FEDERAL COURT OF AUSTRALIA

Wm Wrigley Jr Company v Cadbury Schweppes Pty Ltd [2005] FCA 1035

PATENTS – claim for infringement of patent for hard coated sugarless chewing gum – cross-claim for invalidity – integers of a coating including hydrogenated isomaltulose and centre with low moisture content – denial of infringement and cross claim for invalidity

PATENTS – construction – meaning of the term “hydrogenated isolmaltulose” – whether confined to commercial sugar substitute Palatinit or all forms of hydrogenated isolmaltulose

PATENTS – manner of manufacture – Palatinit not previously used in sugarless chewing gums – whether the skilled reader would think that the known properties of the substance made it suitable for use in the manner contemplated by the patent – whether patent a true combination of integers or merely a collocation

PATENTS – obviousness – whether the notional skilled but non-inventive worker (or team) would, in all the circumstances, be led directly to try making a sugarless chewing gum with the two essential integers of the patent in the expectation that it might well produce a useful alternative to, or a better product than, other hard coated sugarless gums

PATENTS – novelty – Palatinit promotional material, known as the Infopac, contained recipes for making various candies - whether the Infopac contains sufficient disclosure to anticipate the claimed invention

PATENTS – false suggestion – specification incorrectly referred to hydrogenated isomaltulose as “substantially hygroscopic” – whether the suggestion or representation materially contributed to the Commissioner’s decision to grant the patent

PATENTS – non-compliance with section 40 – whether the specification fully describes the invention – whether the claims define the invention – whether claims fairly based in the body of the specification

PATENTS – utility – 50 per cent weight of hydrogenated isomaltulose required for utility – not all claims specify a particular amount of hydrogenated isomaltulose – whether all claims fail for inutility

PATENTS – infringement – whether gums imported and sold by respondent shown by testing to have the integers of the patent

Patents Act 1952 (Cth) ss 40, 100

Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292 applied

Aktiebolaget Hassle v Alphapharm Pty Limited (2003) 212 CLR 411 at [57] cited

Eli Lilly & Co v Pfizer Overseas Pharmaceuticals [2005] FCA 67 at [102] cited

Bristol-Myers Squibb Company v F H Faulding & Co Limited (2000) 97 FCR 524 applied

Commissioner of Patents v Microcel Limited (1959) 102 CLR 232 applied

NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 cited

Re L & G’s Application (1940) 58 RPC 21 cited

Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 611 cited

Sabef SpA v MFI Furniture Centres Pty Ltd [2005] RPC 10 at [17], [24]-[27] cited

Canadian General Electric Co Limited v Fada Radio Limited [1930] AC 97 at 104 cited

Lockwood Security Products Pty Limited v Doric Products Pty limited (2004) 217 CLR 274 applied

Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 19 IPR 275 at 279-280, 296 cited

Gould v Vaggelas (1985) 157 CLR 215 at 219, 236, 250 and 262 cited

Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 at 143 applied

Norton and Gregory Limited v Jacobs (1937) 54 RPC 271 at 276 cited

Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 337 cited

WM WRIGLEY JR COMPANY v CADBURY SCHWEPPES PROPRIETARY LIMITED

NO VID 767 OF 2002

HEEREY J

28 JULY 2005

MELBOURNE

THE COURT ORDERS THAT:

1. The parties are directed to bring in minutes of proposed orders to give effect to these reasons.

2. The hearing is adjourned to a date to be fixed.

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

REASONS FOR JUDGMENT

CONTENTS

Paragraph

1. INTRODUCTION [1]

2. CHEWING GUM MANUFACTURE [6]

3. THE INVENTION [21]

4. HYDROGENATED ISOMALTULOSE [23]

5. THE PATENT [27]

6. THE PALATINIT INFOPAC [50]

7. THE SKILLED ADDRESSEE [54]

Q1 Who is the skilled addressee? [54]

8. COMMON GENERAL KNOWLEDGE [56]

Q2 What matters are agreed as forming part of CGK in Australia

at the priority date? [57]

Q3 Are the matters under the heading “Background of the

Invention” acknowledge by the patentee to be part of CGK? [58]

Q4 Was the information in the Infopac part of CGK? [63]

Q5 To what extent was knowledge of sorbitol and its

properties included in CGK? [70]

Q6 To what extent was knowledge of Palatinit and its

properties included in CGK? [73]

9. CONSTRUCTION [77]

Q7 What is the meaning of the term “hydrogenated

isomaltulose” in claim 1? [78]

Q8 What is the meaning of the term “the hygroscopic

sweetener” in claim 3? [85]

Q9 What is the meaning of the term “low moisture

gum centre” in claim 11? [86]

10. MANNER OF MANUFACTURE [87]

Q10 Does the invention claimed involve merely using a known

substance (hydrogenated isolmaltulose) for a purpose for

which its known properties made it suitable? [89]

Q11 Is there a combination of integers or merely a collocation? [94]

11. OBVIOUSNESS [95]

Q12 Would the notional skilled but non-inventive worker (or

team) at the priority date, in all the circumstances, which

include a knowledge of the relevant prior art, directly be

led as a matter of course to try making a sugarless chewing

gum with hydrogenated isomaltulose in the hard coating

and a water content in the gum centre of less than 2.5 per cent

by weight in the expectation that it might well produce a use-

ful alternative to, or a better product than, other hard coated

sugarless gums such as those made with sorbitol? [97]

Q13 Is the gum centre moisture content no more than a known

desirable characteristic of a coated chewing gum? [100]

12. NOVELTY [103]

Q14 Was the Infopac publicly available in Australia before the

priority date? [106]

Q15 Does the Infopac contain sufficient disclosure to anticipate

the claimed invention? [107]

13. SECTION 40 [112]

Q16 What does the body of the specification disclose or describe

as the invention? [117]

Q17 Do the claims of the Patent define the invention? [119]

Q18 Are the claims of the Patent fairly based? [122]

14. FALSE SUGGESTION [124]

Q19 Did the specification contain representations that hydrogenated

isomaltulose was substantially hygroscopic? [126]

Q20 If yes to Q19, was that representation false? [127]

Q21 Did the specification contain the representation that the

inventor believed “that a low water gum centre, when combined

with a coating syrup comprising [hydrogenated isomaltulose]

yields a superior hard coating because the centre will not be

a water donor to the completed coating”. [131]

Q22 If yes to Q21, was that representation false? [132]

Q23 If yes to any of Q20 or 22 was any such representation

material to the grant of the Patent? [133]

15. UTILITY [134]

Q24 Will a coating containing less than about 50 per cent weight

of hydrogenated isomaltulose be sticky, waxy and of poor

appearance? [136]

Q25 If yes to Q24, are all claims except claims 2, 3 and 15 bad for

inutility? [137]

Q26 Do the claims of the invention include a hard coating which

comprises substantially entirely an Isomalt ST coating? [139]

Q27 If yes to Q26 will such a coating have a poor crunch and

poor shelf life? [140]

Q28 If yes to Q27 are the claims bad for inutility? [141]

16. INFRINGEMENT [142]

Q29 Do the Cadbury gums contain a gum centre which has a water

content as claimed? [144]

Q30 Do the Cadbury gums contain a hard coating containing

hydrogenated isolmaltulose as claimed? [148]

17. SUMMARY OF FINDINGS [149]

18. ORDERS [156]

1. INTRODUCTION

1                     The applicant Wm Wrigley Jr Company (Wrigley) is the proprietor of Australian patent No 612367 (the Patent) entitled “Hard Coated Sugarless Chewing Gum”. The priority date is 4 May 1987.

2                     Wrigley alleges that the respondent Cadbury Schweppes Pty Ltd (Cadbury) has infringed the Patent by importing into and selling in Australia hard coated chewing gums under the name Trebor 24-7 (the Cadbury gums).

3                     Cadbury denies infringement and in particular says that it has not been established that two integers of the Patent are present in its gums. Further, Cadbury alleges that the Patent is invalid on the grounds of:

·        Failure to disclose a manner of manufacture;

·        Obviousness;

·        Want of novelty;

·        False suggestion;

·        Non-compliance with s 40; and

·        Inutility.

4                     Issues of infringement and relief are to be determined under the Patents Act 1990 (Cth) (the 1990 Act) and issues of validity under the Patents Act 1952 (Cth) (the 1952 Act).

5                     In these reasons the various questions of fact and law raised at the trial appear in the form of italicized sub-headings.

