43 and regulations – I do not need to go to them – regulations 3.12 and following.

So we submit that just as a matter of statutory construction we are right in submitting that there are two distinct functions performed by the document as a whole, “describe” and “define”, and a particular part of it does the task of defining.  As to statutory context we have submitted that dependent claims are expressly there.

Further, your Honours, the Act, of course, expressly permits and worldwide practice does too, amendment and your Honours have seen how we have amended here.  Under amendment, at the very least, you can amend to narrow your claims.  The provisions are, your Honours, section 104 for amendment in the office.  Section 105 is for amendment directed by the court which is done when there are proceedings on foot and the requirements for amendments are in section 102.

So, your Honours, if you can amend that contemplates that you might narrow your claims which means that you might add further integers which become essential but you cannot change the body of your specification with impunity to rewrite it and say, “Yes, we here couldn’t rewrite our body of the specification and write another paragraph and say, ‘Look although the preceding paragraph says and/or’, we now decide that they must be liquid permeable”, because you lose your priority date and that is what section 114 says.

Also section 102 says you cannot claim a matter “not in substance” disclosed in the specification as filed.  So the whole regime of amendment contemplates narrowing and it is foreign to that idea that you have to write in the body of the specification as opposed to the claims a little treatise on what is or is not essential.

Finally, your Honours, just as a matter of context, this Act - and our patent system is part of an international system which we see in Chapter 8 sections 88 to 96.  The Patent Co‑Operation Treaty under which we treat a document filed under the Patent Co‑Operation Treaty we deem it to be an Australian application if the conditions are complied with.

Also under the Paris Convention we undertake to our colleague member States that they will have a year of priority so people can write a document for the purpose of the United States, Canada, England, Japan and they will be given priority here but they have to comply with Australian requirements.  Our submission is that for us to have a requirement that you specify in the body of your specification what is essential is out of step with the rest of the world.

Your Honours, may I go quickly to the patent itself in appeal book 1, page 184.  I just remind your Honours that we can see from the first page, the abridgment, which I think is prepared by the office, at line 10 there is priority data, which shows us claiming convention priority of the 2 July 1984, based on a US document.  You have a year under the Paris Convention to apply.  That is why up a little higher on the right, “Application Date: 28.06.85”, we did it a couple of days before the expiration of the year.

Your Honours, we have gone to page 187, the discussion of the prior art, and 188, the summary of the invention, which I accept describes the flaps but does not narrow it to fluid pervious.  I will not go through the detail of the two embodiments that I have described, but there are two, perhaps three, construction issues that we would like to touch on briefly.  The first is, there are two embodiments, one of which is a little more complicated in figures 3 and 4.  We submit that as a matter of ordinary reading of this document, the crucial paragraph – I say “crucial” because it is what from the ratio of the decision below – at page 190 applies to both embodiments.  His Honour Justice Tamberlin did not agree, and we respectfully disagree with his Honour.  Their Honours Justices Wilcox and Branson said it was an open argument on available construction that that paragraph applies only to the second embodiment.

GLEESON CJ:   Is it material to the construction of the document that we happen to know that pages 1 to 4 were prepared in a context of a document that was going to propound claims in the form of those made on page 304 of the appeal book, and that when they made the amendment in response to the communication from the examiner and narrowed the claims to relevantly what was originally claim 2, they just sent in new pages 5 to whatever, and left pages 1 to 4?  Is it material of the construction of pages 1 to 4 to know that that was their origin?

MR CATTERNS:   I will find the section in a minute.  I have forgotten the number of the section, your Honour, under this Act that says you are allowed to consider the specification before amendment as a matter of law.  But I am not certain what difference it would make because it is not really a matter of ambiguity on page 4 that is going to be resolved by our knowing.  I think I would like to put it higher, your Honour, but I have a feeling we cannot because we really submit that it is not a matter of ambiguity on page 190 to be resolved by knowing the claims or even knowing what your Honour put to me.

GLEESON CJ:   As I would understand it, if the argument against you is right, suppose there had been no question of novelty raised and the claims had remained in their original form, and then there was an allegation of infringement based on claim 2 in the form of the original document, if the argument against you is right, then it would have been impossible to succeed.

MR CATTERNS:   Impossible, yes, because it is insufficiently described.  That is right, your Honour.  I mean, I do not want to put it as floodgates, but we cannot see how that does not follow from the reasoning.  I will give your Honours a reference to that section in a minute, if I may.

