FEDERAL COURT OF AUSTRALIA

ICI Chemicals & Polymers Ltd v Lubrizol Corp [1999] FCA 1417

PATENTS – application for order directing amendment – where amendments designed to cure non-compliance with s 40 Patents Act 1990 – whether proposed amendments allowable under s102 Patents Act 1990 – whether amendments claim matter not in substance disclosed in specification as filed – operation of s114 Patents Act 1990 – whether court should, as a matter of discretion, allow amendment – relevance of similar amendments made to patent by patentee in jurisdictions outside Australia – whether unreasonable delay in seeking order for amendment

WORDS & PHRASES – “matter not in substance disclosed”

Patents Act 1990 (Cth), s105, s102, s114

Patents Act 1952 (Cth), s78, s159A

RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353, cited

Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561, cited

Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No.3) (1997) AIPC 91-366, cited

Raleigh Cycle Co. Ltd v H. Miller & Co. Ltd (1948) 65 RPC 141, cited

Van der Lely NV v Bamfords Ltd [1964] RPC 54, cited

ICI CHEMICALS & POLYMERS LTD v THE LUBRIZOL CORP INC

NG190 OF 1997

EMMETT J

15 OCTOBER 1999

SYDNEY

THE COURT ORDERS THAT:

1.         The parties bring in short minutes of order directing amendment of Patent 638710 in the manner set out in the Notice of Intention to Amend filed on 7 June 1999.

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

REASONS FOR JUDGMENT

1                     The respondent, the Lubrizol Corporation (“Lubrizol”), is the registered proprietor of Australian Patent 638710 (“the Patent”).  ICI Chemicals & Polymers Ltd (“ICI”) brought proceedings under sections 128 and 138 of the Patents Act 1990 (“the 1990 Act”) seeking, inter alia, revocation of the Patent. The Patent, as registered, contains 27 claims.  Lubrizol abandoned Claims 1 and 4 to 9 but seeks to maintain the Remaining Claims. For reasons published on 31 March 1999 and 20 May 1999, I concluded that the application for revocation of the Patent should be dismissed in so far as it relied on any ground other than non-compliance with section 40 of the 1990 Act. 

2                     However, I concluded that the invention comprised in the Remaining Claims is not fairly based on the matter contained in the Specification and that, accordingly, there was a failure to comply with section 40 of the 1990 Act.  Lubrizol therefore moved under section 105 of the 1990 Act for an order directing amendment of the Specification relating to the Patent. The amendments that are the subject of the present application are shown in the Notice of Intention to Amend set out in Schedule 3.

3                     The proposed amendments are said by Lubrizol to serve three purposes as follows:

(a)        to delete Claims 1 and 4 to 9, which Lubrizol conceded before or at the trial are invalid for lack of novelty;

(b)        to make amendments to the Remaining Claims consequential upon deletion of Claims 1 and 4 to 9; in particular, to alter the numbering and overcoming the textual defect that arises from the original Claim 2 having been drafted so as to incorporate, by reference, material from Claim 1;

(c)        to remove from the body of the Specification statements that the liquid compositions of the invention may include HCFCs.

4                     I have now received further evidence and full submissions on behalf of Lubrizol and ICI on the question of amendment.  I shall deal below with each of the grounds relied on by Lubrizol in support of the proposed amendments together with the grounds relied on by ICI in opposition to the proposed amendments. Unless otherwise indicated, terms used in these reasons have the same meanings as are attributed to them in my earlier reasons.

THE STATUTORY FRAMEWORK

5                     Section 105 is the source of the Court’s power to direct amendment to the Patent.  Section 105 relevantly provides as follows:

“(1)     In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent, the patent request or the complete specification in the manner specified in the order.

……………………

(4)       A court is not to direct an amendment that is not allowable under section 102.”

6                     Section 102 provides as follows:

“(1)     An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2)       An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

(a)       a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)       the specification would not comply with subsection 40(2) or (3).

(3)       This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.”

7                     Section 40 relevantly provides as follows:

“(2)     A complete specification must:

(a)       describe the invention fully, including the best method known to the applicant of performing the invention; and

(b)       … end with a claim or claims defining the invention;

……………………

(3)       The claim or claims must be clear and succinct and fairly based on the matter described in the specification.”

8                     In addition, section 114 of the 1990 Act is relied on by ICI and provides as follows:

“(1)     Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.

(2)       Objection cannot be taken to a patent request or complete specification, and a patent is not invalid, on the ground that the invention, so far as claimed in a claim mentioned in subsection (1), does not involve an inventive step having regard to any publication or use of the invention after its disclosure in the complete specification as filed.”

The effect of regulation 3.14 is that, if section 114(1) applies to a claim, the priority date of that claim is the date of filing of the statement of the proposed amendments.  That date, in the present case, would be 7 June 1999. 

9                     In addition to the power to direct an amendment conferred on the Court by section 105, sections 104 and 106 also authorise amendment of a complete specification of a patent.  Sections 104 and 106 are relevantly in the following terms:

“104    (1)        ….. a patentee, may, subject to this Act, ..… ask the Commissioner for leave to amend the complete specification… for any purpose including either or both of the following:

(a)       removing a lawful ground of objection to the specification…;

(b)       correcting a clerical error or an obvious mistake.

(2)       Where a …. patentee asks for leave to amend a patent request or complete specification… the Commissioner must consider and deal with the request in accordance with the regulations.

(3)       Subject to the regulations, the Commissioner may allow an amendment subject to conditions.

…………………………

(5)       The Commissioner must not allow an amendment that is not allowable under section 102.

(6)       On the allowance of the amendment, the amendment is to be taken to have been made.

(7)       An appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment…

106      (1)        Where:

(a)        a patent has been granted; and

(b)        the Commissioner is satisfied… that the patent is invalid on grounds that could be removed by appropriate amendments of the specification;

the Commissioner may… direct the patentee to file… a statement of proposed amendments of the specification for the purpose of removing those grounds.

…………………

(4)        If the Commissioner is satisfied that the amendments set out in a statement… are allowable and would, if made, remove the grounds on which the patent is invalid, the Commissioner must allow the amendments.

(5)         On the allowance of an amendment, the amendment is taken to have been made.”

10                  Thus, there are three ways in which the complete specification in respect of a registered patent may be amended.  Under section 104, a patentee may ask the Commissioner for leave to amend a complete specification and the Commissioner must consider and deal with the request in accordance with the regulations.  Alternatively, the Court may, on the application of the patentee, direct the amendment of a complete specification.  In both cases, an amendment must not be made that is not allowable under section 102.  Both provisions contemplate amendment at the behest of the patentee. 

11                  Under section 106, on the other hand, the Commissioner is the moving party and may direct a patentee to take steps to amend a complete specification.  However, whereas an amendment pursuant to section 104 may be for any purpose and there is no limitation of purpose in section 105, the Commissioner may move under section 106 only if the Commissioner is satisfied that the patent is invalid on grounds that could be removed by appropriate amendments.  Nevertheless, under section 106(4), the Commissioner is required to allow the amendments only if satisfied that they are allowable.  That must be a reference to amendments allowable under section 102. 

ICI’S OPPOSITION

12                  The bases of ICI’s opposition to the amendment are twofold.  The first basis relates to the operation of sections 102 and 114.  It may be summarised as follows:

·        The proposed amendments are not allowable under section 102(1) of the 1990 Act because, under the amendment, Lubrizol would be claiming matter not in substance disclosed in the Specification as filed,  since the body of the Specification did not disclose that the refrigerant in the liquid composition must not contain any halogen other than fluorine.

·        The application for amendment should be refused because the amendment would be futile since, following amendment, all claims would be invalid as lacking novelty.  None of the claims, as amended, would be entitled to a priority date earlier than 7 June 1999, being the date of the present application.  All of the claims as amended, were, at that time, no longer novel, having been disclosed by my reasons of 31 March 1999.

13                  The second basis concerns the exercise of the discretion that arises in considering an application under section 105(1).  ICI contends that the application should be refused because of the following:

·        Lubrizol ought to have known well before 7 June 1999 that Claim 1 was not valid in the form in which it is presently expressed in the Specification.  Lubrizol had a number of opportunities to apply to the Court to amend the Patent and Specification prior to 7 June 1999, but failed to do so.

·        Lubrizol’s delay in seeking to amend the Patent and Specification, when it knew or ought to have known of the need for amendment, was unreasonable.

·        Lubrizol acted in bad faith and engaged in an abuse of process in so far as it has sought to obtain an unfair advantage from the Patent, by commencing and maintaining proceedings for infringement of Claim 1 and dependent claims, which it knew or ought to have known should be amended.

14                  I shall deal with each basis separately.

MATTER NOT IN SUBSTANCE DISCLOSED

Section 102

15                  Section 102(1) requires that one identify precisely what amendment is under consideration and would not be allowable in the terms of the section.  That requires identifying the difference between:

·        the specification as filed, on the one hand, and

·        the specification, as it would read if amended in the manner sought, on the other hand. 

It is then necessary to read the specification as a whole, as amended in the manner sought, to see whether, by reason of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.  Section 102(1) focuses on the amendment proposed.  The amendment will not be allowed if it has the result of pushing the claimed matter over the line defined by the expression “matter not in substance disclosed in the specification as filed” – RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353 per Carr and Goldberg JJ at 360.

16                  Section 102(1), as so understood, would not stand in the way of the amendments designed to delete Claims 1 and 4 to 9, which Lubrizol conceded are invalid.  The consequence of deleting Claim 1 is that Claim 2 would no longer, standing alone, make sense.  It incorporates, by reference, the language of Claim 1 and simply adds a qualification.  Under Claim 1, the refrigerant in the liquid composition, being an amount of at least one fluorine-containing hydrocarbon containing one or two carbon atoms, could include a chlorine atom.  So much is made clear by the body of the Specification.  The qualification introduced by Claim 2 is that fluorine is the only halogen in the fluorine-containing hydrocarbon in the refrigerant.

17                  Some debate centred around the drafting technique adopted for describing the proposed amendment to achieve that end.  That end could have been achieved by amending Claim 1 by inserting into the description of the refrigerant the words “wherein fluorine is the only halogen in the fluorine-containing hydrocarbon”.  However, the technique actually proposed involves complete deletion of Claim 1 and re-writing of Claim 2 so that it would be in the same terms as Claim 1 if so amended.  Following the deletion of Claims 4 to 9, it does not matter how one describes the process whereby the Patent is amended such that Claim 1 will be in the form that is identical to the existing Claim 1 plus the addition of the words that I have just quoted.  The amendment, however it is achieved, is a purely formal one.  It would not be prohibited by section 102.

18                  The real issue concerning the application of section 102 arises in relation to the third category of amendment sought to be made.  Those amendments are proposed to the body of the Specification and entail the removal of statements that the liquid composition of the invention might include HCFCs and the inclusion of statements that fluorine is the only halogen present in the refrigerant.  The question is whether, following the amendments proposed to pages 5, 6, 8, 9, 25 and 26 of the body of the Specification, the Specification, as so amended, “would claim matter not in substance disclosed” in the Specification as it presently stands.

19                  The specific purposes of the amendments within this category may be described as follows:

·        to limit the fluorine-containing hydrocarbon to one where fluorine is the only halogen present (pages 1, 5 and 8 of the Specification as proposed to be amended);

·        to remove general references to fluorine-containing hydrocarbons which contain other halogens such as chlorine (pages 6, 8 and 25 of the Specification as proposed to be amended);

·        to remove specific references to particular fluorine-containing hydrocarbons which contain other halogens such as chlorine (pages 8 and 9 of the Specification as proposed to be amended);

·        in light of the above, to remove otiose statements (page 26 of the Specification as proposed to be amended); and

·        to correct clear typographical errors (pages 27 and 28 of the Specification as proposed to be amended).

20                  The question is whether Claim 2, albeit incorporating, by reference, language from invalid Claim 1, disclosed in substance the matter now sought to be incorporated into the body of the Specification.  For the reasons I have previously given, the Specification, as it presently stands, does not make clear that an essential element of the invention, as delimited in the Remaining Claims, is that the refrigerant in the composition must not contain any halogen other than fluorine - [1999] FCA 662 paragraphs 46-47.  That is not stated in the Specification, which, as it stands, expressly says the contrary.

