Kimberly-Clark Aust v Arico Trading Intl

[2000] HCATrans 100

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S149 of 1999

B e t w e e n -

KIMBERLY-CLARK AUSTRALIA PTY LTD

Applicant

and

ARICO TRADING INTERNATIONAL PTY LTD, ARIE KLIGER, FRANCISCO MARTIN OTERO T/A KOALA NAPPY EXPRESS

Respondents

Application for special leave to appeal

GLEESON CJ
GUMMOW J
KIRBY J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 17 MARCH 2000, AT 12.01 PM

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 applicant.  (instructed by Sprusons:Solicitors)

MRS A.C. BENNETT, SC:   If it pleases 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:   May it please the Court.  Your Honours, this invention for a disposable diaper was simple and successful.  Our learned friends did not challenge his Honour Justice Burchett’s holding that it was inventive.  They raised some other matter.  We lost on appeal on a single ground, the ground under section 40(2)(a) of the Patents Act, whether or not the specification fully described the invention.

GUMMOW J:   What is the currency of this patent?  When does it expire?

MR CATTERNS:   I think 2004, your Honour.

GUMMOW J:   2004.  When was it sealed, do you know?

MR CATTERNS:   I am not sure when it was sealed. 

GUMMOW J:   The application was accepted in July 1989 and the priority date seems to be 1984.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   So, it was sealed sometime after 1989, obviously.

MR CATTERNS:   Yes, your Honour.  Your Honours, the reason we lost ‑ ‑ ‑

GUMMOW J:   You get 20 years, do you?

MR CATTERNS:   Yes, your Honour.  I think in those days not but as a result of various changes in the Patents Act to comply with - - -

GUMMOW J:   Pick up the extra term.

MR CATTERNS:   Yes, everybody gets 20 years except in the case of pharmaceutical patents where there can be a further extension.

So, your Honours, we lost on this single ground which, in the jargon, is called sufficiency and, as we submit the doctrine of sufficiency - - -

GLEESON CJ:   Just let me interrupt you for a moment, Mr Catterns.  I notice that both sides filed affidavits.  It is convenient to counsel if we take those as read?

MR CATTERNS:   If it please your Honour.  They are there to support any submissions we might wish to make as to practice.  We were not going to take your Honours to them any further, I do not think.  As I say, your Honours, the ground of sufficiency or the duty fully to describe the invention, we submit, raises the question of whether or not you teach people how to make the device.  Do they need to exercise their inventive faculty or too much work and research or experimentation to build the particular thing?  The question of sufficiency does not involve, we submit, setting out in the body of the specification as distinct from the claims what are the essential features, so called.

GUMMOW J:   I think we understand all that, Mr Catterns, but is there an evidentiary problem here?  At page 6, Justice Burchett, at line 40, refers to expert evidence which elucidated what a skilled person would have done in reading the pattern and so on.  Then at page 43 there is some criticism of that, line 14.  Would we be faced with sorting out that evidentiary squabble?

MR CATTERNS:   No, your Honour, because as their Honours make it clear, their Honours in the Full Court, at page 43, that relates to the question of fair basis which is in the context in which his Honour Justice Burchett was dealing with it in the earlier page, not the subject to this appeal or this application.  Your Honour, on fair basis, as your Honour knows of course, the evidence of an expert can be relevant.  The passage in the specification that causes us the trouble is not ambiguous.  Our problem is that it describes this feature that the flaps be liquid “pervious” as optional.  Now, that raises the question we seek to raise absolutely starkly:  can you describe a feature as “optional”, ie, not essential, in the body of the specification included as an essential feature in the claim and still be sufficient?  As to fair basis, of course, a feature may be optional and still provide fair basis.  In that context, it is relevant to have a witness say, “Oh, yes, I can read that and I would tend to choose one thing over the other.”  Well, that is the fair basis question.

So, with respect, we read the passage at page 43 that your Honour referred to as putting aside that evidence.  Well, we agree it should be put aside on sufficiency and we cannot – I am saying it now – rely on that as a question of sufficiency.  We submit that the reason we lost on sufficiency was not that.  A skilled addressee does not know how to put this simple physical thing together.  The reason we lost is that the specification did not say in the body, “It is essential that you make the flaps liquid pervious.”

GUMMOW J:   We have a copy of the specification.  Where is the actual ‑ ‑ ‑

MR CATTERNS:   Yes, your Honour, the famous passage?

