Catchwords                           CATCHWORDS

 

 

Intellectual property - Patents - Revocation - Grounds of invalidity of patent for a process - Further particulars of lack of novelty - When ordered - Relationship between Specification and particulars of prior user - Whether objector can be required to confine alleged prior use more narrowly than the Specification - Further particulars of inutility - When ordered - Distinction between theoretical demonstration of inutility of whole process disclosed by Specification and specific inutility demonstrated by proof that a particular combination of integers within the Specification does not work - Fraud and false suggestion - Sufficiency of particulars - Petty patent - Claimed to have duplicated standard patent in contravention of s. 64(2) of Patents Act 1990 - Whether specifications have to be identical or overlapping - Whether Commissioner should be restrained by interlocutory injunction from extending petty patent - Whether breach of s. 64(2) constitutes ground for revocation - balance of convenience

 

 

Patents Act 1990 (Cth) ss. 28(3), 64, 138(3)

Patents Regulations 1991 Regs 6.6., 12.4

Judiciary Act 1903 (Cth) s. 39B

Federal Court Rules O.12 r.2, O.58 r.15

 

 

Minerals Separation Ltd v Ore Concentration Company (1905) Ltd (1909) 26 RPC 413

Smith v Lang (1890) 7 RPC 148

Scott v The Hull Steam Fishing and Ice Company Ltd (1896) 13 RPC 206

Holliday v Heppenstall (1889) 6 RPC 320

Nettlefolds v Reynolds (1891) 8 RPC 410

Siemens v Karo, Barnett, & Co (1891) 8 RPC 376

Birch v Harrap and Co (1895) 12 RPC 431

Crosthwaite Fire Bar Syndicate Ltd v Senior (1909) 26 RPC 260

Re Stahlwerk Becker Aktiengesellschaft's Patent (1917) 34 RPC 332

Hardaker v Boucher & Co Ltd (1934) 51 RPC 278

O'Shei's Application [1958] RPC 72

Thermit Ltd v Weldite Ltd (1907) 24 RPC 441

American Chain & Cable Co Inc v Hall's Barton Ropery Co Ltd (1938) 55 RPC 287

Walton v Hawkins Ltd (1948) 65 RPC 69

Presto Coat Collar Co v Levy Bros (1911) 28 RPC 362

Re Lever Bros and Unilever Ltd's Patent (1952) 69 RPC 362

Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197

Re Two Applications for Patents by Harry Dreyfus (1927) 44 RPC 291

Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1995] AIPC 91-121

Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Limited (unreported Olney J 28 April 1995)

Re Morgan Refractories Ltd's Patent [1968] RPC 374

 

 

WIMMERA INDUSTRIAL MINERALS PTY LIMITED v RGC MINERAL SANDS LIMITED

VG 215 of 1994

 

 

 

 

 

RYAN J

MELBOURNE

6 MARCH 1996

Orders

IN THE FEDERAL COURT OF AUSTRALIA  )

VICTORIA DISTRICT REGISTRY         )   No VG 215 of 1994

GENERAL DIVISION                   )

 

 

 

                   BETWEEN:  WIMMERA INDUSTRIAL MINERALS PTY LIMITED

                             (ACN 004 302 130)

                                                 (Applicant)

 

                   AND:      RGC MINERAL SANDS LIMITED

                             (ACN 008 763 666)

                                                (Respondent)

 

                   AND:      RGC MINERAL SANDS LIMITED

                                            (Cross-Claimant)

 

                   AND:      WIMMERA INDUSTRIAL MINERALS PTY LIMITED

                                    (First Cross-Respondent)

 

                   AND:      THE COMMISSIONER OF PATENTS

                                   (Second Cross-Respondent)

 

 

 

CORAM:    Ryan J

PLACE:    Melbourne

DATE:         6 March 1996

 

 

 

                      MINUTES OF ORDER

 

 

 

THE COURT ORDERS:

 

 

1.   That leave be reserved to the applicant (if so advised) after the filing and service of affidavits containing the evidence to be relied on by the respondent at the trial of the action herein to renew its application for further and better particulars of the respondent's Amended Particulars of Grounds of Invalidity going to want of utility.

 

2.   That the motion on notice dated 9 May 1995 be otherwise refused.

 

3.   That the respondent's costs of and incidental to the said motion on notice dated 9 May 1995 be its costs in the application.

 

4.   That the motion on notice dated 29 May 1995 be refused.

 

5.   That the applicant's costs of and incidental to the said motion on notice dated 29 May 1995 be its costs in the application.

 

 

 

NOTE:         Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA  )

VICTORIA DISTRICT REGISTRY         )   No VG 215 of 1994

GENERAL DIVISION                   )

 

 

 

                   BETWEEN:  WIMMERA INDUSTRIAL MINERALS PTY LIMITED

                             (ACN 004 302 130)

                                                 (Applicant)

 

                   AND:      RGC MINERAL SANDS LIMITED

                             (ACN 008 763 666)

                                                (Respondent)

 

                   AND:      RGC MINERAL SANDS LIMITED

                                            (Cross-Claimant)

 

                   AND:      WIMMERA INDUSTRIAL MINERALS PTY LIMITED

                                    (First Cross-Respondent)

 

                   AND:      THE COMMISSIONER OF PATENTS

                                   (Second Cross-Respondent)

 

 

 

CORAM:    Ryan J

PLACE:    Melbourne

DATE:         6 March 1996

 

 

 

                    REASONS FOR JUDGMENT

 

 

RYAN J:   There are two motions before the Court.  The background to those motions as pleaded may be stated shortly.  Wimmera Industrial Minerals Pty Ltd ("WIM") is registered under the Patents Act 1990 as the proprietor of Australian Petty Patent No 649,946 (the "Petty Patent") and Australian Standard Patent No 639,089 (the "Standard Patent").  Both patents are for an invention entitled "Production of Synthetic Rutile".

 

The Petty Patent proceeded to grant and was published on 2 June 1994.  The invention is defined by the following claims:

 

      "1.   A process for upgrading the titania content of a titaniferous material which process comprises the steps of:

 

            (i)   reducing the titaniferous material using a solid carbonaceous reductant at a temperature of at least 900°C to form metallic iron, a rutile phase and a separate impurity bearing titaniferous phase to produce a thermally reduced product;

 

            (ii)  cooling the thermally reduced product in an environment which prevents substantial reoxidation to produce a cooled reduced product;

 

            (iii)subjecting the cooled reduced product of step (ii) to an aqueous chemical treatment to convert metallised iron into a readily removable form;

 

            (iv)  subjecting the product of step (iii) to a leaching treatment with sulphuric and/or hydrochloric acid to convert impurity elements in the minor impurity bearing titaniferous phase to a readily removable form; and

 

            (v)   removing the readily removable form of the iron and the readily removable form of the impurity elements to produce a synthetic rutile.

 

      2.    The process defined in claim 1, comprising removing the readily removable form of the iron prior to acid leaching step (iv).

 

      3.    The process defined in claim 1 or claim 2, wherein the aqueous chemical treatment comprises aqueous aeration that involves blowing air through an aqueous suspension of the cooled reduced product of step (ii) in the presence of an agent that promotes the formation of oxides or iron."

 

The Standard Patent was published on 18 September 1991 and proceeded to grant on 11 May 1994.  The claims defining that invention are similar to those defining the Petty Patent and are as follows:

 

 

      "1.   A process for upgrading the titania content of a titaniferous ore or concentrate which process comprises the steps of:

 

            (i)   reducing the titaniferous ore or concentrate using, a solid carbonaceous reductant under temperature conditions which promote the formation of metallic iron, a major rutile phase and a separate phase to produce a reduced product;

 

            (ii)  cooling the reduced product of step (i) in an oxygen free environment to produce a cooled reduced product;

 

            (iii)subjecting the cooled reduced product of step (i) to a first stage leaching or aeration to convert metallised iron into a readily removable form to produce a leached or aerated product;

 

            (iv)  removing iron from the leached or aerated product of step (iii) to produce an intermediate product;

 

            (v)   subjecting the intermediate product of step (iv) to further leaching processes to form a residue and convert other impurity elements to a readily removable form; and

 

            (vi)  removing the other impurity elements from the residue of step (v) to produce a synthetic rutile.

 

      2.    A process according to claim 1 wherein the minor impurity bearing phase is a metatitanate (M₂O₂) or a anosovite/pseudobrookite like phase (M₂O₂).

 

      3.    A process according to claim 1 or claim 2 wherein step (iii) comprises blowing air through an agitated aqueous suspension of the cooled reduced product of step (i) in the presence of an agent that promotes the formation of oxides of iron.

