FEDERAL COURT OF AUSTRALIA Imperial Chemical Industries PLC v EI Dupont De Nemours & Co [2002] FCAFC 264 IMPERIAL CHEMICAL INDUSTRIES PLC & ANOR v EI DUPONT DE NEMOURS & CO N 360 OF 2002 & N 361 OF 2002 HEEREY, EMMETT & DOWSETT JJ 23 AUGUST 2002 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA N 360 OF 2002 BETWEEN: IMPERIAL CHEMICAL INDUSTRIES PLC FIRST APPLICANT INEOS FLUOR HOLDINGS LIMITED SECOND APPLICANT AND: EI DUPONT DE NEMOURS & COMPANY RESPONDENT JUDGES: HEEREY, EMMETT & DOWSETT JJ DATE OF ORDER: 23 AUGUST 2002 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. the application for leave to appeal be refused; and 2. the applicants pay the respondent's costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA N 361 OF 2002 BETWEEN: IMPERIAL CHEMICAL INDUSTRIES PLC APPLICANT AND: EI DUPONT DE NEMOURS & COMPANY RESPONDENT JUDGES: HEEREY, EMMETT & DOWSETT JJ DATE OF ORDER: 23 AUGUST 2002 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. the application for leave to appeal be refused; and 2. the applicant pay the respondent's costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA N 360 OF 2002 BETWEEN: IMPERIAL CHEMICAL INDUSTRIES PLC FIRST APPLICANT INEOS FLUOR HOLDINGS LIMITED SECOND APPLICANT AND: EI DUPONT DE NEMOURS & COMPANY RESPONDENT N 361 OF 2002 BETWEEN: IMPERIAL CHEMICAL INDUSTRIES PLC APPLICANT AND: EI DUPONT DE NEMOURS & COMPANY RESPONDENT JUDGES: HEEREY, EMMETT & DOWSETT JJ DATE: 23 AUGUST 2002 PLACE: SYDNEY REASONS FOR JUDGMENT 1 The Court has before it two applications under s 158 of the Patents Act 1990 (Cth) ("the Act") for leave to appeal from orders made by a judge of the Court. The orders were made on appeal under s 60(4) of the Act from decisions of a delegate of the Commissioner of Patents ("the Commissioner"), given in opposition proceedings concerning patent applications. While both of the two patent applications in question are concerned with fluid compositions that comprise a lubricant and a refrigerant, for heat transfer devices, the two proceedings are independent of each other. 2 Imperial Chemical Industries PLC ("ICI") is the applicant in relation to Australian Patent Application 658005 ("PA 658005"). PA 658005 was lodged on 6 October 1992 and was advertised accepted on 30 March 1995. On 30 June 1995, a notice of opposition was filed by EI Dupont De Nemours & Company ("Dupont"). On 11 October 1999, a delegate of the Commissioner concluded pursuant to s 60(1) of the Act that Dupont's opposition was unsuccessful on all grounds and directed that PA 658005 proceed to sealing. Dupont then appealed to the Court pursuant to s 60(4) of the Act, which provides, inter alia, that any opponent may appeal to the Federal Court against a decision of the Commissioner under s 60. 3 ICI was also the applicant in respect of Australian Patent Application 654176 ("PA 654176"). PA 654176 was lodged on 1 April 1992 and was advertised accepted on 27 October 1994. On 27 January 1995 Dupont filed notice of opposition. On 11 October 1999, the Commissioner concluded that the opposition was unsuccessful on all grounds and directed that PA 654176 proceed to sealing. Dupont also appealed to the Court from that decision pursuant to s 60(4). ICI subsequently assigned its interest in PA 654176 to INEOS Fluor Holdings Limited ("INEOS"), which became a party to the proceeding. 4 Both appeals were heard together by the primary judge. On 5 April 2002, her Honour ordered that the appeal in respect of PA 658005 be upheld, the decision of the delegate be set aside and that PA 658005 be refused. Her Honour made similar orders in respect of PA 654176 on the same day. On 15 April 2002 the primary judge made orders in both proceedings relating to the costs of the proceedings. 5 Section 158(2) of the Act provides that, except with the leave of the Federal Court, an appeal does not lie to a Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner. ICI have now applied for leave pursuant to s 158(2) from the orders made in respect of PA 658005. ICI and INEOS have applied for leave to appeal from the orders made in respect of PA 654176. It is necessary first to say something about the principles applicable to the grant of leave under s 158(2). 6 In a case where an opponent is unsuccessful before a single judge on an appeal pursuant to s 60(4), that resolution of the appeal adverse to the opponent does not necessarily resolve the matter finally against the opponent, because the unsuccessful opponent will still be able to institute revocation proceedings under s 138 of the Act. Accordingly, a refusal to grant leave to appeal under s 158(2) would not be finally determinative of the opponent's rights. On the other hand, where an opponent is successful before a single judge, that result would be determinative of the rights of the applicant for the patent, if no appeal were permitted from the order of the single judge. 