validity

Support and sufficiency apply to (mechanical) patents DownUnder

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The High Court has refused Jusand’s application for special leave to appeal [1] the Full Federal Court’s affirmation that Jusand’s patent was invalid on sufficiency and support grounds under the Raising the Bar tests.

In refusing special leave, the High Court simply stated:

The proposed appeal does not have sufficient prospects of success. Otherwise, the proceedings are not a suitable vehicle for the point of principle the proposed appeal seeks to raise.

I think Perram J’s reasons in the Full Federal Court were the first detailed consideration of the operation of these “new” provisions at the appellate level and so they will continue to provide guidance on the meaning and application of the sufficiency and support requirements. (Although one wonders if the second sentence of the High Court’s refusal indicates there may still be some doubt.)

Background

Jusand was the owner of Australian Innovation Patent No. 2019100556 entitled ‘Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore’. It had sued Rattlejack alleging that Rattlejack’s SafetySpear infringed claim 1 of the Patent. The trial Judge held there was no infringement and also upheld Rattlejack’s cross-claim that the Patent was invalid and ordered revocation.

According to the specification, the usual practice in underground mining is to excavate a shaft under the ore that is to be mined and then drill up from the shaft to the ore. The bore holes can vary in length from 20m to 60m. The bores are drilled by stringing together lengths of hollow steel tube – drill rods – to make a “string” of drill rods or drill string. Because of the forces involved and the variable geology, however, the drill string may break. The broken or loose drill rod components may become stuck or may fall out unexpectedly.

Evidence at the trial[2] indicated that broken drill string sections could be up to 20m long, weighing 500kg. The impact load of such a falling “projectile” would be 67,000kg.

Thus leaving the mine shaft unsafe; all the more so as the broken drill string might fall unexpectedly.

The Patent proposed a system involving an anchor and an impact reduction member to, in effect, plug the bore hole. The impact reduction member could be tapered along its length up the bore hole so that the force of the falling drill component was translated from the vertical sideways to the horizontal and so acted as a braking force.

Claim 1 in terms stated:

A safety system for protecting against a hazard of drill rod failure in a drilled rock bore above horizontal, and especially a hazard posed by a broken drill rod section within the bore, comprising:

an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face; and

an impact reduction member for reducing an impact of the broken drill rod section striking the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the drilled bore and to extend within the bore above the anchor member to be impacted or struck directly by the broken drill rod section falling within the bore.

You will notice that the “anchor member” and the “impact reduction member” are uncharacterised: the material(s) from which they are made are not specified. Although the claim was for an uncharacterised anchor member and impact reduction member, the Specification relevantly disclosed only things made from steel. It was this lack of specification which led the trial judge and the Full Court on appeal to find the Patent was invalid as lacking sufficiency and support.

Perram J’s reasoning

Perram J gave the judgment, Nicholas and McElwaine JJ agreeing.

Sections 40(2)(a) and 40(3) relevantly provide:

(2)A complete specification must:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art [the sufficiency requirement]; and

…

(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

Perram J began consideration of the issues by noting at [161] that the terms of the section offered no guidance about how much disclosure would be ‘complete enough’ nor what quantum of ‘support’ was required. Accordingly, the meaning of the provisions was ambiguous.

As a result, it was permissible to resort to extrinsic materials to resolve the ambiguities.[3].

Prior to the Raising the Bar amendments, section 40(2)(a) had only required the complete specification, relevantly, to describe the invention fully and s 40(3) had only required the claim to be fairly based on the matter described in the specification.

In Lockwood No 1, the High Court held that these requirements would be met if the patent explained how to perform the invention in at least one way – to make at least one “thing” falling within the scope of the claims. (Perram J noted that under this test the Jusand Patent would be valid.)

In that respect, Australian law had diverged from the law in the UK but the High Court in Lockwood No 1 had explained that was a result of the UK acceding to the European Patent Convention and adopting the different standards sufficiency and support standards rather than fair basing.

Referring to the Explanatory Memorandum, Perram J noted the intention of the amendments had been to overrule Lockwood No 1 and align Australian law with “overseas jurisdictions”, specifically referring to the approach taken in the UK under Patents Act 1977 s 14(3) and (5) and art.s 83 and 84 of the European Patent Convention. Thus, statements in the Explanatory Memorandum included that ‘support’ picked up two concepts:

• there must be a basis in the description for each claim; and

• the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.

