Case: Wm Wrigley Jr Company v Cadbury Schweppes Pty Ltd (2005) 66 IPR 298
Outcome: considered
In Wm Wrigley Jr Company v Cadbury Schweppes Pty Ltd (2005) 66 IPR 298 ( 'Wrigley' ) at 314-315 [87]-[93], Heerey J held that a manner of manufacture argument could be advanced under s 100(1)(d) of the 1952 Act so long as the ground in s 100(1)(d) was established on the face of the specification. His Honour expressly stated that this was the effect of the decision in Ramset . Furthermore, his Honour considered that the question whether or not the ground in s 100(1)(d) was established on the face of the specification was to be determined by considering and applying the principles discussed in Microcell . 200 In the present case, Warner-Lambert did not dispute that the US Patent is incorporated into the specification for the Enantiomer Patent. Ranbaxy's argument therefore does not require me to look beyond the face of the specification. This view is supported by the decisions of the Full Court in Merck at 518-523 [27]-[39] and Bristol-Myers at 536 [30] and Heerey J in Wrigley at 314 [87]-[93]. 228 These principles were applied by Heerey J in Wrigley where he made the following observation at 321 [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] HCA 75 ; (1985) 157 CLR 215 at 219, 236, 250 and 262...' 229 Under the heading, 'Background of the Invention', the patent specification states: 'It is now unexpectedly found that the enantiomer having the R form of the ring-opened acid of trans-5 (4 fluorophenyl) 2 (1 methylethyl) N,4 diphenyl 1 [2 tetrahydro 4 hydroxy 6 oxo 2 H pyran 2 yl) ethyl] 1 H pyrrole 3 carboxamide; that is [R (R*,R*)] 2 (4 fluorophenyl) &szlig;, &#948; dihydroxy 5 (1 methylethyl) 3 phenyl 4 [(phenylamino)carbonyl] 1 H pyrrole 1 heptanoic acid, provides surprising inhibition of the biosynthesis of cholesterol.' 230 On the next page, after referring to what was generally known in the field concerning the inhibition of HMG-CoA reductase, the specification states: 'However, an ordinarily skilled artisan may not predict the unexpected and surprising inhibition of cholesterol biosynthesis of the present invention in view of these disclosures.' 369 These provisions are directed to the question whether the invention enables the addressee to attain the result promised by the patentee in the patent specification: see Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79 ( 'Rehm' ) at 96; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267 per Lockhart J; Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 ( 'Old Digger' ) at [216]; Wrigley at [134]-[141]. Want of utility in this sense is different from want of utility in the broader commercial sense that the invention is useless for any purpose whatsoever: see Alsop's Patent (1907) 24 RPC 733 at 752; and Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 431.