21                  Nevertheless, Claim 2 was a claim for a liquid composition comprising a refrigerant and a lubricant wherein fluorine is the only halogen in the fluorine-containing hydrocarbon which comprises the refrigerant.  Further, on page 8 of the original Specification, a preferred embodiment of the invention was stated to be one in which the hydrocarbon contains only carbon, hydrogen and fluorine.  In addition, on page 9, in a table, which admittedly includes HCFCs, R-134a is set out as a specific example of a fluorine-containing hydrocarbon useful in the liquid composition of the invention.  Lubrizol contends that, in those respects, the matter claimed in the Specification, as proposed to be amended, was in substance disclosed in the Specification as filed.  The statement that in one preferred embodiment “the hydrocarbon contains only carbon, hydrogen and fluorine” constitutes a disclosure of the fact that the invention can, at least in one embodiment, be a composition in which the refrigerant contains no chlorine.  Claim 2 is limited to a composition that satisfies that description.

22                  ICI contends, however, that Claim 2 added nothing to the disclosure in the body of the Specification.  It was said that the presence of Claim 2 in the Specification, as filed, does not add enough to the disclosure in the Specification “to overcome the Court’s holdings” in the reasons delivered on 31 March 1999 and 20 May 1999.  I concluded ([1999] FCA 662 paragraphs 44-47) that there was a real tension between the disclosure of the invention in the body of the Specification and the delineation of the invention in the Remaining Claims, including Claim 2.  ICI relies on that conclusion in support of its contention that the Specification, after amendment, would claim matter not in substance disclosed in the Specification as filed.

23                  My earlier observations, of course, were made in the context of section 40 of the 1990 Act.  ICI contends, in effect, however, that the question that arose in relation to section 40 is virtually the same as the question that now would arises under section 102 and that the test should be the same.

24                  The language of the two provisions is quite different.  That difference might be contrasted with the similarity between the language of sections 102(1) and 114(1) to which I shall advert below.  The question of whether the claims in a specification are fairly based on the matter described in the specification, for the purpose of section 40(3), is not the same as the question of whether a specification, as amended, would claim matter not in substance disclosed in the specification as filed, for the purpose of section 102(1).  I do not consider that the conclusion that I reached in relation to section 40(3) bears directly on the question that arises under section 102(1).

25                  A specification must refer to a single invention.  Under section 40(4), the claim or claims in a specification must relate to one invention only.  As I indicated previously ([1999] FCA 662 paragraph 27), it is common practice for a specification to contain a series of claims descending to more and more particularity in later claims in the hope that, if the earlier should be said to be too wide, the later would be valid and effective to catch some infringers.  It is no objection to any particular claim that it claims a monopoly for less than every feature described in the body of the relevant specification. 

26                  The revocation of a patent so far as it relates to a particular claim does not have the consequence that all claims in the patent are revoked.  Clearly, the Specification, as filed, claimed an invention that permitted certain HCFCs as the refrigerant element in the composition in addition to HFCs.  That is to say, it identified a synthetic lubricant that was acceptably miscible with certain HCFCs.  Lubrizol subsequently acknowledged that such an invention had been anticipated and, accordingly, it was not entitled to maintain the claims for such an invention.

27                  However, in accordance with the common practice that I have described, Lubrizol included the narrower claims in the Specification.  Claim 2 in substance discloses the essence of the invention, namely, the formulation of a lubricant that would be soluble in, or miscible with, relevant HFCs including R-134a and any other fluorine-containing hydrocarbon containing one or two carbon atoms wherein fluorine is the only halogen present. 

28                  While, for the reasons I have previously published, I do not consider that that invention was fairly based on the matter described in the body of the Specification, I consider that the amendment of the Specification to ensure that there is compliance with that requirement does not have the effect that the Specification would claim matter not in substance disclosed in the Specification as filed.  The Specification amended as proposed will claim a liquid composition comprising a major amount of at least one fluorine-containing hydrocarbon wherein fluorine is the only halogen present.  That matter was, in substance, disclosed in the Specification as filed.  Specifically, it was disclosed in Claim 2 and on pages 8 and 9 of the body of the Specification as described above (paragraph 21).

29                  I consider, therefore, that “the matter” disclosed by the Specification after incorporating the proposed amendments, was, in substance, disclosed in the Specification as it presently stands.  Accordingly, the prohibition in section 102 has no application to the proposed amendments.

Section 114

30                  If amendment were precluded by the operation of section 105(4), which prohibits an amendment that is not allowable under section 102, that would have been an end of the matter so far as the present application is concerned.  However, ICI contends that, even if section 102 does not render the amendments not allowable, section 114 will be applicable such that the priority date will be 7 June 1999.  In that event, the Remaining Claims will be invalid for want of novelty.  ICI contends that the question raised by section 114 is different from the question raised by section 102. 

31                  ICI placed reliance on the legislative history of section 114.  Sections 102 and 114 of the 1990 Act were foreshadowed by sections 78 and 159A of the 1952 Act.  In 1962, section 78 was amended and section 159A was inserted in the 1952 Act.  Relevant extracts from the speech on the Second Reading of the Bill for the Act to make those amendments, by the then Attorney-General, Sir Garfield Barwick, are set out below:

“The proposal which the Government makes in the present bill is new.  The interests affected by a patents system are numerous, and sometimes divergent… 

…the inventor, makes application for letters patent and may, in the first place, merely lodge a very broad description of his invention.  When he does this, he is said to lodge a provisional specification.  Having done this, he is free to use his invention publicly without it being said later that he has thereby made it public and thus destroyed its novelty.  Later he must lodge a complete specification,… 

Once the public are given access to the complete specification, a step that is commonly called publication of the complete specification, the inventor becomes entitled to have his monopoly respected.  Thus, when his letters patent ultimately issue, he can, as from the date of the letters patent, sue in the courts in respect of any breaches of his monopoly that have occurred since the public were given access to his complete specification.

…at times the great number of applications for letters patent, coupled with the lack of adequate numbers of trained staff, causes a period of many months to elapse…

It was realized in Australia, at the end of the war, that an inventor was disadvantaged by this delay in that he was unable to enforce his monopoly in respect of that period.

…………………………

This bill, which does a number of things to which I will refer, seeks to enact the solution I propose.  The solution in total is this.  An inventor may ask that his complete specification be opened to public inspection, although not accepted by the Commissioner of Patents, at any time after three months from the date on which he lodged his complete specification…  This will enable an inventor who has what I might call an ephemeral invention to obtain the benefit of it whilst its utility or attraction is still current…

…the solution of the problem as to when an application should be open to public inspection is the crux of this bill.  There are, however, three other important steps taken in the bill, each of which can be regarded as providing part of the solution of that main problem, because each of these steps has some direct bearing on it, but each of which has also an importance over and beyond the problem of publication of the complete specification.  The first of these three steps is to alter the law regarding the making of amendments to specifications; the second step is to extend the right given to an applicant to lodge a further application; the third step is to protect an applicant against a consequence of changes which he has made in the complete specification after its lodgment.

…………………………

The power of an applicant to request an amendment… is… made very wide, its only limitation before the application becomes open to public inspection really being that the applicant cannot make an amendment which goes beyond what he had originally disclosed in this complete specification.

…………………………

The last of the matters to which I referred is the complete removal,…  of any possibility, perhaps years after the grant of his letters patent, of the letters patent being held to be invalid, because of changes the applicant caused to be made in his documents, by way of amendment, whilst they were in the Patent Office.

…………………

Under this bill, the allowance by the Patent Office of an amendment will be final, subject to two qualifications… and there will be no risk to an inventor of his letters patent being invalidated because of the nature of amendments made to his complete specification during its course through the Patent Office.

The two qualifications that I have just mentioned are these:  The first is that, if the acceptance of the amendments by the commissioner was induced by fraud, the letters patent can be set aside.  The second is that, if it can be shown that an amendment which was allowed by the commissioner truly resulted in giving the inventor something for which he did not apply in the first place, the letters patent, if they are not otherwise bad, will not be invalidated, but the tribunal before which the matter is being tested will be able to treat the date when the new matter was disclosed as the priority date of the invention.”

32                  Section 78, as amended in 1962, provided as follows:

“78      (1)        An amendment …  is not allowable at any time, if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as lodged.

(2)        An amendment … is not allowable after the complete specification has become open to public inspection if, as a result of the amendment a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.

(3)        The last two preceding sub-sections do not apply in respect of an amendment for the purpose of correcting a clerical error or an obvious mistake.

(4)        An amendment …. is not allowable after the complete specification has become open to public inspection if, as a result of the amendment –

(a)         the specification would not comply with the requirements of section forty of this Act; or

(b)       the priority date of a claim as indicated would not be the priority date of that claim as determined by this Act.”

33                  Section 159A, as amended in 1962, relevantly provided as follows:

“159A(1)        Where-

(a)        an application and complete specification have been accepted; and

(b)        in an action or other proceeding before …. a court, the …. court finds that a claim of the specification claims matter (in this subsection referred to as “the new matter”) in substance disclosed in the specification as a result of amendment of the specification,

the …. court shall treat as the priority date of that claim the date on which a statement of proposed amendments was lodged… or a request seeking leave to make amendments was made…, as a result of the making of which amendments the complete specification disclosed the new matter.  (emphasis added)

            (2)        Where … a court is required to treat a certain date as the priority date of a claim, objection shall not be taken to the application, or the patent is not invalid, so far as the invention is claimed in that claim, on the ground that the invention as so claimed is obvious and does not involve an inventive step, having regard to any publication or use of an invention after the disclosure of the latter invention in the complete specification as lodged.”

34                  The language of sections 78 and 159A, coupled with the observations made by Sir Garfield, makes clear the intent of the scheme introduced in 1962, as adopted in the 1990 Act.  The relationship between sections 102 and 114 must be understood in that context.  Thus, under section 138(3) of the 1990 Act, the Court may revoke a patent, either wholly or so far as it relates to a claim, on one or more of the grounds therein specified, but on no other ground.  Accordingly, amendment does not give rise to a ground of revocation.  The effect of section 114, however, is that, where an amendment is allowed or directed, while the validity of the patent will not be affected, the priority date of a particular claim or particular claims may be affected.  The effect, if any, will depend upon whether matter was in substance disclosed by the amendment.

35                  The language found in section 114(1) is relevantly identical to the language found in section 102(1). That is to say, both provisions are concerned with the question of whether matter is in substance disclosed.  If as a result of an amendment, the specification would claim matter not in substance disclosed in the specification as filed, the amendment will not be allowable.  Thus, if an amendment is allowable, then, by definition, the specification, as amended, does not claim matter not in substance disclosed.  It must follow that such a specification as amended does not claim matter that was in substance disclosed as a result of amending the specification.  Amendment, even if contrary to section 104(5), or section 105(4), or the implicit limitation in section 106(4) will not invalidate the patent.  However, it will affect the priority date. 

36                  In the present case, section 114 has work to do only in relation to a complete specification amended contrary to the provisions of section 102.  If section 102 does not render an amendment not allowable, section 114 will have no relevance.  Accordingly, only one question arises in the present case.  By answering the question raised under section 102, the question that would otherwise arise under section 114 is itself answered.  It follows from the conclusion reached above that section 114 has no application in the present case.

DISCRETION

General Principles

37                  The onus of establishing that amendment should be allowed is upon the patentee.  However, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise that would lead the Court to refuse the amendment.  It is common ground that Lubrizol is not entitled, as of right, to the order sought under section 105(1) simply by reason of demonstrating that section 102 has no application.  Other discretionary matters may be taken into account in deciding whether to make an order directing amendment.  The Court has a discretion to refuse an amendment even though it is allowable under section 102.  The discretion is a wide one. 

