FEDERAL COURT OF AUSTRALIA

Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The cross-appeal be allowed.

3.    The appellant/cross-respondent pay the respondent/cross-appellant’s costs of the appeal and cross-appeal as agreed or taxed.

4.    Orders 2 and 5 and the certificate in paragraph 6 of the orders given on 30 August 2017 be set aside, and in their place the Court:

(a)    declares that claims 1 and 3 of Patent No. 720234 were at all material times invalid; and

(b)    orders that the cross-respondent pay the cross-claimant’s costs of the cross-claim as agreed or taxed.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BESANKO J:

1    I have had the advantage of reading the reasons for judgment of Jagot J. I agree with those reasons and with the orders which her Honour proposes.

Associate:    

Dated:    29 January 2019

REASONS FOR JUDGMENT

JAGOT J:

2    The issues in this appeal and cross-appeal are confined to two questions. First, did the primary judge misconstrue the word “contains” as it appears in claim 3 of the disputed patent? Second, did the primary judge’s reasoning about the obviousness of the invention miscarry?

3    I have concluded that Nichia’s appeal should be dismissed and Arrow’s cross-appeal should be allowed.

The patent

4    The patent concerns a white light emitting device or LED. As the primary judge explained in his reasons for judgment (Nichia Corporation v Arrow Electronics Australia Pty Ltd (No 4) [2017] FCA 864) at [37] the “specification explains, however, that, although LEDs are effective as light emitting devices for generating monochromatic light (such as red, green and blue), a satisfactory light source capable of emitting white light using these components has not been obtained.” According to the specification, in the primary judge’s words at [44], “the invention aims to provide an alternative to known light emitting devices and displays, which alleviates at least one of the described problems to provide a light emitting device which experiences only extremely low degrees of deterioration in emission light intensity, light emission efficiency and colour shift over a long time of use, with high luminance.”

5    The specification identifies various aspects of the invention. As the primary judge put it at [58]:

[S]o far as fluorescent materials are concerned, the invention described in the specification is directed to the use of garnet fluorescent materials of a particular kind. Attention is directed to Y3Al5O12:Ce (YAG:Ce), or forms of that phosphor with substituents or additions, as the specified phosphor. Twelve examples of the use of such a phosphor are provided. In some examples, two such fluorescent materials are used. There are two comparative examples. The comparative examples do not use a garnet fluorescent material.

6    The parties accept the accuracy of the primary judge’s statement at [61] of his reasons in these terms:

…although the general formula of claim 3 covers a phosphor containing Sm as well as Y and/or Gd, and Ga as well as, or in substitution for, Al, it includes the phosphor YAG:Ce. Therefore, it can be said that, at its simplest, the light emitting device claimed in claim 3 is one in which a nitride compound semiconductor (the light emitting component) is combined with YAG:Ce.

7    There is also no dispute about the accuracy of the primary judge’s statement at [62] that:

…claim 3 does not, in terms, require the creation of white light, nor white light of any particular nature, quality or colour rendering. Nor does it require that the light emitting device be suitable for any particular application; there are no requirements of stability, durability, efficiency or performance expressed as essential features of the invention.

8    Despite this, the parties also accept to be correct that claim 3 claims a LED that emits white light. Thus, as the primary judge said at [63]:

Nevertheless, the specification makes clear that the invention is a light emitting device that emits white light. The present case is an example of where the context provided by the specification rises up to insist that claims 1 and 3 are directed to such a device: International Business Machines Corporation v Smith, Commissioner of Patents (1992) AIPC 90-853 at 38,160-38,161.

9    Similarly, it is not in dispute that, as the primary judge said at [64], “the specification makes clear that an object of the invention is to provide a light emitting device with high luminescence, and which experiences only extremely low degrees of deterioration in emission light intensity, light emission efficiency and colour shift over a long period of use.”

10    At [66] the primary judge said this:

It can be taken that each embodiment of the invention that is claimed is a light emitting device (whether as an LED, a display device or some other light emitting device), or a method of preparing a light emitting device, that is directed to meeting these requirements [that is, high luminance, excellent resistance against light and heat or durability, and high efficiency]. This is not to say that these requirements are imported as essential features of the invention that is claimed—as if the claims were limited by result. It does acknowledge, however, that the invention is directed to a white light emitting device that should attain these preferable (in the sense of desirable) attributes. These are the “promises” that the specification makes.

11    There is a dispute about the use the primary judge made of these conclusions when dealing with obviousness.

12    Claim 1 is in these terms:

A light emitting device, including a light emitting component and a phosphor capable of absorbing a part of light emitted by the light emitting component and emitting light of wavelength different from that of the absorbed light; wherein said light emitting component comprises a nitride compound semiconductor and said phosphor contains a garnet fluorescent material including at least one element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and at least one element selected from the group consisting of Al, Ga and In, and being activated with cerium.

13    Claim 3 provides that:

A light emitting device according to claim 1, wherein the phosphor contains fluorescent material represented by a general formula (Rel-rSmr)3(Al1-sGas)5O12:Ce, where 0≤r<l and 0≤s≤1 and Re is at least one selected from Y and Gd.

14    Claim 6, which the primary judge and the parties considered relevant to the construction of claim 3, is as follows:

A light emitting device according to claim 3, wherein the phosphor contains two or more fluorescent materials of different compositions represented by a general formula (Rel-rSmr)3(Al1-sGas)5O12:Ce, where 0≤r<l and 0≤s≤1 and Re is at least one selected from Y and Gd.

The construction issue

15    The primary judge was presented with three competing constructions of claim 3.

16    First, claim 3 involves a light emitting device that contains only the described phosphor (that is, given that claim 3 is dependent on claim 1, the phosphor described in claim 1 being a garnet fluorescent material including at least one element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and at least one element selected from the group consisting of Al, Ga and In, and being activated with cerium).

17    Second, claim 3 involves a light emitting device in which the described phosphor contains one or more fluorescent materials of the type described (that is, represented by the general formula as set out in claim 3), but no fluorescent material of any other type (that is, a type not within the general formula set out).

18    Third, that claim 3 involves a light emitting device in which the described phosphor contains one or more fluorescent materials of the type described (that is, represented by the general formula as set out) irrespective of whether the phosphor also contains any other fluorescent material or materials not within the general formula.

19    The primary judge considered the second of these constructions to be correct.

20    Despite extensive written and oral submissions, I do not accept that the primary judge adopted a fourth construction, that claim 3 required a light emitting device in which the described phosphor contains only one single fluorescent material of the type described (that is, represented by the general formula as set out) and no fluorescent material of that or any other type. Arrow’s submissions to the contrary are persuasive. For one thing, and contrary to Nichia’s submissions, neither party advocated for such a construction before the primary judge. This is important because it means the primary judge’s reasons are to be read understanding that it had not been put to him that the reference to “fluorescent material” in claim 3 meant a single “material” rather than the plural “materials”. The issue was whether the claim required the fluorescent material to be of a single type only (that is, a garnet fluorescent material within the general formula set out) and no other type or whether the claim required only that the fluorescent material of the required type was present. In this context, the concept of “single” means “single type of material” not “single material”.

21    Accordingly, the focus in Nichia’s submissions on those parts of the primary judge’s reasons which use the word “single” or otherwise might seem to suggest single “material” as opposed to plural “materials” (rather than type of material) is misplaced. Take [79] of the primary judge’s reasons which Nichia emphasised. The primary judge said:

The light emitting device claimed in claim 3 is one in which the phosphor is a single fluorescent material represented by the general formula. Claim 3 does not claim a device in which the phosphor is the defined fluorescent material together with one or more other fluorescent materials.

22    Understood in context, the primary judge was not saying that for claim 3 there can be only one fluorescent material represented by the general formula. He was saying that the fluorescent material must be the fluorescent material represented by the general formula and not that fluorescent material together with some other fluorescent material not represented by the general formula. Whether the material is one single material or a number of plural materials is irrelevant. The issue which the primary judge was resolving was not a singular or plural meaning of “material” in claim 3 but whether the monopoly established by claim 3 required the phosphor to contain only fluorescent material (singular or plural) represented by the general formula and no other fluorescent material.

23    The same must be said about [83] in which the primary judge said:

It is clear that each consistory statement is talking about specific fluorescent material. Each statement describes the phosphor as a fluorescent material of the stated formula. The consistory statements do not even suggest, let alone say, that the phosphor can be anything other than the specifically stated fluorescent material defined by the general formula.

24    The primary judge’s emphasis of the definite article “the” to describe the phosphor and the indefinite article “a” to describe the fluorescent material, understood in context, does not convey any notion of singularity of the fluorescent material other than that the fluorescent material must be of the specified kind, which is the fluorescent material as described in claim 1 but more particularly as described by the general formula in claim 3.

25    The same context must be kept in mind in respect of [91] of the primary judge’s reasons where this was said:

This construction is supported by other aspects of the description of the invention. In particular, when a specific embodiment of the invention can contain more than one fluorescent material as the phosphor, the specification says so; in these cases, the specification describes the materials that can be used. This assists with the meaning of “contains” when used throughout the claims.

26    The meaning of “contains” which the primary judge had in mind was that described in the immediately preceding paragraph, [90], in these terms:

In context, “contains”, as used in claim 3, can only be a reference to the defined fluorescent material as the phosphor of the claimed device, not some combination involving, for example, other fluorescent materials about which the specification says nothing and about which it can make no promises as to their characteristics when used in a light emitting device containing the nitride compound semiconductor as the light emitting component.

27    Understood in the context of [90], the primary judge was saying in [91] that the specification assisted in construing the word “contains” in claim 3 because it identifies the various fluorescent materials which can be used as the phosphor (albeit, where the invention is concerned, that the fluorescent materials are all of the kind described in claim 1). An example of this is example 11 of the invention where the phosphor is made by mixing a fluorescent material of one kind described in claim 1 with a fluorescent material of another kind described in claim 1. In effect, the primary judge was saying that this patent is precise about the fluorescent materials of the invention which supported construing “contains” in claim 3 as if it were exhaustive.

