FEDERAL COURT OF AUSTRALIA

 

Memcor Australia Pty Ltd v G E Betzdearborn Canada Company [2009] FCA 507

INTELLECTUAL PROPERTY – patents – divisional application – whether divisional application within the scope of the claims in the parent application

Held: appeal dismissed

Patents Act 1990 (Cth)

Patents Regulations 1991 (Cth)

Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805

E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392; [2003] FCA 291

Electric and Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221

F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56; [2000] FCA 283

Fellows v Thomas William Lench Ltd (1917) 34 RPC 45

Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239

Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890

Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106; [1999] FCA 742

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001] 207 CLR 1; [2001] HCA 8

Kinabulu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178

Lewis v Hall (2005) 68 IPR 89; [2005] FCAFC 251

PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18

Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 225 ALR 416; [2005] FCAFC 224

Raleigh Cycle Co Ltd v H Miller and Co Ltd (1948) 1 All ER 308

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79

Rodi & Weinberger AG v Henry Showell Ltd [1969] RPC 367

The Raleigh Cycle Coy Ld v H Miller and Coy Ld (1946) 63 RPC 113

Walker v Alemite Corporation (1933) 49 CLR 643  

MEMCOR AUSTRALIA PTY LTD ACN 003 581 566 v G E BETZDEARBORN CANADA COMPANY

NSD 944 of 2008

 

JAGOT J

20 MAY 2009

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 944 of 2008

 

ON APPEAL FROM A DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

 

BETWEEN:	MEMCOR AUSTRALIA PTY LTD ACN 003 581 566 Applicant
AND:	G E BETZDEARBORN CANADA COMPANY Respondent

 

JUDGE:	JAGOT J
DATE OF ORDER:	20 MAY 2009
WHERE MADE:	SYDNEY

 

THE COURT ORDERS THAT:

 

1.         The appeal be dismissed.

2.         The decision of the Delegate of the Commissioner of Patents given on 5 June 2008 dismissing the opposition be affirmed.

3.         The opposition to Australian Patent Application No 2004203855 filed by the respondent in the Australian Patent Office on 1 August 2006 be dismissed, and the patent application proceed to grant.

4.         The respondent serve a sealed copy of these orders upon the Commissioner of Patents within seven (7) days.

5.         The applicant pay the respondent’s costs as agreed or taxed.

6.         The exhibits be returned.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 944 of 2008

 

ON APPEAL FROM A DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

 

BETWEEN:	MEMCOR AUSTRALIA PTY LTD ACN 003 581 566 Applicant
AND:	G E BETZDEARBORN CANADA COMPANY Respondent

 

JUDGE:	JAGOT J
DATE:	20 MAY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

THE ISSUE

1                          The issue in this appeal is whether patent application 2004203855 (application 855) satisfies s 79B(1)(b) of the Patents Act 1990 (Cth).  Resolution of this issue determines the priority date of the claims in the specification for application 855.  This, in turn, determines whether the claimed invention is patentable.  

2                          Section 79B(1) of the Act is as follows:

(1)     If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:

(a)     disclosed in the specification filed in respect of the first-mentioned application; and

(b)     where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.

3                          In this case (and using the language of s 79B(1) of the Act), the complete patent application made which has not lapsed, been refused or withdrawn (conventionally referred to as the “parent application”) is patent application 715364 filed on 8 August 1996 and published on 12 March 1997 (application 364).  The “further complete application for a patent” (conventionally referred to as the “divisional application”) is application 855 filed on 12 August 2004 and advertised as accepted on 29 June 2006. 

4                          If the requirements of s 79(1)(b) of the Act are met, then cll 3.12(1)(c) and 3.12(2C) of the Patents Regulations 1991 (Cth) apply so that the priority date of the claims in application 855 is the date that would have been the priority date of those claims if included in the specification for application 364.  Questions of novelty and inventive step are then assessed by reference to that earlier date (s 18(1)(b) of the Act).

5                          The invention concerns a “vertical skein of hollow fiber membranes and method of maintaining clean fiber surfaces for the purpose of microfiltration”.  Microfiltration is the filtration of particles from solution using membranes with very small pores.  All documents in issue refer to “fibre” as “fiber” which I accordingly adopt.

6                          Before the Commissioner’s delegate, Memcor Australia Pty Limited (Memcor) opposed the grant of a patent on numerous grounds which the delegate rejected.  In this appeal Memcor contended only that s 79B(1)(b) of the Act is not satisfied as the purported divisional application (application 855) is not for a patent for an invention “falling within the scope of the claims of the accepted specification” (that is, the accepted specification for application 364). 

7                          Accordingly, the only issue in this appeal is whether or not application 855 is for a patent for an invention falling within the scope of the claims of the accepted specification for application 364. 

THE SPECIFICATIONS AND CLAIMS

8                          The specifications for applications 364 and 855 are the same except for the claims defining the invention and the consistory clauses.  The specifications relate to a vertical skein of hollow fiber membranes and method of maintaining clean fiber surfaces.  The skein is used in liquid-liquid microfiltration processes to remove micron, sub-micron and larger suspended solids such as organic molecules, emulsified organic liquids and colloidal or suspended solids, usually from water. 

9                          The claims defining the invention in the accepted specification for application 364 include the following:

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

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

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

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

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

-           means to withdraw said permeate;

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

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

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

…

15.     A microfiltration membrane device for withdrawing permeate substantially continuously form a multicomponent liquid substrate substantially as herein described with reference to the accompanying drawings.

16.     A gas-scrubbed assembly substantially as herein described with reference to the accompanying drawings.

10                        Claim 1 defining the invention in the specification for application 855 is as follows:

1.       A microfiltration membrane device, for withdrawing permeate from a multicomponent substrate, said membrane device including a multiplicity of hollow fiber membranes, or fibers, unconfined in a shell of a module; a first header and a second header disposed vertically spaced apart relationship with opposed faces at a fixed distance; said first header and said second header having opposed ends of each fiber sealingly secured therein with potting resin, all open ends of said fibers open to a permeate discharging face of one or both headers; permeate collection means to collect permeate sealingly connected in open fluid communication with the or each permeate discharging face; means to withdraw said permeate; said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically; each of said fibers have a length from 0.1% to less than 5% greater than the fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber; and, through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of a pressurized gas; wherein said fibers are subjectable in use to a trans-membrane pressure differential in the range of 0.7 kPa to 345 kPa created by applying a suction to the permeate collection means, and, said fibers are spaced apart to a desired lateral spacing between fibers by said potting resin, to as maintain the ends in closely spaced apart relationship.

11                        Each specification contains a consistory clause which includes paragraphs in the same terms as claim 1 of the claims defining the invention. 

THE COMPETING SUBMISSIONS AND EVIDENCE

12                        Memcor identified a series of matters which it said meant that application 855 does not involve a patent for an invention falling within the scope of the claims of the accepted specification for application 364.

