22 February 2006

When a Blade is not a Knife



------------INVENTION ------------------------------------ ALLEGED INFRINGEMENT


On 23 December 2005, the Federal Court of Australia handed down
Breville Pty Ltd v The Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 .

Introduction

The applicant (Breville) sued the respondent (Warehouse) for infringement of its Australian patent no. 684615 for the invention entitled "Fruit and Vegetable Juicer".

The Patent

Breville contended that Warehouse infringed, inter alia, claim 1:

A fruit and vegetable juicer of the kind comprising a horizontal grating disc rotatable about a vertical axis and integral with and surrounded by a substantially frusto-conical filter sieve the sides of which project upwardly and outwardly from the grating disk, a feed tube arranged above the disc and a food pusher insertable into the tube to press food down on to the grating disc for grating, pulp and juice thereby produced flying upwardly and outwardly, the juice passing through the filter and the pulp passing over the filter for subsequent collection characterised in that the feed tube has an internal diameter substantially the same as that of the grating disc, there being provided in the tube a knife or knives having an upwardly directed cutting edge, the knife or knives being attached to and supported by the tube, the food pusher being bifurcated or otherwise shaped to pass downwardly past the knife or knives, downward movement thereof causing an article of food to be cut by the cutting edge or edges of the knife or knives and pressed onto the grating disc, the food being held against rotation by the knife or knives.

The Issue

The case turned on the proper construction of two aspects of claim 1, emphasized above.

According to the specification, " the pusher pushes ... on to the edge 18 which cuts it into two halves, which move downwardly on either side of the knife 17 and are then prevented from rotating and are pressed onto the grating disc 13 by downward pressure ..."

The Decision

Lindgren J. referred to the questions posed to two witnesses in connection with the allegedly infringing device, known as a "Cascade Juicer". Lindgren J. held that the evidence did not establish that there was a technical meaning of any of the expressions in claim 1 and that they were to be given their ordinary meanings. Citing Allsop Inc v Bintang Ltd (1989) 15 IPR 686, his honour held that the construction of the specification is for the court.

Lindgren J. made reference to a number of dictionary definitions before deducing that "relevantly, in ordinary parlance, a knife necessarily has a blade with a sharpened edge designed for cutting."

His honour identified "the tension" that exists in cases of construction. First, there is the idea that a person should not be able to take the "pith and marrow" or "substance" of the patented invention and avoid infringement by avoiding the language of the claims. Secondly, there is the idea that the language of the patent claims has been chosen by the patentee, sets the boundary of the patentee's monopoly, and should not be extended by the court to catch that which the patentee has left open to be done by others.

The principle of construction has been referred to in my post entitled "Full Court Rules on Claim Construction". His honour was grateful for those references, but stated simply that the "blade" of the Cascade juicer was not "on any reckoning, "a knife ... having an upwardly directed cutting edge"". He reinforced this by setting out that the blade is not a "knife" as it does not have a sharpened edge designed to "cut". In fact, in this case, as his honour pointed out, the blade of the Cascade juicer had its "least sharp" edge facing upwards. Furthermore, his honour set out that if the blade were separated from the juicer, no one would contemplate using its upper edge for the purpose of cutting.

In view of this construction, Lindgren J. held that the Cascade juicer fell outside of claim 1 and therefore did not infringe the patent.

Lessons

It is not clear why the claim was drafted so narrowly. However, this case is a reminder of the need for practitioners to think carefully about other embodiments which could achieve similar results. Perhaps a more favourable result would have been achieved if the relevant practitioner had referred to a "parting" or "splitting" member with suitable description in the specification explaining that an actual "cutting" edge could be replaced with a simple blade or vane.

In any event, this case emphasizes the importance of word selection and the ability to apply lateral thought when drafting patent documents.



03 February 2006

Federal Court Crimps Appellant

SYNTHETIC BOWLING GREEN

Synthetic Turf Development Pty Ltd v Sports Technology International Pty Limited [2005] FCAFC 270


Introduction

The appellant, Synthetic Turf, was the patentee of Australian Standard Patent No. 664427 for an invention entitled "Synthetic Bowling Green". Synthetic Turf instituted a proceeding against the respondent for infringement of the patent. The respondent, Sports Technology, denied infringement and cross-claimed for declarations of invalidity in respect of nine of the claims.

The primary judge dismissed the application made by Synthetic Turf and made an order revoking the nine claims on the grounds that they were not novel and did not involve an inventive step. Synthetic Turf appealed, giving rise to this case.

The Patent

The problem sought to be overcome by the invention was to overcome "leading bias resistance" in artificial turf playing surfaces. This is partly due to the directional pile of the fibres which has resulted in such surfaces being unsuitable as playing surfaces.

