E I Du Pont de Nemours & Co v Imperial Chemical Industries PLC

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judgment Date: 22 October 2007
• Neutral Citation: [2007] FCAFC 163

FEDERAL COURT OF AUSTRALIA

E I Du Pont de Nemours & Co v Imperial Chemical Industries PLC

[2007] FCAFC 163

PATENTS – refrigerants and lubricant compositions – Parent Application found to lack novelty – amended divisional application subsequently accepted by delegate of Commissioner for Patents – whether delegate erred in rejecting claim of issue estoppel

ISSUE ESTOPPEL – whether finding that Parent Application lacked novelty necessarily encompassed finding that specific dependent claim within that Application also lacked novelty – whether issue in the later proceeding in which estoppel raised as a bar “the same issue” as that decided by judgment in earlier action

Patents Act 1990 (Cth) ss 18(1)(a), 18(1)(b)(i), (ii), 40(2), 51 and 79B

E I Du Pont De Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; [2002] FCA 230 considered

Imperial Chemical Industries PLC v E I Dupont De Nemours & Co (2002) AIPC ¶91-818;[2002] FCAFC 264 considered

E I Du Pont De Nemours & Co v Imperial Chemical Industries PLC (2006) 70 IPR 274; [2006] FCA 1402affirmed

Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399; [2004] FCA 1658approved

ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577; [1999] FCA 345considered

R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 cited

The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457cited

Blair v Curran (1939) 62 CLR 464followed

Hoysted v Federal Commissioner of Taxation (1921) 29 CLR 537discussed

Duchess of Kingston’s Case (1776) 2 Smith LC (13^th ed) 644cited

Outram v Morewood (1803) 3 East 346; 102 ER 630 cited

Heston Overseers v St Bride Overseers (1853) 1 El & Bl 583; 118 ER 556 cited

R v Inhabitants of the Township of Hartington Middle Quarter (1855) 4 El & Bl 780; 119 ER 288 cited

Routledge v Hislop (1860) 2 El & El 549; 121 ER 206 cited

Jackson v Goldsmith (1950) 81 CLR 446cited

Queensland Trustees Ltd v Commissioner of Stamp Duties (Qld) (1956) 96 CLR 131 cited

Ramsay v Pigram (1968) 118 CLR 271 cited

Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589 cited

Mills v Cooper [1967] 2 QB 459 cited

Carl Zeiss Stiftung v Rayner and Keeler Ltd (No 2) [1967] 1 AC 853 cited

Hunter v Chief Constable of the West Midlands Police [1982] AC 529cited

DSV Silo-und Verwaltungsgesellschaft mbH v Owners of The Sennar [1985] 2 All ER 104considered

Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 cited

Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513cited

MJA Scientifics International Pty Ltd v S C Johnson & Son Pty Ltd (1998) 43 IPR 287; [1998] FCA 1467cited

Hoystead v Commission of Taxation [1926] AC 155 cited

E. I. DU PONT DE NEMOURS AND COMPANY v IMPERIAL CHEMICAL INDUSTRIES PLC AND COMMISSIONER OF PATENTS

NSD 2296 OF 2006

WEINBERG, STONE AND BENNETT JJ

22 OCTOBER 2007

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 2296 OF 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	E. I. DU PONT DE NEMOURS AND COMPANY Appellant
AND:	IMPERIAL CHEMICAL INDUSTRIES PLC First Respondent COMMISSIONER OF PATENTS Second Respondent

JUDGES:	WEINBERG, STONE AND BENNETT JJ
DATE OF ORDER:	22 OCTOBER 2007
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The appeal be dismissed, with costs.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 2296 OF 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	E. I. DU PONT DE NEMOURS AND COMPANY Appellant
AND:	IMPERIAL CHEMICAL INDUSTRIES PLC First Respondent COMMISSIONER OF PATENTS Second Respondent

JUDGES:	WEINBERG, STONE AND BENNETT JJ
DATE:	22 OCTOBER 2007
PLACE:	SYDNEY

REASONS FOR JUDGMENT

WEINBERG & STONE JJ

1 We have had the benefit of reading, in draft, the reasons for judgment prepared by Bennett J. We agree with those reasons, and with the orders proposed. We wish to add some observations of our own.

Introduction

2 By further amended statement of claim dated 17 October 2006 the applicant, E I Du Pont de Nemours and Company (“Du Pont”), sought injunctive relief against the first respondent, Imperial Chemical Industries Plc (“ICI”). ICI had earlier instituted a Divisional Application pursuant to s 79B of the Patents Act 1990 (Cth) (“the Act”) in relation to a compound designed to produce a refrigerant that overcame the ozone depletion characteristics of earlier heat transfer fluids.