In light of this his Honour concluded at [172]:

It will be seen therefore that the European and United Kingdom provisions are relevantly the same as ss 40(2)(a) and (3). I would conclude from that equivalence, the clear statements made to both Chambers by the Ministers who moved for the bill’s second reading and the Explanatory Memorandum that the purpose of the amendments was to ensure that the Australian law of sufficiency and support developed along the same lines as the law of the United Kingdom and the members of the European Union (each of which is a signatory to the European Patent Convention).

To determine whether the requirements of sufficiency and support under s40(2)(a) and (3) were met, therefore, Perram J accepted at [186] and [190] – [195] that the eight principles propounded by Lord Briggs at [56] in Regeneron[4] as explained by Birss J in Illumina were appropriate.

Application to Jusand’s Patent

As the anchor and impact reduction members were uncharacterised, there were a range of materials which could potentially be used within the scope of the claims.

In seeking to invalidate the Patent, Rattlejack invoked proposition (vii) from Regeneron:

(vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. (emphasis supplied)

In Illumina at [277] (in what Perram J described at [190] as “a celebrated discussion of a teapot” illustration), Birss J had explained the concept of relevance for these purposes as turning on the technical contribution or inventive concept. Thus, where a hypothetical claim was to a new teapot with a spout shaped in a new way so as not to drip, while the material from which the teapot was made was relevant to its function as a teapot, that was not relevant in the Regeneron sense as what gave the claimed invention value, utility and purpose was the design of the spout.

This in turn required consideration of what made the claim “inventive” and what its technical contribution to the art is.

At [201], Perram J pointed out that these could be two different things. Echoing Hicton’s Patent, Perram J pointed out that the inventive contribution to a claimed invention may be an abstract idea. However, that was not the patentable subject matter. What the monopoly conferred by a patent was granted for was the claimed invention – the practical implementation of the idea.

From this, it followed that the technical contribution to the relevant art was the product claimed or at [205], in the case of a method, the explanation of how to perform the method disclosed in the specification.

As noted above, the first factual finding was that claim 1 was not limited only to anchors and impact reduction members made from steel. It extended to such things made from anything.

However, relevantly, the Specification disclosed only anchors and impact reduction members made from steel.

Next, based on the evidence before her, the trial judge had held that identifying other suitable materials would involve the person skilled in the art in the exercise of inventive skill.[5]

Claim 1 therefore failed both the sufficiency and support requirements.

At [215], Perram J explained:

…. The invention as claimed was the Safety System which disclosed only a method using an anchor member and a tapered impact reduction member made from steel. Its innovative step was the idea of converting downward weight force into lateral braking forces using the interaction of an anchor member with a tapered impact reduction member. Its technical contribution to the art was taking that idea and explaining how to use it in a Safety System utilising steel. I would therefore see the essence or core of the invention, in terms of Illumina, as involving a consideration of each of these concepts.

His Honour explained that the purpose of the claimed invention was to prevent drill rod sections falling into the shaft. Given the potential forces that such a falling drill rod section could generate, the material(s) from which the anchor and impact reduction member were made significantly affected the utility of the system. As the identification of appropriate materials (other than steel) involved inventive effort, the sufficiency requirement was not satisfied.

Correspondingly, the claim was not enabled across its full scope and the claim was not supported by the description. For example, at [222]:

…. The invention as claimed was a Safety System able to be constructed from a range of materials but the specification showed only how to make it from steel. Thus the monopoly defined by the claims exceeded the technical contribution made to the art. Effectively, if this patent were upheld it would confer upon the Appellant a monopoly over a range of Safety Systems which it has simply not invented. This would reward the patentee for something it has not done and it would prevent others of an inventive disposition from discovering how to make ingenious systems of anchor and impact reduction members from other materials including materials not yet known.

A comment

So far as I am aware, this is the first case in Australia in which the sufficiency and support requirements have operated to invalidate a mechanical patent – these requirements typically arising in cases where classes of chemical compounds and the like have been claimed.

Regeneron’s propositions #5 and #6 are:

(v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.

(vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. (emphasis supplied)

What will happen in mechanical (or for that matter any other art’s) patents which are not drafted with this precision. For example, to borrow from Birss J’s celebrated teapot example: a patent for a teapot made from a suitable material.

In his Lordship’s hypothetical and unlike Jusand, Birss J assumed the selection of suitable material did not involve inventive skill. That may be sufficient.

As I understand matters, the risk flagged in Regeneron proposition #6 motivated IPTA to file an amicus curiae brief in support of the special leave application.