28    When dealing with the relevance of claim 6 the primary judge said:

96     The applicant pointed to the fact that claim 6 is expressed to be dependent on claim 3 and, for that reason, must be narrower than claim 3. The applicant then argued that claim 6 had been narrowed “to exclude a phosphor containing only one fluorescent material”.

97     This submission does not assist the applicant’s construction of claim 3. Claim 6 confirms the construction I have found. The invention of claim 6 is distinguished from the invention of claim 3 in that, in claim 6, two or more fluorescent materials represented by the general formula are used as the phosphor. This confirms that, in claim 3, the words “fluorescent material” are used advisedly to refer to a single fluorescent material, being material represented by the general formula. The applicant’s construction, which proceeds on the basis that the phosphor merely include fluorescent material represented by the general formula, would suggest that claim 6 is largely redundant because, from the perspective of infringement, claim 3 would also do the work of claim 6. This cannot have been intended by the drafter of the specification. Claim 6 is an example of where the specification is specific when more than one fluorescent material can be used as the phosphor. Claims 7 and 8 provide further examples. Claim 3 confines the phosphor to a specific material (i.e., material within the general formula). Claims 6, 7 and 8 each confine the phosphor to specific materials (i.e., each material of a different composition but nevertheless within the general formula).

29    Nichia focused on the third sentence in [97]. Read in isolation this does indicate the primary judge adopted a construction for which neither party advocated (and which neither suggested should be adopted in the appeal). Even read in context, I would accept that [97] involves ambiguity. It may be that the primary judge, in [97], has explained why he considered claim 6 to be confirmatory of his construction by straying into notions of singularity and plurality of materials. The important point, however, is that whatever else the primary judge was saying in [97], the reasoning was merely confirmatory of his conclusion that “contains” in claim 3 was to be understood as exhausting the potential for the presence of fluorescent material in the invention; that is, the invention in claim 3 is the device wherein the phosphor contains fluorescent material represented by the general formula and no other fluorescent material not represented by the general formula.

30    This said, construing claim 3 as if it meant that the fluorescent material had to be one composition only of a fluorescent material represented by the general formula may well place too great a burden of meaning on the fact that the claim refers to “fluorescent material” and not “fluorescent materials”. But the relevant point for present purposes is not answered by deciding if claim 3 contemplates more than one fluorescent material represented by the general formula. The issue which divided the parties, and on which the primary judge was focused, was whether claim 3 described the phosphor of the invention as containing: (a) fluorescent material represented by the general formula and no other fluorescent material not represented by the general formula; or (b) fluorescent material represented by the general formula whether or not the phosphor also contained other fluorescent material not represented by the general formula (that is, the issue was whether “contains” is used exhaustively or inclusively in claim 3).

31    There is a compelling reason why the primary judge must be taken to have rejected Arrow’s first possible construction, not pursued in this appeal, that the phosphor could not contain anything, be it fluorescent material or not, apart from fluorescent material represented by the general formula. As the primary judge said at [70], it is clear that the phosphor is mixed in a resin. Given this, it is unsurprising that neither party suggests that the presence of other non-fluorescent material in the phosphor, such as resin, is relevant.

32    For my part, many of the competing arguments about whether “contains” in claim 3 is used exhaustively or inclusively, on analysis, tend to the merely neutral.

33    Accordingly, as the primary judge said at [81] it is true that claim 3 is directed towards a subset of the garnet fluorescent materials. But in isolation that says nothing about whether “contains” should be construed, in effect, as “has present in it” or “includes” (Nichia’s inclusive construction) or “contains only” (Arrow’s exhaustive construction).

34    Similarly, it is also true that the statements in the specification which most closely accord with claims of the invention do not suggest that, in the primary judge’s words at [83], “the phosphor can be anything other than the specifically stated fluorescent material defined by the general formula.” Again, however, it is not in dispute that claim 3 requires the phosphor to contain (in the sense of include) fluorescent material defined by the general formula. The issue is whether the fact that the specification is silent about the presence of any other fluorescent material not represented by the general formula indicates that “contains” takes an exhaustive rather than inclusive meaning.

35    Nor am I persuaded that the construction issue is answered by focusing on the promises of the invention. The primary judge said this at [87]:

The promise is that use of the fluorescent material defined by the general formula in claim 3 will achieve similarly good characteristics. The promised characteristics are secured by the word “contains” in claim 3.

36    However, as Nichia submitted, the promise is secured just as well by constructing contains as the equivalent of “includes”. It is the presence of fluorescent material represented by the general formula which secures the promise, not the absence of other fluorescent material not represented by the general formula.

37    To the same effect, the primary judge’s statement at [90] that the specification makes no promises about other fluorescent material not represented by the general formula may be accepted, but if it is the presence of the fluorescent material represented by the general formula which secures the promise, again, absence of any such promise about other fluorescent material not represented by the general formula would seem to be merely neutral.

38    So too, the observation in [91] that the specification says when more than one fluorescent material represented by the general formula can be used does not, to my mind at least, assist with the meaning of “contains”. This is because, again, the embodiments of the invention all involve compositions of fluorescent material represented by the general formula when the issue of construction is whether claim 3 excludes from its scope the defined device with the phosphor containing both fluorescent material represented by the general formula and fluorescent material not represented by the general formula.

39    In common with the primary judge at [93], I do not find the word “including” in claim 1 of any assistance because including relates to the light emitting device – not the phosphor. For claim 1 the phosphor must contain a garnet fluorescent material including at least one element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and at least one element selected from the group consisting of Al, Ga and In, and being activated with cerium. For claim 3 the phosphor must contain a subset of the claim 1 fluorescent material, being fluorescent material represented by the general formula in claim 3. But the problem of the meaning of “contains” remains, whether it be for claim 1 or claim 3 (or other claims of the patent using the same terms).

40    In contrast to the primary judge, I also consider claim 6 does not provide assistance for the resolution of this issue of construction. Claim 6 merely raises the same issue of construction. Claim 6 can function as a dependent claim, narrower than claim 3, whether “contains” is construed to mean “includes” or “contains only”. Either way, claim 6 is narrower than claim 3 and can depend on claim 3 because there must be at least two fluorescent materials of different compositions within the general formula to satisfy claim 6 whereas one single fluorescent material represented by the general formula would satisfy claim 3.

41    Nor do I consider that the existence of a degree of overlap between claims 3 and 6 provides a sound basis to prefer one construction of claims over another. Even if, as the primary judge said at [97], claim 6 is “largely redundant” because claim 3 also covers two or more fluorescent materials of different compositions represented by the general formula, the redundancy is not complete as claim 6 specifically defines and claims a sub-set of claim 3 devices. In any event, some, even extensive, redundancy in the drafting of patent claims seems more an indicator of an abundance of caution than a guide to the meaning of “contains” which appears in both claims 3 and 6 (and other claims) and thus should generally be construed as having the same meaning wherever it is used.

42    In [98] the primary judge considered NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1993) 44 FCR 239 in which the construction of the patent (the issue being was a single phosphor or a mixture of phosphors within the scope of the claim) also involved the word “contains”. Thus, claim 1 of the patent in dispute referred to an integer “wherein the luminescent layer contains a luminescent material ...”. At 257–8 Lockhart J, with whom Northrop and Burchett JJ agreed, said:

Questions of construction of claim 1 are critical to the issue of infringement. His Honour construed the words in the claim "wherein the luminescent layer contains a luminescent material …" as meaning a luminescent layer which comprises a single phosphor or single chemical compound with defined properties. His Honour said that the word "contains" is ambiguous and that it may mean "comprises" or "includes". He looked to the body of the specification and concluded that the expression "contains a luminescent material" in claim 1 means comprises a single phosphor and not a mixture of phosphors. As the respondent's lamp embodies three phosphors, his Honour held that there was no infringement. This was the only basis on which it was contended before his Honour that there would not have been infringement, assuming the validity of the patent.

The relevant principles of construction of the claim where ambiguity is asserted are clear. If the meaning of a word in a claim is not clear then it is permissible to resort to the body of the specification to define or clarify the meaning of the word "without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification": see Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 per Barwick CJ and Mason J at 478-9 and the cases there cited. See also Decor Corporation Pty Ltd v Dart Industries Inc [1989] AIPC 38,821 per Lockhart J at 38,827 and Sheppard J at 38,834.

The word "contains" is susceptible of more than one meaning. So far as relevant in this case it may mean "contains" in the sense of "comprises or consists of" or in the sense of "has within it", though, depending on the context, there is overlap between these concepts. The dictionaries attribute either meaning to the word. The word "material" is also capable of bearing more than one construction, again depending on the context in which it appears. It may mean "the substance of which a thing is made" or "composed of a component or constituent matter" as in a raw material; again, depending on the context, the two ideas may overlap. But the fact that a word may be susceptible of different meanings derived from its context does not mean that its meaning is ambiguous.

I respectfully differ on this question from the primary Judge. I do not discern ambiguity in the word "contains" where it appears in the relevant part of claim 1. It means that the luminescent layer has within it a luminescent material. The word "material", according to its ordinary English usage, may mean that the material is itself a mixture of other materials or compounds. It is perfectly apt to describe the resultant mixture as itself a material. I read the expression "contains a luminescent material" as meaning that the luminescent layer has within it a phosphor or mixture of phosphors. I see no warrant for reading the words "luminescent material" as being confined to a single phosphor or single chemical compound. Earlier in the claim, reference is made to the lamp the subject of the invention as having a "vacuum-tight radiation-permeable envelope bearing a luminescent layer and containing a gas filling comprising mercury and a rare gas … " There the draftsman has used the word "containing" in the sense of having within it. In my view the reference a little later in the claim to the word "contains" is to be read in the same sense as the word "containing" which precedes it by some four lines. I discern no ambiguity. It is neither necessary nor permissible in my view to resort to the body of the specification in these circumstances.

However, if there is ambiguity in the words "contains a luminescent material" then resort to the body of the specification is justified. But if one proceeds down that path, I reach the conclusion that the luminescent layer has within it a single phosphor or a mixture of phosphors and not necessarily a single chemical compound or single phosphor.

