Lockwood Security Products Pty Ltd v Doric Products Pty Ltd

[2004] HCATrans 332

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S628 of 2003

B e t w e e n -
LOCKWOOD SECURITY PRODUCTS PTY LTD
Appellant
and
DORIC PRODUCTS PTY LTD
Respondent

GLEESON CJ
McHUGH J
GUMMOW J
HAYNE J
HEYDON J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON WEDNESDAY, 8 SEPTEMBER 2004, AT 10.17 AM

MR A.J.L. BANNON, SC: If it please the Court, I appear with my learned friend, MR C. DIMITRIADIS, for the appellant. (instructed by Phillips Ormonde & Fitzpatrick)

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

GLEESON CJ: Yes, Mr Bannon.

MR BANNON: Your Honours, in Kimberly-Clark v Arico this Court confirmed that the test for fair basis of a claim in a patent is a narrow one, namely, does the invention as claimed travel beyond the matter disclosed in the specification, and that the exercise was one of a comparison between what is described in the specification and the terms of the claim.

That requires, we say, as a first step to interpret the wording of the body of the specification to determine what the patentee says is his invention. In the present case the patentee has made it perfectly clear what he says is his invention and is the essence of his invention in the body of the specification. That statement of his invention accords with the terms of claim 1 and dependent claims.

That is how the learned trial judge construed the specification. That construction was not disturbed by members of the Full Court and, indeed, on a reading of the specification there is no other way of interpreting it, we submit.

By describing the invention in that broad form the patentee was exposed to an attack on the basis that the description was not a full description of the invention within section 40(2)(a). Such limited attack as was made failed. It followed that that form of invention is treated for the purposes of this appeal as being fully described, or to adopt patent parlance, “sufficiently described”.

By so describing the invention, the patentee was exposed to an attack on obviousness which was made namely to the effect that what was claimed was merely known desiderata, a desirable product. That attack failed. The broad form of invention was also exposed to an attack on the basis of ambiguity, that the integers were not clearly defined, that someone would not know what it was referring to. No such attack was made or to the extent it was, it failed. It was exposed to an attack on the basis that it was not a new matter of manufacture because it merely claimed the principle, no such attack was made. Again, it is taken, therefore, to be a new matter of manufacture.

One is therefore left with the position that claim 1 and dependent claims are for something which is unambiguously defined which constitutes a new manner of manufacture, is useful, is sufficiently described and which was not obvious. Further, on any reading of the specification as a whole, the claim – that is, claim 1 – does not travel beyond that product so described. It is in very similar language. By various means the members of the Federal Court have interpreted the straightforward and narrower test accepted by this Court in such a way as to reach a conclusion that the claim – claim 1 and dependent claims – are not fairly based. In so doing, we submit, that they have added glosses to that test, impermissible glosses, which take it beyond established principle.

A starting point is the legislation. If I could turn to section 40 of the Patents Act 1990 (Cth). Subsection (2), firstly, says:

A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention –

This Court, in Kimberly-Clark, held in relation to that that in looking for the full description one is entitled to look at the complete specification, including both the body and the claims. Then 2(b) requires that the patent “end with a claim or claims” and then, relevantly:

(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

The Court, in Kimberly-Clark, also made it perfectly clear that in looking at subsection (3) the comparison there is between the claims and what is described as the body of the specification. So there is one clear difference then between 40(2)(a) and (3), that is to say that in (3) one cannot, unlike (2)(a), look for the basis for the claim across the whole specification. If one could, then, of course, every claim would be fairly based because one would be incorporating the claim.

So that is one difference. That point makes it clear that when one is looking at fair basis one is not looking at the full description as referred to in 40(2)(a); one is looking at what is the language there, the matter described in the body of the specification. The other difference to be noted is that the language in 40(3) is simpliciter “the matter described in the specification”, whereas in 40(2)(a) the adverb “fully” is added.

The next part of the legislation to which I wish to refer is section 138 which is the section which entitles, in this case, the respondent to seek an order revoking the patent. That is made clear by section 138(1). Subsection (3) provides that:

After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground –

and then the various matters are set out, including (f), that is, non‑compliance with 40(2) or 40(3). The opening words that it is open to a court and, indeed, to an applicant for revocation to seek an order that a patent in relation to a particular claim is invalid, including on the grounds specified in (f), namely, non-compliance with 40(2) or 40(3).

Now, that is what the respondent in the present case sought to do on, inter alia, the ground of insufficiency, that is, non-compliance with section 40(2)(a). If I could turn to the appeal book, at page 42 of the appeal book is the commencement of the particulars and the invalidity relied upon by the respondent which is ultimately the relevant document. At page 49 there is paragraph 3 which is the beginning of the introduction to the ground:

The Specification of the Patent does not comply with s 40(2) or s 40(3) –

and then if one goes over to page 52, paragraph 3.9 is that part of the particulars of invalidity which asserts reliance on section 40(2)(a):

The specification does not fully describe the invention claimed in each of the claims.

That is picking up the language of 138(3). Now, the point of this is to just make it absolutely clear that that attack failed, so that for present purposes the invention claimed in each of the claims is taken to have been fully described for the purposes of 40(2)(a). We interpret much of what has been said by our learned friends and will be said to this Court as really an attack on saying that there is not a sufficient description of what we say is the claim on invention. Now, that is not open in the light of the failure of the sufficiency attack, such as was made.

Just in passing, while I have those particulars there, the particulars of invalidity relied upon on the fair basis commence, going back to page 49, in paragraph 3.1A. There was a significant and detailed list of complaints about lack of fair basis, none of which ultimately were either pursued or successful. The particular one which was ultimately successful appears at page 51, 3.8:

None of the claims 1-33 is fairly based on the matter described in the specification –

this is one of the alternative claims. That is really put in two ways. The first way is different to what was ultimately found. It starts at 3.8.1. It says:

Claims 7-33 travel beyond the matter described in the specification in that the specification states –

and I will come to these passages in a bit more detail, but the effect of those subparagraphs is to say that the specification states that the invention consists of, if I can use this shorthand expression, the broad form, and the complaint made there was claims 7 to 33 were not fairly based – if one looks at 3.8.2 at the bottom of the page – because they claimed “features limiting the invention” which were said to be merely “illustrative”. In other words, perhaps I am just making this point, that their primary position on fair basis accords with what we say to this extent, namely, the only way to read the specification is to say that the invention being asserted is the broad form of invention.

I should add that that 3.8.2 ground died a natural death or was not pursued – not before this Court – and then over the page the point which is ultimately relied upon is at 3.8.3:

In the alternative, none of the claims . . . is limited to the precise embodiment described.

Perhaps 3.8.4 is another version of the same one. Next, could I then turn to the patent itself ‑ ‑ ‑

GUMMOW J: What does 3.8.3 mean? What is it getting at or seeking to get at?

MR BANNON: It is not clear, but we assume it is another way of saying 3.8.4, namely, that the only real disclosure is of the preferred embodiment although the language “precise embodiment” perhaps is apt to be imprecise in itself.

One then goes to the patent which starts at page 3 of the appeal book - at the risk of perhaps travelling over ground which is already familiar to your Honours from reading the judgments – in a short compass the patent relates particularly to the topic of locks, which are locks where one opens, say, a front door from the outside with a key which withdraws the latch and one can open the door.

Now, in the first stage of such locks there was a handle on the inside, not necessarily a round handle but one of those oblong, rectangular prism shaped handles, without any locking mechanism on that. Now, that meant that once you were inside it was a ready matter to open the door and get outside. What that did not resolve though, was a situation where somebody got into the house by other means, say a burglar through a small window and wanted to take a TV out through a large opening. They could then readily go out the front door or, alternatively, smash their hand through a pane next to the door.

So in a later version a locking mechanism was added to that second inside handle. Now, often that was done with a key which was the same key which could open the front door but they were independent locks. There was a lock which opened the front door, accessible from the front, and a second lock which was added which was – albeit using the same key – to unlock the locking device of the inside handle.

Now, the problem which that led to was that somebody who entered the house with a bag of shopping or had failed to unlock the inside door was left in a situation that in a fire or spotting a child through a window and wanting to rush outside quickly could not find the key. Now, that is referred to in the patent generally and referred to in the evidence.

Now, the solution to that problem which this patent claims was to come up with a combination which was a new product which was to add as an additional feature to this combination what is described as a lock‑release mechanism or lock‑release means which had the effect that when you turned the key on the outside lock that that would operate on the locking mechanism of the inside lock and unlock that.

What we are talking about is relatively simple devices, in the sense of one has locks and they are described in the patent as “locking means”. There is no general statement of every form of locking means that exists. A patent, insofar as it covers that integer, covers all forms of locking means. Such locks are locked and unlocked. So there is no general statement of how each of those locks are to be locked or unlocked; they are all matters within common general knowledge, it is assumed, and no attack was made on that basis. Effectively, what this patent was saying to the school worker, “Add this extra integer to your system, to your device, and make the work of the outside key operate on the inside lock. At the moment you have an inside lock which is unlocked by a key operated from the inside. Add this feature”.

GUMMOW J: When you leave the house in the first place, and you do not want burglars to be able to get out, what do you do?

MR BANNON: You lock the inside handle and take the key with you.

GUMMOW J: Before you leave?

MR BANNON: Yes.

GUMMOW J: The one key does both?

MR BANNON: Yes. It does not have to, but it can be keyed, and that is the sensible way to do it. Of course – just stating the obvious – if you lock the inside handle and – well, yes, that is what I am talking about. Anyway, that is the scope the debate was. Now, there was evidence about this, and one can just think about it, there are other available solutions to this problem. There was evidence, which was referred to in Justice Hely’s judgment, from one locksmith who recognised the problem and his solution was to advise people who were worried about this to leave the key on the inside lock, so they would not lose it.

Another potential solution would be to have some sort of button system whereby – and there was a version of this in the evidence – namely, when you opened the door from the outside a button would operate on the inside lock to release that inside lock, and when you shut the door again it would not re‑engage the lock. The problem with the prior art version, something called the…..did re‑engage the inside lock. Another solution potentially, I suppose, was some sort of alarm system, or perhaps some system like you see at hotels where the power does not come on until you undo the lock on the inside of the door. There are various other conceivable solutions. This is the solution which was arrived at, and, I add with emphasis, a solution which the trial judge found, after all the evidence, was an inventive solution.

Now, coming to the terms of the patent, at page 3 of the appeal book that background is set out in the second paragraph, commencing:

Latch assemblies for doors commonly include a turn knob or handle which is generally located at the inside of the door and which is rotated to withdraw the latch bolt into its casing. In order to improve the security of such assemblies, manufacturers have included a key operated lock which is operative to releasably hold the turn knob or handle against rotation. Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened . . .

It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used.

A typical latch assembly to which the present invention is applicable includes a casing, a latch bolt movable relative to the casing to adopt either an extended latching position or a retracted release position –

that is the bolt which goes into the door frame –

a first actuator at an inner side of the assembly which is operable to move the latch bolt to the release position –

that is the inside handle –

locking means which is rendered active or inactive by key operation from the inner side of the assembly and which when active renders the first actuator inoperable –

that is the locking means on the inside handle –

and a second actuator at an outer side of the assembly which is operable to move the latch bolt to the release position.

Later claims indicated that can be a key. It says:

In normal latch assemblies of the foregoing kind operation of the outer or second actuator –

that is the outside key, to take an example –

does not affect the operation of the locking means. That locking means remains active in spite of operation of the outer actuator, and can be rendered inactive only by appropriate and deliberate operation of the locking means from the inner side of the latch assembly. It is usually the case that in such prior assemblies that the locking means is key operated. That is, the locking means will generally include a key operated tumbler lock and locking mechanism connected to that lock so as to be influenced by operation of the lock. The second or outer actuator may also include a key operated tumbler lock . . . but in conventional assemblies of the foregoing kind operation of that lock does not influence operation of the first actuator locking means. The two locks are arranged so that one is operated from the inner side of the assembly and the other is operated from the outer side –

two independent locks.

According to the present invention, a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.

That, we submit, is a statement of what this inventor says characterises his invention, namely a combination assembly which includes each of the features of the traditional latch assembly but adds this feature as a locking release means which is responsive to the operation of the second actuator. Then it goes on:

The first actuator will generally include a rotatable knob or handle which is connected to the latch bolt in a known manner so as to be operable to move that bolt into the release position, and the bolt may be spring biased into the latching position. The locking means preferably –

notice I emphasise the work “preferably” –

includes at least one cam controlled detent which is movable between actuator locking and actuator release positions It is also preferred –

again, emphasise the word “preferred” –

that the lock release means is operable to influence the detent cam in a manner such that operation of the second or outer actuator causes the detent cam to move to a position corresponding to the actuator release position of the detent. The cam may be spring biased towards that corresponding position, and retaining means may be operable –

again, emphasise “may”, et cetera, and then it says:

Embodiments of the invention are described in detail in the following passages of the specification which refer to the accompanying drawings. The drawings, however, are merely illustrative of how the invention might be put into effect –

But one asked the question rhetorically, what is the invention referred to? The invention characterised up at line 10 -

so that the specific form and arrangement of the various features as shown is not to be understood as limiting on the invention.

Then there is a detailed description of the drawings, only parts of which I need to take your Honours to. If one goes to page 6 of the appeal book, at about line 10, the sentence commences:

Selectively operable locking means 13 is provided to enable the turn knob 9 to be rendered inoperable. Such locking means can be of any suitable form, and one particular form will be hereinafter described.

That is referring to the locking means, not the lock release means, but again, it is an example of the patentee making it perfectly clear that this is but one embodiment of the invention, not the invention. Then to similar effect, and importantly, at the bottom of that page at about lines 20 to 25:

It is a feature of the assembly 1 that it includes lock release means 17 which responds to operation of the lock 10 so as to automatically deactivate the locking means 13. The release means may take any suitable form, and one particular form will be hereinafter described.

Again, a statement in the clearest of terms that he is not asserting the invention as limited to this particular form.

Then over the page, page 7 of the appeal book, I just refer in passing to something that was just picked up in a later claim. It says:

The locking means 13 of the construction shown in Figure 2 includes the lock 14 and two detents 18 which are cooperable with the turn knob 9 and which are controlled in a manner hereinafter explained.

Page 20 of the appeal book just gives a picture of those detents. It is Figure 3 and it is numbered 18. This is a cross‑section of a handle and one sees some rectangles with rounded ends and they slide in and out of the turn handle and when they in the locking position they go into a female part on each side which locks the handle. Then going back to appeal book page 7, again in anticipation of something I will say in relation to a later claim, at line 25:

In the particular arrangement shown, movement of the detents 18 is controlled by a rotatable cam 22, and the example cam 22 as shown includes two recesses 23 formed in the peripheral surface 24 and arranged in diametrically opposed relationship.

If I could than go to page 12 of the appeal book, and it is again a statement in usual form, commencing at the last two paragraphs of the body of specification. The general effect of this is to say that these are again just examples of what the invention is.

The next page, page 13, is claim 1. Claim 1 sets out what the trial judge identified as six features or six integers and it is in language which is similar to, in some cases identical, the language which appears on pages 3 and 4 of the appeal book and in short reflects what appears at line 10, the latch assembly of the present invention characterised by the various features identified. Our very short point is that where the inventor in the clearest of terms states in the body that the invention is characterised by certain features and the claim does not go beyond those features, whatever other complaints may be made about the patent, one of them is not fair basis.

Then just to develop the position in relation to the claims. One sees then claim 1 is used as part of claims 2 and following, “A latch assembly according to claim 1” and an additional feature is added.

GUMMOW J: Which are the claims that are valid at the moment if you are successful in this appeal?

MR BANNON: Claims 1 to 6 are invalid for novelty reasons. Could I then jump to claim 13. Claim 13 is valid for novelty and infringed. That is the first of the valid novel and infringed claims. That says:

A latch assembly according to claim 12 –

and if one cascades back through claim 12 and earlier, effectively one gets to claim 1. So claim 13 is claim 1 features plus some additional features. So, subject to the fair basis argument, claim 13 is inventive, novel and infringed and there is no other live attack on it. Then there are about four or five other claims. I can identify them. The other ones which are in that category, that is, novel and infringed, are 13, 14, 15, 20 and 30. I should add there is still a live attack on obviousness on those claims which has not been resolved by the Full Court.

GUMMOW J: So obviousness is – if you are successful, you would have to go back for obviousness to be dealt with.

MR BANNON: Yes.

GUMMOW J: For 13, 14, 15 ‑ ‑ ‑

MR BANNON: 20 and 30.

GUMMOW J: And 20 and 30.

MR BANNON: Yes. There is a second category of claims which is 7 – I will start with 7. That is a claim which is valid but for this fair basis point and novel. We said it was infringed. Justice Hely said it was not. We have an appeal on that claim for infringement which has not been resolved. The additional feature of that claim ‑ ‑ ‑

GUMMOW J: Did he deal with obviousness for 7?

MR BANNON: He did. He said it was not obvious. Importantly, if I can add this, there is no longer any attack on claim 7 for obviousness and there was not before the Full Court, so that claim on the ‑ ‑ ‑

GUMMOW J: So that would have to go back on infringement.

MR BANNON: That is right.

GUMMOW J: That would be your appeal.

MR BANNON: Yes. The other claims in that category are 7, 8, 17, 22 and 23. The only other thing I should add is 1 and 6 are the only ones which are held to be not novel and that will not be an issue. So that the balance of the claim not identified and covered by those two lists are claims which are novel but not the subject of any live infringement.

GLEESON CJ: And claim 33 was not infringed?

MR BANNON: Claim 33 was not infringed and we did not allege it was infringed. That was the only one which has been held to be fairly based. That is the drawings claim.

GUMMOW J: It is always pretty easy not to infringe a claim like 33.

MR BANNON: That is right. If I can then go to Justice Hely’s judgment which commences at page 92 of the appeal book, and at page 98 his Honour under a heading “The solution to the problem” sets out the parts of the specification to which I have taken your Honours, and at paragraph 14 of the judgment says:

Thus it is the incorporation of feature (vi) into the lock assembly, in addition to features (i)-(v), which distinguishes the present invention from a typical latch assembly.

At page 99 ‑ ‑ ‑

GUMMOW J: Where do we find (vi) on claim 1, integer (vi)?

MR BANNON: Page 96, paragraph 7, he divides up, with the agreement of the parties, I should add, claim 1 into those six integers, so (i) to (v) was in the typical latch assembly and the combination of (i) to (v) with new integer (vi) which constitutes the invention. Then at 98 his Honour, in effect, says what we say is the only conclusion, namely that the patent is the same. It is the addition of feature (vi) in combination with (i) to (v) which distinguishes the present invention.

To similar effect, over at page 99, his Honour refers to the bottom of that page to that part of the specification and adds in bold the words:

The release mean may take any suitable form –

Over the next page, at page 100, his Honour says:

The diagram shows the lock release means 17 as being something distinct from the second actuator although connected to it. The words which I have emphasised convey that a person skilled in the art would have no difficulty in constructing this integer without the necessity for any instruction from the patentee. The Patent does not have to teach how release means may be constructed as that is a matter within the knowledge of the skilled addressee . . . Mr Catterns QC made it plain that there is no allegation of insufficiently in this regard, an allegation which, if made, would have been antithetical to Doric’s case on obviousness.

Just to make good what his Honour was saying there, they had a case on obviousness which attacked the whole of the patent, including the preferred embodiment, and said that was all very obvious. If they had come along and said, for example, “We all knew that it would have been a good idea to have the outside key release the inside lock, everyone knew that that was the goal, the prize, and it was an obvious thing to do, but what we did not know what to do is how to do it. That was the great difficulty.”

Now, that was antithetical to a case which said the whole thing was obvious, including the preferred embodiment, and as I will come to, his Honour points out nobody came along from the respondent to say, “We all knew that that is what we wanted to do, and the problem we had was working out how to do it”.

His Honour, at page 101, commences a discussion about an issue of infringement of claim 1 to 6. In the course of that discussion, his Honour makes some other comments which are relevant to the question of construction of the specification. At page 104 of the appeal book, at paragraph 32 of the judgment, his Honour says:

Feature (vi) of claim 1 is not described in the Patent with any greater particularity than:

LRM –

which is the short hand form for lock release means –

- which may take any suitable form;
- which is responsive to the operation of the second actuator so as to thereby deactivate the lock on the inside handle.

The improvement over typical latch assemblies which is described in claim 1, is any means of unlocking the lock on the inner handle from the outside of the door by operation of the second actuator.
The preferred embodiment describes “one particular form” of LRM which is “not to be understood as limiting the invention”. It is not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment.

He cites authority to support that proposition. To similar effect, over at page 106, at paragraph 39, his Honour says:

The specification teaches that LRM may take any suitable form provided it is responsive to the operation of the second actuator. Doric’s argument seeks to add a further, unexpressed proviso. The specification does not teach that the constituents of LRM cannot perform a role in satisfying other integers of the claim.