 

      4.    A process according to claim 1 or claim 2 wherein step (iii) comprises leaching the cooled reduced product of step (i) in a solution of a strong mineral acid.

 

      5.    A process according to any one of the preceding claims wherein step (v) comprises leaching the intermediate product of step (iv) in an agitated solution of a strong mineral acid.

 

      6.    A process according to claim 5 wherein the solution of strong mineral acid has an initial concentration in the range from 4 to 50 wt %.

 

      7.    A process according to claim 5 or claim 6 wherein the solution of strong mineral acid is maintained at a temperature in the range from 80 to 150°C.

 

      8.    A process according to 7 wherein the solution of strong mineral acid is refluxed.

 

      9.    A process according to any one of claims 4 to 8 wherein the strong mineral acid is hydrochloric acid or sulphuric acid.

 

      10.   A process according to any one of the preceding claims wherein step (i) comprises reducing the titaniferous ore or concentrate with a solid carbonaceous reductant at a temperature in the range from 900°C to 1200°C.

 

      11.   A process according to claim 10 wherein step (i) is performed at a temperature in the range from 900°C to 1050°C.

 

      12.   A process according to any one of claims 1 to 9 wherein step (i) comprises reducing the titaniferous ore or concentrate with a hydrogen bearing gaseous reductant.

 

      13.   A process according to claim 1 wherein the minor impurity bearing phase is anosovite or pseudobrookite and step (v) comprises leaching the intermediate product of step (iv) in excess hot sulphuric acid whilst agitating the hot sulphuric acid for a period of from 15 minutes to 24 hours.

 

      14.   A process according to claim 13 wherein the acid has an initial concentration of up to 50 wt %.

 

      15.   A process according to claim 1 wherein the solid carbonaceous reductant is sub-bituminous or lignitic coal or char derived therefrom."

 

On 30 June 1994, WIM commenced infringement proceedings against RGC Mineral Sands Ltd ("RGC").  RGC is alleged to have infringed both the Petty Patent and the Standard Patent by several acts.  In particular, WIM relies upon the production and supply by RGC of synthetic rutile manufactured by a process known as the Synthetic Rutile Enhancement Process (the "SREP process").  It is unnecessary for me to describe in detail the nature of that process or the particular acts of infringement which are alleged against RGC, except to note that aspects of the process are carried out at RGC's facilities at Narngulu, Western Australia and at its Capel plant, Western Australia.

 

RGC denies that it has infringed WIM's patents.  RGC also seeks by way of cross claim against WIM and the Commissioner of Patents various declaratory orders and other substantive relief on the basis that both the Petty Patent and the Standard Patent are invalid and should be revoked.  The grounds of invalidity upon which RGC relies are set out in a document entitled "Amended Particulars of Grounds of Invalidity" which was filed on and is dated 20 February 1995.

 

RGC's Amended Particulars of Grounds of Invalidity have given rise to much dispute between the parties and are the subject of the first motion before the Court.  By that motion, notice of which is dated 9 May 1995, WIM seeks orders requiring the provision of further and better particulars of a large number of matters raised both by RGC's defence and its particulars of
grounds of invalidity.  In its submissions to the Court, however, WIM limited its claim for further particulars to three of the alleged grounds of invalidity, namely lack of novelty, inutility and fraud or false suggestion.

 

It is necessary to set out in full the terms of RGC's Amended Particulars of Grounds of Invalidity which go to those three grounds and in relation to which further particulars are sought by WIM.  Paragraphs 1 to 8 inclusive of the Amended Particulars of Grounds of Invalidity deal with the Petty Patent and paragraphs 9 to 15 with the Standard Patent.

 

In relation to the ground of novelty, WIM seeks further particulars of paragraphs 2A(1) and 10A(1) of the Amended Particulars of Grounds of Invalidity.  Those paragraphs are in identical terms as follows:

 

      "A  -  Matters occurring before 2 March 1990

 

      (1)   The use by the Respondent/Cross-Claimant and its predecessors Associated Minerals Consolidated Limited and Western Titanium Limited, at their Capel B Plant from about 1980 onwards, such Plant being near Capel in Western Australia, and at their Narngulu C Plant, near Geraldton in Western Australia from 1987 onwards, in the large scale commercial production and sale of synthetic rutile, of a process of upgrading the titania content of a titaniferous material, namely ilmenite, which process comprised the steps of:

 

            (i)   reducing the ilmenite using a solid carbonaceous reductant (namely coal or coal and recycled coal char) in a reduction kiln at temperatures in the reduction kiln ranging from about 920°C to about 1195°C, and both with, and without, the addition of sulphur or a sulphur containing compound to the reduction kiln, to form metallic iron, a rutile phase or phases (including reduced rutile) and one or more separate impurity bearing titaniferous phases to produce a thermally reduced product;

 

            (ii)  cooling the thermally reduced product in an environment that prevented substantial reoxidation to produce a cooled reduced product;

 

            (iii)subjecting the cooled reduced product of step (ii) to an aqueous chemical treatment (namely aqueous aeration by blowing air through an aqueous suspension of the said cooled reduced product in the presence of an agent, namely ammonium chloride, that promotes the formation of iron oxides) to convert metallised iron into a readily removable form;

 

            (iv)  subjecting the product of step (iii) to a leaching treatment with sulphuric acid to convert impurity elements in the minor impurity bearing titaniferous phase or phases (being residual iron, manganese and other impurities) to a readily removable form; and

 

            (v)   removing the readily removable form of the iron (before the acid leaching step) and the readily removable form of the impurity elements to produce synthetic rutile;

 

            and the sale in Australia (including sale for export) of synthetic rutile so produced."

 

The particulars of RGC's allegations of inutility are set out in paragraphs 5 and 13 of RGC's Amended Particulars of Grounds of Invalidity.  Those paragraphs are in similar but not identical terms and it is necessary to set out each in full.

 

Paragraph 5 which relates to the Petty Patent is in the following terms:

 

      "5.   The alleged invention, so far as claimed in each and all of the Claims of the complete specification is not a patentable invention in that it is not useful.

 

            PARTICULARS REQUIRED BY ORDER 54B RULE 15(3) (sic. Order 58 Rule 15(3))

 

      There are examples of the alleged invention, within the scope of each Claim, which will not work at all or as described in the complete specification as follows:

 

      (1)   There are temperatures, and also other reduction conditions, within each Claim, in which:

 

            (a)   no or no significant rutile phase referred to in the claims will be formed;

 

            (b)   no or no significant metallic iron will be formed.

 

      (2)   There are leaching conditions within each Claim under which no or no significant amounts of any impurities will be leached or converted to a readily removable form;

 

            (a)   at all, or

 

            (b)   from the or any separate impurity bearing titaniferous phase referred to in the Claims.

      (3)   The process will not work at all or as described in the specification if the readily removable form of the iron is not removed before the leaching step whereas that method is included in Claims 1 and 3.

 

      (4)   There are solid carbonaceous reductants included in each Claim that will not work at all or as described in the specification.

 

      (5)   There are aqueous chemical treatments and conditions of such treatments within each Claim that will not convert metallised iron into a readily removable form.

 

      (6)   The process described in each Claim will not remove:

 

            (a)   any or any significant amount of radionuclides;

 

            (b)   any or any significant amount of radionuclides from the or any separate impurity bearing titaniferous phase referred to in the Claims.

 

      (7)   The process described in each Claim will not work under any practical or economically feasible leaching conditions.

 

      (8)   The process described in each Claim does not convert any impurity elements in any minor impurity bearing titaniferous phase to a readily removable form."

 

Paragraph 13 contains similar pleadings and particulars of invalidity on the ground of inutility in relation to the Standard Patent:

 

      "13.  The alleged invention so far as claimed in each and all of the Claims of the complete specification, is not useful.

 

                  PARTICULARS REQUIRED BY ORDER 54B RULE 15(3) (sic. Order 58 Rule 15(3))

 

            There are examples of the alleged invention, within the scope of each Claim, which will not work at all or as described in the complete specification as follows:

 

            (1)   There are temperatures, and also other reduction conditions, within each Claim, in which:

 

                  (a)   no or no significant major rutile phase referred to in the claims will be formed;

 

                  (b)   no or no significant metallic iron will be formed.

 

            (2)   There are leaching conditions within each Claim under which no or no significant amounts of any impurities will be leached or converted to a readily removable form.

 

            (3)   There are solid carbonaceous reductants included in each Claim that will not work at all or as described in the specification.