7 Thus, there is every reason for applying different principles according to whether the opponent has been successful or unsuccessful before the single judge. Cases commenced under s 60(4) of the Act will require different treatment according to whether or not opposition to the patent was upheld by the single judge. The Court should be studious in its examination of the questions likely to arise on appeal, before refusing leave to appeal from an order of a single judge where the opponent has been successful. The Court should be slow to shut out a patent applicant who has had only one judicial consideration of entitlement to the grant of a patent. 8 Since 1984, leave has been required, pursuant to s 24(1A) of the Federal Court of Australia Act 1976 (Cth), for any appeal against an interlocutory decision of a single judge of the Court. However, the requirement for leave to appeal to the Full Court has not been construed as a requirement that a particular test be satisfied. Rather, the Court has emphasised: * the discretionary nature of the jurisdiction to grant leave to appeal; * the inappropriateness of formulating rigid rules that could restrain the exercise of that discretion; · the importance of dealing with each application for leave under s 24(1A) in accordance with its own special circumstances. 9 The statements of the Court against laying down rigid rules that would restrict discretion in determining applications for leave under s 24(1A) are equally apposite in relation to an application under s 158(2) of the Act - see Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 ("Genetics Institute") and Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170 ("Cointreau"). 10 An analogous situation arises in relation to registration of a trademark. Section 195 of the Trade Marks Act 1955 (Cth) is in identical terms to those of s 158(2) of the Act, with the exception that the "Registrar [of Trademarks]" replaces the "Commissioner [of Patents]". In Cointreau the Full Court affirmed the principles of flexibility set down in Genetics Institute. However it did not appear to distinguish between requisite criteria for the grant of leave to appeal from: 1. an unsuccessful opposition to the registration of another person's mark; and 2. a refusal of registration of the applicant's mark on the basis of a successful opposition to it. In both situations, the Court adopted the test set out in Genetics Institute, and considered whether a prima facie case of error was made out. It may be that a more stringent test should be adopted in relation to an application for leave to appeal from a decision of a single judge that an opposition should succeed. Before refusing leave, the Court should be satisfied that it is clear beyond doubt that there has been no error and that any patent, if granted, would be revocable. 11 In each of the present cases, the Commissioner concluded that the opposition should fail. That is to say, the primary judge reached a different conclusion from that of the Commissioner's delegate. That, of itself, will normally be a significant factor in deciding whether to grant leave to appeal. The Court would be mindful of the specialist expertise of the Commissioner and her delegates in dealing with patent applications. The fact that different conclusions had been reached would often indicate that there is some doubt about the question of whether any patent granted pursuant to the application would be valid. 12 The hearing before the primary judge in the present cases occupied five days and several months elapsed before written submissions were completed. Notwithstanding that such an effort was required, it may be that Dupont can nevertheless demonstrate that it is clear beyond doubt that any patent granted pursuant to either of the applications in question would be revocable. For example, additional evidence was adduced before the primary judge that was not available to the Commissioner's delegate. That fact would indicate that reliance need not necessarily be placed on the delegate's decision. 