Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty Limited

[1994] HCATrans 285

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IN THE HIGH COURT OF AUSTRALIA

Office of the Registry

Sydney No Sl16 of 1993

B e t w e e n -

YAMAZAKI MAZAK CORPORATION

Applicant

and

INTERACT MACHINE TOOLS (NSW)
PTY LIMITED, I.M.T.
INTERNATIONAL MACHINE TOOLS PTY
LIMITED and NAKAMURA-TOME

PRECISION INDUSTRY CO LIMITED

Respondents

Application for special leave

to appeal

MASON CJ DAWSON J

TOOHEY J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 22 APRIL 1994, AT 2.35 PM

Copyright in the High Court of Australia

Yamazaki 1 22/4/94

MR D.K. CATTERNS, QC:  May it please the Court, I appear for

the applicant. (instructed by Freehill Hollingdale

& Page)

MR A. CHERNOV, QC:  If it please the Court, I appear with my

learned friend, MR B.N. CAINE, for the respondent.

(instructed by Davies Ryan De Boos).

MASON CJ:  Mr Catterns.

MR CATTERNS:  Your Honours, the question of fair basis is

vital to every patent under both the 1952 Act and the new 1990 Act. It arises in a number of ways:

one, in the case of every patent the claims,

according to section 40, must be fairly based on

the specification of which they are a part, and

that is part of the consideration for the monopoly

in the claims. Secondly, as here, the question of

fair basis is vital to the priority dates and,

Your Honours, the priority date is the date at
which one determines the validity of the patent for

novelty, for obviousness, for prior claiming, and

other grounds of revocation.

In the present case, if the patentee is not

entitled to the early priority date by being fairly

based on the Japanese specifications, then its own

acts would lead to its invalidity because it, in

patent jargon, prior published itself.

Your Honours, in both the 1952 and 1990 Patent Acts

one may lodge a provisional specification, and

within one year lodge a complete specification. It

has always been, I submit, permissible to develop

the invention in that year between the provisional

specification and the complete and if your claim in

the complete specification is fairly based on

matter disclosed in the provisional, you are given
the benefit of being able to have the priority date

of the provisional.

Similarly, Your Honours, the international

system, which is what applies here, is exactly to

the same effect. You may lodge an application in

one of the convention countries - here Japan - and

then lodge a document, a complete specification, in

Australia within the year. If your claims are

fairly based on the earlier convention documents,

the Japanese documents, then you may have that

earlier priority date, and the benefit is obvious

because a lot can happen in an art in a given year.

Your Honours, in the Hoffman-La Roche case,

His Honour Justice Gibbs, as His Honour then was, said, and I do not think there is any disagreement,

that the treatment of provisionals is the same as

treatment of convention applications, mutatis

Yamazaki 2 22/4/94

mutandis. Your Honours, so the question is - the

question is - is a claim of the petty patent in the
present case fairly based on matter disclosed in
the document you are looking at, the provisional or

the convention application? Is the claim fairly

based? And, Your Honours, as we have submitted in

our written submissions, that notion does allow

some working out, some definition, of the invention

over that year.

Your Honours, here the court did two things

wrong, three things, but one of them does not

matter. The first thing Their Honours did,

agreeing with Justice Wilcox's reasons, is they discerned an essential feature of the invention

from the specification, not from the claim. They

discerned a configuration of the machine which
Their Honours said is essential from the body of
the specification itself but, Your Honours, that is

not what was claimed. That feature was this,

Your Honours: the machines have spindle stocks

which can move towards each other and, as

His Honour Justice Lockhart held - and we do not

disagree with His Honour's construction - what is

claimed is relative movement, so that one can go to

the other and pick up a workpiece and take it from

one to the other. That allows you to work on two

pieces at once. As Justice Lockhart held, what the
claim claims is relative movement.

Secondly, another one of the integers of the claim is that there be two tool-rests which sit on

one side of the machine, capable of movement at

least in the X axis direction, that is at right

angles to the direction in which the workpiece
spindles move. So, the claim is at least in the X

axis up and down direction. The claim does not say

you must have relative movement between the spindle

stock and its tool-rest in the z axis direction.

We do not disagree that that is necessary, as a

matter of fact, for the machine to work; we do not

disagree that it is necessary for the machine to be
made out of steel; or work on electricity; but,

the claim does not claim relative movement in the

z axis between the tool-rest and the spindle stock.