Dr Claire Gregg and Will Hird at DCC have reported that IP Australia is increasingly raising sufficiency and support objections against such patents. James Lawrence and John Hogan, patent attorneys at, respectively, Addisons and FB Rice provide some recommendations for drafting practices – at least for new applications.[6]

Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (Perram J, Nicholas and McElwaine JJ agreeing)

  1. Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2024] HCASL 104.  ?
  2. Jusand FCAFC at [216].  ?
  3. s 15AB(1) and (2) of the Acts Interpretation Act 1901.  ?
  4. For ease of reference, the eight propositions have been extracted here.  ?
  5. At [212], Perram J summarised the trial judge’s reasoning: “Since it was a plausible working of the claims of the patent to carry out the invention in materials apart from steel, the trial judge reasoned that to do so the skilled addressee would need to engage in the two endeavours identified by her Honour at J [475]-[479] (set out above): first, the skilled addressee would need to select a material which would be suitable for the Safety System’s construction having regard to the enormous forces to which it would be subjected during the impact event; and secondly, the skilled addressee would need to design the Safety System having regard to the physical qualities of the material thus selected. As the trial judge explained, this was because different materials had different degrees of elasticity and stiffness (‘modulus’) (J [420]-[427]), different compressive strengths (J [428]-[432]), different coefficients of friction (J [433]-[435]), different degrees of ductility (J [436]-[437]) and different behaviours when it came to shearing and galling (J [438]-[440]), as well as having different melting points (J [441]-[442]) (noting that the impact event generates heat).”  ?
  6. James Lawrence and John Hogan, ‘Sufficiency and the Patent Bargain Post-Jusand v Rattlejack: How Much Disclosure is Enough?’ (2024) 135 Intellectual Property Forum 9 at 18 – 19.  ?

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Eight propositions to test support and sufficiency from Regeneron

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Reflection upon those European and UK authorities yields the following principles:

(i) The requirement of sufficiency imposed by art. 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art.

(ii) In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention.

(iii) Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure.

(iv) The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means.

(v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.

(vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date.

(vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made.

(viii) Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be.

Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 at [56] (Lord Briggs) cited with approval by Perram J in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 at [186] but at [188] – [195] subject to the clarification by Illumina

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ESCO’s patent did not make a composite promise and so is not invalid afterall

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ESCO has won its appeal from the ruling that its patent lacked utility because the claims did not fulfill all promised advantages.

The Patent

ESCO’s patent relates to a wear assembly for securing a wear member to excavating equipment. Think of it as a way of attaching “teeth” to an excavating bucket and for a design of the “teeth” themselves.

There are 26 claims.

Claim 1 (and its dependent claims)[1] are for a wear member:[2]

a wear member for attachment to excavating equipment. The wear member comprises:
(a) a front end (to contact materials being excavated and to protect the excavating equipment);
(b) a rear end;
(c) a socket that opens in the rear end of the wear member (to receive a base fixed to excavating equipment);
(d) a “throughhole” in communication with the socket;
(e) a lock “integrally connected” in the throughhole and movable without a hammer;
(f) between a “hold position” and a “release position”;
(g) the lock and the throughhole being cooperatively structured to retain the lock in the throughhole in each of the hold and release positions;
(h) irrespective of the receipt of the base into the socket of the wear member or the orientation of the wear member;
(i) a “hold position” (where the lock can secure the wear member to the base); and
(j) a “release position” (where the wear member can be released from the base).

Claim 13 (and its dependent claims)[3] are for the wear assembly:[4] essentially, a wear assembly designed to enable the attachment of the wear member of claim 1 to the bucket.

You may get some idea of what is claimed from these figures. The wear member is 28, shown fitted to the base 15 of the wear assembly.

Utility

The trial Judge

Paragraph 6 of the Specification was the first paragraph under the heading “Summary of the Invention”:

The present invention pertains to an improved wear assembly for securing wear members to excavating equipment for enhanced stability, strength, durability, penetration, safety and ease of replacement. (Full Court’s emphasis)

As to which the expert evidence was:

In relation to enhanced strength, none of the claims would achieve this advantage.

In relation to enhanced stability, claims 3 and 5 may provide a minor stability advantage as set out in paragraphs 14–21 of my first affidavit. ….

In relation to enhanced durability, none of the claims would achieve this advantage.

In relation to enhanced penetration, none of the claims would achieve this advantage.

In relation to enhanced safety, claims 1, 11, 13, 21, and 22 would achieve this advantage.