13 It is with those considerations in mind that the Court must examine the questions that will be raised on the hearing of an appeal assuming leave is granted. Each application must be dealt with separately. PA 658005 14 There were two grounds upon which the primary judge concluded that any patent granted pursuant to PA658005 would clearly be invalid. The first was lack of novelty, by reason of disclosure by Australian Patent 638710 ("the Lubrizol Patent"). The second ground was failure to comply with s 40 of the Act. Establishment of either ground would be sufficient to justify refusal of the patent. 15 The body of the complete specification in relation to PA 658005 and Claim 1 of that complete specification are in relevantly identical terms as follows: "A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and (B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising…[formula set out]." 16 The description of the invention in, and Claim 1 of, the Lubrizol Patent are relevantly in the same terms as follows: "A liquid composition comprising: (A) a major amount of at least one fluorine-containing hydrocarbon containing 1 or 2 carbon atoms; and (B) a minor amount of at least one soluble organic lubricant comprising…[formula set out]." It is common ground that the formula in PA 658005 is identical to the formula in the Lubrizol Patent. 17 The primary judge found that integer (A) of Claim 1 of the Lubrizol Patent anticipated integer (A) of PA658005. Integer (A) of the Lubrizol Patent requires that the liquid composition must comprise (in addition to a minor amount of a lubricant) a major amount of at least one hydrocarbon that contains both fluorine and one or two carbon atoms. Integer A of PA 658005 requires that the composition will comprise (in addition to a lubricant) a mixture of at least two hydrofluoroalkanes selected from: · difluoromethane, · 1,1,1,2-tetrafluoroethane · pentafluoroethane 18 An alkane is a fully saturated carbon or hydrocarbon chain. That is to say, there are as many hydrogen atoms attached to the carbon atoms as possible and only single bonds exist between the carbon atoms. Thus, the specification states that each of the above three compounds is a fully saturated hydrocarbon chain. Each of them contains fluorine and each contains one or two carbon atoms. Thus, difluoromethane contains two fluorine atoms and one carbon atom. Tetrofluoroethane contains four fluorine atoms and two carbon atoms. Pentofluoroethane contains five fluorine atoms and two carbon atoms. Clearly, each of those compounds is encompassed by the description "fluorine-containing hydrocarbon containing one or two carbon atoms". Thus, the use of a liquid composition described in Claim 1 of PA658005 is clearly disclosed by the Lubrizol Patent. 19 There is no suggestion in the complete specification of PA658005 that a liquid composition comprising a refrigerant that satisfies the description in integer (A) and a lubricant that satisfies integer (B) would be any more effective than, or perform a function different from, a composition comprising a major amount of at least one fluorine containing hydrocarbon containing one or two carbon atoms and the lubricant described in integer (B) of Claim 1 of the Lubrizol Patent. That is to say, PA658005 is not an instance of the selection of something disclosed by the Lubrizol Patent by way of a further inventive step. It is no more than a particular example of the invention disclosed by the Lubrizol Patent. 20 It is, therefore, crystal clear that a patent granted pursuant to PA 658005 would be revocable. The correctness of that conclusion by the primary judge is attended with no doubt. Accordingly, there would be no utility in granting leave to appeal from her Honour's orders in relation to PA658005. In the circumstances, it is not necessary to consider the other ground upon which her Honour concluded that the opposition to PA 658005 should succeed. PA 654176 21 PA 654176 claimed priority from a Convention application filed in the United Kingdom on 18 April 1991 ("GB 9108527"). It was common ground that if PA 654176 was not fairly based on the matter disclosed by specification of that application, any patent granted pursuant to PA 654176 would be invalid for lack of novelty by reason of the publication in Australia of PA 658005. 22 The description of the invention in, and Claim 1 of, PA 654176 are relevantly in the same terms as follows: "A refrigerant composition comprising: (I) a refrigerant comprising a ternary or higher mixture of: (a) tetrafluoroethane and/or heptafluoropropoane; (b) difluoromethane and/or 1,1,1-trifluoroethane; and optionally (c) pentafluoroethane; and (II) a lubricant comprising a polyalkylene glycol and/or an ester." 