07 December 2005

Full Court Interprets Hat Claim

On 1 December 2005, the Full Federal Court handed down Lewis v Hall [2005] FCAFC 251. A primary issue in the case was the meaning of "a plurality of fastening means" as used in claim 1 of the patent. Such phrases are often used by patent attorneys. So much so that we refer to such jargon as "patentese".


Between 1992 and 1993, Hall developed an idea for an article of headgear for protecting the wearer from sun, wind and rain. Broadly, the idea consisted of a visor to which material was attached to cover the top of the head and hang down at the sides and back of the head and neck. Hall coined the term "Araphat" for the article. Hall filed a patent application on 6 January 1995, claiming priority from 10 January 1994. Letters Patent No. 684592 was subsequently granted to Hall.Hall also obtained a registered design no. 143028. This case addresses the issue of design infringement as well, but that aspect is not discussed in this post.

It appears that there was some form of business relationship between Lewis and Hall centred on the hat. Shortly after the end of 1999, this relationship was terminated. Lewis began to manufacture and sell her own hat, "Le Hood".

Hall claimed that manufacture and sale of "Le Hood" by Lewis amounted to an infringement of the patent. The initial trial was held in the Supreme Court of Western Australia and on 21 October 2004, that court declared that the appellant had infringed the patent. The court ordered that Lewis be restrained from infringing the patent. Lewis appealed.

As far as the patent was concerned, the question to be determined in the appeal was the proper construction of the words "a plurality of fastening means" as used in claim 1 of the patent.

Claim 1

The parties agreed that claim 1 could be reduced to the following essential integers:

1. a substantially forwardly projecting peak or visor;
2. an adjustable head engaging band;
3. a length or sheet of material;
4. the head engaging band being attached or attachable to the peak or visor at or near the rear edge thereof;
5. the length or sheet of material being attached or attachable to the peak or visor and extending rearwardly thereof, whereby the peak or visor may be positioned on a wearer's head such that the material covers the wearer's head and hangs therefrom about the shoulders and neck of the wearer;
6. the head engaging band is positioned about a rear of the wearer's head such that the peak or visor is held in position thereon;
7. the material having provided thereon a plurality of fastening means whereby the material may be fastened to protect the wearer's neck and/or face; and
8. the fastening means being arranged on the material such that the material may be drawn to a number of positions in front of the wearer's neck and/or head and/or face and the material fastened together releasably in a number of arrangements as desired by the wearer.

The Contentions

Lewis accepted "Le Hood" embodied all the above terms except for items 7 and 8. Lewis contended that "Le Hood" did not have a plurality of fastening means whereby the material may be drawn to a number of positions and fastened to protect the wearer's neck and/or head and/or face. Lewis submitted that the two components of a "Velcro" fastener attached to the material provided only one fastening means. Hall of course contended that the two components of a "Velcro" fastening device did constitute such a "plurality of fastening means" for the purposes of claim 1.

The Law

Their honours emphasized some important judicial precedents as listed below:

1. Proper construction of the claims must keep in mind that the claims are addressed to a person skilled in the art at the relevant date (The General Tire & Rubber Company v The Firestone Tyre & Rubber Company Ltd [1972] RPC 457 ).

2. Information provided in the body of the specification cannot overtake the plain meaning of the words used in the claims and be the source of further meaning that alters the monopoly claimed. However, that information can be used to resolve unambiguity or uncertainty in the meaning of the claims (Marconi's Wireless Telegraph Co. Ltd v Mullard Radio Valve Co. Ltd (1923) 40 RPC 157).

3. It is legitimate and appropriate to read the body of the specification and the claim together to provide the context in which the claim is to be construed. The specification must be read as a whole. (Decor Corporation Pty Ltd & Anor v Dart Industries Inc (1988) 13 IPR 385 ).

The Interpretation

The body of the specification referred to both components of a hook and loop type fastener ("Velcro") as possibly providing the adjustable headband. It also set out that "the plurality of releasable fastening means" is also formed of either component of such a hook and loop type fastener.

Their honours held that a "skilled artisan" to whom the patent was addressed would understand that a "Velcro" fastening means could be used to provide such a plurality. This would be confirmed by that skilled artisan reading the claims with the specification as a whole.

Claim 1, it was held, requires the availability on the material of a means of fastening the material at more than one position, to which the material may be drawn by the wearer. Following on this, their honours held that the two pieces of "Velcro" provided on the material of the "Le Hood" constituted that plurality of fastening means in that they enable the material to be fastened at several positions to which the material may be drawn.

Lewis attempted to make something of the fact that "Le Hood" could not be drawn into all of the arrangements stipulated in the drawings of the patent specification. Therefore, Lewis claimed, the patent had not been infringed. Their honours pointed out that the drawings and their associated description are used to describe the invention 'by way of example only". They are not part of a claim to a monopoly unless a claim incorporates them.


While Hall won through in the end, the whole case could have been avoided if claim 1 had simply included the words "at least one fastening means" instead of "a plurality of fastening means". It follows that it is important that practitioners and inventors alike pay very careful attention to the choice of words and phrases in the claims. If necessary, further independent or principal claims can be used, raising the level of difficulty for opponents. Riding a case like this all the way to the Full Bench is a very expensive process for the sake of a few words.