FEDERAL COURT OF AUSTRALIA

Memcor Australia Pty Ltd v GE Betzdearborn Canada Company

[2009] FCAFC 163

PATENTS – application for leave to appeal – divisional application – whether divisional application within the scope of the claims in the parent application  

Patents Act 1990 (Cth) ss 60(4), 79B(1), 158(2)  

Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106  

MEMCOR AUSTRALIA PTY LTD (ACN 003 581 566) v GE BETZDEARBORN CANADA COMPANY

NSD 547 of 2009

EMMETT, STONE AND BENNETT JJ

20 NOVEMBER 2009

SYDNEY

THE COURT ORDERS THAT:

1.         The application for leave to appeal be dismissed.

2.         The applicant pay the respondent’s costs of the application.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

REASONS FOR JUDGMENT

1                          This appeal concerns the operation of s 79B(1) of the Patents Act 1990 (Cth) (the Act) in relation to Patent Application No. 2004203855 (the Divisional Application).  Section 79B(1) of the Act relevantly provides that, where at least three months have elapsed since the publication of a notice of acceptance of a patent request and complete patent specification for a standard patent, the applicant under that application may make a further complete application for a patent for an invention:

·          disclosed in the specification filed in respect of the first application; and

·          falling within the scope of the claims of that specification.

The question is whether the Divisional Application is for a patent for an invention falling within the scope of the claims of accepted complete Patent Application No. 199666528 (the Parent Application). 

2                          Both the Divisional Application and the Parent Application are entitled:

Vertical skein of hollow fiber membranes and method of maintaining clean fiber surfaces.

The claimed invention is for use in liquid-liquid micro filtration processes to remove micron, submicron and larger suspended solids, such as organic molecules, emulsified organic liquids and colloidal or suspended solids, usually from water.  The specifications for the Divisional Application and the Parent Application are the same except for the claims defining the invention and the consistory clauses.  The applicants and the inventors named in both the Divisional Application and the Parent Application are the same.  The Parent Application was filed on 8 August 1996 and notice of acceptance was published on 12 March 1997.  The Divisional Application was filed on 12 August 2004 and notice of acceptance was published on 29 June 2006.

3                          The grant of a patent pursuant to the Divisional Application was opposed by the applicant, Memcor Australia Pty Ltd (Memcor).  Memcor relied on numerous grounds of opposition, all of which were rejected by a delegate of the Commissioner of Patents in a decision published on 5 June 2008.  Memcor appealed from the decision of the Commissioner’s delegate pursuant to s 60(4) of the Act.  On 20 May 2009, a judge of the Court dismissed Memcor’s appeal. 

4                          Memcor now applies for leave to appeal pursuant to s 158(2) of the Act.  Section 158(2) of the Act imposes a requirement that an appeal may be brought from a decision of a single judge of the Court given on appeal from a decision or direction of the Commissioner in relation to an opposition only with the leave of the Court. 

5                          The application for leave has been listed before the Full Court for hearing of the application for leave to appeal and, if leave is granted, for hearing of the appeal.  Both Memcor and the respondent, GE Betzdearborn Canada Company (GE), filed written submissions and have advanced oral argument both in relation to the question of leave and on the substantive issues that would be raised, if leave were to be granted. 

LEAVE TO APPEAL

6                          The grant of leave to appeal under s 158(2) against a decision of a single judge refusing to grant relief in a pre-grant opposition proceeding is discretionary and the Court should take care in considering whether to exercise its discretion.  To do otherwise could frustrate the object of pre-grant opposition proceedings.  That object is to provide a swift and economical means of settling disputes prior to grant.  Where an opponent has had the benefit of two hearings and has been unsuccessful in both, there should be only limited scope for a further appeal.  Only in exceptional circumstances would it be appropriate to grant leave to appeal that would effectively lead to a further consideration of factual issues. 