Where necessary, the interpretation of the specification should be approached from the viewpoint of the skilled addressee in the Art: Henricksen v Tallon [1965] RPC 434 at 443; General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485; Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 523-4. In my opinion it is clear that the skilled addressee at the priority date, namely, 23 August 1977, would interpret the specification as referring to a luminescent layer which has within it a phosphor or a mixture of phosphors. The principal object of the invention was for a lamp which may be substituted for conventional incandescent lamps (see p 5 of the specification). The examples given in the specification contain examples 18, 19, 20, 27, 28 and 29, each of which involves mixtures of phosphors. Examples 27, 28 and 29 are CAT, BAM and YOX mixtures and it is said on p 25 of the specification that lamps made with mixtures of those three luminescent materials "only serve to illustrate the invention".

43    After referring to Philips the primary judge said this in [98]:

… in Philips (FCAFC), Lockhart J (with whom the other members of the Full Court agreed) had regard to the fact that, if the luminescent layer of the discharge tube in that invention were to be confined to one phosphor or a single chemical compound, the object of the invention could not be achieved. There is no evidence before me of any similar consideration in this case. Indeed, the teaching of the specification is to the contrary.

44    In Philips the first point being made was that “contains”, whilst ambiguous in isolation, as it appeared in the claim in dispute was not ambiguous so resort to the specification was unnecessary. Further, the specification disclosed that the invention could contain either a single phosphor or a mixture of phosphors. In the present case, the specification does not mention, in the context of the invention, any phosphors other than those containing the fluorescent material of the kind described in claim 1. The specification is silent about the possibility of the fluorescent material containing fluorescent material of the kind described in claim 1 and of any other kind. It is this fact which Arrow urges as supporting the construction of “contains” as exhaustive (that is, in the “contains only” sense). It is the same fact which Nichia relies on to support the construction of “contains” as non-exhaustive (that is, in the “includes” or “has present within it” sense). Whatever support the specification provides to one or other construction, it is difficult to conclude that the specification teaches that the object of the invention will not be achieved by including in the phosphor other fluorescent material not of the kind in claim 1. The specification is simply silent about any such possibility and thus says nothing about the effect, if any, of that possibility on achieving the object of the invention.

45    In common with the primary judge at [107], I am not persuaded by Nichia’s submission that the principles concerning infringement (for example, as described in Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220; (2005) 224 ALR 168 at [70] and [92]) are relevant to construction of claim 3. The proposition that the addition of integers to a claimed combination may not avoid infringement if the additions are inessential or do not make a new combination is relevant to the question of infringement. Convenient as this may appear, it does not follow from this that it is a principle of construction that claims are to be construed so as to include additions which are inessential or do not result in a new invention. Such a principle would not accord with the requirement that claims be construed through the eyes of the skilled addressee of the particular patent and without regard to the alleged infringing article (Fresenius at [95]).

46    It is also not apparent that the primary judge construed claim 3 with Arrow’s alleged infringing LED devices in mind, as Nichia would have it. This depends on Nichia’s proposition, which I do not accept, that for the skilled addressee of the patent, there would be no ambiguity in claim 3. Nichia called in aid the statement in Convatec Ltd v Smith & Nephew Healthcare Ltd (2012) 129 RPC 182 at [68] that:

A patent is to be construed as if the infringer had never been born. The claimants' construction only arises at all because of the attempt to read this patent onto Durafiber [the alleged infringing article]. In my judgment the construction advanced by the claimants would not even occur to a skilled reader reading the document without knowledge of Durafiber and the argument in this case on infringement.

47    To my mind, the skilled addressee of the patent in the present case would have found claim 3, construed in the context of the claims as a whole, ambiguous in precisely the sense which divides the parties in the present case. As a result, the skilled addressee necessarily would have had regard to the specification to derive such assistance as it provides in the construction of claim 3.

48    I also do not accept Nichia’s submission that the primary judge erred in [108] in saying the “present case is an instance where full force is to be given to the principle that matter that is not claimed is disclaimed.” By this, the primary judge must have had in mind the principles in Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224–5 as follows:

The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit, and not to extend, the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document, and not as a separate document. Nevertheless, the forbidden field must be found in the language of the claims, and not elsewhere. It is not permissible, in my opinion, by reference to some language used in the earlier part of the specification to change a claim which by its own language is a claim for one subject-matter into a claim for another and a different subject-matter, which is what you do when you alter the boundaries of the forbidden territory. A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims. As Lord Cairns LC said, there is no such thing as infringement of the equity of a patent (citation omitted).

49    Nichia would have it that these principles are irrelevant to the process of construction because it is necessary first to construe “contains” in claim 3 to determine what is claimed and thus what is not claimed and thereby disclaimed. It is true that in the present case it is first necessary to construe “contains” in claim 3, but this process of construction is to accord with the applicable principles, which include those stated in the first two sentences of the passage from Lissen.

50    It is also the case that, apart from the word “preferably” appearing once when describing one embodiment of the invention, the specification does not otherwise suggest that the fluorescent material will be other than the YAG phosphors activated by Ce. In respect of the reference to “preferably” in this one description of the embodiment, I consider the primary judge’s conclusion at [103] that “the person skilled in the art would understand the second embodiment as one in which two YAG phosphors activated by Ce are used, not merely used preferentially” to be sound. Nichia would have it that the primary judge’s approach in this regard is contrary to the principle that “a statement ought not readily be dismissed as being a mere “loose or stray remark” inconsistent with the invention described”, citing in support Multigate Medical Devices Pty Ltd v B Braun Melsungen AG [2016] FCAFC 21; (2016) 117 IPR 1 at [259] and [273]; and Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46; [2005] 1 All ER 667 at [34] in which Lord Hoffmann said:

'Purposive construction' does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

51    As the primary judge explained at [103], the problem for Nichia is that the word “preferably” which appears in one part of the description of the second embodiment of the invention (at p 35.19-20 of the specification), referring to “…preferably yttrium-aluminium-garnet fluorescent materials activated with cerium as the phosphor”, is inconsistent with the subsequent, more detailed, description of the second embodiment of the invention. The more detailed description which follows includes this statement (at p 37. 11-13):

The yttrium-aluminium-garnet fluorescent material activated with cerium (YAG fluorescent material) used in the second embodiment has garnet structure similarly to the case of the first embodiment…

52    From this, and the other references to which the primary judge referred in [103], it can safely be said that the word “preferably” which appears in one part of the description of the second embodiment of the invention is a stray word upon which no weight should be placed in the task of construction.

53    Otherwise, the applicable principles of construction are not in dispute. In addition to those already mentioned, it is common ground that, as one or other of the parties submitted:

(1)    when construing claims, “a generous measure of common sense should be used”: Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179; (2015) 240 FCR 85 at [36];

(2)    a too technical or narrow construction should be avoided: Product Management at [39];

(3)    claims should not be construed by applying “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge”: Kirin-Amgen at [32], quoted with approval in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29; (2016) 245 FCR 485 at [79];

(4)    a construction that would lead to an absurd result is to be avoided: Philips at 287; and

(5)    “it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification”: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 at 610.

54    As noted above, I consider “contains” to be ambiguous as it appears in claim 3. The claim set generally, and in particular claims 1 and 6, do not remove this ambiguity. In isolation and in claim 3 “contains” involves the ambiguity evident in the second example of the meaning of the word in the Oxford English Dictionary (Online Edition) of:

2.

a. To have as part (or the whole) of its contents or substance; to comprise, include.

55    The same ambiguity is inherent in the first meaning in the Oxford English Dictionary (Online Edition):

I. To have in it, to hold; to comprise,…

56    The same inherent ambiguity appears in the Macquarie Dictionary (Online Edition) which defines “contain” as:

1. to have within itself; hold within fixed limits.

…

4. to have as contents or constituent parts; comprise; include.

57    Nothing in the claims or the specification suggests that the word has some special or technical meaning or would be understood by the person skilled in the relevant art in a manner different from its ordinary meaning. And, as noted, the ordinary meaning is ambiguous as it may be either inclusive or exhaustive. As a result, I do not accept that the approach of either party involves an impermissible gloss on the words as they appear in the claim. No such gloss or reading in of words is involved in the approach of either party (such as, as Nichia would have it, Arrow is reading in the word “only” after “contains”) because the word “contains” is inherently ambiguous. Nor do I accept Nichia’s submission that the primary meaning of “contains” is “includes”. The issue of construction, given that “contains” can take either an inclusive or an exhaustive meaning, is not assisted by positing that the drafters of the patent could have used “comprises” or “consists of” if they had meant to be exhaustive or could have used “includes” if they meant to be merely inclusive. The drafters used “contains”. It is ambiguous. The ambiguity must be resolved without resort to speculation about what the drafters could have done differently.

58    How then is the issue to be resolved?

59    I am not persuaded that the primary judge’s approach involves absurdity. The absurdity that Nichia has in mind concerns the scope of its monopoly. If “contains” is exhaustive then the monopoly it has claimed in claim 3 is confined to LED devices where the phosphor contains fluorescent material represented by the general formula and no other fluorescent material (whether or not that other fluorescent material involves a new working combination or is inessential). Nichia described this as a perverse outcome which the patent does not disclaim. To my mind, this is unpersuasive. First, the issue is not what is disclaimed but what is claimed. Second, what is not claimed is necessarily disclaimed. Third, given the ambiguity of “contains” what is claimed in claim 3 can only be understood in the context of the specification. Fourth, the specification, properly construed, confines itself to an invention in which the fluorescent material is of the kind described in claim 1.

60    Ultimately, I consider the preferred construction is to be resolved mindful of the principle that it is for the claimant to define the things which are within its monopoly. Given that “the specification is a unilateral document in words of the patentee’s own choosing” (Kirin-Amgen at [34]), the only way in which the meaning of “contains” in claim 3 can be resolved is by reference to the invention as described by the patentee. The invention is a white light LED in which the fluorescent material of the phosphor is of the only kind which is described in the specification, being the YAG:Ce kind. In this context, of the specification and claims as a whole, it is not absurd to construe claim 3 as claiming an invention in which the fluorescent materials are those represented by the general formula set out therein and not other fluorescent materials not represented by the general formula. As the primary judge said at [109]:

This is not to give claim 3 an unduly narrow construction. Claim 3 is of a scope that provides for a choice in the composition of the fluorescent material whilst adhering to the general formula. In other words, the general formula permits adjustments and substitutions to be made. Thus, the invention can be practised in a way that allows the user, by permitted adjustments and substitutions, to control the wavelength of the emitted light of the device, whilst at the same time attaining the desirable attributes that are promised in the specification for this particular embodiment.

