Rescare Limited v Anaesthetic Supplies Pty Limited

[1994] HCATrans 69

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
              Sydney        No S75 of 1994

B e t w e e n -

RESCARE LIMITED

Applicant

and

ANAESTHETIC SUPPLIES
  PTY LIMITED

Respondent

Application for special leave
  to appeal

MASON CJ
DEANE J
TOOHEY J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 14 OCTOBER 1994, AT 10.24 AM

Copyright in the High Court of Australia

MR D.K. CATTERNS, QC:   May it please the Court, I appear with my learned friend, MS J.R. BAIRD, for the applicant.  (instructed by Williams Niblett)

MR J.M. EMMERSON, QC:   If the Court pleases, I appear with my learned friend, MR J.T. GLEESON, for the respondent.  (instructed by Freehill, Hollingdale & Page)

MASON CJ:   Mr Catterns.

MR CATTERNS:   May it please the Court.  The question of fair basis, we submit, occurs generally speaking in the case of every patent, and the question of fair basis on a provisional specification, or a convention application which is effectively the same, occurs in most patents, both at the stage of grant in the patents office and in patent litigation.  So, we submit that it is a question of public importance. 

Our principal submission today is that there is now a clear division of opinion amongst the justices of the Federal Court, and in particular in three decisions, on the proper test to apply in determining fair basis, and we concede that the principal difficulty we have today is to convince the Court that the question arises conveniently in the instant case.

MASON CJ:   Yes.

MR CATTERNS:   Your Honours, we do submit that it does, and if I could just say what we say the distinction is, or the difference of opinion is between the courts, and then attempt to show that it arises on the judgments in the present case.

Your Honours, in the Yamazaki case, the two written judgments of Justices Lockhart and Wilcox, with whom Chief Justice Black agreed, Their Honours put forward a test of fair basis that the ‑ Your Honours remember the statutory words are that a claim of a complete specification must be fairly based on matter disclosed in the provisional.  But Their Honours put forward a test in Yamazaki that the provisional must disclose the essential elements of the invention claimed. 

Now, in addition to saying that the provisional must possess the essential elements of the claim, in the present case, Rescare, the court has gone further and required a reverse test.  So it has required that first test, that the provisional possesses the essential elements, and now it says that the claim must possess the essential elements of the provisional ‑ the mirror image, and we submit ‑ and I will take Your Honours to it in CCOM, the third of the cases, which was argued before judgment was handed down in the present case, but the decision was not handed down until after judgment in the present case ‑ we submit that the Full Court in that case has expressly disagreed with both of the two approaches adopted here.

MASON CJ:   Are you right in saying that Yamazaki laid down the essential features test?

MR CATTERNS:   Yes, Your Honour, we submit.

MASON CJ:   Because, I thought Justice Wilcox certainly subscribed to that test in Yamazaki. 

MR CATTERNS:   Yes, Your Honour.

MASON CJ:   My impression had been that Justice Lockhart was equivocal.

MR CATTERNS:   No, Your Honour, with respect, he used exactly the same words in agreeing with Justice Wilcox.

MASON CJ:   He used the same words, but did he not use other words, in another passage in his judgment?

MR CATTERNS:   I do not believe so, Your Honour.  I may be wrong.  Do Your Honours have the judgment there?

MASON CJ:   Yes.

MR CATTERNS:   In 27 IPR at page 93, line 30, having discussed other questions:

It remains to consider the question whether or not the claims in the petty patent specifications are fairly based on the Japanese specifications ‑

which are analogous to a provisional ‑

I have read the reasons for judgment of Wilcox J on this question and agree.....with his conclusion that none of the Japanese specifications fairly described the essential features of the invention disclosed ‑

and they are precisely the words His Honour Justice Wilcox uses at 97, line 44 ‑ ‑ ‑

MASON CJ:   Yes, I realise that, but I had thought on the previous page and earlier on page 93, His Honour was expressing himself in terms of what might be described as the broad description test, favoured in Mond Nickel, and referred to by Justice Gibbs in the case in this Court.

MR CATTERNS:   Your Honour, His Honour certainly uses that phrase at line 10, I do not disagree ‑ ‑ ‑

MASON CJ:   It seemed to me that one might not be accurate in saying that Justice Lockhart clearly subscribed to the test as formulated by Justice Wilcox.  In other words, you look at the judgment, he seems to have been having a bit each way.