2. CHEWING GUM MANUFACTURE

6                     There are three main forms of chewing gum: stick, tab and hard-coated. Stick gums are thin flat pieces of chewing gum in a rectangular shape. Tab gums are also produced in a rectangular shape but are shorter, narrower and thicker than stick gum. Hard coated chewing gums are made of gum centres coated with a hard crunchy coating. Hard coated gums in the form of pellets, first introduced into Australia by Wrigley in 1915, are the most popular variety of chewing gum in this country, in contrast to the United States where the preference is for stick gum.

7                     In hard coated chewing gum a gum centre is coated with a syrup which dries to a hard coating. The gum centre consists of an insoluble gum base and water soluble portion. The water soluble portion dissipates over a period of time during chewing.

8                     The coating is applied to the gum centre in a controlled process known as panning. This involves placing the uncoated gum centres in a bowl or drum-shaped pan to which the coating syrup is applied by a ladle or in the form of a spray whilst the tilted pan is rotated. The syrup is usually applied in layers or coats. Each coat is dried by air blown at high velocity. Once the panning process is complete the coated gums are polished with a wax or glazed to give a shiny appearance.

9                     The gum base is the critical component of the gum centre. The gum base needs to have a very low moisture content, to be hydrophobic (water repellent), and to be elastomeric so as to provide good chewing properties. The material constituting the gum base can be natural or synthetic or a combination of the two. Originally chicle, a naturally occurring insoluble substance, was used in the gum base. However by the early 1970s that ingredient became difficult to obtain and by the time of the priority date in May 1987 synthetic rubber had essentially replaced chicle as the gum base.

10                  Softeners are added to the gum centre to keep the gum soft and flexible and also to aid in the initial release of flavour.

11                  Bulking agents provide a desirable initial texture and bulk to the gum. Sugar and sugar substitutes are also used as bulking agents to provide bulk as well as sweetness.

12                  Humectants are used to retain the moisture within the gum matrix and to stop the product from drying out.

13                  Flavouring is imparted by a blend of natural flavours and/or synthetic flavour compounds.

14                  Other ingredients include binders such vegetable gums and modified starches, titanium dioxide (for whitening), colours and polishing waxes. Vegetable gums and modified starches are added to function as film formers. These ingredients assist the development of a hard coating as they allow the gum pellets to slide past one another more easily during the coating process.

15                  Sweeteners are added both to the gum centre and the coating. Traditionally sucrose (cane or beet sugar) and glucose were used. Sugar was very suitable for this purpose as it was readily available and cheap, easy to process and attractive to consumers in terms of appearance, flavour and crunchiness. Moreover sugar is non-hygroscopic, that is to say it does not have a tendency to readily absorb water from its environment. This feature meant that chewing gum with a sugar coating could have a prolonged shelf life.

16                  Hygroscopicity is an important element in the present case. The hygroscopicity of a substance will vary depending on the relative humidity and temperature and is known as equilibrium moisture content (EMC).

17                  By the early to mid 1980s health concerns about sugar emerged. Sugar was seen as contributing to obesity, dental decay and diabetes. This awareness created a demand for sweetening alternatives, and in the case of hard-coated chewing gum a search for an acceptable alternative to sugar coating. Such an alternative had to be readily available, economical, easy to process and have a good shelf life. From a consumer’s aspect the coating had to be comparable to sugar in terms of taste, appearance and mouth feel.

18                  In 1987 artificial sweeteners available included low intensity products sorbitol, xylitol and mannitol and high intensity products saccharin, cyclamates and aspartame (trade name NutraSweet).

19                  High intensity sugar sweeteners are many times sweeter than sugar and thus are used in comparatively small quantities. If used in chewing gum centres or coating to replace sugar they will not contribute the necessary bulk that sugar had provided.

20                  By May 1987 there had been no significant sales of any sugar free confectionery, including chewing gum, in Australia. Gums with the sugarless sweetener sorbitol had been sold overseas but not in Australia. Sorbitol was difficult to process and sorbitol gums lacked crunchiness, were rough, and had an undesirable mottled appearance. Sorbitol was hygroscopic, which meant it took on water from the gum centre. This affected the crunchiness of the coating.

3. THE INVENTION

21                  The alleged invention, the subject of the Patent, is a hard coated sugarless chewing gum and a method of making such a gum.

22                  The invention is said to reside in the use of a combination of a gum centre with a low water content and a hard coating in which the sugarless sweetener is hydrogenated isomaltulose. This is said to produce a hard coating that is not only crunchier than sorbitol-coated gum but is also smoother and not mottled in appearance.

4. HYDROGENATED ISOMALTULOSE

23                  As at May 1987 the only commercial supplier of hydrogenated isomaltulose (generic name isomalt) was a German manufacturer Palatinit GmbH, the vehicle of a joint venture between Bayer AG and Suddeutsche Zucker AG, one of Germany’s largest producers of beet sugar. It had been first produced in the early 1970s. The firm marketed it under the name Palatinit. The name Isomalt ST was also used. The availability and use of Palatinit in Australia prior to May 1987 will be discussed below.

24                  The production of hydrogenated isomaltulose follows this sequence. Sucrose is chemically modified by enzymatic conversion to produce isomaltulose. Isomaltulose is then chemically modified by hydrogenation to produce hydrogenated isomaltulose. Hydrogenation is a method of reduction in which hydrogen is added to a substance by the direct use of gaseous hydrogen. Hydrogenation is normally carried out with the aid of a catalyst and proceeds more rapidly at high temperature. In the case of hydrogenated isomaltulose produced by Palatinit GmbH the catalyst used is Rainy nickel.

25                  Hydrogenated isomaltulose consists of two isomers. Isomers are chemical compounds that have the same number and kinds of atoms as another compound (including the same molecular weight) but a different structural or spatial arrangement of the atoms and different properties. The two isomers are a-D-glucopyranosido-1,6-mannitol (known as GPM) and a-glucopyranosido-1,6-glucitol (known as GPS) in the proportions of about 1:1. GPM has bound water molecules but GPS does not.

26                  Palatinit GmbH produced a further product called Isomalt GS. This was made by the physical process of fractional crystallisation of Isomalt ST. This process (also known as preferential crystallisation) involves separating two chemical compounds in a solution by causing the less soluble chemical compounds to crystallise from that solution. Isomalt GS has GPS and GPM in the proportions of about 4:1. The coatings of the Cadbury gums have GPS and GPM in the proportion of about 2:1.

5. THE PATENT

27                  Before summarising the relevant provisions of the Patent I should note that a feature of the drafting which has given rise to problems in the present case is that the specification was amended in 1991 by deleting references to sorbitol. Sorbitol, in contrast to hydrogenated isomaltulose, is hygroscopic. Unfortunately those drafting the amendments have not been consistent in deleting descriptions of sorbitol as hygroscopic. In the result, the Patent in a number of places states, incorrectly as is conceded, that hydrogenated isomaltulose is hygroscopic. It will be necessary to return to this aspect.

28                  At the outset it is stated (p 1) that the present invention relates to an improved hard coated, sugarless chewing gum. Under the heading “Background of the Invention” there is a discussion of sugarless chewing gums and their coatings. “(T)he industry has investigated sugarless coatings containing compounds such as xylitol, sorbitol, mannitol, and hydrogenated starch hydrolysates.” It is said that hard coatings containing sorbitol are common in the art. Sorbitol is generally acceptable because of its availability and low cost but sorbitol coating solutions are difficult to employ in the coating process and sorbitol coated products are usually rough, containing coloured spots or blotches and are waxy. Furthermore, because of its hygroscopisity, sorbitol dries and crystallizes slowly. Because of their rough and mottled appearance sorbitol coated products are often rejected by consumers in favour of sugar coatings. Therefore it is said (p 2) an object of the invention is to provide a novel and improved sugarless hard coated chewing gum which compares to the appearance, mouth feel, stability and ease of application of sugar hard coatings. A further object of the invention is to provide a method for applying such a sugarless coating to a sugarless chewing gum centre.

29                  Under the heading “Summary of the Invention” (p 2) it is said that according to the first embodiment of the invention there is provided a hard coated sugarless chewing gum comprising a sugarless chewing gum centre and a sugarless hard coating comprising hydrogenated isomaltulose with the gum centre having a water content of 0.001 to less than about 2.5 weight per cent based on the weight of the gum centre. Six further embodiments are described, all referring to a “sugarless hard coating”, either containing or comprising hydrogenated isomaltulose.