GUMMOW J:   What does the section say?

MR CATTERNS:   It is section 116, your Honour:

The Commissioner or a court may, in interpreting a complete specification as amended, refer to the specification without amendment.

We are not submitting, your Honours, that passage 190 is ambiguous, cleared up by the claims, which is what Justice Tamberlin held, and which we do not embrace.

It is relevant to understand all the matters his Honour the Chief Justice put to me, but we do not submit it is an easy way out of, in effect, making that paragraph read as if it were compulsory rather than optional.

The other construction issues, which probably do not matter, are our first submission is that this paragraph, just as a matter of reading the document as a whole, which talks about flaps from start to finish, when it says “the flap material” on page 190, it is the flap material of either embodiment.  Your Honours can see by looking at the diagrams that there is no difference in principle between the two diapers.  There is a more complicated one in figures 3 and 4 at page 195 with a sort of a trapdoor effect with bigger flaps.  So we submit that just as a matter of construction, this paragraph refers to both embodiments, in other words, the whole of the invention.

The word “preferably” does not help us much, if at all, because of the “and/or fluid permeable”.  May I make it clear that there is no doubt that fluid means liquid in that context, as in bodily fluid.  Our submission is that “preferably” the adverb qualifies the verb “is” rather than the adjectives “soft, conformable”, et cetera.

McHUGH J:   Justice Burchett…..only “soft”, did he not?

MR CATTERNS:   Yes, that is right, your Honour, but we submit that the adverb there is qualifying “is”.  We see the other construction to be candid but we submit that “is” is the verb.  How definitely?  Preferably.  “Preferably is” you could write it.  Each of the following then, because it is soft, is vapour and/or fluid permeable.  But in the end, your Honour, that does not get us a direction, if that is what is required, to be fluid permeable.  The final matter of construction is that the paragraph goes on at 190 and says:

A suitable material –

The teaching does not stop there or the sufficiency, and we are talking about the flaps –

made of a fine mesh with a basis weight of –

so-and-so –

and may be a spunbonded diaper liner of the type used through the diaper.

By no means compulsory that it must be but it may be and, your Honours, we do know that the liner is liquid pervious.  That is what it is all about, letting bodily wastes go through the liner quickly into the absorbent material.  We are told that expressly at page 188, line 36, “includes the fluid pervious diaper liner”, and we know the claims say that.

McHUGH J:   Could you just assist me.  Questions of inutility and insufficiency often overlap, do they not, in the sense that one can prove inutility by showing that the invention as claimed will not work even with a modification that would be available or could be expected of a reasonably skilled person?

MR CATTERNS:   Yes.

McHUGH J:   Does it throw any light on the question of sufficiency in a case like this?

MR CATTERNS:   Your Honour, they often relate it in that similar facts might be, as here, the same problem that our friends saw is pleaded under a number of headings but, your Honour, strictly speaking, they are a different idea because ‑ ‑ ‑

McHUGH J:   They are a different idea.  I understand that.

MR CATTERNS:   Because in the utility case it assumes that you are sufficiently taught how to make the device.  You follow the instructions to the letter and there is the perfect device but it does not work in the sense of pump water or plough ground or cure cancer.  So that is what inutility is.

McHUGH J:   Well, it will not work as described.  It will not work with such modifications as would appear to a reasonably competent ‑ ‑ ‑

MR CATTERNS:   Yes, your Honour, the skilled addressee makes it out of the right material, does not make it out of timber and so on.

GUMMOW J:   But there was an inutility argument here.  It is dealt with at 379.

MR CATTERNS:   Yes, your Honour, but, I mean, there is none alive in the case; that is why I answered your Honour’s question the way I did.

GUMMOW J:   I see, yes.  Was that a ground in the Full Court?  Was it agitated again in the Full Court, inutility?

MR CATTERNS:   I do not think so, your Honour.

GUMMOW J:   Right.  I just wanted to be clear, that is all.