61    For these reason I consider that the primary judge’s construction of claim 3 involves no error. It follows that grounds 1 to 3 of Nichia’s appeal must be dismissed.

62    Ground 4 of Nichia’s appeal alleges a factual error relevant to infringement, concerning device F. The primary judge said this at [105]:

The only issue on infringement that divides the parties is this: although each product includes a fluorescent material that is YAG:Ce, which is within the general formula of claim 3, each product also includes other fluorescent material that is not within the general formula. Based on Mr Lu’s evidence (see [30] above), which I accept, Devices A to E include, in addition, a garnet fluorescent material that is not within the general formula and one or more other, non-garnet fluorescent materials. Exceptionally, Device F includes, in addition, only a non-garnet fluorescent material.

63    Nichia’s oral submissions in the appeal were inconsistent with the maintenance of ground 4. Nichia accepted that device F contains an additional phosphor and said nothing to support ground 4. And as Arrow submitted, its witness who gave evidence about the additional fluorescent material of the non-garnet kind in device F was not cross-examined and Nichia otherwise ran the case before the primary judge on the basis that all of the devices contained fluorescent material of the garnet (YAG:Ce) and non-garnet kind. Nichia, accordingly, is not able to raise ground 4.

64    Given this conclusion, it is not necessary to resolve Arrow’s contention that if “contains” in claim 3 means only “includes” claims 1 and 3 are not fairly based on the specification as a whole as required by s 40(3) of the Patents Act 1990 (Cth). While it is unnecessary to resolve this issue, it is appropriate to record that I find Arrow’s submissions in this regard persuasive. The specification says nothing at all about the use of fluorescent materials of a kind other than as described in claim 1. I do not consider the reasoning in Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75; (2010) 86 IPR 468 about a different patent (for a device that simulates the effect of flames by reflected light) is analogous. If the fluorescent materials of the invention do not mean those described in claim 1, I am unable to see a “real and reasonably clear” disclosure of that invention in the specification (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274).

The obviousness issue

65    Arrow contends that the primary judged erred in concluding that the invention as claimed in claims 1 and 3 of the patent involved an inventive step as required by s 18(b)(ii) and s 7(2) of the Patents Act 1990 (Cth). The error is said to have arisen in two ways. First, Arrow contends that the primary judge’s division of the Cripps question into two separate parts (what the hypothetical skilled addressee would have done and the expectation of the hypothetical skilled addressee in so doing) caused the primary judge’s analysis to miscarry, in particular by the primary judge imposing too high a standard on the hypothetical skilled addressee’s expectation of success. Second, Arrow contends that the primary judge considered obviousness not by reference to the claimed invention, as required, but by reference to the invention as described in the specification but not claimed.

66    I have decided that Arrow’s cross-appeal should succeed.

67    Before the primary judge both parties relied on the Cripps question as the relevant test for obviousness. In the context of the present invention, this involves asking whether the hypothetical skilled addressee would have been led as a matter of course to try the steps leading to the invention in the expectation that it might well produce the invention, a useful alternative to or better thing than the prior art, or something useful for any other purpose. It is common ground that this is not the same as asking if the steps would be perceived by the hypothetical skilled addressee as “worth a try” or “obvious to try” (Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 at [50]–[53] and [60]–[76]; Astrazeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [15]). The dispute is about how the primary judge posed the question (in two separate parts) and how he approached the concept of usefulness for the purposes of the required expectation.

68    In summary, I have decided that the primary judge conceived of the outcome Nichia sought to achieve or the invention as useful only if it involved a white LED which was “satisfactory” in terms of all qualities identified in the specification, of durability, colour tone and luminance, when the invention understood in the context of the claims, the specification and the prior art did not need to meet all of these requirements to be useful. While I do not accept one theme of Arrow’s argument that, as the claims contained no integers concerning any qualitative aspect of the white LED, an expectation in respect of any white LED (whether useful or not) would suffice to establish obviousness, it is not necessary to go so far to conclude that the primary judge’s reasons disclose an error in approach. It is sufficient that it is clear from the specification that the outcome Nichia sought was to obtain a white LED which met only one of the identified objects of durability, colour tone or luminance so that it must follow that a white LED of that kind is useful.

69    The Cripps question is adapted from the formulation in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187–8. In Astrazeneca, a drugs case, French CJ re-framed the question in these terms (at [15]):

Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of [the existing compound], directly be led as a matter of course to try [the claimed inventive step] in the expectation that it might well produce a useful alternative to or better drug than [the existing compound]?

70    In Olin Mathieson itself, where the prior art included the drug chlorpromazine, Graham J expressed the relevant expectation at 188 as:

… the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?

71    Also at 188 Graham J noted that it would not be right to include a limitation to therapeutic qualities in the question because claim 1 made no reference to such qualities. This does not mean, however, that Graham J proceeded on the basis that the Cripps question should be posed by reference to an expectation the steps in question might well produce a result which was not a useful drug or useful alternative.

72    The observation of Lord Hoffmann in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] RPC 28 at [19] is not to the contrary. The claimed invention was a stent coated with taxol. As Lord Hoffman put it at [17]:

As in the case of many product claims, there was nothing inventive in discovering how to make the product. The alleged inventiveness lay in the claim that the product would have a particular property, namely, to prevent or treat restenosis …So the question of obviousness was whether it was obvious to use a taxol-coated stent for this purpose.

73    It was in this context that Lord Hoffman continued:

18    Mr Thorley, however, sought to avoid this question by watering down the claimed invention by reference to what he said were inadequacies in the specification. It did not contain information about human or animal tests which showed that it would work or provide enough information about doses and so forth to enable the skilled person to work it. It was therefore nothing more than an idea that taxol might work and any skilled person would have known that.

19     In my opinion, however, the invention is the product specified in a claim and the patentee is entitled to have the question of obviousness determined by reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description. There is no requirement in the EPC or the statute that the specification must demonstrate by experiment that the invention will work or explain why it will work.

74    In other words, in that case obviousness was concerned with the use of a taxol coated stent for the (useful) purpose of preventing restenosis. It was not concerned with the mere idea that trying a taxol coated stent might determine whether restenosis might thereby be treated.

75    In Eli Lilly and Co Ltd v Apotex Pty Ltd [2013] FCA 214; (2013) 100 IPR 451 Middleton J at [527] expressed the relevant version of the Cripps question for the invention of the compound olanzapine in these terms:

Would the notional research group at the relevant date, based on their common general knowledge, directly be led as a matter of course to try olanzapine, in the expectation that it might well produce a useful alternative to or a better drug than known antipsychotic drugs, or a compound useful for any other purpose?

76    In so doing, Middleton J was aware of the fact that the claims involved any use of olanzapine rather than use as an antipsychotic drug (at [529]). Middleton J rejected a proposed formulation of the Cripps question in which the expectation was expressed as an expectation that the steps leading to the invention might well produce “a useful alternative to or a better drug than flumezapine [a known compound] or a body useful for any other purpose” (at [528]). Middleton J, referring to Olin Mathieson, in which the claims were also not limited to any therapeutic uses, said:

532    However, the absence of any limitation in the claims to therapeutic uses did not cause Graham J to disregard the utility of the compounds altogether. To the contrary, Graham J’s reformulation of the Cripps question makes it clear that the utility of the compounds is an important part of the test. This is the correct approach to the Cripps question in the present case.

533    It is impermissible to divorce olanzapine from its context and subject it to an obviousness test that completely disregards its utility as an antipsychotic drug.

77    In Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336 the Full Court noted a similar issue at [25]:

The second issue of principle was whether the expectation of the hypothetical formulator (assuming it to be relevant) must be an expectation of the production of the invention or an expectation relating to “some other useful result” (Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618, at [180]), and if so, what is meant by the words “some other useful result”. The primary judge rejected the suggestion that “some other useful result” could be the obtaining of information to ascertain whether there was any bioavailability problem with an immediate release formulation of DRSP. The primary judge rejected the GH parties’ contention, and held that “some other useful result” in the context of obviousness must be understood as the claimed invention or at least something very like the claimed invention.

78    There was no challenge to this second issue of principle in the appeal because the patent holder accepted that “we’re trying to get bioavailable drospirenone” (at [26]).

79    In Generic Health at [71] the Full Court said this:

We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm. The plurality did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (The Wellcome Foundation Limited v VR Laboratories (Aust) Proprietary Limited (1981) 148 CLR 262, at 280–281, 286, per Aickin J). We do not think there is a divide here in terms of whether an expectation of success is relevant between a test which refers to routine steps to be tried as a matter of course and the reformulated Cripps question. It is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course. On the other hand, we think a test formulated in terms of worthwhile to try was firmly rejected by the High Court in Alphapharm (see also Pfizer, at 476, [287], per French and Lindgren JJ [Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 225 ALR 416]). The fact (if it be the fact) that the position in the United States may have shifted does not affect the binding nature of what the plurality said in Alphapharm.

80    It will be apparent from these decisions that the prior art and the claimed invention in the context of the specification as a whole are relevant to the appropriate formulation of the Cripps question in a given case. A “useful alternative” is one which is useful compared to the prior art in the field of the invention. A thing “useful for any other purpose” is also to be understood in this context.

81    The primary judge said that he considered the issue of obviousness by reference to “the outcome that is sought” (at [279]), which is an orthodox approach. As Nichia noted, a:

…useful result is “the final result which it was the object of the inventor to achieve”: Alphapharm at [21], quoting with approval Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 at 362.

Seen in its proper context, the “result” may be, for example: (1) a useful or better alternative to the prior art: cf Alphapharm at [53]; (2) solving a problem in the art: see eg AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356 at [115]; GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Apotex Pty Ltd [2016] FCA 608; (2016) 119 IPR 1 at [965].