38                  It is in the public interest that amendment is sought promptly.  Where a patentee delays for an unreasonable period before seeking amendment, the amendment will not be allowed unless the patentee shows reasonable grounds for such delay.  Further, a patentee who seeks to obtain an unfair advantage from a patent that he knows or should have known should be amended may not be allowed to amend.  It is the conduct of the patentee that must be considered in the exercise of the discretion to amend, not the merit of the invention – see Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 at 569 and Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No.3) (1997) AIPC 91-366 at 39,789.

39                  A question of principle arises as to whether the conduct of a patentee in relation to invalid claims should in any way impinge upon its entitlement in relation to valid claims or claims that, with amendment, would be valid claims.  It may be that persisting in a claim found to be invalid is enough to warrant refusal of relief, including leave to amend, in relation to such a claim.  Such persistence by a patentee in invalid claims may be a good ground for refusing leave to amend such invalid claims – see Raleigh Cycle Co. Ltd v H. Miller & Co. Ltd (1948) 65 RPC 141.  However, the position will be different where some claims are found to be valid.  There is no reason why the fact that a patentee has failed on some claims should be held to deprive it of his prima facie right to put a specification in order so as to be able to enjoy the fruits of victory in relation to other claims.  The position in such a case will be different from the position that would prevail where a patentee seeks to amend an invalid claim – Van der Lely NV v Bamfords Ltd [1964] RPC 54 at 78 per Willmer LJ.

Sequence of Events

40                  In order to address ICI’s contentions on the question of discretion, it is necessary to recount the conduct of Lubrizol from the time of first lodgment of its patent application in the United States.  US patent application No. 343,087 was filed by Lubrizol on 25 April 1989.  Claim 1 was as follows:

“A liquid composition comprising:

(A)       a major amount of at least one fluorine containing hydrocarbon containing 1 or 2 carbon atoms; and

(B)       a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups…”

41                  On 17 April 1989, Australian patent application No. 54480/90 was filed on behalf of Lubrizol.  That application led to the grant of the Patent.  On 17 April 1989, a European patent application was also filed on behalf of Lubrizol.  Claim 1 in each of the applications was in identical terms to US patent application No. 343,087.

42                  On 28 February 1991, Lubrizol received comments from the US Patent Examiner dated 25 February 1991.  Relevantly, Claims 1-6 were rejected under 35 USC §103.  Reference was made by the US Examiner to Japanese patent application 80-2033423.  On 28 May 1991, in response to those comments, Lubrizol submitted that the rejection of claims 1-6 was improper and should be withdrawn.  In the course of that submission, Lubrizol said the following:

“The Japanese patent abstract is directed to a neopentyl polyol ester which is useful as a lubricating oil in the presence of Freon.  However, this reference does not address in any manner the matter of lubricants for Freon substitutes, such as the refrigerant R-134a.  Since it is very well known… that the primary impediment to use of R-134a in place of Freon is the lack of a suitable miscible lubricant, it is not at all apparent how a person having ordinary skill in the art would be led to combine the particular teachings used for this rejection.”

43                  Further comments dated 15 August 1991 were received by Lubrizol from the US Patents Office.  Claim 1 was said to be rejected on two bases.  The first was 35 USC §102(b), which deals with novelty.  In addition, Claims 1-7 were rejected under 35 USC §103, which deals with obviousness.  The basis for rejecting Claim 1, on the ground of lack of novelty, was based on Japanese laid-open patent publication no. 55-155093.  The US examiner had relied upon the Japanese patent as disclosing a combination of R-12 with a relevant lubricant.  In its response, of 14 February 1992, Lubrizol pointed out that that basis was misconceived because R-12 does not fall within any of the Lubrizol claims:  R-12 is a CFC, whereas all of the Lubrizol claims related to HCFCs or HFCs.

44                  In relation to the rejection based on obviousness, the US examiner pointed out that neither of the references relied on for rejecting Claim 1 “teaches that the refrigerant may include a halocarbon wherein fluorine is the only halogen present”.  That observation was taken up in Lubrizol’s response.

45                  On 21 April 1992, a meeting took place between Mr James Cairns, and the US examiner.  Mr Cairns was a patent attorney in Lubrizol’s patent section.  The discussion concerned rejection of Claim 1 on the ground of obviousness on the basis of the Japanese patent application 55-155093.  That patent, however, was never regarded as relevant in Australia on the question of obviousness. 

46                  On 14 May 1992, further comments dated 11 May 1992 were received by Lubrizol from the US patent examiner.  Rejection of Claim 1 on the ground of obviousness was maintained.  However, rejection on the basis of novelty was no longer maintained.   Thus, the US examiner accepted Lurizol’s contention as to the relevance of Japanese patent 55-155093.

47                  On 1 October 1992, a further meeting took place with the US patent examiner.  On this occasion, Lubrizol was represented by Dr Jolley.  The substitution of R-134a for R-12, when used in combination with ester lubricants, was discussed.  On 12 November 1992, Lubrizol submitted a response to the examiner’s comments of 11 May 1992.  In the response, Lubrizol proposed amendment of Claim 1 by the addition of the words:

“further wherein fluorine is the only halogen in said fluorine-containing hydrocarbon.”

48                  The amendment was said to have been “offered to point out and distinctly claim that which [Lubrizol] regards as [its] invention”.  The response described the invention as being:

“Directed to a liquid composition which includes at least one fluorine-containing hydrocarbon in which fluorine is the only halogen, and an effective amount of at least one soluble organic lubricant.”

49                  The response went on to deal with the US examiner’s rejection on the ground of obviousness based on Japanese patent application 55-155093.  That application, as indicated above, had no relevance to the question of obviousness in Australia.  Once again, the Examiner acknowledged that the patents relied on for rejection did not teach “that the refrigerant may include a halocarbon wherein fluorine is the only halogen present”.  The balance of the submission was to the effect that the other patents relied on by the examiner did not teach that R-134a could be successfully substituted for R-12 with any and all lubricants.

50                  ICI contended that Lubrizol ought to have known, by 12 November 1992, when it submitted the amendment to the US Patent Office, to limit Claim 1 to HFCs, that Claim 1, in the form in which it appeared in the Australian application, was not valid.  However, it is by no means clear that the amendment to Claim 1 in the US application was made as a result of any rejection by the US examiner on the ground that there was an anticipation of the claim so far as it extends to HCFCs plus lubricant.  If the US examiner had persisted in the argument being advanced (that lubricants working with R-12 would also work with R-134a), the narrowing of Claim 1 to HFCs would not have been a direct answer. 

51                  Mr Cairns gave evidence before me by affidavit and orally, by video link.  He said that the purpose for restricting the refrigerant component in the US application to HFCs rather than an HFC and an HCFC was that it would be easier to convince the US Examiner to allow the claims that had previously been rejected.  Mr Cairns said that the amendment was not made as a result of any rejection by the examiner on the ground that there was anticipation of Claim 1 in so far as it extended to HCFCs.  By the time of the comments of 11 May 1992, the US examiner had withdrawn the rejection on the basis of lack of novelty that had been raised in the earlier comments of 15 August 1991.

52                  In the meantime, Lubrizol had received the Australian examiner’s first report, dated 20 November 1991.  That report stated that the invention defined in Claims 1, 10 and 18 was not novel when compared with Japanese patent application 61-181895.  That was said to disclose “an ester, which is used as a refrigerator oil, which falls within the scope of the formula 1 as defined in Claim 1.  It is common knowledge that refrigerator oils are used along with refrigerants which are mostly fluorine containing hydrocarbons”.  Lubrizol responded to its Australian patent attorneys, Callinan Lawrie, on 13 April 1993. 

53                  The response was incorporated almost verbatim in a letter from Callinan Lawrie to the Australian Patent Office on 14 April 1993.  The response stated that the Japanese patent “is directed exclusively to an oil intended to be used with freon”.  Freon was, mistakenly, thought to be a CFC.  In fact, the term “freon” included R-22, an HCFC.  However, that was not the knowledge that Lubrizol had at the time.  Thus, while Lubrizol had knowledge, at latest by April 1993 of Japanese patent application 61-181895, which in fact anticipated Claim 1 by referring to HCFCs, Lubrizol was not cognisant of that fact at that time.

54                  Lubrizol’s Australian patent application was accepted by the Australian Patent Office on 6 May 1993.  Callinan Lawrie reported acceptance to Lubrizol on 31 May 1993.  Acceptance was advertised in the Australian Official Journal of Patents on 8 July 1993. 

55                  On 12 October 1993, Mr Cairns, on behalf of Lubrizol, asked Callinan Lawrie for information concerning the status of the Australian application.  Mr Cairns said:

“This is a commercially important case which has an increased likelihood of drawing unfavourable attention from third parties, and we are therefore particularly interested in learning whether any action was taken against it during the opposition period.”

Callinan Lawrie responded that they were aware of no opposition.  On 27 October 1993, Callinan Lawrie informed Lubrizol that it appeared that the application would proceed to grant and on 1 November 1993, Australian Patent 638710 was sealed.

56                  In the meantime, on 13 May 1993, Vossius & Partner, Lubrizol’s patent attorneys in relation to the European application, forwarded the first communication from the European patent office dated 23 April 1993.  On 22 October 1993, Lubrizol wrote to Vossius & Partner saying, inter alia, as follows:

“…we would like to make several changes and additions to bring the European application claims more or less into conformity with the claims now pending in the US application.  Those claims have all been deemed allowable by the US Examiner…. It may also be useful for you to know that corresponding patents have been granted in Israel and Australia; the Australian patent has passed through the opposition period with, as far as we know, no action having been taken against it.

………………………

The remainder of our comments and supporting materials will be sent to you by courier early next week…  I regret that this is being done fairly close to the November 3, 1993 deadline for responding to the communication, but I have been torn between the desire to advance towards grant of our European patent on the one hand, and a reluctance to reveal the approach taken in prosecution of our US application to those undoubtedly monitoring the prosecution of our European case on the other.  I wish to stress that this is an exceptionally important case to us commercially, and we will appreciate your full efforts to assist in its successful presentation to the European Examiner.”

57                  Also on 22 October 1993, Lubrizol instructed Vossius & Partner to amend the European application by adding to Claim 1 the words:

“wherein fluorine is the only halogen in the fluorine-containing hydrocarbon.”

In the body of the letter, Lubrizol, through Mr Cairns, said:

“… the present invention is directed to use of ester lubricants with HFC-type refrigerants, and requires both that a carbon-hydrogen bond be present and that fluorine be the only halogen present in the refrigerant.  Therefore, the disclosure of [Japanese Patent 61-181895] does not detract from novelty of the present invention.”

58                  Thus, by 22 October 1993, Mr Cairns knew that Japanese patent application 61-181895 disclosed an HCFC with certain esters and that that disclosure could be overcome in relation to the European application by limiting Claim 1 to HFCs.  By that time, the Lubrizol application in Australia had been published as accepted and was proceeding to grant.  Mr Cairns acknowledged in cross examination that, by the time he had particulars of Japanese patent application 61-181895, he was aware that the response to the Australian examiner had been misleading by reason of the misunderstanding referred to above. 

59                  Mr Cairns could not say why Lubrizol did not inform the Australian Patent Office, or instruct Callinan Lawrie to inform the Australian Patent Office, of the error.  He was of the view that once the patent application had been accepted in May 1993, there was no legal imperative to do anything to reflect the Japanese patent unless and until Lubrizol decided to take some sort of affirmative action with its patent rights in Australia.  He said that it was his intention that there was a possibility that Lubrizol might amend in Australia in the way that it had been done in Europe and in the United States, but not until such time as Lubrizol intended to enforce its patent rights in Australia.

60                  However, Mr Cairns would not agree that by not doing anything in Australia, Lubrizol avoided alerting any competitor who may have been watching the Australian application for the fact that the claims had been narrowed elsewhere.  He said that anyone could have seen that from inspecting the European files.  Knowledge of the state of the European files was not regarded as private knowledge.

61                  Mr Cairns was aware in 1993 that in various countries there were procedures available to allow amendments of patents or specifications after they had been accepted.  He had no reason to doubt that there was such a procedure available in Australia.  If he had wanted to find out, he would have asked Callinan Lawrie. Mr Cairns did not ask Callinan Lawrie whether it was possible to amend the patent after acceptance but before sealing.