Then his Honour dealt, amongst other things, with the issue of obviousness. At page 132 of the appeal book, paragraph 158, his Honour refers to that evidence which I mentioned in passing a moment ago:

Mr Wilson is a locksmith, rather than a lock designer. He has been aware of the “problem” since the late 1970s –

that is, of people being locked in and wanting to get out quickly and having lost the key –

It has been his practice to caution clients that they should get into the habit of always leaving the key in the inside lock when returning home.

That is part of the factual matrix which his Honour took into account in concluding that the claim 1 invention was not obvious. Then at page 141, again in the context of the decision in relation to obviousness, at paragraph 196, under the heading “Admissions in the specification”, his Honour said this:

Each claim must be considered separately in order to determine whether it involves an inventive step. Doric breaks the claims down into two groups:

(a) claims which consist of matters which are admitted –

allegedly admitted, his Honour is saying –

or proved to be common general knowledge, in combination with the addition of integer (vi) of claim 1 (“CGK claims”), and
(b) claims which claim elements of the preferred embodiment.

The CGK claims are those listed in paragraph 197. Paragraph 198:

The fact that a person could be locked inside using locks like the old Lockwood 001 deadlatch was common general knowledge at and prior to the priority date. Both Mr Wilson and Mr Freestone gave evidence to that effect. The specification discloses that in typical latch assemblies, key operation of the latch from outside the door does not release the lock on the inner handle . . . That disclosure is made in the context of a discussion of the practical disadvantages involved in the use of typical latch assemblies so as to suggest that it is a matter well known to skilled workers in the trade. One only has to operate the old Lockwood 001, for example, to observe that the inner handle remains locked notwithstanding key operation of the latch outside.
Doric submits that the advantage of unlocking the door from the outside of the door, “the corollary of this” was also common general knowledge. The evidence cited in support of this contention is that of Mr Freestone . . . which does not support the submission. It is also inconsistent with Mr Freestone’s evidence that whilst the problem was a matter of common general knowledge, the question of finding a solution to the problem had been placed in the “too hard” basket . . .
This is not a case in which the perception of the problem can be said to be inventive because the problem was well-known; any inventiveness lies with the solution.

In the next paragraph, his Honour records a submission of the respondent:

Doric submits that claim 1 is obvious on its face, because the supposed improvement over the prior art consists of any means of releasing the inside lock from the outside of the door. Merely to describe this in a claim cannot of itself involve an inventive step. Feature (vi) merely states the need for means by which the outside actuator releases the lock on the inner handle. It is nothing more than (admitted) known desiderata. In Doric’s submission, if the problem identified by the Patent arises and is known to arise because the outer actuator does not release the inside lock, the obvious solution is to change the device so that the operation of the outer actuator achieves that result.

His Honour finds:

The specification does not admit that claim 1 is obvious. The specification accepts two matters as generally known as at the priority date:

- key operation of the latch from the outside of the door does not release the inner handle;
- as a result, people may be locked in;
but does not contain any broader admission.

His Honour then refers, in paragraph 203, to the decision of Justice Laddie in Raychem. I refer to this because the expression “technical contribution” rears its head in his Honour’s discussion of the fair basing decision:

“What has to be determined is what technical contribution to the art has been made by the patentee. If that contribution is obvious then it is not protectable under patent law.

The short point is that the technical contribution language is raised in the context of an obvious debate, and perhaps I should have referred to the opening words, that that part of Justice Laddie’s judgment was under the heading “claims to known or obvious desiderata”. Then at appeal book 144, paragraph 207, his Honour said:

Guided by Re Raychem . . . and Winner v Ammar Holdings my initial impression was that the generality of the description of the invention in claim 1, and in particular feature (vi), was sufficient to lead to the conclusion that the alleged invention as claimed is obvious.
However, obviousness is a question of fact. It is sometimes referred to as a jury question. The factual question is whether the claimed invention would have been obvious to a skilled worker . . . Whether the latch assembly described in claim 1 is merely a product described by reference to a set of “obviously desirable” parameters is to be determined on the evidence, rather than by the ex post facto application of judicial intuition, or by deduction –

et cetera. Then over the page, 145 paragraph 211, his Honour said:

No witness deposes to the fact that it was understood at the priority date that a solution to the problem identified in the specification was to use the outside key to release the inside lock. It was not obvious to Mr Freestone or Mr Wilson. The fact that resolution of the problem was placed in the “too hard” basket –

His Honour sets out some various reasons. His Honour also refers to a finding he made that there was an element of copying by the respondent. Then the conclusion is that, notwithstanding the initial impression based on the evidence, obviousness was not made out.

Now, his Honour clearly was addressing claim 1 obviousness in that area, the claim 1 and dependent claims. Then his Honour goes on to say the preferred embodiment claims, they also survive that attack. Then that conclusion is made clear in page 149 of the appeal book at paragraph 226:

It has not been established that any of the claims in the patent is invalid for want of inventive step.

Then his Honour’s discussion on the fair basis point, on which we lost, starts at 150, and it is under the heading “Travelling beyond”. His Honour starts by referring to:

Whether a claim is fairly based . . . depends upon whether there is a “real and reasonably clear disclosure” –

His Honour then refers to the Olin v Super Cartridge test by Sir Garfield Barwick, which is the wording picked up by this Court in Kimberly-Clark:

“The question whether the claim is fairly based is not to be resolved, in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product . . . as expressed, travels beyond the matter disclosed in the specification.”

Paragraph 232 his Honour records the direct contention:

Lockwood has “come up with” a particular device – the preferred embodiment – which solves the problem identified in the Patent, but the Patent claims all ways of solving that problem.

He refers to Justice Rich’s statement in Palmer v Dunlop, which I will take the Court to in a little detail –

“When an invention depends upon a new principle it is enough for the patentee to describe one or more embodiments of the principle and having thus shown its practical application he may by a properly framed claimed secure for himself a monopoly in all similar applications of his invention. But in combination claims it is very difficult to cover validly more than the particular aggregation of integers actually made by the inventor. It must be rare for a combination to consist in such an application of principle that the inventor can exclude from the field all combinations of mechanical equivalents of the integers producing the same result.”

GUMMOW J: This is a case on the 1903 Act.

MR BANNON: Yes. I will go to that case in a little detail, but a couple of points could be made about it. One is it was under the 1903 Act. The second is Justice Rich’s comments when looked at were clearly made in the context of a debate about whether one there was invention and, secondly, whether there was a true combination. The third thing to be said about Dunlop Rubber is that it was a claim on the evidence for a machine to achieve vulcanised battery cases in circumstances where such vulcanised battery cases were known and were achieved but by different processes. In other words, it was a claim to achieve an old result by new means.

What this Court has said in various cases, Shave v McKay, which I will come to a bit later, is that if you are claiming an old result by new means you can claim only the new means. If you are claiming a new result, provided you show one way of doing it, you can claim all ways of that result. What we claimed here is a new result, a new combination, as his Honour found at trial, and that finding has not been disturbed. So reliance on this passage could not have had any relation to this particular case. Then there is a reference to Biogen v Medeva which refers to technical contribution again which takes one off into the changes in the English legislation.

GUMMOW J: Well, that is on the 1977 Act, is it?

MR BANNON: That is right, yes. Then his Honour refers to:

Lockwood submits that there is no room for the application of principles in the circumstance of the present case because the words in the specification match the words of the claim, hence the claims are necessarily “fairly based” on the specification.

That is a slightly oversimplification, if I may so, of our submission. Our submission was that the teaching of the specification described an invention which was reflected in claim 1.

This is too narrow an approach to the question. The notion of “travels beyond” requires consideration of what is truly disclosed by the specification in terms of a “real and reasonably clear” disclosure.

This gets into the heart of what we submit is dangerous language in the way it is sought to be applied.

That this is so is recognised by the decision of the Full Court in Atlantis Corporation Pty Ltd v Schindler (supra) where claim 1 was couched in the same terms as the description of the invention in the specification. But the Court did not allow that coincidence of language “to disguise the fact” that the invention disclosed in the body of the specification “is truly” one which was subject to limitations as to use. The claims, however, were to pure apparatus claims, not subject to any limitations as to use. The claims therefore travelled beyond, and were found to be not to be fairly based –

We have set out in our written submissions our response to Atlantis v Schindler. I was not going to take the Court to it, but if I can just say this briefly. In that case one had a specification which at the beginning and the end of the body of the specification it said, in effect, this invention is all about a mechanism for drainage purposes. Buried in between those two passages was a statement which said the invention concerns an apparatus not limited – it did not say not limited, but it did not add the limitation to drainage purposes. The claim reflected that language without the limitation. What all members of the Court said, reading this specification as a whole, what the inventor is saying is that this is an invention related to drainage. We do not rely on those stray words in the body as suggesting that the invention relates to something wider. So in that sense the Court there properly applied the time honoured test. You look at the specification. What is the real disclosure in the sense – what is the real message being conveyed? It does not have any relation to this case where the only message conveyed here was that the invention was as described in claim 1.

Then in paragraph 235:

The structure of the specification in the present case refers to a known problem in relation to typical latch assemblies: key operation of the latch from the outside of the door does not release the inner handle, and as a result people may be locked in. The technical contribution to the art, to borrow the language of Laddie J . . . is the disclosure that the solution to the problem is the use of the outside lock to release the lock on the inside handle, coupled with the disclosure of one way of doing that in terms of the preferred embodiment.

236 Doric submits that the technical contribution made by the patentee, other than the preferred embodiment, is obvious, but I have declined to uphold that submission because of the evidentiary factors to which I have earlier referred.

Just pausing there, his Honour in effect is saying there, “Look, I have rejected the argument that there is no technical contribution in the proposition of identifying the idea coupled with one way of doing it is obvious”. That was a valid claim. Somehow or other I say there is a gap in the – his Honour does not explain how you go from there to say that there is no fair basis. That is, we say, an example of eliding questions of obviousness with questions of fair basis. He says:

However, the fair basis objection overlaps with other grounds of invalidity, including obviousness . . . I agree with Mr Catterns’ submissions that the specification does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment.

There is just a gap between that conclusion and the previous two sentences which is not explained.

If I can just add, having referred to the proper test and having done the earlier part of the judgment where his Honour has made it perfectly clear, we submit, that the only way to construe this patent is it teaching the broad form of the invention, his Honour, oddly enough, reverts to that topic in a later part on other areas. At 153, paragraph 241, his Honour says – this is dealing with another version of fair basis which is no longer pressed:

The passages from the specification set out above do not demonstrate any disconformity . . . The fact that the lock release means may take any suitable form simply conveys that a person skilled in the art would have no difficulty –

I refer to that point. Then under the heading “Sufficiency”, over the page at 155 in the last sentence of paragraph 247:

In any event, the specification makes it clear, in the case of claims 1‑6, that feature (vi) is the particular improvement to be found in the combination.
If I could then turn to the Full Court judgments, firstly the judgment of Justice Wilcox, it commences at 180 of the appeal book. At 181, paragraph 9, his Honour refers to the “perceived problem” in language which has previously been referred to, then over the top of the next page, 182, his Honour says:

The Patent purported to overcome this problem by proposing that the external operation of the key, or other “actuator”, should simultaneously unlock the internal handle.

So that is the confirmation of Justice Hely’s finding that that is the message being conveyed by the patent and, as I say, it is the only message available. Then his Honour at page 185 ‑ ‑ ‑

GUMMOW J: Paragraph?

MR BANNON: Paragraph 26. His Honour says:

In order to discuss counsel’s submissions in relation to that finding –

this is in relation to the fair basis –

it is necessary to return to the terms of the Patent specification. At paras 9 and 10 above, I set out statements in the specification describing the perceived problem and the perceived solution to it.

So again he is confirming his view as to what the patent says is the solution and sets out the five elements. At the top of the next page, again confirming the construction of the body, paragraph 27:

As appears from the extract of the specifications set out in para 10 above, the “present invention” would add a sixth element –

Then at paragraph 28, line 1, the lock release means is described and there is the part to which I took your Honours. Then paragraph 29 refers to embodiments. At page 188, paragraph 35, his Honour referred to the fact that:

counsel for Lockwood confirmed that the alleged inventive step was the addition of element (vi) to the five previously known elements; that is why claim 1 was drafted in such wide terms as to cover any lock release means –

Jumping over to page 195, at paragraph 55, this is just to confirm the point I was making earlier:

Doric does not press its case on obviousness against claims that fall within (b). It does press that case in respect of claims within (a).

The discussion on the point at hand, at appeal book page 201, paragraph 69 of the judgment, his Honour says:

As I have indicated, a common fundamental question affects the three issues –

this is under the heading, “Discussion about fair basis, insufficiency and obviousness” –

I have noted: what, exactly, was the invention the subject of the Patent? It is impossible to determine whether a complete specification fully describes, and ends with a claim or claims defining, the invention without forming a clear view about the nature of the invention.

Now, one would have expected at that point for his Honour to look at the body of the specification and see what the specification was asserting was the nature of the invention. His Honour does not do that. His Honour embarks on an inquiry down the path of obviousness, and this involves error. His Honour says:

This is also true in relation to obviousness.

Then his Honour refers to section 18(1), section 7(2) – that is the meaning of “inventive step”:

Once again, it is of critical importance accurately to identify the invention.

In paragraph 70, his Honour refers to what he said was:

a measure of inconsistency in Lockwood’s case about what was the invention. For the purposes of its fair basis and sufficiency arguments, it was necessary for Lockwood to assert that the invention was a broadly described integer . . . This “integer” may fairly be described as a concept: the concept of the external key (or other actuator) also releasing the internal locking mechanism. Claim 1 adopted that concept, in describing a “lock release means” –

His Honour says:

However, if the invention consisted only of the addition of that broadly described element to the previously‑known elements, then the issue of obviousness had to be determined by reference to the question whether it would be obvious to an ordinary, skilled but non‑inventive, worker that the problem identified by the specification (that the inside handle lock was not operable from the outside of the door) could be resolved by making it operable from outside the door. Obviousness would not turn on the question whether the hypothetical worker would have realised how to achieve that result. No doubt for that reason, Lockwood’s case on obviousness dealt not with the question whether the concept was obvious but whether it was obvious to adopt the particular solution ‑ ‑ ‑

GUMMOW J: The whole problem really is this heading at the top of 69.

MR BANNON: Yes.

GUMMOW J: “Discussion about fair basis, insufficiency and obviousness” - it is like talking about apples and oranges.

MR BANNON: Yes. And the reading of what his Honour says about it, with respect, confirms the illusion which goes on. The comment in paragraph 70 - it is not a question of examining the way we ran the obviousness case. His Honour Justice Hely had found that claim 1 in its broad form was inventive, that is, the conception that that was a solution was inventive. Then his Honour says in paragraph 71 that the evidence, after referring to some terms of specification:

demonstrates that this was widely perceived, in the trade, to be a problem in relation to double-lock latch assemblies.

He describes the invention in broad terms. We submit there may be some debate as to his Honour’s interpretation of the evidence on the obviousness issue, but leaving that aside, at paragraph 72, his Honour says:

During the hearing of the appeal, counsel for Lockwood took the unequivocal position that the inventive step was the addition of the widely-expressed sixth integer. However, it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. That tells the addressee nothing.

The first sentence seems to talk about obviousness, which his Honour goes on to make clear, he said he is not deciding. Then the second statement “That tells the addressee nothing” is not a statement which is apposite to be understood as leading anywhere in the area of obviousness.

McHUGH J: It comes to this, does it not, that in determining the issue of fair basis the court took into account the state of the prior art and the extent to which the problem addressed by the patentee had been recognised previously. That is what it comes to, does it not?

MR BANNON: Which is impermissible?

McHUGH J: Yes.

MR BANNON: Yes, that is right.

GUMMOW J: But these questions, I am not sure how it works now, but these questions under the 1952 Act of drafting, to put it that way, they would be dealt with in the office, would they not?

MR BANNON: Yes.

GUMMOW J: Obviousness could not be.

MR BANNON: No, and this is one of the great problems with this decision, that if it is right, then the task of the members of the office to try and work out whether section 40 has been complied with - and it feeds down into provisionals, et cetera, and into the amendments sphere as well - becomes virtually impossible because they have to tackle questions of the state of the art, whereas your Honour points out at the moment, they do not. They would have to look at things like merit and technical contribution and the like. It is a minefield, with respect. We would submit it is just not a logical step to be taken. The next sentence:

I agree with Hely J that the specification “does not contain a real and reasonably clear disclosure –

et cetera. Then his Honour says at 73:

If, contrary to my opinion, the addition of the widely‑expressed sixth integer was thought to be an inventive step -

which seems to suggest, as your Honour Justice McHugh just indicated that the fair basis decision seems to be based on a view on inventive step, then there would be a:

difficulty in relation to obviousness –

Again, that is impermissible, but then oddly enough, with respect, in paragraph 76, his Honour makes it clear that he is not forming a view about obviousness. Then in relation to Justice Branson’s decision ‑ ‑ ‑

GUMMOW J: So is the position that obviousness is still a live question and would be still a live question in the Full Court?

MR BANNON: Yes, in relation to, as I said, some of the claims.

HEYDON J: Is that because of the further amended notice of contention of the respondent?

MR BANNON: Yes.

GUMMOW J: Where do we see that?

HEYDON J: Page 172, line 11.

MR BANNON: Yes, that is during course of the appeal or at the beginning of the appeal my learned friend, as recorded in that passage in Justice Wilcox’s judgment, indicated that that notice of contention was not being pressed in relation to claim 7 and dependent claims on claim 7.

McHUGH J: Is not the approach of Justice Wilcox embodied in the second and third sentences in paragraph 72, where he says:

However, it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. That tells the addressee nothing. I agree with Hely J that the specification “does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment” –

So he jumps from one to the other.

MR BANNON: That is right, and there is just not a logical link between those two statements. We have some issues about his Honour’s reasoning and will have with whoever decides the obviousness issue, that that reasoning suggests that that was the problem. We rely on what Justice Hely said was understood to be the problem. In other words, without backtracking too much, that it was not a recognised problem that the solution was to open it from the outside, and the problem was working out how to do it. That was not the issue.

Then Justice Branson’s decision commences at page 205. Her Honour at paragraph 84 of her judgment at 206 confirms what we say is the only construction of the specification, namely, what it is teaching you is that the invention is characterised by the addition of the sixth integer. So she is with us on that view of construction, but then she uses that against us by the way she treats it in paragraph 86:

In my view, the invention as the appellant seeks to define it is merely an idea; it is not a “patentable invention” within the meaning of s 18(1) –

Well, that was not a ground relied upon by our learned friends.

It is probably not important whether the concept of an outside key which automatically releases the lock is said not to be a manner of manufacture within the meaning of s 6 of the Statute of Monopolies, or as the respondent contended, not to involve an inventive step, or as the primary judge found, too broad to provide a fair basis for the claims –

Well, with respect, it does matter, the grounds of revocation are important and are logically distinct and must be kept so, particularly when some of them are pleaded and some of them are not.

HEYDON J: This particular point that Justice Branson was making is not anything that was urged on her by the respondent, is it? Did the respondent argue for those conclusions?

MR BANNON: No.

HEYDON J: So it is slightly outside the pleadings, in effect.

MR BANNON: Yes. I do not think my friend – I will have to hear from him, but I do not recall. My friend certainly never suggested that her Honour or any member of the court should decide the matter on the basis of the manner of manufacture or principle.

GUMMOW J: It would have to have been in the particulars of objection, would it not?

MR BANNON: Yes, that is right.

GUMMOW J: A rather technical system, but it is designed to stop this sort of thing happening.

MR BANNON: Yes. We did, from time to time, as my friend would veer towards suggestions seeking to support the various claims, we would repeatedly say that there was no ground of manner of manufacture and there was no attempt to say that it was being relied upon.

GUMMOW J: Well, you take the number of claims and the number of grounds that are open for attack. The number of potential issues in a patent case could be a couple of hundred, technically.

MR BANNON: Yes, that is right.

GUMMOW J: So you need to be specific about what the framework is for the attack.

MR BANNON: Exactly. In paragraph 87, her Honour says:

the appellant, in my opinion, sought to patent an idea or a principle –

Not a ground relied upon. We put our submissions as to – it is obviously a matter for the Court – as to the fairness of going back to the same court in circumstances where at least one member here has expressed a view, it is an invalidity of patent on a ground not asserted. There may be an issue about that.

GLEESON CJ: Well, that may be a matter for the Federal Court.

MR BANNON: That may be so. Justice Merkel’s decision starts at page 208. Relevantly, at paragraph 95, page 212, his Honour refers to the “merely illustrative” statement ‑ ‑ ‑

GLEESON CJ: It is paragraph 102, is it not, where he states his point?

MR BANNON: Yes. Again, the problem there is an elision between the inventive step question, which arises in obviousness ‑ ‑ ‑

GUMMOW J: You have to go back to 100, do you not?