7                          However, the principles to be applied differ according to whether leave is sought by an applicant for a patent or by an opponent of the grant of a patent.  Leave to appeal against a decision rejecting opposition to a grant should be given only where the applicant has demonstrated a clear prima facie case of error in the decision of the single judge without a detailed examination of the relevant facts, such that the likely effect of the decision would be to allow an invalid patent to proceed to grant (see Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at [10]-[23]). The refusal of leave to appeal will not finally determine the rights of an unsuccessful opponent because the opponent would be able to institute a further proceeding for revocation of the patent once granted.  On the other hand, the rights of an applicant are finally determined by a successful opposition. 

8                          The circumstances that might be regarded as constituting an exceptional case should not be constrained by non-statutory rules.  There will, of course, be circumstances in which leave to appeal will be appropriate.  Memcor contends that the circumstances of the present case are such as would justify the grant of leave.

9                          Those circumstances include the fact that GE has filed a further divisional application under s 79B(1) based on the Parent Patent.  Memcor has opposed that further application on grounds that involve questions of construction of the claims of the Parent Patent that are the same as the questions raised in this proceeding.  Memcor’s opposition to the further application is to be heard in the reasonably near future.  Clearly enough, it is likely that the Commissioner or her delegate will adopt the construction of the claims of the Parent Application that were accepted by the primary judge in dismissing Memcor’s appeal under s 60(4) of the Act.  Memcor says that, therefore, the grant of leave in this case would provide a swifter and more economical means of settling the dispute concerning the construction of the Claims of both the Parent Application and the Divisional Application.  That dispute will otherwise need to be dealt with in further litigation consisting of proceedings opposing the Parent Application and proceedings for revocation of the grant of the Divisional Application following its grant, which would be the consequence of refusing leave. 

10                        If the present application for leave to appeal were refused, it appears likely that, in the further proceeding referred to above, the same arguments would be advanced by Memcor before the Commissioner or her delegate and before a single judge on appeal pursuant to s 60(4) of the Act.  Further, assuming the Commissioner or her delegate and a further single judge followed the decision of the primary judge in the present proceeding, in rejecting an opposition, the same question could be raised in a revocation suit before a single judge in respect of which an appeal to the Full Court would lie as of right. 

11                        In order to deal with the question of leave, it is necessary to examine, to a greater or lesser extent, the merits of the grounds of appeal on which Memcor seeks to rely.  The grounds are entirely based on questions of construction of the claims of the Parent Application.  Memcor says, therefore, that it would be a more efficient and expeditious use of resources for the Full Court, having heard full argument as to the questions of construction, in order to determine the merits of the appeal, to rule on the questions of construction on a substantive basis.  While GE opposes the grant of leave, it accepts the desirability of a determination by a Full Court on a substantive basis, assuming that the Full Court’s determination is favourable to its interest. 

12                        In ruling on the question of leave, it is necessary to consider the merits of the grounds of appeal.  Before doing so, it is desirable to say something about the claimed invention of the Parent Application and the Divisional Application. 

THE INVENTION OF THE PARENT APPLICATION AND THE DIVISIONAL APPLICATION

13                        The subject matter of the claimed inventions is micro filtration involving the filtration of fine particles from solution using membranes having very small pores.  Such membranes might be formed as flat sheets, as tubes, or as hollow fibres or capillaries.  The Divisional Application and the Parent Application each deal with hollow fibre membranes, also referred to as fibres.  Each hollow fibre membrane is a long, thin, hollow tube with a narrow radius in the order of, for example, 500 microns. 

14                        The process of filtration works by passing the fluid to be filtered from one side of the membrane to the other.  Before it passes through the membrane, the fluid is referred to as substrate.  After it emerges, having passed through the membrane, the fluid is referred to as permeate.  The very small pores in the membrane allow the fluid to pass through but prevent impurities from passing through. 