82    One aspect of Arrow’s submission was that as the claimed invention contains no quality integers the Cripps question is to be posed by reference to a white LED of any kind or quality, implicitly whether useful or not. I am unable to reconcile that submission with the established principles under which the claimed invention or alternative or other result is necessarily assumed to be useful. As explained below, this does not answer Arrow’s case because whether the primary judge applied the orthodox approach he identified is in dispute, as are other issues of principle in his approach to obviousness.

83    It is convenient to consider the usefulness aspect of the Cripps question at a later point in the context of Arrow’s challenge to the primary judge’s rejection at [290] of its submission that Nichia had achieved the claimed invention by 30 May 1996 (a challenge which I have concluded should be accepted). Arrow’s other contentions of error may be dealt with immediately.

84    In the present case, light emitting diodes or LEDs are identified in the specification as part of the prior art. These LEDs are identified as being used for a variety of purposes including displays, back lights, traffic signals, illuminating switches, and indicators. The specification identifies that various attempts had been made to make white light sources using LEDs but there had been a problem with generating white light of the desired tone, as well as other problems so that “a satisfactory light source capable of emitting white light … has not been obtained so far” (p 2.10-12). The invention is said to be “an alternative to known light emitting devices and displays” (p 4.9-10). At p 6 the specification says that:

The present invention aims to alleviate at least one of the problems described above and to provide a light emitting device which experiences only extremely low degrees of deterioration in emission light intensity, light emission efficiency and color shift over a long time of use with high luminance.

The present applicant completed the present invention through researches based on the assumption that a light emitting device having a light emitting component and a fluorescent material preferably meets the following requirements to achieve the above-mentioned object.

(1) The light emitting component is preferably capable of emitting light of high luminance with light emitting characteristic which is stable over a long time of use.

(2) The fluorescent material being provided in the vicinity of the high-luminance light emitting component, preferably shows excellent resistance against light and heat so that the properties thereof do not change even when used over an extended period of time while being exposed to light of high intensity emitted by the light emitting component (particularly the fluorescent material provided in the vicinity of the light emitting component is exposed to light of a radiation intensity as high as about 30 to 40 times that of sunlight according to our estimate, and is required to have more durability against light as light emitting component of higher luminance is used).

(3) With regard to the relationship with the light emitting component, the fluorescent material is preferably capable of absorbing with high efficiency the light of high monochromaticity emitted by the light emitting component and emitting light of a wavelength different from that of the light emitted by the light emitting component.

85    The examples of the invention in the specification include descriptors of luminance about 40% lower for one example (example 5) compared to other examples of the invention, “slightly yellow-greenish white light” being emitted (example 6) and “low luminance” (examples 7 and 8), as well as “good weatherability” (such as examples 5, 6, 7 and 8).

86    Arrow emphasised the following parts of the primary judge’s reasons which should be set out in full:

278     Given the applicant’s acceptance that YAG:Ce was part of the common general knowledge (having regard to my finding on the identity of the person skilled in the art), and given the other matters of common general knowledge referred to in the primer, I am satisfied that YAG:Ce was certainly an option and that the person skilled in the art would have been directly led as a matter of course to try it in order to produce a white LED. YAG:Ce was a known phosphor with known spectral properties.

279     But it is not enough that the person skilled in the art would consider it worthwhile to try YAG:Ce in combination with the blue GaN LED. More needs to be established in order for it to be concluded that the invention claimed in claim 1 and claim 3 is obvious in light of the common general knowledge. This is provided by the requirement in the reformulated “Cripps question” that the person skilled in the art must be led to try the posited solution “in the expectation that it might well produce” the outcome that is sought.

280     The expression of expectation is important. It signifies the likelihood, as anticipated by the person skilled in the art, that an event will occur or that a result will be achieved. On the other hand, as Jacob LJ explained in Saint-Gobain PAM SA v Fusion Provida Limited, Electrosteel Casting Limited [2005] EWCA Civ 177 at [35]:

… Mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough. If it were otherwise there would be few inventions that were patentable. The only research which would be worthwhile (because of the prospect of protection) would be into areas totally devoid of prospect.

281     In my view, it is at this point that the respondent’s primary case on obviousness, based on the common general knowledge, fails. I am satisfied that the person skilled in the art would have considered it worthwhile to explore the use of YAG:Ce in combination with the blue light of the GaN LED, but I am not persuaded that he or she would have done so with the requisite expectation of success.

282     Based on Blasse and Bril I and Blasse and Bril II, the person skilled in the art would have known that YAG:Ce could be used in flying-spot CRTs, especially for colour television. But, at the priority date, YAG:Ce had not been used in an application that had operating conditions comparable to those of the blue GaN LED.

283     It certainly would not have followed from the fact that YAG:Ce could be used in flying-spot CRTs that it could also be used satisfactorily with a blue GaN LED. As Professor Meijerink pointed out in concurrent evidence, the power levels in the two applications are “extremely different”. Moreover, in flying-spot CRTs the laser contacts the phosphor for only a short period of time.

284     By way of example, Professor Meijerink pointed out that, even though ZnS phosphor is extremely stable in a CRT, the applicant’s own experiments showed that it was insufficiently stable when used with a blue GaN LED. Relatedly, Dr Butcher gave evidence that quite often the luminescence of a given material will change depending on the level of intensity of the power source that is used to create that luminescence.

285     Further, Blasse and Bril I teaches that, in the CRT application, the use of YAG:Ce with efficient blue phosphors is required: see below at [297]. The person skilled in that art would not have known, and would not have been able to predict, whether a similar mixture would be required when YAG:Ce was used with a blue GaN LED. I do not accept that the person skilled in the art would have dismissed this possibility simply because the GaN LED itself emitted blue light.

286     Thus, there were a number of unknowns concerning how YAG:Ce with the blue GaN LED would perform, including whether it would produce white light at all. I accept Professor Meijerink’s evidence that YAG:Ce’s stability and performance with a blue GaN LED could not have been predicted, particularly having regard to the high operating temperatures, high photon flux and long operating times of LEDs. These matters would need to be investigated and ascertained by experimentation.

287     Evidence of the patentee’s own experiments is admissible on the question of obviousness and was admitted without objection in the present case: Wellcome Foundation Limited v V.R. Laboratories (Aust.) Proprietary Limited (1981) 148 CLR 262 280-281. The applicant’s own work supports my conclusion concerning the absence of the requisite expectation of success.

288     There can be no doubt that the applicant possessed expertise in the field of inorganic phosphors and other fluorescent materials, such as organic and inorganic dyes and pigments. It had carried out work using such materials with LEDs. Its own work led to the invention of the blue GaN LED. Yet even armed with this expertise and know-how, it was necessary for it to carry out a research programme in order to find a satisfactory way to make a white LED using the GaN LED.

289     I would add that its work in this regard went beyond simply using YAG:Ce as the fluorescent material. The description in the specification, and the claims of the patent, are significantly broader than simply providing a light emitting device using a blue GaN LED with YAG:Ce.

290     Thus, I do not accept the respondent’s submission that the invention was made no later than 30 May 1996. Nor do I accept the respondent’s submission that the applicant arrived at the invention in a short period of time that was indicative of no more than routine work and testing to arrive at the white LED.

291     The applicant selected YAG:Ce because it was worthwhile trying. But even with its own considerable expertise, it simply did not know whether it would work with the blue GaN LED to produce a satisfactory white LED. The level of its expectation of success may be measured by the fact that it concentrated its first efforts on ZnS-based phosphors. Along the way, it experienced failure. It was only after Mr Ogawa’s instruction to test all the yellow light-emitting phosphors that the applicant undertook work on YAG:Ce. It was only through its research work testing YAG:Ce that it arrived at the invention. If the applicant had thought that YAG:Ce had greater prospects of success, then its selection and pursuit of ZnS-based phosphors as the preferred route was nonsensical. I do not accept that the applicant would have acted in such a way.

292     For these reasons, the respondent has not established that, at the priority date, the invention claimed in claims 1 and 3 was obvious and lacked an inventive step by reference to the common general knowledge.

87    Importantly, the primary judge found at [278] that the skilled addressee would have been directly led as a matter of course to try YAG:Ce to produce a white LED. To the extent Nichia suggested that the primary judge meant that the reference to “white LED” in [278] was to be understood as a non-useful white LED, in contrast to a useful white LED as referred to in one way or another in [283], [286], [288] and [291], I disagree. The primary judge plainly meant that the skilled addressee would have been directly led as a matter of course to try YAG:Ce to produce a white LED of the kind described in [283], [286], [288] and [291], being a “satisfactory” or useful white LED (an issue discussed further below). Further, the primary judge’s description of YAG:Ce as “an option” in [278] is but one part of the sentence. It does not qualify the part which follows which is a finding, not otherwise challenged by either party, that the person skilled in the art would have been directly led as a matter of course to try YAG:Ce to produce the white LED of the invention. Subsequent references to the lesser requirement of “worthwhile to explore” (at [281]) and “worthwhile trying” at [291] also do not undermine the meaning or force of the primary judge’s finding at [278] that the person skilled in the art would have been directly led as a matter of course to try YAG:CE in order to produce a (useful) white LED. It is clear that the primary judge was deliberately expressing himself in these terms in [278] as means of explaining that the first part of the Cripps question was satisfied but the second part, concerning the expectation in which the skilled addressee would have taken those steps, remained to be answered. The balance of his reasons at [279]-[292] then explain why the second part of the Cripps question (the expectation in which the steps were taken) was not satisfied.

88    The Full Court’s observation in Generic Health at [71] that it “is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course”, indicates that care is needed in evaluating the character of the expectation separately from the steps the skilled addressee would have taken. There are indications that in evaluating the expectation the primary judge strayed from the test that the steps might well produce the invention or a useful result. Thus, at [280] the primary judge referred to the expectation as signifying a likelihood that an event “will” occur or a result “will” be achieved. In [285] the primary judge said that the person skilled in the art “would not have known, and would not have been able to predict, whether a similar mixture” (of YAG:Ce with efficient blue phosphors) would have been required and that the skilled person would not have “dismissed” the possibility that such a mixture would be required. In [286] the primary judge refers to “a number of unknowns” and that YAG:Ce’s stability and performance with a blue GaN LED [gallium nitride LED] could not have been predicted. In [291] the primary judge said that Nichia “did not know” that YAG:Ce with the blue GaN LED would produce a “satisfactory white light”.