62                  I do not consider that an inference should be drawn that a conscious decision was made by Mr Cairns, or anyone else at Lubrizol, to refrain from informing the Australian Patent Office of the misleading response that had been made in April 1993.  Clearly, it would have been desirable for Lubrizol to correct the misleading impression that it had created, albeit inadvertently.  That could well have resulted in further action on the part of the Australian Patent Office, for example under section 107.  Alternatively, of course, Lubrizol could have sought leave to amend under section 104.  Nevertheless, I do not regard the failure of Lubrizol at that time to take any step as in any way reprehensible. 

63                  On 7 September 1994, Mr Cairns received an inter-office memorandum presenting him with “the current evidentiary basis we have for believing that ICI is infringing Lubrizol’s base ester patent in Australia”.  The memorandum relevantly provided as follows:

“Our Australian patent issued with claim 1 encompassing compositions wherein the refrigerant, compound (A), is a fluorine-containing hydrocarbon containing 1 or 2 carbon atoms.  In the U.S. and Europe we subsequently redefined the fluorine-containing hydrocarbon to the extent of “wherein fluorine is the only halogen.”  This responded to prior art showing use of hydroxyaryl esters with R-22, a hydrochlorofluorocarbon (chlorodifluoromethane).  Claim 2 of the Australian patent depends from claim 1 and further defines states [sic] that fluorine is the only halogen in refrigerant component (A).”

64                  ICI contends that when Lubrizol recognised that Claim 1 of the Patent was more widely cast than Claim 1 of the US priority document, as amended, and the European equivalent, steps ought to have been taken to amend the Patent along the lines of the amendments now proposed.  However, the acknowledgment, in the inter-office memorandum of 7 September 1994, of the greater width of the Australian written patent, did not take the matter any further than the position as it existed in October 1993 when Mr Cairns acquired constructive knowledge of the fact that the response to the Australian Patent Office had been misleading.

65                  In the second half of 1995, interference motions were filed in relation to the US patent application.  Declarations filed in support of those motions drew attention to the Williamitis Patent both alone and in conjunction with the Midgley Patent.  Lubrizol filed declarations in response to those motions indicating its awareness, at least at that stage, of the Williamitis and Midgley patents.  However, the knowledge it gained at that stage did not go beyond information already to hand so far as Lubrizol was concerned.  That is to say, by its action in relation to the amendment of the US patent application and the amendment of the European patent application, Lubrizol recognised the lack of novelty in so far as Claim 1 of the Patent was concerned.  There is no particular reason why the interference motions should have focused its intention to any greater extent on the form in which the Patent had been granted in Australia.

66                  Lubrizol had also lodged a patent application in Canada.  On 24 January 1996, Lubrizol wrote to Ridout & Maybee, its patent attorneys in Toronto.  In that letter, Lubrizol said, inter alia, as follows:

“Lubrizol is placing added emphasis on obtaining a patent for this application as soon as possible, with an eye to possible immediate enforcement.  My understanding is that we should accordingly undertake the following steps:

1.         Make any desired amendments to the claims, hopefully before the Examiner issues a first action;

2.         Provide a statement of prior art;

…

On the first item, we have gained substantial experience from a patent interference in the United States which I would like to use in preparing a replacement set of claims.”

67                  On 26 February 1996, Lubrizol wrote again to Ridout & Maybee attaching a list of prior art cited during prosecution of the US priority application.  On 29 February 1996, Lubrizol wrote again to Ridout & Maybee enclosing substitute Claims numbered 1 to 44.

68                  Subsequently, on 15 April 1996, a voluntary amendment was lodged with the Commissioner of Patents in Canada.  By that instrument, some of the amendments now sought to be made to the Patent were made to the Canadian patent.  Curiously enough, while Claim 1 was qualified by insertion of the words “further wherein fluorene is the only halogen in said fluorene-containing hydrocarbon”, the body of the specification remained unchanged in stating that “the fluorene containing hydrocarbons useful in the liquid compositions of the present invention may contain other halogens such as chlorine”.  In the body of the specification, the summary of the invention was amended to limit the refrigerant to an HFC but other references to HCFCs elsewhere in the body of the specification were not deleted.

69                  The limitation on the amendments made to the Canadian specification was not explained.  A possible inference is that, in the haste to have the Canadian application granted, references to chlorine and HCFCs in the body of the specification may have been overlooked.  The steps to amend the Canadian application, however, do not appear to me to take the matter any further.  They represent another manifestation of the awareness on the part of Lubrizol that, at least in some jurisdictions, and possibly all jurisdictions, Claim 1 could not be supported in its original form, insofar as it extended to HCFCs and was not limited to HFCs.

70                  On 6 March 1996, Mr Cairns wrote to Callinan Lawrie.  In his letter, Mr Cairns said, inter alia, the following:

“… there have been no developments to give us pause in proceeding with this matter.  The European patent was granted in June 1995 … .  In the United States, the concerted attempts by several other companies to undermine our position in the patent interference proceeding over the past year has only affirmed our belief in the validity of our position. …Because the Australian claims are broader than the present US (or European) claims, some may fall, but we are confident that a sufficient core will remain to more than address ICI’s commercial products.”

That letter was said to be written in response to a facsimile from Callinan Lawrie of “6 March 1995” that is not in evidence.  Mr Cairns’ letter shows a conscious awareness as at March 1996 of the width of the Australian claims compared with the US and European claims. 

71                  On 14 March 1997, ICI served on Lubrizol its application, statement of claim and particulars of invalidity in this proceeding, relating to the revocation of the Patent.  The particulars of invalidity referred expressly to the Williamitis and Midgley patents as a basis for lack of novelty.  The particulars of invalidity also asserted that the Specification did not comply with section 40 in that:

“The complete specification, including the examples of the liquid compositions of the invention claimed in it, does not support the width of the claims.”

That assertion, of course, is the reverse of the conclusion that I reached in my earlier reasons, that the body of the Specification was too wide for Claim 2.  In any event, the delivery of the particulars of invalidity, while they emphasise lack of novelty on the basis of the Williamitis Patent either alone or in combination with one or more of eleven other prior published patents, did not advance the state of Lubrizol’s knowledge in relation to those matters, since it was already aware of them.

72                  On 28 May 1997, Callinan Lawrie wrote to Norton Smith & Co, Lubrizol’s solicitors, in response to a request for an explanation of the differences between each piece of prior art cited by ICI and the scope of the Patent.  The letter, from Elizabeth Eadie of Callinan Lawrie, contained, inter alia, the following:

“In summary, I believe that claim 1 of the Lubrizol patent is prior published by the prior art; however none of the prior art discloses the combination of hydrofluorocarbons (HFCs) with the ester lubricants claimed in the Lubrizol patent, ie the subject matter of claim 2.”

The letter also listed the prior patents or patent applications that anticipated Claim 1 of the Patent. 

73                  On 3 June 1997, a discussion took place between Mr Martin O’Connor of Norton Smith & Co and Mr Frederick D. Hunter of Lubrizol concerning Ms Eadie’s letter.  In the course of that discussion, Mr Hunter said that it was an inventive step to regard the esters as capable of being used with HFCs, rather than CFCs or HCFCs.  He said that it was quite an inventive step to find that the esters did work with HFCs.  However, Mr Hunter also acknowledged the fact that Claim 1 would probably fall. 

74                  Mr Hunter also asked whether, if Claim 1 falls, that would mean that the whole of the Patent would be revoked.  Mr O’Connor explained that, as long as the claims were not dependent on each other, the Court could revoke just one of the claims but leave the other claims subsisting.  Mr O’Connor pointed out that Claim 1 stands alone and that, therefore, it could be revoked without the other claims being revoked.  Mr O’Connor subsequently confirmed with counsel the view that he had expressed to Mr Hunter.

75                  On 3 July 1997, Mr O’Connor wrote to Mr Hunter enclosing a draft statement of claim, particulars of infringement and application under section 120 of the 1990 Act, concerning the use by Woolworths, Austral, Woolworths Victoria and Lawrence of KLEA and Emkarate.  In the letter, Mr O’Connor also said as follows:

“In the particulars of infringement, the claims of the Patent which Lubrizol allege the respondents have infringed have not been specified.  In Elizabeth Eadie’s analysis of the prior art sighted [sic] by ICI in the revocation proceedings, Elizabeth concluded that claim 1 of the patent is prior published by the prior art.  If you agree with Elizabeth’s conclusion, it may be better to abandon this claim now and not allege in the proceedings that it has been infringed.”

76                  After discussing the matter with counsel, Mr O’Connor wrote again to Mr Hunter on 8 July 1997 saying, inter alia, as follows:

“Firstly, I assume Lubrizol agrees with Elizabeth Eadie’s conclusion that claim 1 of the Patent is prior published by the prior art cited by ICI in the revocation proceedings.  If Lubrizol does not agree with this conclusion or if Lubrizol considers it is at least arguable that claim 1 of the Patent is not prior published, Lubrizol should reserve its rights to argue the validity of claim 1 by alleging that claim 1 is infringed.

On the other hand, if it is clear that claim 1 will be revoked, there may be costs consequences if Lubrizol allege [sic] that claim 1 is infringed.  Also, if Lubrizol does not intend to allege that claim 1 is infringed in the infringement proceedings against Woolworths and other infringers, Lubrizol should also not resist ICI’s revocation proceedings in respect of this claim.

… if at the end of the hearing, the Court were to find that each other claim of the Patent, except for claim 1 is valid, and that Woolworths and other infringers have infringed the other claims, the costs of the proceedings will normally be awarded in Lubrizol’s favour.  If, however, ICI, Woolworths and the other infringers were to go to considerable expense in proving that claim 1 was invalid, even though Lubrizol was successful in the proceedings in respect of all other claims in the Patent, Lubrizol may nevertheless be ordered to pay ICI’s, Woolworths’ and the other infringers’ costs of establishing that claim 1 was invalid.

The cost consequences would appear to be the only downside in alleging an infringement of claim 1 of the patent.”

77                  Mr Hunter responded to Mr O’Connor’s letter on 10 July 1997 saying, inter alia:

“With respect to asserting claim 1, we do not wish to assert claim 1 against the defendants.  We agree with Elizabeth Eadie’s analysis.  In some other jurisdictions, including the US, the claims were limited to fluorene-containing hydrocarbons wherein fluorene is the only halogen present.  The scope of the Australian claims should have been made the same.”

78                  On 11 July 1997, Mr O’Connor discussed Mr Hunter’s letter of 10 July 1997 with counsel.  Counsel said that, with regard to the matters set out in Mr Hunter’s letter, perhaps Lubrizol should be considering amending Claim 1.  Counsel said that, if Lubrizol is intending to amend Claim 1, an allegation should still be made that Claim 1 is infringed.  Following that discussion, Mr O’Connor had a discussion with Ms Eadie in which he raised the question of amending Claim 1.  He also asked her for a list of the other claims that Lubrizol would be alleging are infringed.

79                  Ms Eadie then wrote to Lubrizol on 11 July 1997 with a view to determining which claims were actually infringed by the combination of KLEA and Emkarate.  The letter relevantly said:

“As you have previously agreed with [Mr O’Connor], claim 1 is not infringed by the combination of KLEA and Emkarate.”

That is not literally correct.  It was probably intended to say that there was no infringement because Claim 1 is invalid.  The letter also indicated that Claim 2 was infringed by the combination of KLEA and Emkarate.

80                  Lubrizol responded to Ms Eadie’s letter on 11 July 1997, relevantly saying:

“I certainly agree that claim 1 refers to chlorine containing refrigerants and we do not wish to assert it.  Your comments with regard to claims 2 and 3 are correct.  I have some concerns about all the claims which depend from claim 1 and which are not otherwise limited to refrigerants which have fluorene as the only halogen.”

81                  On 14 July 1997, Ms Eadie had a telephone discussion with Mr John B. Engelmann, who had taken Mr Cairns’ place at Lubrizol.  In the course of that discussion, it was agreed that Lubrizol would allege that Claims 1 to 10 had been infringed but that the claims would be amended in the revocation proceeding so that they would be valid.  Ms Eadie therefore gave instructions to Mr O’Connor to file a cross-claim in the revocation proceedings seeking to amend Claim 1.  She also gave instructions that, in the infringement proceedings, breach of all claims was to be alleged.