MR CATTERNS:   May I check that and answer your Honour properly?  Your Honours, the remaining matter of construction in the patent – I do not think I have quite finished – our submission is that the passage at 190:

may be a spunbonded diaper liner of the type used throughout the diaper –

does provide some further teaching to the skilled addressee because the skilled addressee sees that it may be, so again it is not compulsory, but sees that the flap may be pervious because of that because the one thing that is for sure is that the diaper liner is itself fluid pervious.  Your Honours, at 189 – and this is an argument rejected by his Honour Justice Tamberlin, not touched upon by the majority – talking about the “elastic means”, your Honours, at 189 that hold the flaps up to make the inner containment barrier:

Elastic means 15 therefor serves to reorient the flap 14 in relation to the rest of the diaper profile and elastic length and strength…..is dependent upon the textile of the liner –

So that is again a teaching in part and not compulsory that the flap may be made out of the liner material in which case it would be fluid pervious.  As your Honours can see from the drawing, perhaps best at 194, where you can see that it is the liner material that goes along and then is bunched up to form the flap and then goes along and is bunched up to form the next flap.  So again, your Honours, I accept that it is not compulsory but it is there at least described in a way that a skilled addressee would read as being pervious.

GLEESON CJ:   Mr Catterns, I am not questioning this, I have no basis on which to do so, but the entire argument is proceeding upon the assumption that material could be vapour permeable but impervious to fluid.  I assume that assumption is scientifically valid?

MR CATTERNS:   I think so, your Honour.  I suppose it depends on the size of the – I am saying this from the Bar table.  I will see if I can find something about it.  It depends on the size of the molecule.

GLEESON CJ:   I am not intending to doubt it.  I just note, however, that that is the assumption that is the basis of this entire problem.

MR CATTERNS:   That there is a dichotomy.

GLEESON CJ:   The problem relates or arises from the use of the expression “vapour and/or fluid permeable” and it is assumed that something could be vapour permeable, but fluid impervious.

MR CATTERNS:   Yes, your Honour.  I think that is right, your Honour, and I think I am right in saying that is the assumption that has been at the basis of the case from day one.  I cannot say that they mean the same thing.  Your Honours, may I go to their Honours’ reasons in volume 2.  Your Honours, utility was not answering his Honour Justice Gummow, utility was not in the appeal.

GUMMOW J:   Thank you.  Assume for a minute that you were successful here, just assume that, what then happens?  Justice Tamberlin has decided the whole case, has he not, the whole appeal?  He had to, really.

MR CATTERNS:   Yes, because he was with us on sufficiency.

GUMMOW J:   Yes.

MR CATTERNS:   Your Honours, I imagine it would be relisted before the Federal Court.

GUMMOW J:   Different bench, same bench?

MR CATTERNS:   I imagine the same bench, your Honour, their Honours being, in effect, part heard, and that there would be a little timetable for written submissions.

GUMMOW J:   No doubt your opponent would encourage Justice Tamberlin to change his mind.

MR CATTERNS:   Well, yes, but may I reserve for another day whether they are allowed to do that, your Honour?

GUMMOW J:   Yes.

MR CATTERNS:   They may well be, in light of your Honours’ reasons in this case.

CALLINAN J:   Justice Tamberlin is not part heard.  I know it is a dissenting judgment by him.

MR CATTERNS:   Yes.

CALLINAN J:   He is not part heard.

GLEESON CJ:   We have no authority to direct the administration of the Federal Court.  I am not sure exactly what their Act provides as to which judges sit on which cases, but presumably there is somebody who decides that, not us.

MR CATTERNS:   Yes, your Honour.  That is right, your Honour.  My submission is that the order should be remit and then we work out the procedure in the Federal Court.  But, subject to what his Honour Justice Callinan put to me ‑ ‑ ‑

GUMMOW J:   It does indicate the wisdom in hearing the appeal and determining it in this sort of case.

MR CATTERNS:   Fully in the Full Court.  Yes, your Honour.

GUMMOW J:   Particularly construction issues.  Anyhow.

MR CATTERNS:   Yes, your Honour.  Your Honours, we are not asking this Court to do more work than it has already been asked to do, but we imagine that what the Court says on the question of essential features and sufficiency may have a large impact on fair basis issues, may have.

GUMMOW J:   That is what worries me.

MR CATTERNS:   Yes.

GUMMOW J:   Why should we get into fair basis questions?