89    To my mind, these references suggest that the primary judge strayed from the test of steps taken in an expectation that they might well produce the invention or a useful result towards a test of an expectation of knowing that steps will produce a useful result based on predictive capacity. This impression is reinforced by other parts of the primary judge’s reasons.

90    One issue is the use the primary judge made of Nichia’s work with ZnS-based phosphors in [291] to support his conclusion of lack of obviousness. As noted, the primary judge there said:

The applicant selected YAG:Ce because it was worthwhile trying. But even with its own considerable expertise, it simply did not know whether it would work with the blue GaN LED to produce a satisfactory white LED. The level of its expectation of success may be measured by the fact that it concentrated its first efforts on ZnS-based phosphors. Along the way, it experienced failure. It was only after Mr Ogawa’s instruction to test all the yellow light-emitting phosphors that the applicant undertook work on YAG:Ce. It was only through its research work testing YAG:Ce that it arrived at the invention. If the applicant had thought that YAG:Ce had greater prospects of success, then its selection and pursuit of ZnS-based phosphors as the preferred route was nonsensical. I do not accept that the applicant would have acted in such a way.

91    The primary judge said at [259]:

…the alleged obviousness of an invention is not judged according to whether there was an equally or more obvious solution within the sight of the person skilled in the art at the priority date. Once again, the question is the obviousness of the invention in suit, not some other “invention”, failed or otherwise.

92    The primary judge also said:

276 However, the question of obviousness is not directly concerned with choices of this kind. The question is whether the pathway chosen by the inventor is one which the person skilled in the art, equipped with the common general knowledge before the priority date, would have been directly led as a matter of course to try. If obvious, a solution does not become less obvious simply because the person skilled in the art might have been presented with other possibly effective solutions of the kind I have described: see, for example, the related comments made by Gageler and Keane JJ in AstraZeneca AB v Apotex Pty Ltd (2015) 323 ALR 605; [2015] HCA 30 at [115]. Still less will that be the case where these other possibly effective solutions are said to be more obvious.

277 The question thrown up in the present case is whether the person skilled in the art would have been directly led as a matter of course to try the combination of the blue GaN LED (which, on the respondent’s and applicant’s respective cases, is a given) with YAG:Ce to produce a white LED. Other pathways, which might be more or less “obvious”, can be put to one side.

93    These are orthodox statements of principle. In Brugger v Medic-Aid Ltd [1996] RPC 635 at 661 Laddie J said:

… if a particular route is an obvious one to take or try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well. If a number of obvious routes exist it is more or less inevitable that a skilled worker will try some before others. The order in which he chooses to try them may depend on factors such as the ease and speed with which they can be tried, the availability of testing equipment, the costs involved and the commercial interests of his employer. There is no rule of law or logic which says that only the option which is likely to be tried first or second is to be treated as obvious for the purpose of patent legislation.

94    Accordingly, the fact that Nichia first tried ZnS phosphors does not mean that the use of YAG:Ce was not obvious. This is particularly so in the present case in which the primary judge’s findings indicate that Nichia first tried ZnS phosphors confident that they would work. In this regard, it must be understood that it was agreed that the common general knowledge included the following (at [169] read with the primer annexed as a schedule to the primary judge’s reasons):

19. A phosphor is a substance that exhibits a luminescence process when suitably excited.

20. Phosphors often have 2 components. The first is the luminescent centre (sometimes called the dopant or activator) and the second is the host matrix or host crystal lattice.

21. The activator is usually a particular element, which will often be in an ion form in the host matrix.

22. The general role of a phosphor when used with a light emitting diode is to change the overall emission wavelengths emitted from the integrated device. The phosphor changes the overall perceived colour of light emitted by absorbing some (but not all) of the light emitted by the semiconductor chip. It achieves this by the activator absorbing photons emitted by the LED semiconductor to produce excited states of the activator. The activator subsequently relaxes back to its original ground state by emitting photons of a different energy and hence a different colour to that absorbed. A key requirement of the phosphor is having an activator with absorption transitions that match the LED emission, and having emission transitions at the energies corresponding to the desired new colours.

…

33… GaN LEDs can emit blue light.

…

56. YAG:Ce can absorb specific wavelengths of light that correspond to exciting cerium electrons to higher energy states. One wavelength for absorption in YAG:Ce is blue light of 450 nanometres.

…

66. Various colours of visible light can be combined to produce white light. For example:

(a) red, green and blue; and

(b) blue and yellow.

95    The primary judge also found that, by the priority date of the patent (29 July 1996):

(1)    the use of phosphors in lighting was ubiquitous, including fluorescent lighting (at [154]);

(2)    YAG:Ce was known and was part of the common general knowledge of the person skilled in the art, including that YAG:Ce absorbed wavelengths of light that correspond to exciting Ce electrons to higher energy states, including blue light of 450 nm and after being excited by the absorption process the Ce electrons return to a lower energy state by the complementary process of light emission, with the emitted light being of a different wavelength than the absorbed light (at [182]);

(3)    “the person skilled in the art would have known that YAG:Ce was a phosphor with garnet structure that absorbs blue light and converts it with high efficiency into a yellow emission” (at [187]); and

(4)    both the blue GaN LED and YAG:Ce as a known phosphor with known spectral properties were part of the common general knowledge (at [277] and [278]).

96    In respect of Nichia’s development process, the primary judge found that, using a GaN LED and fluorescent materials, Nichia had developed “the world’s first high-brightness blue LED using a GaN semiconductor” in 1993 (at [117]). Nichia thereafter developed a green LED (at [119]) and other LEDs using red, yellow and orange organic fluorescent materials (at [119]–[122]). Nichia is also the world’s largest manufacturer of inorganic phosphors (at [123]). At the beginning of 1996 Nichia’s President, Mr Ogawa, directed that Nichia develop a white LED, leading to the creation of the White LED Development Team (at [124]–[125]). Mr Shimizu was the team leader. He reported to Mr Shinomiya, to whom Mr Ogawa had given the direction for the development of a white light LED (at [125]). Mr Shinomiya and Mr Shimizu had the most experience with inorganic phosphors within Nichia (at [127]). Because synthesising a phosphor took up to a year they focused on Nichia’s existing phosphors (at [129]–[130]). Mr Shinomiya knew that zinc cadmium sulphide phosphor activated by silver (ZnCdS:Ag) emits a yellow light when excited by an electron beam, Nichia having used this phosphor in monochrome cathode ray tube (CRT) display applications (at [131]). As such, the ZnCdS:Ag phosphor was included in about 20 candidates of inorganic phosphors that had a body colour (on the basis that a “a phosphor which is excited by blue light should show some body colour under natural light”) (at [130]-[132]). As a result of this testing the ZnCdS:Ag phosphor was identified as the preferred candidate (at [133]). Although they knew that this phosphor was sensitive to water, they believed that as it had good stability in the CRT applications stability could also be achieved in the LED application because the phosphor could be sealed with resin (at [133]). As the primary judge then said:

134 Specific testing was done using ZnCdS:Ag phosphor. It was found that while the phosphor produced a white colour that was acceptable, it degraded within one day.

135 Mr Shinomiya said that, given its high reliability in the CRT environment, it was very surprising to him that ZnCdS:Ag phosphor would degrade so quickly in the LED environment simply because moisture was present. Mr Shimizu’s observation, as reported to Mr Shinomiya, was that, under strong light and heat, the phosphor seemed to be blackened by the very tiny amount of water that either remained in the resin or entered from outside the resin.

136 Further development work was carried out using a ZnCdS:Cu,Al phosphor. The LED also emitted white light of an acceptable colour. This LED is, in fact, used as Comparative Example 1 disclosed at page 49, line 18 to page 50, line 9 of the specification:

(Comparative Example 1)

Formation of a light emitting diode and life tests thereof were conducted in the same manner as in Example 1 except for changing the phosphor from (Y0.8Gd0.2)3Al5O12:Ce to (ZnCd)S:Cu, Al. The light emitting diode which had been formed showed, immediately after energization, emission of white light but with low luminance. In a life test, the output diminished to zero in about 100 hours. Analysis of the cause of deterioration showed that the fluorescent material was blackened.

…

137 The “life test” referred to in this disclosure involves testing the product under harsher conditions than normal, for example at a temperature of 60°C and 90% humidity. The purpose is to test how the phosphor performs under conditions which accelerate its life cycle. In his affidavit, Mr Shinomiya gave the following evidence:

The problems the White LED Development Team experienced with the ZnS phosphor highlight one of the fundamental challenges involved with phosphor research. Even when a phosphor can be successfully employed in one operating environment, it cannot be assumed that it will have sufficient durability in another environment. This means that any candidate must be tested to ascertain whether or not it will actually have the required luminance and durability in a new environment. The light, heat and moisture in the LED environment can be particularly challenging in terms of durability.

97    In other words, Nichia selected the ZnCdS:Ag phosphor because it was known to have a body colour which could be combined with the known blue GaN LED to try to produce white light. It is apparent from the evidence referred to by the primary judge that Nichia undertook its work with the ZnCdS:Ag phosphor expecting it would work. It did produce white light but, to Nichia’s surprise, the phosphor was not stable, despite having been stable in the known CRT applications. Accordingly, Nichia did not approach its tests with the ZnCdS:Ag phosphor expecting them to fail because of “the fundamental challenges involved with phosphor research.” If this had been the case Mr Shinomiya would not have found the lack of durability of the ZnCdS:Ag phosphor “very surprising”. While the white light produced was acceptable, the required durability could not be achieved (at [136]-[137]). As Mr Shinomiya said at [135] the lack of durability of the white light LED involving ZnCdS:Ag was “very surprising to him” because, it must be inferred, based on the CRT applications he assumed that stability could be achieved in the LED device.

