Persistence Doesn’t Pay: Federal Court Calls Time on Decade-Long Patent Amendment Battle

Cytec Industries Inc. v Nalco Company (No 4) [2024] FCA 1318

Introduction

Justice Burley of the Federal Court of Australia has delivered another judgment in the ongoing patent dispute between Cytec Industries Inc. (Cytec) and Nalco Company (Nalco), this time refusing Nalco’s latest attempt to amend its patent application.  The case concerns patent application AU2012220990 entitled ‘Reducing aluminosilicate scale in the Bayer process’, which discloses methods for reducing silica scale formation in Bayer process tanks by adding specific chemical mixtures resulting from reactions between certain compounds.  The Bayer process itself involves dissolving crushed bauxite in hot caustic liquor to extract alumina, during which unwanted silica deposits accumulate as scale on tank surfaces.

The case has a complex procedural history.  After Nalco filed its patent application in February 2012, it faced opposition from Cytec in August 2015.  What followed was a series of amendment attempts and opposition proceedings before the Patent Office, eventually leading to Federal Court proceedings.  As previously reported, in August 2021, Justice Burley found that the claims lacked support and sufficient disclosure, but rejected Cytec’s submissions in respect of lack of novelty or best method.  In response, Nalco filed further amendment applications aimed at overcoming the lack of support and sufficient disclosure findings, culminating in its sixth proposed amendment (the Amendment Application) which is the subject of this decision.

Key Issues 

Cytec raised multiple grounds of opposition, submitting that the Amendment Application would lack support, lack clarity, claim matter that extends beyond that disclosed in the specification, and fail to disclose the best method.  Cytec also argued that the Amendment Application should be refused on discretionary grounds as it did not overcome the deficiencies identified in the 2021 judgment and because of alleged delay and misconduct in seeking the amendment.

Justice Burley condensed the dispute into three key issues:

(i) the proper construction of the claims as amended;

(ii) the consequence of that construction under sections 105(4) and 102(2) of the Patents Act 1990 (Cth) (the Act); and

(iii) the exercise of discretion under section 105(1A) of the Act.

Nalco’s Amendment Application sought two key changes.  First, Nalco proposed the following narrowing amendment to claim 1:

(1)    A method for the reduction of aluminosilicate containing scale in a Bayer process comprising the steps of:

(2)    adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecules is selected from the group consisting of compounds:

(3)    (I) through (IX), (XXVIII) (XIII), (XV) through (XXX) and (XXXII) through (XLVII), (LIII) through (LVIII) and (LX)

(4)    within a product mixture formed from the reaction of a) hexane diamine, ethylene diamine or 1-amino-2-propanol; b) 3-glycdixoypropyltrimethoxysilane; and c) 2-ethylhexyl glycidyl ether:

Second, Nalco sought to separate claim 1 into five independent claims, which specified:

(i) a choice of amine: hexanediamine (claim 1); ethylenediamine (claims 2 and 3); and 1-amino-2-propanol (claims 4 and 5); and

(ii) whether the product mixture has undergone a hydrolysis step prior to being added to the Bayer process stream, in the case of claims 1, 2 and 4; or not, in the case of claims 3 and 5.

Construction

Nalco submitted that there were two issues of claim construction arising for determination:

(a) Whether the proposed amended claims include[d] within their scope product mixtures made up of all of the particular small molecules identified in the claims (being 13 identified small molecules for claim 1, 14 small molecules for claims 2 and 3, and 3 small molecules for claims 4 and 5) but no others (Small Molecule Construction Issue); and

(b) Whether claims 1, 2 and 4 [were] directed to a product mixture that has undergone a hydrolysis step and claims 3 and 5 directed to a product mixture that has not undergone a hydrolysis step prior to being added to the Bayer Process stream (Hydrolysis Construction Issue).

Small Molecule Construction Issue

Nalco argued that its amended claims were directed to a complex product mixture formed from the reaction of A (amine) + GPS (3-glycidoxypropyltrimethoxysilane) + E (2-ethylhexyl glycidyl ether), that contained all the identified small molecules plus additional molecules and polymers.  Nalco based this argument on three main points:

1. the practical impossibility of creating a mixture with only the specified molecules to the exclusion of other small molecules and polymers;

2. the meaning of terms like “within” and “formed” in the context of a “product mixture” would lead a skilled person to understand that the claims do not include within their scope a product mixture that contains only the small molecules listed; and

3. the removal of phrase “at least one” and “selected from” means that the small molecules are “within” a product mixture, and thus as a matter of ordinary English, the claims cannot refer to the entirety of the product mixture to the exclusion of other small molecules and polymers.