MR CATTERNS:   I am not asking your Honour to, but, your Honours, if this Court, for example, applied the passage in CCOM which criticises the essential features approach in the context of fair basis, that would give it further authority, of course.  Your Honours, if I may just go to ‑ ‑ ‑

CALLINAN J:   I must say it does not seem – I agree with Justice Gummow – it does not seem very satisfactory, does it, that it was obviously an important case, a dissenting judgment, it had to be a very real possibility that it would come here.  It is extraordinary that the other judges did not decide these other points that were fully argued.  I mean, it is not your fault, but it is very, very unusual, given the nature of the case and the commercial interests involved.

MR CATTERNS:   Yes, your Honour.  I think the two critical issues that remain are this Beckestrom novelty argument and fair basis, and infringement, as my friend reminds me – which is by no means a minor issue, of course.

HAYNE J:   There is no contention that the orders made by the Full Court are to be supported on alternative bases?

MR CATTERNS:   No, your Honour, I do not believe so.

HAYNE J:   But you say, as I understand it, that the matter ought to go back.

MR CATTERNS:   Yes, your Honour. 

GLEESON CJ:   Why is that?

HAYNE J:   Why?  Absent contention?  Because it leaves us in the position, does it not, where we decide one issue, which as I understand your contentions thus far, reflect, perhaps directly, perhaps only indirectly, upon other issues debated in the Full Court?  What then happens?  They go back to the Full Court, they decided there, you come back here?  It does not sound to me to be desirable, and by no means certain that it is the inevitable consequence, which you accept.

MR CATTERNS:   Well, your Honour, although that would seem to be advantageous to my client, I am hesitant to embrace it because we have made it clear, including at the application for special leave, that we thought remitter was the way to go, as had happened in Ramset, in different circumstances.

GUMMOW J:   We had a similar problem in Ramset.  That is why I am somewhat distressed that it has come back again.  I know it is not the parties’ fault, the parties…..justice.

MR CATTERNS:   It would be fair to say that the reason our learned friends have filed no notice of contention is that we said on the application for special leave fair and square that we thought remitter was the way to do it, and to be candid, we partly did that because we wanted to make it clear to this Court that there was a discrete issue, as a matter of forensic.  I think it was true ‑ ‑ ‑

HAYNE J:   But the very problem is whether that assumption, that the issue can be isolated and put into its box, is right.

MR CATTERNS:   Your Honour, I respectfully submit there is no doubt about that as a matter of law; it is a discrete issue.  Of course, the reasoning of the High Court in getting to issue A ‑ ‑ ‑

HAYNE J:   The nose of the cat peeped a little out of the bag, Mr Catterns, when you suggested that what was said in this Court might perhaps be of influence in the way the Full Court disposed of it.

MR CATTERNS:   It would be your Honour, but we are not asking for any free kicks, your Honours.

HAYNE J:   I thought that is what counsel were employed to do, Mr Catterns.

MR CATTERNS:   Well, it is hard enough to win the instant issue of sufficiency, and we would be very satisfied with that.  I submit that the procedural issues, although I accept, with respect, what has fallen from your Honours about undesirability, but the procedural issues can be dealt with satisfactorily, we would submit, in the Full Court.

GUMMOW J:   Anyhow, I took you off your course ‑ ‑ ‑

MR CATTERNS:   I was just going to go briefly to their Honours’ reasons at 398.  They said in paragraph 2, that it is purely section 40(2)(a), making it clear, your Honours, it has nothing to do with fair basis.  This is page 398, paragraph 2.  So it is just the full description question, which their Honours then set out.  Their Honours quote a passage from his Honour Justice Gummow in Rehm v Websters, which, we respectfully submit, shows the distinction between the two different tasks, namely, the description telling you how to do it, and the claim marking out the monopoly.

GUMMOW J:   Well, there is a useful and succinct description in the fourth edition of Blanco White’s work on patents for inventions at paragraph 2.102.  There is no need to take us to it.

MR CATTERNS:   Thank you, your Honour.

GUMMOW J:   Why do you say conformity has never been part of ‑ ‑ ‑

MR CATTERNS:   It has never been part of Australian law but his Honour is talking in general terms about what we now would call “fair basis”, namely, a lack of support in the body for what is in the claims.  Your Honours, on very similar facts, the Full Court just the other day in ICI V Lubrizol, in the passages that our friends very fairly took your Honours to, distinguished Weiss v Lufft in exactly the same way.