15                        Such hollow fibre membranes may be packaged into a single device.  In the claimed invention of the Divisional Patent and the Parent Patent, the fibres are arranged vertically, parallel to each other to form what is described as a “vertical skein”.  The ends of the fibres are “potted” into two resin blocks, called headers.  The device is submerged in a vessel or reservoir containing the substrate.  Suction is applied to the insides of the fibres, drawing the fluid through the fibres.  The fluid thus passes from the outside of a fibre, through the membrane, to the inside and then passes along the hollow inside of the fibre to be withdrawn at an open end of the fibre at the permeate discharging face of a header.  A permeate collection means is provided at the permeate discharging face to collect the permeate.  The permeate is then withdrawn from the permeate collection means. 

16                        In ordinary parlance, a skein is a length of thread or yarn wound in a coil, or something resembling that.  In the present context, one might expect the collection of fibres to be a skein.  However, as explained below, there is an explanation of the term in the specification. 

17                        The term potted, in the parlance of electrical componentry, signifies something encased in an insulating material, such as synthetic resin.  The word is so applied to an electrical component or circuit encased in an insulating material.  In the present context, “potted” refers to the encasement of the fibres in the header, which consists of synthetic resin. 

18                        The complete specification for each application states that the claimed invention relates to a membrane device, which is said to be an improvement on a frameless array of hollow fibre membranes, as well as to a method of maintaining clean fibre surfaces while filtering a substrate to withdraw a permeate.  The specifications then go on to state that the claimed invention is particularly directed to relatively large systems for the micro-filtration of liquids, and capitalises on the simplicity and effectiveness of a configuration that dispenses with forming a module in which the fibres are confined.  The specifications state that the novel configuration efficiently uses air discharged near the base of a skein to produce bubbles in a specified size range and in an amount large enough to scrub the fibres and to provide controlled scrubbing of fibres one against each other.  The fibres in the skein are vertical and do not present an acuate configuration above a horizontal plane through the horizontal centre line of a header.  As a result, the path of the rising bubbles is generally parallel to the fibres and is not crossed by the fibres of the skein.  Nevertheless, the bubbles scrub the fibres.

19                        The detailed description of preferred embodiments in the specifications describes typical applications for the claimed invention.  The specifications then state that, typically, the skein is configured so that all connections for fluids entering or leaving the skein are provided in the upper header.  Permeate is most preferably withdrawn through a tube passing through the upper header, whether permeate collects in both the upper and lower headers or only the upper header.

20                        The specifications state that the particular method of securing the fibres in each of the headers is not “narrowly critical”.  It is said that the choice depends upon the materials of the header and the fibre and the cost of using a method other than potting.  The specifications state, however, that it is essential that each of the fibres be secured in a fluid-tight relationship within each header to avoid contamination of the permeate.  That is effected by potting the fibres essentially vertically, in closely spaced relationship, substantially concentrically.

21                        The specifications begin by stating that the term “vertical skein” in the title or “skein” in the specification, for brevity, specifically refers to an integrated combination of structural elements, including:

(i)         a multiplicity of vertical fibres of substantially equal length;

(ii)        a pair of headers in each of which are potted the opposed terminal portions of the fibres so as to leave their ends open; and

(iii)       permeate collection means held peripherally in a fluid tight engagement with each header so as to collect permeate from the ends of the fibres.

That explanation of the term is critical to the question of construction raised by Memcor.  The same explanation of the term “vertical skein” also appears in a glossary at the end of the specifications.

22                        The Glossary has the following preamble:

The following glossary is provided for terms in the approximate order in which they are used in the specification to define their meaning in the context in which they are used.

The intention of the drafter in referring to the approximate order in which terms are used is somewhat opaque.  The terms appear in alphabetical order except that nine terms or phrases appear at the end of an alphabetical list of some 21 terms or phrases.  The 21 terms or phrases that appear in alphabetical order do not appear in the specifications in that order.