13                        First, Memcor submitted that the device in the claims of the accepted specification for application 364 is limited to a microfiltration device in use.  Specifically, the device is one which, in use, withdraws permeate “substantially continuously” when, amongst other things, the fibers are “in said substrate” and the headers are “within said substrate”, with the fibers being subject to a “transmembrane pressure differential in the range from 0.7kPa (0.1 psi) to 345 kPa (50 psi)”.  By contrast, application 855 involves a microfiltration device not in use.  It involves a device per se (or “on the shelf”).  Important process elements (“substantially continuously”, components being in or within “said substrate” and fibers “subject to” a transmembrane pressure differential) are missing. 

14                        Second, important restrictions on the device in the claims of the accepted specification for application 364 are not present in application 855.  Hence:

(1)                   In the former the device in use withdraws permeate “substantially continuously” from a “multicomponent liquid substrate”.  In the latter the device is “for withdrawing permeate from a multicomponent substrate”.

(2)                   In the former the fibers must be “swayable in said substrate”.  In the latter there is no such requirement.  The reference to the fibers having a length to “permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber” is broader than the fibers being “swayable”.

(3)                   In the former the headers must be “within said substrate”.  In the latter this requirement is missing.  All that is required in the latter is that the headers are “adapted to be all submersible below the surface of the substrate”.

(4)                   In the former the opposing terminal end portions of each fiber are secured in the headers with potting resin.  Further, all open ends of the fibers extend from a permeate-discharging face of at least one header.  In the latter the opposed ends of each fiber are secured in the headers with potting resin, with all open ends of the fibers open to a permeate discharging face of one or both headers.

(5)                   In the former the permeate collection means is sealingly connected in open fluid communication with a permeate-discharging face of each of the headers.  In the latter permeate collection means is sealingly connected in open fluid communication with the, or each, permeate discharging face.

(6)                   In the former there must be a “vertical skein” which the glossary in the specification defines as “an integrated combination of structural elements including (i) a multiplicity of vertical fibers of substantially equal length; (ii) a pair of headers in each of which are potted the opposed terminal portions of the fibers so as to leave their ends open; and, (iii) permeate collection means held peripherally in fluid-tight engagement with each header so as to collect permeate from the ends of the fibers”.  In the latter there is no reference to the vertical skein but the fibers, headers and permeate collection means together form part of an integrated combination of elements and are adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically.

(7)                   In the former each of the fibers must have substantially the same length.  In the latter this requirement is missing.  The fibers need only have a length from 0.1% to less than 5% greater than the fixed distance between the headers.

(8)                   In the former the fibers are subject to a transmembrane pressure within a certain range.  In the latter the fibers are subjectable in use to that transmembrane pressure.

(9)                   In the former the fibers of each header are spaced apart to a desired lateral spacing between fibers by potting resin which extends over only each terminal portion of the fibers near their ends, so as to maintain said ends in a closely spaced apart relationship.  In the latter the fibers are spaced apart to a desired lateral spacing between fibers by potting resin, to as maintain the ends in a closely spaced apart relationship.

15                        Third, claim 1 in the specification for application 855 refers to through passages passing through the lower of the first and second headers, the through passages having first openings adapted to discharge bubbles into the substrate above the lower header and having second openings in communication with a plenum below the lower header, the plenum adapted to be connected to a source of a pressurized gas.  There is no equivalent reference in the claims of the accepted specification for application 364.

16                        Memcor submitted that the primary focus should be on claim 1 in each specification as these are the broadest claims.  According to Memcor, the above analysis of claim 1 in each specification disclosed that the claims in the specification for application 855 are significantly different from, and thus not within the scope of, the claims of the accepted specification for application 364.  Memcor asked why the patentee would have changed the text between the two claim sets if not to establish a broader scope of monopoly, contrary to the scheme of the Act. 

17                        Memcor submitted that claims 15 and 16 (referred to in decision of the delegate of the Commissioner) are of no assistance.  Claims 15 and 16 are omnibus claims.  As such, and contrary to the delegate’s approach, they are narrow claims to specifically disclosed embodiments as they appear in the drawings accompanying the specification (Raleigh Cycle Co Ltd v H Miller and Co Ltd (1948) 1 All ER 308 at 313-314, 319 and 320-321).  In this case the specific embodiments as illustrated by the drawings are limited by features which are not present in the claims in the specification for application 855 (in particular, each of the drawings show the open ends of the fibers extending from the permeate-discharging face rather than being flush with that face). 

18                        Memcor supported these submissions by reference to the evidence of Professor Vicki Chen of the University of New South Wales’ School of Chemical Sciences and Engineering.  Professor Chen obtained a PhD in chemical engineering from the University of Minnesota in 1988.  In addition to her current university post, Professor Chen is the Director of the UNESCO Centre for Membrane Science and Technology which is a leading academic research centre in the field of membrane technology.  She is the author and co-author of numerous articles about, and has extensive experience in the field of, membrane technology. 

19                        Professor Chen considered (in summary) that:

(1)        The device in application 855 may be used to withdraw permeate intermittently (that is, filtration may be paused without back-flushing).  This is a different mode of operation from one in which permeate is withdrawn substantially continuously as stated in the accepted specification for application 364 (implying that, in this mode, the withdrawal ceases only for such actions as back-flushing to remove fouling from the fibers).

(2)        The device in application 855 has fibers capable of restricted displacement, which is a term including but not limited to a capacity of fibers to be swayable.  The device in the accepted specification for application 364 is narrower as it requires the fibers to be swayable in the substrate.  Restricted displacement would include bowing or any other horizontal displacement of fibers from the centre position including displacement by mechanical means.

(3)        The device in application 855 permits one of the headers to sit above the substrate whereas the claims of the accepted specification for application 364 require both headers to be immersed in the substrate.

(4)        The device in application 855 permits the fibers to be secured within the headers and does not require them to protrude from the permeate-discharging face of the headers as in the claims of the accepted specification for application 364.  This protrusion is a product of the novel method for forming the composite header described in the accepted specification of application 364.  The reference in the claims of the accepted specification for application 364 to the potting resin extending over only each terminal portion of the fibers near their ends reinforces that the accepted specification for application 364 is different from application 855 in which the ends of the fibers need only be held in a closely spaced apart relationship by the potting resin.

(5)        The device in application 855 does not include a reference to the vertical skein, which is a defined term in the glossary of the accepted specification for application 364.  This difference (having regard to the definition of vertical skein) means that the headers and fibers of the device in application 855 need not be submersed and permeate need not be collected from both headers of that device.

(6)        The additional description in application 855 with respect to the through passages means that the mechanism for generating bubbles for scouring the surface of the fibers is integrated into the header assembly.  This feature is not present in the claims of the accepted specification for application 364.

20                        The respondent, GE Betzdearborn Canada Company (GE), submitted that the invention defined by the claims in the specification for application 855 falls within the scope of claim 1 of the accepted specification for application 364.  Alternatively, the invention falls within the scope of claims 15 or 16 of the claims of the accepted specification for application 364 (the omnibus claims).  GE disagreed with Memcor’s approach to the textual differences between the two claim sets and to the construction of the omnibus claims. 

21                        As to the textual differences, GE submitted that:

(1)                   The question under s 79B(1)(b) of the Act is whether the invention defined by the claims in the specification for application 855 falls within the scope of the claims of the accepted specification for application 364.  It is not necessary that there be an identical claim of the same scope in application 364 for application 855 to satisfy that test.