82                  Callinan Lawrie then wrote to Norton Smith & Co on 14 July 1997, giving instructions on behalf of Lubrizol to proceed to allege that, inter alia, Claims 1 to 7 are infringed.  The letter relevantly said:

“Therefore, please allege claims 1-10 are infringed and determine what procedures should be followed to amend those claims so that the subject matter of claim 2 is incorporated into claim 1.  I can provide you with a set of amended claims; please let me know when these will be required.”

83                  On 15 July 1997, Ms Eadie had a further discussion with Mr O’Connor in which it was agreed to file the infringement statement of claim but that amendment would not be mentioned at that stage.  It was thought that Woolworths and Austral would probably seek revocation.  Their discussion was to the effect that, if they did so, Lubrizol would then seek the amendment.  At a later conversation on the same day, Mr O’Connor told Ms Eadie that he would like the amended claims as soon as possible.

84                  The application, statement of claim and particulars of infringement in the infringement proceedings were filed in this Court on Lubrizol’s behalf on 15 July 1997.  Norton Smith & Co reported to Lubrizol in a letter of that day in which they said, inter alia, the following:

“As a result of correspondence between Elizabeth Eadie of Callinan Lawrie and John Engelmann, which has been copied to me, we have claimed an infringement of claim 1 of Patent on the basis that, although claim 1, in its current form, is invalid Lubrizol intend to make an application to the Court to amend claim 1.

…

The application to amend can be made as part of Lubrizol’s infringement proceedings or as part of ICI’s revocation proceedings.  I assume what will happen in the infringement proceedings is that Woolworths and the other infringers will put on a defence and also a cross-claim seeking revocation of the patent.  In a reply to the defence or in the defence to the cross-claim, Lubrizol can seek the amendment of claim 1.  The other alternative would be to seek an amendment of claim 1 in the revocation proceedings.  This would be done by filing a cross-claim in those proceedings.

My recommendation is to seek to amend claim 1 when Lubrizol files its defence to Woolworths and the other infringers’ cross-claim in the infringement proceedings.  In the event that Woolworths or the other infringers do not file a cross-claim seeking revocation of the Patent in infringement proceedings, then Lubrizol should seek the amendment in its reply to the defence.

I have asked Elizabeth Eadie to draft a set of amended claims and to seek your approval in relation to those so there will be no delay when the appropriate time comes to seek the amendment.”

85                  Thus, at this stage, it is clear that, on the face of it, Lubrizol was alleging infringement of Claim 1 in the wide form in which it appears in the Specification as filed.  On the other hand, it is also clear that Lubrizol was not intending to rely on Claim 1 in its wider form but was intending to amend Claim 1 by incorporation into it of the qualification contained in Claim 2.  In other words, it is clear enough that Lubrizol intended only to enforce Claim 2 in the proceedings that it commenced on 15 July 1997.

86                  On 21 July 1997, Callinan Lawrie wrote to Lubrizol attaching a draft set of amended claims which restrict Claim 1 so that the refrigerant is limited to refrigerants “wherein fluorene is the only halogen present”.  All that Ms Eadie did in drafting the amended claims was to incorporate the subject matter of Claim 2 into Claim 1 and then renumber the remainder of the claims and their dependencies.  Thus, Claim 2 was omitted.  However Claims 4 to 9, after renumbering, were retained in the draft .  The net result was 26 claims in lieu of 27 claims.

87                  Ms Eadie also said in her letter that she would speak to Mr O’Connor about:

“… whether it is appropriate to also amend the statement of invention or other details in the description to conform to the amended claims.”

Thus Ms Eadie foreshadowed the question that is presently before me.  However, notwithstanding her comment, she did not raise that matter with Mr O’Connor at that stage.  Nevertheless, the letter is an indication that Lubrizol and its advisers were intending to proceed with an amendment the effect of which would be to eliminate Claim 1 in its broad form.  The state of affairs following the letter of 21 July 1997, enclosing draft amended claims, was consistent with Lubrizol’s intention to raise the amendment in a subsequent pleading in either the infringement proceedings or the revocation proceedings, both of which were then on foot.

88                  On 15 August 1997, the respondents to the infringement proceedings filed a defence and cross-claim seeking to revoke the Patent.  The particulars of invalidity mirrored the particulars furnished by ICI in the revocation proceedings.  On 19 August 1997, Norton Smith & Co forwarded a copy of the defence and cross-claim to Lubrizol.  In his covering letter, Mr O’Connor said that he would discuss with counsel the question of whether a recent decision of the Federal Court, Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd given by Sundberg J on 30 July 1997, changed his opinion that Lubrizol should be seeking to amend Claim 1 of the Patent in the infringement proceedings. 

89                  On 22 August 1997, counsel advised Norton Smith & Co relevantly in the following terms:

“On balance, it is my view that the application for amendment, if to be made at all, should be made in the present proceedings.  Further, if it is the considered position of Lubrizol that claim 1 cannot be defended, then any claim for infringement based on claim 1 ought not to be persisted in.

If however Lubrizol is satisfied with the protection obtained through claims 2 and following, assuming they are upheld, and if it does not wish any question of waiver of privilege even to arise with any consequent detriment that may have to the defence of claims 2 and following, then it may simply chose to abandon claim 1 and not seek any amendment.”

90                  Mr O’Connor was concerned that the effect of the decision of Sundberg J was that, if a patentee wants the Court to exercise its discretion and grant an amendment to a claim in a patent, the patentee may have to produce all communications between it and its patent attorney and possibly it and its solicitors, even though such communications may be privileged.  Mr O’Connor thought that it would be undesirable to do so in the infringement proceeding as it would mean having to disclose all of Lubrizol’s tactics in the proceeding.  He considered that the consequence of having to do so outweighed the benefit of having Claim 1 amended at that stage.

91                  On 27 August 1997, Mr O’Connor wrote again to Mr Hunter referring to counsel’s opinion and referring to Ms Eadie’s advice that Claims 4 to 9 are dependent on Claim 1.  The letter then said:

“Therefore, in considering whether Lubrizol is satisfied with the protection obtained other than by claim 1, it should be kept in mind that if an infringement based on claim 1 is not to be pursued, neither should any infringement under claims 4-9.”

92                  On 8 September 1997, Ms Eadie confirmed to Mr O’Connor that if Lubrizol does not amend Claim 1, it could not rely on Claims 4 to 9.  She queried how important Claim 1 was.

93                  On 10 September 1997, Ms Eadie wrote to Lubrizol relevantly saying:

“Given that the Court has now held that a patentee may have to produce all communication (including communications in corresponding overseas applications) between it and its patent attorney and possibly it and its solicitors, we believe the disadvantages of this outweigh any advantages in proposing amendments.  The Court would want to know why the claims of the Australian patent are broader than those of corresponding overseas patents.  Rather than be put on the defensive we believe that it is better to stay on the attack and to proceed with the claims as they stand.

The consequences of proceeding with the current claims is that since the validity of claim 1 is doubtful we will have to rely on subsidiary claims 2 and 3 which are restricted to HCFCs [sic, scilicet HFCs].  It also means that claims 4 to 9 are of no practical use to us as they are dependent on claim 1 and are not restricted to HCFCs [sic, scilicet HFCs].

We will still, of course, be able to rely on independent claims 10 and 18 which are arguably both valid and infringed … I believe we should drop any allegations that claims 1 and 4 to 9 are infringed and rely instead on claims 2, 3, 10, 18 and their dependent claims.”

94                  On 18 and 24 September 1997, Norton Smith & Co sought instructions from Lubrizol on the question of whether to amend Claim 1.  Instructions were finally received from Lubrizol by letter of 24 September 1997 in which Mr Engelmann said, inter alia, as follows:

“Lubrizol does not wish to open all its attorney prosecution files, etc during the litigation in Australia.  It is our current understanding that we would have to open up our files if we sought to amend claim 1 at this time.  Our preference would be to amend claim 1 if it is possible to do so without opening up our files.  However, if you are certain that an attempt to amend claim 1 would result in such extensive discovery of Lubrizol files, then we do not wish to amend claim 1.

If we do not amend claim 1, then obviously we do not wish to proceed and charge infringement of claim 1.  Our concern is that even if we do not allege infringement under claim 1, claim 1 could well be held invalid during the revocation proceedings.  This could have nasty repercussions in other jurisdictions.  Accordingly, we would like to limit, to the extent feasible, any damage due to the fallout from the Australian revocation proceedings.”

95                  Thus, a tactical decision was made by Lubrizol to defer, for the time being, any application to amend Claim 1.  However, it is clear that there was no intention to persist in any allegation of infringement of Claim 1 in its broader form.  The tactical decision was made in order to avoid disclosure of privileged material.  That appears to me to be a legitimate justification for the conduct of Lubrizol at that stage.

96                  Counsel, in his advice on 22 August 1997, confirmed that he had advised that, once a patentee was aware of a potential problem with a claim, it ought to move swiftly to seek an amendment from the Court.  Counsel considered that that advice was borne out by the authorities cited by Sundberg J.

97                  On 25 September 1997, Mr O’Connor discussed the terms of Lubrizol’s letter of 24 September 1997 with Ms Eadie.  He said that, although he could not be certain that if Lubrizol sought to amend Claim 1 it would result in the extensive discovery of Lubrizol’s files, and the opening up of its attorney prosecution files, he thought that it was more than likely that that would happen.  His recommendation, therefore, was that Lubrizol should not seek to amend Claim 1 of the Patent at that stage. 

98                  Ms Eadie said that she also feared that if Lubrizol now sought to amend Claim 1, ICI would be likely to argue that the specification was not framed in good faith and that if that argument were to succeed, that would be more detrimental than a finding that Claim 1 was invalid.  Mr O’Connor said that, on the basis that Lubrizol does not need Claim 1 to be successful in the present case, his recommendation was that, prior to the hearing, Lubrizol consent to an order that Claim 1 is invalid.  He said that his understanding was that, at least in the major jurisdictions of Europe and the US, the Patent does not have the equivalent of Claim 1 in the Australian patent.  Ms Eadie said that she thought that was correct.

99                  On the same day, 25 September 1997, Lubrizol’s defence to the cross-claim in the infringement proceedings was filed.  No claim to an amendment was made.

100               On 17 October 1997, Norton Smith & Co responded to Lubrizol’s letter of 24 September 1997 and enclosed a copy of the defence to the cross-claim in the infringement proceedings.  The letter went on to say, relevantly, as follows:

“As I believed that an application to amend claim 1 of the Patent would result in Lubrizol having to produce communications between it and its patent attorneys and possibly it and its solicitors, as instructed, I did not file a claim on behalf of Lubrizol seeking to amend claim 1 of the patent.”

101               On 8 May 1998, Callinan Lawrie wrote to Lubrizol in response to a facsimile that is not in evidence.  The letter said relevantly, as follows:

“You may recall that there was discussion … deleting claim 1 as we consider that claim 1 will be held to be invalid by reason of lack of novelty.  The reason that no amendment was made was due to paragraph 115(1)(a) which meant that to claim damages we would need to satisfy the Court that the specification without the amendment was framed in good faith and with reasonable skill and knowledge.  This may have been more difficult to show since the claims have been restricted in other jurisdictions.”

A copy of that letter was sent to Norton Smith & Co on the same day.  In the covering letter, Callinan Lawrie drew attention to section 218 of the 1990 Act and indicated that they may require Norton Smith & Co to give further consideration to the costs question, since it was the opinion of Callinan Lawrie that Claim 1 “is likely to be held to be invalid by reason of lack of novelty”.