In relation to enhanced ease of replacement, claims 1, 4, 6, 8, 9, 12, 13, 16, 19, 22, and 25 would achieve this advantage.

In light of this evidence, the trial Judge had found ESCO’s patent invalid because the claims did not achieve all six of benefits promised by paragraph 6 of the Specification.

The Full Court

On appeal, the Full Court accepted the basic premise applied by the trial Judge: a claim is bad for inutility if following the teaching in the Specification does not lead to the promised result. There has been a failure of consideration. So, the Full Court explained at [208]:[5]

first, provided the results promised by the specification can, on the evidence, be achieved and, second, provided that those results can be applied to at least one useful purpose, the patent for the claimed invention does not fail for inutility. If, however, the promised results are unfulfilled or unrealised, the patent for the claimed invention will be bad for inutility

Further, if the Specification properly understood contained a “composite” promise, any claim which failed to achieve any one of the elements of that composite promise would be bad for inutility. At [239]:

We therefore accept that if para 6 of the Patent Application, properly understood having regard to the whole of the Specification including the claims, contains a “composite” promise for the described invention, a failure to attain any one of the elements of the composite promise in any claim defining the invention renders the invention so far as claimed in any claim, inutile.

The question then is – what is the promise of the invention?

It followed from the requirements of s 40, which required the specification to describe the invention fully and claims to define the invention,[6] that identification of the “promise” of the invention required consideration both of the body of the specification and the claims.

That consideration led the Full Court to conclude either that paragraph 6 of the Specification was not the “promise” of the invention. Or, alternatively, if it were, the several elements in paragraph 6 were to be read disjunctively rather than, as the trial Judge had done, conjunctively. In either case, ESCO’s patent was not bad for inutility.

The central consideration here was that the claims were directed to two related, but different entities: claims 1 to 12 being directed to the “wear member” only; claims 13 to 22 being directed to the “wear assembly”. Correspondingly, paragraphs 7 to 20 of the specification dealt with various “aspects” of the invention and, in doing so, paragraphs 15 and 16 identified the “promises” of the invention.

The Full Court considered paragraph 5 of the specification as reciting historical attempts “to enhance the strength, stability, durability, penetration, safety and/or ease of replacement of “such wear members” … with varying degrees of success.” The Full Court then characterised paragraph 6 as continuing that discussion to open the summary of the invention.

Paragraphs 15 and 16 of the specification said:

In one other aspect of the invention, the lock is integrally secured to the wear member for shipping and storage as a single integral component. The lock is maintained within the lock opening irrespective of the insertion of the nose into the cavity, which results in less shipping costs, reduced storage needs, and less inventory concerns.

In another aspect of the invention, the lock is releasably securable in the lock opening in the wear member in both hold and release positions to reduce the risk of dropping or losing the lock during installation. Such an assembly involves fewer independent components and an easier installation procedure. (Full Court’s emphasis)

So, at [291], the Full Court explained:

It seems to us that the language of para 6 consisting of a single sentence under the heading “Summary of the Invention” is not, properly construed, the language of “promises” (as Ronneby would have it) for the invention described in the Specification as a whole, including the 22[7] claims, some of which are concerned only with the wear member and others with the wear assembly. Rather, the language of para 6 is seeking to do something less than that. The language of para 6 resonates with para 5 and seems to be used in the sense of reciting those things to which the invention relates having regard to the design efforts that went before, and thus the relationship between “the invention” and those things recited in para 6 is one of identifying the topics or subject matter to which the invention relates (rather than “promises” for the invention), which, having regard to paras 7 to 20 “describing” the invention (including the best method in conformity with s 40(2)(a)), may or may not find expression in the claims “defining” the invention for the purposes of s 40(2)(b). In that sense, the fully described invention may go beyond the scope of that which is actually claimed. Thus, it is necessary to identify the “teaching” of the Specification and the relationship between the teaching and the claims. Rather, the promises for the invention so far as claimed in, at least, Claim 1 and the dependent claims, are to be found in paras 15 and 16 of the Specification as we explain later in these reasons.

The two different targets of the two sets of claims were also significant for the alternative conclusion that the list of achievements in paragraph 6 should be read disjunctively. The Full Court accepted that the language of paragraph 6 of the specification was appropriate for the claimed wear assemblies achieving all 6 listed benefits. However, the Full Court considered that the language of paragraph 6 was incompatible with the idea that each claim for the wear member must satisfy all 6 promises.

Accordingly, paragraph 6 of the specification should be read disjunctively and the claims were not bad for inutility.