MR BANNON: Yes. Ultimately ‑ ‑ ‑

GUMMOW J: This word “merit”.

MR BANNON: Yes. I will come to Mullard at paragraph 99, but that part of Mullard which is first said – it says:

“He is not entitled to claim a monopoly more extensive than is necessary to protect that which he has himself said [is] his invention.”

That is consistent with the modern rule in relation to fair basing. That is all, ultimately, a reading of Mullard tells you. To the extent other language such as “merit” comes into it, that is to be understood as just merit in the sense of what the patentee has asserted is the merit or the extent of his invention. Then at paragraph 100, the language of “merit” infects – in error, we submit – the conclusion. The last sentence:

But [what] the invention really disclosed in the specification is the manner in which the lock release means has been achieved.

Now, his Honour is only really saying that on the basis that his Honour is forming some sort of vague view of what the inventive step is, as opposed to what the description of the invention is. That seems to be the basis on which he comes to the conclusion in paragraph 102:

and so does not use the patentee’s inventive steps disclosed in the specification –

Again, it is the elision of the grounds of obviousness and fair basing.

Could I then go to some authorities. The short submission which we would seek to extract from a review of the authorities is that they all consistently come down to this, that on the question of fair basis, you look at the body of the specification and ask what is the inventor asserting is the essence of his invention and then you look at the claims and ask do the claims go beyond what he has asserted to be his invention.

In order to make good that in some of these cases it is necessary to look a bit more closely at what the specification actually said, but accepting the potentially tiresome outcome of that exercise I will seek to do that as quickly as I can. The first case is Olin. We have given your Honours the High Court reference. Could I hand up a copy of the first instance judgments only because it sets out part of the specification which do not appear in the High Court’s judgment. This is the judgment of Justice Jacobs which is reported in 49 ALJR 135.

Just while that is coming, the invention in that case related to a process for the manufacture of plastic shotgun cartridge cases which were reusable and, bringing it down to its nub, there had been problems in the use of such plastic cartridge cases because they were not strong enough or they stretched too much and what the patent related to was a process of making the cartridge cases using compressive deformation as opposed to tensile deformation and, secondly, doing it at room temperature or lower temperatures.

If one looks at page 136 of Justice Jacobs judgment, his Honour sets out the claims. Claim 1 was the process claim and it is:

A process comprising the steps of; confining a preformed blank of a crystalline polyolefin material in its self-supporting crystalline state in a die cavity; closing said die cavity . . . applying sufficient pressure to the said blank with said punch to compressively deform into said space while in said state and in a temperature range below –

a certain level. Then, jumping to claim 10, which was the problem claim, in terms of fair basis, what he claims is a relatively – this is the product claim:

A relatively thin walled tubular structure . . . characterized by the fact that the wall of the structure has been formed in the solid state at an operative temperature below –

et cetera, but it is not characterised by the fact that it is formed in a compressive way and that was the problem which ultimately was alluded to. Another product claim starts at claim 14:

An ammunition cartridge case of predetermined gauge formed by compressively deforming a blank to a final size and shape at a temperature below –

and that product claim was held to be valid because it was within the stated form of invention.

Then as to the statement of the invention, if one turns to page 141 of this report, there was an issue about infringement which his Honour resolved. At paragraph D in the left-hand column:

This meaning also allows the words “compressively deform” in the claim to be given the meaning which they are given . . . Before the preferred embodiment or embodiments are given the invention is described. After setting out aspects of the invention in much the same language as that of the subsequent claims the specification states –

Just pausing there, what his Honour is saying there is that the language of the various claims, including claim 10, were set out in general terms. So in other words there are matching words, if you like, between claim 10. But then it is this section which starts at E:

“In accordance with this invention, articles of manufacture, such as shot shell bodies, are formed at least in part by compression –

Then it refers to temperature. This passage starts at E and goes from there down almost to the end of the next column. Everywhere the two elements of compression and temperature are emphasised. So, for example, the right‑hand column, about four lines down:

By compression forming according to this invention, shaping of an article by deformation can occur over a broad range of temperatures . . . By compressive deformation instead of stretching . . .
By compressive deformation instead of stretching, necking of the thermoplastic is avoided and very high tensile strength is obtained . . . Compression forming also allows the various parts of the finished article also to be made to different finished dimensions . . .

It will be appreciated that this invention is especially of advantage in making in one piece an article having at least two portions differing in shape and function –

So the point I am seeking to make here is that this specification, although there were some stray, if I can use that language, words which matched the claim 10, everywhere the message was the process and the product of the process had to have the two features of compressive deformation and at the right temperature in order to solve the problem and get the benefit.

Then at page 145, in dealing with claim 10 in the right‑hand column about point 7 of the page, his Honour says:

I return now to claims 10, 11, 12 and 13. These claims are each for a product however it may be formed. There is no requirement that any of them be formed by that process of compressive deformation which on my earlier findings is an integer of each of the other claims in the specification. All solutions to the problem of making such a product are claimed and this would include the solution adopted by the defendants of drawing the material through a die. Such a wide claim could only be sustained if the invention consisted of the discovery that such a product might possibly be made, that is to say, if the invention lay in the idea of such a product. Of course for the idea to be patentable the specification must disclose a way of making the product but if the idea of such a product was previously known it is not possible to obtain a patent for the idea because there is invented a process whereby the product can be made and the idea given practical effect.

Just pausing there, that is Shave v McKay, as the High Court said, that is Dunlop Rubber and that is patent law going back for a long, long time, namely, if it is a known result you are producing by a different means, you are limited to the means. If it is a new result, you have to show one way of producing it but you can claim all ways.

In this particular case, it was a known result, namely, a desired result to get a strong plastic shell case. That is why it is later said to be you can only have that means which you identify as producing that result. Then his Honour continues:

Let it be assumed that there was a previous patent or other publication which proposed the idea of such a product and then purported to describe a process whereby that product could be made. Then let it be assumed that the process so described was impracticable . . . The later inventor cannot say, “I have found a practicable process: therefore I claim a monopoly over such a product –

He can only, in effect, claim a monopoly via one means. Now, it says here:

It appears to me that this is what the applicants for the present patent did in advancing claim 10. The idea of an integral shell case formed by cold working suitable thermoplastic material so that additional strength was obtained in the part cold worked was not a novel idea in September 1961 . . .
I am also of the opinion that these claims were not fairly based on the specification and were too wide. The reasons which I have expressed in respect of lack of novelty are mainly apposite to this conclusion. There was not, after Core at least, a new principle or idea which could be patented as such, so that the inventor could claim all ways of carrying it into effect. To claim all ways is too wide a claim.

Yes, that is all I need in that case.

If I could then go to the Full Court decision. That is at 180 CLR 236. I will come back to Justice Barwick’s judgment, although it does start with a complaint about having to deal with patent cases at first instance which resulted in the situation you now have. That is the judgment which sets out the test which is relied upon. He was in the minority. If I can go to the majority first, firstly, the judgment of Justice Gibbs, as he then was. That judgment commences at 242 of the report, but the first part I want to refer to is at 250 of the report. At 250 his Honour is referring to claim 1 which is that process claim, the second paragraph:

The construction which I have attached to claim 1 does not render the claim liable to the objection that it is not fairly based on the specification. The specification revealed that articles such as shot shell bodies can be satisfactorily formed from plastic materials such as polyethylene and polypropylene in a solid crystalline state, by working below the crystalline melt point when the working is done by compression in the manner indicated in the claims. Claim 1 is not more extensive than the invention thus disclosed.

Now, that is a view formed by his Honour as to what the disclosure is in the specification in the sense of what is the message as to what is said to be the invention – what is said to be the invention, I emphasise. Then his Honour goes on to consider later on, on that same page, claim 10 and his Honour agrees with Justice Jacobs:

they lack novelty, are not fairly based and are too wide.

In that regard, his Honour says:

It is true that before the appellant’s invention it had not been possible to make a tubular structure . . . But the question is whether the claims extend beyond the subject of the invention. In my opinion the inventive step lay in the discovery of the manner of making the articles. The appellant was entitled to a monopoly in respect of an article which carried its invention into effect . . . but not in respect of an article which might possibly be made by a process entirely different . . . Claims 10-13 are not limited to products made in accordance with the processes invented by the appellant; the claims are framed in terms quite unrelated to the appellant’s inventive idea. The claims are accordingly not fairly based on the specification.

Now, in the light of his Honour’s view at the top of page 250 and in the light of the specification properly understood by reference to Justice Jacobs’ judgment, the proper interpretation of that is that you look at the body of the specification and the message you get is the invention consists of both articles and process which consist of the two features, compressive deformation plus temperature. Claim 1 is okay, because it has those two features; claim 10 is not, because it does not have one of those features, it leaves out compressive deformation.

Justice Gibbs does not provide any support for any wider principle than what we say is the appropriate approach. Similarly, Justices Stephen and Mason, in their joint judgment – it commences at page 252 and the first relevant part for present purposes is at page 259. The first complete paragraph refers to the section 40 complaint. Then at the top of page 260, after referring to claim 10 their Honours say:

The claim is for the product whether produced by the process described in various ways in claims 1‑9 or otherwise. The product is described and limited by reference to certain physical characteristics. The description omits the details of the process which is the essence of the appellant’s inventive idea. Instead, it refers to the tensile strength of the material in the wall at a point remote from the base which is said to be at least twice the tensile strength of the material in the base.

Again, we submit that is properly understood as saying, “The inventive idea as disclosed in the specification”. Similarly, at page 263 in the first complete paragraph, their Honours say:

The next objection is that the claims were not fairly based on the specification and were too wide –

They refer to section 40(2), and then there is a statement:

But it has been repeatedly asserted that the claim must be “referable to the invention disclosed and cannot extend to cases where the result represents or may represent a different invention”.

Again, that is consistent with what we say is the correct approach. Continuing on, after the reference to Mullard, their Honours say:

The consideration which the appellant gave for the monopoly which it sought was the disclosure that a serviceable one‑piece plastic shot shell case having uniform and increased strength in the side walls could be made by the process which the specification disclosed.

Again, completely orthodox. The disclosure, as interpreted properly, had the two features:

His monopoly must be limited by reference to that disclosure. It cannot extend to the production of shell cases –

No elision of inventive step. Then at page 264:

There is no doubt that the appellant’s inventive idea extended to the production of a shell case having the distinctive characteristics . . . The problem was to produce such an article, it being recognized generally that such an article was a necessary or desirable development. The invention supplied a process for the production of the article and at the relevant time it was the only process by which the article could be produced.
Is this enough to justify the appellant obtaining a monopoly for the production of the article whether it be produced by its process or not? We do not think it is. It would enable the appellant to assert its monopoly . . . thereby giving it a reward greater than the consideration which it has provided in the form of the disclosure which it has made.

Same point. There is then another paragraph:

This is not a case in which the inventor has conceived of and brought into existence an entirely new or revolutionary product –

Now, that, I do not think really bears on the question. To the extent their Honours are saying that you have to have an electric light globe before you can have a result claim, in effect, then we submit that is in error. That part of the paragraph was not part of the process of reasoning, and it is inconsistent with long authority.

There is a judgment of Justice Heerey which refers to that passage which is Genetics Institute v Kirin‑Amgen, 41 IPR 325 - I will hand up a copy to your Honours. Perhaps I will make that available a bit later. I was not going to refer to it, but it just refers to that and his Honour’s view was at that passage there and was not part of the reasoning process and on the state of authority, if it has to be said, is not right.

Finally, on the Full Court judgment, to come back to Sir Garfield Barwick’s judgment, his Honour, after stating the test accepted – the judgment commences at page 238 - the test which has been picked up in a number of cases is at 240 and at 241 his Honour picks out part of the specification which was alluded to by Justice Jacobs which was the part which preceded the general description of the invention which emphasises compressive defamation with the words, “It is said that” and then he sets out:

“according to a further aspect of the invention, there is provided a relatively thin-

et cetera. Now, that is the wording of claim 10. Then his Honour says:

It is clear enough from the specification that the tensile strength described in the claim was achieved by –

compressive defamation. So in other words, that is a clearer statement that his Honour was interpreting those general words as in effectively not saying anything more than that product was achieved by the two key features of the invention.

Now, that should have, if I may respectfully submit, led his Honour to the conclusion that it was not fairly based consistently with his Honour’s own stated test and inconsistently with the majority, but his Honour, standing in the minority, went on to say that, in fact, there was a fair basis, but that is just a different view which does not need to be further explored. Could I then come to the decision of Mullard v Philco 53 RPC 323 ‑ ‑ ‑

HAYNE J: To demonstrate what?

MR BANNON: Again, to demonstrate that Mullard v Philco stands for no more than the proposition that you interpret the body of the specification to see what the message is being conveyed as to what is the essence of the invention and if you have claims which drop out elements of those inventions, that essence, then it is not fairly based. It does not stand for any wider proposition, notwithstanding its use of the word “merit”, a wider licence to go and bring into play questions of obviousness or inventive step on the fair basis issue.

Perhaps I can make my submission on this without going through the reading of various passages but just referring your Honours to the parts which we say support this.

GUMMOW J: You have to start at 339, do you not, line 15? The grounds were novelty and obviousness.

MR BANNON: Yes.

GUMMOW J: There was no fair basing ground under the 1932 Act.

MR BANNON: Yes. That partly explains some of the language which has been used.

GUMMOW J: Yes.

MR BANNON: And that is a fundamental problem relying on Mullard. I think that is what the Full Court said in CCOM v Jiejing. But to the extent, in any event, that one seeks to get out of it something more, we say it is not there, and perhaps I will just give these references. At 340, starting at line 10, Lord Macmillan’s speech, which is the one most referred to, gives a clear exposition of the background to the material the subject of the patent. That continues over to the next page.

Then at page 342, commencing at line 10 down to line 30, his Lordship identifies that part of the specification that makes it clear is, “What are the key features of the invention?” and that in very short shrift it is involved putting in an additional auxiliary grid in a discharge tube in a certain sequence, and that is what his Lordship says on that page. That continues down to the bottom of that page. Again, this is a case – towards the foot of the page, there are some words which match a claim which later appears which does not include those key features. But over the page, 343, his Lordship refers to, in particular at lines 10 to 15, words which appear after those general words which make it clear that the key to the invention involves those three features.

His Lordship then refers to the claim 1 and claim 2. Claim 1 was okay because it had the relevant features. Claim 2 did not have the relevant features. The problem as posed by his Lordship at the bottom of 344, about line 45 his Lordship says:

Claim 1 . . . corresponds with what he has told us that he has invented.

So that is okay. Then claim 2 has a problem because it is inconsistent with what he told us he invented. That is clearly stated, we submit, on 345 in a passage between lines 30 and 45. In particular I draw attention to line 35:

The Patentee has told us quite definitely that his invention deals with the case of –

and then, without going into it, a certain sequence. The point being made is claim 2, which did not have that sequence, was not fairly based.

To similar effect at page 346, lines 20 to 25 and lines 40 to 50, again at 46 what:

has himself said is his invention -

and at 347, that is the concluding paragraph which is referred to by Justice Merkel, to the extent one gets out of that some basis for eliding inventive step with fair basis it is completely explicable by the different grounds then available and that may explain the use of the word “merit”, but on a fair reading of the whole of the case, we submit, properly understood at the end of the day the court fundamentally interpreted the specification, interpreted what the message of the specification was and said does it travel outside that and that is what this case does.

GUMMOW J: There is an analysis of Mullard, which I think may be consistent with what you have been saying, in Terrell in the 9^th edition which was written by Shelley himself, the 9^th edition 1951, at pages 90 through to page 93, which last appeared, as far as I can work out, in the 14^th edition which is the last, I think, English edition dealing with this part of the patent law. That is 1994 the 14^th edition, paragraph 5.106.

MR BANNON: Thank you, your Honour. Consistent with that there is, I think, a Court of Appeal decision in 1982, Poseidon Industri v Cerosa [1982] FSR 209 which makes a similar point and if I can just refer your Honours to the relevant part of it. It appears at pages 222 to 223. It does not really analyse in detail, but 222 about halfway down the page:

As regards the ground of objection that claim 1 is not fairly based –

after referring to Mullard he said:

It is, I think, valuable to keep this simple conception before one’s mind. If the inventor has said that his invention comprises a number of elements or integers in a particular relationship or used in a particular way, a claim for an article embodying all those elements or integers in that relationship or used in that way must be fairly based on the disclosure of the invention.

In other words, it is fairly based, it must be, in the sense that there is no other conclusion available.

If an invention comprises six necessary integers, a claim for an article comprising only five of those integers will not be fairly based –

Well, with respect, we agree and that may well have referred to the Terrell analysis that we picked up similarly to – and it goes on to refer to what is described as a “consistory clause” as being the basis for ‑ ‑ ‑

GUMMOW J: What is this common law rule they talk about?

MR BANNON: I am not sure, your Honour. I do not think there was one, unless you tease it out of the general objection.

GUMMOW J: Yes.

MR BANNON: I appreciate the time. The next case, again if I may, is Palmer v Dunlop (1937) 59 CLR 30, if I can deal with it in the same shorthand way. The first thing to be said about Palmer v Dunlop is that again it is an old Act. It is a pre‑1952 Act patent, so again it is redolent of the lack of separation of grounds which is relevant to the current Act. In a very short compass, it was a machine for producing, by a telescoping action, a single piece vulcanised battery case. The report makes it clear that they were done before. This was a new way of doing it.

At page 32, it sets out the specification. The first part of that specification sets out what the invention is, and the invention as described there includes a feature of the telescoping action. The problem which arose in the case was that claim 1 did not require a telescoping action, but there was no broader statement of the invention other than one which included a telescoping action. The broader claim appears on page 34, claim 1, where it refers simply to forcing relative movement – this is about point 3 of the way down on page 34. The case is complicated by this feature as well: the High Court was evenly divided on the result.

Justice Nicholas’s judgment, which is referred to at page 38, he found the patent was bad for want of inventiveness and because it did not disclose a true combination. The Chief Justice and Sir Edward McTiernan found that it was valid on all bases. Justice Dixon and Justice Rich found it was invalid for width of claim; not a ground on which Justice Nicholas had decided it. Because it was evenly divided, the decision was affirmed. Quite frankly, I am not sure whether that means it was affirmed on the grounds referred to by Justice Nicholas or by Justices Rich and Dixon. I suspect it is the former.

That complicates the authority, but the finding of Justice Nicholas appears at page 47 and that is limited to no inventive step, no combination, that is, no inter‑relation. The Chief Justice’s judgment starts at page 54. At the top of page 55, his Honour makes it clear that this was a case of producing an old result by a new method, the old method being manually wrapping sheets of rubber. This was a single system. Then his Honour’s conclusion in relation to the fair basing – well, as I say, it is not a fair basing issue, but, I suppose, the width of claim issue – is at the top of page 63. His Honour says:

I read the claim as a claim to a general method of manufacture which is new, one method of carrying it into effect being described by the inventor –

One would have thought there was no problem with that; Justice McTiernan agreed.

Justice Rich’s decision starts at page 64 and reference was made by Justice Hely to this judgment. A key concern of Justice Rich’s decision is the question of whether or not there was a combination, whether there was a working relationship, whether it had validity in that respect. That appears from his Honour’s reference to Lord Tomlin’s decision in British Celanese, which is all about combination. Then he refers to claim 1, and towards the end of that page he says:

But this does not throw much light on what is meant by the vague words “associated therewith.” Each of the integers referred to in the claim is old and in one form or another is represented in the moulding arts. The claim can be sustained only as a combination producing a new result.

Now, that is in the context of a real issue in that case as to whether there was a true combination. In other words, you had to know what the precise elements of the integers were to determine whether or not there was a necessary inter‑relationship. One of the problems with claim 1, as identified by both Justice Rich and Sir Owen Dixon, was that the words “associated with” had the potential to include inter‑relations where you could not reach the conclusion that there was the necessary inter‑related working.

That is a factor which infects about what is said about width of claim, but it is also demonstrative of the problem of relying on a judgment in which the separation of the grounds was not required. So there is necessarily an impingement on width of claim issues with invention issues. That is the context in which his Honour makes the comment, it is very difficult to cover that validly more than the particular aggregation, et cetera. Then Justice Dixon’s decision, as he then was, starts at page 57 ‑ ‑ ‑

GUMMOW J: The relevant passages start at 76, do they not? “The chief difficulty”, it is the middle of 76.

MR BANNON: Yes. His Honour refers to Mullard, which again has the problem which referred to an old claim. But if one looks at 77, the concern which his Honour had, the paragraph commencing “The first claim”, is that the words “associated with” are such that you cannot work out whether there is going to be the necessary relationship to produce a true patentable combination. That is his real concern.

GUMMOW J: Is it ambiguity?

MR BANNON: Probably.

GUMMOW J: What would now be called ambiguity.

