Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd  FCA 261
TOPICS: Construction of claims - determination of essential features of claimed refuse bag; infringement - all essential features must be taken - no infringement, even though "principle feature" taken.
The applicant (Clorox) sued the respondent (ICB) for infringement of its Australian patent no. 611639 for the invention entitled "Bag with Tie Parts at Open End".
ICB was engaged in importing, offering for sale, supply and sale in Australia of a refuse bag referred to as the "Hercules WingTop" (the Hercules bag).
Clorox contended that ICB infringed, inter alia, claims 1, 2, 4, 5, and 6.
Claim 6 depends on claims 4 or 5. Also, claims 1, 2, 4 and 5 are similar and were broken down conveniently by the court. In short, the relevant integers of the claims can be commonly recited as:
(a) a refuse bag...
(b) front and rear panels joined along three straight sides; and
(c) the fourth side formed so as to have valleys and projections which result, in effect, in four tie parts of sufficient length to be tied together by hand to close the fourth side.
The case turned on whether or not the having the front and rear panels joined along three straight sides was an essential feature of the invention and whether or not the Hercules bag had three straight sides as claimed in the patent. It was not in issue that the Hercules bag had the fourth side with valleys and projections.
As set out in my post: "Full Court Rules on Claim Construction", it is necessary for an alleged infringer to take all the essential integers to infringe. Accordingly, the question of whether the "three straight sides" is an essential feature or not is an important consideration.
Principles of Claim Construction
Justice Stone briefly set out a useful overview of the principles of claim construction. Some of the principles are worth repeating.
Her honour started off by stating that it is appropriate to consider the principles applicable to construction of a patent specification before considering infringement. She emphasized that it is important to ensure that the consideration of the allegedly infringing product does not influence the determination of the proper construction of the claims.
Her honour cited the well-known Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 ("Minnnesota Mining"). In that case it was held that when construing the claims it is necessary to consider the context in which the claims are made. The specification must be considered as a whole even if there is no ambiguity in the claims. However, she cited Welch Perrin & Co. Pty Ltd v Worrel (1961) 106 CLR 588 ("Welch Perrin") where it was held that where the claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the specification.
A number of other principles were also given and are worthy of study. However, for this post, it is worth mentioning that her honour cited Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 ("Sartas"), where the court held that evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words that might otherwise bear their ordinary meaning. Also, citing Allsop Inc. v Bintang Ltd(1989) 15 IPR 686, insofar as a view expressed by an expert depends on a reading of the patent, it "cannot carry the day unless the court reads the patent the same way."
Are the "three straight sides" essential?
Her honour cited Catnic Components Ltd v Hill & Smith Ltd  RPC 183, in which it was held the a feature is considered essential if the hypothetical reader would have understood from the language used in the claim, in the context of the specification as a whole, that the patentee intended that strict compliance was an essential feature of the claim.
Clorox attempted to develop a theory that the "three straight sides" was an intermediate feature and that there was therefore some inherent flexibility in the interpretation of this feature. Her honour disagreed. She held that either the feature is "necessary for an article to infringe the Patent or it is not". Her honour simply held that the "three straight sides" are an essential feature. She held that the patentee has chosen by the language of the claims to make the requirement that the front and rear panels be joined along straight sides an essential feature.
Some questions arose concerning the shape of the bag forming the subject matter of the patent. In short, her honour noted that such bags are usually formed in a tubular manner. Thus, it would seem to be incongruous to refer to the bags having "front and rear panels joined along three straight sides". However, she held that the specification imported into the claims that the bag be "laid down flat". Her honour therefore held that it was appropriate to consider the bag as claimed in a "laid-flat form". In that form, the bag could be regarded as having the "front and rear panels joined along three straight sides".
Clorox submitted that the laid flat form could involve laying a bag flat and then tensioning the edges or sides to demonstrate that the sides were straight. The Hercules bag had a gusseted base and this tensioning would be necessary to achieve straight sides. Her honour held that this was not permissible. She agreed with counsel for ICB who said that it was necessary for there to be a constant way in which to assess allegedly infringing products. She held that this does not allow the bag to be manipulated in any way once in the laid-flat form.
Unfortunately for Clorox, when the Hercules bag was laid down flat without manipulation the "sides" showed a clear curvature and "do not fall within any possible meaning of straight as used in the Patent specification".
Since Hercules did not take all the essential features, Clorox were unable to show infringement.
It appears that it may have been necessary for Clorox to limit their protection in that manner. However, it remains a lesson to practitioners that even though one feature may confer novelty, it is necessary for all the features to be taken to show infringement. Thus, the adage "less is more" certainly applies to effective claiming.