Claim 1 read as follows: "A playing surface comprising an artificial turf having a plurality of fibres extending generally upwardly from a backing material, said turf having particulate matter between the fibres such that each of the fibres has a buried stem and a free end protruding from the particulate matter and wherein at least 10% of the free ends are crimped at an angle to the stem so that they lie in different compass directions such that noticeable bias in any one direction is avoided." (emphasis added)

The phrase "at least 10% of the free ends are crimped" became significant.

The appellant contended that the 10% refers to the fibres that are themselves crimped, with the result that their free ends which protrude from the particulate matter are necessarily crimped. The respondent contended that the phrase extends only to fibres the free ends only of which are crimped. In other words, the buried stems are not crimped.

In supporting the respondents, the court held that claims are to be read in the context of the specification, not merely when ambiguity exists in the claim.

It is instructive to note that the court referred to the Macquarie Dictionary (An Australian Standard) to assist in determining the meaning of "crimped" and thus its meaning in the context of the above claim.

Infringement

The appellant alleged that the primary judge erred in finding that claim 1 of the patent was not infringed by a "Promaster" synthetic playing surface.

The respondent admitted that Promaster has "a plurality of fibres extending generally upwardly from a backing material. It also admitted that those fibres are crimped. However, it made no admission that "free ends...crimped at an angle to the stem".

In rejecting the appellant's allegation, the court held that there is no infringement if the wording of the claim makes it clear that the relevant area has been deliberately left outside the claim. The court held that none of the claims defines a product made from fibres that are crimped over their entire length rather than at the fibres' free ends.

Fair Basis

The appellant alleged that the primary judge erred in finding that, if claim 1 of the patent was to be given a construction which included a product crimped during the manufacturing process than claim 1 would not be fairly based on the matter disclosed in the specification.

Section 40(3) of the Patents Act 1990 provides that the claims must be "fairly based" on the matter described in the specification. The court cited some well-known cases and re-iterated the rules that the claim to a product must not travel beyond the matter disclosed in the specification. Furthermore, fair basis requires a real and reasonably clear disclosure of what is claimed. The specification must also be read as a whole.

The specification included such phrases as: "Any conventional artificial turf having a plurality of fibres tufted or woven to a backing material and extending generally upwardly therefrom is suitable...". And: "Ideally, the artificial turf used in the practice of the invention is manufactured so that each fibre stands substantially vertical." The only method of crimping referred to in the specification is by rolling the playing surface after particulate matter has been placed between the fibres leaving free ends protruding above the particulate matter.

Based on that, the court held that if claim 1 is construed in an appropriate manner it does not travel beyond the matter disclosed in the specification. However, if it were to be construed to include a playing surface comprising an artificial turf manufactured from pre-crimped fibres, it would travel beyond the matter described in the specification.

Novelty (Oral Evidence)

The Appellant contended that the primary judge ought to have rejected certain oral evidence which led him to a finding that the claims lacked novelty.

The court cited Fox v Percy (2003) 214 CLR 118 where the High Court gave no support to the notion that an appellate court should feel free readily to interfere with the findings of a trial judge based on his or her assessment of the respective credibility of witnesses. In fact, their honours in that matter spoke of a trial finding being "glaringly improbable" or "contrary to compelling inferences" before appellate interference was justified.

Inventive Step

The Appellant complained of the primary judge's finding that the invention did not involve an inventive step.

Inventive step has been discussed in previous posts. See for example "Jupiters Misses the Jackpot (Again)".

The court emphasised that the onus of establishing the absence of an inventive step rests on the party challenging validity. Also, that the type of "person skilled in the art" was a non-inventive skilled artificial turf installer.

While Mr Heylen, the inventor, was not an independent witness, the court accepted that the primary judge could take his evidence as to the common general knowledge as it existed at the priority date of the patent. Also, the court held, the primary judge correctly held that any inventiveness would lie in the solution to the problem of leading bias resistance in synthetic turf and not in the identification of the problem.

Considering the evidence, the court supported the primary judge's finding that the idea of rolling in multiple directions synthetic turf to which sand has been added was known to each of the witnesses before the priority date. Thus, it held that the primary judge was correct in holding that invention did not involve an inventive step.

Conclusion

This is a good illustrative matter. The technical field is not complicated and the full court has canvassed a number of "pillars" of Australian patent practice. The "Fair Basis" section is particularly interesting and indicates that practitioners ought to make sure that all possible embodiments are at least broadly covered. Perhaps the most important lesson provided is the critical nature of the language used by patent practitioners. Clarity is very important and should be demanded.