(2)                   Memcor and Professor Chen were assiduous to read the sets of claims with an eye to purported difficulties intended to take the claims in application 855 beyond the scope of claims in the accepted specification for application 364, irrespective of whether any person skilled in the art would so read the claims in 1995 (the relevant date by reason of application 364 claiming priority through two earlier US patents filed in 1995 and 1996).  This focus on the meaning of different words, as opposed to the meaning of the claims, was inappropriate.

(3)                   Contrary to Memcor’s submission, each claim defines a microfiltration membrane device incorporating various features.  Neither defines a device in use only.  The words on which Memcor relies (such as “for withdrawing permeate substantially continuously…”) connote only a use for which the device is suitable.  Memcor’s submissions attempt to convert a patent for a device into one for a use. 

(4)                   The words “substantially continuously” in claim 1 of the accepted specification for application 364 do not constitute a limitation.  They identify a purpose for which the device is suitable.  In any event, a person skilled in the art (such as Dr Richard Baker, the expert witness called by GE) would understand that the device defined in claim 1 of the specification for application 855 also is suitable for withdrawing permeate substantially continuously.

(5)                   The word “swayable” in claim 1 of the accepted specification for application 364 means the capacity of the fibers for side-to-side displacement of their intermediate portion by reason of their excess length.  Read in the context of the specification as a whole, a person skilled in the art would understand the fibers in the device claimed in application 855 also to be swayable in the substrate.  The claims for the device in application 855 require a configuration permitting restricted displacement of the intermediate portion of the fibers independently of the movement of another fiber.  Bowing, as referred to by Professor Chen, is permanent.  Professor Chen’s references to mechanical displacement and to ceramic fibers (which are suitable only for inside-out movement of substrate, as opposed to outside-in movement as in the device) are inapplicable.

(6)                   The “said substrate” in claim 1 of the accepted specification for application 364 is notional substrate for filtration of which the device is suitable.  Claim 1 of the specification for application 855 requires the components of the headers, fibers and permeate collection means to be an integrated combination of elements adapted to be submersible below the surface of the substrate.  Since both claims are to devices rather than the manner in which they are used, it follows that in both cases the device is adapted so that the headers can be within the substrate.

(7)                   Consideration of claim 1 in the context of the whole of the specification accepted for application 364 discloses a distinction between the concepts of fibers extending from and protruding through a permeate-discharging face.  The former refers to the extension of the fibers through the header and the substrate to the opposing header.  The latter refers to the novel method of creating a composite header which results in the ends of the fibers protruding from the header into the permeate collection means.  As Dr Baker explained, the specification refers to both the conventional and novel method for creating headers and describes the method of securing the fibers in the header as not “narrowly critical”.  This observation also disposes of Memcor’s focus on potting resin extending over only each terminal portion of the fibers near their ends.

(8)                   The terms of the claims in the accepted specification for application 364 disclose that both or only one of the headers may have a permeate-discharging face.  Memcor’s submission that the device in application 364 must have two permeate-discharging faces gives primacy to the definition of “vertical skein” in circumstances where the context makes clear that the definition is inapt (as it is elsewhere in the specification).  Consistent with Dr Baker’s evidence, a person skilled in the art would understand claim 1 to encompass permeate withdrawal from one or both of the headers.  On the same basis, the reference to the “integrated combination of elements” in claim of application 855 is within the scope of the device defined in claim 1 of the accepted specification for application 364.

(9)                   Fibers which satisfy the excess length prescription identified in claim 1 of application 855 will be of substantially the same length.

(10)                 The passage in claim 1 of the specification for application 855 in respect of through passages has the effect of substantially narrowing the claim. 

22                        As to the omnibus claims, GE submitted that there was no authority for a proposition that such claims should be read as if they replicated all other claims but narrowed to the specific embodiments in the drawings.  Rather, such clauses constitute claims for the preferred embodiments of the invention understood in the light of the drawings.  While some cases involve a narrow construction of omnibus clauses, the scope of any particular clause must depend on the context of the specification in which the clause appears and the nature of the descriptions or drawings to which the clause refers (Lewis v Hall (2005) 68 IPR 89; [2005] FCAFC 251).  In the present case, claim 15 of the accepted specification for application 364 refers generally to the description and the drawings.  The drawings are schematic and thus the scope of the claim cannot be defined by the appearance of the drawings (Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 91). Both the description and the drawings cover a number of different embodiments of the invention, including (for example) an embodiment involving the withdrawal of permeate from one header only and an embodiment with fibers protruding through and extending from a permeate-discharging face.  Variations between these embodiments are within the scope of claim 15.  The device disclosed in the claims for application 855 are within the scope of claim 16 of the accepted specification for application 364 (essentially for the same reasons given by the delegate of the Commissioner of Patents who relied on clause 16 to found his decision rejecting Memcor’s opposition to the grant).

23                        GE supported these submissions by reference to the evidence of Dr Baker.  Dr Baker is a senior researcher and former president of Membrane Technology and Research, Inc.  After obtaining his PhD in Physical Chemistry in 1966 from Imperial College London, Dr Baker moved to the United States where he has been involved with various corporations researching and developing membrane technologies.  In common with Professor Chen, Dr Baker is the author or co-author of numerous papers in this field.

24                        Dr Baker considered (in summary) that:

(1)       The reference to “substantially continuously” does not involve any particular process of operation, although it would include ceasing the withdrawal of permeate to allow back-flushing.  Nevertheless, in a membrane device permeate must be withdrawn as it is produced.  If not withdrawn, permeation stops because the pressure in the chamber becomes the same as that in the feed solution.

(2)       “Swayable” means side-to-side displacement permitted by the excess length of the fibers.  The term is used in the specification to distinguish the device as claimed from devices in which the fibers vibrate because they are taut.  The claims for application 855 require the fibers to “have a length from 0.1% to less than 5% greater than the fixed distance so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber”.  Hence, nothing is lost by reason of the deletion of the reference to the fibers being swayable.

(3)       The phrase “all open ends of said fibers extending from a permeate-discharging face of at least one header” indicates fibers sealed in a resin block (the header) so that fluid in the fibers can flow to a collection chamber whereas fluid outside the chamber cannot.  “Extending from” involves a fiber going completely through the resin so that the ends of the fibers open from a permeate-discharging face.  This is consistent with the fact that the specification refers to conventional headers (in which the ends of fibers are flush with the face).

(4)       The phrase “permeate collection means…sealingly connected in open fluid communication with a permeate-discharging face of each of said headers” means that the upper, lower or both headers can have a permeate-discharging face.  The specification contemplates withdrawal of permeate from one or both headers.  If only one header withdraws permeate, the other need not have a permeate-discharging face.

(5)       “Vertical skein” is not a technical term in this field.  The definition on one reading suggests that permeate must be withdrawn from both headers but that is not reflected in the terms of the specification.  Moreover, people in the industry in 1995 would have understood the desirability of withdrawing permeate from one or both headers.  It is of no consequence to the invention whether permeate is withdrawn from one header or both.

(6)       Based on the process by which the fibers are potted as described in the specification and the methods known to the art it is unlikely that the fibers could be other than substantially the same length.

(7)       All membrane systems must be subject to a transmembrane pressure differential in order to function.