98    Given Mr Shinomiya’s evidence I consider it plain that Nichia tested ZnCdS:Ag phosphors expecting that this might well (indeed, would) work both to produce a white light LED of acceptable colour (which it did) and to be durable (which it was not). In common with YAG:Ce, the ZnCdS:Ag phosphor was itself a “known phosphor with known spectral properties” (to use the primary judge’s phrase at [278]). It must follow that the primary judge’s finding at [278] that “the person skilled in the art would have been directly led as a matter of course to try” YAG:Ce also applies equally to the ZnCdS:Ag phosphor. In the evidence, moreover, the person skilled in the art would have been directly led as matter of course to try the ZnCdS:Ag phosphor with a blue GaN LED to produce a white light LED expecting that it would work, as indeed Nichia did. That is to say, on the primary judge’s approach, it must be the case that using the ZnCdS:Ag phosphor was obvious.

99    I do not consider the primary judge’s reference to the fact that it was not known that YAG:Ce with the blue GaN LED would produce white light (at [286] in particular, but see also [394]) undermines this analysis. This is because the relevant test is not knowing that steps will or would or even may well work, but merely expecting that the steps may well work.

100    Given this, I disagree with [291] of the primary judge’s reasons. If, as is the fact, Nichia was confident that the ZnCdS:Ag phosphor would work because it was known to have a body colour which the skilled addressee expected may well (or would) produce white light when combined with the blue GaN LED (as is the case here) and had been proven to be durable in well-known applications (as is also the case) and Nichia found it “very surprising” that the ZnCdS:Ag phosphor was not stable then the level of Nichia’s expectation of success of YAG:Ce could not be measured from the fact that Nichia tried the ZnCdS:Ag phosphor first. The critical point, given the other findings, is also not that Nichia experienced failure but that it was confident of success with the ZnCdS:Ag phosphor. As a result, the question whether Nichia “thought that YAG:Ce had greater prospects of success” does not arise. Given the facts as found and undisputed evidence, there could not have been an occasion for Nichia to consider YAG:Ce before testing proved the lack of stability of the ZnCdS:Ag phosphor. Accordingly, Nichia’s work with the ZnCdS:Ag phosphor cannot provide support to the conclusion that the selection of YAG:Ce was not obvious.

101    A further issue is that the primary judge rejected Arrow’s submission at [290] that Nichia made the invention no later than 30 May 1996, after a short period of time of no more than routine work and testing.

102    The primary judge found that after the failure with the ZnCdS:Ag phosphor Mr Ogawa said that “there should be many other phosphors that can emit yellow light like the ZnS-based phosphors” and asked if the team had “tested all of them” (at [138]). The primary judge continued in these terms:

140 The day after the conversation with Mr Ogawa, Mr Shinomiya and Mr Shimizu went to an inspection room located in the applicant’s Inspection Building, where the applicant’s phosphor reference samples were stored. Mr Shinomiya said that he and Mr Shimizu carefully observed the body colour of several hundred sample phosphors, one by one. Mr Shinomiya gave this evidence:

The samples were stored in a variety of ways; some were stored in plastic bags, others were in transparent bottles. If a phosphor was in a black plastic bag or in a bottle with a cover to prevent exposure to light, we opened them so the phosphors were exposed to light during our observation. We were in the inspection room for more than two hours to observe all of the samples there. We did not look at any specification sheets, just the phosphor samples themselves.

141 Mr Shinomiya said that one of the phosphor samples that he and Mr Shimizu observed was YAG:Ce. Its body colour was slightly yellowish in appearance. Mr Shinomiya said that, at this time, he knew of this phosphor, but he did not know until then that its body colour was slightly yellow (or that it had a body colour other than white). YAG:Ce was available at Nichia because it had been used in electron beam excitation applications to emit green light, and for flying spot scanners. Mr Shinomiya said that, at that time, he had “never seen a real visible light emission of YAG phosphor in a flying spot scanner”.

142 Mr Shinomiya said that, at this time, he also knew that YAG:Ce was used as an optical crystal for a laser oscillation. In cross-examination he accepted that, at that time, he knew that the phosphor was very stable when used in that application.

143 Mr Shinomiya said that not all of the phosphors owned by the applicant were stored in the inspection room. Mr Shinomiya gave an instruction that other phosphor samples held by the applicant were to be collected for inspection.

144 Mr Shinomiya said that, following his and Mr Shimizu’s inspection of samples in the inspection room, YAG:Ce was identified as the preferred candidate for further testing because of its slightly yellow body colour. In late May 1996, the White LED Development Team produced LED samples using YAG:Ce and managed to create an LED that emitted a weak greenish white colour. This confirmed that the light emission had a broad emission spectrum when excited by a blue light. It also meant that there was a possibility that a white LED suitable for various applications could be obtained. At this juncture, it should be recalled that YAG:Ce falls within the definition of the phosphor of claim 3 of the patent.

145 Mr Shinomiya said that while YAG:Ce was stable in a laser application, it was not known whether the phosphor powder, having a diameter of only several micrometres, would have sufficient durability when moved to the LED environment. He said that this was particularly so in light of the team’s experience with ZnCdS. Experiments were carried out on a test sample. The experiments showed that the phosphor had good durability in the LED environment.

146 I note that various test reports are in evidence, including a test report dated 30 May (known to be in 1996) and 6 June 1996 that concern the testing and comparison of YAG:Ce and ZnCdS phosphors.

147 Once YAG:Ce had been confirmed as the lead candidate, the remaining problem was to modify its greenish white colour to achieve a more desirable tone of white. Mr Shinomiya said that this could be achieved by reducing the colour temperature of the phosphor. Mr Shimizu requested that experiments be performed by the applicant’s Phosphors Group. This stage of the work commenced in early June 1996. It was carried out by Mr Noguchi. Mr Shimizu’s idea was to create a more desirable white LED by adding a red light component. He proposed introducing a co-activator which emitted red light, such as Ce with Sm3+, Ce with Eu3+ or Ce with Mn. The work with the coactivators was not successful.

148 Mr Shinomiya said that Mr Noguchi took it upon himself to prepare YAG:Ce with some of the Y substituted with Gd in order to make the wavelength of the emitted light longer. Mr Noguchi’s plan was to change the matrix of the phosphor and adjust the content of Ce as an activator. The test with the modified YAG:Ce showed very good results. It produced desirable white light and had the flexibility of shifting the colour temperature in a broad range.

149 In June 1996, a decision was made by the applicant to file a patent application in respect of the work undertaken by the White LED Development Team. The patent in this proceeding derives from one of a number of applications that were made.

103    This summary (based on Mr Shinomiya’s affidavit) does not deal with the fact that the Nichia experimental note of the 30 May 1996 experiment, to which the primary judge refers at [146], shows two different YAG:Ce phosphors, one at a ratio of 30:100 and another at a ratio of 50:100. The note recorded the former as having produced “whitish” (I interpolate, light) of “good reputation” (as I understand it, a description of the appearance of the colour) and the latter as “a little bit greenish” (light). This raises the question of when the invention was created. If the primary judge is correct in [290] then the inventive step was not in using YAG:Ce with the blue GaN LED to produce a “whitish” light, the inventive step must have come later than 30 May 1996, presumably in establishing the durability of the YAG:Ce phosphor by testing and improving its colour by modifying the YAG compound as described by the primary judge in [147]-[148]. Yet this is not the invention claimed. If the inventive step was in using YAG:Ce with the blue GaN LED to produce a “whitish” light then, contrary to the primary judge’s conclusion at [290], the invention was complete as at 30 May 1996. This conundrum is not resolved by the primary judge having noted in [144] that Mr Shinomiya said the 30 May 1996 experiment results meant that “there was a possibility that a white LED suitable for various applications could be obtained” because the work done after 30 May 1996 is after the creation of the invention.

104    In its oral submissions on the cross-appeal Nichia accepted, as I think it had to, that by 30 May 1996 Nichia had made something that fell within claim 3, that is Nichia had the invention by that date. This, it accepted, accorded with the primary judge’s observation at the end of [144] that it “should be recalled that YAG:Ce falls within the definition of the phosphor of claim 3 of the patent.” In my view, it necessarily follows that [144] and at least the first sentence in [290] of the primary judge’s reasons cannot stand together. Nichia sought to answer this by submitting that, as at 30 May 1996, Nichia did not know that the white light produced by YAG:Ce would be “satisfactory”, in the sense the primary judge uses that term (including luminance, colour tone and durability). But this does not assist because the subsequent steps taken to prove durability and improve colour tone are not the steps involved in the Cripps question.

105    It will be recalled that, as the primary judge put it at [44], referring to p 6 of the specification:

The specification says that the invention aims to provide an alternative to known light emitting devices and displays, which alleviates at least one of the described problems to provide a light emitting device which experiences only extremely low degrees of deterioration in emission light intensity, light emission efficiency and colour shift over a long time of use, with high luminance.

106    As noted, the examples of the invention in the specification include a range of luminance and colour descriptions such as “incandescent lamp colour” with a luminance about 40% less than example 1 for example 5, “yellow-greenish white light” for example 6 and “low luminance” for examples 7 and 8. Further, only some of the examples are described in terms of durability, by references such as “good weatherability”. It follows that the reference in the specification to the invention alleviating at least one only of the problems known in the prior art must be given effect. A white LED satisfying one only of these requirements, in the context of this invention, is necessarily useful. As a result, it would be wrong to conceive of the subject-matter of the requisite expectation in the Cripps question as a white LED satisfying all of the objects of durability, colour tone and high luminance. This explains, in part at least, why Nichia’s concession that it had the invention by 30 May 1996 was unavoidable. At that time, Nichia had a white LED with “good reputation”.

107    Once this is accepted the problem with the approach in [278]-[292] becomes apparent. Arrow submitted that, in effect, the primary judge “required the expectation to be whether the result would be commercially viable”. This submission has force. It is apparent that in this part of his reasons the primary judge’s approach involved a “satisfactory” white LED and that, by this, the primary judge did not mean merely useful in the sense involved in the Cripps question formulated in the context of the prior art, the specification and the claimed invention. The various references in this part of the reasons indicate that the primary judge conceived of the invention as one in which all of the objects, durability, good colour tone and high luminance were achieved. But this is not the invention described in the specification, nor the invention claimed. Nor, given this context, can the concept of usefulness in the Cripps question involve a device which meets all of these requirements. A white LED meeting any one of these requirements is the invention and is useful on the terms of the specification.