MR BANNON: Yes, or, I suppose, the other way you could do it is not a patentable invention in the sense that it would cover – well, it is so broad that it would cover claimed inventions which were not true combinations. That his Honour was terribly concerned by this issue of combination appears from earlier parts of the judgment, in particular page 75. Just going back to one other point, page 67 of his Honour’s judgment, at the very foot, his Honour says:

Then the claims are compared with the disclosure in the specification and it is said that they attempt, not without ambiguity, to cover a field much wider than the invention specified.

I emphasise the word “specified”. So, again, to the extent one wants to rely on Dunlop one has a case where the body of the specification only specified one means, which included telescoping ‑ ‑ ‑

GUMMOW J: I am sorry, where were you reading from, Mr Bannon?

MR BANNON: At the bottom of page 67.

GUMMOW J: Thank you.

MR BANNON: His Honour’s statement:

Then the claims are compared with the disclosure in the specification and it is said that they attempt, not without ambiguity, to cover a field much wider than the invention specified.

GUMMOW J: Yes.

MR BANNON: But to the extent that one wants to try and mould Dunlop Rubber into a case of fair basing under the modern rule, one can conclude quite readily that it was a case where the specification identified only one means of the result, which was telescoping. It did not assert any wider means, yet claim 1 was not limited to telescoping. So in that sense, applying our rule, one could readily reach the result.

Just apropos Justice Rich’s comment about claiming all ways of reaching result. In Shave v McKay 52 CLR 701 there is a short statement to that effect. This was the case about the invention for the stunt-jump plough. The short statement appears at page 709. At the top of the page, after referring to Submarine Signal, that decision:

When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved.

That is what we say we did. That is what Justice Hely has found we did, and then there is a difficulty about the particular case. The case went off on a different issue that the inventor had limited himself to a particular form of stump-jump plough. The Court said they could have claimed something wider if they had framed the specification better or more widely.

Then CCOM v Jiejing (1994) 51 FCR 260, there is a very useful and, with respect, accurate discussion of the history of fair basing and the history discussion commences before page 279, but for relevant purposes, at page 279B there is a reference to the question of:

the relationship between the claims and the body of the complete specification –

which is this case. There is a reference to Mullard and Dunlop Rubber, and at point F this warning is made:

Of course, in Mullard the House of Lords had been concerned to find a rationale for disconformity between the body and claims in a complete specification . . . The rationale was found in the concept of the disclosure as the consideration . . . But, in applying Mullard to what since 1952 are express statutory provisions, some caution is needed lest the history swamp the new text. Hence the observation –

Sir Garfield Barwick in Olin. There is a statement of some general tests over on page 280 which have come in and out of favour, it is fair to say. But applying those three general rules of Justice Lloyd‑Jacob from Mond Nickel, we pass each of those tests with flying colours.

At page 281A there is a reference to the fact that the fair basis does not involve an issue of fairness in the general sense, and has referred to a decision of Lord Justice Buckley that made that clear. And then at pages 282 and 283 is the application of the particular principle to the particular case. The effect of it was to say in that particular case, there was not a real and reasonably clear disclosure to justify the claim because it was an oblique or passing reference inconsistent with the essential message of the provisional specification.

Can I, without going to it, simply refer your Honours to your Honour Justice Gummow’s decision in Rehm v Websters. That is a case in which, we submit with respect, your Honour applied the correct test that is in 11 IPR 289. Interestingly enough, if one reads that case, almost all the arguments put against us here are the same arguments which were rejected there. In effect, there was an attempt to confine the claims on fair basing to the preferred embodiment, which your Honour rejected, relying upon what your Honour described as a consistory clause which trapped the words of claim 1.

As I said, I will not go to it. Can I give your Honours this reference. There appears in the report of the judgment to be a misprint on page 304 of the judgment. There is a paragraph at the foot of the page which commences:

I have earlier in this judgment set out the provisions of much of the body of the specification, including the consistory clause. That clause is reflected in claim 7. However, in my judgment, on its proper construction, claim 1 does not claim a viewing restriction means.

The sentence “That clause is reflected in claim 7”, we would submit, when one looks at it and the earlier part of the judgment, it actually should be claim 1, “The consistory clause reflected claim 1”. That appears from the bottom of page 292. Another example, similar to Rehm, which I can hand up, is the decision of the Full Federal Court in Gambro v Fresenius 49 IPR 321, where a consistory clause was relied upon as providing the relevant fair basis for the claim. Again, without going to it, the particular reference which makes it clear appears at – it is the discussion in relation to claim 88, pages 328 to 329.

In summary, what we say is that the test of Sir Garfield Barwick, accepted by this Court, consistently applied by the Federal Court – apart from this case – involves a comparison between what is the message of the invention in the body of the specification. Yes, there are cases in which loose words or stray words which are inconsistent with the message of the invention will be disregarded, but that is all part of construing the specification as a whole. That is not an outcome which is available here. There is only one clear message from the specification, and that is that the invention is characterised by the features of claim 1.

There is no basis for asserting it is not fully described, having regard to the outcome of the other objections. It is a fully described inventive invention, which is novel. What the Full Court has done is to introduce elements to the test which invoke requirements of fairness or merit or undue reward, contrary to Sir Garfield Barwick’s injunction, and elides questions of inventiveness and obviousness for those reasons.

GUMMOW J: What do you say about that statement attributed to Blanco White?

MR BANNON: In our written submissions we have said that it actually supports us. That is our written submissions in paragraph ‑ ‑ ‑

GUMMOW J: It was that on which Justice Hely seems to have relied in that pivotal passage.

MR BANNON: Yes, that is right. I will just find it. It is paragraph 61 of our submissions. What we emphasise is that:

This is a matter arising essentially on the contents of the complete specification. Subject to that, the objection would appear to include the old objection that “the claim claims more than what the patentee invented if he invented anything.” The modern rule thus becomes: the inventor is not entitled to claim a monopoly more extensive than is necessary to protect that which he has himself (in his specification) said is his invention.

We rely on that.

GUMMOW J: Thank you.

MR BANNON: We have given a reference to Justice Williams’ decision in Rose Holdings v Carlton Shuttlecocks which again I do not need to go to, but his Honour there makes it very clear that in a specification you set out your assertion of what the invention is and that is to be tested. You can have something which is fairly based, sufficiently described but hopelessly invalid because it is not novel or obviousness. I think there is only one ‑ ‑ ‑

HEYDON J: Mr Bannon, early on you said that the respondent had alleged that the invention had not been fully described but you said that attack failed. That failure is recorded, is it, in paragraph 262 of Justice Hely’s judgment on page 158?

MR BANNON: Yes.

HEYDON J: And is the attack maintained in the notice of contention in the Full Court?

MR BANNON: Yes, but not resolved.

HEYDON J: So if you succeed here, that would be something for later consideration.

MR BANNON: Yes, that is right. I should add this. The attack is a very narrow attack on sufficiency. It is not a general allegation to say that there is not a full description of the invention. The complaint is based on the decision of Justice Kitto in Sami Svendsen. It is – and I know I will do it a disservice. No doubt it is a product of the fact I have never completely understood it, which is no doubt my fault, but that is to say that we have not sufficiently identified in the specification or the patent what is the advance in the art. It is 154 to 155 or paragraphs 243 and following of Justice Hely’s judgment which sets out the argument. At paragraph 246:

In Mr Catterns’ submission there are two types of insufficiency. The first is failure to enable an addressee to make something within each of the claims. That is not alleged here. The preferred embodiment comes within each claim and is fully described. The second is the type of insufficiency established by Sami S Svendsen –

Then paragraph 247 sets it out.

GUMMOW J: Yes.

MR BANNON: But the short point is that what would ordinarily be understood by sufficiency, by full description, will never be an issue because it has never been raised. Now, if the Sami Svendsen sufficiency argument is a real one, then that is still a live one, but in substance it does not affect the submissions I was making earlier, we would submit.

GUMMOW J: I thought we had said something about Sami Svendsen.

MR BANNON: In Kimberly-Clark, your Honour, the Court referred to it as supporting the view that you look at the whole specification in working out sufficiency, but it did not come up more widely.

GLEESON CJ: Yes, thank you Mr Bannon. Yes Mr Catterns.

MR CATTERNS: May it please the Court, your Honours, we fall apart with our learned friends on a pure question of statutory construction, or at least we begin that way. Our friends’ submissions jettison both halves of the statutory question. The statutory question is, are these claims fairly based on the matter described in the specification.

Now, our friends will throw away the question of fair, or fairly based, which is used in many areas of law, your Honours, to give the person answering the question a qualitative job as a matter of substance. Our friends throw away the idea of fair as denoting or connoting a substantive, qualitative comparison and say that the requirement of fair basis is met by mere, matching words.

Now, in a very closely related context in the House of Lords, Lord Hoffmann said, and I will take your Honours to it, that sort of approach is mechanistic and impoverished. We would, with great respect, adopt that. As to whether fair basis is still alive in the UK it is not sub nom fair basis but as Lord Hoffmann held in the Biogen v Medeva Case, the principle is ‑ ‑ ‑

GUMMOW J: Well, what words was he construing in the ‑ ‑ ‑

MR CATTERNS: Your Honour, it relates to the claim must be supported by the matter described, but I will come to that in the second half of our test, your Honour, but his Lordship said the principle of fair basis is still to be found in that in its full vigour. So, to put it shortly, your Honours, the House of Lords found it necessary to reinvent fair basis, notwithstanding the change of language in the UK Act because this concept, a substantive requirement that you give a proper description to support the full width of your claims has always been fundamental to patent law, whether we call it consideration or not. We grant you a statutory monopoly which would otherwise be contrary to public policy in consideration for the full description, which I will come to in a second.

His Honour Justice Gummow asked, what is the common law principle? The common law principle is set out in the CCOM Case, the common law rule. The rule was – and the patent was able to be repealed under the writ of – I will try it only once, your Honours – scire facias. The rule was that the claims must not be wider than “warranted” by the disclosure. So, your Honours, the first error our friends make is not to read from “fair” and from the history, both statutory and judicial, a requirement that there be a matter of substance.

Your Honours, the second is that the section says, “fairly based on the matter described.” Our learned friends rewrite the section and say, “fairly based on the message” or “fairly based on the assertions”. What section 40(3) refers to is “the matter described in the specification”. Your Honours, that description – often called “disclosure” interchangeably, but it is a little more than just disclosure – has been the requirement, as we have shown in our written submissions, since 1719, where there was a proviso in patents that one had to describe and ascertain the invention and the manner of working it and various formulations of words of that type.

Now, your Honours, a mere assertion that my invention is – and this is what our friends go so far as to say – “My invention is as described in claim 1”, they say that is sufficient to provide fair basis. Well, that means that this requirement, if your Honours would uphold that submission – I do not mean to argue this in terrorem – the statutory requirement of section 40(3) could be satisfied in every patent by an assertion of that kind. And the assertions in the patent that we have here, your Honours, are mere assertions of that kind. The high point of it is, if your Honours would not mind going to it ‑ ‑ ‑

GUMMOW J: Now, what do you say “fair” means? You give it some ‑ ‑ ‑

MR CATTERNS: It means something – it requires a qualitative comparison ‑ ‑ ‑

GUMMOW J: Between what?

MR CATTERNS: ‑ ‑ ‑ between the claim and the specification. Your Honour, we certainly do not say one goes outside the specification.

GUMMOW J: What is the qualitative – what provides the quality?

MR CATTERNS: The description of the invention in the specification, your Honour, and it may be other matter in the specification.

GUMMOW J: I do not understand that.

MR CATTERNS: Your Honour, the idea has always been, including at common law, that you give a disclosure and you give a description and it is not warranted to claim a broader invention than the one you describe. So, for example, in the Palmer Case where what was described – the way of getting the rubber battery box out of the mould was that they had four walls and a bottom which fell away, or were peeled away, whereas the infringer had walls that were actually dragged down when the ram pulled the mould down. So it was held there that the claim was too broad because it claimed other ways of achieving that result.

Your Honours, it is a matter of looking as a matter of substance and see what does this inventor give us in exchange for the statutory monopoly. They give us, in truth, the two assertions our friends referred to, which I will come to, and a particular ‑ ‑ ‑

GUMMOW J: Well, they gave something you thought was worth copying.

MR CATTERNS: The idea, your Honour?

GUMMOW J: Yes.

MR CATTERNS: That is what his Honour held. His Honour held – and I will take your Honours to it ‑ ‑ ‑

GUMMOW J: That was not obvious and was worth copying ‑ ‑ ‑

MR CATTERNS: With respect, your Honour is going outside the specification.

GUMMOW J: Quite.

MR CATTERNS: It was not new. If we are allowed to do that, your Honour, it was not new. Lockwood themselves sold products within claim 1. I wish I could go there.

GUMMOW J: All I am saying to you is that all the rather emotive matters you are talking about can be dealt with in these other grounds.

MR CATTERNS: No, your Honour, with respect. For example, your Honour – and this is said in many of the cases, including Morse’s Case but including Biogen v Medeva, Supreme Court of the US and the House of Lords, and by Palmer and in Olin. Your Honours, may I just go to our friend’s assertion and then illustrate why it is not ‑ ‑ ‑

GUMMOW J: I still do not understand what you are saying is unfair and what is meant by “based” and you will not answer it by talking generally about what happened with the writ of scire facias before there were separate claims.

MR CATTERNS: Yes, your Honour, and then there were separate claims from 1883 to 1949. But, your Honours, this is what is unfair. If your Honours would go to page 6 of the appeal book, page 4 of the specification, this is our friend’s message or our friend’s assertion. There is are a number of them, your Honours, a little earlier, but line 26:

It is a feature of the assembly 1 that it includes lock release means 17 which responds to operation of the lock 10 so as to automatically deactivate the locking means 13.

Then this is the assertion or the message:

The release means may take any suitable form, and one particular form will be hereinafter described.

If your Honours would not mind going to page 18, the bottom figure has the lock release means 17 which may take any suitable forms. Your Honours, it is an empty square box. Now, your Honours, in the film Mission Impossible the actor Tom Cruise is trying to get inside a building which has got something valuable – I forget what it is ‑ ‑ ‑

HAYNE J: Good luck, Mr Catterns, good luck.

MR CATTERNS: He wears, your Honour, an artificial iris so that when he comes up to the biosecurity point on the lock on the door the camera looks at his eye, it matches whoever the authorised person is and he is let in the door. Let us assume for the moment that it undoes the internal deadlock. Now, your Honours, that will be covered by our learned friend’s claim and the principle is that you cannot draw a claim so wide that it will cover all possible lock release means now known or to be invented.

In answering your Honour Justice Gummow’s question a little more quickly, that is why the ground of obviousness or novelty are not good enough to do with this because our friends have a 20-year monopoly and, as pointed out in the Morse’s Case, this claim will cover all forms of latch assemblies possessing the first five known integers and any possible lock release means that can be metaphorically drawn in that empty square box. So, your Honours, that is why it has always been, as the history very accurately points out in the CCOM Case, a requirement that the claims do not travel beyond what is warranted by the disclosure.

Your Honours, the disclosure is the full description of section 40(2)(a). That is not a message, your Honours, and it is not an assertion. It is a description of an invention in consideration for the monopoly, and we respectfully submit ‑ ‑ ‑

GUMMOW J: You seem to be drifting into paragraph (a) of subsection (2).

MR CATTERNS: Yes, your Honour, and I get there – with respect, I must get there – by the words “the matter described”.

GUMMOW J: Yes, I know, but we are not dealing with that, are we?

MR CATTERNS: But, your Honour, with respect ‑ ‑ ‑

GUMMOW J: I think the complaints you are making might find a point under (2)(a).

MR CATTERNS: No, your Honour, for this reason. May I just say, first of all, we get to (a) and then why I respectfully disagree with your Honour. The short answer to your Honour’s point is, this Court held in Kimberly‑Clark that the requirement of section 40(2)(a) is met if the skilled addressee can preform one thing within the invention. That is in paragraph 25 of Kimberly‑Clark. The skilled addressee can certainly perform one thing within this invention. There is a very full description of one embodiment.

So it is not a sufficiency ground under the law of Australia. That may be another argument for another sufficiency case, but, as your Honours recently explained “sufficiency” in Kimberly‑Clark, we could not rely on 40(2)(a) because they clearly did describe one embodiment within the claim that the skilled addressee would be able to perform.

Your Honours, the reason we get to 40(2)(a) – fair basis is not just a mirror image of sufficiency; it has a broader content and always has. “The claim or claims must be . . . fairly based on the matter described”. I get to 40(2)(a) by asking myself, what does “the matter described” refer to? It must refer to the description of the invention in the complete specification. At least, it must refer to that.

The only other matter that might be described in the specification might include, for example, as here, an assertion that the latch assembly is characterised in a certain way. It might include, as in some of the old cases, an assertion that I have hereby invented a principle. Some of the old cases talk about, “Well, if you get a principle, we might give you a broader monopoly, rather than holding you to the actual object”, but most of the cases hold the inventor to the actual product.

Your Honours, to Lockwood’s credit they did not assert here that they had invented a new principle, because indeed the very locks which invalidate claim 1 were made and sold by Lockwood, so this is not a principle case. It is just a question whether or not claim 1, which is the claim we work on, is too broad. Of course it is too broad, your Honours, we respectfully submit, because it encompasses all forms of latch assemblies, including any form of lock release means now known or to be invented. That is precisely the mischief which this provision and its judicial and statutory predecessors has always been directed to.

HAYNE J: Can I just understand where your argument has got to so far. Do I understand you to say that you are required to make a comparison between claim and specification?

MR CATTERNS: Yes, your Honour.

HAYNE J: The comparison is of a qualitative kind.

MR CATTERNS: Yes, your Honour.

HAYNE J: What is the quality or what are the qualities that you are seeking?

MR CATTERNS: To determine whether or not the matter described provides a fair basis for the width of your claim.

GLEESON CJ: And by “fair” you mean reasonable?

MR CATTERNS: Yes, your Honour, words of that type. It so happens that “fair” gradually came into the UK Acts via an earlier requirement that you fairly describe.

GLEESON CJ: In some contexts “fair” might mean reasonable and in other contexts it might mean something like accurate.

MR CATTERNS: Yes, your Honour, I respectfully submit it is the first. Here it is reasonable or what is warranted or what is commensurate. The phrase used in CCOM, but also because it came initially from the law, is conformity. There is one type of disconformity which has never been part of our law for revocation between provisional, when one got initial protection, and the complete specification which fully described your invention, but the other type of disconformity is between the scope of claim and the invention described and disclosed.

HAYNE J: What is the measure of fairness or reasonableness that you advocate?

MR CATTERNS: Your Honour, perhaps I pick up what Sir Garfield Barwick said, that the claim must not travel beyond the disclosure. Your Honour knows that in the Court there, the majority held the claim did travel beyond the disclosure because, read as a matter of substance – that is my words – what was truly disclosed, to pick up another so‑called test, was the process, not the product. His Honour the Chief Justice went further in saying that, no, in fact, they had disclosed a new product possessing certain characteristics which were a result of the temperature and the deformation. Your Honours, it is judgment matter just as fair dealing is in copyright and, your Honours, fair comment is in libel and so on, but the ‑ ‑ ‑

GUMMOW J: This expression “covetous claims”, does that find a part here?

MR CATTERNS: It does a little, your Honour, but it is now more a – it certainly has the idea ‑ ‑ ‑

GUMMOW J: It was never in any statute, but what was the idea?

MR CATTERNS: I am sorry, your Honour?

GUMMOW J: The idea that something was a covetous claim. Does that have any part to play in section 40?

MR CATTERNS: Your Honour, I have seen it used with respect to excessive claim breadth, but it is usually used in the context of amendment where you have had your claim too wide, it means the same thing and here you are seeking to amend it 10 years later but you have greedily kept your claim too wide over that period. In CCOM the Full Court refers to an article by Sir Arthur Dean called “The Claiming Causes of Patent Specifications”. Justice Deane there uses “covetous”. I think there is a typographical error. He actually says “covinous”, which means conspiracy, but his Honour means “covetous” as excessive breadth.

GUMMOW J: Because not fairly based?

MR CATTERNS: Yes, your Honour, and really, your Honours, that is what this case is about ‑ ‑ ‑

GUMMOW J: Or because it related to more than one invention?

MR CATTERNS: Your Honour, the relationship to more than one invention, section 40(4), is not a ground of revocation or of opposition; it is one of a number of matters which, as your Honour knows, are dealt with at the acceptance stage. Under section 45 the examiner looks at the whole of section 40, including one invention.

GUMMOW J: That is right. How is the examiner to perform his task, given your construction of fair basing? The examiner will not be equipped with all this material that may be before a judge at a trial with respect to obviousness, for example.

MR CATTERNS: Although examiners do rule on a business, your Honour, report on obviousness, that sort of phrase. If his Honour Justice Wilcox trespasses into inventive step and obviousness, we respectfully do not embrace it. We submit his Honour does not, but in the end we do not need to take too much time arguing it.