GUMMOW J:   Yes.

MR CATTERNS:   It appears at page – the very last part of the body, your Honour, at page 4.  It is behind tab 1 in our little bundle.  Your Honour, there is no argument about – the majority in the Full Court say twice that is not ambiguous and we agree.  We cannot possibly say, your Honours - - -

GUMMOW J:   What is the particular word?

MR CATTERNS:   Both, your Honour, “and/or”.  “And/or” is good enough from the Full Court’s point of view.  That makes it clear that it is optional. 

GUMMOW J:   Yes.

MR CATTERNS:   So, your Honour, we must accept, and did, that it is completely clear that the body of the specification in that one sentence does not say that the flaps must be, as an essential matter, or are “required” to be, which is another word that the Full Court used, or must necessarily be “fluid pervious”.  So, your Honour, that raises it starkly.  To be sufficient, do we have to say in the body that it is essential?

Now, your Honours, what has happened here, with respect, is that a doctrine of essential features, criticised a number of times in the context of fair basis, I make it clear, by your Honour Justice Gummow at first instance in Rehm v Websters, by the Full Court in CCOM – that doctrine which was criticised in the territory of fair basis has now infected the territory of sufficiency.  Your Honours, the reason why it is the wrong doctrine is clear.  The concept of essential features relates to what must be in the claims to test infringement.  You infringe a claim if you take all the essential features.  You do not if you do not.  And there is a little debate at the margin about whether a feature is essential or not.  If it is inessential, can you have a mechanical equivalent?

It is a doctrine of infringement and, because novelty relates to reverse infringement, it is also a doctrine of novelty.  Held by the Full Court in CCOM, it is not a doctrine of fair basis and the court sees in CCOM, the court of which his Honour was a member, it is wrong to proceed in the territory of fair basis as if testing for infringement and look in the body of the specification for essential features.  We accept, as our friends point out, that that is fair basis.

GUMMOW J:   Your point is maybe that in drawing the body of the specification, it is not a bad specification because in telling a person how to apply the invention, it tells the addressee about more than the essential integers of the invention.

MR CATTERNS:   Exactly, your Honour, and more than we claimed.  So, your Honour, if somebody chooses the other option and make them fluid impermeable, which happened in fact by some cases including ourselves at an early stage, you do not infringe, so that is not a problem.  You have chosen in writing your claims to make it narrower and so you have told the addressee, as it were, some superfluous information.  But, as I say, it is a stark issue.  Do you have to write in the body of your specification that every feature is essential?  Put another way ‑ ‑ ‑

GUMMOW J:   Is there any English authority bearing on this?

MR CATTERNS:   Well, your Honour, in a way, going all the way back to Edison & Swan.

GUMMOW J:   Yes, but I mean on this particular theory that the Full Court seems to have embraced.

MR CATTERNS:   Not on essential features, no, your Honour, we submit not.

GUMMOW J:   Where does it come from?

MR CATTERNS:   It comes from the territory of infringement, your Honour, of course and novelty.

GUMMOW J:   But in terms of authority where does it come from?

MR CATTERNS:   Your Honour, the modern source is his Honour Justice Wilcox at first instance in Coopers criticised, with respect, by your Honour in Rehm v Websters not picked up, as your Honour points out in Rehm v Websters, by the Full Court, Justice Fox and others, on the appeal.  What happened there is the idea that a feature that is an essential feature for infringement was searched for for fair basis.  Your Honour remembers that then in Yamazaki, that is why ‑ ‑ ‑

GUMMOW J:   I remember all that.  I was just wondering if it went back earlier than Coopers, that is all.

MR CATTERNS:   Not so far as fair basis goes that I am aware, your Honour.  Of course, so far as infringement and novelty goes, centuries.  If your Honours would not mind looking at page 43, where their Honours ‑ ‑ ‑

GUMMOW J:   Where is the particular passage here where it is repeated in the Full Court?

MR CATTERNS:   I was going to take your Honours to that.

GUMMOW J:   In the majority of the Full Court.

MR CATTERNS:   Yes, your Honour.  At page 42 line 30 their Honours quote the famous passage which we accept sets it out as entirely optional, as their Honours go on and say at line 41, saying there is “nothing ambiguous about the expression”; it includes that.  We agree.  Then, your Honours, this is why we lose.  At 43 their Honours say:

The expression cannot fairly be interpreted so as to call necessarily ‑ ‑ ‑

GUMMOW J:   Sorry, page 42?