108    Thus, the concern is durability in [283], durability and luminance in [284], efficiency in [285], “stability and performance” in [286], and whether the white LED is “satisfactory” in [288] and [291]. Read fairly, it is difficult to escape the conclusion that the primary judge considered that unless Nichia expected that the steps it was directly led to take as a matter of course based on the common general knowledge would (as opposed to might well) produce a white LED which was durable, had good colour tone and high luminance, then the invention was not obvious. As explained, I consider a different approach necessary because, having regard to the claims and the specification, it is apparent that a white LED meeting any one of these requirements was a useful invention.

109    The fact that a finding about obviousness is a result of an evaluative process, which calls for restraint in appellate review of the kind described in Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd [2017] FCAFC 196; (2017) 134 IPR 1 at [146], is immaterial in the present case given the conclusions above. The cross-appeal succeeds on issues of principle, as most recently discussed in Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 133 IPR 375 at [2]-[10]. The consequence is that the appellate court must decide the question of obviousness for itself. In so doing, however, it is important to note that Nichia does not challenge the primary judge’s finding at [278] that “the person skilled in the art would have been directly led as a matter of course to try it [YAG:Ce with the blue GaN Led] in order to produce a white LED”. Nichia maintains that the primary judge’s conclusion, that the skilled addressee would not have been so led with an expectation that this might well produce a useful white LED, was sound in any event.

110    There are four reasons why I have reached a contrary conclusion.

111    The first reason is that, as the Full Court said in Generic Health at [71], it “is difficult to think of a case where an expectation that an experiment might well succeed is not implicit in the characterisation of steps as routine and to be tried as a matter of course.” The Full Court was not saying that the expectation of the skilled addressee is immaterial. Nor was it making a statement of principle as each case must depend on its own facts, but as Arrow put it:

It is very difficult to see why a person skilled in the art would have been directly led as a matter of course to combine YAG:Ce with a blue GaN LED to produce a white LED unless there was an expectation that it “might well produce” a useful result. Indeed, a person skilled in the art would only have been directly led as a matter of course to combine YAG:Ce with a blue GaN LED to produce white LED because they had an expectation that it might well produce a useful result.

112    The second reason is that if the approach in Wellcome is adopted, which asks if the steps taken were of a routine character to be tried as a matter of course, I consider the answer based on the primary judge’s unchallenged finding at [278] is that the invention was obvious. As discussed below, the steps Nichia took up to 30 May 1996 were routine.

113    The third reason is that I consider Nichia’s own work supports the proposition that the invention was obvious. After the ZnCdS:Ag phosphor surprisingly failed in terms of durability the only thing that happened before 30 May 1996, when the invention was created, was Mr Ogawa directed the team to test all phosphors that emitted yellow light like the ZnS-based phosphors. While Mr Shinomiya did not know about the spectral properties of YAG:Ce (but did know that it was very stable in at least one other application, see at [142]), the primary judge found that the skilled addressee would have known that YAG:Ce was a garnet structure that absorbs blue light and converts it with high efficiency into a yellow emission. Indeed, as the primary judge said at [187] Nichia accepted that this was part of the common general knowledge. Mr Shinomiya and Shimizu then went to Nichia’s phosphor samples and examined them under light to find those with a yellow body colour one of which was YAG:Ce. Because of the yellow body colour YAG:Ce was selected as the preferred candidate for testing. Exciting YAG:Ce in different ratios produced “whitish light” of “good reputation” on 30 May 2016, which Nichia properly accepted to be the claimed invention. Nothing in the period from Mr Ogawa’s instruction to 30 May 1996 suggests anything other than routine trial in the expectation that a yellow bodied phosphor would produce satisfactory white light (satisfactory in the sense of acceptable colour tone and/or luminance), just as the ZnCdS:Ag phosphor did.

114    The fourth reason is that Professor Meijerink’s evidence, on which the primary judge relied, is also concerned with the production of a white LED which meets all requirements necessary for commercial viability. For example, at [262] the primary judge records Nichia’s submission that:

…even if the person skilled in the art would have been directly led as a matter of course to use YAG:Ce, it does not follow that he or she would have done so with an expectation of success. The applicant referred to Professor Meijerink’s evidence that it was impossible to know whether luminescent material could be used for spectral conversion in any given application under any given conditions, unless extensive research and testing of the material had confirmed its suitability. The applicant also referred to Professor Meijerink’s evidence that, given the challenging and unique operating conditions in a blue LED, it would have been extremely difficult before the priority date to predict the stability and performance of any given luminescent material in the blue LED.

115    To my mind, this exposes a conception of the claimed invention and a useful white LED as a device meeting all requirements for commercial viability. To adopt Arrow’s submissions, the effect of assessing obviousness by reference to an expectation that steps may well produce a white LED meeting (unstated) stability and performance requirements was to narrow the boundaries of the claimed monopoly. It also imposed a construct of usefulness for the purpose of the Cripps question not supported by either the claims or the specification.

116    I do not accept Nichia’s submissions to the contrary.

117    The primary judge did say this at [64]:

Further, the specification makes clear that an object of the invention is to provide a light emitting device with high luminescence, and which experiences only extremely low degrees of deterioration in emission light intensity, light emission efficiency and colour shift over a long period of use.

118    However, read as a whole the specification discloses that the invention may meet only one of those objects and, as Arrow emphasised, the claims do not require anything other than a white LED made as described (which I accept must be useful). And this the primary judge also recognised at [62] when he noted that:

…claim 3 does not, in terms, require the creation of white light, nor white light of any particular nature, quality or colour rendering. Nor does it require that the light emitting device be suitable for any particular application; there are no requirements of stability, durability, efficiency or performance expressed as essential features of the invention.

119    The concept of a useful result, for the purposes of the Cripps question, cannot exceed that which the claims and the specification as a whole in the context of the prior art identifies as useful. Thus, the primary judge’s observations at [66] about the invention being “directed to” a white LED that “should attain” certain desirable attributes (which the primary judge recognised were not integers of any claim) did not answer the requirements of the Cripps question (and, in that part of his Honour’s reasons, was not intended to). Nor, for the purposes of the Cripps question, was the primary judge bound to proceed on the basis he did because Arrow did not challenge the utility of the invention. It is true that Arrow must be taken to have accepted that the white LED of the claims was useful, but given the prior art, the claims and the specification in the present case this does not mean that the expectation must relate to every desirable quality of the invention mentioned in the specification.

120    It follows that I do not accept that the fact that the Cripps question is directed to a useful result leads to the conclusion that the invention was not obvious unless the person skilled in the art would have taken the routine steps as a matter of course which Nichia took with an expectation that those steps may well produce a white LED which is durable, with good colour tone and high luminance. This involves too high a standard given that which is claimed and the terms of the specification.

121    Nichia’s references to those parts of the primary judge’s reasoning about other options which also would have been worthwhile to try do not assist Nichia. For one thing, it is apparent that the primary judge knew that “worthwhile to try” was not the relevant test in Australia. For another, it is apparent he knew that, as a matter of principle, other options do not necessarily answer the question of obviousness.

122    It is also not the case that Nichia necessarily possessed all of the common general knowledge that would be attributed the skilled addressee. For example, Mr Shinomiya did not know the spectral properties of YAG:Ce but the primary judge found (and Nichia accepted) that this was part of the common general knowledge (at [187]). Thus, while Nichia possessed expertise and know-how in the field of inorganic phosphors and other fluorescent materials, such as organic and inorganic dyes and pigments (at [119]–[121], [123], and [127]) the fact that Nichia first used the ZnS-based phosphors, as explained above, does not support the conclusion that the invention was not obvious. Similarly, the finding at [288] that “it was necessary for [Nichia] to carry out a research programme in order to find a satisfactory way to make a white LED using the GaN LED” appears otherwise to be based on the premise that Nichia did not have the invention by 30 May 1996, when it did have the invention by that date.

123    It is true that the Cripps question is not a statutory test. It may be accepted, as was noted in Alphapharm at [37], quoting Johns-Manville Corporation’s Patent [1967] RPC 479 at 493–4, that there is “no verbal formula which is appropriate to all classes of claims.” However, as Nichia also noted, the case below and the appeal were fought on the basis of the Cripps question.

124    It may be accepted that the primary judge rejected the evidence of Dr Bretschneider as “irremediably tainted by hindsight” (at [270]). As a result, no weight should be given to his evidence in the appeal. Arrow, however, did not need to challenge Professor Meijerink’s evidence summarised at [286] because inherent in that evidence about predictability is a conception of usefulness which is inconsistent with the Cripps question as it should be applied in the present case. Accordingly, the evidence of neither expert provides any assistance. Otherwise, my conclusions depend on the primary judge’s unchallenged findings of fact, at least to the extent that those findings do not involve a conception of usefulness that extends beyond that apt in the present case. This accords with the observation of the Full Court in Whitaker v Child Support Registrar [2010] FCAFC 112 at [2] that it “is not open to this court to determine issues of fact, as if the findings of the learned trial judge had not been made.”

Conclusions

125    For the above reasons I consider that Nichia’s contention that the primary judge erred in construing claim 3 as if “contains” exhaustively or exclusively identified the relevant fluorescent material should not be accepted. As a result, Nichia’s appeal should be dismissed. I consider that Arrow’s appeal as to whether the invention lacked inventive step should be allowed and that the invention was obvious and thus did lack an inventive step. As a result, Arrow’s cross appeal should be allowed. The orders the primary judge made in consequence must be set aside and claims 1 and 3 of the patent should be declared invalid.

Associate:

Dated:    29 January 2019

REASONS FOR JUDGMENT

NICHOLAS J:

126    I have also had the advantage of reading the reasons for judgment of Jagot J. I agree with those reasons and the orders proposed by her Honour.

Associate:

Dated:    29 January 2019