Case: Imperial Chemical Industries PLC v EI Dupont De Nemours &amp; Co (2002) AIPC 91-818 [2002] FCAFC 264
Outcome: referred to
leave was refused by the Full Court on 23 August 2002 ( Imperial Chemical Industries PLC v EI Dupont De Nemours &amp; Co (2002) AIPC 91-818; [2002] FCAFC 264). In the course of the judgment, the Full Court said (at [17] [20]): 'The primary judge found that integer (A) of Claim 1 of the Lubrizol Patent anticipated integer (A) of PA658005. Integer (A) of the Lubrizol Patent requires that the liquid composition must comprise (in addition to a minor amount of a lubricant) a major amount of at least one hydrocarbon that contains both fluorine and one or two carbon atoms. Integer A of PA 658005 requires that the composition will comprise (in addition to a lubricant) a mixture of at least two hydrofluoroalkanes selected from: &#8226; difluoromethane, &#8226; 1,1,1,2-tetrafluoroethane &#8226; pentafluoroethane An alkane is a fully saturated carbon or hydrocarbon chain. That is to say, there are as many hydrogen atoms attached to the carbon atoms as possible and only single bonds exist between the carbon atoms. Thus, the specification states that each of the above three compounds is a fully saturated hydrocarbon chain. Each of them contains fluorine and each contains one or two carbon atoms. Thus, difluoromethane contains two fluorine atoms and one carbon atom. Tetrofluoroethane contains four fluorine atoms and two carbon atoms. Pentofluoroethane contains five fluorine atoms and two carbon atoms. Clearly, each of those compounds is encompassed by the description " fluorine-containing hydrocarbon containing one or two carbon atoms ". Thus, the use of a liquid composition described in Claim 1 of PA658005 is clearly disclosed by the Lubrizol Patent. There is no suggestion in the complete specification of PA658005 that a liquid composition comprising a refrigerant that satisfies the description in integer (A) and a lubricant that satisfies integer (B) would be any more effective than, or perform a function different from, a composition comprising a major amount of at least one fluorine containing hydrocarbon containing one or two carbon atoms and the lubricant described in integer (B) of Claim 1 of the Lubrizol Patent. That is to say, PA658005 is not an instance of the selection of something disclosed by the Lubrizol Patent by way of a further inventive step. It is no more than a particular example of the invention disclosed by the Lubrizol Patent. It is, therefore, crystal clear that a patent granted pursuant to PA 658005 would be revocable. The correctness of that conclusion by the primary judge is attended with no doubt. Accordingly, there would be no utility in granting leave to appeal from her Honour's orders in relation to PA658005. In the circumstances, it is not necessary to consider the other ground upon which her Honour concluded that the opposition to PA 658005 should succeed.' In the meantime, on 28 March 2002, ICI filed a Divisional Application of Application 658005 under No 29314/02. Divisional Applications are provided for by s 79B of the Patents Act. At that stage it was in identical form to the parent application. No notice of intention to file that Divisional Application was given to either Du Pont or the Court. The proceeding had been stood over by Branson J on 12 March 2002 to 5 April 2002 for submission of draft orders.