IPwars.com

Mainly intellectual property (IP) issues Down Under

The patent was not infringed

Thank you to all those readers who expressed a view in last Tuesday’s poll. The good news is that better than 80% of you answered correctly. According to the traditional view, recently applied by Rares J, there would be no infringement in Australia in the circumstances outlined.

On the traditional view, a patent (like any other intellectual property right in Australia) is a territorial right. A patent, of course, confers the exclusive right to exploit the claimed invention in the patent area. Exploit in this context meaning:

(a) where the invention is a product–make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or

(b) where the invention is a method or process–use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.

Under the old form of the patent grant, the patentee was granted the exclusive right to make, use, exercise and vend the invention. In BASF v Hickson, the House of Lords ruled that a defendant in England, who entered into a contract with another party to make some goods for that third party in Switzerland and deliver them to that third party in Switzerland, did not infringe even though the third party subsequently imported the goods into England.[1] Lord Davey said:[2]

It must be such a vending as will be in a sense a working or use and exercise of the invention in this country or an appropriation by the vendor of some advantage which the patentee can derive from such use and exercise. A contract to deliver the goods abroad does not in any way interfere with the patentee’s rights to work and utilize his invention in this country. It is a contract to do a perfectly lawful act, and whether the contract be made in this country or abroad does not in itself affect the patentee’s monopoly of working his invention. Nor is it material to consider whether or when the property in the goods passed to the purchaser. It is lawful to be the owner of the goods if made and situate abroad, and neither the vendor nor the purchaser in my opinion thereby infringes the patent. The goods may or may not be afterwards brought into this country, and a different question will then arise, but that is no concern of the vendor after he has parted with them. I am of opinion that “vending the invention” in the common form of patent is confined to selling goods made or brought into this country ….

Load and Move has a patent in Australia for spreaders and tipplers, which are apparently used in the loading and tipping of shipping containers. CTS, another Australian company, entered into a contract with a mine in Eritrea to supply the mine with spreaders and tipplers which Load and Move considered would infringe its patent. However, CTS agreed to have the spreaders and tipplers made in China and delivered to the port in China FOB or ex works for delivery directly to the mine in Eritrea. The spreaders and tipplers would never come into Australia.

Load and Move was seeking preliminary discovery from CTS to establish whether payments for the contract with the Eritrean mine were received in Australia.

Rares J has refused preliminary discovery.

One of the conditions that must be established to obtain preliminary discovery is that the applicant reasonably believes it has a right to obtain relief against a prospective respondent.[3]

Rares J began by pointing out that a subjective belief that one’s right was being infringed was not enough; the belief had to be reasonably held. That required the existence of facts from which a reasonable person could form the required belief. That is, the belief was tested objectively.

Here, the question was whether there were facts from which a reasonable person could conclude that Load and Move’s patent was being infringed in Australia. In light of BASF v Hickson, however, Rares J held that a reasonable person could not hold such a view.

Load and Move Pty Ltd v Container Rotation Systems Pty Ltd
[2016] FCA 843

ps Sorry no post on Friday: let’s just say there was a synchronisation glitch.


  1. The third party would infringe by importing.  ?
  2. Badische Anilin Und Soda Fabrik v Hickson [1906] AC 419 at 422 – 423 cited by Rares J in Load and Move at [26].  ?
  3. FCR r 7.23.  ?

Was the patent infringed?

Both A Pty Ltd and R Pty Ltd are located in Australia.

A Pty Ltd has a patent in Australia over a gizmo.

R Pty Ltd has entered into a contract with T LL C to make 100 gizmos for T for delivery to T’s facility in Eritrea. R Pty Ltd won’t make the gizmos itself; they will be made by its manufacturer in Shenzhen, China . Once made, R’s manufacturer will deliver the 100 gizmos FOB to a ship T has chartered in Hong Kong.

Assuming that the gizmos made in Shenzhen fall squarely within the claims of A’s patent, has R Pty Ltd infringed A’s patent? Cast your vote (anonymously) below:

The answer should be posted on Friday.