(8)       Fibers are potted in a header in a closely spaced apart relationship in order to create an effective seal to prevent substrate from flowing between the inside of the membranes without passing through the membrane wall and thus contaminating the permeate.  If the fibers touch each other a leak can occur so it is necessary for the fibers to have resin between them over their terminal portions near the ends.

DISCUSSION

Principles

25                        Other than as noted above, the parties articulated the relevant principles in the same terms, albeit with a different emphasis reflecting their competing interests.  Accordingly they agreed that: - (i) the hearing under s 60(4) of the Act was a hearing de novo, (ii) Memcor, as the applicant opposing the grant, bore the onus of proof, (iii) Memcor’s onus was to satisfy the Court that, if granted, the patent would be invalid, (iv) while it was appropriate for the Court to accord respect to the views expressed by the Commissioner’s delegate, particularly where the delegate has relevant technical knowledge or experience, the evidence before the Court in the present case was different from that before the delegate, and (v) specifications are not to be read in the abstract but in light of common general knowledge and “the state of the art and the manufacture at the time” (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001] 207 CLR 1; [2001] HCA 8 at [24]).

26                        Memcor emphasised the policy of the Act to guard against “claim broadening” (evidenced by, for example, ss 79B and 102 of the Act) and the need to construe claims having regard to that policy.  Memcor also stressed: - (i) the status of a patent as a public document marking out the field of a monopoly (Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [70]), (ii) the need for the territory of the monopoly to be marked out with reasonable clarity by the claim construed fairly in the light of the relevant prior art (Rodi & Weinberger AG v Henry Showell Ltd [1969] RPC 367 at 391-392), (iii) the important aphorism in patent law that what is not claimed is disclaimed (Walker v Alemite Corporation (1933) 49 CLR 643 at 656-657 citing Fellows v Thomas William Lench Ltd (1917) 34 RPC 45 at 55), and (iv) the need to recognise that patentees have their own reasons for casting their claims in particular terms about which the Court may not speculate, thus confirming the need for caution in accepting any suggestion that an apparent limitation upon a claim “is merely the product of a slip of the pen” (Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 256). 

27                        Memcor also referred to the continuing utility and particular aptness of the observations of Lord Russell in Electric and Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224 – 227 to the present case, namely:

The Court of Appeal have stated that in their opinion no special rules are applicable to the construction of a specification, that it must be read as a whole and in the light of surrounding circumstances, that it may be gathered from the specification that particular words bear an unusual meaning, and that, if possible, a specification should be construed so as not to lead to a foolish result, or one which the patentee could not have contemplated. They further have pointed out that the claims have a particular function to discharge. With every word of this I agree, but I desire to add something further in regard to the claims in a specification. The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit, and not to extend, the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document, and not as a separate document. Nevertheless, the forbidden field must be found in the language of the claims, and not elsewhere. It is not permissible, in my opinion, by reference to some language used in the earlier part of the specification to change a claim which by its own language is a claim for one subject-matter into a claim for another and a different subject-matter, which is what you do when you alter the boundaries of the forbidden territory. A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims. As Lord Cairns LC said, there is no such thing as infringement of the equity of a patent: Dudgeon v Thomson.

…

I would point out that there is no question here of words in the first claim bearing any special or unusual meaning by reason either of a dictionary found elsewhere in the specification or of technical knowledge possessed by persons skilled in the art. The prima facie meaning of words used in a claim may not be their true meaning when read in the light of such a dictionary, or of such technical knowledge, and, in those circum-stances, a claim, when so construed, may bear a meaning different from that which it would have borne had no such assisting light been available. That is construing a document in accordance with the recognised canons of construction. However, I know of no canon or principle which will justify one in departing from the unambiguous and grammatical meaning of a claim and narrowing or extending its scope by reading into it words which are not in it, or which will justify one in using stray phrases in the body of the specification for the purpose of narrowing or widening the boundaries of the monopoly fixed by the plain words of a claim.

A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly, and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect. As Lord Chelmsford said in this House many years ago in Harrison v Anderston Foundry Co, at p 581:

The office of a claim is to define and limit with precision what it is which is claimed to have been invented and therefore patented.

If the patentee has done this in a claim the language of which is plain and unambiguous, it is not open to your Lordships to restrict or expand or qualify its scope by reference to the body of the specification. Lord Loreburn LC, emphasised this when he said in Ingersoll Sergeant Drill Co v Consolidated Pneumatic Tool Co Ltd, at p 83:

The idea of allowing a patentee to use perfectly general language in the claim, and subsequently to restrict, or expand, or qualify what is therein expressed by borrowing this or that gloss from other parts of the specification, is wholly inadmissible.

The same view was expressed by Romer LJ in the following felicitous language in British Hartford-Fairmont Syndicate Ltd v Jackson Bros (Knottingley) Ltd, at p 556:

One may, and one ought to, refer to the body of the specification for the purpose of ascertaining the meaning of words and phrases used in the claims or for the purpose of resolving difficulties of construction occasioned by the claims when read by themselves. But where the construction of a claim when read by itself is plain it is not in my opinion legitimate to diminish the ambit of the monopoly claimed merely because in the body of the specification the patentee has described his invention in more restricted terms than in the claim itself.

28                        GE emphasised that the applicant in opposition proceedings bore an onus heavier than in ordinary civil proceedings.  The purpose of opposition proceedings is to provide a “swift and economical means of settling disputes that would otherwise need to be dealt with by the courts in more expensive and time-consuming post-grant litigation…by ensuring that bad patents do not proceed to grant” (Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106; [1999] FCA 742 at [19]).  Consistent with this policy and the availability of subsequent revocation proceedings, GE noted references in various decisions to the effect that the Court must be “practically certain” or “clearly satisfied” that a patent granted on the application would be invalid (Genetics Institute at [17]; E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392; [2003] FCA 291 at [25]; Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805 at [6]; and F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56; [2000] FCA 283 at [67]).  GE also referred to authority to the effect that a claim should be given a construction which makes the invention workable in preference to one according to which the invention may not do so (Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 225 ALR 416; [2005] FCAFC 224 at [250]).

29                        GE also referred to the useful summary by the Full Court in Kinabulu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44] – [45], subsequently adopted by another Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [29] as follows:

[44]      …When determining the nature and extent of the monopoly claimed, the specification must be read as a whole.  But as a whole it is made up of several parts which have different functions. The claims mark out the legal limits of the monopoly granted. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification.  If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document.  It is legitimate, however, to refer to the rest of the specification to explain the background of the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. See Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [73]-[75] (Hely J).

[45]      Other more specific principles of construction collected in Flexible Steel at [81] are:

·     a specification should be given a purposive construction rather than a purely literal one;

·     the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date;

·     the words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification;

·     as a general rule, the terms of the specification should be accorded their ordinary English meaning;

·     evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning;

·     however, the construction of the specification is for the Court, not for the expert.  In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.

Memcor’s grounds of opposition

A device or a device in use?

30                        Claims identifying an apparatus “for” a particular purpose have been said to create “considerable difficulty” as there must be “some limit to the extent to which such a claim can be construed as covering apparatus not intended for that purpose, or designed to work otherwise” (T.A. Blanco White. Patents for Invenstions & The Protection of Industrial Designs. 5^th ed. London: Stevens & Sons (1983) at 2-117).  