In the course of its lengthy historical review, the Full Court did note that s 7A now required the Specification to disclose a specific, substantial and credible use for the claimed invention for it to be useful. Section 7A had been introduced into the Act by the Raising the Bar Act[8] and so was not relevant to ESCO’s patent. The Full Court noted, however, that s 7A was intended to add additional requirements to the test of utility, not displace the old requirements. Thus, at [231], the Full Court commented:

Rather, the invention [subject to the Raising the Bar Act amendments] must meet the new test and meet the requirements of the existing law: EM p. 44.

I am guessing we shall see significantly more patent specifications in the future which claim that it is “an object of the invention to …” or, perhaps, the invention achieves “one of more of ….” Might be a bit tricky to amend assertions in a patent first filed overseas.

Novelty

ESCO’s novelty appeal was also successful. It was essentially an exercise in construction, turning on whether the locking mechanism in the prior citation was “integral” and moved between two defined points- a “hold position“ and a ”release position”.

ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 (Greenwood, Rares and Moshinsky JJ)

  1. Strictly speaking, claims 5, 6 and 9 are independent claims, but nonetheless are for “wear members”.  ?
  2. The explanatory interpolations are the Full Court’s.  ?
  3. Claim 19 is also an independent claim for a wear assembly.  ?
  4. A wear assembly for attachment to excavating equipment comprising: (1) a base fixed to the excavating equipment; (2) a wear member including a front end to contact materials being excavated and protect the excavating equipment, and a rear end to mount to the base fixed to the excavating equipment; and (3) a lock integrally connected to the wear member and movable without a hammer between a hold position where the lock contacts the base and the wear member to secure the wear member to the base and a release position where the wear member can be released from the base, wherein the lock remains secured to the wear member in the release position. (My numbering to deal with formatting limitations)  ?
  5. Citing amongst others LaneFox v Kensington and Knightsbridge Electric Lighting Co (1892) 9 RPC 413.  ?
  6. ESCO’s patent being a pre-Raising the Bar patent, s 40 in it earlier form applied.  ?
  7. Presumably, a typo.  ?
  8. By which I of course mean schedule 1 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  ?

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A cylinder by any other name (except basket)

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Beach J has ruled that there is no warrant for interpreting “basket” in GSK’s patent to mean “cylinder”, with the consequence that the patent was neither infringed, nor invalid.

GSK’s patent is “for a sustained release paracetamol bilayer tablet with a specified in vitro dissolution profile”. Claim 1 is as follows:

A pharmaceutical composition comprising:

a bilayer tablet having an immediate release phase of paracetamol and a sustained release phase of paracetamol,

the immediate release phase being in one layer and comprising from about 10 to 45% by weight of the total paracetamol; and

the sustained release phase being in the other layer and comprising from about 55% to 90% by weight of the total paracetamol in admixture with a matrix forming polymer or a mixture thereof;

said composition comprising from 600 to 700mg of paracetamol per unit dose and a pharmaceutically acceptable carrier,

wherein said composition has an in vitro paracetamol dissolution profile (as determined by the USP type III apparatus, reciprocating basket, with 250ml of 0.1M HCl at 37C set at a cycle speed of 15 strokes/min) with the following constraints:

Ÿ 30 to 48% released after 15 minutes

Ÿ 56 to 75% released after 60 minutes

Ÿ >85% released after 180 minutes.

I have emphasised the word “basket” above because it is a mistake. It should read “cylinder”. It was also a mistake repeated in the body of the specification. Beach J rejected Apotex’ argument that “basket” was a reasonable option for use in a USP type III apparatus at the priority date. However, none of the expert witnesses had heard of such a thing and Beach J held that the skilled addressee[1] would have recognised it was a mistake and should have read “cylinder”.

Now, the High Court has told us that a patent specification is a document directed to the public, but it is to be read through the eyes of the skilled addressee. So, for example, Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ said in Kimberly-Clark at [24]:

It is well settled that the complete specification is not to be read in the abstract; here it is to be construed in the light of the common general knowledge and the art before 2 July 1984, the priority date; the court is to place itself “in the position of some person acquainted with the surrounding circumstances as to the state of [the] art and manufacture at the time”.[2]

The courts have developed lengthy lists of propositions to implement that directive.[3] One of the propositions that repeatedly gets cited is the rule that you cannot expand or narrow the meaning of a claim by reference to the body of the specification. So, for example, the High Court in Kimberly-Clark itself helpfully said at [15]:

Where the question concerns infringement of a claim or the sufficiency of a claim to “define” the invention, it has been held in this Court under the 1952 Act that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification. However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.[4]

How to reconcile the two?