MR CATTERNS:   I beg your pardon, your Honour, I was referring to the bottom of the page.

GUMMOW J:   Which page?

MR CATTERNS:   Page 42 where their Honours at line 30 quote the passage which I took your Honours to, then their Honours say at line 41 there is nothing ambiguous about that.  It includes a number of options – that is my word.  Then this is why we lose.  At the top of 43, line 1:

The expression cannot fairly be interpreted so as to call necessarily for a material which is fluid permeable…..the specification, it says nothing as to an essential feature ‑ ‑ ‑

KIRBY J:   Their Honours do not appear to be applying some general principle at that point.

MR CATTERNS:   No, your Honour, but there is no other reason we lost other than that principle.

GUMMOW J:   It seems to be assumed though ‑ ‑ ‑

MR CATTERNS:   That you have to call for an essential – I beg your pardon.

GUMMOW J:   No, that you should have essential features and nothing else.

MR CATTERNS:   Well, your Honour, that gives you another problem of course as to how that could possibly work with the idea of a number of dependent claims.

GUMMOW J:   Anyhow, what did Justice Burchett say on this point?  Presumably his argument was run there.

MR CATTERNS:   Virtually not, your Honour, with respect.  It was largely a fair basis matter at page 6.  Would your Honour mind ‑ ‑ ‑

GUMMOW J:   The change of counsel may have brought about a change of attack.

MR CATTERNS:   Yes, your Honour, we do not complain about it.  Our learned friends have the points on the board.  My learned friend might just check that.  It is dealt with by his Honour under the heading of sufficiency, barely at all.  At 43, if I could just make good perhaps this point that why we are losing is this essential features idea, whether or not one calls it expressly a doctrine, it is the ratio, we submit.

KIRBY J:   As far as I am concerned, this is simply the construction of the operation of a particular federal statute which will ordinarily finish in the Federal Court, but you make a point that the construction brings Australia out of line with an international convention.  Is that a proposition you are advancing or not?

MR CATTERNS:   Yes, your Honour.

KIRBY J:   In what way?

MR CATTERNS:   As follows, your Honour.  If your Honour would not mind going, for example, to page 110 of the book, this is the Patent Co‑Operation Treaty by which people who file internationally have a year in which to file in Australia and maintain their priority, to put it shortly.  It is a schedule to the Patents Act, your Honour.  Article 5 at 110 line 25 says – this is what I submit is the idea of sufficiency:

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out –

So, your Honour, that is instructions to make it.  It does not say, “It must specify in the body as distinct from the claims what are the essential features”.  It goes on, as does section 40, in our submission:

The claim or claims shall define –

and, really, another way of putting our argument is that it is fundamental to patent law that it is the claims that do the job of defining, ie, set out the essential features.  It is the job of the body to describe, ie, tell you how to make it.  Then just for completeness, your Honours, Article 6 goes on:

They shall be fully supported by the description.

That is the concept of fair basis.  So, as we submit, their Honours have added in addition to the notion that sufficiency tells you how to make it, they say for sufficiency you must say what is essential in the body.  Our argument is that is the job of the claims.  As your Honours can see, it is a short argument.

If I could just make good at 43 and 44 that that is why we lost, your Honours see the essential feature concept in that first paragraph at the top of the page.  Their Honours hold in paragraph 12 line 10 on page 43 that we cannot rely on the claims to perform this function.  Your Honours will notice at line 24 the word “requirement” appears for the first time in the claims, so again that is a different word than “essential feature” but their Honours have the same idea, that you have to state in the body the requirements.  We submit that is the function of the claims.  It is a simple point but it is crucial in the drafting of every patent.  Every patent is examined for compliance with this section 40.  Most oppositions, or many, include it, many revocations include it and, after this, all will because, if you can find ‑ ‑ ‑

GUMMOW J:   You say there is going to be a lot of invalid patents around.

MR CATTERNS:   Yes, I do, your Honour, on this basis.

GUMMOW J:   Unmeritoriously invalid too.

MR CATTERNS:   Yes, your Honour, precisely, this is inventive.  May I just say our learned friends – there are a number of unfinished issues, namely, there was no majority decision on novelty and fair basis.  That would be remitted, we would respectfully submit.  There is no decision ‑ ‑ ‑

GUMMOW J:   That is because the Full Court did not deal with all the issues.