Selected links,from last week

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Remedies

Not categorised

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Selected links from last (couple of) weeks

Here is a selection of links to IP-related matters I found interesting this past week (or two):

Patents

Trade marks

Copyright

Not categorised

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Selected links from last week

Here is a selection of links to IP-related matters I found interesting last week:

Patents

Trade marks

  • Is the US Olympic Committee’s [#TwitterBan Fair or Foul?](https://t.co/kmG0Avith) compare
    Telstra ‘Go to Rio’ campaign cleared by Federal Court, AOC case dismissed

Copyright

Remedies

  • Want An Enforceable Online Contract? Don’t Use A Footer Link Called “Reference”–Zajac v. Walker (USA)

Designs

Not categorised

Future of the profession

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Selected links from last week

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Not categorised

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Omnibus claims: substantially the same

In partly allowing Glaxo’s appeal, the Full Court (Allsop CJ, Yates and Robertson JJ) has ruled against an expansive interpretation of omnibus claims.

You may recall (here and here) that Reckitt Benckiser has a patent protecting its bottle / syringe combination for dispensing Panadol to children aged between 1 – 5 years old.[1]

Claim 1 claimed:

A liquid dispensing apparatus comprising a bottle, a bottle neck liner and a flat-nosed syringe having a plunger and a barrel, the barrel terminating at its distal end in a generally flat face having a diameter corresponding to the diameter of the syringe barrel and being perpendicular to the longitudinal axis of the barrel, the bottle having a bottle neck in which is located the bottle neck liner having a cylindrical body sealingly engaged inside the bottle neck such that liquid cannot flow between the bottle neck liner and the bottle neck, the bottle neck liner comprising a sleeve comprising at its lower end an inward step located within the bottle neck, an aperture being defined inwardly of the inward step, wherein the cylindrical body and the sleeve are connected together with a web of material only at the upper end of the cylindrical body and of the sleeve, wherein the sleeve is formed with a flared portion at its upper end into which the distal end of the syringe barrel passes; wherein when the syringe barrel is inserted into the sleeve the inward step prevents the syringe barrel from protruding past the step and liquid cannot flow between the sleeve and the barrel, but can leave the bottle only via the aperture and thence the syringe. (emphasis supplied)

and claim 9 was an omnibus claim:

A liquid dispensing apparatus, substantially as described with reference to the drawings and/or examples.

Glaxo marketed two different versions of its competing product:

Glaxo Version 1
Glaxo Version 1
Glaxo Version 2
Glaxo Version 2

The trial Judge held that Version 1 infringed claim 1 but, because it had a narrower nozzle section at the spout[2] and so the barrel was not uniform along its length, Version 2 did not. The barrel of Version 2 did not terminate “at its distal end in a generally flat face having a diameter corresponding to the diameter of the syringe barrel”. The trial Judge, however, then went on to find that Version 2 infringed the omnibus claim because it functioned substantially in the same way as described in the patent:

The alternate syringe has exactly the same function as that described in the patent and the drawings. The alternate syringe is a flat-nosed syringe that has a distal end that fits into the liner and achieves a good seal with it so that it can draw up liquid without leaking from the bottle or the syringe. The mere fact that there is a corresponding tip on both the barrel and the reciprocating plunger used in the alternate syringe in the second product complained of should not be allowed to disguise that that product has taken the substantial configuration resulting from the patentee’s invention and its character for the dispensing of liquids from bottles without mess using an apparatus with a flat-nosed syringe: Radiation 60 CLR at 52; Raleigh 65 RPC at 160. The alternate syringe, as incorporated into the second product complained of, is not a substantially new or different combination

The Full Court dismissed the appeal from the trial Judge’s finding that Version 1 did infringe claim 1 and Version 2 did not. Importantly for present purposes, it allowed Glaxo’s appeal from the finding that Version 2 nonetheless infringed claim 9, the omnibus claim:

[79] … contrary to the conclusion of the primary judge, the use of the word “substantially” in claim 9 in the expression “substantially as described with reference to the drawings and/or examples” does not extend the definition of the invention to “the substantial idea” disclosed by the specification and shown in the drawings.

[80] The word “substantially” provides no warrant for departing from what the specification itself mandates to be the essential features of the invention. A flat-nosed syringe dimensioned as described in the consistory statement is one of the essential features of the invention. Thus, whatever work the word “substantially” is to perform in claim 9, it cannot transform a feature made essential by the description of the invention into one that is now inessential. Put another way, an embodiment that does not possess the essential features of the invention as described, cannot be one that is “substantially as described”. Thus, the word “substantially” in claim 9 does not do the work which the primary judge held that it did.