102               Section 115 of the 1990 Act provides that where a complete specification is amended after becoming open to public inspection, damages are not to be awarded, and an order is not to be for an account of profits, in respect of any infringement of the patent before the date of the amendment unless the Court is satisfied that the specification, without the amendment, was framed in good faith and with reasonable skill and knowledge.  Section 218 of the 1990 Act provides, in effect, that the Court may, if it is satisfied that some of the claims in a complete specification which are alleged to be invalid are not invalid but that other claims are invalid, apportion the costs between the parties as it thinks just.  Concern as to the effect of sections 115 and 218 were legitimate on the part of Lubrizol at that stage.  I do not consider that the correspondence from Callinan Lawrie gives rise to any suggestion of bad faith – rather a concern to avoid any allegation of bad faith.

103               On 4 August 1998, an affidavit of Mr Harrington sworn 3 August 1998 was filed on behalf of Lubrizol.  In that affidavit, Mr Harrington, amongst other things, gave his opinion as to what claims in the Patent had been infringed by a composition comprising KLEA and EMKARATE.  The affidavit included Mr Harrington’s opinion that Claim 1 had been infringed and the reasons for that opinion were set out.  Mr Harrington also expressed the opinion that Claims 4, 5, 6 and 9 were also infringed for the reasons that he then gave.

104               Subsequently, the affidavit of Professor Rae of 6 August 1998 was filed on behalf of ICI.  The affidavits of Dr Corr and Dr Fraser were also served.  Specifically, Professor Rae commented extensively on the question of validity of the Patent in the light of the disclosures made in Japanese patent application 61-181895 and the Williamitis Patent.

105               It was clear to Mr O’Connor, on reading Professor Rae’s affidavit, that ICI was asserting that Claim 1 had been anticipated.  He was conscious of the fact that it was necessary for Lubrizol to come to a final position in respect of Claim 1 and that if Claim 1 and its dependent claims were to be abandoned, that fact would have to be notified to ICI’s solicitors well before the commencement of the hearing in order to avoid any cost consequences.

106               On 1 October 1998, Mr O’Connor met with Professor Solomon.  Professor Solomon expressed his opinion that Claim 1, insofar as it sought to claim a monopoly over a liquid composition of HCFCs and the lubricants in the Patent, had been anticipated.  Professor Solomon was informed by Mr O’Connor that he would be briefed to prepare a response to Professor Rae but that, in preparing his response, he should assume that Claim 1 of the Patent was limited to HFCs.

107               On 2 October 1998, there was a discussion between Ms Eadie and Mr O’Connor in which Mr O’Connor spoke about there being no need to amend and about consenting to revocation of Claim 1.  On 9 October 1998, a further discussion took place concerning invalidity of Claim 1 because it covered HCFCs.  It was noted that Claim 1 was still infringed and that Claim 2 was “OK”.  Claims 4 to 9 were considered to be of no use because they covered HCFCs.  Claim 1 was “no good” because it covered R-22, which had been disclosed in the prior art.  The observation was made that the “new amended particulars” covered all claims but Mr O’Connor did not see why the Patent Office would not allow Claim 2 and following because only Claim 1 was “bad”. 

108               While in Washington between 14 and 19 October 1998, Mr O’Connor was instructed by Lubrizol to inform ICI that, at the hearing, Lubrizol would not be submitting that Claim 1 of the Patent was valid.  He did not seek formal instructions to abandon Claims 4 to 9 as he considered that there may have been an issue as to whether those claims could survive because of some additional feature in them that Claim 1 did not have.

109               On 23 October 1998, Norton Smith & Co wrote to ICI’s solicitors, Blake Dawson Waldron, relevantly saying:

“Our client has decided that it will not submit to the Court that claim 1 is valid in the form which it is expressed.

However, our client maintains its position that claim 2 which contained a further limitation upon claim 1 is valid.  Our client also maintains that claims 3 and following also contain further limitations beyond claim 1 which assures their validity.

There is then a question of the manner in which claim 1 should be dealt with.  Two options present themselves:

1.         The Court would revoke claim 1 by consent but would expressly note in the order that the wording contained in claim 1 remains in the Patent for the purpose of material which is referred to in claims 2 and following in order to give sense to those claims.

2.         The Court will revoke claim 1 and allow an amendment to claims 2 and following so as to expressly build into those claims the full language which is currently picked up by reference from claim 1.

We would consider that the first of these alternatives would be adequate.  If you wish to provide any comment upon this matter, please do so.  Otherwise, we will leave the matter to be dealt with at the hearing …”

110               That letter prompted a response from Blake Dawson Waldron of 4 November 1998 relevantly saying as follows:

“We note that your client has decided that it will not submit to the Court that claim 1 of the patent in suit is valid in the form in which it is expressed.

…

The manner in which your client seeks to amend the patent in suit is a matter for your client.  On any view, the need for amendment should have been apparent to your client by no later than 12 November 1992 being the date on which your client sought amendment of its corresponding US patent.

…

As you will be aware, your client has a duty to disclose all relevant material in any application to amend the patent in suit.  Accordingly, your client must discover all documents relevant to its decision that claim 1 of the patent in suit is invalid, including (at least to some extent) documents that would otherwise be privileged.”

The letter went on to refer to the decision of Sundberg J mentioned above and asked when the precise form of the amendments would be forthcoming.  The precise form was not in fact furnished until April 1999.

111               The question of amendment was taken up by Callinan Lawrie’s letter to Norton Smith & Co of 25 November 1998.  The relevant parts of the letter were as follows:

“On 10 July 1997 we received a letter from Fred Hunter … stating that he agreed … that in some other jurisdictions, including the US, the claims were limited to fluorene-containing hydrocarbons wherein the fluorene is the only halogen present.  The scope of the Australian claims should have been made the same.  I did a further review of the subsidiary claims on 11 July 1997 and as pointed out by John Engelmann … he had concerns about the claims which depend from claim 1 and which are not otherwise limited to refrigerants which have fluorene as the only halogen, ie claims other than claims 2 and 3.

…

As we would prefer not to have to amend the specification for reasons which I will discuss below, we also need to know whether any of claims 4 to 9 are of sufficient importance that it is worth amending the specification to retain these claims (by making them dependent on claim 2) if it is decided that they do not contain novelty conferring features.

…

The reasons why it would be undesirable to apply amend [sic] the specification include the fact that we would have to show that the specification before amendment was framed in good faith and we would have to provide discovery to that effect.  Given that the claims have been amended in foreign jurisdictions, this may be a little difficult to show. Discovery is likely to be onerous and has the potential to delay proceedings.  In addition, there is the chance that the Court will refer the amendments back to the Australian Patent Office for examination, acceptance and advertisement which would delay the proceedings for six months to one year.  It is our view that the preferable course would be to concede that claim 1 is invalid and rely on claim 2.  The only problem with doing this is that as claims 4 to 9 are dependent on claim 1 they may also be in danger of being held to be invalid unless there is a novelty-conferring feature in those claims.  We require instructions as to the importance of claims 4 to9 and whether there is anything in any one of these claims which is vital to Lubrizol.”

112               On 1 December 1998, Norton Smith & Co wrote to Lubrizol seeking instructions as to whether Lubrizol wished to maintain the course it had adopted up to now of not seeking an amendment to Claim 1.  On 2 December 1998, Lubrizol indicated by e-mail to Mr O’Connor that Lubrizol was strongly leaning towards Mr O’Connor’s and Ms Eadie’s recommendation to concede the invalidity of Claim 1 and not amend.  Mr O’Connor responded by e-mail, saying that if Claim 1 is conceded, the issue does not totally go away but “a considerable amount of the heat is taken out of the issue”.

113               Senior counsel for ICI conceded, in the course of argument before me, that a disinclination to discover privileged material in the context of the trial on infringement and revocation was entirely proper.  He said that ICI would accept that that was a proper forensic approach and that no criticism was levelled out of the conduct of the trial on infringement and revocation.  However, he contended that delay, in order to gain perceived forensic or commercial advantages in relation to the application to amend, was not proper.  He conceded that the potential of a need for discovery on the question of amendment to delay proceedings, while not necessarily legitimate, was a good enough and understandable reason for deferring any amendment application at that stage.

114               On 10 December 1998, Blake Dawson Waldron wrote to Norton Smith & Co referring to their letter of 4 November 1998 and saying, relevantly:

“Whatever your client decides to do, it will need to make an application to the Court.  We note that we have not yet had notice of the precise terms of that application.  Please provide us with the precise form of your client’s application and inform us as to the purpose for which your client makes this application, particularising its reasons for doing so.

Our clients maintain that your client has an obligation to discover all documents relevant to its decision that claim 1 of the patent in suit is invalid.  This obligation extends to documents embodying patent attorney or legal advice on the validity of claim 1 which would otherwise be privileged.  Your client’s decision that claim 1 is invalid raises questions of whether your client has acted in good faith in framing the patent in suit in Australia, whether your client obtained its patent by false suggestion and whether your client unduly delayed in addressing the invalidity of claim 1.”

115               At a directions hearing on 11 December 1998, junior counsel for Lubrizol said, inter alia:

“There will be a question which may arise at the trial which is that we have notified ICI that in response to their challenge to claim 1 of the patent we will not be contending that claim 1 is a valid claim so that there will be some orders made at the trial dealing with that.

It raises this issue that claim 2 is a claim which we do support and as a matter of drafting claim 2 is in a shorthand form which … picks up claim 1 and then contains a further limitation.  The position we will be putting is that when the Court revokes claim 1 by drawing a line through it the material in claim 1 remains in the patent for the purpose of cross-reference …”

At the directions hearing, senior counsel for ICI said that ICI was happy for the matter either to be dealt with at trial or that it may end up being more convenient to be dealt with after judgment.  ICI accepted that position.  Senior counsel then confirmed that ICI could not criticise any delay between February and April 1999 in pursuing the amendment question.

116               On 22 December 1998, in responding to Blake Dawson Waldron’s letters of 4 November and 10 December 1998, Norton Smith & Co referred to what had been said by junior counsel for Lubrizol at the directions hearing.  They said that they, therefore, did not consider that there was a need for the matter to be the subject of further correspondence except to reject the assertion that Lubrizol was obliged to give any discovery on the basis of the decision of Sundberg J referred to above.

117               On 4 February 1999, Blake Dawson Waldron wrote again to Norton Smith & Co indicating that ICI did not concede that it was permissible to ask the Court to read the claims dependent on Claim 1 as though Claim 1 was incorporated into those claims.  The letter requested, as soon as possible, a draft of the “rewritten claims dependent on claim 1” in the form that Lubrizol proposed to submit to the Court.

118               On 8 February 1999, when the trial of the revocation and infringement proceedings was under way, senior counsel for Lubrizol was asked whether there would, at some stage and irrespective of the outcome, be an application to amend the claims.  Senior counsel replied:  “It’s conceivable”.  On 16 February 1999, senior counsel for Lubrizol formally conceded that Claims 1 and 4 to 9 would no longer be maintained.  While there had previously been an unequivocal indication on behalf of Lubrizol that validity of Claim 1 would not be maintained, that was the first occasion on which there was an unequivocal indication that Claims 4 to 9 would no longer be maintained.

119               While Mr O’Connor explained why that course was taken, the explanation was really a statement that Lubrizol, or its advisers, were not quite certain of the significance, if any, of Claims 4 to 9, and were not prepared to abandon them in case some significance was subsequently perceived.  While that is not a particularly helpful approach, it is difficult to see that the equivocation in relation to Claims 4 to 9, as distinct from the unequivocal abandonment of Claim 1, has any significant bearing on the question presently before me.

120               On 31 March 1999, I published my reasons for the conclusions that I then announced.  Mr O’Connor said that, prior to reading those reasons, he did not consider that there would be a need to amend the disclosure in the body of the Specification for the Patent as a consequence of abandoning Claim 1 and any other claims.  Prior to 31 March 1999, Mr O’Connor had no discussion with Ms Eadie, counsel for Lubrizol or any officer of Lubrizol concerning the possibility that the disclosure in the body of the Specification would need to be amended as a result of abandoning Claim 1 and any other claims.  Specifically, he did not see Ms Eadie’s letter of 21 July 1997.

