Case: Lubrizol Corporation Inc v Imperial Chemical Industries plc [2000] FCA 1464 ; (2000) 50 IPR 526
Outcome: cited
effect of these provisions is that the Patent can be revoked under the Act only on a ground of invalidity that would have been available under the 1952 Act. In any case where a relevant ground of invalidity under the 1952 Act is narrower than the corresponding ground under the Act, the patentee has the benefit of the narrower ground and is not to be worse off than if the 1952 Act had continued to operate: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404 ; (1993) 44 FCR 239 at 250 ff per Lockhart J, with whom Northrop J agreed and with whom Burchett J agreed on this point; ICI Chemicals &amp; Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214 ( Lubrizol ) at [22] [24]; Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2000] FCA 1303 ; (2000) 51 IPR 375 at [8] [10]. Professors Banwell and Davies Both parties rely on the following passage from the English Court of Appeal's judgment in General Tire &amp; Rubber Co v Firestone Tyre &amp; Rubber Co Limited [1972] RPC 457 at 485-486: If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated. If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented : Flour Oxidising Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. [my emphasis] This passage has been followed in Lubrizol at [61] and in numerous other cases. I note that my rulings in relation to Documents 4 and 5 are consistent with certain observations made on applications for orders for discovery by Burchett J in F Hoffmann-La Roche AG v Chiron Corporation (2000) 47 IPR 516 at [19] [21] and by Branson J in Lubrizol Corporation Inc v Imperial Chemical Industries plc [2000] FCA 1464 ; (2000) 50 IPR 526 at [33] (although, unlike the present case, those cases involved the exercise of a discretion and a balancing exercise).