Case: ICI Chemicals &amp; Polymers Ltd v Lubrizol Corporation Inc. (2000) 106 FCR 214
Outcome: cited
to the second representation concerning the amendments, the statements in the documents dated 24 October 2006 concern the effect of the prior art. A statement made by an applicant in good faith to the Commissioner concerning the effect of the prior art is unlikely to provide a basis for concluding that such a statement of opinion is false, when that opinion is subsequently shown to be incorrect ( ICI Chemicals &amp; Polymers Ltd v Lubrizol Corporation Inc. (2000) 106 FCR 214). A statement made expressing an opinion about the relationship or otherwise between disclosures in the prior art and changes to the scope of the monopoly defining the claims, so as to address differentiation of the invention from elements of the prior art, simply reflects a debate between the Commissioner and the applicant about the scope of the claims and the effect of proposed changes to the language of the claims judged against the prior art. Statements about those matters are simply, as in this case, argumentative statements going to matters of opinion about which minds might, in good faith, differ. There is no suggestion of bad faith on the part of SBriggs. The suggestion in this case is that SBriggs proposed an amendment which had the effect of impermissibly broadening the scope of claims 1 to 13 by reference to the express limitation contained in claim 14. Claim 14 is limited in its terms to a spring of unitary construction. Claims 1 to 13 are not said to bear an inclusive construction of multiple springs of alternate winding as a matter of inference from claim 14. They are said to bear that construction for the reasons earlier identified. The amendments proposed by SBriggs either narrow the scope of two claims to better differentiate the invention from the prior art or not. Whether that statement is true or correct is simply a matter of debate between the applicant and the Commissioner. As Mr Hunter says, claim 14 adds nothing to claims 1 to 13. No false statement or misrepresentation arises out of putting a view of the effect of the changes. Accordingly, declarations will be made that threats of patent infringement proceedings made by SBriggs on 4 April 2007 by its solicitors and a further letter by its solicitors dated 16 July 2007 are unjustifiable. SBriggs shall be restrained from further threats of patent infringement. The Amended Cross-Claim of SBriggs by which relief is sought for infringement of claim 13 of the patent in suit, is to be dismissed. The Amended Further Cross-Claim by Uniline by which revocation of the patent in suit is sought, which only arises if infringement is found, is to be dismissed. I certify that the preceding one hundred and forty-four (144) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate: Dated: 16 March 2009 Counsel for the Applicant: Mr Crowe SC and Mr Cooper Solicitor for the Applicant: DLA Phillips Fox Counsel for the Respondents: Mr Musgrave Solicitor for the Respondents: Mallesons Stephen Jaques Date of Hearing: 14, 15, 16 and 17 April 2008 Date of Judgment: 16 March 2009 SCHEDULE 1 SCHEDULE 2 SCHEDULE 3 SCHEDULE 4 SCHEDULE 5 SCHEDULE 6 SCHEDULE 7 SCHEDULE 8 SCHEDULE 9 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/222.html