Justice Burley rejected Nalco’s arguments, and instead accepted Cytec’s construction that the amended claims encompassed product mixtures containing only the listed small molecules.  Consistent with the evidence in the Joint Expert Report, his Honour found that, while the claims required all specified small molecules to be present, they did not require the presence of additional molecules – more may be included, but were not essential.

Moreover, Justice Burley rejected Nalco’s argument based on “practical impossibility”, noting that the claims should be understood according to their terms, and not by reference to technical limitations or practical impossibilities.  His Honour noted Nalco’s approach assumed that the construction of the claims is to be “driven by the technical contribution to the art described in the specification”, which has been long forbidden per Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91.

Hydrolysis Construction Issue

Nalco argued that the amended claims were directed to product mixtures that have either undergone a hydrolysis step (claims 1, 2 and 4), or have not undergone a hydrolysis step (claims 3 and 5), prior to being introduced to the Bayer process stream – on the basis that a skilled person would understand there to be a distinction between those two groups of claims.

Justice Burley rejected Nalco’s construction for several reasons.  First, his Honour noted that none of the amended claims contained any language requiring or excluding a hydrolysis step, and the preference of the Court to construe claims in a manner that avoids redundancy between claims cannot serve as a basis to incorporate into the claim words that were not present.  In any event, Justice Burley did not consider the claims to be redundant as there was no overlap between the claims.  Further, his Honour observed that, although the specification made a distinction between hydrolysed and non-hydrolysed product mixtures, the language of the claims did not and thus should not be read down.

Grounds of Opposition

Having resolved the construction issues in Cytec’s favour, Justice Burley turned to the grounds of opposition to the Amendment Application.  The grounds of lack of clarity and failure to disclose the best method fell away as they were based on Nalco’s rejected construction.  The remaining grounds concerned his Honours findings regarding the Small Molecule Construction Issue.  Cytec argued that the Amendment Application should fail on three alternative bases:

1. The amendment would be futile and should be refused as a matter of discretion.

2. The amendment would claim matter beyond the disclosure in the complete specification in breach of section 105(4) and section 102(1) of the Act.

3. The specification would fail to meet the requirements for “clear enough and complete enough disclosure” and support.

Justice Burley accepted each ground.  Particularly notable was his Honour’s finding that the amended claims suffered from the same defects as the original claims – they still encompassed product mixtures containing only the specified molecules without providing sufficient technical disclosure to support such claims and without providing a clear enough and complete enough disclosure for the invention to be performed by a person skilled in the art.

On the issue of futility, Justice Burley observed that pre-grant opposition proceedings are meant to provide a “swift and economical” way to resolve disputes, not become a “decade-long war of attrition” through multiple rounds of amendments.  His Honour emphasised that the discretionary power of the Court under section 105(1A) of the Act should not be understood as providing a “magic pudding of opportunity for the creative endeavours of a patentee to craft ways of avoiding the consequences of adverse findings”, and nor should it be regarded as a “mechanism to provide a patent applicant with a basis for attempting to relitigate an issue that has already been before the Court”.  Rather, the principle of finality insists that a “patent applicant should, on appeal from an opposition, advance its best and final version of the specification and claims that it desires to litigate and the decision on appeal should be regarded as resolving any controversy regarding the scope and construction of the specification”.

Finally, Justice Burley declined to consider Cytec’s additional submissions regarding unreasonable delay, finding it unnecessary given the conclusions reached on the other grounds for refusal.

Outcome

Justice Burley concluded that the Amendment Application should be refused.  Nalco have subsequently filed an application for leave to appeal to the Full Court of the Federal Court.

Implications

Justice Burley’s decision reinforces several key principles in patent amendment proceedings.  First, it confirms that patent claims will be construed according to their ordinary meaning, and potential issues of redundancy between claims will not serve as a basis for reading integers into claims that are not present in the claims.  Second, it clarifies that the discretionary power of a Court under section 105(1A) is not meant to provide endless opportunities to avoid adverse findings – patentees should present their strongest amendments early in opposition proceedings.  Finally, patentees should also ensure their specifications provide sufficient technical disclosure to support their claims from the outset, rather than trying to fix fundamental deficiencies through multiple and protracted amendments.  Attention now turns to Nalco’s application for leave to appeal and whether the Full Court of the Federal Court will decide to weigh in.

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