 

            (4)   There are leaching and/or aeration treatments and conditions of such treatments within each Claim that will not convert metallised iron into a readily removable form.

 

            (5)   The process described in each Claim will not work under any practical or economically feasible leaching conditions."

 

The particulars of the ground of fraud, false suggestion or misrepresentation are contained in paragraphs 7, 8 and 15 of the Amended Particulars of Grounds of Invalidity which, in turn, refer to paragraphs 6 and 14 respectively.

 

In relation to the Petty Patent, it is therefore necessary to set out paragraphs 6, 7 and 8:

 

      "6.   The Patentee (the applicant) is not entitled to the said Petty Patent.

 

                                PARTICULARS

 

            (1)   The persons named in the application for the said Petty patent and in the said Petty patent as the actual inventors are Michael John Hollitt, Ian Edward Grey and Brian Anthony O'Brien.  The Applicant, Wimmera Industrial Minerals Pty Limited claimed in the application for the said patent to be entitled to apply and to be entitled to the said Petty patent as assignee of the aforesaid inventors.

 

            (2)   The said inventors did not make any invention or any alleged invention having the scope, limits or integers of any of the claims of the said Petty patent.

 

            (3)   The Applicant was not an assignee of the said inventors in respect of the alleged invention defined in the claims of the said Petty patent.

 

       7.   The amendments referred to in paragraph 6 of the Amended Defence herein, were made or obtained by fraud, false suggestion or misrepresentation.

 

                                PARTICULARS

 

            The said amendments were not made or obtained in order to claim or define any invention known to or based on any knowledge possessed by the Applicant or the persons named as the actual inventors at the time of the filing of the application for the said Petty Patent, but for the purpose (which was not disclosed to the Commissioner of Patents) of trying to claim or to frame a claim that would cover the Respondent's process described or referred to in the Applicant's Particulars and Further and Better Particulars of Infringement as "the SREP process" as it was then known to the Applicant.

 

       8.   The said Petty Patent was obtained by fraud, false suggestion or misrepresentation.

 

            (1)   The Respondent/Cross-Claimant refers to and repeats the Particulars (2) and (3) under paragraph 6 hereof and the Particulars under paragraph 7 hereof.

 

            (2)   None of the matters referred to in (1) above was disclosed to the Commissioner of Patents during the prosecution of the application for the said Petty patent, and the Applicant by its conduct of the said prosecution expressly or impliedly falsely suggested or represented to the contrary."

 

Paragraphs 14 and 15 which relate to the Standard Patent are in similar terms:

 

      "14.  The Patentee (the Applicant) is not entitled to the said Patent.

 

                                PARTICULARS

 

            (1)   The persons named in the application for the said patent and in the said patent as the actual inventors are Michael John Hollitt, Ian Edward Grey and Brian Anthony O'Brien.  The Applicant, Wimmera Industrial Minerals Pty Limited claimed in the application for the said patent to be entitled to apply and to be entitled to the said as assignee of the aforesaid inventors.

 

            (2)   The said inventors did not make any invention or any alleged invention having the scope, limits or integers of any of the claims of the said patent.

 

            (3)   The Applicant was not an assignee of the said inventors in respect of the alleged invention defined in the claims of the said patent.

 

       15.  The said Patent was obtained on false suggestions or false representations or by fraud, false suggestion or misrepresentation.

 

                                PARTICULARS

 

            (1)   The Respondent/Cross-Claimant refers to and repeats the Particulars (2) and (3) under paragraph 14 hereof.

 

            (2)   None of the matters referred to in (1) above was disclosed to the Commissioner of Patents during the prosecution of the application for the said patent, and the Applicant by its conduct of the said prosecution expressly or impliedly falsely suggested or represented to the contrary."

 

By a document entitled "Further and Better Particulars of Paragraphs 6 and 14 of the Respondent's Amended Particulars of Grounds of Invalidity" dated 18 May 1995, RGC provided WIM with further particulars of paragraphs 6 and 14 of the Amended
Particulars of Grounds of Invalidity.  That document, omitting formal parts, states as follows:

 

 

      "Under Paragraph 6 of the Particulars of Grounds of Invalidity

 

      A.    Sub-paragraphs (1), (2) and (3)

 

      (i)   If the said inventors made any invention (which is not admitted but specifically denied) such invention related to a process which is fundamentally different to that disclosed and claimed in the said Petty patent, and was not an invention having the scope, limits or integers that now appear in any of the claims of the said Petty patent.

 

      (ii)  The invention (if any) was no wider in scope than the invention disclosed and claimed in the specification of Australian Standard Patent Application No 74597/91 as filed on 1 March, 1991.

 

      (iii)The invention did not extend to include -

 

            (a)   a process in which there was formed "a separate impurity bearing titaniferous phase" or a "minor impurity bearing titaniferous phase" unless such phases are limited to a "metatitanate" or "anosovite" or "psuedobrookite" or "anosovite/pseudobrookite" phase;

 

            (b)   a process in which the reducing temperature was higher than 1000°C;

 

            (c)   a process in which any aqueous chemical treatment other than aeration was used before the leaching step;

 

            (d)   a process in which any additive other than coal and/or coal char and ilmenite, was added to the reduction kiln;

 

            (e)   a process in which the impurities included any radioactive elements or radionuclides, or a process capable of removing any or any significant amount of such impurities from the ore.

 

      B.    Further Particulars

 

      (iv)  The Respondent/Cross-Claimant refers to paragraph 16 of its Amended Defence and Cross-Claim.  By reason thereof the Applicant was not and is not entitled to the said Petty patent.

 

      Save as aforesaid the Applicant is not entitled to the particulars sought.

 

      Under Paragraph 14 of the Particulars of Grounds of Invalidity

 

      Sub-paragraphs (1), (2) and (3)

 

      (i)   If the said inventors made any invention (which is not admitted but specifically denied) such invention related to a process which is fundamentally different to that disclosed and claimed in the said Standard Patent, and was not an invention having the scope, limits or integers that now appear in any of the claims of the said Standard Patent.

 

      (ii)  The invention (if any) was no wider in scope than the invention disclosed and claimed in the specification of Australian Standard Patent Application No 74507/91 as filed on 1 March, 1991.

 

 

      (iii)The invention did not extend to include -

 

            (a)   a process in which there was formed "a separate impurity bearing titaniferous phase" or a "minor impurity bearing titaniferous phase" unless such phases are limited to a "metatitanate" or "anosovite" or "psuedobrookite" or "anosovite/pseudobrookite" phase;

 

            (b)   a process in which the reducing temperature was higher than 1000°C;

 

            (c)   a process in which any aqueous chemical treatment other than aeration was used before the leaching step;

 

            (d)   a process in which any additive other than coal and/or coal char and ilmenite, was added to the reduction kiln;

 

            (e)   a process in which the impurities included any radioactive elements or radionuclides, or a process capable of removing any or any significant amount of such impurities from the ore.

 

      Save as aforesaid the Applicant is not entitled to the particulars sought."

 

The second motion before the Court is brought by RGC against the Commissioner of Patents.  Notice of that motion is dated 29 May 1995 and was filed on 30 May 1995.  By its motion, RGC seeks an order restraining the Commissioner of Patents from extending the term of the Petty Patent or taking any other steps in relation to the Petty Patent other than removing it from the Register of Patents.

 

The order is sought on the basis that there is a serious question to be tried as to the application of s. 64(2) of the Patents Act 1990 to the Petty Patent and that the balance of convenience is in favour of the grant of the relief sought.

 

The facts relevant to this motion are largely set out in the reasons for decision of Olney J dated 28 April 1995.  It is useful, however, to restate them briefly.  RGC also places
some reliance on the judgment of Olney J as establishing an arguable case for the application of s. 64(2).

 

Paragraph 16 of RGC's Amended Defence dated and filed on 20 February 1995 pleads s. 64(2) in answer to the allegation of infringement of the Petty Patent.  That section provides that where a patent application claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, and the relevant claim or claims in each of the complete specifications have the same priority date then a patent cannot be granted on the application.  Paragraph 16 is set out:

 

      "16.  Further or alternatively, in answer to the whole of the allegations relating to the said Petty Patent, it says that the Petty Patent is and has at all times been wholly null and void and of no effect, and it was not lawful to grant, and the Commissioner of Patents had no power to grant, the said Petty Patent by virtue of the provisions of Section 64(2) of the Patents Act 1990 in that -

 

            (a)   the complete application and specification for the said Petty Patent claimed an invention that was and is the same as an invention that is the subject of the Applicant's Australian Patent No 639,089 granted on 11 May 1994;

 

            (b)   the same inventors made and/or claim and are by the Applicant claimed to have made the invention claimed in the said Petty Patent and each claim thereof and the invention or an invention which is the subject of the said Patent No 639,089 and each claim or one or more claims thereof; and

 

            (c)   each claim of the said Petty Patent and each claim of the said Patent No 639,089 has and/or is claimed by the Applicant to have the same priority date."