MR CATTERNS:   That is right, your Honour, we would accept that.

KIRBY J:   This was fatal to you at the threshold.

MR CATTERNS:   Exactly, your Honour.  So, if the Court were minded to grant special leave and we lost the appeal, that would be it of course.  If we were upheld on this issue, then we would agree that it ought to be remitted so our friends can ask the Full Court to decide the other matters.

GLEESON CJ:   Where do we see Justice Tamberlin dealing with this issue?

MR CATTERNS:   His Honour deals with it in particular at pages 53 and following.  May I say that we, respectfully, do not embrace totally the way his Honour put it.  His Honour tended to regard it as the claims being able to clear up an ambiguity.  To the extent that it is that, we would agree that this is not the issue.  This is not clearing up an ambiguity.  It is whether the functions can perform the task of defining the invention, whether the claims can perform that task of defining, ie, set out the requirements, what must necessarily be there, what the essential features are.  His Honour Justice Burchett dealt with sufficiency at page 13, lines 19 to 31.

KIRBY J:   Is this line of authority of Justice Wilcox - and I think Justice Lockhart also took a similar view, did he not?  Has it been criticised in international patents literature or – I can see some practical problems presented by it.

MR CATTERNS:   Your Honour, we have not sighted any criticisms of that kind.  As I drew attention to, the patent office manual perceives in the territory of fair basis a dichotomy, as it describes it, between the essential features cases on fair basis, I accept, and the judgment in CCOM.  We submit there is also the problem here.  We submit it is clear that the job of the specification in terms of sufficiency is to tell you how to work the invention, not to set out the essential features.  That is the job of the claims.  Since 1883 you have had to have a claim in the specification defining the invention, and we submit that not to find a list of essential features in the body is an error.

GUMMOW J:   What does this word “pervious” mean?

MR CATTERNS:   The same as “permeable”, your Honour.  Water can go through and, as his Honour Justice Burchett pointed out, it is a question of degree.

GUMMOW J:   Is it an English word?

MR CATTERNS:   Apparently just, your Honour, yes.  There are a couple of infelicities in – sometimes one sees “pervious” and sometimes “permeable” and on some occasions “liquid” and sometimes “fluid”, but in context it has so far been held that has caused no difficulty.

KIRBY J:   It is often said that we are impervious to criticism.

GUMMOW J:   Yes, but we are not pervious to it.

GLEESON CJ:   It is an English word.  It is like making “gruntled” a word by removing “dis”.

GUMMOW J:   Or “flammable” instead of “inflammable”.

MR CATTERNS:   Well, your Honours, as I submit, it really is a narrow question and there is no argument from us that the passage is relevantly ambiguous.  We submit it is a crucially important question in patent law.  May it please the Court.

GLEESON CJ:   Thank you, Mr Catterns.  Yes, Dr Bennett.

MRS BENNETT:   Your Honours, this is in fact a thoroughly conventional application of thoroughly well-recognised law and mischaracterising the majority decision has not, with respect, changed that.  It has long been the case that section 40 of the Patents Act has been subject to consideration and its predecessor which is basically in the same terms for ‑ ‑ ‑

GUMMOW J:   Do you agree that this doctrine has an origin before Justice Wilcox in Coopers?

MRS BENNETT:   This is not the doctrine of Justice Wilcox in Coopers.  In Coopers Justice Wilcox was dealing with fair basis and, as your Honour Justice Gummow noted in the Rehm decision, that the Full Court decision in Coopers did not attract any criticism in that ‑ ‑ ‑

GUMMOW J:   I know that.  The complaint against you is that this is a growth – that it starts off on a false basis anyway and it is now growing into another area.

MRS BENNETT:   With respect, that is not what the Full Court did and it comes from what my learned friend has said, with respect, is a mischaracterisation of section 40(2)(a) of the Patents Act.  The requirement to describe the invention fully is not limited simply to telling people how to do it.  There are two aspects to section 40(2)(a) and that has also been long recognised since the days of Sami Svendsen.  That is that the invention itself has to be described.  That is one aspect.  The second aspect is there has to be sufficient information to tell the skilled worker how to work the invention.  What their Honours held in the Full Court in this case was that the patent failed both of those aspects and as to the second aspect that the evidentiary question arose that I will come to in a moment on page 43.