23                        Curiously, however, at the beginning of the specifications, it is said that the term “skein” is used for brevity instead of “vertical skein”.  Nevertheless, the term “skein” is separately explained in the Glossary in language quite different from the explanation for vertical skein.  Thus the term “skein” is said in the Glossary to be used for brevity to refer to either a “cylindrical skein” or a “vertical skein” or both.  It is clear enough, therefore, that the terms that are explained in the Glossary cannot be intended as strict definitions. 

THE CLAIMS OF THE DIVISIONAL PATENT AND THE PARENT PATENT

24                        The argument concerning the application of s 79B(1) focussed on Claim 1 of each of the applications.  The language of the two Claims is similar, but by no means identical.  It is possible to discern a general correlation between the integers of Claim 1 of the Parent Application and the integers of Claim 1 of the Divisional Application.  However, the Divisional Application contains an additional integer.  The two claims are set out in Schedule 1 and Schedule 2 respectively.

25                        A correlation can also be observed between Claim 1 of each of the applications on the one hand, and the explanation of the term “vertical skein” in the specifications on the other.  Thus:

·          Item (i) of the explanation corresponds with Integer I. 

·          Item (ii) of the explanation corresponds with Integers II and III. 

·          Item (iii) of the explanation corresponds with Integer IV. 

26                        Integer VI of Claim 1 of the Parent Application recognises that correspondence.  Thus, the said fibres (referring to Integer I), the said headers (referring to Integers II and III) and the said permeate collection means (referring to Integer IV) are said together to form a vertical skein wherein the fibres are essentially vertically disposed.  Memcor argues that the reference to a vertical skein in Integer VI necessarily refers to the explanation of that term at the beginning of the specification and in the Glossary. 

27                        Clearly, however, the glossary is no more than an explanation.  A glossary is not a dictionary.  A glossary is no more than an alphabetical list of words with explanations of the words.  A glossary does not purport to define the meaning of words with precision.  It is apparent that that is the object of the glossary in the specifications.  Otherwise, the definitions contained marked inconsistencies.  Indeed, the Glossary in the specifications states specifically that its purpose is to define the meaning of the terms in the context in which they are used.  Thus, the specifications expressly acknowledge that the Glossary does not provide strict definitions.

28                        It follows that, when Integer VI in Claim 1 of the Parent Application states that the fibres, headers and permeate collection means of Integers I to IV together form a vertical skein, it is not intended to restrict the meaning of that term to the precise language of the explanation of the term in the Glossary.

THE PROPOSED GROUNDS OF APPEAL

29                        Memcor seeks to rely on three grounds of appeal.  Ground 4 of Memcor’s draft Notice of Appeal was abandoned.  The first two grounds may be summarised as follows:

·          Ground 1:  vertical skein.

Memcor says that it is a requirement of Claim 1 of the Parent Application that the ends of the fibres in the apparatus described in Claim 1 be open at both ends, so that permeate may be collected at both headers.  Memcor says that that conclusion follows from the requirement that each of the headers is to have a permeate discharging face and there can be no permeate discharge at the face of a header unless the fibres are open.  Memcor says that that conclusion also follows from the requirement that there be a permeate collection means connected in open fluid communication with each permeate discharging face as referred to in Integer IV.  Memcor contends that those requirements are confirmed by the use of the term “vertical skein” in Integer VI and Items (ii) and (iii) in the explanation of the term “vertical skein” in the Glossary.  None of the claims of the Divisional Application includes those requirements.

·          Ground 2:  fibres extending from a permeate discharging face.

Integer III of Claim 1 of the Parent Application refers to:

…all open ends of said fibres extending from a permeate discharging face of at least one header. 

Memcor contends that, for at least one header, all open ends of the fibres must extend from a permeate-discharging face.  There is no such requirement in Integer III of the Divisional Application.