30                  Under the heading “Detailed Description of the Preferred Embodiments” (p 4) it is said (deletions in original):

“It has now been discovered that when a sugarless chewing gum centre is coated with a syrup comprising a the substantially hygroscopic sugarless sweetener such as sorbitol or hydrogenated isomaltulose in accordance with the present invention, a novel sugarless hard coated chewing gum is obtained.”

31                  It is said that the novel sugarless hard coated chewing gum provides many advantages. The low moisture gum centre yields a hard coating which is crunchier and more uniform. “Without being limited to theory”, it is believed that a low water gum centre when combined with a coating syrup comprising “the sweeteners contemplated” yields a superior hard coating because the centre will not be a water donor to the completed coating. This allows the hard coating to be crunchier, smoother, and not mottled in appearance. The hard coated sugarless chewing gum of the invention is very close in appearance, taste and mouth feel to sugar coated gums. Also the invention allows the use of film formers, if desired, during the application of the coating syrup.

32                  Later (p 5) it is said (deletion in original):

“In accordance with one embodiment of the present invention, the sugarless hard coating comprises a substantially hygroscopic alditol sweetener.”

33                  The concept of hygroscopicity is explained. There is a discussion of the EMC of various substances. Amongst other detail it is said that the EMC of xylitol at 78% relative humidity and 20ºC is 33% as compared with 0.3% for sucrose at 77% relative humidity and 26.7ºC. However, the EMC of hydrogenated isomaltulose “is not currently known to the inventors” but it is believed that it is greater than that of xylitol. Thus, it is said, the term “substantially hygroscopic” is intended to include a compound having an EMC greater than about 7 % at about 78% relative humidity and about 20ºC. The specification continues (p 6)

“Preferably the substantially hygroscopic sweetener has an (EMC) greater than about 15% and preferably greater than about 33% or about 78 per cent relative humidity and about 20ºC, the latter being the (EMC) of sorbitol.”

This might have been correct prior to the amendment when the preferred sweetener was sorbitol, which is substantially hygroscopic, and hydrogenated isomaltulose and others were proffered as alternatives. However, once the only claimed sweetener became hydrogenated isomaltulose the statement was clearly wrong. Hydrogenated isomaltulose has an EMC well below 15% and could not be described as substantially hygroscopic.

34                  It is said (p 6) that the gum centre is preferably employed in a pelletized or tablet form. The centre may comprise various substituents including water, an insoluble gum base, a bulking agent, a softener, an artificial sweetener and a flavouring agent. In respect of water, the specification states:

“In accordance with the present invention, the sugarless gum centre should have a very low water content. Preferably, the gum centre will have a water content of less than about 2.5 weight per cent, more preferably less than about 1.5 weight per cent, and most preferably less than about 1.0 weight per cent.”

35                  There is a detailed discussion of constituents of the gum base centre including elastomeric components, softeners, sugarless sweeteners and flavouring agents. Sugarless sweeteners in the gum centre contemplated by the invention are said (p 8) to include sugar alcohols such as sorbitol, mannitol, xylitol, hydrogenated starch hydrolysates, malitol, isomalt and others.

36                  Turning to the coating, the specification states (p 9):

“The substantially hygroscopic sugarless sweetener of the present invention is hydrogenated isomaltulose.

Hydrogenated isomaltulose, also known as isomalt, is a sugar substitute which can be used in place of sucrose, glucose, or similar sugars for the production of food stuffs. Hydrogenated isomaltulose may be classified as a carbohydrate and more specifically, a hydrogenated disaccharide.

Hydrogenated isomaltulose is available from Palatinit GmbH under the trademark name palatinit. According to the manufacturer, the production of hydrogenated isomaltulose involves an enzymatic rearrangement of saccharose into a much more stable compound known as isomaltulose (trademark name palatinose [sic]). Following a purifying crystallization, the isomaltulose is hydrogenated to form the resulting palatinit compound.”

37                  The specification proceeds to describe the production of hydrogenated isomaltulose. Following a purifying crystallization, the isomaltulose is hydrogenated to form the resulting compound. It is said that Palatinit is an equimolecular mixture of the isomers GPM and GPS. (An equimolecular or equimolar mixture means a mixture of equal amounts of each of its component molecules.) The specification continues (emphasis added):

“Palatinit is described [scil by the manufacturer] as an odourless, white, crystalline, nonhygroscopic substance containing about 5 per cent water of crystallization. Hydrogenated isomaltulose is advantageous in a gum hard coating because of its relatively high sweetening power, lack of aftertaste and synergistic capabilities when mixed with other sugar alcohols such as xylitol or sorbitol.

The present invention contemplates a coating comprising asubstantially hygroscopicsugarless sweetener, preferably between about 50 to about 100 weight per cent.

Other more preferable (80%) and most preferable (90%) weight percents of the sweetener are given. There is further discussion (pp 11-14) which includes several references to the coating containing a “substantially hygroscopic sweetener”.

38                  Two examples are given as embodiments of the invention. In the first (p 15) there is a formulation for the gum centre. The moisture content is not specified. The coating syrup is said to contain 73 weight per cent hydrogenated isomaltulose. It is said (p 16) that any standard copper, stainless steel, or side vented pan may be employed. Suppliers of standard pans are named. Any coating system commonly used to perform confectionary coating may be employed. In the second example (p 18) the gum centre is the same as the first example but the coating syrup contains 57.4 per cent by weight sorbitol (not hydrogenated isomaltulose).

39                  Claim 1 is as follows (inserted numbers indicate what I take to be the integers):

“ A hard coated sugarless chewing gum comprising [i] a sugarless chewing gum centre and [ii] a sugarless hard coating comprising hydrogenated isomaltulose, [iii] said gum centre having a water content of 0.001 to less than about 2.5 weight per cent based on the weight of the gum centre.”

40                  The other claims allegedly infringed are as follows.

41                  Claim 2: the gum of claim 1 wherein the hydrogenated isomaltulose comprises greater than about 50 weight per cent of the coating.

42                  Claim 3 is not alleged to have been infringed but was referred to in argument. It is:

“The gum of claim 1 or claim 2, wherein the coating comprises hydrogenated isomaltulose and other coating ingredients, the hygroscopic sweetener comprising greater than 90 weight per cent of the coating.”

43                  Claim 5: the gum of any one of claims 1 to 4 wherein the coating constitutes about 10 to about 75 weight per cent of the coated chewing gum.

44                  Claim 6: the gum of any one of claims 1 to 5, wherein the chewing gum centre has a water content of less than about 1.5 weight per cent.

45                  Claim 7: the gum of any one of claims 1 to 6, wherein the chewing gum centre has a water content of less than about 1.0 weight per cent.

46                  Claim 8: the gum of any one of claims 1 to 7, wherein the gum centre further comprises a softener.

47                  Claim 10: the gum of claims 8 or 9 wherein the softener contains less than about 30 weight per cent water.

48                  Claim 11 is an independent claim. It is for a sugarless hard coated chewing gum comprising a sugarless low moisture chewing gum centre and a sugarless hard coating containing hydrogenated isomaltulose, said gum centre comprising in admixture an insoluble gum base, a bulking agent and a softener, said softener having a water content less than about 30 weight per cent.

49                  Claim 12: the gum of claim 11 wherein the softener comprises glycerine, sorbitol, glycerols, glycerides, lecithin, vegetable oils, aqueous sweetener solutions or combinations thereof.

6. THE PALATINIT INFOPAC

50                  An important document in this case is a marketing manual published by Palatinit GmbH called the Infopac. It is addressed to “Dear Business Associate” and is stated to be “a manual containing basic information about the sugar substitute PALATINIT ®”. It contains chapters on techniques of application in a number of fields including “Baked Goods”, “Milk Products”, “Ice Cream” and, in Section 2.00, “Candies”.

51                  At 1.218 there is a discussion of hyygroscipicity. It is said that Palatinit “can be designated as nonhygroscopic”.

52                  At 2.40 in the section on Candies there is a page with the heading “Chewing Gum”. Under the heading “Recipe” the following appears:

“Recipe:

Base 25.0%

PALATINIT ® 63.2%

Sorbitol, liquid (70%) 5.3%

Glycerin 5.0%

Peppermint oil 1.5%”

Witnesses were able to calculate the moisture content at 1.59%. There is then under the heading “Procedure” a series of steps, including:

“7. Roll out the mass

8. Cut into strips.”

53                  At 2.60 there is a page with the heading “Coated Goods”. Under the heading “Recipe” it is said:

“PALATINIT ® solution without additives; concentration and temperature dependent on the tablet filling e.g., compressed goods: 70%, 80º C solution

chewing candies: 50%, 60º C solution.”