The first requirement is to describe the invention fully; that is, to make the nature of the invention plain.  That has been dealt with in this Court, as we have said before, in Sami Svendsen, and it was reiterated in Patent Gesellschaft.  So what their Honours were looking at at pages 42 to 43 was whether or not the invention had been described fully.  In order to look at that they had to see whether or not the nature of the invention had been made plain, and that is exactly what they were doing at pages 42 and 43.  What they found was that the nature of the invention had not been made plain.  If one reads the whole of the passages at pages 42 and 43, it is not, with great respect, what my learned friend Mr Catterns has said.  They were not saying that one has to state as such the essential features in the body of a specification.  What they were examining was whether or not ‑ ‑ ‑

GUMMOW J:   Where is the passage that you say you won on?

MRS BENNETT:   We won on the passages at pages 43 and 44.  That is, at 42, having set out what our learned friends do not cavil with, which is the concept that there is a variety of possibilities so far as the vapour or fluid permeable question is concerned, having noted further back before on that page that under the heading “Summary of the Invention” there was no reference whatsoever to the nature of the material.  In the first embodiment of the invention there was no reference to the nature of the material.  Having only then come to the second embodiment where there were a number of alternatives framed, their Honours were looking to see whether or not the invention as described in the specification was made clear, bearing in mind that the claims which are required under a separate part of section 40 to define the invention.  We seem to have two inventions referred to, the one that is defined in the claims and the one that is described in the body.

GLEESON CJ:   Is part of the thinking behind this that if somebody had set out to make one of these products referring to the paragraph in question and taking the vapour permeable option as distinct from the fluid permeable option, they would not have produced a product that was fluid pervious?

MRS BENNETT:   That is so.  It would not be the same invention.  That is what their Honours are getting at.  That is the second aspect of it, the misleading aspect which their Honours have taken from Sami Svendsen.  So what they are saying at page 43 is that in looking to see what the invention is – and one must go, with respect, right down to line 25.  They are saying look at the ambiguity or the various possibilities that one can get.  It does not call necessarily for a material which is fluid permeable.  That must be right.  That is on one available construction of the specification that says nothing as to an essential feature of the claimed invention and they are not saying you have to spell out the essential feature; they are saying you have to make it clear.  On the other available construction ‑ ‑ ‑

GUMMOW J:   Make what clear?

MRS BENNETT:   What the invention is.  Both the claims and the body have to describe the same invention.  The body has to fully ascribe it.

GUMMOW J:   No, the claims have to be fairly based surely.

MRS BENNETT:   This is not a question of fair basis, with respect, your Honour.

GUMMOW J:   I realise that, Mrs Bennett.

MRS BENNETT:   The claims are addressed ‑ ‑ ‑

GUMMOW J:   It would be a good idea to listen to me.  Anyhow, I will not repeat myself.

MRS BENNETT:   Your Honour, with respect, the body of the specification does not describe for the purposes of telling the person who wishes to work the invention what the invention is.  The claims are directed to those who wish to know what the monopoly that is claimed is, and the way the monopoly is framed can be different to the way the invention is described in the body for all sorts of reasons that are not necessarily apparent.  There is clear authority for the proposition stretching back through early English cases and we have referred to one of them, which is Evans & J. and J. Taunton which is in turn referred to in Blanco White 24 RPC 517. I think we sent that up to your Honours.

KIRBY J:   Yes, we have it.

MRS BENNETT:   At page 522 what is said there is that one cannot:

allow the Claim to supplement the description in the Specifications so as to introduce features which are not there –

and that is what is said at about line 47 on page 522.  That is exactly what my learned friend seeks to do in this case.  The nature of the invention without the claims does not make it clear what the invention is.  The claims that are defined which are meant to be the same invention have different factors in it.  What their Honours have said at page 43 is when you look at the body of a specification which is meant fully to describe the invention, you do not see what is then said later on to be an essential characteristic of the invention itself.  It is not saying it has to spell it out as an essential integer but the information has to be there.  Then importantly on page 43 they go on at line 10 to refer to the Evans and Taunton Case and say that you can refer to the claims to assist in the construction of doubtful passages but of course, as my learned friend, Mr Catterns, concedes, there is no doubtful passage in the body.  The alternatives are clear.  Then, having gone on to refer to Welch Perrin, which again says that you cannot incorporate the claims in that way into the body, they say the specification:

is, as we read it, a specification in which the requirement that the flaps be liquid permeable appears for the first time in the claims.