GUMMOW J: I wondered about that. So you are seeking really to support the Full Court on supplementary grounds.

MR CATTERNS: With respect ‑ ‑ ‑

GUMMOW J: We do not find any analysis that you are giving us now.

MR CATTERNS: Yes, your Honour. In his Honour Justice Merkel’s paragraph 100 his Honour says “The ‘merit’” and then immediately goes on and says “the ‘real and reasonably clear’ disclosure”.

GUMMOW J: I realise that, but we do not find any reasoned discussion.

MR CATTERNS: No, your Honour, I accept that.

McHUGH J: Could I just understand this notion of “qualitative” that you bring in. Is what you are saying that the claim must not be misleading, given what the specification tells the addressee?

MR CATTERNS: I would not say misleading, your Honour, because that may well be dealt with under another area, such as false suggestion. But the claim must not be too broad, given the quality of the disclosure. It is just a consideration question. The reason we do not go too close on consideration is, your Honours, because no matter how wonderful your invention is everybody gets the same 20 years. So it is not a question of strict parity in that sense.

McHUGH J: Well, can I put it another way. Is it that the claim must fairly reflect what the specification tells the addressee?

MR CATTERNS: Teaches or describes to the addressee, yes, your Honour. That is exactly right. Your Honour, that has been the law, we submit, since well before the statutory grounds were codified, as his Honour Justice Gummow points out, in 1949, because before the UK Act – we set this out in our submissions, your Honour – before the UK Act of 1883 the patents were repealed by the writ. We can go back to old cases and see patents being repealed because they claimed too wide, they claimed wider than what was warranted by the description. Then the 1903 Australian Act, the 1883 UK Act, put aside the writ itself, but said any ground at which the patent could have been repealed at common law by the writ was still available. So the ground was maintained.

In 1932 the United Kingdom, as we see from Mullard v Philco, had the first list of grounds which did not include fair basis but which included any other ground of which the patent may have been repealed at common law. So that saver of the common law position was in the 1883 Act in England, the 1903 Act in Australia and the 1932 Act in Britain. Now, your Honours, the first time the list of grounds became exhaustive, as opposed to an enumeration with a saver as to the writ, was the 1949 United Kingdom Act and the 1952 Australian Act. So for the first time they listed the grounds exhaustively with no mention of repealing by the writ. The first time we ever exhaustively codified our grounds, the grounds include fair basis.

GUMMOW J: They also include false suggestion and misrepresentation, now found in 138(3). How do they link up with your interpretation of 40?

MR CATTERNS: Your Honour, if, for example, our learned friends said – I do not think in a lock case it would ever be said, but if we were in some area of biotechnology and our friends assert that there is a fundamental new principle of biology or cloning that they have discovered and seek to support broad claims that way, we accept that one cannot go outside the specification for section 40 except to have the skilled addressee explain terms and technology, but it is not an obviousness enquiry. But if that is just a lie, that assertion that I have uncovered a new principle of biotechnology, then the patent gets revoked on the alternative ground, your Honour, of false suggestion.

GUMMOW J: What about if there was a misstatement of the prior art, would that be a false suggestion in the specification?

MR CATTERNS: Yes, your Honour, certainly, because your Honour discussed this a little bit in the Prestige v Dart Case 95 ALR. If the specification contains an assertion, for example, as to how new it is in relation to the prior art and that is material to the grant, then the patent can be revoked on that ground, but there is no such false suggestion here. The patentee fairly states on the first two pages what the prior art is and says what the characteristic of this invention is, which is it is an improvement on the known latch by adding a lock release means operable by the outside actuator, which in practice means the key. But, your Honours, our case is that mere assertion, which matches near enough word for word the integer as it is described on claim 1, cannot foreclose the statutory question.

McHUGH J: But before 1949 was not the rule that the claim had to be coextensive with the inventive step? Was that not the way it was ‑ ‑ ‑

MR CATTERNS: The short point is no, your Honour, but there are many phrases in, for example, the Mullard v Philco Case which can be read that way. Their Lordships, with respect, drift in and out of the question of subject matter meaning obviousness, I accept.

GUMMOW J: I think Justice McHugh, with respect, may be right. If you look at, say, Gandy v Reddaway (1885) 2 RPC 49, there seems to be a complaint there.

MR CATTERNS: Your Honour, there is even a reflection of it in ‑ ‑ ‑

GUMMOW J: It is part of the way they used to draft the claims.

MR CATTERNS: Yes, your Honour. Justice Gibbs used the phrase in Olin, and Justice Jacobs at first instance in Olin uses that phrase, “wider than the inventive step”, I think I am right in saying. We accept that, strictly speaking, that cannot be right now, because, as this Court pointed out in the last paragraph of the Kimberly‑Clark decision, the grounds overlap practically in many ways. But they must be kept conceptually distinct, we fully accept. When you are asking, “fairly based on the matter described in the specification”, that cannot involve an extraneous inquiry into inventive step which involves knowing what the common general knowledge is. So that is why we accept that if the Full Court did drift into that, or Justice Hely, which, we submit, they did not, it would be an error. I see the time, your Honour.

GLEESON CJ: How long do you think you will need for your argument?

MR CATTERNS: I will certainly finish this afternoon, your Honour, giving our friends time. I would think perhaps an hour and a half, your Honour.

GLEESON CJ: We will resume at 2.00 pm.

MR CATTERNS: Thank you, your Honour.

AT 12.45 PM LUNCHEON ADJOURNMENT

UPON RESUMING AT 2.02 PM:

GLEESON CJ: Yes, Mr Catterns.

MR CATTERNS: May it please the Court. Your Honours, if I may just deal with a couple of matters raised by the Court. We had a look at the case that his Honour Justice Gummow referred to, Gandy v Reddaway, Reddaway a famous name in the trademark or passing off context. It appears to us, your Honour, that it is a sufficiency case but where their Lordships talk about excessive breadth, they are really saying that the claims are so wide as to encompass things that do not work.

GUMMOW J: The claim. There is only one claim.

MR CATTERNS: I beg your pardon. The claim is so wide that it encompasses things that do not work. We would now put that under utility, I would accept, your Honour.

GUMMOW J: You may be right.

MR CATTERNS: His Honour Justice McHugh raised the question that in a number of the cases the principle is expressed as not being able to claim wider than the inventive step. We have agreed with our friends that that is not an appropriate test really at any level because at the examination level the examiner does not know what the art necessarily is and what the common general knowledge is. But the other thing is that the inventor may not know. We agreed with our friend’s reference to the Rose Holdings v Carlton Shuttlecocks Case. There has never been a requirement to state what your inventive step is.

So we would respectfully submit that where the cases use a phrase such as “what he has said to be his invention”, the court is referring to the way an inventor has – or when it has got the proposition right the court is referring to the way the inventor has described his or her invention. So we get a completely different principle from the Olin Case from our learned friends.

In the judgment at first instance – and I do not need to take your Honours back to it – his Honour Justice Jacobs says there are consistory clauses – and if your Honours will forgive me, I will have a brief discussion of consistory clauses in a moment – in the body of the specification which match near enough to exactly the claims, but the presence of a consistory clause that matched claim 10 was not able to save its validity, either at first instance before Justice Jacobs or 3:1 in the Full Court of the High Court.

The reason was that in the subsequent passage of the description to which our friends took your Honours, but, of course, did not read the whole part out, it became clear that what the invention was was a process that did indeed use temperature and compressive deformation. Therefore, the majority held claim 10 was not fairly based, because it was a product not necessarily produced by that process, whereas claim 17, also a product claim, was limited to those matters.

I will come back to Palmer v Dunlop, but what the inventor said was that his invention was, insofar as the relevant integer goes – the means of getting rid of the liners of the little mould – the particular description was of liners of the mould being thrust out by a pin after a slide came across, whereas the infringer had a completely different method. What the inventor there described – the correct phrase ought to be what he has described, rather than what he has said.

Your Honours, the only case that we can think where a bare assertion of a matching consistory clause seems to have supplied fair basis is the Poseidon Case that our friends handed up this morning. We would respectfully submit that there is no reasoning as to why that provides a fair basis. It is, with great respect, a mechanistic approach and would not survive a House of Lords decision in Biogen, on the previous Act, of course.

GUMMOW J: The 1952 Act had a provision dealing with the relationship between the provisional and the complete specification. It used the words “fair basis” to link that relationship.

MR CATTERNS: Yes, your Honour.

GUMMOW J: Is that in the new Act?

MR CATTERNS: Your Honour, it is in the regulations.

GUMMOW J: It is in a regulation.

MR CATTERNS: Yes, by section 43:

Each claim of a specification must have a priority date.
(2) The priority date of a claim is:

(a) the date of filing of the specification; or
(b) . . . the date determined under the regulations.

GUMMOW J: Does the regulation have the same language as the previous 45?

MR CATTERNS: Yes, your Honour. It is regulation 3.12 and it says “fairly based on matter disclosed in” the provisional. If your claim is fairly based on matter disclosed in the provisional, it is entitled to the earlier priority date. I think the Full Court explained in CCOM this concept of priority dates was brought into the UK Act in 1949, so instead of your patent protection running from the date that you lodged the provisional, with consequences if your complete did not conform with it, at least at the stage of examination, what has happened is the patent no longer ran from the date of the provisional, it ran from the date of the complete, but you could get an earlier priority date, and now the Convention allows that, if you are fairly based on matter disclosed.

GUMMOW J: Not described, not described.

MR CATTERNS: It says “disclosed”, your Honour.

GUMMOW J: Yes, but section 40 says “described”.

MR CATTERNS: Yes, your Honour, and it is clear, with respect, that there is a difference between the requirement of description with respect to a provisional, and we see that in section 40(1) which says:

must describe the invention –

and 40(2) says:

(a) describe the invention fully –

A number of cases have discussed that difference and, for example, in looking at even the Full Court decisions of the Federal Court in this area one needs to know whether the court is asking itself a priority question of fair basis on the provisional where, in particular, that phrase “real or reasonably clear disclosure” was used by Justice Fullagar – we have given your Honours references to all these – and fair basis on the complete.

GUMMOW J: One can see more scope for mischief that way when one is dealing with the relationship between the provisional and the complete.

MR CATTERNS: Yes, your Honour. There used to be what was called a doctrine of legitimate development because you have your protection, you are allowed a certain amount of disconformity, namely, you are allowed to perfect or complete the development of your invention, but then the concomitant obligation was you had to describe it fully, including that development, including the best method you had come up with in the intervening period.

Your Honours, we use the jargon sanctioned by the High Court in the Welch Perrin Case of consistory clause and again, quickly historically, but it is very important, we submit, because it illustrates the fallacy of our friend’s argument, before claims were made compulsory and people in their specifications wrote a part of their invention saying what their invention consisted in, “My invention consists in”, and still voluntarily after that they started to voluntarily put claims in and then those became compulsory from the 1883 Act, but even though the claims became compulsory in the 1883 Act, so to speak, the habit of keeping a consistory clause which might match exactly or partially the claims continued, although, as the High Court says in Welch Perrin 106 CLR 588, this is where we might expect to find a consistory clause but they are not compulsory and it just so happens in the invention in suit there is not one.

Your Honours, what our friends here rely on is a vestigial consistory clause, where, on page 2 of the specification, which is page 4 of the book, line 10:

According to the present invention, a latch assembly of the foregoing kind is characterised –

the “foregoing kind” incorporates the five integers of page 3, lines 21 to 29, which have integers 1 to 5, and claim 6 says we add to the latch assembly of the foregoing kind –

in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.

That more or less matches the sixth integer of the claim, which is on page 13. It is not exactly word for word, but it is near enough. Our friends rely on those matching words, but, your Honours, looking at consistory clauses historically, the consistory clauses used to be, “What I claim is”, then claims came in, and our friends now say that they can bootstraps themselves up by matching words in the body of the specification that match the claim. That, given the history of clauses like this, is purely circular.

Putting it the way we put it before lunch, looking at this as a matter of substance, what is seen at lines 10 to 12 on page 4 and the other assertion that our friends rely on on page 6, lines 26 to 29 are really mere assertions and what is truly disclosed here – the equivalent of the temperature and compressive deformation of the Olin Case – appears at page 9. At page 9, line 28, our learned friends describe a particular locking means. I will not read it out, your Honours, but it goes from page 9, line 28 – I will try and explain it very quickly with respect to a drawing – through to page 10, line 15.

The means appear at page 19 and that is where we see the particular description, so to speak, of the lock release means. Your Honours see the number 17 at the top right‑hand corner of page 19. That points to two parts of a circular piece called a cam, and your Honours see that 46 points to a little trapezium or a five‑sided projection, and that projection has 47 a little sloping face. That little sloping face 47, if your Honours would then go to the left‑hand exploded version – after 49, which is then exploded itself over where 17 was, we see some screws and then plate 36 with three holes in it. Then we see the little lever 34, which itself has a projection on the end, 48.

What happens is, the cam rotates around and the projection on it bumps the projection on the lever so that the lever tips. Then lower down we have this cam that is pushed forward by a spring, held back by the other end of the lever. So, in effect, the outer cam releases that lever, thereby releasing the inner lock, allowing the cam to turn and allowing the lock to be released. Your Honours, that is a very short description and I do not believe the Court needs to go into it in any more detail. That is what is specifically described.

Now, there are a number of claims which descend to the detail of the lock release means described, but, your Honours, they are, as his Honour the Chief Justice pointed out – claim 33, which is, in the jargon, an “omnibus” claim, which, as his Honour Justice Gummow, pointed out, is very rarely infringed because it is so narrowly limited – the claims that at least descend to some particularity are claims 28 and 29, which are not alleged to be infringed, and our friends have never run a separate case about the fair basis of 28 and 29. One can see that there may be an argument as to their validity, but that has never arisen. Now, your Honours, I was going to take your Honours very quickly to a couple of the cases shortly ‑ ‑ ‑

GUMMOW J: So there is no infringement alleged at 28 and 29?

MR CATTERNS: That is right, your Honour. The reason is, as his Honour Justice Hely held, we have copied their idea but our device owes nothing to their particular lock. Your Honour, the reference to that is paragraph 179 at appeal book 137, where his Honour finds that our friend’s new lock:

was the inspiration for the Doric products. I do not accept that the Doric products were independently conceived. I accept, however, that Mr Alchin did not set out to copy that product, beyond taking the bare idea of the inclusion of a lock release means whereby the inside lock would be released by the operation of the outside actuator. Rather, as Exhibit D indicates, Mr Alchin set out to design a simpler product “from the ground up” which would include this new functionality and which could be more cheaply manufactured.

Interestingly, your Honour, we lost the obviousness case based on the particular combination or selection, such as claim 7, of triggers and cams and so on, and his Honour held at 169 – he rejected our evidence in the context of obviousness and said – but this is a finding that can be relevant to fair basis:

I do not accept Mr Garland’s evidence that a non-inventive skilled worker in the field would have lit upon the solution as embodied in the Doric and Lockwood locks as an obvious solution to that problem.
Finally, your Honours, there is one very – and ours is an example, a more homely example, of my example of a biosecurity future lock, and our friends seek to monopolise a field that covers everything from their particular description to the biosecurity.

Your Honours, our lock is seen – we do not need to take your Honours to it – at pages 76 and following. There were some drawings that were done showing the much simpler mechanism that our lock had and, in particular, the lock release means, as his Honour held in relation to infringement, was satisfied by the fact that the key with the lock on the outside had a tail on it that turned the cam directly. So there is none of this business of a second cam with a projection triggering a lever which releases something that has been biased by a spring but held back. Ours just turns it into and out of. At the same moment as you are turning the key to withdraw the latch it is taking away the lock.

Your Honours, at page 59 – I do not need to read it out, your Honours – lines 5 to 30, to the extent that evidence is relevant on the construction of the description, I think it goes without saying, our friend’s witness agreed that there is no description in the patent of a lock which possesses the various features, insofar as the lock release means goes, of our Doric lock.

GUMMOW J: But you are not saying that you made an invention?

MR CATTERNS: We applied for a patent, your Honour. That may or may not have been inventive in its narrow form. I am not saying that we made an invention in the concept, your Honour. May I, perhaps a little out of order, go to the Kimberly‑Clark Case 207 CLR because a couple of members of the Bench have raised with us the question of the interaction between sections 40(2)(a) and 43. The current question did not concern the Court, of course. The Court drew a distinction in paragraph 15 between the fact that the claims are normally treated as part of the specification, and your Honour the Chief Justice and Justices McHugh, Gummow and Hayne will remember that that was the debate of statutory construction there, whether the requirement of sufficiency could be satisfied in part by the claims. In paragraph 15 your Honours apparently approved what Chief Justice Barwick said on the question of fair basing, saying:

what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.

Quoting from the Chief Justice, saying it is not a question of whether a monopoly:

would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product . . . as expressed, travels beyond the matter disclosed –

So far as sufficiency goes, there are two other matters. In paragraph 20 your Honours discuss what does “invention” mean in the context of section 40. I think it is common ground between ourselves and our friends that it is the meaning that we see on page 15 in paragraph 21, namely the embodiment which is described and around which the claims are drawn. It is the first meaning which your Honours say, with respect, Justice McTiernan correctly adopted. We respectfully submit that, of course, that is a holding about section 40(2)(a) and we say the matter described in 43 picks up the description of the invention in that sense.

Your Honours, just as we go through the case, there is the reference to the Sami Svendsen Case. We ran a very narrow sufficiency case and the pleading – nothing to do with a skilled addressee being unable to work the invention by making one thing within the claim. If your Honours would go to paragraph 23 at the top of page 16, their Honours say:

The point being made by Kitto J –

Your Honours, that was a patent for a sausage casing and Justice Kitto said, in effect, that the specification was misleading because the only description, the only inventive step, the only improvement, was the addition of a tab to pull it on the stuffing horn. Your Honours said, paraphrasing Justice Kitto, that:

(i) the only possible ingenuity had been in making a particular improvement to a known mechanical device . . . but (ii) the specification described not this improvement but the entirety of the combination, without enabling that reader to discern the particular improvement in that combination.

Our pleading takes those words, and our case on sufficiency that remains before the Full Court is if our friends are right about an assertion and you can assert your way into fair basis, then they will fall foul of the principle expressed there, because they are not describing just the improvement, their particular lock release means, but are making assertions that go vastly broader. That is a matter for another day, your Honours.

The final point, and this is a crucial point, on understanding the relationship between sufficiency and fair basis and why his Honour Justice Hely said we did not run a general sufficiency case in the sense of “Can somebody make something within the claims?”, is this, your Honours. In paragraph 25, there is a quotation from the No‑Fume Case, using the phrase “consideration” interestingly. At the top of page 17, with a footnote to Blanco White, the Court says:

The question is, will the disclosure enable the addressee of the specification to produce something –

one thing –

within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?

So in Australia the law of sufficiency is not that you have to enable the full width of the invention.

Now, when we come to the House of Lords’ decision in Biogen v Medeva, your Honours will see that Lord Hoffmann struggles with what he calls the “one way” approach to sufficiency, and the reason is this, your Honours. You cannot have a one way approach to sufficiency whereby you enable one thing but claim the rest, unless you have a robust law of fair basis. That is what the House of Lords reasserted, we submit, in Biogen v Medeva. If you only have to enable something within the claim and that is all the consideration you give, then how can it be fair to claim every possible way of achieving that result? Your Honours, we wanted to raise that as showing the relationship between sufficiency and fair basis.

Your Honours, there are only two matters we want to take your Honours to in the history, which we have set out as fully as we could in our written submissions. May I just supplement – I am sorry we abandoned this – our accompanying material, I think, has most of the relevant history; but we did not give your Honours the amendment to the UK Patents Act of 1932. Following a recommendation from the Sargant Report, which we have given your Honours, it enumerates, as the phrase was – on the second page in section 3 of the amending Act, the legislature brought in a new section 25(2), setting out the grounds. The sufficiency ground was:

(h) that the complete specification does not sufficiently and fairly –

interestingly –

describe and ascertain the nature of the invention and the manner in which the invention is to be performed –

Then what is close to an equivalent of our 40(2)(b):

(i) that the complete specification does not sufficiently and clearly ascertain the scope of the monopoly claimed –

Your Honours, the writ of scire facias is kept as a sabre, so to speak, on page 410 of our print. At the bottom after (p), your Honours see “or”:

upon any other ground upon which a patent might, immediately before the first day of January one thousand eight hundred and eighty‑four –

which was the commencement of the 1883 Act –

have been repealed ‑ ‑ ‑

GUMMOW J: In Mullard, they were worried about (e) and (f), were they not?

MR CATTERNS: Yes, your Honour, although ‑ ‑ ‑

GUMMOW J: They did not talk about (h), did they?