MR CATTERNS:   Well, Your Honour, perhaps that is right, with respect, but in the instant case, His Honour Justice Lockhart, although he, in the earlier part of his reasons which I will take Your Honours to now, does refer to the proper authorities which contain the proper tests, the way His Honour treats the present case, we say, shows that he is using the essential element test, both in the way of testing whether the provisional possesses the essential elements of the claim, and vice versa, which is yet a further development of that.  And that, we submit, requires such an exact correspondence between the claim and the provisional as to leave no room for the sort of development that the notion of filing a provisional is all about.

Your Honours, Justice Lockhart’s discussion of fair basing begins at page 174 of the application book, and His Honour sets out appropriate authorities and principles, on page 174, including what Blanco White says about developing the invention.  At the top of 175, the possibility of improving and perfecting the invention as we say here, the inventor did, between the rather rudimentary set‑up he had at the provisional stage.  Line 35 on page 175:

an opportunity for the development and precise expression of the invention foreshadowed in the provisional.

That is all very fine, Your Honours.  That then goes to page 176, where His Honour’s analysis of the present case begins, line 30 ‑ and this is precisely the argument that, I submit, His Honour is following wrongly:

The appellant argued that none of the relevant claims in the complete specification was fairly based on the provisional specification because none of the essential integers of the invention claimed in the complete specification can be gleaned from the provisional specification.

That is what we submit is the Yamazaki error.  His Honour then goes on, and he sets out at the top of page 177 the two forms of the invention that are described in the complete ‑ which plainly, Your Honours, relate to nostril attachments, which are narrower than the nose piece that we ultimately claim.  But the question is whether the latter is fairly based on this matter and all the rest of the matter in the provisional.  His Honour goes on ‑ I do not need to take Your Honours through that on 177. 

Then, on 178, line 30, His Honour gets to the nub of what Professor Sullivan in fact invented.  Just stepping back, Your Honours, what he invested was a new way to treat a very bad disease, and his insight was that if you get air into the nostrils ‑ into the nasal passages ‑ at above atmospheric pressure, it will keep them open, if that pressure is up throughout the breathing cycle, including breathing in, you will keep the nasal passages open and you will not suffer this disease.  At line 37 His Honour says:

That is the substance of the alleged invention.

I take His Honour to be meaning the essence of the alleged invention, although His Honour does not use that word.  His Honour says, rightly, at the bottom of 178:

The provisional specification must be read as a whole; but if one puts aside the forms.....there is very little left to describe the invention.

He goes through it a bit.  At line 21:

In the absence of the forms or the example, there is no description of the essential elements of the invention.

His Honour is looking for essential elements.  Then His Honour, having said there is no ‑ other than in the forms there is no description of the essential elements, His Honour then looks for the elements in claim 1, at line 30.  Then His Honour says, at the bottom of 179, rightly:

It is necessary to take the claims of the complete specification and compare them with the whole of the provisional ‑

Then a strange thing occurs, Your Honours, which we submit is the reverse essential elements test, because His Honour says, the provisional talks of two nasal tubes, et cetera:

One cannot glean anything like this from claim 1 of the complete specification.

So, His Honour is now starting to say, something is of the essence of the provisional ‑ something is wrong if it is not an element of the claim.  We submit that is quite the wrong approach.  At the bottom of page 180, line 40, discussing nostril attachments:

They are.....disclosed in the provisional specification as part of the essence of the alleged invention.  They are not a feature of the complete specification or any of its claims. 

As a matter of fact, that is not right, because claim 5 does claim nostril attachments, but that is not the point.  His Honour is here going at it the wrong way round and saying, something that is the essence of the provisional is not present in the claim.  We submit that is requiring, in effect, an exact correspondence between the two.  Then, at the top of page 181:

According to the provisional specification the reason for the air which is received into the patient’s nose not escaping is that there are two tubes ‑

Well, as a matter of fact that is not right.  The reason is that there is a seal, as His Honour goes on to note.  Line 15:

But the device disclosed in the complete specification does not provide for a seal around the patient’s nose ‑