The patent in suit in the ICI v Lubrizol Case was for a lubricant combined with refrigerants that do not wreck the ozone layer.  There are two types that do not:  HCFCs which have chlorine in them, and HFCs which have no chlorine at all.  HFCs are better.  The patentee narrowed their claims to HFCs, choosing out of a perfectly optional description exactly the same factors here, your Honours, held last week, overturning his Honour Justice Emmett on the point, that it was fairly based.  So, your Honours, here it is a fair basis question once again whether we could have a claim narrower, as a matter of fair basis ‑ ‑ ‑

GUMMOW J:   There is no reliance in ICI on the Full Court in the present case.

MR CATTERNS:   I beg your pardon, your Honour?

GUMMOW J:   There is no reliance in ICI, is there, on the case under appeal here today?

MR CATTERNS:   No, your Honour, sufficiency did not come up.  There were no arguments about sufficiency in that case.  So your Honours, we respectfully submit that Weiss v Lufft would now be regarded, or the facts in Weiss v Lufft, would now be regarded as a fair basis question.  If it would be convenient to the Court we would be happy to supply the Court and our friends with Sir Garfield Barwick’s second reading speech on either of the Bills.  It explains in great detail this topic of amendment and loss of priority dates.

GUMMOW J:   It might be helpful, I think.

MR CATTERNS:   Thank you, your Honours.  We will do that in the next couple of days if that is convenient, your Honour.  Your Honours, we express mild resentment at our learned friend’s argument about core of the invention.  Our friends say it was not challenged on appeal.  Their Honours did not make a finding.  Their Honours said at page 400 line 8:

It is the case of the respondent that the core of the invention is an inner barrier comprised of liquid pervious flaps.

It was not the case in written or oral submissions that the core of the invention was an inner barrier comprised of liquid pervious flaps.  I recall having a long debate with his Honour Justice Wilcox whereby I said you do not have to say what your inventive step is and I said this is about a diaper.  It possesses this and this.

What their Honours are referring to is evidence, your Honours, which is at page 203 volume 1 where the only relevant expert said in paragraph 9:

In light of the above and based upon my knowledge and experience, I believe that the invention claimed in the KCA Patent is directed towards the absorbent garment as claimed including the –

various combinations.  Then he describes it, including the flaps.  Then the four last lines:

It seems to me that the provision of the flaps –

not pervious, your Honours -

as a secondary barrier is the core of the invention…..The function of the flaps –

et cetera.  Then he explains in paragraph 10 that I have taken your Honours to, the reason for having them pervious, which is to let fluid get back.  Now, your Honours, my learned friend Mr Bannon at first instance cross‑examined Mr Butler about that at pages 43 to 44 and got out of him, well, it is the core, is it not, that they be pervious.  Fair enough, but, your Honours, that is, in the end, a matter of construction for the Court.  It is not our case that the core of the invention is fluid pervious flaps and, your Honours, it is our case that there is no such statutory concept as the core of the invention and it is dangerous to create those non‑statutory concepts.

McHUGH J:   What is the invention?  What do you say the invention is?

MR CATTERNS:   A disposable diaper possessing flaps, elasticised flaps, to use the way that his Honour Justice McTiernan did it in AMP v Utilux, described in detail in the specification and more closely defined as possessing fluid pervious flaps in claim 1 and yet, more narrowly, in subsequent claims.  That is the physical thing that is the combination, the product, the manner of manufacture.  Your Honours, just a minor point, his Honour ‑ ‑ ‑

GUMMOW J:   Just go back to 114.  I am not sure you are not pulling the wool over my eyes.

MR CATTERNS:   I am sorry, your Honour?

GUMMOW J:   Section 114 postulates an amendment which discloses as a result of amending, in other words, you put more in.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   If you had amended here you would have taken it out.

MR CATTERNS:   I thought we were postulating something like his Honour the Chief Justice postulated, which is a little sentence that explains it better which says that notwithstanding the fact that I hereby have described this as optional I now choose to ‑ ‑ ‑

GUMMOW J:   Why would you have lost your priority date if you had amended the body to bring it clearly in conformity with the amended claims?

MR CATTERNS:   It would be a question ‑ ‑ ‑

McHUGH J:   What if you struck out the words “vapour and/or”?

MR CATTERNS:   Well, your Honour, the question would be whether that is claiming matter that is in substance disclosed as a result of amending the specification.  I mean, I do not concede that it would, necessarily, but that would be the question, and that is why people try not to amend the body of their specifications, they having been lodged.  That is why the practice is contrary to Weiss v Lufft.

