ICI Chemicals & Polymers Pty Ltd v Lubrizol Corp Inc [1999] FCA 662

ICI Chemicals & Polymers Pty Ltd v Lubrizol Corp Inc [1999] FCA 662

Although ICI's disconformity point was raised in oral argument, Lubrizol's failure to respond resulted from a misapprehension contributed to by the absence of the point from the particulars and written submissions, no orders had been made, no further evidence was needed, and the interests of justice required further submissions to be considered. On the substantive issue, the remaining claims were not fairly based on the specification because they were limited to refrigerants containing no halogen other than fluorine, while the specification stated that the refrigerant in the composition could contain chlorine, creating inconsistency and doubt about the invention as delimited by the...

Jurisdiction
Australia
Judgment Date
20 May 1999
Procedural Posture
Patent Validity and Infringement Proceeding / Further Argument on Whether Lubrizol Should Be Permitted to Re Open the Question of Compliance With Section 40(3) of the Patents Act 1990 (cth), Following Earlier Reasons and Before Orders on Amendment Under Section 105
Outcome
Further argument was permitted and considered, but the Court maintained its earlier conclusion that claims 2, 3 and 10 to 27 were not fairly based on the matter contained in the specification; ICI was to have leave to further amend its Amended Particulars of Invalidity and the parties were to bring in short minutes...
Legal Topics
['leave to Re Open' 'fair Basis' 'complete Specification' 'patent Amendment' 'patents Act 1990 (cth) S40(3)' 'patents Act 1990 (cth) S105']
['practice and Procedure' 'patent Law'] ['leave to Re Open' 'fair Basis' 'complete Specification' 'patent Amendment' 'patents Act 1990 (cth) S40(3)' 'patents Act 1990 (cth) S105']

Case Brief

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Procedural Posture

Patent Validity and Infringement Proceeding / Further Argument on Whether Lubrizol Should Be Permitted to Re Open the Question of Compliance With Section 40(3) of the Patents Act 1990 (cth), Following Earlier Reasons and Before Orders on Amendment Under Section 105

Legal Issues

  1. 1 ['Whether Lubrizol should be permitted to re-open argument on whether the remaining patent claims complied with section 40(3) of the Patents Act 1990 (Cth).' 'Whether claims 2, 3 and 10 to 27 were fairly based on the matter described in the complete specification after abandonment of claims 1 and 4 to 9.' 'Whether the specification was inconsistent with the remaining claims because it described refrigerants containing chlorine while the remaining claims were limited to refrigerants in which fluorine was the only halogen present.']

Ratio Decidendi

Although ICI's disconformity point was raised in oral argument, Lubrizol's failure to respond resulted from a misapprehension contributed to by the absence of the point from the particulars and written submissions, no orders had been made, no further evidence was needed, and the interests of justice required further submissions to be considered. On the substantive issue, the remaining claims were not fairly based on the specification because they were limited to refrigerants containing no halogen other than fluorine, while the specification stated that the refrigerant in the composition could contain chlorine, creating inconsistency and doubt about the invention as delimited by the...

Court Disposition

Further argument was permitted and considered, but the Court maintained its earlier conclusion that claims 2, 3 and 10 to 27 were not fairly based on the matter contained in the specification; ICI was to have leave to further amend its Amended Particulars of Invalidity and the parties were to bring in short minutes...

Orders

  • ['Leave to ICI to amend further the Amended Particulars of Invalidity by adding the further particular of non-compliance with sections 40(2) and 40(3) set out in the reasons.' 'The parties are to bring in short minutes relating to any proposed application by Lubrizol for amendment pursuant to section 105 of the...