 

The relief which RGC seeks on the basis of the operation of s.64(2) is set out in its Amended Cross-Claim as follows:

 

      "(1)  Declarations -

 

            (a)   that Australian Petty Patent No 649,946 and all of the claims of the complete specification thereof are and have at all times been wholly invalid;

 

            (b)   that Australian Petty Patent No 649,946 is and has at all material times been wholly null and void and of no effect, and that the purported grant thereof was null and void and of no effect;

 

            (c)   that Australian Standard Patent No 639,089 and all the claims of the complete specification thereof are and have at all times been wholly invalid.

 

       (2)  An order revoking Australian Petty Patent No 649,946 and each and all of the claims of the complete specification thereof.

 

      ...

 

       (4)  (a)   A mandatory injunction compelling, or an Order that a Writ of Mandamus issue commanding, the Second Cross-Respondent to remove Australian Petty Patent No 649,946 from the Register of Patents;

 

            (b)   An injunction restraining, or an Order that a Writ of Prohibition issue prohibiting, the Second Cross-Respondent from extending the term of the said Petty Patent or taking any other steps in relation to the said Petty Patent other than the steps referred to in paragraph (4)(a) above; and

 

            (c)   An Order quashing, or an Order that a Writ of Certiorari issue to bring up and quash, the decision of the Second Cross-Respondent to grant the said Petty Patent."

 

The term of the Petty Patent was twelve months commencing on 2 June 1994.  Within the time allowed by the Patents Regulations, application was made by WIM for an extension of term.  An interim examiner's report has recommended to the Commissioner that the application be acceded to and it appears that, unless the Commissioner is prohibited by an order of the Court, he will proceed to grant the extension.

 

The factual matters upon which RGC relies in order to establish an arguable case for the application of s. 64(2) to the Petty Patent, namely the priority dates, the inventors and the claims, appear on the face of the patents themselves.  The claims have been extracted above.  The priority date of each of the patents is stated as 2 March 1990.  Whilst the filing date of the Petty Patent was 12 August 1993, it appears that
an earlier priority date has been achieved by means of the parent Standard Patent.  The stated inventors of both patents are the same, namely Michael John Hollitt, Ian Edward Grey and Brian Anthony O'Brien.

 

In addition to these matters, RGC placed reliance on the decision of Olney J dated 28 April 1995, which was given on two motions, the relevant one being that by the Commissioner of Patents against RGC seeking orders that the claims brought by RGC against the Commissioner on the basis of the application of s. 64(2) of the Patents Act 1990  be dismissed, struck out or forever stayed, and that the Commissioner be removed as a party in the proceeding.  The Commissioner argued that, for various reasons, relief by way of prerogative writ is not available against the Commissioner for breach of a statutory prohibition such as that contained in s. 64(2) of the Patents Act 1990.

 

Olney J rejected the arguments of the Commissioner holding that the Federal Court has jurisdiction pursuant to s 39B of the Judiciary Act to grant relief at least by way of mandamus and prohibition, on grounds such as those relied upon in RGC's cross-claim against the Commissioner.

 

I now turn to the merits of the applications, going first to WIM's motion for further particulars.

Particulars going to Novelty

RGC seeks to defeat WIM's claim of novelty by invoking a process in which it claims to have engaged at its Capel B

plant since 1980 and at Narngulu since 1987.  That process is said to have involved five discrete steps.  It is to the description of those steps that WIM takes objection.  In the first place it is said that insufficient particulars have been given of the solid carbonaceous reductant said to have been used by RGC "namely coal or coal and recycled coal char".  As I read paragraph 2A(1)(i) of RGC's amended particulars, it amounts to an allegation that its process at times used pure coal as a reductant and at other times used a combination of coal and recycled coal char in proportions which have not been specified and could have varied from time to time.

 

 

Secondly, WIM points to the allegation by RGC that its reduction process or processes resulted in the formation of metallic iron.  WIM complains that the percentage or range of percentages of metallization achieved by RGC should have been specified.

 

Thirdly, WIM instances RGC's allegation that its process involved subjecting the product of step (iii) to a leaching treatment with sulphuric acid.  The complaint is that the concentration, or range of concentrations, of acid, has not been specified.

 

Finally, WIM complains that the range of temperatures "from about 920^oC to about 1195^oC" indicated in RGC's particulars of novelty is insufficiently precise to allow WIM's expert
witnesses to attempt to replicate RGC's process with a view to rebutting the claim of anticipatory use.

 

The obligation to provide particulars in this context is imposed by Reg. 12.4 of the Patent Regulations 1991 which provides:

 

            "(1) An applicant to a prescribed court for an order to revoke a patent under subsection 138(1) of the Act (`revocation of patents in other circumstances') must include in:

 

            (a)   the pleading; or

 

            (b)   another document disputing the validity of the patent; particulars of the grounds on which he or she relies.

 

            (2) If 1 of those grounds is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act, the particulars must specify:

 

            (a)   in the case of a document - the time when, and the place where, the document is alleged to have become publicly available; and

 

            (b)   in the case of an act:

 

                  (i)   the name of the person alleged to have done the act; and

 

                  (ii)  the period in which, and the place where, the act is alleged to have been done publicly; and

 

                  (iii)a description that is sufficient to identify the act; and

 

                  (iv)  if the act relates to apparatus or machinery - whether the apparatus or machinery exists and, if so, where it can be inspected.

 

            (3)   Except by leave of the court:

 

            (a)   evidence is not admissible to prove a ground of invalidity that has not been disclosed in the particulars in relation to that ground; and

 

            (b)   evidence as to apparatus or machinery that exists at the date of lodgment of the particulars is not admissible unless it is proved that the party relying on the evidence:

 

                  (i)   if the apparatus or machinery is in his or her possession - has offered the opportunity to inspect it; or

 

                  (ii)  in any other case - has used reasonable endeavours to obtain its inspection;

 

            to, or by, each other party to the hearing of the application.

 

            (4)   The court may:

 

            (a)   extend the time for giving particulars; and

 

            (b)   allow the amendment of particulars."

 

A requirement in virtually identical terms to paragraph 2 of sub-reg. 12.4 is contained in O.58 r.15(2) of the Rules of this Court.

 

It is accepted by Counsel for WIM that RGC has, by its particulars, complied with the obligation to specify the name of the persons alleged to have performed the acts involved in the prior process and the period in which, and place where, those acts are alleged to have occurred.  However, it is contended that the description is not "sufficient to identify the act" as required by Reg. 12.4(2)(b)(iii).  The requirement to give, by way of particulars, a description of the prior user relied on is of some antiquity.  It was to be found in R.S.C. Order LIII.(A), r.18 discussed in Minerals Separation Ltd v Ore Concentration Company (1905) Ltd (1909) 26 RPC 413 as a requirement for the particulars to "contain a description (accompanied by Drawings if necessary) sufficient to identify such alleged prior user, and, if such user relates to any machinery or apparatus, shall specify whether the same is in existence and where the same may be inspected".  In the Minerals Separation Case, Neville J was asked to order further particulars of a description of "the concentration of metalliferous ores by mixing the finely powdered ore with water, adding a suitable oil, and liberating a gas, namely carbonic acid in the mixture, upon the several dates hereinafter mentioned".

 

The plaintiffs' second request was for further and better particulars of the kind of oil used, the quantity of oil, the percentage to the ore, "the quantity - approximately stated -of the carbonic acid liberated on every several occasion in proportion to the quantity of concentrates recovered;" and a "sufficient description of each of the said users as to apparatus, proportions, time and other matters to enable the Plaintiffs to repeat the user".  Swinfen Eady J, at first instance, made an order confined to directing the defendants "to give to the Plaintiffs the best Particulars they can of the kind of oil used, the quantity of oil and percentage, and the nature of the apparatus".