23 The specification for GB 9108527 contained no claims. It described the field of the invention as follows: "This invention relates to refrigerant compositions for cooling and heating applications and to their use in heat transfer devices. The invention relates in particular to low temperature refrigerant composition by which is meant compositions intended to achieve and maintain temperatures of the order of ‑30şC and below, for example -50ş and even -65şC." The specification of GB 9108527 subsequently described the invention in the following terms: "According to the present invention there is provided a refrigerant composition particularly suitable for use as a low temperature refrigerant comprising a mixture of tetrafluoroethane and/or heptafluoropropane with difluoromethane and/or 1,1,1-trifluoroethane and optionally pentafluoroethane." 24 Thus, the invention of GB9108527 was a refrigerant. It was not a composition of refrigerants and lubricants. However, the specification described a number of refrigerant compositions and said that the refrigerant compositions may be prepared by a simple mixing process. It then said: "The refrigerant composition may and usually will contain a lubricant. Any conventional lubricant may be employed but polyalkylene glycols and especially esters are preferred." 25 A distinction between PA 654176 and GB 9108527 that is quite apparent is that PA654176 discloses a refrigerant composition that includes both a refrigerant and a lubricant while GB 9108527 discloses refrigerant mixtures to which a lubricant may, but need not, be added to make a refrigerant composition. The primary judge emphasised that distinction. 26 PA 654176 in its original form did not contain integer (II). In that form it was not accepted by the Commissioner because its claims were not novel when compared with published Australian specifications. As a consequence, an amended specification was filed by ICI. The amended specification added integer (II) referring to a lubricant. The description of the lubricant is in the terms suggested by GB 9108527 as the preferable, but by no means a necessary, lubricant. 27 The primary judge found that, in fact, the statement in GB 9108527 that "any conventional lubricant could be employed" was incorrect. Her Honour found that the only lubricants that could usefully be added to the refrigerant compositions disclosed in GB 9108527 are esters or polyalkylene glycols. That, of course, is not a matter disclosed in GB 9108527. The use of any conventional lubricant was said to be acceptable. 28 The question of whether PA 654176 is fairly based on the material disclosed in GB 9108527 depends on whether there is a real and reasonably clear disclosure in GB 9108527 of what is claimed in PA 654176. In other words, the question is whether the alleged invention claimed PA 654176 is, in a general sense, described in GB9108527 (see, for example, Rehm Pty Ltd v Webster Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95). 29 The difference between the nature of the invention disclosed by GB 9108527 and that claimed in PA 654176 is highly relevant to the question of whether the latter was not fairly based on the former. As the primary judge observed, the specification of PA 654176 as amended identifies the invention to which it relates by reference to the lubricant integer. Without that amendment, the Commissioner would not have accepted the application. The invention to which PA 654176 now relates is to be found in the working relationship between the refrigerant composition, which comprises integer (I), and the lubricant, which comprises integer (II). The incorrect reference in GB 9108527 to lubricants was purely incidental and had nothing to do with the essence of the invention claimed in GB 9108527. 30 There is no doubt as to the correctness of her Honour's conclusion that PA 654176 was not fairly based on the disclosure in GB 9108527. It follows that any patent granted in respect of PA 654176 would clearly be invalid and, accordingly, there would be no utility in granting leave to appeal. CONCLUSION 31 Both applications for leave should be refused with costs. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey, the Honourable Justice Emmett and the Honourable Justice Dowsett. Associate: Dated: 21 June 2006 Counsel for the Applicant: Mr D.K. Catterns QC Mr C. Dimitriadis Solicitor for the Applicant: Phillips Ormonde & Fitzpatrick Counsel for the Respondent: Mr J.T. Gleeson SC Mr C.A. Moore Solicitor for the Respondent: Coudert Brothers Date of Hearing: 5 August 2002 Date of Judgment: 23 August 2002