But, His Honour, and the rest of Their Honours

agreed, held nevertheless that that relative

movement was an essential feature of the invention

described in the specification, the error being it

is not an essential feature of the invention

claimed -

MASON CJ:	When you say His Honour?
MR CATTERNS:	His Honour Justice Wilcox, with whom

Their Honours agreed.

Yamazaki	22/4/94
MASON CJ: Yes, right.

MR CATTERNS: Justice Gurnmow did not do that, Your Honours.

MASON CJ: Yes, I know, I realize that.

MR CATTERNS:  Then, the second error is, having looked at

the wrong place to see what the essential features

are, namely, the specification versus the claim,
Justice Wilcox searches through the basic applications for the very thing, namely, a machine

that has relative movement between the tool and the

spindle in the Z axis. No question of construction

arises, Your Honours. We agree that you will not

find that there. But, we submit - and this is the

nub of the question that, we submit, warrants

special leave - that the notion of fair basis

allows a working out. One looks at the feature

that is claimed, and what is claimed is that the

tool-rest be able to move at least in the X axis.

We concede that the Japanese specifications disclose movement only in the X axis.	There is a
difference between the two.	The basic reason for

the difference is that somebody cannot escape

infringement by adding some other form of movement,

but the question of law is whether the working out

from movement only in the X axis to movement at

least in the X axis nevertheless destroys fair

basis. So, we submit that is the crisp question.

Your Honours, if I could just go into the

application book to try and make some of that good,

briefly. Justice Lockhart sets out the claims,

and in a way that we do not criticize, at 61,

Your Honours, and the integers are 4 at the bottom

of page 61 on to the top of 62:

first and second tool-rests, associated with

the first and second spindle stocks

respectively, both disposed, with respect to

the frame, to one side of the common axis, and

both moveable at least in a direction to the

common axis;

Your Honours, there is no doubt that the Japanese

specifications disclose all of that, except for

movement at least in the direction perpendicular to

the common axis. The second integer, about which

there is debate, is 6 on page 62:

the second spindle stock being moveable

relative to the first spindle stock so as to

delivet a workpiece to the second spindle

stock from the first spindle stock;

Yamazaki 22/4/94

that is relative movement. Your Honours, there is

no doubt that the Japanese specifications disclose

that.

Now, perhaps while Your Honours are there, it

might be convenient to look at His Honour's

construction of the two integers, and I stress that

we do not disagree for a moment on these

constructions. It is just the passage beginning at

33, where His Honour construes the fourth integer.

MASON CJ: Passage beginning at?

MR CATTERNS:  I am sorry, Your Honour, at the bottom of 62,

line 33.

MASON CJ:	I see.
MR CATTERNS:	Where His Honour construes the fourth integer,

and His Honour says the claim:

states clearly -

I have moved on to 63, Your Honours, line 4 -

that the tool-rests must be moveable at least

in a direction perpendicular to the common

axis, but it does not say whether or not the

tool-rests must be moveable also along the

Z axis. It is possible that there be movement

along the Z axis, but this is not a

requirement.

We agree with that completely, Your Honours.	Then
His Honour goes on with paragraph 6, and at
line 18:

The claim ..... is that the relative movability

between the two spindle stocks is required and

that this may be achieved if both are moveable

or one is moveable and the other fixed.

Paragraph 6 is talking about relative

movement, not whether one spindle stock is

necessarily fixed or not. What is required is

relative movement and it does not matter

whether either spindle stock is fixed -

again, Your Honours, we agree precisely with that

construction, and there is no question that that

also is found in the Japanese specification. The

only thing that is not found is a single instance,

namely, where one spindle stock is fixed and the

tool-rest moves in both X and Z directions. That

is not disclosed expressly. It is one thing that

could come within the claims, and it is a

legitimate question to ask whether or not the claim

Yamazaki 22/4/94

is fairly based on the specification in light of

that.

But, Your Honours, that is not what the court did. If I could take Your Honours to

Justice Lockhart's reasons at page 73. I should

note at once that in the first three lines, as well

as in other parts of His Honour's judgment,

His Honour there sets out the right question.

MASON CJ: Yes, he does that constantly, does he not?