MR CATTERNS: They did not, your Honour, nor did they talk specifically about repealing it on a general common law scire facias ground. If I could just give your Honours the reference to the Sargant Report, it is at page 208 of our bundle behind tab 7, where they agreed that the grounds should be enumerated but recognised there may be some difficulty in making an exhaustive enumeration of the grounds. As we have submitted to your Honours, when an exhaustive enumeration was attempted in our 1949 Act and our 1952 Act it was done by including fair basis. Your Honours, there are only two other matters ‑ ‑ ‑

GUMMOW J: Do we see that in the report at tab 9?

MR CATTERNS: No, your Honour.

GUMMOW J: The appearance of fair basis?

MR CATTERNS: No, your Honour. We only see it in the Australian report. But just on tab 9, your Honour, the grounds are at page 46 of the report, 224, and your Honours again can see that it is corresponsive of the 1932 Act, so their recommendation was not for an exhaustive section and we can see that at page 225 of our bundle, because after what is then ground (o) we have “or upon any other ground”. But, your Honours, the United Kingdom Act, which is behind tab 10, introduced the concept of fair basis in the statute. At the bottom of page 228, subsection 4(3) we have the sufficiency requirement:

Every complete specification –
(a) shall particularly describe the invention and the method by which –

your Honour sees not quite our wording –

it is to be performed;

Best method, but then subsection (4):

The claim or claims of a complete specification must relate to a single invention; must be clear and succinct, and must be fairly based on the matter disclosed in the specification.

Your Honours, just completing the history, in Australia our law was that in the 1903 Act – Dr Emmerson’s copy – at page 9, section 35 said:

A provisional specification must fairly describe the nature of the invention.

36. A complete specification must fully describe and ascertain the invention –

And the grounds of revocation were in 86(3) on page 23:

Every ground on which a patent might at common law be repealed by scire facias –

Your Honours, then there were three reports which are all behind the Dean Report behind tab 3 but the only consideration of the – interrupted by war – the only consideration in the Dean Report 1952 is at 58 and in simple words under the heading “Part IV – Application for Patents”, paragraph 48 is a little change to clause 39 which is now our section 40(1), but crucially in 49:

To prevent applicants claiming matter extending beyond the scope of the invention described in a complete specification we have provided in clause 40 that each claim shall be fairly based –

and the draft Bill has precisely, I believe, what appeared in the 1952 Act. That is at page 114 of our bundle. It is in subsection (2), now replicated in our (3):

The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification.

Your Honours, we submit that is a different concept from the assertions or the message. It is clearly a breadth of claim concept.

GUMMOW J: Can I just read you what is said in the second edition of Blanco White published in 1955, at page 37, footnote 36. He talks about “fair basing” with provisional and complete and convention applications and then he says there is an:

analogous problem . . . with “fair basing” upon a complete specification. Although analogous, the problems are not the same: on the one hand, it is permissible to develop the invention in some degree –

that is what you were saying –

after filing a provisional specification, without loss of date; on the other hand, there will in the body of a complete specification usually be a “consistory clause” co-extensive with or equivalent to the widest claim.

MR CATTERNS: Your Honour, I would respectfully submit that that approach ‑ ‑ ‑

GUMMOW J: Is that not what Mr Bannon is fixing his case on?

MR CATTERNS: Yes, that is what Mr Bannon is saying, yes, your Honour. That certainly sounds reminiscent of it, but may we hand up your Honours a bundle which I was not going to take your Honours to, of the textbooks, including ‑ ‑ ‑

GUMMOW J: Anyhow, this is a view of a practitioner in 1955.

MR CATTERNS: Your Honour, it does not appear, I believe, in the 10^th edition which we are handing up.

GUMMOW J: The cases took over after that.

MR CATTERNS: Yes, your Honour. Your Honours, we have Terrell and Blanco White and perhaps importantly, also Professor Cornish, who is the only one of the textbook authors that we have seen who comments on the position in the UK post‑Biogen v Medeva. Your Honours, the material is in the way of textbooks, the material is to some extent repetitive because the authors bring forward old material. I was not going to take your Honours to that at the moment.

Your Honours, we respectfully submit that we are now at a position in our submissions where the following propositions are made good. There has always been a concern to deal with excessive breadth. That is now dealt with specifically in section 40(3). The word “fair” in fairly based requires a qualitative or a substantive examination, and the matter that is described in the specification – it refers to the four walls of the specification and construed by the skilled addressee, and includes the description of the invention, the full description of the invention in terms of section 40(2)(a).

Now, your Honours, the only other question that we think arises under the idea of the matter described is, can we also take into account not just the description, but for example, an assertion that this is a new principle - that is not relevant in this present case - or perhaps an admission that all I am doing is answering an admittedly known problem. But, your Honours, our case does not depend upon having to do that.

So the question is one of substance and without repeating ourselves – I promise not to do it again – whether the bare assertions such as our friends draw attention to on those two pages, 4 and 6, can expand their monopoly, can fairly expand their monopoly to the full breadth of claim 1. Your Honours, we respectfully submit that the reasons of his Honour Justice Hely, in particular, deal with the matter correctly.

There is one other matter, your Honours. Just as to the pleading, there was quite a lot of toing-and-froing at trial. In the end we gave a further particular in relation to claims 1 to 6, which appears at the top of page 150. Really, we would submit, that was the battleground. Your Honours will remember that claim 1 was the claim that even today the question of fair basis has been fought on. At the top of 150 we gave a further particular. His Honour refers at the bottom of 149, to our specifying “with precision the proposition” we proposed, and it was this, your Honours:

“Each of claims 1-6 travels beyond the matter described in the specification in that what is truly described in the specification is a single embodiment which provides the need referred to on page 1. Claims 1-6 cover very many ways additional to that of achieving that end.”

We respectfully submit that is what his Honour Justice Hely and the Full Court rightly held was the case. Your Honours, I can go quickly through his Honour’s reasons on the point. At 231 his Honour refers to the “real and reasonably clear disclosure” ‑ ‑ ‑

GUMMOW J: What is the single embodiment referred to there?

MR CATTERNS: The preferred embodiment. It so happens that the only embodiment described in the specification – there is only one embodiment described, the preferred embodiment. Your Honour, his Honour did not fall into the error of saying a patentee is limited to his or her preferred embodiment, of course. It just so happens that in this particular case that is all that is described, one embodiment.

GUMMOW J: What do you mean by “described”?

MR CATTERNS: Your Honour, the invention of a latch assembly – only one latch assembly possessing the six integers is described, and that is the detailed assembly that occurs in the specification beginning at page ‑ ‑ ‑

GUMMOW J: Is this a subsection (2)(a) point?

MR CATTERNS: No, your Honour, because your Honours held that a single embodiment will satisfy (2)(a).

GUMMOW J: All right. So it is designed to get around that, is it?

MR CATTERNS: With the aid of Olin and Palmer ‑ ‑ ‑

GUMMOW J: No, why not? Is that not what it is designed to do?

MR CATTERNS: Your Honour, it is designed to find a valid ground, given that sufficiency in Australia is satisfied by a single embodiment. Your Honour, getting around it, in the House of Lords their Lordships come back to fair basis. That has always been the ground by which, to use the phrase from CCOM, your Honour, a claim not warranted by the disclosure is struck down.

GUMMOW J: Do you agree with the way Justice Lockhart approached this in the Atlantis Case?

MR CATTERNS: Insofar as his Honour says that the mere matching words matched the claim, we do, your Honour, yes. We also agree with the way his Honour dealt with it as a matter of construction, saying that his Honour ‑ ‑ ‑

GUMMOW J: It is in 39 IPR 29.

MR CATTERNS: What his Honour did, your Honour, was to say – it is exactly what Justice Dixon did – the claim cannot be narrowed by construction to the drainage cell. It is a broad claim which is written to any plastic structure with the holes in it. Therefore, his Honour said – and that is not fairly based on the description notwithstanding a matching consistory clause because what the description really describes is a drainage cell, not any plastic structure. So therefore they lost to fair basis.

GUMMOW J: He also said there was no definition of the invention.

MR CATTERNS: In the body? I am sorry, may I ask what page your Honour is referring?

GUMMOW J: It is the third‑last paragraph of his judgment:

It also must follow that the patentee has not defined his invention; but has simply defined a structure of general and unlimited application. Hence the Claims are not in accordance with s 40(2)(b) of the Act.

MR CATTERNS: Yes, your Honour. That ground, 40(2)(b), is usually treated as another species of ambiguity in failure to define rather than as a surrogate for fair basis, but there would be some support in Justice Kitto’s judgment in Sami Svendsen for treating the error there as a failure to define. Your Honours, we make a submission about that in our paragraph 69, giving references to the passages in the footnote.

GUMMOW J: Thank you.

MR CATTERNS: Your Honours, if I may, returning to Justice Hely’s judgment quickly at 150, we respectfully submit that his Honour, rightly, naturally enough, follows as a touchstone of what is fair the phrase from Olin approved by this Court in Kimberly-Clark. We would rely on ICI where the Full Court of the Federal Court said that:

ordinarily at least, what will deprive a claim of fair basis in a complete specification is that the claim is broader than the invention as described in the specification.

As your Honours know, there is a species of case much rarer where a claim may be not fairly based because there are integers in the claim which are actually narrowing integers but which are nevertheless not fairly based, for example, the Coopers Animal Health Case, but that is a much rarer case.

Your Honours, we respectfully submit that the quotation from his Honour Justice Rich at the bottom of 150 is apposite. This is not a principle case and there is no assertion in the specification that this is a case of discovering a new principle. How could it be, when locks are as old as they must be? His Honour says:

“It must be rare for a combination to consist in such an application of principle that the inventor can exclude from the field all combinations of mechanical equivalents of the integers producing the same result.”

His Honour had earlier said:

“it is very difficult to cover validly more than the particular aggregation of integers actually made by the inventor.”

May we also briefly come to Justice Dixon shortly, your Honours. “The monopoly must be restricted to the disclosure”. That is right, if it was said it was fairly based on.

Your Honours, we respectfully disagree with our friend’s submission that the idea of the technical contribution is utterly foreign to our law. First of all, although earlier quoted in the context of obviousness, that is not what it means in the requirement in the UK Act and the European and UK jurisprudence. It really means “that which you describe”. It is another way of referring to the description of the invention, and I will make that good with Biogen v Medeva, your Honours.

Then in paragraph 234 his Honour Justice Hely rejects the submission that our friends have advanced today:

Lockwood submits that there is no room for the application of these principles in the circumstances of the present case because the words in the specification match the words of the claim –

It really seems to us that that is the question of principle that faces this Court.

The notion of “travels beyond” requires consideration of what is truly disclosed by the specification in terms of a “real and reasonably clear” disclosure –

to pick up Justice Fullagar again. Then there is a reference to the coincidence of language in Atlantis, which we do embrace. The reference to Justice Laddie’s decision is – as your Honours see, when he says “technical contribution”, his Honour is not falling into the language of inventive step; he is saying:

The technical contribution . . . is the disclosure that the solution to the problem is the use of the outside lock to release the lock on the inside handle, coupled with the disclosure of one way of doing that in terms of the preferred embodiment.

That is an utterly correct way of approaching it. Your Honours, we respectfully submit that the first two sentences of 236 do not infect the reasoning on fair basis. In effect, his Honour is saying is saying although it is obvious, it is still nevertheless not fairly based. There are some matters in common between the various grounds – see Blanco White – but the revoker has not got over the obviousness hurdle. Nevertheless, his Honour holds that it is not obvious, which, if anything, would shore up our friend’s argument rather than shore up ours.

May we remind your Honours, and we will show you this in a minute, it is our friends who introduced the question of obviousness into fair basis. It is not part of our case and we respectfully submit that his Honour Justice Hely did not infect his reasoning on fair basis. If anything, it would have helped our friends if he had, but the reasoning that then follows, which is the reasoning upheld expressly in the Full Court, we respectfully submit, is correct. Looking at the thing as a matter of substance, the ‑ ‑ ‑

GUMMOW J: What was the purpose in paragraph 236 of the first two sentences if they do not have some relation to the third?

MR CATTERNS: Your Honour, I am not sure, quite frankly, but we respectfully submit there is no evidence or no suggestion of infection, so to speak, in the remaining words. Frankly, your Honour, we would rather they were not there but – and the same applies in another one or two of the judges we are going to come to. But, your Honour, his Honour looks at the specification, does not go outside the specification and agrees that it does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment. Yet, it claims that latch assembly which contains LRM of any form, no matter what means or mechanism is employed to achieve that result, it follows they are not fairly based.

Your Honour, we respectfully submit that that reasoning, perhaps if one were to put those two sentences in square brackets, that reasoning is otherwise unimpeachable. Your Honours, if I may proceed quickly, his Honour Justice Wilcox ‑ ‑ ‑

GUMMOW J: Why is his Honour saying – put it another way, what would it have to contain in a specification to meet what his Honour has in mind there, in the third sentence.

MR CATTERNS: Well, your Honour, at least with respect to the lock release ‑ ‑ ‑

GUMMOW J: That is a conclusion. The question is, why does it not?

MR CATTERNS: Well, your Honour, for the reasons like the reason that his Honour Justice Rich gave, and as I will show your Honours, his Honour Justice Dixon gave, that normally if you come up with one – this is a case of an improvement – a single mechanical improvement to an admittedly well‑known latch assembly, that is what the patent says, then you are only entitled to that. The answer to your Honour’s question - in a sense your Honour’s question implies that one might be able to achieve a claim of great breadth. We respectfully submit in this territory one cannot achieve a claim of great breadth. If you describe seven embodiments, fair enough.

Your Honours there is a – I will think of the reference in a minute – there is an 1880s US Supreme Court case called Webster Loom where their Honours say, now, you do not have to – just as a matter of sufficiency – you can rely on the skilled addressee. Now here, your Honours, the way this is written, our friends did not have to enable integers 1 to 5 with respect to every possible lock because their assertion is ‑ ‑ ‑

GUMMOW J: But you are saying claim 1 is not fairly based?

MR CATTERNS: Yes, your Honour, and it is not fairly based insofar as it contains all locks possessing other attributes but possessing this lock release means and it only gives one.

GUMMOW J: When you say, it only gives one ‑ ‑ ‑

MR CATTERNS: But, your Honour, it does only give one. There is no description of any other embodiment other than the means that I referred your Honours to at page 9, “Lock release means”. The only other description of lock release means is what I call the consistory clause at page 4, line 10, and the assertion at page 6, line 28, that “The release means may take any suitable form”. Now, I respectfully submit that when you have said ‑ ‑ ‑

GUMMOW J: Was not Blanco White saying in 1955 that that would be enough?

MR CATTERNS: Yes, he does, your Honour, but that is wrong.

GUMMOW J: All right.

MR CATTERNS: And that is what this appeal turns on. It must be wrong, because that gives no content to the phrase “fairly based”. As I have submitted before, it is utterly circular. I do not want to go back to questions of in terrorem, but it just means that one would now – as the Supreme Court in the US says in Morse’s Case 150 years ago ‑ ‑ ‑

GUMMOW J: I do not know, but I just have the memory – getting dimmer – that a lot of patents are drafted in the way Blanco White was talking about.

MR CATTERNS: Your Honour, they have a consistory clause, and then they give their preferred embodiment, and then they give another embodiment and another embodiment and another embodiment, and they say suitable excipients – in the drug case – suitable excipients include so on and so on and so on, and excipients known in the art, and they attempt to write it as broadly as they can. Now, here the only attempt to write this broadly is not by disclosure, but by those two assertions – really, by one, the assertion on page 6.

GUMMOW J: All I am saying is, the in terrorem argument may run in the other direction as well.

MR CATTERNS: Via Blanco White. Fair enough, your Honour, he is a highly respected author. But, as it turns out, he was overtaken by the cases. Olin is a perfect example. That shows why Blanco White is wrong. The High Court of Australia says he is wrong, in effect, because there was a consistory clause there, yet four Justices out of five held it was not fairly based. We would respectfully submit that is why none of the later textbooks, as far as we can see, say there is any question of being foreclosed by assertion.

Your Honours, just quickly to Justice Wilcox, if I may. Just on fair basis, the structure of his Honour’s reasons was this. At page 184, in paragraph 23, his Honour says:

One topic is central to the issues of fair basis, sufficiency and obviousness: the identity of the invention.

He sets out his Honour’s view over the next few pages, then counsel’s submissions. Then our friend’s submission at paragraph 32 was noted, which does not seem to have been pressed on appeal – or perhaps our friends do rely on it – where Justice Hely slipped into the word “teaches”:

“The specification teaches that LRM may take any suitable form” –

That, of course, cannot foreclose it just because elsewhere his Honour says it states that. That is not a teaching in the sense of a description. But then, your Honours, crucially at the bottom of 187 his Honour notes our friend’s submission and it is out friends, with respect, who have on the question of fair basis caused the conflation of obviousness and fair basis, because looking at the top of 188, “In other words” – this is in the context of fair basis ‑ ‑ ‑

GUMMOW J: What paragraph?

MR CATTERNS: The top of 188, your Honour, paragraph 34, there is a quote from our friends:

“In other words, his Honour found that the ‘solution’ reflected in claim 1 was an invention.

That means possessed an inventive step in terms of obviousness.

That solution included the use of any lock release means which was responsive to the use of the outside key. That was the invention –

that is the correct sense of invention, meaning the Kimberly-Clark sense, the invention that was taught or described in the body of the specification.

In other words the invention which was taught in the body of the specification was the conception of using a lock release means –

That is the inventive step. So, your Honours, in that one paragraph, the submission that his Honour Justice Wilcox is answering, our friends have put three ways of using the word “invention”, namely, something that is not obvious, something that is an invention in terms of section 40(2)(a) and an inventive step.

Your Honours, if I could then go quickly to his Honour Justice Wilcox’s reasons. With respect, I do not think we will advance things too much by debating with your Honours the proper construction of the reasons below. We accept that if your Honours regard their Honours as having conflated obviousness with fair basis, their Honours were wrong to do so. But that does not mean we lose. We win for the reason his Honour Justice Hely gave, namely, that our friend’s claim travels beyond the specification.

Your Honours, in paragraph 69 at the top of 202, his Honour reiterates that:

Once again, it is of critical importance accurately to identify the invention.

I should have said, going back to the beginning of 69, his Honour says there is “a common fundamental question” but his Honour says it needs to be identified for the separate purposes – that is my phrasing – of the section 40 ground and the inventive step ground, hence his Honour’s use of the words “Once again”. Your Honours, in 71, in the third line, his Honour says:

The evidence demonstrates that this was widely perceived, in the trade, to be a problem –

Your Honours, we do not, did not and could not rely on that as helping our case on fair basis, but it is relevant to obviousness. We respectfully agree that his Honour is largely dealing with obviousness in that paragraph.

GUMMOW J: It may be somewhat awkward if this all has to go back, this obviousness question.

MR CATTERNS: That is what the court said in Kimberly –Clark.

GUMMOW J: It seems partly to have been decided but it is a bit like a curate’s egg.

MR CATTERNS: Partly, I would accept, your Honour. I could go further, your Honour. In 73 it seems even more clear because his Honour says:

If, contrary to my opinion –

What is the opinion? We think, your Honours, it must mean the second sentence at paragraph 72:

However, it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so.

His Honour later on in 76 says “I do not make a final conclusion in obviousness”, his Honour is, at least tentatively to say the least, expressing an opinion there. But, your Honours, the way that we respectfully submit that one can appropriately read paragraph 72 and keep the grounds distinct is to say that what his Honour has done is looked at the first two pages of the specification where the patentee says “This is the problem”, and the problem is that the outside key does not undo the inside lock. In other words, his Honour is saying the solution is, so to speak, the mirror image or the corollary of the bare statement of the problem.

May I make that good. At page 3, your Honours, this appears three times. Your Honours notice the broad generality of “commonly” and “generally” and “typically”. At line 13:

In particular, key operation of the latch from the outside of the door will not release the lock.

The solution, your Honours is in 15:

It is an object of the present invention to provide a key controlled latch which can be released –

So it is removing the “not” from a lock condition by the use of a key at the outside. Then, your Honours, the typical latch assembly with the other five integers is described, and at line 23:

In normal latch assemblies of the foregoing kind operation of the outer or second actuator does not affect the operation of the locking means.

That is then repeated, that is the problem, and confessedly common general knowledge, as his Honour found. Then at 4, line 6:

but in conventional assemblies of the foregoing kind operation of that lock does not influence operation of the first actuator locking means.

The solution is a latch assembly is characterised in that it includes lock release means which is responsive to operation, so the “does not” or “will not” is replaced by “is”, and that is why his Honour Justice Wilcox says at page 203 in paragraph 72:

it can hardly be an inventive step simply to say that the solution to the problem of the inside lock not being responsive to an outside actuator is to make it so. That tells the addressee nothing.

HEYDON J: That is a 42A point, is it not? It is not a section 40(3) point.

MR CATTERNS: Probably right, with respect, your Honour.