Well, Beach J held that, notwithstanding the mistake, the words of the claim were clear and unambiguous and there was no warrant to substitute “cylinder” for “basket”. Warned by Apotex’ counsel, Ms Goddard, that the patent was a public instrument the amendment of which was addressed in the Act by a different mechanism,[5] his Honour summarised his conclusion at [14]:

No case expressly binds me to accept the result contended for by GSK. The hypothetical construct of the skilled addressee cannot be taken so far as to re-write or amend a claim of the specification. That conceptual tool has its limits. After all, the boundary constraint is that I am obliged to construe the claim as it is, rather than what it should have been. I accept Apotex’s contention. Accordingly, GSK must fail on infringement as claim 1 is the only independent claim. But Apotex and Generic Partners fail on invalidity.

His Honour elaborated on these conclusions at much greater length at [368] – [401].

Beach J’s rejection of the attacks on invalidity did not turn on whether “basket” meant “basket” or “cylinder”. Having found that “basket” did mean “basket”, the attacks on fair basis, sufficiency and lack of clarity necessarily failed. However, his Honour would also have rejected them even if “he had found ”some polytropic fairy dust“ could transform ”basket“ into ”cylinder”.

 

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 Consumer Healthcare Investments (Ireland) (No. 2) Limited v Apotex Pty Ltd [2016] FCA 608

  1. or “person skilled in the art” to use the language of the Act in s 7. Section 40 wants the person to be skilled in the relevant art, but that shouldn’t be much, if at all, different.  ?
  2. The citations have been omitted, but they included Samuel Taylor Pty Ltd v SA Brush Co Ltd (1950) 83 CLR 617 at 624?625; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 102; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 476.  ?
  3. Sheppard J referred to 10 in Decor v Dart. Hely J identified a raft in Beltreco starting at [70]. The Full Court was rather more succinct at [67] in Jupiters.  ?
  4. The citations I have omitted again include reference to Welch Perrin at 610. This rule is Sheppard J’s second proposition, referred to by Hely J at [74] and elaborated at [76] to [78]and the 4th proposition in Jupiter’s.  ?
  5. Presumably, s 104 and, in the court proceeding context, s 105.  ?

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A designs case!

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Jacobson J has found that Bluescope’s “Smartascreen” metal fencing panel infringed Gram Engineering’s Registered Design No. AU 121344 for a fencing panel as an obvious imitation. Perhaps the most interesting finding, however, is why the Smartascreen was not a fraudulent imitation.

image002

vs

Smartascreen
Smartascreen

Gram’s design was registered in 1994, so this is an “old Act” case (invalidity here and infringement here). [1] At the time, it was the first fence panel to feature a symmetrical design: looking the same no matter which side of the fence it was viewed from and, as a result, it was a roaring success capturing some 40% of the market. One interesting aspect of the case is that Bluescope’s Smartascreen product was introduced in 2002. Although Gram Engineering knew about it from around its introduction, it did not commence infringement proceedings until 2011 – after the registered design had expired in 2010.

Bluescope’s attack on validity failed. [2] First, the prior art on which Bluescope relied were for roofing or siding panels, not fence panels, and so not relevant articles. Moreover, the prior art and the registered design had the same general “z-shape”, but were intended to be used horizontally (“weatherboarding) rather than vertically and none had the same combination of 6 panels with the same proportions and angles as the registered design. Hence, while some features may have been present in some of the prior art, none of the prior art included all the features and the registered design looked distinctively different.

Jacobson J then found that the Smartascreen was an obvious imitation: the dominant feature was the same sawtooth look with the (unique) 6 panel frame in the same proportions and with the same angle.

Fraudulent imitation

On this question, Jacobson J found that Bluescope:

  • knew that the design was registered;
  • knew that Gram had achieved runaway commercial success
  • was trying to design a “Gram lookalike”
  • had come up with a number of different symmetrical designs which were different to Gram’s design
  • and had adopted a standard panel size of 762mm (which matched Gram’s physical embodiement) instead of the more typical 820mm panel size.

In these circumstances and given his Honour’s finding of striking similarity, Gram Engineering argued it was inconceivable Bluescope had not copied Gram’s design and so a finding of fraudulent imitation should follow.