MR CATTERNS:  Yes, he does, Your Honour, but on this

question the justice who matters is Justice Wilcox

and I respectfully submit that setting out the
right question, as it were, baldly is no substitute

for, in fact, conducting the right analysis, and

the next paragraph shows that Their Honours do

not - begins to show, and Justice Wilcox makes it

clear:

I have read the reasons for judgment of

Wilcox J ..... agree with what he says about it and with his conclusion that none of the

Japanese specifications fairly described the

essential features of the invention disclosed

in the Australian standard specification -

standard is wrong, but it does not matter. They

are virtually exactly Justice Wilcox's words, which

I will make good in a moment. If I could then take

Your Honours to Justice Wilcox's reasons, at 75,

line 8, His Honour proposes:

to discuss only the final step in the argument
necessary for the respondent's success: the

proposition that the Australian standard

specification -

that is wrong again, Your Honours -	is fairly based on one or more of the Japanese
patent specifications -

So His Honour has asked the wrong question

there. Your Honours, at line 16, His Honour

rightly says:

Relative movement between the two spindle stocks is an essential feature -

Justice Lockhart said that earlier in the passage I

showed, and we agreed Your Honours, but then

His Honour goes on and descr~bes what might happen

with the tool-rests, and the critical question

begins at the top of 76, line 6:

Yamazaki 6 22/4/94

if a particular spindle stock is fixed in position, not moveable on the Z axis, its

associated tool-rest must be made capable of

movement on the z axis.

We do not disagree as a matter of fact.

It is, therefore, an essential feature of the

invention, not only that there be relative

movement on the Z axis between the two

opposing spindle stocks but also between each

spindle stock and its associated tool-rest.

Now, Your Honours, on the construction of

Justice Lockhart, with which we agree, that is not part of the claim. It is part of a machine of the type described in the specification, but is not the

invention claimed.	Your Honours, at the top of 78
Justice Wilcox says:

The Japanese patents teach the first

alternative -

which is one type of relative movement between a

head stock and a tool-rest, namely, where the head

stock moves, and that provides you with the

relative Z axis movement -

But ..... none ..... teaches the second method -

which is where one is fixed, and the tool-rest can

move both ways. Your Honours, why does the court

focus on this question of the second type? The

answer is because the court is looking for the

infringer, because that is what Nakamura had. It

had the second method of providing the relative

movements but, Your Honours, it is clear that in

determining fair basis one puts aside completely

the infringer, as the quote from Blanco White

misquotes one of the earlier cases, you proceed as

if the infringer had never been born for this

if, upon a fair reading, none of the Japanese

patents teaches the second method of providing
the necessary relative movements -

question. In line 3, Your Honours:

now, Your Honours, there are two relative

movements. One is relative movement between the

two head stocks, that is, integer 6, we claim it.

It is necessary, it must be found in the Japanese, but the other type of relative movement between the

tool-rest going up and down and sideways, is not

claimed.

Then His Honour goes through the Japanese

documents looking for that second relative

Yamazaki 7 22/4/94

movement.	We do not disagree that you do not find
it there.	Then His Honour comes to the conclusion

at the top of 84:

A reader of this patent -

that is one of the Japanese specifications -

would not glean from it the essential point

that, if one of the spindle stocks is fixed,

the tool-rest associated with that spindle
stock must be made two-directional.

Your Honours, that is not an essential point of the claim. Then, between lines 6 and 14, His Honour

says exactly the same thing Justice Lockhart said:

I am of the opinion that none of the Japanese patents fairly described the essential features of the invention disclosed in the Australian standard specification.

And, we respectfully submit that that shows that

the question which, I submit, is of public

importance does, in fact, arise. Their Honours

have, in fact, approached the matter the wrong way.

We give Your Honours a reference to the Full

Court's decision in Coopers v Western Stock Distributors, 76 ALR, I do not need to take

Your Honours to it now, but the Full Court there,

particularly in the judgment of Mr Justice Fox, set

out the traditional idea that you can develop your

invention from a provisional to the claims of a

complete, and quoted something that His Honour

Justice Gibbs said in the Hoffman-La Roche case:

It must foreshadow the invention -

but, what Their Honours are here doing is first

postulating as an essential feature something that

is not claimed, and second, insisting that that

very thing be found in the Japanese documents

rather than a fair basis for what is, in fact,

claimed.