So you have an invention that is meant to be defined in the claims but has a requirement that is not any part of the invention as described in the body of the specification.  They are not saying you have to match word for word an essential integer or indeed describe it as essential as such.  What their Honours are saying on the first aspect of section 40(2)(a) of the Patents Act is that you have to make it clear to a person, and it is not clear what the invention is.  It is misleading.

GLEESON CJ:   Could I just clarify one aspect of the facts.  I am sure this is not in dispute but I just want to aid my own understanding.  At the bottom of page 41 there is an abstract of the disclosure extending over to the top of 42.  Are we here concerned with the “fecal containment flap” referred to on the top of 42?

MRS BENNETT:   That is what is said to be the initial part of the invention.  What we are talking about is what the material is meant to be made of.

GLEESON CJ:   Yes, the “flap material” is then referred to on line 30.  What is it that says the faecal containment flap is liquid pervious?

MRS BENNETT:   Only the alternatives that are set out at the very end of the patent that my learned friend Mr Catterns took you to which is optional characteristics of it in the second embodiment of the invention, or the second time they give you a description of the invention.

GLEESON CJ:   Is that the paragraph referred to in line 30?

MRS BENNETT:   Yes, your Honour.  That is at the very end of the patent.  It only appears for the first time in the last few lines of the description.

GLEESON CJ:   I understand that, but I am trying to comprehend the inconsistency between those two paragraphs.

MRS BENNETT:   It is setting out what it is that the invention is.  In the first part when they describe the invention in the summary of the invention, there is no mention of what the fabric has to be.

GLEESON CJ:   Of the flap?

MRS BENNETT:   Of the flap.  Then at the very end when they talk about the second embodiment of it, the patentee says you can have these various alternatives.

GLEESON CJ:   They use the words “preferably” and “and/or”.

MRS BENNETT:   As said on page 42 are the various permutations and combinations that arise out of that, and that is not said to be ambiguous.  So, when it comes to looking to see what it is that the same invention is when it is defined in the claims, there is a requirement in the claims that the flap be fluid permeable, so the invention has different characteristics.  What the Full Court is saying is that that is misleading.  A person who reads the body is entitled from the body to know what the invention is and they are being misled.  Then when you come to the second aspect of section 40(2)(a), which is the requirement that a person from the body should be able to work the invention, they say at the bottom of page 43 – and that is when we get to the evidence – that is why they are dealing with the second aspect.  They say again they do not agree with his Honour Justice Burchett as to what the evidence said and they say there is no direction in the body of the specification or based upon the knowledge of the person who would be reading that, that they would know to make a nappy with a fluid permeable flap.  That is why over the page at page 44 at line 10 the majority says:

The complete specification does not disclose to a person who may wish to make the invented product after the patent has expired how the product should be constructed.  It would not instruct a reader of the specification who knew nothing of the prior art that an essential feature of the invention was the necessity for the flaps to be “fluid pervious”.

GUMMOW J:   But we are looking at a skilled addressee, are we not?

MRS BENNETT:   That is right, and what they are saying, your Honour, is that the skilled addressee would not know to make it fluid pervious.  There is no direction in the body of the specification telling that skilled addressee to do it.

GLEESON CJ:   Where does the claim require it to be fluid pervious?

MRS BENNETT:   It is in claim 1 which is the independent claim.  I think that my learned friend, Mr Catterns, sent up has it.  It is at page 5 of the patent.  Claim 1 your Honours will see is:

An absorbent garment comprising…..

a liquid pervious bodyside liner…..

first and second elasticized fluid pervious flaps –

This is an area that is not at all ‑ ‑ ‑

GUMMOW J:   Why is that not fairly based?  I do not understand it at the moment.

MRS BENNETT:   That was a separate argument, your Honour.  What the argument was – of course this was not considered by the Full Court, the fair basis question.  The separate argument as to fair basis raised the question of whether it was fully described in contrast to simply disclosed on an internal fair basis question.  With great respect, your Honours, it is not appropriate to try and bring in the consideration of the very clear area of the law of sufficiency of description questions that arise with respect to fair basis, which is a different area of the law altogether.  Indeed, it is not an area of the law where there is any problem because, although Justice Wilcox phrased the matter in a certain way in Coopers, the Full Court said the Federal Court have not had any problem with fair basis since that time.

GLEESON CJ:   What is the difference between the expression “fluid pervious” and the expression “liquid pervious” which appears a little further up?