 

On appeal, Cozens-Hardy MR, said, at 421:

 

      "What is it that the Rule requires?  That question cannot be answered in a word.  It depends upon the nature of the Plaintiffs' invention - that is one thing - and it also depends upon the nature of the prior user alleged by the Defendants. If the Patent is one for machinery or apparatus, great detail is required by the Rule, to the language of which I shall call attention in a minute.  Drawings have to be furnished and experiments have to be permitted, always qualifying that statement by the fact that it must be within the power of defendants to furnish the drawings and to allow the experiments.  But when the Patent is for a process, and merely for a process, no such detailed Particulars are required.  All that the Rule exacts is a description sufficient to identify such alleged prior user. Now in the present case the Plaintiffs allege that the Defendants are infringing a Patent called Froment's Patent. We are bound to see what it is that is claimed. It is clear that no machinery is claimed;  no apparatus is claimed;  it is simply and solely a Patent for a process. The first words of the Specification are these:- `This invention has reference to the concentration of metalliferous ores and earths for the purpose of separating and recovering therefrom the finely divided metal or metallic compounds, and consists of a modification of what is known as the oil process of ore concentration'; and the Claim is:- `The herein described process for the concentration of metalliferous ores and earths which consists in mixing the finely powdered ore or earth with water, adding a suitable oil, and then liberating a gas in the mixture substantially as
described and for the purpose specified.'  There is no indication of any particular kind of oil.  The Patentee claims what in one part is called a thin layer of ordinary oil, and in the claiming clause it is described as `a suitable oil'. Nor is there any statement of the kind of oil which is alleged by the Patentee to be required in order to give effect to his invention."

 

After referring to the particulars of objection, the learned Master of the Rolls, with whom Farwell LJ agreed, concluded, at 425:

 

      "In my opinion we ought not to make any Order for further Particulars on those matters.  The Defendants seem to me to have gone to the full length which it was necessary for them to go.  Their Particulars do contain a description sufficient to identify such alleged prior user.  They give a large number of chemical ingredients, and they give the time, place persons, and the mines from which the ores came which were used on these particular occasions.  It does seem to me if we were to accede to the view of the Plaintiffs in this action, we should be imposing upon the Defendants, who are resisting this Patent, a burden which they are not entitled to bear, and in my opinion, therefore, the appeal, so far as it relates to the Order made by Mr. Justice Neville, ought to be dismissed, and the appeal, so far as it relates to the Order of Mr. Justice Swinfen Eady, ought to be allowed..."

 

The present case similarly concerns a process and not a machine or device.  The process consists of five or six enumerated steps, the first of which involves the attainment of a minimum temperature of 900^oC, but does not specify a range, above that minimum, of permissible temperatures.  The first step also requires the use of a "solid carbonaceous reductant" without specifying it more precisely.  The first step, so far as is relevant, thirdly requires the formation of metallic iron without specifying the percentage or a range of percentages of metallization.  The fourth step requires a leaching with one or other or both sulphuric and hydrochloric acid in unspecified concentrations.  To require RGC to provide particulars confining it to a range of permissible temperatures, to identified reductants, to a specified
percentage, or range of percentages, of metallization and to a specified concentration of one or other leachant would be to confine its objection more narrowly than the words of WIM's specification.  Consequently, it would offend against the principle which I understand to have been laid down by the Court of Appeal in the Minerals Separation Case.

 

I have examined each of the authorities in this area to which I have been referred by Counsel for WIM but have found nothing in them to dissuade me from the provisional view which I have just indicated.  Smith v Lang (1890) 7 RPC 148 concerned an alleged invention of an improved type of wire rope which was claimed to have been published previously "by the manufacture, sale, use or public exhibition of wire rope made according to the alleged invention by the several persons named at the times and places mentioned, viz. (a) by Mr James Buck Wilson from 1832 to 1862".  On an appeal from refusal of particulars, the Court of Appeal ordered further particulars which it was apparently considered could be given after inspection of the rope manufactured by Mr Wilson.  However, that was case of a device rather than a process and no particulars at all were given by way of description of the prior user.

 

Scott v The Hull Steam Fishing and Ice Company Ltd (1896) 13 RPC 206 concerned an alleged invention of an improvement to trawl nets. Thus as in Smith v Lang the case concerned a device or article rather than a process.  The particulars of objection were regarded by the Court of Appeal as vague or
unintelligible, and the defendants were ordered to give further particulars "as to the mode of connecting the other boards, first, with trawl nets, and, secondly, with tow ropes, on which the Defendants rely as anticipations".  I agree with Counsel for RGC that the particulars ordered were of matters which were the two core integers of the claim and in that respect Scott's Case is distinguishable from the present.

 

Holliday v Heppenstall (1889) 6 RPC 320 concerned an alleged invention of an improvement in dyeing threads and fabrics with aniline.  Cotton LJ in a passage at 327, on part of which Counsel for WIM rely, observed:

 

      "Then as regards anticipations. What is the object of this law? It is this;  that the parties may come to the trial prepared to meet the case which is intended to be proved against them, and that there may be no taking by surprise, and no applications and orders for fresh trials, on the ground of the Plaintiff being surprised, and not being prepared from not knowing what the point was that was going to be brought against him by the Defendant.  Then if there is a mass of alleged anticipations without showing in some way how the Defendant intends to rely on these alleged anticipations, the Plaintiff will be put to enormous expense in being prepared on all points to meet these alleged anticipations, and there will be a great increase of cost in the trial of these cases, and a great increase of the length of time which is already sufficiently long, occupied in the trial of patent actions.  In my opinion, we ought, as far as we can, to discourage on both points the Plaintiff being burdened by additional costs, and the time of the Court being unnecessarily occupied by entering into a great number of questions which ought never to have been brought forward, and which have no real bearing on the questions which the Court has to decide - I mean the Courts generally, and I do not confine it to the Court of Appeal.

 

      Now, what ought to be done?  What I think should be done is this:  that we ought to require the Defendants to strike out from their particulars of objections those publications which they rely on simply as enabling them to prove general public knowledge at the time of these Specifications, and then I think we ought to require them to state more particularly what they rely on as regards the alleged anticipations;  what the alleged anticipation is, and where it is to be found. I do not think it would be right to bind them to state what the particular pages are of the books on which they rely as regards the anticipations.  That might throw a burden on them, and prevent possibly their case being properly brought forward before the Court, if by some accident they had not properly specified, or had omitted a page on which they intended to rely as regards anticipation;  but if they state the nature of the anticipation they rely on, or what part of the claim they rely on as an anticipation, then unless there is something more in the Specification, or publication, which requires
them to specify where that is to be found - something which notwithstanding they have indicated that leaves that which they intend to rely upon doubtful - that would be sufficient for them;  but I think, in the present instance, all we ought to do is this:  to make one order, on both the appeal and cross-appeal.  Then we shall vary the order by ordering the Defendants to expunge all particulars which are relied on merely to prove the state of knowledge in, and before the years 1874 and 1877, and to direct them to give further and better particulars of the alleged anticipations on which they rely, and to specify where, in particular, the anticipation is to be found."

 

In my view that order in which Lindley LJ agreed did no more than require a description of the process involved in the alleged anticipations which was sufficient to identify it.  It did not require a detailed prescription of each step of each alleged anticipation sufficient to enable the plaintiff to replicate it.  That view is reinforced by the explanation of Holliday v Heppenstall given by Lindley LJ as a member of a unanimous Court of Appeal in Nettlefolds v Reynolds (1891) 8 RPC 410 where his Lordship observed, at 417:

 

      "Now, the object of all this is, of course, to prevent surprise, to limit the scope of the inquiry, and to prevent expense; and, provided that the Defendant does deliver his objections fairly and honestly, it appears to me that it is not the province of the Court to tie his hands so tight, or to dictate to him in an early stage of the proceedings how exactly he is to frame his case.  That is a function which the Court does not take upon itself, and it cannot, in justice to the parties, do such a thing until it has mastered the whole case, which, upon a preliminary matter like this, is perfectly impossible, because we should have to try patent cases, first of all, on objections to particulars, and then again on the trial. It appears to me, therefore, that the moment the learned Judge came to the conclusion, as he did in fact, that the defendant here had honestly done his best to give to the Plaintiff that information that he is entitled to, unless the Court came to the conclusion that there was some grievous or some obvious mistake, he ought to be satisfied with that, and not to say, `I shall order further particulars, because I know from experience that if you say you rely on the whole of the Specification, when you come into Court nine-tenths will not be referred to.' If the Defendant is to be bound hand and foot to a particular page, and to a particular line, it will be perfectly impossible for him to defend his case, or to impeach the patent to the extent and in the manner in which he is entitled to do it.  Nothing which I have said appears to me to be in the least degree opposed to what was said or done in the case of Holliday v. Heppenstall, where the objections were piled up to an extent which was perfectly shocking.  We insisted and required that they should be amended, and half of them I suppose were struck out;  but when you look at the object of these particulars, and when you bear in mind the grievous injustice which we may be doing to a Defendant by tying his hands too tight in ignorance of the material facts, it appears to
me that in this case we ought to do what we very seldom do, differ from a learned Judge on a matter which, after all, is very much a matter of discretion, and say that the Defendants have done all that they can be reasonably required to do as regards these particulars..."