31                        In the present case I am satisfied that the claims in the accepted specification for application 364 are for a device not a device in use.  The opening words of claim 1 are “[a] microfiltration membrane device”.  There follows, between two commas, a description of the process for which the device is suitable (“for withdrawing permeate substantially continuously…”).  After the second comma, the opening sentence of claim 1 returns to the device (“said membrane device including”).  The natural and ordinary meaning of this sentence is to define the invention as a device suitable for a purpose rather than as a device only when used for that purpose.  The list which follows the words “said membrane device including” involves features of the device, not the method.  The words “in said substrate” and “within said substrate” refer back to the multicomponent liquid substrate in line 3 of the opening paragraph to claim 1.  That substrate is the substance from which the device withdraws permeate.  The words “in said substrate” and “within said substrate” do not limit the invention to the device when immersed in the substrate.  They describe the conditions under which the device will operate for withdrawing permeate substantially continuously from the substrate.  The concluding paragraph to claim 1 (“wherein said fibers are subject to a transmembrane pressure differential…”) also describes those conditions.  Contrary to Memcor’s submissions, the descriptions of the conditions under which the device is suitable for withdrawing permeate do not indicate that the claim is limited to a device having certain “essential constructional and operational features in combination”.  As GE submitted, they indicate the capability of the device for which the claim is made to operate in a particular mode. 

32                        This construction of claim 1 arises from the ordinary meaning of the language of the claim.  Accordingly, it is unnecessary to refer to the balance of the specification to resolve any ambiguity in this regard.  Nevertheless, it is apparent that this construction is also consistent with the balance of the specification.  Specifically, the background to the invention (p 1 line 5) describes the invention as a device (a membrane device) and a method (to maintain clean fibers).  Operation of the system (p 15 line 25ff) is described separately from components forming the device (the vertical skein, the fibers, the headers and the gas scrubbed assembly commencing at p 10 line 5).  This construction of claim 1 is also consistent with the approach in The Raleigh Cycle Coy Ld v H Miller and Coy Ld (1946) 63 RPC 113 at 137.

33                        Claim 1 of the specification for application 855 is also for a device described as a microfiltration membrane device.  That claim describes the use for which the device is suitable (withdrawing permeate from a multicomponent substrate).  Accordingly, and leaving aside Memcor’s other grounds of opposition, I do not accept that claim 1 of the specification for application 855 does not fall within the scope of the claims of the accepted specification for application 364 by reason of the latter being for a device in use and the former for a device per se.

“Substantially continuously”

34                        I am satisfied that the words “substantially continuously” in claim 1 of the accepted specification for application 364, as GE submitted, do not constitute a limitation on the device.  In its submissions to the contrary, Memcor relied on the evidence of Professor Chen.  Professor Chen considered that a “substantially continuous” operation of the device was one in which there was prolonged continuous filtration with periodic back-flushing (a description with which Dr Baker agreed).  Professor Chen, however, also considered that this description did not include alternative modes of operation such as relaxation or intermittent filtration (in which filtration may be paused without back-flushing).  Dr Baker considered that other regular cyclical operations in addition to back-flushing would also be “substantially continuous”.

35                        There are a number of difficulties with Memcor’s approach to this issue.  First, and as discussed above, I consider the words “for withdrawing permeate substantially continuously from a multicomponent liquid substrate” to be a description of the function for which the device is suitable rather than a limitation on the scope of the invention.  Consistent with the evidence of Professor Chen and Dr Baker as people skilled in the art, the device in claim 1 of the specification for application 855 is also suitable for that purpose.  Second, back-flushing itself, as the evidence of Professor Chen and Dr Baker disclosed, is a form of intermittent operation.  Third, nothing in the claims of the accepted specification for application 364 indicate that the words “substantially continuously” authorise a cessation of the withdrawal of permeate for the purpose only of back-flushing.  Fourth, and as Dr Baker said, the device withdraws permeate “substantially continuously” because such withdrawal is necessary for the difference in pressure required to make the device function.  Finally, the omission of the word “liquid” from the description of the “multicomponent liquid substrate” in this part of claim 1 in the specification for application 855 is immaterial.  “Substrate”, as used throughout the specification, refers to a liquid.  Indeed, the definition of “substrate” in the glossary to the specification makes this clear, it being defined as “multicomponent liquid feed”.

36                        For these reasons the omission of the words “substantially continuously” in claim 1 of the specification for application 855 does not place the invention therein disclosed outside the scope of the claims of the accepted specification for application 364.

Fibers “swayable” in substrate

37                        This issue exposes the force of GE’s submission that the question under s 79B(1)(b) of the Act is whether the invention in application 855 falls within the scope of the claims of the accepted specification for application 364; it is not whether the texts of the two sets of claims are identical.  With the relevant statutory provision in mind, it is apparent that the required comparison is not between a claim in which the words “said fibers being swayable in said substrate” are included (claim 1 of the accepted specification for application 364) and a claim in which those words are excluded (claim 1 of the specification for application 855).  Rather, the whole of each claim must be considered.  When that is done the significance of other aspects of the claims are revealed.  Specifically, both claims have in common requirements (amongst other things) that: - (i) the fibers be hollow fiber membranes, (ii) the fibers be oriented vertically between two headers, and (iii) the fibers each have a length between 0.1% to less than 5% greater than the fixed distance between the headers “so as to permit restricted displacement of an intermediate portion of each fiber, independently of the movement of another fiber”.

38                        Professor Chen’s concern was that these common elements, nevertheless, might not limit the device in application 855 to one in which fibers are swayable in the substrate.  Professor Chen referred to the capacity for certain types of material (such as ceramic fibers) to bow and for a means of mechanical displacement to be used.  Dr Baker did not share these concerns. 

39                        I prefer the approach of GE and Dr Baker to this issue.  In particular, and as GE submitted, the evidence indicates that ceramic fibers, if capable of bowing, would displace once only, in a single direction.  This is inconsistent with the requirement that the fibers permit restricted displacement of an intermediate portion of each fiber.  Further, Professor Chen’s evidence did not indicate the existence of any practical mechanical means known in the art of achieving restricted displacement of only the intermediate portions of fibers independently of the movement of another fiber.  For these reasons I consider that the invention in application 855 does not fall outside the scope of the claims of the accepted specification for application 364 by reason of the omission in the former of the reference to “said fibers being swayable in said substrate”. 

“Within the substrate”

40                        Claim 1 of the accepted specification for application 364 refers to the headers being disposed in a “vertically spaced-apart relationship within said substrate”.  Claim 1 of the specification for application 855 refers to the headers “disposed vertically spaced apart relationship”.  The latter also requires “said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate…”. 

41                        Consistent with the conclusions reached above, I accept GE’s submission that the “said substrate” in claim 1 of the accepted specification for application 364 is notional, in the sense that it is part of the description of the function for which the device is suitable, rather than a limitation on the patented device.  In both cases the device is adapted to be submersible in the substrate.  Accordingly, claim 1 of the specification for application 855 does not fall outside the scope of the claims of the accepted specification for application 364 on the ground of this difference.