However, Jacobson J considered that fraudulent imitation required a finding that Bluescope’s design had been deliberately copied from the registered design. This may prove to be a considerable narrowing of the requirement in Polyaire that the accused product (at [17]) be based on or derived from the registered design or (at [19]) make use of the registered design.[3] It was, however, decisive. His Honour was not prepared to find that either of the key designers who came forward did deliberately copy. It was here that Gram Engineering’s delay in bringing proceedings came back to haunt it. As his Honour explained at [382]:

It is a conclusion which I have reached with some reservation because the striking similarities to which I referred above were not satisfactorily explained in Bluescope’s evidence. I have no doubt that the drawing of 17 November 2000 was designed to look something like the Gram product. It was, as Gram submitted, designed with an eye to the GramLine sheet. However, it is plain that Mr Field was involved in the process. This appears from the concluding remarks of his memo of 15 November 2000. Ultimately, it is his absence from the witness box which precludes me from reaching the view that the process of designing a Gram lookalike was one which entailed copying the Gram design.

The Mr Field in question was unable to give evidence at this stage in view of his advanced age (being retired) and illness.

If his Honour had been prepared otherwise to find fraudulent imitation, however, the fact that it had obtained advice that its product did not infringe the registered design would not have saved it.

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508

  1. The test for validity in Designs Act 1906 s 17(1) here and infringement, s 30, here.  ?
  2. An example of the prior art relied on:

    One of the prior art examples
    One of the prior art examples

     ?

  3. Indeed, at [35] the High Court said:

    “…. The kind of fraud that the Act seeks to remedy is closer in kind to, but is still not entirely analogous with, equitable fraud, which, for its establishment, does not require that an actual intention to cheat must always be proved; proof of misconception of the extent of a person’s obligation, to act or to refrain from acting in a particular way, may suffice”.  ?

A designs case! Read More »

Scope of disclosure in an innovation patent

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Patentology has a nice summary of the innovation patentee’s successful appeal in Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83.

One point: it seems like the disclosure in the body of the specification supporting the broadest claim was at a level of generality similar to that upheld by the High Court in the first round of Lockwood. Wonder how that will hold up for future application under the (proposed) Raising the Bar legislation?

Secondly, the (now) infringer’s best line of defence (apart from invalidity) seems to have turned on trying to argue (now unsuccessfully) that incorporating additional integers in the accused gutting machine to those specified in the claim. Bennett J gave it short shrift.

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A lamp lens too far

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The fifth decision under the “new” Designs Act 2004 illustrates the operation of that old principle: in a crowded field, small differences may be enough to confer validity, but equally small differences in the accused products will be sufficient to avoid liability.
You will recall that LED Technologies successfully sued Elecspess (and others) for infringing LED’s registered designs for a dual lens lamp, ARD 302359, and a triple lens lamp, 302360 (links to those decisions via here). Well, LED fell out with its Chinese manufacturer, Valens, and found itself a new supplier. Valens, however, didn’t take things lying down and started supplying another of LED’s competitors, Baxter.
As in the earlier case, Baxter challenged the validity of the earlier design; this time arguing that the Statement of Newness and Distinctiveness was unclear and also relying on some different prior art.
The first objection failed.  The perspective view for the two-lens design looks like this:

 

ARD 302359

The Statement of Newness etc. etc. read:

Separate clip in lenses. Base to take a variety of 2, 3 or 4 combination of lenses for stop, tail, indicator, reverse LED lenses, no visible screws.

At [85], Finkelstein J accepted that the Statement of Newness etc. etc. could have been “better expressed”, but it sufficiently clear and succinct:
…. In my view the statement indicates clearly to the relevantly informed addressee (and probably to anyone familiar with the English language) that the base could be manufactured to take a number of lenses. Reference to “separate clip in lenses”, when read with the phrase “no visible screws”, indicates that the lenses clips in and are not held in place by screws. There is nothing relevantly uncertain contained in the statement. 

There were important visual differences between LED’s designs and the closest prior art. For example, at [104]:
the base of the Rubbolite lamps appeared to provide individual frames for each lens, which is not a feature of the registered designs. … the corners of the Rubbolite lens appeared sharper or squarer than the registered designs but said the difference was minor. … there was a noticeable ledge or lip around the lens (which he referred to as the “lens housing”) which was not shown on the registered designs. The ledge or lip around the lens on the Rubbolite lamps tapered inwards which made it substantially different in appearance when looked at from the side. 