That is wrong, with respect.  It claims a nose piece releasably, sealingly attached.  That is precisely what is claimed.  And then there are some other requirements of precise correspondence; even down to whether it is made out of surgical grade silicon rubber, and that is plainly not part of the invention.  But, His Honour is here criticising a lack of correspondence.  The old test before 1952 was conformity.  His Honour is, in effect, requiring perfect conformity between the two documents.  Then, Your Honours, trying to make good what I have been saying, that His Honour is here adopting that Yamazaki approach, going back the other way ‑ ‑ ‑

DEANE J:   That is not really quite fair though, is it?  I mean, His Honour is not ‑ I appreciate what you say about the accuracy, but His Honour is not requiring perfect conformity; His Honour is seeking to demonstrate an absolute lack of any conformity and, if, in demonstrating that, you refer to some minor things, it simply is inaccurate to say that you are requiring perfect conformity.

MR CATTERNS:   Well, Your Honour, with great respect, if His Honour were doing what Your Honour has put to me, demonstrating the lack of any conformity, His Honour has not done it fully, because what His Honour would look at ‑ ‑ ‑

DEANE J:   Well, that might be a criticism but, all I was pointing out is that it is one thing if His Honour had simply taken a detail and foundered on it, but that is not what His Honour is doing at all.

MR CATTERNS:   Well, Your Honour, I do submit that in the whole of these reasons, and in the passages I will also come to, that is precisely what His Honour is doing.  His Honour is saying, “Here is something which is the essence of the provisional.  It is not present in the claim”.  Including those items there on that page, Your Honour, and if I may go on attempting to make that good, but His Honour also goes the reverse way:

The essence of the invention must be present in each of the forms described in the provisional specification. 

At the bottom of the page:

the provisional must describe the invention.  It is required to do so by s.39 ‑

May I just remind Your Honours that failure to conform with section 39 is no ground of revocation.  Failure to comply with section 40 is a ground of revocation, but particularly in looking at Justice Sheppard’s reasons, that is no ground of revocation.  Line 10, one must look at the two forms ‑ on the next page 182, Your Honours:

With the claims in suit the nostril attachments are abandoned.....so the claims cannot be fairly based.

We respectfully submit that that must be a wrong approach.  His Honour then rejects two other arguments on fair basis.  And then he goes to claim 9.  Now, Your Honours will remember that our claims are of two types.  They are apparatus claims, which are the claims for an apparatus, including a nose piece, tubes, a variable restriction device, and so on.  But a vital aspect of this patent is its method claim, and, almost 100 pages of Their Honours’ reasons deal with the patentability of such claims.  But, our method claim is rejected in a single sentence, Your Honours, at bottom of page 184, line 36:

claims 9 and 11.....are in form and, in my opinion, in substance method of process claims.  Claim 9 abandons the nostril attachments which are of the essence of the provisional specification, so it cannot be fairly based on it. 

So, that is requiring claim 9 to possess an essential integer of the apparatus in the provisional, and we respectfully submit that whatever one can say about the apparatus claim, when the method is getting the air in at pressure, confining the patentee to one precise element of the description in the provisional is plainly wrong.

MASON CJ:   Now, Mr Catterns, is your difficulty not this, that, notwithstanding that you can point to various passages which indicate that one or more of the judges did have in mind this essential features test, when you look at the substance of the reasons given, they do turn on the proposition that the provisional specification did not contain a general description of the invention.

MR CATTERNS:   Your Honour, Their Honours certainly to say that; two of Their Honours, Justices Lockhart and Sheppard.

MASON CJ:   Well, with respect, I think there are passages which indicate that all three members of the court say that.  First of all, you have the passage at 178, in Justice Lockhart’s judgment, where he says, in the last complete paragraph on that page, after saying, as you pointed out:

That is the substance of the alleged invention.

His Honour then goes on to say:

Whilst the provisional specification refers to two forms of the invention, there is no other general description of the invention anywhere in it.

MR CATTERNS:   Yes, Your Honour, I certainly ‑ ‑ ‑

MASON CJ:   There are two passages at 193 and 202 ‑ ‑ ‑

MR CATTERNS:   Of Justice Sheppard?

MASON CJ:   ‑ ‑ ‑ where he says no general description of the invention.

MR CATTERNS:   Yes, he does, Your Honour.

MASON CJ:   And there is also a passage at 232, in the judgment of Justice Wilcox.