Fibers “extending from” a permeate-discharging face

42                        Claim 1 of the accepted specification for application 364 refers to the open ends of the fibers “extending from a permeate-discharging face of at least one header”.  Claim 1 of the specification for application 855 refers to the open ends of the fibers being “open to a permeate discharging face of one or both headers”.  Memcor and Professor Chen considered that the former described a header in which the fibers protruded from the permeate-discharging face.  This, they said, was consistent with the novel potting method described in the specification (in which fibers are fixed in a fugitive lamina which is then removed) and the drawings which show the fibers passing through and protruding from the permeate-discharging face of the headers (such as figures 2, 4, 9, 4, 15, 16 and 17).  Memcor said that the alternative approach of Dr Baker (in which claim 1 of the accepted specification for application 364 includes an embodiment of the invention in which the open ends of the fibers are flush with the permeate-discharging face) was thus incorrect.

43                        GE (and Dr Baker) observed that the phrase “extending from” could be contrasted with that of fibers which “protrude through a permeate-discharging face” as referred to in claim 4 of the accepted specification for application 364.  According to GE, when the specification refers to the protrusion of fibers into the permeate collection area, it uses the word “protrude” and where it refers to the fibers extending from the permeate-discharging face of a header into the substrate towards the other header, it uses the word “extend”.  They also noted that the specification refers to both the novel and conventional method for potting fibers.  The specification says that the potting method used is not “narrowly critical”.  The choice depends on the materials of the header and the fiber and the cost of using a method other than potting.  In the conventional method the open fiber ends are open to, and flush with, the permeate-discharging face.  Dr Baker considered that it made no commercial sense to exclude from claim 1 the conventional potting method.

44                        Although I accept Memcor’s submission that Dr Baker’s recourse to commercial sense is of no assistance in the present case, GE’s other submissions about this issue are persuasive.  I consider the reference to the fibers “extending from a permeate-discharging face” in claim 1 of the accepted specification for application 364 to be ambiguous, particularly when read with claims 4, 9 (which deals with the novel method of creating a header and, like claim 4, refers to fibers “protruding from an aft face of said header”) and 13 (which refers to fugitive lamina having an aft face through which fibers protrude and a fore face through which fibers extend vertically”).  These references to fibers “protruding” are generally consistent with the use of that word in the text of the specification (for example, at p 19 line 30 – p 20 line 1, p 21 lines 29-30, p 22 line7, p 23 line 21-22, p 28 lines 11-13, p 35 lines 1 to 5, p 38 lines 20-25, and p 41 line 15). 

45                        Consistent with Dr Baker’s evidence and GE’s submissions, I consider the better view is that the reference in claim 1 of the accepted specification for application 364 to “all open ends of said fibers extending from a permeate-discharging face of at least one header” does not refer to the protrusion of the fibers from the permeate-discharging face into the permeate collection chamber.  Rather, it refers to the open ends of the fibers extending from the permeate-discharging face of at least one header in the vertically spaced-apart relationship identified (in other words, through the substrate and towards the other header). 

46                        I do not accept Memcor’s submission that the extension can only be a “jutting out” from the permeate-discharging face itself.  To the contrary, the words “extending from” a permeate-discharging face, considered in the context of the claims and specification as a whole, suggest an extension of the fibers in a vertical alignment from the permeate-discharging face through the resin block forming the header and in the direction (be it up or down) of the other header.  The reference in claim 4 to the fibers protruding through a permeate-discharging face of each header in a range from 0.1mm to 1cm does not indicate that any different construction is required.  Memcor argued that claim 4 was a sub-set of claim 1 and that a harmonious reading of the claims thereby required the fibers in claim 1 to protrude through the permeate-discharging face of the headers.  In my view, however, the common position of the parties that claim 1 is the broadest of the claims supports a contrary conclusion.  Claim 1 does not require any protrusion (which is a consequence of the novel potting method) because it encompasses both the conventional and novel methods of constructing a header (consistent with the body of the specification).  Claim 4 is narrower because it requires the fibers to protrude through the permeate-discharging face of the header (a result of using the novel potting method).  Claim 3 confirms this interpretation because it refers to fibers extending downwardly through a permeate-discharging face (that is, through the face into the substrate and towards the other header).  Hence, if GE’s approach to its meaning is adopted, the specification is consistent and harmonious in defining a single invention. 

47                        I also do not accept that the later reference in claim 1 to the potting resin extending only over each terminal portion of the fibers “near their ends” supports Memcor’s approach to this issue.  As discussed below, the requirement is that the fibers be open to the permeate-discharging face but spaced apart because contact between the fibers, as a person skilled in the art such as Dr Baker knew, would risk contamination of the permeate with the substrate.

48                        Claim 1 of the specification for application 855 also requires all open ends of the fibers to be open to a permeate-discharging face of one or both headers.  Further, it requires the headers to be disposed in a vertically spaced-apart relationship and the fibers to be oriented essentially vertically between the headers. 

49                        Accordingly, I consider that this difference between the two claims is immaterial.  Claim 1 of the specification for application 855 does not fall outside the scope of the claims of the accepted specification for application 364 on the ground of this difference.

Open fluid communication

50                        Claim 1 of the accepted specification for application 364 refers to a “permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers”.  Claim 1 of the specification for application 855 refers to “permeate collection means to collect permeate sealingly connected in open fluid communication with the, or each, permeate discharging face”.  According to Memcor, the requirement of the former is for the ends of fibers to be open to the permeate-discharging face of each header; otherwise there could be no “open fluid communication”.

51                        I do not accept Memcor’s submissions on this issue.  The item in question is the permeate collection means.  It is that means which is to be sealingly connected in open fluid communication with the permeate-discharging face of each of said headers.  The said headers are the first and second header disposed in the vertically spaced-apart relationship.  However, as the third sub-paragraph discloses, the open ends of the fibers have to extend from a permeate-discharging face of “at least one header”.  Contrary to Memcor’s approach to this issue, there is ambiguity in this respect in claim 1 of the specification.  The ambiguity should be resolved by recognising that the device has two headers disposed in a vertically spaced-apart relationship.  However, either or both of the headers may be used to collect permeate.  If a header is to be used to collect permeate then it must have a permeate collection means, sealingly connected in open fluid communication with a permeate-discharging face.  

52                        This construction best resolves the ambiguity in claim 1 of the accepted specification for application 364 as it: - (i) gives effect to the statement in the third sub-paragraph of the claim to a permeate-discharging face “of at least one header”, (ii) recognises that the focus of the fourth sub-paragraph is the permeate collection means, (iii) gives work to the words “of each of said headers” by reading those words as requiring the relevant connection in open fluid communication whenever a header is to be used to withdraw permeate, and (iv) is consistent with the balance of the specification which expressly contemplates withdrawal of permeate from a single header only (for example, p 37 lines 7-15).  Contrary to Memcor’s submission, this construction does not have the effect of meaning that there is no open fluid communication.  The open fluid communication is between the permeate collection means and the permeate-discharging face of the header with which that means is sealingly connected.  Further, and as explained below, the reference to “vertical skein” in the sixth sub-paragraph of claim 1 of the accepted specification for application 364 does not lead to a contrary conclusion.  Finally, this construction is consistent with Professor Chen’s evidence to the extent that she agreed that the device permitted permeate collection from either or both of the headers. 