30                        A third ground would be raised by Memcor if leave is granted.  That ground is irrelevant if Memcor fails in relation to the first two grounds.  The third ground is based on the conclusion of the primary judge that Claim 1 of the Divisional Application is within the scope of Claims 15 and 16 of the Parent Application, which are described as “omnibus” claims.  GE does not seek to support the conclusion of the primary judge in relation to the omnibus claims on the question of the application for leave.  However, if leave were to be granted and the Court were to accept either Ground 1 or Ground 2, GE would seek to support the conclusion of the primary judge in relation to the omnibus Claims.

VERTICAL SKEIN

31                        Memcor contends that Integer IV of Claim 1 of the Parent Application expressly requires that each header have a permeate discharging face.  It follows, Memcor says, that there must also be a means of collecting the permeate emitted from the permeate discharging face of each header.  Memcor contends that that conclusion must follow from the statement in Integer VI that the said fibres, said headers and said permeate collection means together form a vertical skein.  Memcor says that that must be understood in the light of the explanation of the term “vertical skein” at the beginning of the specifications and in the Glossary. 

32                        Item (iii) of the explanation in the Glossary refers to a permeate collection means held peripherally in fluid tight engagement with each header so as to collect permeate from the ends of the fibres.  Thus, Memcor says, where Integer III refers to all open ends of the said fibres extending from a permeate discharging face of at least one header, the explanation of vertical skein, incorporated by Integer VI, imports a requirement of a permeate collection means for both headers. 

33                        No such requirement is found in Claim 1 of the Divisional Patent.  Integer VI of the Divisional Patent does not say that the said fibres, said headers and said permeate collection means together form a vertical skein.  Rather, Integer VI of Claim 1 of the Divisional Patent says that they form part of an integrated combination of elements.

34                        For the reason indicated above, the structure of the specifications does not lead to the conclusion that the reference, in Integer VI of Claim 1 of the Parent Application, to a vertical skein imports, as a definition, the language of Item (iii) of the explanation of “vertical skein” in the Glossary.  There is no reason to be discerned from the Parent Application as to why it should be an essential element of the claimed invention that each header should have a permeate collection means.  Claim 1 of the Parent Application, fairly construed, permits an arrangement whereby the fibres could be open to a permeate discharging face of only one of the headers.  Thus, Integer III of Claim 1 of the Parent Application expressly refers to the open ends of the fibres extending from a permeate discharging face of at least one header.  There is no reason to read that phrase as meaning “both headers”, such that the claimed invention of the Divisional Application does not fall within the scope of the Parent Application.

35                        That is the conclusion reached by the primary judge.  There was no error in her Honour’s reasoning in arriving at that conclusion.

FIBRES EXTENDING FROM A PERMEATE DISCHARGING FACE

36                        Memcor contends that Integer III of the Parent Application requires that, for at least one header, all open ends of the fibres must extend from a permeate discharging face and that there is no such requirement in Claim 1 of the Divisional Application.  However, that phrase must be construed in the light of the other claims of the Parent Application.

37                        Claim 4 of the Parent Application is for, inter alia, the membrane device of Claim 1, wherein each header is formed in a geometry, chosen from a rectangular prism and a cylindrical disk, the fibres have specified surface area and length and the terminal end portions of the fibres protrude through a permeate discharging face of each said header.  Claim 9 is for a method of forming a header for a skein of a multiplicity of fibres including, relevantly, removal from an identified lamina so as to leave open ends of said fibres protruding from an aft face of said header.  Finally, Claim 13 is for a header in which a multiplicity of hollow fibre membranes or fibres is potted, said header including, relevantly, certain lamina having an aft face through which said ends protrude and a fore face through which said fibres extend vertically.

38                        Thus, a distinction is drawn in the claims of the Parent Application between fibres protruding on the one hand and fibres extending on the other.  The reference in Integer III to fibres extending from a permeate discharging face is not a reference to the protrusion of the fibres from the permeate discharging face into the permeate collection chamber.  Rather, it is a reference to the open ends of the fibres extending from the permeate discharging face of at least one header in the vertically spaced apart relationship identified:  that is to say, through the substrate and towards the other header.  The words “extending from” a permeate discharging face suggest an extension of the fibres in a vertical alignment from the permeate discharging face through the resin block forming the header and in the direction of the other header, whether that is up or down. 