Hence, the registered designs were valid.
Unfortunately (for LED), before Valens started supplying Baxter, it had made some changes to the product. As a result, the products supplied to Baxter were not substantially similar in overall impression to the registered designs. Finkelstein J accepted [105] that there were similarities between the products imported by Baxter and the registered design.  Many of them, however, “were common in the prior art”. Moreover:
[106] There are, to my mind, several important features that lead me to the conclusion that the Baxters lamps are not substantially similar in overall impression to the registered designs. The key features are the prominent cut out pattern on the underside of the designs, which is to be contrasted with the flat closed backs of the Baxters lamps, and the square lenses of the designs having a wide landing between them while the Baxters lights have no landing. Of less significance are the long sides of the frames of the registered designs which have raised edges resulting in a counter-sunk appearance, which is not present on the Baxters lamps. As well, the short sides of the frames of the registered designs are raised at their outer portions and dip down in the central portion, which is not a feature of Baxters’ design. 

[107] Moreover, in my view, it is these features that distinguish the registered designs from the prior art such as to admit of the conclusion that the registered designs are new and distinctive. 

Inducing breach of contract

An interesting twist to this case, was that LED also tried to “get” Baxter for inducing the (ex-) Chinese supplier, Valens, to breach its contract with LED.

Essentially, LED argued it had agreed with Valens that Valens would not supply anyone else in Australia or New Zealand with products made using the moulds for the products supplied to LED. The evidence on this point was less than ideal, with the judge being rather critical of the witnesses. There was also a dispute between LED and Valens over who owned what. Ultimately, his Honour accepted that there was a deal that LED would be supplied exclusively for Australia and New Zealand so the supply of products to Baxter was in breach of the agreement. However, Baxter itself did not procure the breach: Baxter did not know Valens was re-using the moulds: to the contrary, it was paying Valens for new moulds.

It is rather hard to reconcile the story in Elecspess on how the designs came into existence and came to be manufactured with the evidence in this case. Of course, as the parties in the two cases are different, each must be decided on its own evidence. I guess, in terms of ownership of the registered designs, there is commonality in that LED’s principal, Mr Ottobre, was the author of the original conception. Matters get rather murky after that.  At [30], LED apparently started selling the lamps made by Valens in “early 2004”, but the priority date of the designs is 22 June 2004.

LED Technologies Pty Ltd v Roadvision Pty Ltd [2011] FCA 146

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The patent was valid, but not infringed

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Foster J has ruled that Bitech’s patent for an apparatus that simulates log flames or coal fire in electric or gas fired domestic room heaters is valid, but not infringed.

An essential feature of the patent was that the simulated flames resulted from reflected light, however, the alleged infringements used directly projected light, not reflected light and consequently did not infringe.

The novelty attack failed because the relevant prior art did not possess all the features claimed. The attack on obviousness failed because s 7(3) was not available – the complete specification was filed before the 1990 Act came into force and so the Alphapharm rules were all that was relevant.

Of potentially greater interest, if there had been infringement, Foster J would have found the importer and retailer (Bunnings) were engaged in a common design.

Somewhat bizarrely, on of the respondents denied it had imported the allegedly infringing products, but led no evidence on the point. As a result, Foster J has foreshadowed some consequences in costs for putting the applicant to proof on this point.

Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393

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Leading the expert

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PAC Mining has successfully appealed the finding that it infringed Esco’s patents for wear assemblies protecting excavating buckets, but failed in its appeal against the finding that the patent was valid.

The point that mainly struck my eye was that PAC Mining’s independent expert’s attack on the patent as obvious failed:

The primary Judge took the view that the value of Prof Wightley’s evidence was compromised by reason of the circumstance that, from the outset, he had been exposed to the shortcoming to which Toplok was perceived to be subject, and to the terms of Jones I, as well as to those of the patents in suit. In other words, Prof Wightley, from the outset, knew the problem, and he knew the solution. The authorities make it clear that the caution with which his Honour approached the evidence of Prof Wightley was both justified and desirable: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, 242; Alphapharm 212 CLR at 423-424 [21]; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202, 215 [46]. At this level of analysis, nothing put on behalf of the appellants on appeal has cast any doubt upon the approach which his Honour took. Within the confines of that approach, the matter of obviousness was essentially one of fact. We are not persuaded that his Honour erred in declining to be satisfied that Prof Wightley’s evidence, of itself, warranted the conclusion that the adjustment assembly introduced by Jones II and Jones III was obvious.

The Full Court went on to find no error in the trial judge’s assessment of the inventor’s evidence.

PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 (Sundberg, Jessup and Middleton JJ)

Leading the expert Read More »