HEYDON J: Well, should it not be dropped then? Must we not concentrate on section 40(3)?

MR CATTERNS: Yes, your Honour, that is why I agree we should not be spending too much time construing these judgments. It is really his Honour’s next conclusion that we would rely on and it raises no higher than his Honour Justice Hely. His Honour says:

I agree with Hely J that the specification “does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment” . . . Claim 33 –

which is the particular one –

is concerned –

Your Honours, her Honour Justice Branson said at the beginning of the bottom of 206, “It is probably not important”. Well, your Honour, it is conceptually or doctrinally important we assert and certainly accept but it would not be important as a matter of practice in that each of the grounds would lead to revocation. Your Honours can see that her Honour says would not be a manner of manufacture and then says, “or as the respondent contended”. So her Honour, I do not think, made the error of thinking that we did argue manner of manufacture, section 6:

not to involve an inventive step, or . . . too broad ‑ ‑ ‑

HEYDON J: But what about paragraph 87? That sounds like her ratio, does it not?

MR CATTERNS: It does, your Honour, and that is not the way we put the case. But if your Honour would go back to the quotations from Nobel’s Case, which goes back to Neilson v Harford, which is where Morse’s Case finds its inspiration, Baron Alderson in a later case pointed out that if you have described one method you can prevent anybody else from obtaining the same result by any other method, that is wrong:

if that were the law the result of such a patent would be a patent of the principle itself, because when you had discovered a new result, if, by showing one method of producing that result your patent covers every other method of producing that result –

Now, your Honours, that is entirely apposite to the present argument. We did not put it as patenting an idea or principle but really her Honour is saying, in effect, by claiming so broad ‑ ‑ ‑

GUMMOW J: Really and truly.

MR CATTERNS: Well, fair enough, your Honour. It is a paraphrase of what Baron Alderson says: if you did that, the result of such a patent would be a patent of the principle. But, your Honour, I accept that the doctrine of fair basis has been refined since 1894.

HEYDON J: Or 1844.

MR CATTERNS: Exactly, your Honour.

GUMMOW J: Does not subsection (3) have three, what one might say, morally neutral adjectives: “clear”, “succinct” and “fairly based”?

MR CATTERNS: Yes, your Honour.

GUMMOW J: You seem to want to inject something into the third of them.

MR CATTERNS: I am sorry, your Honour, but “clear and succinct” is usually treated as dealing with ambiguity. We actually had a succinctness criticism because we said that given the multiple chains of dependency there were something like 1,500 specific ways you could infringe.

GUMMOW J: You seem to be saying that true enough you can reclaim one and you can read the opening passages of the specification finishing up with line 10 on page 4, and you find some measure of correspondence there, but nevertheless it is unfair to base a claim in that way.

MR CATTERNS: Yes, your Honour. I am not saying morally unfair, but picking up again the phrase that was used in CCOM, the claim is “wider than warranted”. In that sense, it is unfair. Warranted by the disclosure.

GUMMOW J: What if it is coextensive with it?

MR CATTERNS: Your Honour, the only claim that is coextensive with the disclosure, looked at in a realistic way, is the omnibus claim, because that is what is really described. That is what is fully described, in terms of section 40(2)(a) ‑ ‑ ‑

GUMMOW J: I know this, Justice Heydon remarked about paragraph (a) ‑ ‑ ‑

MR CATTERNS: Your Honour, with great respect, the legislature – they said they are dealing with wide claims, wider than the description. Description, your Honour, not mere assertion or message. The ground would have no content if our friends are right, because you can just match it, just print the claims twice with your word processor.

GUMMOW J: But it does have content. The Atlantis Case is an example, is it not?

MR CATTERNS: Because their Honours rejected the argument that our friends would advance now.

GUMMOW J: Is that right?

MR CATTERNS: Their Honours said that mirroring, such as page 4, line 10, is not enough. There was in Atlantis a clause which makes the claim ‑ ‑ ‑

GUMMOW J: Anyhow, do not let me hold you up, Mr Catterns.

GLEESON CJ: You were going to show us what you get from the House of Lords at some stage.

MR CATTERNS: Yes, your Honour, if we can go to that directly. Your Honours, it is in 1997 RPC 1 at ‑ ‑ ‑

GUMMOW J: Now, Professor Cornish treats this as breaking new ground, does he not?

MR CATTERNS: Yes, your Honour. Well, breaking new ground under the 1977 Act in that it went back to fair basis, but also ‑ ‑ ‑

GUMMOW J: I am not sure that is what he is saying.

MR CATTERNS: There are other things, of course, your Honour. Your Honours, there is a discussion of obviousness which I do not need to take your Honours to. Then, under the question of priority date at pages 46 to 47, his Lordship starts setting out the UK provisions, and, in particular, section 14(3):

“The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.”
This is plainly a requirement of an “enabling disclosure”.

It appears from this, your Honours, that their Lordships regard the sufficiency requirement differently from the way your Honours held in the Kimberly‑Clark Case and suggested one has to enable the invention across the full width. But it does appear that, in the end, his Lordship prefers to put that objection under the ground of fair basis.

It is not due ground, your Honours, notwithstanding Cornish, because Morse’s Case, 150 years ago, said the same thing. Now, at line 30 his Lordship says:

The absence of an enabling disclosure is likewise one of the grounds for the revocation of a patent specified in section 72(1) . . .

“the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art.”
This is entirely in accordance with what one would expect.

GUMMOW J: Now, in drafting the 1990 Act was there not a deliberate decision not to follow the 1977 UK Act?

MR CATTERNS: Yes, your Honour, because it is based largely on the European Convention.

GUMMOW J: Yes, that is right.

MR CATTERNS: That is so, your Honour, but what I get out of this is, first of all, the principle which is consonant with the cases back to the 1800s and, secondly, his Lordship’s own words where he says after coming to a fair basis type decision that fair basis survives with full vigour the principle.

GUMMOW J: Where is that?

MR CATTERNS: That is in the paragraph on page 54. Now, his Lordship says at line 5:

there is an important difference between the 1949 and 1977 Acts which make decisions on the earlier Act an unsafe guide.

That is with respect to the date, your Honours, of sufficiency; whether it be the date of lodgement of your patent, as your Honour Justice Gummow held in the Rescare Case, or the date of publication, as some earlier cases have held.

Section 72(1)(c) of the 1977 is not only intended to ensure that the public can work the invention after expiration of the monopoly. It is also intended to give the court in revocation proceedings a jurisdiction which mirrors that of the Patent Office under section 14(3) or the E.P.O. under article 83 of the EPC, namely, to hold a patent invalid on the substantive ground that . . . the extent of the monopoly claimed –

your Honour, this is fair basis –

exceeds the technical contribution to the art made by the invention as described in the specification.

The Court of Appeal had previously held, at least twice, that fair basis was dead and, therefore, that ground was not available.

GUMMOW J: I can understand them saying that.

MR CATTERNS: Yes, your Honour, because there is no express ground in section 72.

GUMMOW J: That was the received professional opinion.

MR CATTERNS: Exactly, your Honour, precisely. But, your Honour, because of the 1977 Act, which repealed the equivalent of our section 40.

GUMMOW J: Yes.

MR CATTERNS: But the concept your Honours can see is still the same.

GUMMOW J: Well, Lord Hoffmann says it is.

MR CATTERNS: Yes, your Honour.

GUMMOW J: They say it is. That is their business.

MR CATTERNS: Well, for the purpose of English law that works for us, your Honour. But for our purposes, we would respectfully submit that Palmer, Olin and Kimberly-Clark and the words of the section, and the Dean report, show that excessive breadth ‑ ‑ ‑

GUMMOW J: I mean at one level this is not an unusual example, if one could put it delicately, of the English saying, “We might be part of Europe, we might have to do what they want, but we nevertheless can say we invented Magna Carta”.

MR CATTERNS: Yes. Well, as I submitted before lunch, your Honour, it is a case of their Lordships deciding that since fair basis no longer existed they had to invent it. But his Lordship goes on:

In the 1949 Act, this function was performed by another ground for revocation, namely that the claim was not “fairly based on the matter disclosed in the specification”. The requirement of sufficiency was therefore regarded as serving a narrower purpose.

Your Honours, as here, the Full Court held in Kimberly-Clark. Sufficiently – that was when there was, what his Lordship here calls the “one way” – if you enable one way, that was enough for sufficiency. I beg your pardon, it is – I am sorry.

The requirement of sufficiency was therefore regarded as serving a narrower purpose. But the disappearance of “lack of fair basis” as an express ground for revocation does not in my view mean that general principle which it expressed has been abandoned. The jurisprudence of the E.P.O. shows that it is still in full vigour and embodied in articles 83 and 84 of the EPC, of which the equivalents in the 1977 Act are section 14(3) and (5) and section 72(1)(c).

Your Honours, if I may quickly come to the other aspects of his Honour’s reasons, at page 47, line 30, his Lordship says – and we would apply this mutatis mutandis:

The requirement of an enabling disclosure in a patent application is a matter of substance and not form. Its absence should therefore be a ground not only for refusal of the application but also for revocation –

The same question for priority, although they are different questions. Your Honours, on 48, at line 25, looking at a European office decision, his Lordship says:

the applicants had invented a general principle for enabling plasmids to control the expression of polypeptides in bacteria and there was no reason to believe that it would not work equally well with any plasmid, bacterium or polypeptide. The patent was therefore granted in general terms.

Then that was interpreted in the UK:

that it was a general rule of European patent law that an invention was sufficiently disclosed if the skilled man could make a single embodiment.

Followed in the hepatitis C case, Chiron –

although I think –

in Justice Aldous’ judgment –

some surprise that the EPO should have adopted such a mechanistic and impoverished approach to the concept of enabling disclosure.

Your Honours, the position we now have in Europe is ‑ ‑ ‑

GUMMOW J: What do you say about the bottom paragraph on 48?

MR CATTERNS: Yes, that is one of the crucial aspects, your Honour. He says, in fact, the principle in the UK is:

that the specification must enable the invention to be performed to the full extent of the monopoly claimed.

Then there is this exception for principles capable of general application that Justice Rich, for example, notes. We would respectfully submit, your Honours, that all of these matters are looked at as substance. There is no subcategory in section 40(3) saying “Provided that in the case of a discovery of a principle”, et cetera. It is a question to be looked at as a matter of substance.

Then on the question of support for the claims at 49, if I may skip to page 50, this is the crucial aspect that answers your Honour the Chief Justice’s question in short. At line 42, the question is:

not whether the claimed invention could deliver the goods, but whether the claims cover other ways in which they might be delivered –

so his Lordship has transmuted the English question back into fair basis –

ways which owe nothing to the teaching of the patent or any principle which it disclosed.

There is a need:

to give protection against other ways of achieving the same effect “in a manner which could not have been envisaged without the invention”. This shows that there is more than one way in which the breadth of a claim may exceed the technical contribution to the art embodied in the invention. The patent may claim results which it does not enable, such as making a wide class of products when it enables only one of those products –

and then we rely on that, your Honours –

and discloses no principle which would enable others to be made. Or it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention.

Your Honours, that language is completely reminiscent of Justice Dixon and Justice Rich in Palmer.

One example of an excessive claim . . . Morse . . . was the first person to discover a practical method of electric telegraphy –

I will show your Honours quickly. His claim 8 claimed any method of transmitting words, letters or figures by wire. His earlier claims were limited to his very express detailed description but claim 8 was to any method. The US Supreme Court in 1854 held that that was too broad.

That is still the law in the United States. Your Honours, we would also rely on the British United Shoe Case, Justice Parker. That is another good example:

the problem was simply how to do automatically what could already be done by the skill of the workman. On the other hand, the principle which the inventor applies for the solution of the problem is the capacity of a cam –

as here –

to vary the relative position of two parts of a machine while the machine is running. Assuming this principle to be new, it might be possible for the inventor, having shown one method of applying it to the solution of the problem, to protect himself during the life of his Patent from any other method of applying it for the same purpose, but I do not think that the novelty of the principle applied would enable him to make a valid claim for all means of solving the problem whether the same or a different principle were applied to its solution.

Your Honour, we respectfully submit that that applies, mutatis mutandis, to the lock release means in our present case. At page 52, what was described in the invention was expressing eukaryotic – that is a cell that has a nucleus to contain a DNA – in a prokaryotic host – that is like a bacterium which has no nucleus. I do not need to take your Honours to it. His Lordship concludes that the patent “did not support the invention as claimed”. His Lordship mentions the policy which can be found expressed in many of the cases, including Morse, that “care is needed not to stifle further research”, et cetera. Your Honours, may I go quickly to Olin ‑ ‑ ‑

GUMMOW J: Just before you do that, can you just go back to page 51, please.

MR CATTERNS: Certainly.

GUMMOW J: The reference to O’Reilly v Morse.

MR CATTERNS: Yes, your Honour.

GUMMOW J:

“Before Morse’s invention, the scientific community saw the possibility of achieving communication by the ‘galvanic’ current but did not know any means of achieving that result.”

The evidence here was that a number of people had a number of ideas about how to cope with this problem with the locks. The inventor of the Lockwood patent discovered one means or came upon one means. Why do you say he has attempted to claim all the other means of solving this problem?

MR CATTERNS: That is what our friends claim. Your Honour, the problem is that the outside actuator does not release the lock and integer 6 is lock release means responsive to the outside actuator to release the lock.

McHUGH J: Is the vice of the claim, according to your submission, in the last clause in claim 1 that is set out on page 13?

MR CATTERNS: Yes, your Honour. That is what we have been calling integer 6. Let me check it.

GUMMOW J: It is.

MR CATTERNS: Yes, your Honour, thank you. Responsive to the outside actuator could be something fancy like the biosecurity I put to your Honours, but is, in the usual case, the key.

Your Honours, I do not need to go back to his Honour Justice Jacobs’ decision other than to state that our submission is, as our friends noted, there was a consistory clause, that is not a stray phrase, and then there was a discussion of the whole process, and that was what was described.

GUMMOW J: But the sixth integer is lock release means.

MR CATTERNS: Yes, your Honour.

GUMMOW J: Which is responsive.

McHUGH J: If they had substituted outside key, you would have no problem. Is that right?

MR CATTERNS: No, your Honour.

McHUGH J: You would still have a problem.

MR CATTERNS: Yes, because lock release means which is responsive to set operation of the second actuator – the second actuator is the outside key.

McHUGH J: I am sorry, yes.

MR CATTERNS: At this stage, it could be just a knob, so as to thereby render – only later on does it become a key. But what our problem is, they give us one, but they claim every lock release means whereby when you put the key in – this is the real problem – when you put the key on the outside, it undoes the inner deadlock, and they have given us one and they have claimed - your Honour can see how perfectly broad that terminology is - any lock which possesses in combination that means.

HEYDON J: What should it have said to be valid in the light of the first two pages of pages of the specification?

MR CATTERNS: It should have said something like what appears on page 9. Lock release – they should have set down the five integers and then said:

Lock release means –

consisting of or comprising a cam projection –

arranged to have direct influence on the cam retainer means –

etcetera.

HEYDON J: But if on page 4, lines 10 to 12, that is an invention, then what is wrong with claim 6 just matching the words?

MR CATTERNS: Because, your Honour ‑ ‑ ‑

HEYDON J: Whether it is an invention is – there are other battles that have been fought and may be ‑ ‑ ‑

MR CATTERNS: But does your Honour mean ‘invention” in the sense of something that is inventive? That is the trouble. “Invention”, this Court held in Kimberly-Clark means ‑ ‑ ‑

HEYDON J: In the sense of a means of achieving a result.

MR CATTERNS: Well, your Honour, that is a statement of a general result. That states the result. The result is that – reminding your Honour that the problem is key operation will not release the lock and then what is stated at page 4, line 10, is key operation will release the lock.

HEYDON J: I can understand many reasons and many grounds under the Patents Act why you might attack page 4, lines 10 to 12, but if those grounds all fail, I do not for myself see how section 40(3) is an avenue of success for you.

MR CATTERNS: Your Honour, we are not saying there is anything wrong with those lines per se. We just say they do not provide support for a claim to any means because there is no full description ‑ ‑ ‑

HEYDON J: But they are word for word, the same.

MR CATTERNS: Yes, your Honour, but we have been attempting to submit that the requirement of section 40(3) can be rendered utterly meaningless by printing them twice if they match. They were word for word the same it appears in Olin and in CCOM, the character identification means may take any form, held that the claim should be restricted was too broad because it was not restricted to the description of eight character strokes. So, your Honour, it has always been a question of substance and that is the question in the appeal as we see it.

GUMMOW J: What is the substance?

MR CATTERNS: Your Honour, the substance is that the matter described – “described”, a word that has been utterly central to the idea of consideration since 1623 – is a particular lock release means. You cannot elevate a general suggestion, we accept in matching words, into support for claims to any lock which possesses such meaning. As Lord Hoffman was saying, as Morse’s Case says and as Palmer and Olin say, you cannot get – it has always been the case that merely describing one physical thing, sure, you say, and it has this result, it rakes hay or it does not let you claim the result.

McHUGH J: Yes, but the problem I am having at the moment is that your real attack is really based on what appears at page 4, line 10.

MR CATTERNS: Your Honour, that is not our real attack. That is our friend’s support.

McHUGH J: That is what you are really complaining about, that it is couched in too general terms. It is not really a fair base case, it is really a case about what appears at line 10, on page 4.

MR CATTERNS: It is a case about that, your Honour, but the reason is this. We say the claim is a broad as appears on page 13 in those lines your Honour referred me to.

McHUGH J: I do not see why it cannot be, if that is the consideration that you have given to the public. Your argument is that that is not really the consideration you are giving to the public.

MR CATTERNS: But, your Honour, we respectfully submit that looking at it as a matter of substance, not form, the consideration that is truly given here, to use Justice Fullagar’s phrase, is the description of a fine working lock release means at pages 9 and 10. But what the patentee then tries to do to broaden their monopoly without giving any additional consideration is to make that assertion at page 4, lines 10 to 12. We do not say there is anything particularly wrong with those lines, your Honour. We just say they do not add anything.

HAYNE J: But you do say that that is not the premise for the argument, do you not?

MR CATTERNS: Yes, your Honour.

HAYNE J: The argument against you takes as the premise the three lines appearing at page 4, line 10 and following, and you challenge the premise.

MR CATTERNS: Yes, your Honour.

HAYNE J: And how do you do that under the fair basis?

MR CATTERNS: Because, your Honour, we say looked at as a matter of substance, this is not a full description of an invention. That is what the matter described is required to be.

HAYNE J: And are not those issues concluded against you at trial some, maybe all of them still open in the Full Court unresolved, but were not those issues concluded against you at trial?

MR CATTERNS: No, your Honour, that is the issue we won at trial. His Honour held that these matching words do not provide fair basis. That is exactly what his Honour held.

McHUGH J: Well, I know he held that, but it is the premise. Section 40 directs you to the matter described in the specification.

MR CATTERNS: Yes, your Honour.

McHUGH J: And the specification has to describe the invention fully and page 4, line 10 purports to describe the invention fully. Now, you have lost on that argument, that 40(2)(a) argument. If you lose on that, how can you succeed on the 40(3)?

MR CATTERNS: Because, your Honour, we are not saying ‑ ‑ ‑

McHUGH J: I know what you want to say, you want to say do not ‑ ‑ ‑

HAYNE J: Do not worry about that.

McHUGH J: You see, it has to be “fairly based on the matter described”.

MR CATTERNS: Yes, your Honour.

McHUGH J: Well, the matter is described in page 4, rightly or wrongly.

MR CATTERNS: Well, your Honour, what that says is, “This is my asserted improvement”. It says:

According to the present invention, a latch assembly –

It does not say the invention is characterised; it says:

a latch assembly of the foregoing kind –

admittedly typical –

is characterised in that it includes lock release means ‑ ‑ ‑

GLEESON CJ: Is your argument that it describes the invention over fully?

MR CATTERNS: Over broadly, your Honour, but not sufficiently fully. Fully means tells you how to work it. Your Honour, the old phrase in the 1903 Act ‑ ‑ ‑

HEYDON J: This is 40(2)(a); this is not 40(3).

MR CATTERNS: That is right, your Honour, but what is the matter described in 40(3)? The matter described in the specification must include at least the full description of the invention. It might include something else such as an assertion about principle, but they must be interrelated and they always have been, I respectfully submit. But, your Honours, this is a ground, fair basis, which apart from having support in the Full Court before the – …..before the present Act, or the equivalent of the present Act, and since the present Act, where the court did look at it as a matter of substance and it is a ground of examination, opposition and revocation.

We respectfully submit that it would be a remarkable result if a patentee could get over the requirement that the claim be fairly based simply by making an assertion of the kind at page 4, lines 10 to 12, and that is what each of the judges below held.

McHUGH J: But maybe they looked at it from the wrong angle.

MR CATTERNS: That is what we are arguing about, your Honour.