Your Honours, as we have submitted, that does

give rise to a conflict between the judgment of
this court - the judgment of the Full Court in the

instant case and the judgment in the Coopers' case.

We submit it is not a case where Your Honours

would, therefore, be able safely to leave the

matter at the Federal Court level, it being a

specialist court in intellectual property, as has

been suggested in some other special leaves.

Yamazaki 8 22/4/94

We do submit, Your Honours, that no question

in modern patent law has more significance than

fair basis, to put it in lay terms. It is a very

fashionable issue now in every case since Coopers'

case, virtually in every patent case in which I am

involved, fair basis is raised by the defendant,

and we do submit that it is raised neatly here.	It
does not depend on a question of construction, and

we do submit that the Full Court has plainly got it

wrong. May it please the Court.

MASON CJ: Thank you, Mr Catterns. Yes, Mr Chernov.

MR CHERNOV:  Your Honours, we do not disagree, with respect,

with what our learned friend has submitted, namely,

that it is permissible to develop an invention. ·

What is not permissible is between the date of

lodging of the provisional and the complete, for

example, is to develop a new invention and claim it

in the complete, or develop from the basic a new

invention and claim the priority date from the

basic, and this is what the court here has, in

fact, held.

What happened, Your Honours, was by

28 April 1987 there were seven Japanese

applications made. Each of those applications

taught against the movement of the tool-rest along the Z axis. It taught the movement only along the

X axis, the perpendicular to the common plane - - -

DAWSON J:  Coming down.

MR CHERNOV:  Coming down. Their Honours are quite right, my

learned friend is quite right that if one takes

paragraph 4 and one takes paragraph 6 by themselves

then, of course, it is not a necessary feature or a
claim of the invention that a spindle stock be
fixed. It is a possibility. But what my learned

friend avoids; what, with great respect,

Mr Justice Gummow avoided, is that there is

paragraph 9. If one adds paragraph 9, and that is

at pages 61 and 62, what my learned friend has

said, with respect, about paragraph 4 is correct.

If I can take paragraph 4 to the foot of page 62,

what my learned friend there said is also correct,

but it must be borne in mind that

Mr Justice Lockhart is there dealing with

paragraph 4 alone.

What is relevant, Your Honours, is to look at

the foot of page 63 because there His Honour says:

Paragraph 9 qualifies paragraph 4 because it

deals with the arrangement of the workpiece

machining portions of the machining tool so as

to allow machining to take place in a

Yamazaki 9 22/4/94

·.--

direction towards the associated spindle

stock, but the paragraph says nothing about
the movement of the spindle stocks or whether
they are fixed relative to the frame. It

requires -

and that is the relevant word, in our submission -

that there be a possibility of relative

movement of the tool-rest and the spindle.

But it does not matter whether one or other of

the spindle -

and we submit, Your Honours, that there are some

words missing here because the obvious words are

"or the tool-rest", otherwise it does not make much

sense -

is fixed in the Z axis provided they are not

both fixed. The machining portion must be

relatively moveable with respect to the

associated spindle.

So it is a little bit, with great respect,
superficial to point to what Mr Justice Lockhart

says at the foot of page 62 and the top of 63 and

omit what His Honour did consider with paragraph 9.

Therein lies the essential difference between the
Japanese applications in April 1987 and the
Australian specifications, all of them, from

April 1988.

Mr Justice Wilcox, if I can take that point

and finish it, says very much the same thing on

page 76. In other words, he is in entire agreement

with Mr Justice Lockhart as to whether or not it is

a requirement of the invention that a tool-rest

must move along the Z axis if there is a fixed

spindle stock, and that is precisely what

Mr Justice Wilcox says. On line 6:

So, if a particular spindle stock is fixed in

position, not moveable on the Z axis, its

associated tool-rest must be made capable of

movement on the Z axis. It is, therefore, an

essential feature of the invention, not only
that there be relative movement on the Z axis

between the two opposing spindle stocks but
also between each spindle stock and its
associated tool-rest.

DAWSON J: That is said not to be part of the claim.

MR CHERNOV:  It is said by my learned friend it is not, but

Mr Justice Wilcox says it is. It is a necessary

part of it. It is a requirement, otherwise it

would be bad for you in utility.

Yamazaki 10 22/4/94

DAWSON J:  He said it is an essential feature of the

invention, but that is not the same thing, is it?