39                        The reference in Claim 4 to the fibres protruding through a permeate discharging face of each header does not indicate that any different construction is required.  Claim 1 does not require any protrusion because it encompasses both the conventional and novel methods of constructing a header described in the specifications, consistently with the body of the specification.  In that regard, the statement that the particular method of securing the fibres is “not narrowly critical” is significant.  Claim 4 is narrower because it requires the fibres to protrude through the permeate discharging face of a header, as a result of using the novel potting method.  Claim 3 supports that interpretation in so far as it refers to fibres extending as a skein upwardly from a fibre supporting face of each of the headers and the fibres extending downwardly through the permeate discharging face of the headers.

40                        Integer III of the Divisional Application requires all open ends of the fibres to be open to a permeate discharging face of one or both headers.  Integer II requires the headers to be disposed in a vertically spaced apart relationship and the fibres to be oriented essentially vertically between the headers.  The difference between Claim 1 of the Divisional Application and Claim 1 of the Parent Application is immaterial.  The difference does not support the conclusion that the claimed invention of the Divisional Application does not fall within the scope of the Claims of the Parent Application.

41                        That is the conclusion reached by the primary judge.  There was no error in her Honour’s reasons for reaching that conclusion. 

CONCLUSION

42                        The primary judge made no error.  Both Ground 1 and Ground 2 of Memcor’s proposed notice of appeal should be rejected for the reasons given by her Honour.  In those circumstances, it is unnecessary to consider Ground 3. 

43                        In all of the circumstances, leave to appeal should be refused.  Memcor should pay GE’s cost of the application for leave to appeal.

SCHEDULE 1

PARENT APPLICATION

1.   A microfiltration membrane device, for withdrawing permeate substantially continuously from a multicomponent liquid substrate, said membrane device including:

I.          a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module, said fibers being swayable in said substrate;

II.         a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance;

III.       said first header and said second header having opposed terminal end portions of each fiber sealingly secured therein with potting resin, all open ends of said fibers extending from a permeate-discharging face of at least one header;

IV.       permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers; and,

V.        means to withdraw said permeate;

VI.       said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed;

VII.      each of said fibers having substantially the same length, said length being from 0.1% to less than 5% greater than said fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber;

wherein said fibers are subject to a transmembrane pressure differential in the range from 0.7 kPa (0.1 psi) to 345 kPa (50 psi), and, said fibers of each header are spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship.

[Roman numerals have been added for reference purposes]

SCHEDULE 2

DIVISIONAL APPLICATION

1.   A microfiltration membrane device, for withdrawing permeate from a multicomponent substrate, said membrane device including:

I.          a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module;

II.        a first header and a second header disposed vertically spaced apart relationship with opposed faces at a fixed distance;

III.       said first header and said second header having opposed ends of each fiber sealingly secured therein with potting resin, all open ends of said fibers open to a permeate discharging face of one or both headers;

IV.       permeate collection means to collect permeate sealingly connected in open fluid communication with the or each permeate discharging face;

V.        means to withdraw said permeate;

VI.       said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically;

VII.      each of said fibers have a length from 0.1% to less than 5% greater than the fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber; and

VIII.    through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of pressurized gas;

wherein said fibers are subjectable in use to a trans-membrane pressure differential in the range of 0.7 kPa to 345 kPa created by applying a suction to the permeate collection means, and, said fibers are spaced apart to a desired lateral spacing between fibers by said potting resin, to as maintain the ends in closely spaced apart relationship.

[Emphasis added; the Roman numerals have also been added for reference purposes]

Associate:

Dated:         20 November 2009