53                        Accordingly, the reference to the “permeate collection means to collect said permeate sealingly connected in open fluid communication with the or each permeate discharging face” in the specification for application 855 is within the scope of claim 1 of the accepted specification for application 364.

Vertical skein

54                        Claim 1 of the accepted specification for application 364 refers in the sixth sub-paragraph to “said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed”.  As noted, the glossary to the accepted specification defines a vertical skein as “an integrated combination of structural elements including (i) a multiplicity of vertical fibers of substantially equal length; (ii) a pair of headers in each of which are potted the opposed terminal portions of the fibers so as to leave their ends open; and, (iii) permeate collection means held peripherally in fluid-tight engagement with each header so as to collect permeate from the ends of the fibers”. 

55                        Claim 1 of the specification for application 855 refers to “said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically”.  The accepted specification for application 364 explains the function of the glossary as defining the terms “used in the parent case” (p 1 lines 15-16).  The parties did not refer to “parent case” (as opposed to “patent case”, a US term for patent application).  Thus I proceed on the basis that the intended reference is to the “patent case”, as Memcor submitted.

56                        Memcor contended that the requirement for a vertical skein, which was missing from claim 1 of the specification for application 855, meant that application 855 is for invention which does not fall within the scope of the claims of the accepted specification for application 364.  Amongst other things, the definition of “vertical skein” requires permeate collection means held peripherally in fluid tight engagement with each header.  Memcor and Professor Chen considered that this reinforced the requirement for permeate to be collected from both headers.

57                        The experts agreed that the term “vertical skein” has no special or technical meaning in the field of microfiltration.

58                        If the words “vertical skein” in the sixth sub-paragraph are intended to incorporate the definition in the glossary then the sub-paragraph would read as follows:

said fibers, said headers and said permeate collection means together forming “an integrated combination of structural elements including (i) a multiplicity of vertical fibers of substantially equal length; (ii) a pair of headers in each of which are potted the opposed terminal portions of the fibers so as to leave their ends open, and, (iii) permeate collection means held peripherally in fluid-tight engagement with each header so as to collect permeate from the ends of the fibers” wherein said fibers are essentially vertically disposed.

59                        This is in circumstances where: - (i) the “said fibers” are a multiplicity of hollow fiber membranes, unconfined in a shell of a module, being swayable in said substrate, with opposed terminal end portions of each fiber sealingly secured in a header with potting resin, and all open ends of said fibers extending from a permeate-discharging face of at least one header, (ii) the “said” headers” are “a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance”, and (iii) the “said permeate collection means” is a “permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers”.  Once this meaning is given to the references to the said fibers, said headers and said permeate collection means in the sixth sub-paragraph, it is apparent that the reference to a vertical skein in that paragraph cannot incorporate the definition in the glossary by reference.  If it did, the resulting paragraph (incorporating the full meaning of said fibers, said headers and said permeate collection means, as well as the full defined meaning of vertical skein) would read something like the following:

…a multiplicity of hollow fiber membranes, unconfined in a shell of a module, being swayable in said substrate, with opposed terminal end portions of each fiber sealingly secured in a header with potting resin and all open ends of said fibers extending from a permeate-discharging face of at least one header, a first header and a second header disposed in vertically spaced-apart relationship within said substrate with opposed faces at a fixed distance, permeate collection means to collect said permeate, sealingly connected in open fluid communication with a permeate-discharging face of each of said headers together forming an integrated combination of structural elements including (i) a multiplicity of vertical fibers of substantially equal length; (ii) a pair of headers in each of which are potted the opposed terminal portions of the fibers so as to leave their ends open, and, (iii) permeate collection means held peripherally in fluid-tight engagement with each header so as to collect permeate from the ends of the fibers” wherein said fibers are essentially vertically disposed.

60                        In other words, the resulting paragraph would be bordering on meaningless, contain many internal inconsistencies and numerous redundancies.  This is one indication that GE’s submission that the reference to “vertical skein” is not intended to incorporate the definition in the glossary is to be preferred. 

61                        There are other indications which support GE’s submission. 

62                        First, the claims use words which are defined in the glossary in circumstances where the glossary would make the words in the claims unnecessary.  For example, the first sub-paragraph of claim 1 refers to “a multiplicity of hollow fiber membranes, or fibers…”.  The glossary, however, defines “fibers” as “used for brevity to refer to hollow fiber membranes”.  Had it been intended that the glossary apply uniformly to all words used in the claims which also appear in the glossary, the reference in claim 1 to hollow fiber membranes would have been unnecessary.  Similarly, the glossary defines “substrate” as “multicomponent liquid feed” whereas claim 1 refers to a “multicomponent liquid substrate”.  If the definition of “substrate” is inserted into “multicomponent liquid substrate” then again the resulting phrase is bordering on meaningless. 

63                        Second, and as GE submitted, the specification uses the words “vertical skein” or “skein” when describing an array inconsistent with the definition.  Hence, the accepted specification for application 364 (p 10 lines 16-20), when discussing the vertical skein, refers to a “skein” (itself defined in the glossary to mean a vertical or cylindrical skein or both) involving permeate collection from one header only.  Yet the definition of vertical skein refers to permeate collection means held in fluid-tight engagement with each header.  The same observation may be made about the reference to skein at p 37 lines 7 to 15.  To the same effect, the specification (p 2 line 26) refers to “the skein” when in fact the reference is to the array in an article by Yamamoto (K. Yamamoto et al, “Direct Solid-Liquid Separation Using Hollow Fiber Membrane in an Activated Sludge Aeration Tank”, Wat Sci Tech. vol 21. Brighton (1989) pp 43-54) which is discussed in US Patent No 5,248,424 involving a single header.  Other examples of such inconsistency are readily apparent.  Accordingly, a “header” is defined in the glossary to mean a body (relevantly) formed from a natural or synthetic resinous material.  Yet claim 2 refers to a device in which the “header” is a mass of synthetic resinous material only.  Claim 8 refers to a “vertical zone” (p 56 line 5) in a context which discloses that the vertical zone is the zone of bubbles surrounding each fiber.  The glossary has two terms for this concept (the “zone of confinement” or “bubble zone”) yet the claim uses neither defined term. 

64                        Third, the glossary appears before the claims in the specification.  This fact must be considered in conjunction with the preamble which refers to the glossary providing meanings for terms used in the specification in the approximate order in which they appear to define their meaning in the context in which they are used.  This suggests, consistent with the discussion above, that the claims, when using terms defined in the glossary, are not to be read as if they literally incorporated the defined terms. 

65                        Once this construction is applied, it is apparent that there is no material difference between a requirement in the accepted specification for application 364 that “said fibers, said headers and said permeate collection means together forming a vertical skein wherein said fibers are essentially vertically disposed” and a requirement in application 855 that “said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate with the fibers oriented essentially vertically”.  The latter is within the scope of the former.