MR CHERNOV:  Your Honour, with respect, we would submit that

once you have an essential element of the invention

without which the machine would not operate as

claimed, then it is either bad for you in utility

or it is a requirement of it in the sense that one

must find that feature in the earlier specification

in relation to which you seek a priority date. For

the purpose of fair basing all one has to find is

whether it is a requirement. If it is a

requirement of the invention then, in our

submission, it must be fairly based, as the Act
says and as Hoffman-La Roche says, on the earlier

specification. Your Honours, that is made plain,

in our submission, by what His Honour says at

line 14 to about line 19.

MASON CJ: What page?

MR CHERNOV:  I am sorry, Your Honour, I am still on 76.

His Honour says:

Point 9 referred to the workpiece machining -

and he gives the wording -

This is impossible without relative movement

between the spindle stock and the associated

tool-rest along the Z axis.

So that in our submission what it all boils down to

is this:  6 gives you two choices, in other words,

two choices to effect relative movement between the

spindle stocks. One is each spindle stock moving towards the other, and the other choices have one spindle stock fixed to the frame and the other one

moving towards it.	You then have relative
movement.

DAWSON J: What you are saying is what is an essential part

of the invention is necessarily part of the claim.

MR CHERNOV:  Yes, Your Honour, and therefore is required,

and therefore you have to have fair basing.

DAWSON J: Yes.

MR CHERNOV:  That is what the Court says. Your Honours,

with respect, that is correct and it is a question

of construction whether that is so, and that is

what the court did. I put to one side whether the

court correctly used the words "Australian

specification", or it should have used "petty

patent", and I will come back to that if I may.

But from the point of view of what is it that is a

Yamazaki 11 22/4/94

relevant feature which must be found in the basic,

or the earlier specification, using a neutral

term, Their Honours were quite correct. The

difference between Their Honours and

Mr Justice Gummow lies in the fact that

Mr Justice Gummow gave no work at all to

paragraph 9 at page 38. We summarized that at our

outline in paragraph 5, but Your Honours will see

His Honour deals at line 16 onwards:

Secondly, Interact and IMT point to the

integer in the 4th paragraph of the claim of each of the petty patents that the first and

second tool-rests, associated with the first

and second spindle stocks respectively, which

are both disposed, with respect to the frame,·

to one side of the common axis, both be

moveable "at least in a direction

perpendicular to the common axis". The phrase

"at least" indicates that the claim leaves

open the possibility of movement -

and that is perfectly true if you just look at 4

and do not do what Their Honours did, and that is

qualify 4 by reference to 9 as you must do. Once

you do that then you come, in our.submission,

properly as the Full Court did, to a different

conclusion. Once you come to a conclusion that it

is an essential feature and, Your Honours, we

submit that there is no significant difference

between "essential feature" and "feature", and I do

not think my learned friend contends to the
contrary, but once you conclude it is a feature of

the claimed invention, then to get the early

priority date there has to be fair basis.

MASON CJ: But the essential differences between

Mr Justice Gummow and the Full Court are found on page 39, are they not?

MR CHERNOV:  Indeed, Your Honour, because what His Honour

says at the foot of 38 - and if one accepts what

His Honour says is correct at the foot of
page 38 it is clearly correct on 39, because what His Honour says in 38, in effect, he is saying it

is not a requirement of the invention, therefore, I
do not have to see if the Japanese basic is silent

on it, for example, to use the third limb of the

Mond Nickel test. He correctly, as he does in

relation to paragraph 6, says, and the Full Court

agree with him, "It is not a feature of the

invention; therefore I don't have to go to the

next step and examine the basic.	If it is not a
feature, it is not a feature;	you stop there."
It is a different point, of course, to the question of infringement.	You can infringe, as we

Yamazaki 12 22/4/94

have been held to infringe, notwithstanding that

our spindle stock is fixed and that is because 6 is

wide enough to encompass it, but 6 was held not to

contain as a requirement of the invention claimed a

fixed spindle stock. So the court does distinguish
between the two concepts of infringement and of
fair basing. In our submission, the reason the

Full Court disagree with what is in paragraph 39 is because it essentially took the next step from the bottom of page 38, looked at paragraph 9 and held that it was a requirement of the invention claimed

and therefore has to be compared with the basic.