 

In Siemens v Karo, Barnett, & Co (1891) 8 RPC 376 particulars of anticipation had been given in the form "by the general use of Wenham's regenerative gas lamps for several years prior to the patent".  The vice in that form of particulars was identified by Chitty J at 379 in these terms:

 

      "[Counsel for the defendant] at once saw, as is obvious, k, l, and m are not sufficiently specific.  I will take k `by the general use of the Wenham regenerative gas lamp for several years prior to the patent.'  Now Wenham, as appears from what I have already said, is one of the Patentees.  `The Wenham Regenerative Gas Lamp' is not a sufficiently definite description of any particular lamp.  There might be dozens of lamps made under Wenham's name - made either in accordance with the patents, or with any variations which can proceed from them.  This particular is intended now for the purposes of anticipation, and therefore the further and better particular must specify in sufficient terms the lamp it is intended to refer to, and the time and place of user.  As the particulars stand at this moment, k, l, and m can be used upon the two heads of objections - that is, general knowledge and the particular anticipation. It is now intended that they should apply only to anticipation, and therefore it is plain that as to them further and better particulars should be given."

 

I do not regard the present particulars as infected by that vice.

 

Birch v Harrap and Co (1895) 12 RPC 431 also involved an allegation of anticipation against the validity of a patent for a device or article, in that case a sewing machine.  The Particulars of Objection included this paragraph:

 

      "4.   The said alleged invention was not the subject-matter of valid Letters Patent, but was the mere analogous use and application to an old and well-known sewing-machine of mechanical appliances and arrangements of parts well known and in common use in machines of a similar kind, and used for similar or analogous purposes, prior to the date of the said alleged Letters Patent."

 

Mr Willis Taylor sitting as the Vice-Chancellor ordered further particulars because he regarded paragraph 4 as an allegation of prior user and not as a plea of common knowledge.  Accordingly, he ordered further particulars, apparently of the mechanical appliances and arrangements of parts which had formerly been in use of which the defendant knew.  I am not persuaded to regard the present allegation of prior user as similarly containing an insufficient description of the acts relied on.

 

Crosthwaite Fire Bar Syndicate Ltd v Senior (1909) 26 RPC 260 also concerned an article or device being a fire grate.  As to most of the allegations of prior user the defendants offered to point out in situ each particular furnace to which their objection referred and to procure, if they could, full inspection of that furnace by the plaintiffs.  After noting that offer, Parker J continued, at 263:

 

      "Under those circumstances it seems to me that with that addition there will be a sufficient identification of the particular article which they say had been used prior to the date of the Patent and the use of which constitutes the prior user on which they rely.

 

      There is another Particular which refers to the Company who made the prior user and the place where it was used and the time of user, but states that the grate in question is not now in use.  With regard to that, the description in my opinion is clearly insufficient, and in that case, production being impossible, I am of opinion that the Defendants are bound, according to the Rule, to give a description of the nature of the grate with drawings if necessary - such description and drawings, if there be drawings, being sufficient to identify it, that is to show what is going to be alleged at the trial to have been the nature of the article the user of which is relied on as a prior user."

 

That case clearly affords no real assistance in assessing the sufficiency of RGC's particulars of alleged prior user of a process of upgrading the titania content of ilmenite.

 

In Re Stahlwerk Becker Aktiengesellschaft's Patent (1917) 34 RPC 332, the petitioner for revocation alleged prior user of "high speed tool steel constructed in the manner described in the Complete Specification of said Letters Patent ... The said steel contained approximately 1 per cent. of cobalt, 18 per cent. of tungsten, 2 per cent. of vanadium and 3.75 per cent. of chromium".  Younger J examined the body of the Patent Specification which included the sentence: "It is believed to be new, however, to employ cobalt in the manufacture of high speed tools having a comparatively low percentage of carbon and containing both of the metals tungsten and chromium with or without either or both of the metals vanadium and molybdenum".  His Lordship, regarding the patent as being for a prescription rather than a process, held that the patentee was entitled to have particulars of the percentage of carbon which is to be found, or which was in fact contained in the high speed tool steel alleged to have been an anticipation by the petitioners.  However, in respect of a request for the particular analysis of the cobalt employed by the Petitioners in their allegedly anticipating high speed tool steel, he said, at 338:

 

      "The answer to that, I think, is this, that the Patentees have not themselves defined the cobalt which is an ingredient in their high speed tool steel, and, notwithstanding the argument of Mr. Terrell, having regard to the observations made by the Master of the Rolls in the case of Minerals Separation Ld. v. Ore Concentration Company Ld., I am of opinion that, the Patentees not having condescended with regard to this ingredient upon any particularity in describing the way in which it is done, it would not be permissible for them to ask for greater particularity from those who are said to have anticipated that particular invention."

 

I agree with the submission of Counsel for RGC that the Patent Specification in that case governed the extent to which particulars had to be given of an objection of prior user.  Because a low percentage of carbon was an integer of the claim, the petitioner was required to specify the percentage of carbon involved in its prior user.  However, because a specific physical form or analysis of the cobalt used was not regarded as an integer of the claim, the petitioner was not required to specify those aspects of the use of cobalt in the alleged anticipation.

 

No particulars at all were given of an allegation of want of novelty in Hardaker v Boucher & Co Ltd (1934) 51 RPC 278 where Eve J made an order which practically followed the language of R.S.C. Order LIII.(A), r.16. Re Morgan Refractories Ltd's Patent [1968] RPC 374 was a decision of a Patent Office Hearing Officer on a question of Patent Office practice involving the application of Rule 97(1)(c) and an Official Ruling given in 1929.  It contains some general statements about the function of particulars of allegations of prior use including an acknowledgement that their extent must depend on the particular circumstances of a case.  It also reproduces this extract from the ruling of the Assistant Comptroller in O'Shei's Application [1958] RPC 72 at 74:

 

      "The requisite is that stated in Official ruling (1929) B, 46 R.P.C. Appendix iii, namely, that the issue between the parties should be clearly defined before the case is set down for hearing.  The process of filing written evidence can and should be used for securing this end, if the issue cannot be defined sufficiently in the statement.  This position may be contrasted with that in a court action, in which proof of the facts alleged in the pleadings awaits the trial."

 

That observation I consider could be paraphrased to apply to the present case were I required to exercise a discretion whether or not to order particulars.  That is so because, as I understand it, the trial is to be on affidavits after the filing of which WIM should be apprised fully of the case which RGC makes on its allegation of want of novelty.

 

Particulars of Inutility

The particulars given in paragraph 5 of RGC's Amended Particulars of Grounds of Invalidity indicate that inutility is said to occur at certain temperatures and other reduction conditions within the scope of each claim.  However, those temperatures and other conditions are not specified, even by reference to a range or other equally general description.  On behalf of RGC it is sought to justify this absence of particularity by pointing to the width of the claim.  For example, the invention the subject of the Petty Patent is defined by a claim which refers to reduction "at a temperature of at least 900^oC".  Accordingly, RGC contends that it is not incumbent on it to specify in its particulars all the combinations and permutations within such a wide claim which will not work.

 

In my view, this part of the argument reveals an ambiguity in the claim of inutility which is partly attributable to the width of the claim which WIM has made to define its invention.  By way of an extreme illustration of that width, Mr Lyons QC, who appeared with Mr Caine for RGC, suggested that an
attempted reduction at a temperature of 3000^oC, which would be within the claim, would not work because any conceivable vessel would melt at that temperature.  That illustration points up that its present form of particulars permits RGC to make out its case of inutility in either or both of two ways.  It could seek to demonstrate by expert evidence or cross-examination of WIM's own witnesses, theoretical considerations like that exemplified by Mr Lyons' extreme illustration, that WIM's claims are too wide to be useful.  As well, or alternatively, it could seek to make out a case of specific inutility by empirical evidence of one or more combinations of the temperatures and other reduction factors within the claim which fail to form a significant major rutile phase or metallic iron.

 

The requirement to furnish particulars of allegations of inutility is contained in O.58 r.15(3) of the Rules of this Court which provides:

 

      "If one of the grounds referred to in subrule 1(1) is:

 

      (a)   that the invention, so far as claimed in any claim of the complete specification of the patent, is not useful; and

 

      (b)   it is intended, in connection with that ground, to rely on the fact that an example of the invention which is the subject of any such claim cannot be made to work, either at all or as described in the specification;

 

      the particulars must identify each such claim and state that fact and must include particulars of each such example, specifying the respect in which it is alleged that it does not work as described."