Under the heading “Procedure” there are various directions, including “(p)retreatment (gumming) of the filling, especially necessary for fillings that exhibit a burr after stamping”, “(t)ablet fillings with a sticky surface are sprinkled with PALATINIT ® powder before spraying…to bind the moistness and form an uninterrupted covering”, “(c)overing the rotating tablets by spraying or pouring the PALATINIT ® solution”, “(a)pplication of several layers, depending on the type of coated goods” and “(p)ossibly shining the tablets with bees

wax or sperm oil”.

7. THE SKILLED ADDRESSEE

Q1 Who is the skilled addressee?

54                  The relevant art is the manufacture of panned confectionery. It is not restricted, as Wrigley contended, to the manufacture of chewing gum. From at least 1981, Wrigley’s Australian subsidiary was the only manufacturer of chewing gum in this country. All research and development was done by Wrigley in the United States where strict confidentiality was maintained for recipes and other proprietary information. Wrigley’s case appeared to be that, not only was chewing gum manufacture the relevant art, but that it was the sole repository of that art in Australia. However, broadly speaking, chewing gum requires the same manufacturing techniques as other forms of coated confectionery. You take something sweet and put a coating on it. In particular, panning was at the priority date a well known technique. The Patent refers to “standard” pans of copper or stainless steel and a number of named suppliers of such pans. In 1987 Wrigley’s dominant position in chewing gum manufacture in Australia might have presented formidable commercial barriers to a new entrant, but in terms of manufacturing know-how a person skilled in the manufacture of panned confectionery would understand the information contained in the Patent and be able to apply that information for the manufacture of chewing gum, albeit that some trial and error and workshop improvements would be involved. In any case, to the extent that chewing gum manufacture was a specialized area of confectionery manufacture, it would be reasonable to assume that a hypothetical person skilled in chewing gum manufacture would posses as much knowledge relating to commercially available sugar substitutes and their properties as a general confectioner. This is particularly so in respect of sugar substitutes marketed by a reputable supplier for a wide range of food applications.

55                  The essential attribute of hypothetical skilled person would be skill and experience in the manufacture of panned confectionery. Cadbury submitted that the hypothetical addressee was a team consisting of such a person plus a research and development chemist. While such an additional talent might prove to be useful, it may be that he or she would not be essential. While the Patent refers to chemical topics and terminology, in essence it is concerned with applying a well known manufacturing process using raw materials bought in from commercial suppliers.

8. COMMON GENERAL KNOWLEDGE

56                  Under the 1952 Act it is common general knowledge (CGK) in Australia that is relevant: s 100(1)(e) and (g). CGK involves the use of that which is known or used by those in the relevant trade, the background knowledge which is available to all in the trade in considering the making of new products, or the making of improvements in old products: Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292. Information alleged to be part of common general knowledge must have been not merely accessible but assimilated into the consciousness of the skilled worker: Aktiebolaget Hassle v Alphapharm Pty Limited (2003) 212 CLR 411 at [57], Eli Lilly & Co v Pfizer Overseas Pharmaceuticals [2005] FCA 67 at [102].

Q2 What matters are agreed as forming part of CGK in Australia at the priority date?

57                  The following matters are agreed to have formed part of CGK at the priority date:

(a)    Chewing gums were frequently enclosed with hard coatings;

(b)    There was consumer demand for sugarless hard coating for chewing gum;

(c)    Sorbitol was generally acceptable in foodstuffs because of its availability and low cost.

Q3 Are the matters under the heading “Background of the Invention” acknowledged by the patentee to be part of the CGK?

58                  In Bristol-Myers Squibb Company v F H Faulding & Co Limited (2000) 97 FCR 524 Black CJ and Lehane J, in the context of discussing whether the threshold requirement of inventiveness appeared on the face of the specification, said (at [30]):

“Some elaboration, however, is required in relation to what the specification reveals as ‘known’. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court – or the Commissioner – would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of the ‘common general knowledge as it existed in the patent area’. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened in both [Commissioner of Patents v] Microcell [Limited (1959) 102 CLR 232] and in [NV] Philips [Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655]. If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That is again, in our respectful view, consistent with the approach taken in Microcell.”

Earlier (at [29]) their Honours had referred to the High Court in Microcell as “finding … that what was apparent on the face of the specification was reinforced by proof that particular information had passed into common general knowledge, in the relevant field, in Australia”.

59                  It follows that what is asserted on the face of the specification, without qualification, to be “Background of the Invention” can be taken as an admission that what appears therein was part of CGK in Australia at the priority date. This at least is CGK, although evidence may reveal more. The very heading is telling the reader that what appears in that section is known and commonplace in the art. It is setting the stage, so to speak, for the disclosure of the claimed invention, which, by contrast, will reveal something promised to be new and inventive.

60                  Therefore I find that the following additional matters also formed part of CGK:

(d)               Hard coatings for chewing gum could be made with sorbitol or other sugarless sweeteners such as xylitol, mannitol and hydrogenated starch hydrolysates;

(e)                Sorbitol coating solutions were difficult to employ in the coating process;

(f)                 Gums coated with sorbitol were usually rough, contained coloured spots or blotches, were waxy and lacked crunchiness;

(g)                One cause of these deficiencies and limitations was the hygroscopicity of sorbitol;

(h)                Because of the deficiencies and limitations of sorbitol there was a market need for a sugarless gum with a hard coating which possessed the appearance, taste, and mouth feel of a sugar coating and which, for a manufacturer, would be high in stability, easy to apply and economical;

61                  In addition, in that part of the specification under the heading “Detailed Description of the Preferred Embodiments” there is reference to Palatinit in terms which convey that it was already known that, “(a)ccording to the manufacturer”:

(i)                  Palatinit was a sugar substitute which could be used in place of sucrose, glucose, or similar sugars for the production of foodstuffs;

(j)                 Palatinit was a nonhygroscopic substance;

(k)               Palatinit was advantageous in a gum hard coating because of its relatively high sweetening power, lack of aftertaste and synergistic capabilities when mixed with other sugar alcohols such as xylitol or sorbitol.

62                  In September and November 1986 Wrigley’s research and development department in Chicago conducted tests of Palatinit for use as a chewing gum coating in Australia. Mr William Chalker, employed at that time by Wrigley Australia as Quality Assurance Manager, accepted that somebody in the company’s upper management level in Australia would have been aware of these tests. The tests themselves, being confidential to Wrigley, would not be part of CGK in Australia. However this evidence of testing in the United States for possible use in Australia suggests that Palatinit, which had been marketed for some years by a prominent German firm, was part of the world confectionary marketing scene, at least in advanced industrial countries such as Australia.

Q4 Was the information in the Infopac part of CGK?

63                  Mr Peter Kissane at the relevant time was working as Manager, Pharmaceutical Development Department at Nicholas Kiwi in Melbourne. In the course of working on a “soft chew” antacid product (not confectionery), in December 1986 Mr Peter Wilson (since deceased), a chemist who worked under Mr Kissane, received 1 kg of Palatinit and a copy of the Infopac by airmail from Palatinit GmbH. A larger sample, 20-25 kg, was sent by sea freight. The accompanying letter said, amongst other things, that Palatinit handled well in most processes and was very low in hygroscopicity.

64                  The approach to Palatinit GmbH was initiated by Mr Kissane’s predecessor Mr Kaufman who had become the technical director of Nicholas Kiwi’s plant in Geihard, France. Mr Kaufman had suggested that Mr Wilson write to Palatinit GmbH.

65                  Mr Bernd Andrzejeski has worked as a confectioner since completing his apprenticeship in Germany in 1956. From 1972 to 1986 he worked for Red Tulip Chocolates, a large manufacturer of confectionery in Victoria. When Cadbury purchased Red Tulip in 1986 Mr Andrzejeski left and since then has conducted a confectionery consultancy business.