Your Honours, there is no question that this

aspect, if I can use the term loosely, of the

invention claimed, that is to say that the

tool-rest move not only in the X axis but also in

the Z axis, is to be found in the Australian

specifications and is to be found in the Japanese

applications post the seven which preceded the

priority date. So that what happened after the

priority date, the Japanese applications themselves

were.revised and included that requirement, if you

like, and the Australian applications which were
based on those, all 15 of them, had that feature.

So there is no question of that requirement not being found or properly described in the Australian

earlier specifications. It is only when you come

to the Japanese ones, and Your Honours,

Mr Justice Wilcox was the judge who looked at that,

and he commenced at page 78 and said at the top of

the page:

The Japanese patents teach the first

alternative. But if, upon a fair reading,

none of the Japanese patents teaches the

second method -

and that is the second method described at the foot

of page 77, Your Honours, where there is a

necessary move in the Z direction by the

tool-rest -

it could not be said that the Australian

specification is fairly based on any of the

Japanese patents.

Again, Your Honours, for the moment can one read

"claim" and "petty patents" for the words

"Australian specification".

In that situation, it would have to be concluded that the Australian specification -

or the claim in the petty patents -

Yamazaki 13 22/4/94

involves an additional idea; a second

combination, not envisaged by the Japanese

patents.

Then he goes through it, for instance, starting at

the foot of page 78, and he identifies the fact
that the spindle stocks are to be capable of moving

independently of one another, that is to say, the

relativity would be gained by the movement of each

of the spindle stocks. Your Honours will see that

at the top of page 79, particularly line 5.

An essential feature of the Japanese claims

also was that the tool-rest had to be moveable on

the X axis. In other words, it ..... away from the movement of the tool-rest along the z axis. That

is the Japanese applications. His Honour said that

six of them were pretty much identical.	The
seventh caused a bit more difficulty in

interpretation and construction and he went through

it and said that was the same conclusion.

Your Honours, in our submission, the case

essentially turned on the construction of the petty

patent, its claims, the Australian specification

and the Japanese specifications. Their Honours,

that is to say the four Justices, Mr Justice Gummow

and the three Justices of the Full Court, did not disagree on what the test is. Subject to what my learned friend said about Their Honours

Mr Justice Wilcox and Mr Justice Lockhart referring to the Australian specification are a petty patent, subject to that they formulated the correct

documents to be contrasted, the correct sections of

them to be contrasted, and applied the test, and

they did so by construing the documents, and that

is what this case is about. It does not, in our

respectful submission, raise a general principle at

all. We set that out in our outline.

Your Honours, the more unusual part of this

case is that although Their Honours correctly

formulate the test and correctly the documents and

the parts of the documents to be compared, they

appear to move away from that. That is because

they give the impression, if one reads the judgment

selectively rather than as a whole, that they did

not compare the claims of the petty patent with the

basic, but compared the Australian specifications

with the Japanese basic.

There are two things we would like to submit about that, Your Honours. One is that

Their Honours recognized that you can divide the relevant specifications into two broad groups; the

earlier Japanese ones and the Australians

subsequent to that, and as between those two groups

Yamazaki 14 22/4/94

the one common thread was that in the Australian

documents, if I can call them that, you had this

additional requirement for the movement of the
tool-rest along the z axis which was absent from

the Japanese basic.

The other factor is this: if one looks at 45A

of the legislation, what that provision does, in

effect, Your Honours, is to deem - and I am using

it slightly loosely - but deems the claims of the

petty patents to be the claims of the

specification. The operative words are these:

the priority date of the claim of a petty

patent -

I can then go to the next line:

being a claim fairly based on matter disclosed

in -

Then one goes to (b):

where the original application was an

application for a standard patent - the

provisional specification or the complete

specification -

Pausing there, Your Honours, if I can reread that:

the priority date of the claim of a petty

patent ..... being a claim fairly based on

matter disclosed in -

that complete specification is - then one drops to

(d)(i):

the date that would have been the priority

date of the claim if the claim were a claim of

that complete specification;

Your Honours, that may be - probably is - why the

court below talked about Australian specifications

rather than using or limiting themselves only to

the words that they themselves nominated and

accepted as being accurate, namely the comparison

between the claims and the petty patent and the

basic specification.

MASON CJ: What is that explanation?