 

In my view, the function of the particulars contemplated by that rule is to enable WIM to know the nature of the case which it has to meet as distinct from the evidence to be
adduced in support of that case.  If part of RGC's case involves a demonstration that one or more particular combinations of temperature and other reduction factors cannot be made to work, it should give particulars of those combinations.  Thus in Thermit Ltd v Weldite Ltd (1907) 24 RPC 441, the claims were in respect of a process for the reduction of metallic compounds containing oxygen, sulphur or chlorine or two or all of them by the reducing action of aluminium.  The ninth claim was for "The described method of producing metals and alloys from metallic compounds containing oxygen, sulphur, or chlorine alone, or two of or all; such method consisting in finely pulverising the compound, mixing it with finely pulverised metallic aluminium or aluminium and magnesium, heating a small portion of the mixture to start its reaction and afterwards adding the remaining or main portion, so as to heat it from the heat of reaction of the first portion, whereby the reaction automatically spreads through the whole mass, substantially as set forth".  By way of allegation of inutility, the defendants pleaded that the invention was claimed generally as operating with all oxides and that it was wholly useless with many oxides and the results could not be obtained.  Further particulars of that plea were ordered and, by way of compliance, certain oxides, sulphides and chlorides were specified.  Upon the defendants seeking to demonstrate inutility with certain oxides not mentioned in their further particulars, Warrington J held, during the trial, that the defendants were not allowed to put questions as to oxides not mentioned in their further
particulars.  In the course of discussion with Counsel, his Lordship drew a distinction similar to that which I have suggested.  He said, at 454:

 

      "Under a plea of non-utility it is not usual to require Particulars, because it applies to the whole invention, which is said not to be useful at all. When the plea of non-utility is based on the fact that the process described in the Specification will not work in certain particular ways, that is not utility at all;  that is attacking the Specification. You are seeking to extend paragraph 5 and make it run, `It is wholly useless with many sulphides and many oxides without the Further Particulars'."

 

In American Chain & Cable Co Inc v Hall's Barton Ropery Co Ltd (1938) 55 RPC 287, on which Counsel for RGC relied in this context, the plea of inutility of which Simonds J declined to order further particulars, was a general one, as Warrington J described it in Thermit v Weldite "attacking the specification".  It was in these terms:

 

      "3. The said alleged invention is not useful.   4. The Specification of the said Letters Patent is insufficient and misleading and does not sufficiently or fairly describe or ascertain the nature of the said alleged invention or the manner in which the same is to be performed in that no instructions or no sufficient instructions are given as to how the wire carriers are to be arranged so as to continuously rotate each wire about its own longitudinal axis preparatory to its introduction into the wire forming device as stated on page 3..."

 

The American Chain & Cable Case was followed by Jenkins J and by the Court of Appeal in Walton v Hawkins Ltd (1948) 65 RPC 69.  That case also involved a general plea that "the said invention is not useful" and further particulars were not ordered.  However, each of the judgments acknowledged the existence of a discretion to order particulars where, under the old rule and the old practice, they would not have been ordered.  For example, Cohen LJ observed, at 74:

 

      "I think that the Rule should be construed on broad lines and I should certainly not doubt that if a learned judge were in any particular case to come to the conclusion that expense would be saved or delay avoided if particulars were ordered of the matters referred to here, he would have jurisdiction to make such an order;  but the learned judge, in the particular case we are considering, came to the conclusion that there were no special circumstances, and I see no reason for differing from his view."

 

See also Presto Coat Collar Co v Levy Bros (1911) 28 RPC 362.

 

In Re Lever Bros and Unilever Ltd's Patent (1952) 69 RPC 131, Lloyd-Jacob J also acknowledged at 133, the distinction to which I have drawn attention between a general plea of inutility and "cases where under that plea the purported operation of the invention in relation to specified substances or under special conditions, has been alleged to result in a product which is useless...".  His Lordship went on to suggest that the existence of such cases was the explanation for the continued reluctance of Courts to lay it down as an ineluctable principle that particulars of a plea of inutility should never be ordered.

 

In the light of the authorities to which I have referred, I consider it an appropriate exercise of the discretion to defer WIM's motion for further particulars of the plea of inutility until after the filing and service of affidavits embodying the evidence on which RGC intends to rely at trial.  If, at that time, it becomes clear that RGC intends to adduce evidence to establish a case of what I have called "specific inutility" and the case is not sufficiently clearly indicated to enable WIM to meet it, the motion for particulars may, to that extent, be renewed.

 

Fraud and False Suggestion

It will be recalled that, by paragraph 15 of its Objections to the Standard Patent, RGC has asserted:

 

      "The said Patent was obtained on false suggestions or false representations or by fraud, false suggestion or misrepresentation."

 

By way of particulars of that allegation RGC referred to and repeated paragraphs (2) and (3) of the particulars appended to its paragraph 14 which asserted lack of entitlement to use the Patent.  Those paragraphs were as follows:

 

      "(2)  The said inventors did not make any invention or any alleged invention having the scope, limits or integers of any of the claims of the said patent.

 

      (3)   The Applicant was not an assignee of the said inventors in respect of the alleged invention defined in the claims of the said patent."

 

It was then asserted in a further paragraph of particulars to paragraph 15 that none of the matters in the paragraphs just quoted:

 

      "was disclosed to the Commissioner of Patents during the prosecution of the application for the said patent, and the Applicant by its conduct of the said prosecution expressly or impliedly falsely suggested or represented to the contrary."

 

It will further be recalled that, on 18 May 1995, RGC provided further particulars of, amongst others, paragraph 14 of its Amended Particulars of Grounds of Invalidity.  Those further particulars alleged that if the alleged inventors (Hollitt, Grey and O'Brien) made any invention, it was related to a process fundamentally different from that disclosed and claimed in the Standard Patent and not having the scope, limits or integers of any of the claims therein.  Sub-
paragraphs (ii) and (iii) of the same further particulars asserted that the invention (if any) was no wider than that claimed in the Specification of another Standard Patent Application No 74507/91 and did not extend to include five specified processes.

 

It has been contended on behalf of WIM that the particulars so far given do not satisfy the requirements of O.12 r.2 of the Rules of this Court as to a plea of fraud. That rule provides:

      "A party pleading shall give particulars of any fraud, misrepresentation, breach of trust, wilful default or undue influence on which he relies."

 

The concept of fraud which RGC invokes is that to which s.138(3)(d) of the Patents Act 1990 is directed.  That paragraph stipulates as a ground for revocation of a patent that it "was obtained by fraud, false suggestion or misrepresentation".  The connotation of "fraud" in that context has not been the subject of any judicial consideration, but RGC contends that it is to be equated with "equitable fraud" rather than the common law concept inherent in the tort of deceit;  see Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 per Gummow J at 216. It is unnecessary for me to reach a conclusion of what amounts to fraud in s.138(3)(d) because I consider it to be clear from the particulars already supplied that they define the ambit of the acts alleged to constitute fraud, false suggestion or misrepresentation and confine RGC to those acts alone. Whether the acts so indicated can be established and whether they amount to fraud in the requisite sense must await the trial. 
I am therefore not persuaded to order the particulars which WIM seeks under this head.

 

RGC's Motion for Interlocutory Relief against the Commissioner

This motion seeks an interlocutory injunction restraining the Commissioner from extending the term of WIM's Petty Patent in suit.  Although no relief has been sought against it, it seemed to me appropriate to allow WIM, because of its interest in the patent, to be heard on whether an injunction should go.

 

Section 64 of the Patents Act 1990 provides:

 

      "(1)  Subject to this section, where there are 2 or more applications for patents for identical, or substantially identical, inventions, the granting of a patent on one of those applications does not prevent the granting of a patent on any of the other applications.

 

      (2)   Where:

 

            (a)   a patent application claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and

 

            (b)   the relevant claim or claims in each of the complete specifications have the same priority date or dates;

 

      a patent cannot be granted on the application."

 

From the language of the section, it can be seen that sub-s.(2) is designed to provide an exception to the possibility that two patents might be granted in respect of the same invention.  That exception arises where an application for a patent is made in respect of an invention which is the same as that which is the subject of a registered patent and made by the same inventor, and where the relevant claim or claims in each of the complete specifications have the same priority date or dates.  The exception is apparently framed as a
statutory embodiment of the principle in Re Two Applications for Patents by Harry Dreyfus (1927) 44 RPC 291.