121               On 27 April 1999, Blake Dawson Waldron wrote again to Norton Smith & Co indicating that any application by Lubrizol for an order directing amendment of the Patent would be opposed.  The following day, Norton Smith & Co sent to Blake Dawson Waldron a copy of the Patent showing, in handwriting, amendments proposed to the Specification claims.  Specifically, Claim 1 was deleted and Claim 2 was amended to incorporate the subject matter of Claim 1. 

122               The amendments were generally in accordance with the amendments that are the subject of the present application.  The formal notice of intention to amend, required by the Rules of the Federal Court, was filed on 7 June 1999.  On 10 June 1999, the Australian Patent Office informed Norton Smith & Co that the Commissioner of Patents had reviewed the proposed amendments and had formed the prima facie view that those amendments do not infringe against section 102 of the 1990 Act and that the Commissioner, accordingly, did not intend to appear in these proceedings.

ICI’s Contentions

123               Dr Jolley was looking for a lubricant for R-134a.  The inventive step involved in the invention was devising a combination of miscible lubricant with HFCs.  Dr Jolley, in his technology disclosure report of 8 February 1989, described the problem to which the invention related as follows:

“The phasing out of the use of chloro-fluorocarbons as refrigerants has resulted in the need of a new lubricant for use in refrigeration compressors.  R-134a, which appears to be the new refrigerant of choice, will require a synthetic lubricant as the old mineral oil lubricants are not soluble in this new refrigerant.”

124               Nevertheless, at the time of the writing of the provisional specification for the Patent, R-22 was still a valuable product.  Notwithstanding that it is an HCFC, it was regarded in 1989 and 1990 as having a significant future.  That is the reason, so it was contended by ICI, why Lubrizol described its invention in terms that were broad enough to include HCFCs.  It claimed the invention broadly for commercial reasons because of a perception that R-22 still had a value in the market place.

125               ICI contended that the need for amendment of the Specification should have been apparent to Lubrizol, having regard to the amendments made to applications in Europe and Canada.  Lubrizol had, at the relevant time, a patent department of five people comprising its head and four patent attorneys.  Nevertheless, when the patent department needed advice on overseas law or practice, that advice was obtained.  At the date of the sealing of the Patent, although not at the time of its acceptance, Lubrizol was aware, through Mr Cairns, that the examiner in Australia had been misled, albeit inadvertently.  Lubrizol’s patent department was aware that they had invented a combination of R-134a and lubricant that was considered inventive and novel.  They knew, at the appropriate time, that Claim 1 should be abandoned and it was in fact abandoned in some jurisdictions.  Nevertheless, they made no attempt at that stage to move for amendment of the Patent, as granted in Australia.

126               ICI contended that Lubrizol’s failure to move for amendment of the Patent prior to June 1999, notwithstanding the matters that I have set out in detail above, constituted unreasonable delay so as to disentitle Lubrizol to amendments that will validate the Patent.  From 19 August 1997 onwards, Lubrizol did not want to seek amendment if that would entail discovery of material that would otherwise be subject to legal professional privilege.  Lubrizol was also concerned, from 8 May 1998, that seeking amendment could raise the question of whether the Specification, as filed, was framed in good faith. 

127               Even when Lubrizol finally indicated to ICI on 23 October 1998 that it would not submit to the Court that Claim 1 is valid in the form in which it is expressed, the question of amendment was still left open.  That equivocation continued despite Blake Dawson Waldron pressing Norton Smith & Co for discovery and the form of the proposed amendment.  It was not until the trial was under way, albeit before Dr Jolley was cross-examined, that Lubrizol conceded that it would no longer maintain Claims 4 to 9, having previously, as indicated, informed ICI that it would not maintain Claim 1.

128               With the benefit of hindsight, it may well be that some criticism can be directed to the conduct of Lubrizol over the period of time covered by the events that I have summarised above.  From the time when the amendment was foreshadowed in the US, or from the time when the European application was amended or from the time when the voluntary amendment was lodged in Canada, Lubrizol must be taken to have a conscious awareness of the invalidity of the Patent in so far as it included Claim 1 and its dependent Claims.  Nevertheless, it took no steps to amend in Australia.

129               However, I am not satisfied by the evidence before me that Lubrizol has endeavoured to obtain any unfair advantage by its failure to apply earlier for any amendment to the Patent and the complete Specification.  There is certainly no evidence that any entity has declined to use the relevant lubricants in combination with HCFCs by reason of the presence in the Patent of Claim 1 and its dependent Claims.  More significantly, there is no evidence to suggest that Lubrizol was motivated, in its failure to seek amendment earlier, by any desire to prevent such use.  In any event, I do not consider that the conduct of Lubrizol in relation to the claims relating to HCFCs is such as to disentitle it to the benefit of the invention concerning HFCs.

130               There was clearly delay on the part of Lubrizol.  However, the delay in question has not in my opinion been such that it should be characterised as unreasonable. While, in practical terms, the amendments could have been sought earlier, there was no intention on the part of Lubrizol to gain from any delay.  The tactics adopted once the proceeding for revocation had been commenced were legitimate.  Accordingly, I am not satisfied that, in the exercise of the Court’s discretion, I should refuse to direct the amendments sought by Lubrizol. 

CONCLUSION

131               In the result, I consider that neither of the bases advanced on behalf of ICI for opposing the amendments sought by Lubrizol is made out.  It follows that an order should be made directing  the amendment of the Patent in the manner set out in the Notice of Intention to Amend filed on 7 June 1999.  The question of costs of the proceedings to date should be the subject of further argument after the parties have had the opportunity of considering these reasons.  I propose to stand the proceedings over to a date convenient to the parties for the purpose of argument on costs and the making of formal orders.

Associate:

Dated:              15 October 1999

Schedule 3

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L‑2456R

Title: LIQUID COMPOSITIONS CONTAINING CARBOXYLIC ESTERS

Field of the Invention

This invention relates to liquid compositions comprising a major amount of at least one fluorine‑containing hydrocarbon wherein fluorine is the only halogen present, and a minor amount of at least one lubricant.  More particularly, the invention relates to liquid compositions useful as refrigeration liquids.

Background of the Invention

Chlorofluorocarbons, generally referred to in the industry as CFCs, have been widely used as propellants in aerosols, although use in aerosols has been diminishing in recent years because of demands of environmentalists for the reduction if not a complete ban on the use of CFCs because of the detrimental effect of CFCs on the stratosphere's ozone layer. CFCs also have been used because of their unique combination of properties as refrigerants, foam‑blowing agents, and specialty solvents within the electronics and aerospace industries. Examples of CFCs which have been utilized for these purposes include CFC‑11 which is chlorotri‑fluoromethane, CFC‑12 which is dichlorodifluoromethane, and CFC‑113 which is 1,2,2‑trifluoro‑1,1,2‑trichloroethane.

Since 1976, when the aerosol industry began to feel the pressure to reduce if not eliminate the use of CFCs, the aerosol industry has progressively moved

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esters, epoxy compounds, and organotin compounds.  The polyethylene glycol methyl ether‑type compounds are of the general formula

CH₃‑O‑(CH₂H₄O)_nR

wherein n is an integer of 1 to 6, and R is H, CH₃‑ or CH₃O.  A variety of halogenated hydrocarbons are described including 1,1,‑difluoromethane, 1,1,1,2­tetrafluroethane, etc.

U.S. Patent 4,559,154 relates to absorption heat pumps utilizing as working fluid, a saturated fluorohydrocarbon or fluorohydrocarbon ether having from 3 to 5 carbon atoms. Solvents reported to be useful with such fluorohydrocarbons include ethers such as tetraglyme, amides which can be lactams such as the N‑alkyl pyrrolidones, sulfonamides and ureas including cyclic ureas.

Summary of the Invention

A liquid composition is described which comprises

(A) a major amount of at least one fluorine containing hydrocarbon containing one or two carbon atoms and wherein fluorine is the only halogen present; and

(B) a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula

                                     R[OC(O)R¹]_n                           (I)

wherein R is a hydrocarbyl group, each R¹ is independently hydrogen, a straight chain lower hydrocarbyl

‑6‑

group, a branched chain hydrocarbyl group, or a straight chain hydrocarbyl group containing from 8 to about 22 carbon atoms provided that at least one R¹ group is hydrogen, a lower straight chain hydrocarbyl or a branched chain hydrocarbyl group, or a carboxylic acid‑ or carboxylic acid ester‑containing hydrocarbyl group, and n is at least 2.

[Liquid compositions also are described wherein the fluorine‑containing hydrocarbons also contain other halogen such as chlorine].  The liquid compositions are useful particularly as refrigeration liquids in refrigerators and air‑conditioners including auto, home and industrial air‑conditioners.

Description of the Preferred Embodiments

Throughout this specification and claims, all parts and percentages are by weight, temperatures are in degrees Celsius, and pressures are at or near atmospheric pressure unless otherwise clearly indicated.

As used in this specification and in the appended claims, the terms "hydrocarbyl" and "hydrocarbylene" denote a group having a carbon atom directly attached to the polar group and having a hydrocarbon or predominantly hydrocarbon character within the context of this invention.  Such groups include the following:

(1) Hydrocarbon groups; that is, aliphatic, (e.g., alkyl or alkenyl), alicyclic (e.g., cycloalkyl or cycloalkenyl), and the like, as well as cyclic groups wherein the ring is completed through another portion of the molecule (that is, any two indicated substituents may together form an alicyclic group).  Such groups are known to those skilled in the art.  Examples include methyl, ethyl, octyl, decyl, octadecyl, cyclohexyl, etc.

(2) Substituted hydrocarbon groups; that is, groups containing non‑hydrocarbon substituents which, in

-8-

liquid compositions, even though it may be insoluble in the fluorine‑containing hydrocarbon per se.

(A) Fluorine‑Containing Hydrocarbon.

The liquid compositions of the present invention comprise a major amount of at least one fluorine‑containing hydrocarbon wherein fluorine is the only halogen present.  That is, the fluorine‑containing hydrocarbons contain at least one C‑H bond as well as C­F bonds. [In addition to these two essential types of bonds, the hydrocarbon also may contain other carbon‑halogen bonds such as C‑Cl bonds]. Because the liquid compositions of the present invention are primarily intended for use as refrigerants, the fluorine‑containing hydrocarbon preferably contains one or two carbon atoms, and more preferably two carbon atoms.

As noted above, [the fluorine‑containing hydrocarbons useful in the liquid compositions of the present invention may contain other halogens such as chlorine.  However, in one preferred embodiment,] the hydrocarbon contains only carbon, hydrogen and fluorine. These compounds containing only carbon, hydrogen and fluorine are referred to herein as fluorohydrocarbons. [The hydrocarbons] Hydrocarbons containing chlorine as well as fluorine and hydrogen are referred to as chlorofluorohydrocarbons. The fluorine‑containing hydrocarbons useful in the composition of the present invention are to be distinguished from the fully halogenated hydrocarbons which have been and are being used as propellants, refrigerants and blowing agents such as CFC‑11, CFC‑12 and CFC‑113 which have been described in the background.

[Specific examples of the] A specific example of a fluorine‑containing [hydrocarbons] hydrocarbon useful in the liquid compositions of the present invention, and [their] its reported ozone depletion [potentials are] potential is shown in the following Table 1.

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TABLE 1

Compound

Designation                                          Formula                                            ODP*

[HCFC‑22]                                         [CHClF₂]                                         [0.05]

[HCFC‑123]                                       [CHCl₂CF₃]                                     [<0.05]

[HCFC‑141b]                                     [CH₃CCl₂F]                                     [<0.05]

HFC‑134a                                          CH₂FCF₃                                         0

*          Ozone depletion potential as reported in Process Engineering, pp. 33‑34, July, 1988.

Examples of other fluorine‑containing hydrocarbons which may be useful in the liquid compositions of the present invention include trifluoromethane (HFC‑23), 1,1,1‑tri-fluoroethane (HFC‑143a), 1,1‑difluoroethane (HFC‑152a) [,2‑chloro‑1,1,1,2-tetrafluoroethane (HCFC‑124), 1‑chloro‑1,1,2,2‑tetrafluoroethane (HCFC‑124a), 1-chloro‑l,l‑di‑fluoroethane (HCFC‑142b),] and 1,1,2,2‑tetrafluoroethane (HFC‑134). In the refrigerant art, the fluorohydrocarbons are often identified merely with the prefix "R" in place of the above letters. For example HFC‑23 is R‑23, [HCFC‑124 is R‑124,] etc.