MR CHERNOV:  Your Honours, what they, in our submission, did

was they, in effect, undertook the task of
comparing the petty patent claims with the Japanese
basic, but did so as if those claims were part of

the specification. Because, that is the path

through which one gets the early priority date by

Yamazaki 15 22/4/94

reason of 45A.	They are notionally put into, so to
speak, the specification.	So that what one has to

have for the purposes of 45A(2) is to compare the

claims of the petty patent as if they were claims
of that complete specification. If that were so,

if they were the claims, then the Act permits the

benefit of the earlier date to be taken by the

claims in the petty patent.

But even if Your Honours were against us on

that it is quite plain, in our submission, from

reading the judgment as a whole for the reasons we
have given Your Honours that, and this is

particularly true of the critical passage in
page 76 of Mr Justice Wilcox's judgment, that of

course they are addressing the question that must

be addressed that Mr Justice Lockhart formulated

and which Mr Justice Wilcox picked up, because His

Honour says - he refers to essential integers - I

am on line 13 or perhaps 12.

This point was brought out by Gurnmow Jin his

description of the essential integers of the

invention.

If the word "claimed" followed, then it would be

unarguably so, but more importantly perhaps,

Your Honours, he goes on to say, "Point 9" - now

that can only be a reference to - - -

MASON CJ:  The claim.

MR CHERNOV:  The claim. Your Honours, it would be

extraordinary - one would expect barristers to do

that, but it would be extraordinary, Your Honours,

if the Justices of the Full Court formulate the

test correctly, articulate the particular parts of

the particular documents that must be compared and

do so, and then by using other language they

indicate that they have, in fact, not done so.

That is just fanciful, in our respectful

submission.

Your Honours, for the reasons we have set out,

if I can just summarize, Your Honours: first we

submit this is essentially a construction point for

the reason we have given; second, Your Honours,
there is no relevant disparity of any point of

principle between any parts of the Federal Court at

all.

The most that could be said is that a test

propounded by Mr Justice Wilcox in Coopers, first

instance, met the disagreement of Mr Justice Gurnmow
but it must be remembered that the Full Court in

Coopers did not apply it. The Full Court in this

case did not apply it. It applied and followed the

Yamazaki 16 22/4/94

traditional well established tests about

which - - -

MASON CJ:	You are departing from a summary and your time has expired.
MR CHERNOV:	The third point, Your Honours, is that for the reason we have given that the decision of the
Full Court is not attended with any real doubt. If
the Court pleases.

MASON CJ: Yes, thank you, Mr Chernov. Yes, Mr Catterns.

MR CATTERNS:  Two brief points, Your Honours. In our

submission, integer 9 which appears at page 62 just

says that the little drills or chisels or whatever

it is, points towards the associated head stock.

Nobody disagrees that there will be a need for

relative movement between the tool and the work

piece. It is just common sense, as His Honour

Mr Justice Wilcox says at the bottom of page 75.

But the nub of the case is that it is not a

requirement of the claim.

Secondly, Your Honours, the question of

utility, as Justice Gummow makes clear at page 8,

was not raised at the trial of the case, nor on

appeal. And as it is perfectly clear that, on

matters of utility, the skilled addressee can be

trusted not to make a machine that is just stupid,

that obviously will not work. It is a matter of

common sense to have that movement, but we have not

claimed it. May it please the Court.

MASON CJ: Thank you, Mr Catterns. The Court will take a

short adjournment in order to consider this matter.

AT 3.21 PM SHORT ADJOURNMENT

UPON RESUMING AT 3.26 PM:
MASON CJ:	The Full Court of the Federal Court is the final

court of appeal in matters of intellectual
property, subject only to this Court exercising its
exceptional jurisdiction to grant special leave to

appeal. This Court will only grant special leave

to appeal in matters of intellectual property when

the proposed appeal raises an important question of

principle, and no such question arises here. In

our view, the outcome of the case depended on

questions of construction of documents, and in

Yamazaki 17 22/4/94

resolving those questions the Full Court did not

make any significant error of principle.	The
application for special leave to appeal is therefore refused.

MR CHERNOV:	If the Court pleases, we seek costs.
MASON CJ:	You do not oppose that, Mr Catterns? The

application is refused with costs.

AT 3.27 PM THE MATTER WAS ADJOURNED SINE DIE

Yamazaki 18 22/4/94