 

 

There has been considerable debate before me about the extent to which that principle and s.64(2) involve a prohibition on the grant of a second application in which the claims in the specification are "overlapping" as distinct from being completely identical.  Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1995] AIPC 91-121 seemed to favour a more stringent test for the invocation of s.64(2) when he said, at 39,141:

 

      "Section 64 is directed to the Commissioner who otherwise would be obliged by s. 61 (standard patents) and s. 62 (petty patents) to make a grant. As a general proposition, the concurrent existence of two or more applications does not prevent a grant on both of them where the applications are for identical or substantially identical inventions.  A somewhat different situation applies where the application before the Commissioner claims an invention the subject of a patent already granted.  A grant on the application is not to be made (i) if the invention claimed in the application is `the same as' the subject of the existing patent, and (ii) if there is the same inventor, and the same priority date of the relevant claim or claims.

 

      The phrase in sub-s. 64(2) `the same as' may be contrasted with that in sub-s. 64(1) `identical, or substantially identical'.  In my view, whilst the same common concept is conveyed by the notions of a claim for an invention that is the same as another invention, and patents for identical inventions, the notion of `substantial identity' falls outside that which is conveyed by the phrase `the same' in sub-s. 64(2).  Substantial identity will not be sufficient to render one invention the same as another."

 

At the conclusion of his discussion of s.64, Gummow J made, also at 39,141, the following observations which, in the light of his finding that the claims in the two patents were not the same, seems to have been obiter:

 

      "I should refer briefly to a further point.  I do not accept that the consequence of the Commissioner making a grant where he should not have done so by reason of s. 64 is to render the patent void.  Questions of avoidance are dealt with through the statutory mechanism of revocation.  Various grounds of revocation are provided in Chapter 12 of the 1990 Act, ss. 133-140.  Grounds of revocation for want of compliance with the requirements for grant contained in the Act are spelled out in s. 138. Non-compliance with s. 64 is not one of them."

 

In support of the grant of an interlocutory injunction, Mr Lyons argued that, if it were not granted, RGC would be forever denied the full force of the final relief which it seeks, which includes a writ of prohibition directed to the Commissioner and a permanent injunction restraining extension of the Petty Patent.  The corollary, at least if certiorari were not granted as ancillary to prohibition, would be, so the argument went, that RGC could still be liable for damages for infringement of the Petty Patent between the date of its grant and the final order against the Commissioner.  However, if RGC be correct in its contention that the inventions claimed in each of the Standard Patent and the Petty Patent are substantially the same or actually identical, it is highly likely to succeed in its defence to the action for infringement of each patent and in its claim for revocation of both of them.

 

It is true that it has not yet been authoritatively established that s.64(2) can be invoked to make out the ground of revocation afforded by s.138(3)(a) that "the patentee is not entitled to the patent".  Counsel for RGC have argued that, to sustain the grant of an interlocutory injunction, they have only to demonstrate a sufficiently arguable case that they will succeed in their claim for final relief.  In this context they point out that Olney J, in an unreported judgment in the present proceeding (28 April 1995) left open the availability of s. 64(2) as a ground of revocation. His
Honour observed, at p. 8, after referring to the dictum of Gummow J quoted above:

 

      "The respondent [RGC] acknowledges that these observations are entitled to great respect but nevertheless says that they were obiter to the issues being tried by Gummow J and in the absence of any binding authority, they should not be regarded as foreclosing the issue.  The question is one of statutory construction upon which competing views are open, and the respondent does not concede that a breach of s 64(2) is not a ground for revocation.  In a literal sense it may well be that if a patent is granted in contravention of s 64(2), the patentee is not entitled to the patent, and if that be so, it may give rise to a ground for revocation pursuant to s 138(3)(a).  As the matter has never been authoritatively determined it remains open to argument and the respondent seeks to raise such argument in this proceeding.  However, that debate has no real relevance to the Commissioner's application to be dismissed from the suit.  If, contrary to the Commissioner's submission, a breach of s 64(2) does raise a ground for revocation under s 138 then the relief available is that provided by that section.  Neither s 138 nor s 139 contemplates that any relief would be sought against the Commissioner.  But if, on the other hand, (as the Commissioner would have it) the remedy provided by s 138 is not available to an aggrieved party upon the granting of an application in contravention of s 64(2), that party is left to seek whatever other remedies are available, which is what the respondent seeks to do by relying upon the jurisdiction conferred upon this Court by s 39B of the Judiciary Act."

 

However, I consider that the prospects of a successful attack by RGC on the Petty Patent, rather than the route by which that success may finally be achieved, is what should weigh in the exercise of the discretion whether or not to grant an interlocutory injunction.

 

On the balance of convenience, Counsel for RGC urged that WIM would be unaffected by an injunction restraining the extension of the Petty Patent because, the claims in the specification to that patent being the same as those in the Standard Patent, WIM will have undiminished protection by means of the Standard Patent until determination of the action.  That argument largely begs the question which underlies the debate about the application of s.64(2) to the facts of the present case.

 

I accept that there is no evidence of any infringement or threatened infringement of the Petty Patent by third parties.  However, the possibility remains of presumptively infringing conduct which could be engaged in with impunity if the Petty Patent were not extended.  Mr Lyons sought to discount that possibility by pointing to the Standard Patent but that argument similarly begs the question which I have just identified of whether the same invention is covered by the two patents.

 

Dr Emmerson QC, who appeared with Mr Catterns QC and Mr J.B. Beach for WIM, referred to Reg. 6.6 of the Patents Regulations as confining the grounds on which the Commissioner is bound to act in granting or refusing to grant an extension of the term of a Petty Patent.  He also indicated that RGC had not given any notice under s. 28(3) of the Act which is said to be essential to enliven the Commissioner's discretion to refuse an extension and to establish a right of appeal under s. 67 against a decision to grant an extension.  However, as I understand RGC's application, the interlocutory injunction which it seeks is not to restrain the Commissioner from an improper grant of an extension.  Rather, it is to preserve for RGC the benefits of an attack, if successful, on the initial grant of the Petty Patent in contravention of s. 64(2).

 

It can be seen from my discussion of the competing contentions on the balance of convenience that they have been advanced at an unusual level of abstraction.  Doing the best I can at that
level, I have concluded that the balance of convenience is against the grant of an interlocutory injunction restraining the Commissioner from extending the Petty Patent.  I consider, in all the circumstances, that the benefit to WIM from allowing the Commissioner to proceed to consider the extension is slightly less intangible than that which RGC will derive if the injunction is granted.  I also entertain considerable doubt whether any undertaking as to damages which would be extracted from RGC as a condition of the grant of interlocutory relief would assure WIM of an adequate remedy in the event that the injunction were ultimately dissolved.  For these reasons, RGC's motion is refused.

 

Conclusion

For the reasons given above, WIM's motion for further particulars of the grounds of objection going to lack of novelty and fraud or false suggestion will be refused.  There will be leave to WIM, if so advised, to renew that part of its motion which seeks further particulars of the alleged grounds of invalidity going to inutility after the filing and service of RGC's affidavits embodying the evidence to be relied on at trial.  Since RGC has substantially succeeded in resisting WIM's motion, I consider that RGC's costs of and incidental to that motion should be its costs in the cause. RGC's motion for an interlocutory injunction will be refused and, by similar exercise of discretion, partly influenced by the fact that the interlocutory relief was sought not against it but against the
Commissioner, WIM's costs of and incidental to that motion should be its costs in the cause.

 

 

 

 

              I certify that this and the preceding thirty-nine (39) pages are a true copy of the Reasons for Judgment of his Honour Justice Ryan.

 

 

              Associate:

 

              Date:

 

 

 

 

 

Counsel for Applicant and       :      Dr J. McL. Emmerson QC

First Cross-Respondent          Mr D.K. Catterns QC and

                                Mr J.B. Beach

 

Solicitors for Applicant and:  Arthur Robinson & Hedderwicks

First Cross-Respondent

 

 

 

Counsel for Respondent and   :  Mr J.F. Lyons QC and

Cross-Claimant                  Mr B.N. Caine

 

Solicitors for Respondent and   :      Allen Allen & Hemsley

Cross-Claimant

 

 

 

Counsel for Second           :  Mr A. Santospirito

Cross-Respondent

 

Solicitors for Second        :  Australian Government Solicitor

Cross-Respondent

 

 

 

Date of Hearing              :         20 and 21 July 1995

 

Date of Judgment             :  6 March 1996