MRS BENNETT:   I think they have been considered to be much the same, your Honour.  There was some argument below as to what in the circumstances the particular function would constitute liquid and fluid, I think, at first instance.

KIRBY J:   In the particular context it is likely to be the same.

MRS BENNETT:   That was probably what – I think that is very much what was considered to be the case.

GLEESON CJ:   It was the reference to “vapour” that prompted my question.

MRS BENNETT:   Yes, your Honour, although there are differences because some – these are used not only for babies.  “Vapour pervious” of course, there is a distinction and I think their Honours drew the distinction between “vapour” and “fluid”.  Vapour is more like a gas.  So what has happened, even if my learned friend, Mr Catterns, had some argument as to the first aspect of section 40(2)(a), which is the full description requirement, there is no question, in our respectful submission, as to the second aspect.  Indeed, Justice Tamberlin did not see any difference in the law that was to be applied.  He simply found as a question of fact in this case that the requirement – he also recognised the need to have the various requirements set out in the body of a specification but he said that those alternatives meant that the requirement was set out in the body of the specifications.  That was a factual matter upon which he disagreed but not as to the law.

GLEESON CJ:   I understood him to say that what appears in the specification is ambiguous and that when you read it together with the claims, the ambiguity can be resolved in a particular fashion.

MRS BENNETT:   He did say that as well and in that regard, in our respectful submission, his Honour was incorrect and we know that our learned friends are not relying upon that part of his Honour’s reasoning.  But he also said at page 57 at line 51:

In the present case, the feature of being “liquid pervious” cannot be said to appear for the first time in the claims as a requirement of the invention.

He also cited Sami Svendsen.  He said:

It is highlighted as the “preferred” approach in the second embodiment.

With respect to his Honour, that simply cannot stand as a matter of construction of the various alternatives in the second embodiment.

So there is no dispute between the judges of the Federal Court as to what the law is that is to be applied in this case.  There is no question that arises on a proper reading of the majority judgment that they are saying anything that is inconsistent with Sami Svendsen, which was described by the Full Court in Patent Gesellschaft, in effect a single judgment, that that was one of the most important cases in this area, well-settled law that goes back for many years.  This has been a totally normal application of that law on the facts of this case.  With great respect also to my friend, there is no question of an international problem that arises because your Honours will see from page 110 that my learned friend took your Honours to that the Patent Cooperation Treaty requires that:

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

There are some differences of exact terminology between that and section 40(2)(a) but the same principles apply.  That is, that the invention has to be disclosed and in a way sufficiently clear and complete to work it.

Their Honours found that both those aspects again had not been complied with.  Indeed, there is evidence set out in the affidavit of Dr Ernst that the overseas standard is in fact somewhat higher than the Australian standard in that regard, but there is no change in the practice whatsoever of the way patents should be drafted.  The concept of full description has been well‑settled law in this country for many, many years.  Indeed, there has not been any difficulty even since Justice Wilcox’s decision so far as fair basis is concerned.  But is because of the attempt to the Full Court to elide the questions of fair basis and sufficiency that their Honours made it very clear that this case was being decided upon full description and not upon the question of fair basis.  They did not get to the fair basis arguments which were in turn run.

I should say that the argument as to full description and the absence of full description has been run in this case since 1995 since interlocutory injunction was refused as against the respondents.  I am informed it was run before Justice Burchett, although he dealt with it somewhat peremptorily in his judgment and did not ‑ ‑ ‑

KIRBY J:   What do you say about the proposition that if the principle that necessarily obtains that a lot – that this will have an unfair operation in the case of many patents?

MRS BENNETT:   With respect, your Honour, it has no unfair ‑ ‑ ‑

KIRBY J:   “Unmeritorious” I think was the word.

MRS BENNETT:   There is no change so far as the application to patents are concerned because, when one reads the judgment here, it is quite clear that what their Honours are doing is evaluating the description of the invention in the body of the specification to see if it is fully described.  One way in which they do it is to look to see whether the invention as defined in the claims where one has a characterisation of essentiality – it is with the claims you look at essentiality and you say this is what the definition of the claim says is essential.  They are looking at the body of the specification to see if what is said to be necessary for the invention is described as such in the body.  It can be done by any means by making that description clear.  What they are saying, however, is that you have to see from the body of the specification what the nature of the invention is.  In that regard it has been a classic application of the classic law in this area to the particular case.  That is on the first limb of section 40(2)(a).