66                  Mr Andrzejeski became aware of Isomalt (he uses this term rather than Palatinit and is not familiar with the term hydrogenated isomaltulose) in about early 1985 when Red Tulip was investigating sugar replacers. He read about it “very generally” in trade magazines at the time. In late 1985 or early 1986 “some promotional information” from Palatinit GmbH was circulated to him and his colleagues. Red Tulip’s policy was to distribute information about new confectionery developments to all of its senior confectioners. He remembers that this promotional information set out the properties of Isomalt, as well as products in which Isomalt had been tried by Palatinit GmbH and mentioned the use of Isomalt in chewing gum and as a coating for soft confections. Having regards to what he was told about the properties of Isomalt, “both applications made sense to me”.

67                  Mr Kissane’s evidence is perhaps not of great weight on this issue since his encounter with the Infopac rather depends on his introduction to it by Mr Kaufamn, who was then in France. However, as to Mr Andrzejeski, it seems probable that the “promotional information” he recalls was the Infopac. Certainly the Infopac answers the description of promotional information. Given that it was a detailed technical document which contains the kind of information of which Mr Andrzejeski speaks, it seems unlikely that Palatinit GmbH sent Red Tulip some other document. Since Mr Andrzejeski left Red Tulip in 1986, the publication must have been before the priority date.

68                  Red Tulip was a substantial Australian confectionery manufacturer. It is reasonable to take its knowledge of new products and developments as a fair sample of the state of knowledge in the industry at the time. Moreover, there was common awareness in the industry of the need for sugar substitutes which would be acceptable to consumers and feasible for use in manufacture. All the more reason therefore that a document like the Infopac would have been sought and its contents read and assimilated.

69                  I conclude that the information in the Infopac was part of CGK in Australia at the priority date.

Q5 To what extent was knowledge of sorbitol and its properties included in CGK?

70                  Quite apart from admissions in the specification, and the information in the Infopac, there was evidence of substantial awareness of sorbitol and its properties by the priority date.

71                  Sorbitol is a very old sugar replacer. Mr Andrzejeski first used it at Red Tulip in 1969 in chocolates designed for diabetics and chocolates with liquid centres. He used it extensively when Red Tulip was investigating new sugarless product lines in about 1985.

72                  Sorbitol was known to be hygroscopic. It would cause products on the shelves of shops to deteriorate unless the products were carefully packaged. Mr Andrzejeski deposed:

“I was attempting to use (Sorbitol) to form a hard confectionery coating. Despite my many years of panning experience, I found it almost impossible to create a consistent smooth coating. The coating’s hygroscopicity made it absorb great amounts of moisture from the air, and when I tried to apply colours to the coating, the Sorbitol would be so absorbent that I could not ‘paint’ the colours on properly. Additionally, when the goods were coated by panning them in Sorbitol solution, the results were blotchy, mottled and inconsistent because Sorbitol tended to clump together after it dried, rather than forming a smooth, flat finish.

After my experiences with Sorbitol, I formed the view that it could not be used on a large scale to make smooth, attractive confection coatings on a consistent basis. This was particularly so in Australia, where humidity is higher compared to Europe and much of the United States, and so products which are relatively hygroscopic are even more problematic.

By 4 May 1987, I had found that the only way to form a good coating for a soft confection using Sorbitol was:

·        To keep the water content of the centre so low that there was hardly any water free to migrate to the coating; and

·        To package the product in such a way that a moisture barrier was created between the product and the outside environment, or else the coating would quickly absorb too much water from the air outside and become unstable.”

Q6 To what extent was knowledge of Palatinit and its properties included in CGK?

73                  Mr Andrzejeski had substantial awareness of Palatinit. His colleagues at Red Tulip obtained a trial supply with recipes and information as to creating a hard coating for chocolate products. Understandably enough, it was typical for suppliers of raw ingredients to help manufacturers use their ingredients.

74                  Based on the information supplied by the manufacturer, and recommendations from his colleagues, Mr Andrzejeski trialled Palatinit in chocolate products, and particularly in a product called Bunties (something like Smarties). He found Palatinit formed a “particularly effective” coating which was “exactly like a sugar coating; it was smooth, crunchy and consistent, and it responded well to colouring agents”. The only problem was that in large quantities Palatinit could have a laxative effect, which made it unsuitable for a product directed at children. In any event, Red Tulip did not proceed to market the Bunties product.

75                  Based on his trials and on the literature he read, Mr Andrzejeski found that Palatinit was an excellent sugar replacer. It was the sugarless sweetener most similar to sugar. In its crystalline form it looked and felt like sugar and could be panned in exactly the same way as sugar. It was very low in kilojoules, did not cause teeth cavities and, being chemically stable, did not react with other ingredients. It was “very non-hygroscopic”, a characteristic which gave it “excellent properties in a coating application”. This latter feature was Palatinit’s “most popular property with confectioners”. All the previous replacers had been very hygroscopic and so were very difficult to use in sugar-free products which needed to be coated.

76                  I conclude that knowledge of Palatinit and its properties mentioned above formed part of CGK by the priority date.

9. CONSTRUCTION

77                  The principles which the authorities have established for the construction of patents are not in dispute. They are conveniently summarised by Hely J in Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [70] et seq.

Q7 What is the meaning of the term “hydrogenated isomaltulose” in claim 1?

78                  Wrigley’s case is that the term refers to a product of a process, namely the hydrogenation of isomaltulose. It need not be produced in the same way as Palatinit GmbH chose to produce its Palatinit/Isomalt ST product. Thus the term is not confined to a product with a GPS:GPM ratio of 1:1.

79                  Cadbury contends that the term refers to the Palatinit GmbH product.

80                  Cadbury’s construction is to be preferred. As at May 1987 the term “hydrogenated isomaltulose” in isolation would probably be taken as referring to isomaltulose, a known substance, which has been subjected to hydrogenation, a known process. That process could, in theory at least, be performed in different ways, for example by the use of different catalysts, with the resultant products having different properties. Mr Macaw QC for Cadbury conceded as much. However, in the context of the Patent and the surrounding circumstances, including the fact that Palatinit was the only commercially available hydrogenated isomaltulose, Cadbury’s more restricted meaning emerges clearly.

81                  The specification (p 9) tells the reader that the “substantially hygroscopic (sic) sweetener of the present invention is hydrogenated isomaltulose”. This substance “also known as isomalt, is a sugar substitute…”. It is said that hydrogenated isomaltulose “is available from Palatinit GmbH under the trademark name palatinit”. The method of production “(a)ccording to the manufacturer” is described. “Specifically” the “equimolecular mixture” of “palatinit” is identified. The characteristics of Palatinit in terms of colour, crystallinity, hygroscopicity and water of crystallization are given. The specification then immediately moves to the advantages of a hard coating of “hydrogenated isomaltulose”. The syntax shows that “palatinit” and “hydrogenated isomaltulose” are used interchangeably.

82                  The specification does not convey the meaning that any substance answering the description of hydrogenated isomaltulose will do, and one possible supplier is Palatinit GmbH. Rather the specification is identifying as the substance of the invention the particular product of that firm, explaining its makeup and characteristics and its advantages for the task.

83                  A skilled reader would understand that the specification of the equimolecular mixture of GPS and GPM was important because a different ratio could have quite a significant effect on the properties of the product. Wrigley’s witness Mr Warren Baines accepted this.

84                  While the text of the specification and the surrounding circumstances provide the most important guide to construction in the present case, Cadbury’s argument also gains some support from evidence of usage. Although this is not all the one way, some striking evidence of usage was that of Wrigley itself. In opposition to an Australian patent application by Warner-Lambert in 1992 Mr Anthony O’Donnell of Wrigley deposed:

“In my experience Palatinit and hydrogenated isomaltulose are synonymous”

Mr O’Donnell was Operations Manager for Wrigley in Australia from 1976 to 1985 and later became Manufacturing Manager – Asia Pacific.

Q8 What is the meaning of the term “the hygroscopic sweetener” in claim 3?

85                  The parties agreed that this term referred to hydrogenated isomaltulose.

Q9 What is the meaning of the term “low moisture gum centre” in claim 11?

86                  Reading the Patent as a whole I think this means a gum centre with a moisture content by weight of less than about 2.5 per cent. This is the highest in the descending figures for water content (p 6) in which the lower the figure, the more desirable it is said to be.

10. MANNER OF MANUFACTURE

87                  Section 100(1)(d) of the 1952 Act provided that a patent might be revoked on the ground “that the invention, so far as claimed in any claim of the complete specification…is not an invention within the meaning of the Act”. Section 6 defined “invention” to mean “…any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies”, and to include “an alleged invention”.

88                  The ground in s 100(1)(d) must be established on the face of the specification: Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited (1998) 194 CLR 171 at [40].