GUMMOW J:   Yes, the practice is caution, I suppose.  That is all, it seems to me.

MR CATTERNS:   Yes, I am sorry, I do not mean to submit that we would without question lose our priority date.  It depends how it is done, but that is the reason for the practice of not playing with the body of your specification.  Your Honours, his Honour the Chief Justice, arguendo, rewrote the specification with a reference to Proctor and Gamble.  May I just remind your Honours that the fact is that Proctor and Gamble was not, of course, prior art.  Proctor and Gamble’s impervious flaps was not until 1989.  That comes from paragraph 14 of the judgment and page 87 of the appeal book.

May I remind your Honours that all of these things are after 1985, the date of lodgment in Australia, which, as his Honour Justice Gummow held in Rescare, is the date for sufficiency.  As I submitted in‑chief, we do not agree with our friend that the whole direction of the specification is fluid impermeable.  That is the “contains/barrier” argument.  May I just refer to some findings on that:  his Honour Justice Burchett at 371 to 372; his Honour Justice Tamberlin at 412.  The evidence is the evidence of Mr Butler who explained that advantage at paragraph 10 at 204.

His Honour Justice Burchett’s finding about this balance in the passage at page 111, for example, that his Honour the Chief Justice took my friend to, was not not accepted by the Full Court.  Indeed, their Honours noted in page 401 in a passage that has a typographical in it that I think we all agree.  That is page 401, line 47:

Mr Butler did give evidence that although it was a disadvantage…..if fluid did get passed the flap, an advantage of the liquid –

it should be “pervious flap” –

was that it could pass back –

There was no evidence to the contrary and Justice Burchett accepted that, as I have drawn attention to that at 371 to 372.

As I submitted in-chief, we do not agree that our product is impermeable.  Those words do appear in the document at pages 244 to 245, but Mr Butler’s evidence at 74 to 89 makes it clear that it is not, but we submit that it is irrelevant.  Your Honours, in the end what Weiss v Lufft says you can and should do answers what may be a floodgates argument about the practice in the Patent Office and so on.  Our principal case, as your Honours know, is based on matters of statutory construction whereby we say that the requirement of description and the requirement ‑ ‑ ‑

GUMMOW J:   You say you can overcome the effects of Weiss v Lufft because you can read the whole document as an entirety.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   Well, that is the question we have to decide really.

MR CATTERNS:   Yes, your Honour, and on the one hand ‑ ‑ ‑

GUMMOW J:   Mrs Bennett says, well, that produces an odd result; that you have got the body saying the one thing and suggesting the opposite of what is, in fact, now the case as a result of the amendment.

MR CATTERNS:   Well, your Honour, if there were ‑ ‑ ‑

GUMMOW J:   And then she prays in aid the misleading idea in Sami Svendsen.

MR CATTERNS:   Yes, your Honour, but, with great respect, it is not misleading.  It is a matter in the end of impression, not authority, although there are plenty of cases, including ICI, which say optional can be fair basis and if it was misleading it would not provide fair basis.  So those cases apply by parity of reasoning.

GUMMOW J:   Well, that is another worrying aspect of this appeal.

MR CATTERNS:   Yes, but, your Honour, really the factual question gets down to describing something as optional and then claiming it in the narrower way, we submit, does not give rise to the contention that our friend puts forward and the facts in Weiss v Lufft were different.  It is a factual question and reminding your Honours that in Welch Perrin the Court did say you read the document as a whole.

GLEESON CJ:   Mr Catterns, on page 190, the critical sentence appears as the first sentence of a paragraph.

MR CATTERNS:   Yes, your Honour.

GLEESON CJ:   I take it that there are some words omitted from the second sentence.

MR CATTERNS:   Yes, I think it must be “is” or “would be”.

GLEESON CJ:   Was there any consideration of that, either at first instance or before the Full Court?

MR CATTERNS:   I do not believe so, your Honour.  It was not put forward as an attack on ambiguity, I do not think.  I imagine it has at least “is made of a fine mesh”.

GLEESON CJ:   Thank you.

MR CATTERNS:   I do not believe it was discussed at either level, your Honour.  May it please the Court.

GLEESON CJ:   Thank you.  We will reserve our decision in this matter.

AT 4.20 PM THE MATTER WAS ADJOURNED