McHUGH J: It should have been in a different field of discourse.

MR CATTERNS: But, your Honour, we could not bring an argument under 40(2)(a) because this Court says that if you teach one embodiment, you satisfy 40(2)(a). That is the passage we took your Honours to in Kimberly-Clark. And so, where is the content of the idea of excessive breadth found?

GLEESON CJ: I think this is the point you made based on Lord Hoffmann’s speech.

MR CATTERNS: Yes, your Honour. Where is the concept found? It has to be found in fair basis. As the Dean Committee said, “We recommend fair basis to prevent excessive breadth of claim”, not sufficiency, not 40(2)(a), but fair basis as to what deals with excessive breadth of claim. Your Honour, picking up his Honour Justice Hayne’s approach, we compare the claim with the description later. The description later, we submit, plainly does not provide a fair basis. Then our friend says, “But my assertion, my message” at page 4, line 10 to 12, “provides it”. We respectfully submit, it provides nothing additional. It is the merest assertion and it – we respectfully submit that for the – I think I will just be making an in terrorem argument again, your Honours.

GLEESON CJ: Yes, I think we have this point.

MR CATTERNS: Without taking your Honours to it, may I remind your Honours of a passage in - I think it is Lord Roche. At page 353 there is just a short quotation ‑ ‑ ‑

GUMMOW J: Of Mullard?

MR CATTERNS: Yes, your Honour. Just that business, your Honours, of saying ‑ ‑ ‑

GUMMOW J: If you are going to get into Mullard, there has always been a view, has there not, that that was a meritorious invention which fell foul of these technical rules?

MR CATTERNS: No, your Honour, because claim 2 just owed nothing to the invention. It just had four ‑ ‑ ‑

GUMMOW J: Was there not an application later to amend the claims after the House of Lords and the Court of Appeal?

MR CATTERNS: Yes, your Honour, I think it is called British Belmont.

GUMMOW J: There was some anxiety expressed that there had been some unfairness, anyhow ‑ ‑ ‑

GLEESON CJ: What is the page?

MR CATTERNS: The passage was at 353, your Honour, quoting from a judgment by Lord Loreburn in an earlier case. This is actually dealing with the question of whether it was right for the court, in effect, to raise this matter of its own motion even if the pleadings did not cover it properly. Line 18:

since the Crown as the grantor of monopolies is concerned, the matter is one of which the Court can of its own motion take notice.

Then, your Honours, perhaps in a different context – this is apt to the idea that one could support a claim just by mere words:

The Lord Chancellor said: Some of those who draft specifications and claims are apt to treat this industry as a trial of skill in which the object is to make the claim very wide upon one interpretation . . . This is all wrong. It is an abuse which a Court can prevent. Ambiguity . . . is but one form or species of the genus wrong description. Excessive width of claim which is here in question is another –

Your Honours, if I can quickly then please go to Olin ‑ ‑ ‑

GLEESON CJ: Yes, and we need to leave time for Mr Bannon to reply.

MR CATTERNS: Your Honours, I was only going to be another five minutes. In 180 CLR at 239 his Honour the Chief Justice treats the question as a matter of substance. I remind your Honours that, as our friend pointed out, there was a consistory clause with matching words. His Honour at the bottom of 239 says:

The critical question which in my opinion remains is whether the product claims in question are fairly based on the disclosure of the specification and do not exceed it, or, as it is put, are not too wide, having regard to the terms of the application.

So his Honour engages in an examination of substance. A product claim can be valid if fairly based on the disclosure and it does not claim more than that disclosure. Then there is a passage quoted by the High Court in Kimberly-Clark. Then his Honour says:

My brothers, in their reasons, set out the relevant considerations in determining whether a product claim is fairly based on the disclosure.

His Honour relies on their Honours, even though his Honour disagrees in the result. His Honour says:

this claim is not limited to a product –

but he finds, I add, as a matter of substance, that that was fair enough there because the appellant made two inventions and disclosed them, not because he said in two or three sentences, “I will claim anything that achieves this result”.

Your Honours will see at page 241 that his Honour’s analysis is that in fact there was an invention in the product, and that is where his Honour is in dissent. Then, your Honours, at 242 there is a passage that is apt to the matter raised by his Honour Justice McHugh:

The claim [claim 10] is not limited to the production ‑ ‑ ‑

GUMMOW J: What is the significance of the division of the claims between product and process claims for this question of disclosure?

MR CATTERNS: Your Honour, there was a debate in the early days about whether or not products per se were protectable by patents. I think that may be part of it.

GUMMOW J: Yes, but in this patent there were both, were there not?

MR CATTERNS: Yes, your Honour, there were both, but held by the majority that what was really described was a new process ‑ ‑ ‑

GUMMOW J: Not a product.

MR CATTERNS: ‑ ‑ ‑ not a product per se. Whereas claim 17, in effect, although for a product, was limited to the process. It was produced according to the process. His Honour says – this is why I stress in answer to his Honour Justice McHugh – after the quote of the claim:

The claim is not limited to the production of the stated physical characteristics by compressive deformation –

and that is the ratio of the other Justices –

But that, in my opinion, does not mean that a claim for the resultant physical characteristics, if suitably described, was not fairly based on the disclosure.

GUMMOW J: And how was it described here?

MR CATTERNS: How was it described there?

GUMMOW J: Yes.

MR CATTERNS: His Honour says – I should have gone back earlier, your Honour. He says it was described by saying, back at 241:

No one had ascertained and made public those physical characteristics of a plastic structure which would make it effective and reusable.

Your Honour, it is back at 240, and the claim is:

“characterized by the fact that the wall of the structure has been formed in the solid state at an operative temperature below the crystalline melt –

but then the other one was just a result –

to provide an increase in tensile strength of the polymer in said wall at a point remote from the base of at least twice the tensile strength of the polymer in said base.”

The majority held that it was not fairly based because it was not limited to the compressive deformation of the method. I do not need to take your Honours to that in detail, though may I respectfully submit that their Honours’ reasons assist us.

Finally, if I may take your Honours to his Honour Justice Dixon. Sorry, your Honours, in Palmer v Dunlop (1937) 59 CLR 30, his Honour Justice Hely quoted the passage from Justice Rich’s reasons. His Honour Justice Dixon, in the passage relied on by Justice Hely, derives a ratio from Mullard v Philco at the bottom of page 76, but I should go to the middle. It says:

The chief difficulty in the patentee’s way is the form of his claims.

and if your Honours would look at the second last integer –

means associated therewith disengaging the lining from the mould –

We would submit that is similar to the one we are arguing about here.
At the bottom of the page:

Lord Roche describes as follows the actual point which the case decides: – “The substance of the objection to claim 2 of the plaintiff’s specification – ”

was limited as described, your Honour. Line 8:

In short the claim was more extensive than the invention and was, as it is compendiously expressed, too wide and therefore invalid.

Then his Honour refers to another principle from the Ingersoll Case which is changing your ambit of claim by borrowing a gloss from elsewhere and says:

The first claim in the present patent appears to sin against both these connected principles. It describes the function performed by various integers present in the machine disclosed by the specification. But it seeks to cover every means by which these functions separately conceived may be accomplished.

Then about eight lines down from the bottom:

For the actual means –

said the patentee –

provided by the mechanism for lifting the liners from the mould case there is substituted “means associated therewith disengaging the lining from the mould”. This attempts to take all means available in the present, past and future -

Your Honours, that is exactly the case we have here. We would respectfully submit that the question of principle involved in this case is whether our learned friends can say that it is foreclosed by an assertion of the type at page 4, line 10.

If it is foreclosed by an assertion of that kind, then our friends will win. If it is not foreclosed and it is a matter of substance, then we would respectfully submit there is no occasion for the Court to interfere with his Honour Justice Hely’s reading of this as a matter of substance, nor that of the Full Court which expressly upheld his Honour Justice Hely’s reasoning on the point. So we would respectfully submit that both courts were right and the appeal should be dismissed.

GUMMOW J: There was a stay here, was there not?

MR CATTERNS: Yes, there is, your Honour. I think it is pending the determination by this Court.

GUMMOW J: What would happen if in the ultimate event here it had to go back to the Full Court?

MR CATTERNS: I beg your pardon, your Honour?

GUMMOW J: What would happen to the stay if we decided it had to go back to the Full Court?

MR CATTERNS: It would have to continue, your Honour.

GUMMOW J: But what would we do?

GLEESON CJ: I think you were telling us that the terms of the stay would operate to continue it, is that right?

MR CATTERNS: I had marked it.

HEYDON J: It is page 217.

MR CATTERNS: I think your Honour made that stay. I think our friends would need to apply to the Court for an extension of the stay perhaps instanter.

GUMMOW J: That is what worries me.

MR CATTERNS: We would consent to an extension of the stay. If your Honours remitted it, we would consent to an extension of the stay pending the determination by the Full Federal Court or further order upon our learned friends continuing their undertakings.

GLEESON CJ: Thank you. Yes, Mr Bannon.

MR BANNON: Just on the terms of that stay, that was on the assumption that it was needed because the patent had been revoked. The only ground so far decided on which it should have been revoked, apart from the novelty claims, is the fair basis argument. So that, if we were successful, the order for revocation on one view should be set aside, albeit there are some outstanding issues on the appeal, but the need for the stay should not be heard.

GUMMOW J: I thought there were some outstanding issues under section 40, are there not? There is a Sami Svendsen point, is there not?

MR BANNON: That is right, yes. But so far we are winning, that is the only point I was seeking to make, but perhaps we will sort out between ‑ ‑ ‑

GUMMOW J: What I am suggesting to you is you might not in the end win.

MR BANNON: Quite, but the occasion for the stay was because at that point the patent was to be revoked but for a fair basis ground. Firstly, in relation to the reference to Mr Blanco White’s ‑ ‑ ‑

HAYNE J: If the stay is to continue, it is suggested that it should be on undertakings from your side. At some point you will need to give consideration as to whether those undertakings are offered.

MR BANNON: Yes.

HAYNE J: Not now, but at some point.

MR BANNON: Yes, we will give some consideration to it. So far as Mr Blanco White’s reference to the consistory clause, that was picked up in Welch Perrin v Worrel 106 CLR 588. Can I just hand up copies of that judgment of this Court.

GLEESON CJ: Thank you.

MR BANNON: The particular reference appears at page 612. In the middle of the page one will note the reference to:

in a modern specification one might expect to find a general description of what the inventor asserts his invention consists of –

It has not been suggested that the use of the word “assert” is a pejorative use or has a pejorative consequence. That is in the context of an earlier statement in the joint judgment at 609 that the first task in dealing with questions of validity is to construe the specification as a whole and work out what is said to be the invention. That is what the Court did and came to a conclusion in this case at 616 of what was the essence of the invention.

It is against that description that one tests the various claims of invalidity. Here your Honours know what we say was the essence of the invention so described. Against that you test, for example, the ground of insufficiency, which is in our favour at the moment. So it is simply not open to my learned friend to continually say that there is not a full description of the invention on the pages of the patent and it is not open for him to say it amounts to mere assertion because it constitutes a full description.

Secondly, the journey which we have had through Biogen v Medeva and a whole series of old cases which refer to decisions, not on separate grounds, has taken us on a journey which has travelled far beyond the injunction of Sir Garfield Barwick, accepted by this Court, to the effect that the task in fair basis is not to be resolved by considering whether a monopoly in the product would be an undue reward for the disclosure; rather, it is a narrow one. Practically everything my learned friend has submitted, with the greatest of respect, invites this Court to engage, under the rubric of the adjective “fair”, in an exercise of determining questions of undue reward.

GUMMOW J: What do you say about Olin, the significance of the consistory clause in Olin and the actual holdings in Olin?

MR BANNON: The consistory clause in Olin was followed by clear statements that – and this appears from the setting out in Justice Jacobs judgment – the invention which was being asserted consisted of the process involving the two elements of compression and temperature and products developed by those two processes and hence, reading the specification as a whole, the conclusion was that the disclosure of the invention being asserted was one which had those two elements both in the process and products.

If one reads the judgment of the Full Court and, indeed, Justice Jacobs, that is the construction, we submit, they place on what is the disclosure in the body of the specification. So, in other words, you can have like one did in CCOM some statements which words, which might on the face of it provide support, but the task of the court, and this is the meaning to be given to real and reasonably clear disclosure, the task of the court is to construe the specification and determining what is being conveyed as being the real invention and the fact that I use the expression “stray words” or words which are inconsistent with what is the clear message of the specification will be ignored and that is what happened in Olin and Atlantis is another example of that and, indeed, Mullard v Philco is another example of that as well.

The appeal of my learned friend is really to say that there is a perception that this complaint cannot be forced into any other ground and therefore it must fit under fair basis. We submit the time honoured test applied by this Court means that one cannot stretch fair basis to do this work. That may suggest one of two things: he is looking at the wrong ground or, alternatively, the complaint which he makes is not one recognised under our patent law as being a proper complaint.

Biogen v Medeva has to be understood against the background where Lord Hoffmann is of the view that it was a requirement of English law that there be enabling disclosure across the whole width of the claim. That is not the law in this country and never has been, as made clear by your Honours in Kimberly-Clark.

The Morse Case bears no relation to any issue here. The width of the claim there was any means of transmitting telegraph signals in circumstances where there was a finding that there were many people across the countryside trying to do that, trying to work out a method, and the words of the claim, if one looks at the actual judgment, are almost in those terms. Hopelessly invalid under our law for a whole list of reasons, one of which would have been obviousness as a known desiderata.

My learned friend submitted that section 40(3) is to be determined by considering the full description of the invention. The words “matter described” mean the full description of the invention. That cannot be so as a matter of construction. Under 40(3) one is only entitled to look at the body of the specification. Under 40(2)(a) you can look at the whole specification, body and the claims. That is what Kimberly-Clark held.

Hence, it is not possible to construe section 43 as referring to the full description, because you are only looking at part of the material. It is not open, as my learned friend says, to characterise the description as a mere assertion in circumstances where it must be taken that the description satisfies section 40(2)(a).

Sufficiency has two elements. My learned friend, with respect, has concentrated on the second element, but there are two elements. One is fully describing the invention, including the best method known to the inventor of performing it. My friend’s concentration, with respect, is on the best method known to the inventor of performing it. The word “full” description has to be given its full meaning. Apparent gaps in information in the specification may be supplemented by the knowledge which it is inferred the skilled addressee brings to a reading of the specification: Kimberly‑Clark – I will confirm that reference – at paragraph 25.

Justice Hely found that it was not obvious to conceive of the idea of a combination consisting of the six integers of claim 1. He did not find, and the respondent did not contend, that having been told of that concept a skilled addressee needed to exercise invention to devise a suitable lock release means. Indeed, he found to the contrary: paragraph 17 of his Honour’s judgment.

GUMMOW J: What do you say about paragraph 236 of the trial judge’s judgment, after the surgery to excise the first two sentences? Mr Catterns says, putting them to one side, the next sentence and the one after that are perfectly orthodox.

MR BANNON: The sentence, however, the ‑ ‑ ‑

GUMMOW J: I agree with Mr Catterns’ submissions.

MR BANNON: Yes. That sentence cannot stand in light of his Honour’s construction that the invention disclosed, in the sense of asserted, is the broad form in terms of claim 1. That sentence can only be understood as saying his Honour is adding, by the use of the word “real”, some sort of additional requirement which suggests something more should have been said on appeal book page 4, some sort of substantive requirement. So his Honour is not applying the test in the time‑honoured way of interpreting the specification and asking what is being described as the invention.

GUMMOW J: You seem to be saying there is an element of self‑contradiction there?

MR BANNON: Yes.

GUMMOW J: Where is the earlier contradiction?

MR BANNON: Well, one has to go back to – giving your Honours the references - page 98 of the appeal book, 99 where his Honour goes through and says what the specification is described as the invention ‑ ‑ ‑

GUMMOW J: Paragraph?

MR BANNON: Paragraphs 14, 17.

GUMMOW J: Yes, I see.

MR BANNON: Paragraph 39.

GUMMOW J: Yes.

MR BANNON: And, indeed, immediately after the part on “Travelling beyond”, paragraph 247.

GUMMOW J: Yes.

MR BANNON: There is just no way of reading this specification other than this patentee is asserting that the essence of the invention is what appears on appeal book page 4.

HEYDON J: There might be cases where someone said something like appeal book page 4, but a reading of the whole specification revealed that it was like calling something which was not a lease a lease.

MR BANNON: Exactly.

HEYDON J: But you say that that self‑description is supported by a reading of the entire specification.

MR BANNON: Exactly.

GUMMOW J: Unlike Olin.

MR BANNON: Unlike Olin, not least of all the claims. The very fact that every claim except claim 33 is dependent on claim 1, which reflects appeal book page 4, so you would have to read the specification as a whole and come to the view that the invention being asserted was only claim 33, the preferred embodiment. You just do not get that message at all.

Another thing which could have been in the specification would be say, “Look, we all know this is a good idea to make the outside key operate the inside lock but the real problem is how you make it do that”. There is no wording to that effect, in which case then you would have claim 33 and you say the real invention was the way to do it. You do not have that message. That construction is not open.

We submit our learned friend’s submission does not give any content to the word “fair” which stands at the time‑honoured test. The gravamen of my learned friend’s submission is that the patentee, having disclosed a new inventive idea resulting in a new product should be exposed to competition by a copyist, ie, his client, who created the same product but with variations from the preferred embodiment and the preferred embodiment is limited not only just in relation to the lock release means, but also into the locking means, including a handle. The limitation is so narrow that his client should be free to do that, although prior to that disclosure in the patent it was not obvious for the skilled addressee to make any such product at all and even though the respondent called no evidence to say that any of the integers could not be made or could not be understood.

If the debate is to be elevated or lowered to an emotive level, we say what is fair about that result? Another assertion is that there is some stifling of invention. It may be accepted that it is conceivable in the future that there may be invented as an individual integer a new lock release means. Equally, there may be invented a new locking means. A person would be entitled to claim such an integer, being a locking means or a lock release means, a patent for that integer. They could not include it in our product without our licence as a combination, but the inspiration to create that new integer may well have come from our patent disclosing that here was a useful use for it. One does not know. There is no basis on which one could say our patent is likely to stifle invention; it is just as likely to encourage invention.

Can I give your Honours this reference: Blanco White, 5th Edition, paragraph 4-510. There is a discussion confirming that there has never been a requirement for a patentee to specify all the different potential embodiments. It also refers to the fact that it is recognised that alternative embodiments may be developed by others, at least of an integer which could result in the sort of patents I have just described.

We do not encourage this, but – obviously, we say there is no ground on which this patent is invalid, but much of the submissions which my learned friend refers to may be thought to more likely have been brought under headings such as “Ambiguity”, that there is an insufficiently clear disclosure of a particular integer. They never pursued that claim.

Could I give your Honours a reference to Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 in this Court. It is a case which discussed result claims which were permissible – I am not saying this is a result claim – in circumstances where the wording of the claim sufficiently describes the physical features of the integer, a matter taken up, I think, by your Honour Justice Gummow in Rescare in the first instance.

That argument was not run, but here the lock release means must be responsive to the outside actuator. The example my friend gave about Tom Cruise would fall outside this patent. It involved eye retina working on something next to a wall. It did not involve Mr Cruise attempting to grasp the outside actuator and do something with it to release the lock. Really, what we say is the real complaint that my learned friend has is obviousness. That is to say, it was obvious to conceive of the idea of putting these integers together. He failed on that ground.

The references to some old cases where they say you cannot have a patent for every way of doing a thing in circumstances that you have only invented one way and the various different ways that is put – they are statements which are all made in the context of a situation where they did not have the separation of grounds which we do now. Today, under the modern Act, one looks at each of these grounds and one asks in relation to this case a combination, Is it something which is new or obvious?” and you answer that question. If it is obvious – it will be obvious, for example, if it is seeking to claim something that everyone has been trying to do. If it is not something that everybody has been trying to do, if it is a new idea, a new combination of features, then it is inventive and it is a valid invention. That answers the sort of query, the sort of area, which under the old cases asked the question about, “Is it fair to claim all ways?”

This Court, with respect, has been assiduous to ensure that the grounds of invalidity under the modern Act are treated separately and distinctly to create an environment where there is certainty in which one can understand the grounds of objection and the ways of dealing with them. Ramset was an example of that, Kimberly-Clark was another example of that and, we submit, the opportunity arises in this case to invoke a similar discipline. May it please the Court.

GLEESON CJ: Both sides can let us have written submissions within 14 days on what they say ought to be done in relation to the stay orders. We will reserve our decision in this matter and we will adjourn until 10 o’clock tomorrow morning.

AT 4.11 PM THE MATTER WAS ADJOURNED

[2004] HCATrans 332

Key Legal Topics

Areas of Law

Commercial Law

Contract Law

Civil Procedure

Legal Concepts

Appeal

Breach

Damages

Estoppel

Injunction

Remedies