Q10 Does the invention claimed involve merely using a known substance (hydrogenated isomaltulose) for a purpose for which its known properties made it suitable?

89                  In other words, it is necessary to ask whether the specification discloses an “invention” as that concept is expounded in Microcell at 249.

90                  The specification is speaking (at p 9) of a known product produced by a named manufacturer. That product is said to have properties which would, to the skilled reader, make the substance suitable for use in a coating of chewing gum. These properties are not put forward as some discovery of the patentee; it is what the manufacturer says about its product (“(a)ccording to the manufacturer”). They are “admitted” to be “known” properties in the Microcell sense. The fact, if it be a fact, that nobody had used Palatinit for sugarless chewing gum coatings before does not necessarily mean that to so use it involved an inventive step.

91                  In Microcell at 248 the High Court referred with approval to Re L & G’s Application (1940) 58 RPC 21 where the court had noted the argument of Mr Oates, the Superintending Examiner in the Patents Office. Mr Oates had said that at the time stainless steel was invented the office had “a flood of applications for [patents for] the manufacture of stainless steel of all sorts of articles”. Mr Oates submitted it “would be almost in restraint of trade if a man could come along and say: ‘Because no one else has mentioned such and such an article I am going to make it of stainless steel and get a patent for it.’” Their Honours said:

“The example of stainless steel seems very apposite to the present case. If stainless steel and its properties were known, and many kinds of articles had been made of it, it would not be possible for a man to claim a monopoly for making kitchen sinks of stainless steel merely because he was the first man who ever thought of doing this.”

Shortly afterwards their Honours (at 249) made the well known statement:

“Many valid patents are for new uses of old things. But it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before.”

92                  The present case is an even weaker one. Palatinit not only had known properties which make it suitable as a substitute for sugar; it was marketed as such. That was its raison d’être. Confectionery, including chewing gum, is usually sweet. Sugar is the traditional sweetener. If you want a substitute for sugar, it hardly seems inventive to use something which is sold for that very purpose.

93                  Further, it is apparent that having a “very low water content” (p 6) has no relevance to the introduction of a nonhygroscopic sweetener in the coating to overcome the problems created by the hygroscopicity of earlier sugarless sweeteners such as sorbitol. If there is a coating which does not readily take in water, that points away from a need for some special quality of low water transmissibility in the gum centre.

Q11 Is there a true combination of integers or merely a collocation?

94                  The last mentioned aspect provides another reason why there is no invention shown. This purports to be a combination patent; a particular kind of coating combined with a centre having a particular characteristic. With a combination patent, the integers, whether new or old or partly old and partly new, are “…combined so that they are not a mere collocation of separate parts, but interact to make up a new thing”: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 611, Ramset at [12]. In the present case there is, on the face of the specification, no synergy, or working interrelationship, suggested between the two integers. Sabef SpA v MFI Furniture Centres Pty Ltd [2005] RPC 10 at [17], [24]-[27].

11. obviousness

95                  Section 100(1)(e) of the 1952 Act provided that a patent might be revoked on the ground that the invention “was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date…”.

96                  In Alphapharm (at [53]) the majority of the High Court reaffirmed the appropriateness of the test encapsulated in the “Cripps question”. Adopted to the present case the question is:

Q12 Would the notional skilled but non-inventive worker (or team) at the priority date, in all the circumstances, which include a knowledge of the relevant prior art, directly be led as a matter of course to try making a sugarless chewing gum with hydrogenated isomaltulose in the hard coating and a water content in the gum centre of less than 2.5 per cent by weight in the expectation that it might well produce a useful alternative to, or a better product than, other hard coated sugarless gums such as those made with sorbitol?

97                  I have found that the matters (a) to (k) identified in [57], [60] and [61] above formed part of CGK in Australia at the priority date, as did the information in the Infopac (Q4) and knowledge of sorbitol (Q5) and Palatinit (Q6) and their respective properties.

98                  Mr Andrzejeski deposed that in the light of his knowledge of Palatinit and his experience with it in the Bunties project:

“... it would certainly have been a natural option for me to select this ingredient over Sorbitol in making a hard coated confectionery going forward. It follows that I would also have immediately considered Isomalt [ie Palatinit] as a suitable ingredient for the coating of a hard coated chewing gum.”

True it is, as Mr Caine SC for Wrigley pointed out, Mr Andrzejeski had had the actual hands on experience with Palatinit. This was something individual to him. However, the fact remains that before the priority date a relevantly skilled worker in Australia was not only aware of Palatinit as a sugar substitute but obtained it and applied it to a confectionery panning task analogous to that which would be involved in the manufacture of hard coated sugarless chewing gum. I conclude that the notional skilled worker or team relevant for the present case faced with the task of formulating a hard coated sugarless chewing gum would have proceeded in the same way.

99                  Once one accepts, as I do, that the Infopac became part of CGK in Australia, the conclusion on obviousness becomes even more compelling. Wrigley’s witness Mr William Chalker worked for the company in Australia between 1981 and 1989. He was aware “in a general sense” of Isomalt in 1987. In 1989 the Australian distributor of Palatinit provided him with “a booklet” produced by Palatinit GmbH “containing detailed technical information about isomalt”. He accepted in cross-examination that this was the Infopac. He deposed to his reaction at the time:

“It was clear to me from this initial review that isomalt had the potential to be an ingredient in the sugar-free coated pellet application. …Some of this Palatinit literature was of a good technical nature and indicated significant potential for the use of isomalt in sugar-free pellet formulations.”

Although after the priority date, this speaks strongly of the effect that the Infopac would have had on a skilled person at or before that time.

Q13 Is the gum centre moisture content no more than a known desirable characteristic of a coated chewing gum?

100               Mr Andrzejeski deposed that from a confectionery development perspective, control of moisture within the product is “fundamental”. Once the confectioner realises, by trial and error, that a product (or part of it) is either absorbing or shedding too much water, the confectioner must work with the recipe to control the water migration. Steps that could be taken (both as at the priority date and the present time) included:

·        Selecting ingredients which were non-hygroscopic;

·        If the product was absorbing too much water, selecting alternative ingredients with low water content.

These techniques, Mr Andrzejeski said, were “a matter of commonsense, and have always been very well known to confectioners”.

101               Mr Chalker agreed in cross-examination that even with sugar based coated confectionary:

“You are always constantly trying to control the product to ensure that you have got a reduced moisture level anyway. That is in standard sugar based confectionery. You are always trying to get (water content) to a reasonably low level. It is the normal part of coating procedure. If you end up with too much moisture in your product, you are going to end up with grey gum.”

He was then asked:

“You apply that normal procedure to a gum coated with hydrogenated isomaltulose. Is that the position?”

He replied:

“Well, the bulk sugar sweeteners have separate issues. But, yes, that is what you apply there.”

So even with non- or low- hygroscopic sweeteners like sugar or hydrogenated isomaltuose (the latter indeed being less hygroscopic than the former), a confectioner would seek a low water content in the gum centre. There seems to be no rational significance in the figure of 2.5 per cent rather than any other figure. No empirical evidence is advanced in the specification for that particular figure The choice appears to be an arbitrary one.

102               The conclusions on manner of manufacture and obviousness rather overlap. The alleged invention discloses no more than a commercial product, used for something for which its known (and advertised) properties make it suitable, the other integer of low water content being something known in the trade to be essential and which in any case has no suggested synergy or interaction with the first integer.

12. NOVELTY

103               Section 100(1)(g) of the 1952 Act provided that a patent might be revoked on the ground that the invention “was not novel in Australia on the priority date”.

104               The authorities on novelty are comprehensively discussed by Black CJ and Lehane J in Bristol-Myers Squibb Company v F H Faulding & Co Limited (2000) 97 FCR 524 at [61]-[67]. For present purposes it is sufficient to say that the question is whether the alleged anticipation would, if the patent were valid, constitute an infringement (the “reverse infringement” test). Where the alleged anticipation takes the form of a publication (a “paper anticipation”), the hypothetical infringement does not arise because of the publication per se; rather one asks whether the publication teaches, in the sense of directing, recommending or suggesting, the invention under consideration. As the Privy Council pointed out in Canadian General Electric Co Limited v Fada Radio Limited [1930] AC 97 at 104,

“...it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specifications contain clear and unmistakable directions to use it.”

105               The only anticipation relied on is the Infopac.

Q14 Was the Infopac publicly available in Australia before the priority date?