As to the second limb, there can be, with respect, no question that this patent is invalid because, with those various permutations and combinations and with their Honours’ finding on the fact that there is nothing to direct the skilled worker as to what to do, there is no way that the second important aspect of full description is fulfilled.  That is, there is no way that a person simply reading this patent specification and reading the body of it would know how to make what the invention is then said to be in the claims.  There is nothing to tell him or her whether to make it vapour permeable, vapour impermeable, fluid permeable, fluid impermeable, or the various permutations set out by the majority decision.

So, in our respectful submission, this patent is manifestly bad on both aspects of section 40(2)(a) even before one were to go if necessary ultimately to questions such as fair basis as to whether or not the body of the specification fully described the invention in contrast to what is dealt with in any of the other cases, which is simply a question of disclosure.  May it please the Court.

GLEESON CJ:   Thank you, Dr Bennett.  Mr Catterns, the decision of the majority seems to turn upon the proposition that if the invention includes fluid permeable flaps, you do not comply with a statutory obligation to describe the best method known of performing the invention by saying, “You can please yourself whether the flaps will be or will not be fluid permeable”.

MR CATTERNS:   With respect, no, your Honour.  The question of best method, we did not lose because of best method, which is the second aspect of sufficiency.  To prove that, then you have to prove that at the date of application, 1984, the inventor had a better method that he did not disclose.  That is factual matter which ‑ ‑ ‑

GLEESON CJ:   So the proposition is that you do not comply with an obligation to describe the invention fully ‑ ‑ ‑

MR CATTERNS:   Only that, your Honour.

GLEESON CJ:   ‑ ‑ ‑ if you say you can make it without fluid permeable flaps.

MR CATTERNS:   Yes, your Honour.

GLEESON CJ:   Provided they are vapour permeable.

MR CATTERNS:   Exactly, your Honour.  That is the nub of the case.  The invention is a diaper with these inner containment flaps providing a little advantage over - a valuable advantage.  We describe the whole invention.  We say it is optional to have fluid pervious flaps.  Our claim is narrower and says you must ‑ ‑ ‑

GUMMOW J:   What otherwise is the invention?

MR CATTERNS:   The invention is the whole thing, is a combination consisting of all the various integers including backing sheets, many of which were known.  Our inventive step was the provision of the inner containment flaps which optionally, so far as the description goes, are liquid permeable.

GUMMOW J:   The invention is a combination, is it?

MR CATTERNS:   Yes, of course, your Honour.  That is the distinction with the Sami Svendsen Case where his Honour held it is not a combination there but a mere improvement by adding this little tab.  So, your Honours, we agree that of course it is the law that you must describe the invention – that is what the section says – and you must define it in your claims by saying what is essential, what are the essential integers.  Our only argument is whether or not you must in the body of the specification say what is essential.  Our friends get that from the ‑ ‑ ‑

GLEESON CJ:   So in the body of the specification you say that something is inessential by making it optional?

MR CATTERNS:   Yes.

GLEESON CJ:   How does that comply with the requirements of section 40(2)(a)?

MR CATTERNS:   By the fact that the claims are part of the same document.  Section 40 says “shall have a specification which ends with the claims”.  They are part of the document, and that is the way we put the argument.  We are entitled to rely on the claim to tell you what is the total definition of our invention.  We are allowed to rely on the claims.  Our friends say not and the authorities say we can – Welch Perrin.

GUMMOW J:   The claims will differ obviously.

MR CATTERNS:   Yes, your Honour.  If they are more than one claim, they must differ.  So what you say is essential for one will cause a problem because it is not essential for the latter.  It is this concept of essential features that we want to attack.

GUMMOW J:   But there is no claim in which elasticised fluid pervious flaps is not required, is there?

MR CATTERNS:   That is correct, your Honour.

GUMMOW J:   Because they are all cumulative on one or two.

MR CATTERNS:   That is right, your Honour.  But for one of the dependent claims to be valid, its little integer has to be said to be essential in the body of the document.  It is that narrow doctrine that we want to overturn.  May it please the Court.

GLEESON CJ:   We will adjourn for a short time to consider the course we will take.

AT 12.46 PM SHORT ADJOURNMENT

UPON RESUMING AT 12.47 PM:

GLEESON CJ:   In this matter there will be a grant of special leave. 

AT 12.47 PM THE MATTER WAS CONCLUDED