Fibers having substantially the same length

66                        Claim 1 of the accepted specification for application 364 refers in the seventh sub-paragraph to the fibers “having substantially the same length”.  Memcor noted that this requirement was missing from the specification for application 855 and submitted that it would permit fibers of different lengths to be used, thereby broadening the scope of the monopoly. 

67                        I disagree.  Both specifications require the fibers to be from 0.1% to 5% greater than the fixed vertical distance between the two headers in order to permit the necessary sway or restricted displacement of an intermediate portion of each fiber independently of the movement of other fibers.  It seems to me that the specified range of 0.1% to 5% greater than the fixed vertical distance itself ensures that each fiber is of “substantially” the same length.  Moreover, nothing in the balance of the specification suggests any method of attaching fibers to a header in such a way as to result in fibers not having substantially the same length.  All of the methods described indicate a result in which the fibers will be basically the same length.  This requirement also seems inherent within the device which involves two headers at a fixed distance apart (oriented vertically). 

68                        For these reasons, I do not consider that the omission of the phrase “having substantially the same length” from claim 1 of the specification for application 855 means that the invention falls outside the scope of the claims of the accepted specification for application 364.

“Subject” and “subjectable”

69                        Memcor opposed the application on the ground that claim 1 of the accepted specification for application 364 says the fibers “are subject to a transmembrane pressure differential” whereas the specification for application 855 says the fibers “are subjectable in use to a trans-membrane pressure differential”.  The differential range nominated is the same in each specification.

70                        I have recorded my conclusion that the device in the accepted specification for application 364 is for a device suitable for a particular purpose rather than a device in use.  Consistent with that conclusion, I see no material difference between the two descriptions.  This conclusion is reinforced by the use of the word “wherein” in each of the claims.  The device in each specification is one suitable for the purpose of substantially continuous withdrawal of permeate when the device, in use, is subject to a particular pressure differential. 

Potting resin “near …ends”

71                        The concluding paragraph of claim 1 of the accepted specification for application 364 refers to the fibers of each header being “spaced apart to a desired lateral spacing between fibers by said potting resin which extends over only each terminal portion of said fibers near their ends, so as to maintain said ends in closely spaced apart relationship”.  Claim 1 of the specification for application 855 says the fibers are “spaced apart to a desired lateral spacing between fibers by said potting resin, to as maintain the ends in closely spaced apart relationship”.  This issue is connected with Memcor’s (and Professor Chen’s) position with respect to the fibers having to protrude from the permeate-discharge face of the headers.  Professor Chen considered that the reference to the potting resin being near the ends of the fibers confirmed the requirement of protrusion. 

72                        I do not accept this approach.  Consistent with the submissions of GE and the evidence of Dr Baker, I consider that the concluding paragraph of claim 1 effectively requires the fibers to be separated by the potting resin, with the potting resin near but not over the open ends of the fibers.  Claim 1 of the specification for application 855 also requires the fibers to be spaced apart by the potting resin and all open ends of the fibers to be open to a permeate-discharging face.  This latter requirement would also only permit potting resin near, rather than over, the ends of the fibers. 

73                        Accordingly, I do not characterise the omission of the words “which extends over only each terminal portion of said fibers near their ends” from claim 1 of the specification for application 855 as introducing any material difference when compared to claim 1 of the accepted specification for application 364.

Through passages

74                        Claim 1 of the specification for application 855 contains a reference to “through passages…connected to a source of a pressurised gas” whereas claim 1 of the accepted specification for application 364 does not.  I accept GE’s submission that, properly construed, this phrase imposes an additional limitation on the device in application 855.  In other words, the scope of the monopoly claimed is narrowed rather than expanded by this reference.  The requirement for through passages restricts the means by which the gas creating the bubble zone around the fibers is created.  It follows that this restriction does not mean that the invention in application 855 is outside the scope of the claims of the accepted specification for application 364.

Some other observations

75                        I do not accept Memcor’s submission that the difference in the language of the claim sets necessarily indicates an intention to claim a broader monopoly.  As Memcor itself submitted, speculation about the patentee’s intentions is impermissible.  There are many possible explanations for the textual differences.  Nevertheless, the question remains that posed by s 79B(1) of the Act, specifically (given Memcor’s grounds of opposition), s 79(1)(b). 

76                        I consider that the construction I have adopted satisfies the requirements emphasised by Memcor for a harmonious reading of the claims, consistent with the requirement that the claims define a single invention only (s 40(4) of the Act). 

77                        I am aware that I have not referred to each point made by Professor Chen and Dr Baker in supporting their competing opinions.  The reason for this is that, as both parties observed, the experts frequently strayed into the ultimate question of the proper construction of the claims which is a matter for the Court. 

78                        Insofar as GE submitted that Professor Chen’s evidence should be rejected because of a pre-existing relationship with Memcor, I should record my conclusion rejecting that submission.  Nothing in the evidence indicated any basis upon which to cast doubt on Professor Chen’s independence. 

79                        I recognise that my reasons are not the same as those of the delegate of the Commissioner of Patents.  The delegate considered that two claims in the accepted specification for application 364 were not covered by the claims of the specification for application 855 (first, that the open ends of the fibers extend from a permeate-discharging face and second, the reference to the vertical skein).  The delegate based his conclusion of patentability on claim 16 rather than claim 1.  As both parties observed, the evidence before the delegate was not the same as the evidence in this proceeding.  Accordingly, the weight to be given to the delegate’s reasons is less than might otherwise be the case.  Further, the delegate stated only that application 855 “did not cover” the identified features.  For the first feature, the delegate gave no reasons.  For the second, the delegate appears to have relied on the lack of any reference to fibers of substantially equal length in the definition of vertical skein.  For the reasons given above, I am satisfied that neither difference is material in the context set by the terms of s 79B(1)(b).

80                        I have not dealt with the dispute between the parties about the omnibus claims (claims 15 and 16).  It is unnecessary to do so because I accept GE’s primary case about claim 1 of the specifications.  That is, the invention in claim 1 of the specification for application 855 falls within the scope of claim 1 of the accepted specification for application 364.  If it be necessary to say so, I also consider that the particular conclusions reached mean that claim 1 of the specification for application 855 falls within the scope of claims 15 and 16 of the accepted specification for application 364.  The references in claims 15 and 16 to a microfiltration membrane device or gas-scrubbed assembly “substantially as herein described with reference to the accompanying drawings” is sufficiently broad to encompass the invention claimed in application 855.

CONCLUSIONS

81                        I do not accept any of Memcor’s grounds of appeal.  It follows that cl 3.12(1)(c) to the Regulations applies to determine the priority date of each of the claims in the specification for application 855.  On that basis, the Commissioner’s delegate was correct to dismiss Memcor’s opposition and direct the sealing of the application.  Accordingly, the appeal should be dismissed with costs.

 

I certify that the preceding eighty-one (81) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot.

Associate:

Dated:         20 May 2009

Counsel for the Applicant:	Mr D M Yates SC and Ms S Chrysanthou
Counsel for the Respondent:	Mr D Sharvin QC and Mr C Dimitriadis
Solicitor for the Applicant:	Shelston IP Lawyers
Solicitor for the Respondent:	Corrs Chambers Westgarth

Date of Hearing:	20-21 April 2009
Date of Judgment:	20 May 2009