106               For the reasons given above (Q 4), yes. Moreover, in its opposition to the Warner-Lambert Australian patent application Wrigley asserted that the Infopac was available in Australia before 13 December 1987.

Q15 Does the Infopac contain sufficient disclosure to anticipate the claimed invention?

107               The Infopac gives recipes involving Palatinit for a “Chewing Gum” (2.40) and for “Coated Goods” (2.60). Since both appear in Chapter 2 entitled “Candies”, the natural reading is that among the goods contemplated for coating would be chewing gum. Indeed, in the “Coated Goods” recipes there is specific reference to “chewing candies”. The procedures include reference to “(c)oating the rotating tablets by spraying or pouring the PALATINIT® solution”, “(d)rying the tablets with warm, dry air” and “(a)pplication of several layers, depending on the type of coated goods”, all of which suggests the panning process used in the manufacture of coated chewing gum.

108               The ingredients and their proportions in the Infopac “Chewing Gum” recipe are well within the preferred ranges of the Patent specification.

109               The reference in that recipe to rolling out the mass and cutting into strips is, on the evidence, an apt description of the production of gum centres for coated gums as well as stick gums. In any case, the Patent specification merely says that a hard coated gum should be preferably in pellet or tablet form; a strip or tab gum could also be coated.

110               In opposition to a European patent application by Warner-Lambert Mr Gordon McGrew of Wrigley said in relation to the Infopac:

“The fact that Palatinit is suitable for many purposes and that many specific applications are taught does not detract from the teachings that are presented with respect to chewing gum and coated goods. … I would regard the Infopac and its confectionery formulation to be a public teaching and an appropriate form of prior art for the purposes of the subject patent.

…

…Patentee characterises the Infopac as a basketfull of suggestions. It is indeed a basket filled with suggestions. One of the specific suggestions is covered by the patentee’s claims.”

111               There can be no doubt that the Infopac has the necessary quality of encouragement to the reader involved in the Faulding formula of “directing, recommending or suggesting”. This was not an arcane academic paper, but a technical document addressed by the manufacturer to potential purchasers of Palatinit. In the words of Mr Bodo Fritzching, the Area Manager Technical Services for Palatinit GmbH, the Infopac was the firm’s “main marketing document” which it sought to disseminate as widely as possible to generate interest in the product.

13. SECTION 40

112               Section 40(1)(a) of the 1952 Act provided that a complete specification “shall fully describe the invention, including the best method of performing the invention which is known to the applicant”. By par (b), the complete specification “shall end with a claim or claims defining the invention". Sub-section (2) provides that the claims “shall be clear and succinct and shall be fairly based on the matter described in the specification”.

113               Section 40 of the 1952 Act is not relevantly different in substance from the same numbered section in the 1990 Act. The latter provision has recently been the subject of a comprehensive review by the High Court in Lockwood Security Products Pty Limited v Doric Products Pty limited (2004) 217 CLR 274. The joint judgment supports the following propositions:

·           Section 40 issues must be considered separately as between themselves and distinctly from other grounds of invalidity such as obviousness and want of novelty (at [43]-[49]);

·           “the invention” is the embodiment which is described, and around which the claims are drawn (at [53]); it is not just the preferred embodiment (at [77]);

·           the inquiry is into what the body of the specification read as a whole discloses or describes as the invention (at [69], [71], [77], [99]);

·           for the purposes of s 40(1)(a) it is necessary to take into account the whole of the complete specification, both the body of the specification and the claims; in assessing fair basing (s 40(2)) the patent must be split between claims and the body of the specification to see whether the former are fairly based on the latter;

·           in assessing whether there is full description or fair basing, one only considers what is said about the invention in the specification, except insofar as common general knowledge casts light on questions of construction (at [72]);

·           the question on fair basing is whether “the claim as expressed travels beyond the matter disclosed in the specification” (at [57]).

114               In the present case there was evidence of the history of the Patent although, as Wrigley conceded, the skilled reader is not to be credited with a knowledge of it.

115               Hydrogenated isomaltulose appears in the first priority document. Wrigley accepts that the document made plain that the inventors did not consider the hygroscopicity of that substance to be relevant to the alleged invention. The concept of hygroscopicity was not introduced until the second priority document when sorbitol and other substantially hygroscopic sweeteners were claimed. In that second priority document the view that the sweetener of the invention should have an EMC greater than about 15 per cent and more preferably greater than about 33 per cent (at about 78 per cent relative humidity and about 20ºC) is a reference to sorbitol and other substantially hygroscopic sweeteners which were claimed in the second document.

116               Following further amendments made on 15 April 1991 the claims to sorbitol and other substantially hygroscopic sweeteners were deleted. Although the claims were confined by amendment to a sugarless sweetener which was hydrogenated isomaltulose, references in the body of the specification to the hygroscopicity of sorbitol and other substantially hygroscopic sweeteners were not removed.

Q16 What does the body of the specification disclose or describe as the invention?

117               The term “substantially hygroscopic” appears on eight occasions in the body of the specification, as appears in the summary in Pt 5 above. The term is specifically defined in the specification (p 6) to include a compound having an EMC greater than about 7 per cent at about 78 per cent relative humidity and about 20ºC. “Preferably” the substantially hygroscopic sweetener of the invention has an EMC greater than about 15 per cent and “more preferably” greater than about 33 per cent at the same humidity and temperature. The latter is said to be the EMC of sorbitol. Hydrogenated isomaltulose is said (p 5) to have an EMC greater than that of xylitol.

118               Read as a whole the body of the specification describes or discloses the invention as a sugarless hard coated chewing gum consisting of a coating which comprises or includes the substantially hygroscopic compound hydrogenated isomaltulose that is marketed as Palatinit and a centre with a low moisture content.

Q17 Do the claims of the Patent define the invention?

119               Yes. The undoubted fact, on the evidence, that Palatinit is non hygroscopic or of very low hygroscopicity, is not relevant for s 40 issues, as Lockwood makes clear. The claims define the invention, in the sense of marking out clearly the “forbidden territory” claimed by the patentee.

120               I do not accept Cadbury’s further argument that the claims do not define the invention because it is not clear whether hydrogenated isomaltulose is hygroscopic as mentioned in claim 3, or not. For the reasons following, on a proper construction the compound of claims 1 and 2 is hydrogenated isomaltulose which is said (albeit wrongly) to be hygroscopic. Claim 3 refers to the same thing.

121               Cadbury further complained of alleged lack of clarity in the term “low moisture chewing gum centre” in claim 11. But in the light of the specification as a whole that means clearly enough a water content of less than 2.5 per cent by weight, that being the highest of the figures mentioned in the body of the specification. Nor is there any failure to define the invention by reason of there being no description of any test for ascertaining water content. The invention is for sugarless chewing gum, not for a method of testing water content.

Q18 Are the claims of the Patent fairly based?

122               Cadbury argues that the claims are not fairly based because they are different from the matter in the specification that discusses the invention. This is true to the extent that claims 1 and 2 do not expressly say anything about hygroscopicity, whether substantial or otherwise. However, I do not think this amounts to “travelling beyond” the matter in the specification. What is disclosed in the body of the specification is an invention which includes a particular substance said to be substantially hygroscopic. The claims made involve the same substance. I do not read the claims as being made for an invention involving a substance called hydrogenated isomaltulose, whether or not it is substantially hygroscopic. This latter qualifying or limiting characteristic or property is not abandoned in the claims so as to make the substance of the claims wider than the substance of the specification.

123               It is not necessary to consider other arguments of Cadbury on fair basing which were predicated on alternative meanings of the term “hydrogenated isomaltulose”.

14. FALSE SUGGESTION

124               Section 100(1)(k) of the 1952 provided as a ground of revocation that the patent “was obtained on a false suggestion or representation”. The test is whether the suggestion or representation materially contributed to the Commissioner’s decision to grant the permit. It is not necessary to show that “but for” the suggestion or representation no grant would have been made: Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 19 IPR 275 at 279-280, 296.

125               If a representation was made which was objectively likely to contribute to a decision to grant a patent, and a patent is granted, it may be inferred that the representation in fact contributed to that decision; cf the common law position on inducement in the context of fraud and misrepresentation discussed in Gould v Vaggelas (1985) 157 CLR 215 at 219, 236, 250 and 262.

Q19 Did the specification contain representations that hydrogenated isomaltulose was substantially hygroscopic?