3 Du Pont had previously been successful in opposing ICI’s Parent Application, filed on 6 October 1992, which was initially accepted by the Commissioner of Patents. However, that decision was set aside by Branson J: E I Du Pont De Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; [2002] FCA 230. Her Honour found that the Parent Application lacked novelty because it had been anticipated by an earlier patent known as the “Lubrizol Patent”. Her decision was affirmed by a Full Court: Imperial Chemical Industries PLC v E I Dupont De Nemours & Co (2002) AIPC ¶91-818;[2002] FCAFC 264.

4 Du Pont argued that ICI’s Divisional Application should similarly be rejected, essentially on the basis of various issue estoppels which were said to arise out of the earlier opposition proceedings. Gyles J, dismissed Du Pont’s application for injunctive relief, holding that there were no issue estoppels, as claimed. His Honour found that there was no identity between any issue decided by Branson J, or indeed by the Full Court, and any issue which fell for determination in relation to the proposed Divisional Application: E I Du Pont De Nemours & Co v Imperial Chemical Industries PLC (2006) 70 IPR 274; [2006] FCA 1402. Du Pont now appeals against his Honour’s judgment and orders.

Background

5 The Montreal Protocol on Substances that Deplete the Ozone Layer (“the Protocol”) was adopted in 1987. Australia is a signatory to that Protocol. The Protocol recognised that the amount of ozone in the Earth’s stratosphere was steadily declining. It further recognised that the production of certain chlorofluorocarbons (“CFCs”) was a factor in ozone depletion. The Protocol established a worldwide schedule for phasing out those CFCs which were no longer protected by patents. This provided opportunities to develop and market new, and less harmful, compounds.

6 Refrigerants are substances that by undergoing a change in phase (liquid to gas and gas to liquid) release or absorb heat and thereby achieve a cooling effect. Originally, the vast majority of refrigerants were CFCs. At a later stage, and over time, CFCs were replaced by less damaging hydrochlorofluorocarbons (“HCFCs”). However, these too contained chlorine, and were still ozone depleting.

7 Later, hydrofluorocarbons (“HFCs”), which contain no chlorine, and therefore do not harm the ozone layer, came to be developed. The best known of these HFCs is described as R-134a. It should be noted that refrigerants are classified according to a numbering system, based upon the number of carbon, hydrogen, fluorine atoms that they contain. Customarily the prefix “R” precedes that number.

The earlier judgments

8 In order to understand the issues raised in this appeal, it is necessary to consider carefully the judgment of Branson J rejecting the Parent Application. Her Honour’s judgment was delivered on 12 March 2002. It concerned two patent applications, numbers 658005 (the Parent Application) and 654176 (the separate patent application). Both patent applications involved refrigerant compositions to replace existing refrigerant compositions which contained CFCs.

9 Branson J observed (at [5]) that the basic components of a refrigeration system are a compressor, condenser, expansion device and evaporator. The cooling effect is achieved by the following steps:

· a refrigerant is boiled in the evaporator, absorbing heat through its walls from the refrigerated space and its contents;

· the refrigerant gas released by boiling the refrigerant is piped to the compressor where it is compressed to a high pressure. The hot gas then passes to the condenser. In the condenser it loses its heat through the wall to the atmosphere and, as it cools, condenses into liquid; and

· the cooled liquid, still under pressure, is piped towards the evaporator, where the pressure is reduced. This lowers the boiling point of the liquid. The refrigerant, now under low pressure, starts to boil as it enters the evaporator. There, it absorbs heat, causing it to continue to boil until, by the time it reaches the other end, the heat which it has absorbed has vaporized the refrigerant. The vapour is then drawn back to the compressor, and the cycle repeated.

10 Both Du Pont and ICI responded to the Protocol by seeking ways to develop refrigerants which did not contain CFCs. ICI developed two compositions designed to achieve that objective.

11 The first of these was contained in the Parent Application. The specification in that application stated that:

“The present invention relates generally to lubricants and more particularly to working fluid compositions contained in heat transfer devices which comprise the lubricant and a heat transfer fluid.”

12 Claim 1 of the Parent Application was in the following form:

“A working fluid composition comprising:

(A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2‑tetrafluoroethane and pentafluoroethane; and

(B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula:

O

| |

R(O – C - R¹)_n | |

wherein

R is the hydrocarbon radical...