E. I. Du Pont De Nemours and Company v Imperial Chemical Industries PLC [2006] FCA 1402

E. I. Du Pont De Nemours and Company v Imperial Chemical Industries PLC [2006] FCA 1402

No issue estoppel arose because the earlier decisions concerning Application 658005 decided lack of novelty by reference to independent claim 1 and the Lubrizol patent. The narrower question whether the Lubrizol patent disclosed for novelty purposes the specific ternary mixture now claimed in the amended divisional...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
31 October 2006
Procedural Posture
Application for Declaratory and Other Relief Concerning Asserted Issue Estoppels in Patent Opposition Proceedings / Judgment After Hearing; Application Dismissed
Outcome
Application dismissed.
Legal Topics
['issue Estoppel' 'identity of Issues' 'patent Novelty' 'anticipation' 'divisional Patent Applications' 'patent Opposition']
['intellectual Property' 'patents' 'civil Procedure'] ['issue Estoppel' 'identity of Issues' 'patent Novelty' 'anticipation' 'divisional Patent Applications' 'patent Opposition']

Source-derived case record

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Procedural Posture

Application for Declaratory and Other Relief Concerning Asserted Issue Estoppels in Patent Opposition Proceedings / Judgment After Hearing; Application Dismissed

Legal Issues

  1. 1 ['Whether the reasons and orders of Branson J in proceeding N1248 of 1999 created an issue estoppel that the alleged invention defined in all claims of the opposed divisional application was not novel.' 'Whether the reasons and orders of the Full Court on the application for leave to appeal created an issue estoppel that bound the parties in relation to the opposed divisional application.' 'Whether there was identity between any issue decided in the earlier proceedings and any issue falling for determination in relation to the opposed divisional application.']

Ratio Decidendi

No issue estoppel arose because the earlier decisions concerning Application 658005 decided lack of novelty by reference to independent claim 1 and the Lubrizol patent. The narrower question whether the Lubrizol patent disclosed for novelty purposes the specific ternary mixture now claimed in the amended divisional application did not arise before, and was not considered by, Branson J or the Full Court. Because there was no identity between any issue previously decided and any issue for determination in the present opposition, Du Pont's claim failed at the threshold.

Court Disposition

Application dismissed.

Orders

  • ['The application be dismissed.' 'The applicant pay the costs of the respondents, to be assessed or taxed.']