MR CATTERNS:   “In the absence of a general description”, at line ‑ yes, Your Honour.  I respectfully accept Your Honour’s criticism of my only saying “two”.  But, Your Honour, that is not a separate ground of revocation.  The question is whether the claim is fairly based on this.  Of course, in understanding what a provisional must do, one may look at section 39 and see that it is required to give a general description.  But, if it fails to give a general description, that alone does not constitute a lack of fair basis. 

Your Honour, I accept that that is what Their Honours say in describing what this provisional is doing, but I do submit that what Their Honours are doing is applying this essential elements test both ways, and saying that, as a result of that, the patent fails.  If I may quickly go to Justice Wilcox, Your Honours, at the bottom of 231:

Claims 9 and 11 are clearly not based on the provisional specification, as Lockhart J explains.

And then there is the passage Your Honour the Chief Justice referred me to in the large paragraph on page 232, where His Honour, I should say, is dealing with the apparatus, not with the method.  At the bottom of the page His Honour says, nasal tubes:

Yet claim 1 of the complete specification does not include nostril attachments ‑

So that is again requiring the claim to possess some detail of the elements of the provisional.

Your Honours, if I could just quickly go to claim 9 ‑ claim 9 is at 251 ‑ and this, as I say, is a vital claim, the words, “snoring and/or”, in claim 9, were removed by amendment by His Honour.  Claim 9 is:

A method of treating snoring and/or obstructive sleep apnoea in a patient comprising:  applying air through a nose piece ‑

they are just the words, Your Honours, “a nose piece” ‑

at a pressure maintained slightly greater than atmospheric substantially continuously throughout the breathing cycle.

Now, Your Honours, I want to make good that if Their Honours say there is no general description of the method invention, Their Honours must be wrong.  Going to the provisional, at page 254, line 35 ‑ I am sorry, Your Honours, I see the second light, if Your Honours would give me perhaps another minute or so?

MASON CJ:   Well, yes, but you had better bring your remarks to a conclusion.

MR CATTERNS:   Yes.  Thank you, Your Honour.  At line 35:

It is therefore an object of the present invention to provide an apparatus and a method ‑

Then there is a description of the first two forms.  Then there is a preferred form, the so‑called preferred embodiment, at 255, line 15, describing the apparatus and all the tubes and the air supply.  And then, if Your Honours would note, at 256, line 15:

In use a seal 7 is produced in surgical grade silicon rubber by forming it around the patients nose.....This seal forms a small mask which is peeled off the face after use.

It can be resealed; does not go over the mouth, it allows breathing through the mouth:

While in operation the apparatus provides a normal air mixture to the nostrils of the patient at an adjustable pressure that is slightly above atmospheric ‑

et cetera.  Now, Your Honours, in terms of section 39 and the duty to give a general description of the

invention, we submit that this plainly gives a general description of the method invention, and the reason Their Honours say that the method invention is invalid is not a lack of general description, but because the claim, as claimed, does not possess the nostril attachments, and that is requiring the sort of conformity that we respectfully submit is wrong, and we have given Your Honours references to the passages in CCOM, which, we submit crystallised the disagreement amongst the court. May it please the Court.

MASON CJ:   Thank you.  The Court need not trouble you, Dr Emmerson.

In the light of the differing views expressed in the Federal Court as to the basis for determining whether a claim in a complete specification is fairly based on matter disclosed in the provisional specification, that question might justify the grant of special leave to appeal in a suitable case.  But the answer to the question of fair basing in the present case does not call for a resolution of the differing views in the Federal Court.  Here the outcome of the case turns on the facts and the construction of the particular documents, the Full Court of the Federal Court having held that there was no real or reasonably clear description of the invention in the provisional specification. 

In order to succeed in the proposed appeal, the applicant would need to overturn that conclusion.  The case is therefore not a suitable vehicle for the determination of any question of general principle, and the application is refused.

MR CATTERNS:   May it please the Court.

MR EMMERSON:   We would ask for our costs, if the Court pleases.

MASON CJ:   You do not oppose that, Mr Catterns?

MR CATTERNS:   No, Your Honour.

MASON CJ:   The application is refused with costs.

AT 10.50 AM THE MATTER WAS ADJOURNED SINE DIE