The Full Court pointed out that the description and drawings were a particular form of the first embodiment in the patent. It was plain from the consistory clause describing the embodiment and claim 1 that a barrel of uniform diameter throughout its length was an essential feature of the invention. All claims apart from the omnibus claim were dependent from claim 1. Claim 1 was the widest form of the claimed invention. Accordingly, the omnibus claim, which is a more narrowly defined claim, could not be wider than claim 1.[3]

Perhaps continuing the swing of the interpretation pendulum back towards the ‘literal meaning’ approach, their Honours also warned against too ready an assumption that some wording in a claim was just “a slip of the pen” rather than a carefully chosen limitation.

ps As Dr Patentology points out, s 40(3A) bans (or tries to ban) the use of omnibus claims in patents the subject of the new rules under the Raising the Bar regime; i.e., in broad terms, patents the subject of an application filed on or after 13 April 2013 or, if filed earlier, which had not been the subject of a request for examination before 13 April 2013.[4]

If you have a comment or a question, please feel free to post it in the comments section or, if you would prefer, email me.

GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90

[lewis]:


  1. Australian Patent No. 2003283537 (the patent) entitled “Improvements in and relating to liquid dispensing”.  ?
  2. In expert witness legalese, “the indented section at the distal end”.  ?
  3. As the High Court explained in [Radiation]: “But it is said that the words in the claim. “ substantially as described,” tie the claim to the particidar form of construction illustrated in the drawings. The effect of the words depends upon the construc­ tion of the claim as a whole, but “ in general the words exercise a limiting effect by tying ” the claim “ more closely to the preceding description ” (See Fletcher Moulton on Patents (1913), p. 128). They do not, however, limit the claim to the precise construction shown in the drawings but rather to the kind of apparatus mentioned and the method described in the specifications and illustrated in the drawings.”.  ?
  4. Someone made a more detailed attempt to explain the transition provisions in Lahore, Patents, Trade Marks & Related Rights at [12,000].  ?

Selected links from around the web

A selection of (mostly) IP-related links I found interesting last week:

Patents

US Federal Circuit Finds § 101 Patent Eligible Subject Matterin BASCOM

Patenting From China: how Chinese innovators are using the parent system

Copyright

USA: Apple’s New Music Royalty Proposal Would Make Streaming Costlier for Free Services Like Spotify

Vimeo’s Second Circuit DMCA Safe Harbor Win Over Capitol Records

Trade Mark

English High Court summarily dismisses Seretide combination color mark

Internet

USA: “Modified Clickwrap” Upheld In Court–Moule v. UPS

Trade – TPP

TPP at risk from ‘Hatch(ed)’ accusations that Australia’s data exclusivity steals US patents

Living in the future

A Technical Glitch or what might Facebook Live do to the world (as we know it)

The obsolete associate – Law21 or more AI in Big Law

Feel free to leave a comment or email me

NZexit?

The Commerce Select committee of the NZ Parliament has recommended that NZ should not continue with the proposed Single Application and Examination Processes for patent applications in both Australia and NZ. The committee, however, did support continuing with the single trans-Tasman patent attorney regime.

As IP Australia points out, Australia passed the IP Laws Amendment Act 2015 to implement this process. The Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill was introduced into the NZ Parliament last year.

The NZ government’s response to the recommendation is not known at this stage.

Selected links from the last week

I am going to try an experiment. With the rise of “week in review” style blogposts and your day job probably means you don’t have all day to watch Twitter streaming by, here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

  • MACCOFFEE? We’re not lovin’ it, says General Court here

    The “Mac” family of trade marks are too well known for someone esle to register MACCOFFEE in the EU

  • “Own Name” defence in Singapore–when “honest practices” does the heavy lifting here
  • CJEU says operators of physical marketplaces may be forced to stop trade mark infringements of market-traders

    although you could contrast that to Dowsett J’s decision

  • Book Review: The law and practice of trademark transactions – A global and local outlook

Not categorised

  • Employees Bound By Clickthrough Agreements–ADP v. Lynch (USA)

Bit of a slow week in the northern hemisphere, but I hope you find some interesting. If you did or have a question, leave a comment or send me an email