126               Yes, in the eight instances referred to in the summary of the Patent in Pt 5 above.

Q20 If yes to Q19, was that representation false?

127               As I understand it, Wrigley conceded that hydrogenated isomaltulose is not substantially hygroscopic. In any case, the evidence is overwhelming that it is not. Moreover, Wrigley at all material times knew this was the case. In February 1986 Palatinit GmbH sent to Wrigley’s German subsidiary three copies of the Infopac (one in German and two in English) along with samples of sweets and 1 kg of Palatinit. The Infopac of course refers to Palatinit as “nonhygroscopic”. In a covering letter (Ex 7) Palatinit expressed the view that its product was “particularly suitable for the manufacture of sugar free chewing gums and coated gum products” for a number of reasons, including:

“Palatinit has only a very low hygroscopicity…”

128               In an inter-office memo dated 27 March 1986 (Ex 3) from V J Kures to M A Reed (both named as inventors, but neither of whom was called as a witness) it was said that the literature indicated several advantages over current sugarless coating ingredients (sorbitol and xylitol) including:

“Palatinit is less hygroscopic…”

129               In a letter dated 27 August 1986 to a German authority requesting regulatory approval Wrigley’s German subsidiary there was attached a document under the heading of Wrigley US asserting as an advantage of Palatinit in sugar- free gum

“Low hygroscopicity – provides for more stability in processing; extends shelf life.”

130               The inventor M A Reed made a statutory declaration dated 9 October 1992 in opposition to the Australian patent application by Warner-Lambert in which he said:

“In my opinion, the limitation of isomalt (Palatinit) being the non-hygroscopic bulking agent merely reflects the use of Palatinit for the use that was intended by the manufacturer. Palatinit was created to be a bulk sweetener (sugar replacement) with low-hygroscopicity and other benefits.”

Q21 Did the specification contain the representation that the inventor believed “that a low water gum centre, when combined with a coating syrup comprising [hydrogenated isomaltulose] yields a superior hard coating because the centre will not be a water donor to the completed coating”.

131               Yes; see Pt 5 above.

Q22 If yes to Q21, was that representation false?

132               Cadbury contends that this representation was false “because the inventors knew that hydrogenated isomaltulose was of very low hygroscopicity and must therefore have known that the theory advanced was inapplicable to an hydrogenated isomaltulose coating”. I am not persuaded as to this. As has been mentioned, the obvious desirability of having a centre which donates as little water as possible creates problems of another kind for Wrigley. But this statement on its face is not false.

Q23 If yes to any of Q20 or Q22 was any such representation material to the grant of the patent?

133               Yes, because they relate to what is said to be the problem experienced with substantially hygroscopic sweeteners and to the solution disclosed, the use of low moisture centres. Hygroscopicity of existing and proposed sugar substitutes was, objectively considered, something relevant to this invention and likely to be taken into account by the Commissioner. Obviously the drafters of the specification thought so; why else so many references to it? The inference can therefore be drawn that this in fact happened.

15. UTILITY

134               Section 100(1)(h) of the 1952 Act provided for revocation where the invention, so far as claimed in any claim of the complete specification, is not useful. This means that the invention does not attain the result promised for it by the patentee: Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 at 143.

135               The promise of the invention is for a “sugarless hard coating for a sugarless chewing gum which compares to the appearance, mouth feel, stability, and ease of application of sugar hard coating”. The hard coating of the invention will be “crunchier, smoother, and not mottled in appearance [compared with those made with existing sugarless sweeteners]…[and] very close in appearance, taste and mouthful to sugar hard coated gums”.

Q24 Will a coating containing less than about 50 per cent weight of hydrogenated isomaltulose be sticky, waxy and of poor appearance?

136               Internal documents recording testing by Wrigley in March and April 1986 establish this to be the case.

Q25 If yes to Q24, are all claims except claims 2, 3 and 15 bad for inutility?

137               It seems to be the case that for the invention to work as promised the hydrogenated isomaltulose in the coating has to be at least 50 per cent by weight. Accordingly, it is said that those claims which do not specify that minimum weight are bad for inutility.

138               The principle is that all within the scope of the claim must be useful if the claim is not to fail for inutility. A claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid: Norton and Gregory Limited v Jacobs (1937) 54 RPC 271 at 276, Welch Perrin & Co Pty Limited v Worrel (1961) 106 CLR 588 at 601, Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 337. Menzies J pointed out in Welch Perrin (at 602) that this does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning. However, in the present case the claims read in the light of the specification as a whole distinguish between those claims which specify a particular amount of hydrogenated isomaltulose (2, 3 and 15) and the remainder, which do not. To imply a minimum of 50 per cent in the latter claims would be, in the words of Lord Greene MR in Norton (at 276) not to construe the specification but to amend it. I therefore uphold this ground.

Q26 Do the claims of the invention include a hard coating which comprises substantially entirely an Isomalt ST coating?

139               Yes. It will be remembered that Palatinit is Isomalt ST. All claims allow for the coating to be made entirely of this substance.

Q27 If yes to Q26 will such a coating have a poor crunch and poor shelf life?

140               There is evidence of this in results of internal Wrigley testing.

Q28 If yes to Q27 are the claims bad for inutility?

141               For the foregoing reasons, yes.

16. INFRINGEMENT

142               Although I have found that the Patent is invalid on a number of grounds, it is desirable that I make findings on infringement issues in case an appellate court takes a different view.

143               There is no dispute that Cadbury imported and sold its gums in Australia. There is dispute as to whether Wrigley has established by its evidence of testing that the Cadbury gums contained the two integers of low water content and hydrogenated isomaltulose (in its Palatinit embodiment) in the coating.

Q29 Do the Cadbury gums contain a gum centre which has a water content as claimed?

144               Mr Cameron Nix of Amdel Limited tested samples of the Cadbury gums in December 2003 and May 2004. In the course of the trial it was accepted that the first tests were not reliable because the solvent used did not dissolve the gum centres.

145               In the second tests the correct solvent was used. Cadbury witnesses however made other criticisms such as alleged insufficiency of samples and “poor pipette technique”. These criticisms do not make out a case for rejecting the tests as establishing the water content of the Cadbury gums on the balance of probabilities.

146               Two types of Cadbury gums, “Power Bright” and “Mint Power”, were tested. The average water content for each sample of Power Bright ranged from 2.21 – 2.52 per cent weight of water of the gum centre. The average was 2.36 per cent with a standard deviation of 0.219. Cadbury submits that the true figure could with equal likelihood be anywhere between 2.141 and 2.579. This seems correct. Accordingly infringement of this integer in the case of Power Bright gums has not been made out.

147               In the case of Mint Power, the average was 2.38 per cent with a standard deviation of 0.28. Although it was said earlier tests of Wrigley in June 2003 showed an average result of 2.57 per cent, I am satisfied that the Amdel tests would establish infringement of this integer in the case of Mint Power gums.

Q30 Do the Cadbury gums contain a hard coating containing hydrogenated isomaltulose as claimed?

148               The hard coating of the Cadbury gums consists of Isomalt GS. This is a new substance resulting from a further fractional crystallisation after the production of Isomalt ST. Isomalt GS consists of a mixture of GPM and GPS in the ratio 2:1. This is not the hydrogenated isomaltulose (ie Palatinit) of the Patent. Thus infringement is not made out.

17. SUMMARY OF FINDINGS

149               The Patent claims a monopoly for an alleged invention consisting of sugarless coated chewing gum, the coating of which is made with a commercially available product called Palatinit which is manufactured and marketed as a sugar substitute for use in, amongst other things, chewing gum. This is not an invention. The second integer of the alleged invention is the use of a low moisture content base. This is no more than a desirable feature of any coated chewing gum. Moreover, there is no particular synergy or interrelationship suggested between the two integers of the alleged invention.

150               The alleged invention is obvious. Further, it is not novel, having been anticipated by information and directions contained in a marketing document published by the manufacturer of Palatinit.

151               The Patent does satisfy the requirements of s 40 of the 1952 Act.

152               The grant of the Patent was obtained by false suggestions or representations.

153               The claims of the Patent, or alternatively all claims except claims 2, 3 and 15, are bad for inutility.

154               If the Patent is valid, it has not been established that the Cadbury gums infringed it.

18. ORDERS

155               The parties are directed to bring in minutes of proposed orders to give effect to these reasons. The hearing is adjourned to a date to be fixed.

Associate:

Dated: 28 July 2005