In general, fluorine‑containing hydrocarbons which are useful as refrigerants are fluoromethanes and fluoroethanes boiling at a relatively low temperature at atmospheric pressure, e.g., below 30°C. Mixtures of fluorine‑containing hydrocarbons may be used, and the amount of each fluorohydrocarbon in the mixture may be varied as desired. [Examples of]An example of a fluorohydrocarbon [mixtures useful as (A) include:] mixture useful as (A) includes: [142(b)122;] 134(a)/23 [; 22/124/152(a), etc]. The useful fluorocarbon refrigerants serve to transfer heat in a refrigeration system by evaporating and absorbing heat at a low temperature and pressure, e.g., at ambient temperature and atmospheric

1

   ‑ 25 ‑

TABLE II

Liquid Containing                                                             Solubility

Product of Example                                                          °C (ppt.)

6                                                                                              ‑45

10                                                                                            ‑50

11                                                                                            ‑40

12                                                                                            ‑50

13                                                                                            ‑15

15                                                                                            ‑30

16                                                                                              10

17                                                                                            ‑25

19                                                                                            ‑10

The liquid compositions of the present invention comprise a major amount of a fluorine‑containing hydrocarbon and a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester (I). By “major amount” is meant an amount greater than 50% by weight such as 50.5%, 70%, 99%, etc. The term “minor amount” includes amounts less than 50% by weight such as 1%, 5%, 20%, 30% and up to 49.9%. In one embodiment, the liquid compositions of the present invention will comprise from about 70% to about 99% of the fluorine‑containing hydrocarbon and from about 1 to about 30% by weight of the lubricant. In other embodiments, the liquid compositions of the present invention may contain from about 5% to about 20% by weight of the lubricant.

The liquid compositions of the present invention are characterized as having improved thermal and chemical stability over a wide temperature range. Other additives, if soluble in the liquid, known to be useful for improving the properties of [halogen] fluorine ‑containing hydro‑

‑26­

carbon refrigerants can be included in the liquid compositions of the present invention to improve the characteristics of the liquid as a refrigerant. However, hydrocarbon oils such as mineral oil generally are not included in and are most often excluded from the liquid compositions of the invention [, particularly when the fluorine‑containing hydrocarbon contains no other halogen].

The additives which may be included in the liquid compositions of the present invention to enhance the performance of the liquids include extreme‑pressure and anti-wear agents, oxidation and thermal‑stability improvers, corrosion‑inhibitors, viscosity-index improvers, pour point and/or floc point depressants, detergents, dispersants, anti-foaming agents, viscosity adjusters, etc. As noted above, these supplementary additives must be soluble in the liquid compositions of the invention. Included among the materials which may be used as extreme‑pressure and anti‑wear agents are phosphates, phosphate esters, phosphites, thiophosphates such as zinc diorganodithiophosphates, chlorinated waxes, sulfurized fats and olefins, organic lead compounds, fatty acids, molybdenum complexes, borates, halogen‑substituted phosphorous compounds, sulfurized Diels Alder adducts, organic sulfides, metal salts of organic acids, etc. Sterically hindered phenols, aromatic amines, dithiophosphates, phosphites, sulfides and metal salts of dithioacids are useful examples of oxidation and thermal stability improvers. Compounds useful as corrosion‑inhibitors include organic acids, organic amines, organic phosphates, organic alcohols, metal sulfonates, organic phosphites, etc. VI improvers include polyolefins such as polyesterbutene, polymethac‑

1

‑27‑

rylate, polyalkyl styrenes, etc. Pour point and floc point depressants include polymethacrylates, ethylenevinyl acetate copolymers, succinamic acid‑olefin copolymers, ethylene‑alpha olefin copolymers, etc. Detergents include sulfonates, long‑chain alkyl-substituted aromatic sulfonic acids, phosphonates, phenylates, metal salts of alkyl phenols, alkyl phenol‑aldehyde condensation products, metal salts of substituted salicylates, etc. Silicone polymers are a well known type of anti‑foam agent. Viscosity adjusters are exemplified by polyisobutylene, polymethacrylates, polyalkyl styrenes, naphthenic oils, alkyl benzene oils, polyesters, poly‑vinyl chloride, polyphosphates, etc.

The liquid compositions of the present invention are particularly useful as refrigerants in various refrigeration systems which are compression‑type systems such as refrigerators, freezers, and air‑conditioners including automotive, home and industrial air-conditioners. The following examples are illustrative of the liquid compositions of the present invention.

                                                                                                          Parts by Wt.

Examiple A

1,1,1,2‑tetrafluoroethane [(HCFC‑134a)] (HFC‑134a)                                   90

Lubricant of Example 2                                                                                     10

Example B

1,1,2,2‑tetrafluoroethane                                                                                   85

Lubricant of Example 4                                                                                     15

Example C

[HCFC‑134a] HFC‑134a                                                                               95

Lubricant of Example 6                                                                                     5

Example D

[HCFC‑134a] HFC‑134a                                                                               80

Product of Example 1                                                                                       20

                                                                    ‑28­

[HCFC‑134a] HFC-134a                                                                               85

Product of Example 4                                                                                        15

While the invention has been explained in relation to its preferred embodiments, it is to be understood that various modifications thereof will become apparent to those skilled in the art upon reading the specification. Therefore, it is to be understood that the invention disclosed herein is intended to cover such modifications as fall within the scope of the appended claims.

Claims

[1.        A liquid composition comprising:

(A) a major amount of at least one fluorine‑containing hydrocarbon containing 1 or 2 carbon atoms and wherein fluorine is the only halogen present; and

(B) a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula

R[OC(O)R¹]_n                         (I)

wherein R is a hydrocarbyl group, each R¹ is independently hydrogen, a straight chain lower hydrocarbyl group, a branched chain hydrocarbyl group, or a straight chain hydrocarbyl group containing from 8 to 22 carbon atoms provided that at least one R¹ group is hydrogen, a lower straight chain hydrocarbyl or a branched chain hydrocarbyl group, or a carboxylic acid‑ or carboxylic acid ester‑containing hydrocarbyl group, and n is at least 2.

[2. The liquid composition of claim 1 wherein fluorine is the only halogen in the fluorine‑containing hydrocarbon (A).] 1.  A liquid composition comprising:

(A) a major amount of at least one fluorine‑containing hydrocarbon containing 1 or 2 carbon atoms, and wherein fluorine is the only halogen present, and

(B) a minor amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula.

R[OC(O)R¹]_n

Wherein R is a hydrocarbyl group, each R¹ is independently hydrogen,, a straight chain lower hydrocarbyl group. a branched chain hydrocarbyl group or a straight chain

hydrocarbyl group containing from 8 to 22 carbon atoms provided that at least one R¹ group is hydrogen., a lower straight chain hydrocarbyl or a branched chain hydrocarbyl group., or a carboxylic acid or carboxylic acid ester‑containing hydrocarbyl group, and n is at least 2.

[3.] 2. The liquid composition of claim 1 wherein the fluorine‑containing hydrocarbon (A) is 1,1,1,2‑tetra‑fluoroethane.

[4.  The liquid composition of claim 1 comprising from 70% to 99% by weight of the fluorine‑containing hydrocarbon (A) and from 1 to 30% by weight of the soluble organic lubricant (B).]

[5.        The liquid composition of claim 1 wherein R¹ in Formula I is a branched chain hydrocarbyl group containing from 4 to 20 carbons.]

[6.        The liquid composition of claim 1 wherein n in Formula I is an integer from 2 to 10.]

[7.        The liquid composition of claim 6 wherein (B) is derived from a polyhydroxy compound containing oxyalkylene groups.]

[8. The liquid composition of claim 6 wherein (B) is derived from a polyhydroxy compound which is an alkanol amine containing at least 2 hydroxy groups.]

[9.        The liquid composition of claim 1 which is free of alkylene oxide compounds.]

[10.]   3. A liquid composition comprising:

(A) from 70 to 99% by weight of at least one fluorine‑containing hydrocarbon containing 1 or 2 carbon atoms and wherein fluorine is the only halogen present; and

(B) from 1 to 30% by weight of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing at least 2 hydroxy groups and characterized by the general formula

R[OC(O)R¹]_n                           (I)

wherein R is a hydrocarbyl group, each R¹ is independently hydrogen, a straight chain lower hydrocarbyl group, a branched chain hydrocarbyl group, or a straight chain hydrocarbyl group containing from 8 to 18 carbon atoms provided that at least one R¹ group is hydrogen, a lower straight chain hydrocarbyl or a branched chain hydrocarbyl group, and n is at least 2.

[11.]  4. The liquid composition of claim [10] 3 wherein the fluorine‑containing hydrocarbon (A) is 1,1,1,2‑tetra‑fluoroethane.

[12.] 5.The liquid composition of claim [10] 3 wherein R¹ is a branched chain alkyl group containing from 4 to 20 carbon atoms.

[13.] 6.  Theliquid composition of claim [10] 3 wherein n is an integer of from 3 to 10.

[14.] 7. The liquid composition of claim [10] 3 wherein R is a hydrocarbyl group containing at least one nitrogen or oxygen atom.

[15.] 8.The liquid composition of claim [10] 3 wherein (B) is a carboxylic ester of pentaerythritol, dipentaery‑thritol or tripentaerythritol.

[16.] 9. The liquid composition of claim [10] 3 wherein (B) is a carboxylic ester of an alkanol amine containing at least 3 hydroxy groups.

[17.] 10.          The liquid composition of claim [10] 3 which is free of alkylene oxide compounds.

[18.] 11.          A liquid composition comprising:

(A) from 70 to 99% by weight of 1,1,1,2‑tetrafluoroethane; and

(B) from 1 to 30% by weight of at least one soluble organic lubricant comprising at least one carboxylic ester of a polyhydroxy compound containing from 3 to 10 hydroxyl groups and characterized by the general formula

R[OC(O)R¹]_n                           (I)

wherein R is a hydrocarbyl group, each R¹ is hydrogen, independently a straight chain alkyl group containing from 1 to 5 carbon atoms, a branched chain alkyl group containing from 5 to 20 carbon atoms, or a straight chain alkyl group containing from 8 to 12 carbon atoms, provided that at least one R¹ is hydrogen, a straight chain alkyl group containing 1 to 5 carbon atoms or a branched chain alkyl group containing from 5 to 20 carbon atoms, and n is an integer of from 3 to 10.

[19.] 12.          The liquid composition of claim [18] 11 wherein each R¹ is independently a methyl or ethyl group.

[20.] 13.         The liquid composition of claim [18] 11 wherein each R' is a branched chain alkyl group containing from about 5 to 14 carbon atoms.

[21.] 14.         The liquid composition of claim [18] 11 wherein at least one of the R¹ groups is hydrogen or a methyl or ethyl group and the remaining R¹ groups are branched chain alkyl groups containing from 5 to 20 carbon atoms.

[22.] 15.          The liquid composition of claim [18] 11 wherein the branched chain alkyl groups are characterized by the structure

                                                            ‑C(R²)(R³)(R⁴)

wherein R², R³ and R⁴ are each independently alkyl groups and at least one of the alkyl groups contains 2 or more carbon atoms.

[23.] 16.          The liquid composition of claim [22] 15 wherein R² and R³ are methyl groups.

[24.] 17. The liquid composition of claim [18] 11 wherein the polyhydroxy compound is an alkanol amine containing from 3 to 6 hydroxy groups.

[25.] 18.          The liquid composition of claim [18] 11 wherein the polyhydroxy compound is mono‑ or dipentaerythritol.

[26.] 19. The liquid composition of claim [18] 11 which is free of alkylene oxide compounds.

[27.] 20. The liquid composition of any one of claims 1 to [26] 19, substantially as herein described with reference to any one of the Examples.

NOTE:

·        Bold and italic font in text indicates additions.

·        Bold font in brackets with no italics in text indicates deletions.