29 May 2007

Federal Court Construes "Parallel"




Introduction

This matter arose as a result of an allegation of infringement by KD Kanopy and others against Insta Image and others of Australian Patent No. 656757.

Keifel J. dealt with Infringement, Fair Basis, Clarity, Novelty and Obviousness in concluding in favour of the patentee.

For the purpose of this post, I will deal with Infringement (i.e. claim interpretation) and fair basis. I noticed an interesting dismissal of evidence regarding obviousness that I would also like to share with you.

The Patent

The Patent was directed to a collapsible canopy. In particular, the independent claims were directed to "an expandable framework structure adapted to be folded and stored in a collapsed state and erected in an expanded state on a support surface whereby said framework structure may support a canopy covering above said support surface, ..."

I won't set out the relevant independent claims here as they are extensive. However, the focus in the proceedings was on the references in claim 1 to "parallel sidewall portions"; "end portions" received in sockets "in a close-fitted engagement between the parallel facing sidewall portions". The focus was also on how those references act together "to resist lateral and torsional deflections" of edge scissor assemblies.

The Skilled Person

No decision involving claim interpretation can be correctly made without considering the person to whom the patent specification is directed. That notional person is referred to as the skilled person or addressee. He or she is a hypothetical, skilled but non-inventive, worker in the field covered by the patent to whom the invention would be of interest. The patent specification must be interpreted in the shoes of such a person as at the filing date of the patent in question.

In Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; [2001] HCA 8, such a person is a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time.

Kiefel J. said that persons working in the awning, tent and shade structure business might be interested in how the edge scissor assemblies are attached. However, it seemed to him that the patent was directed to a person "called upon to design such a structure and its components."

Infringement

The golden rule is that the respondent must take each and every one of the essential integers of a claim to infringe upon the patent rights imparted by that claim - Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246.

Identifying the "essence" of an invention for the purposes of determining infringement is an incorrect approach. See Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited [2005] FCACF 220, which was reported on in my post of 28 October 2005. As pointed out by his honour, Fresenius reiterates that the correct approach is to identify the essential integers and that the form and wording of the claim are determinative.

Importantly, as set out in the Full Federal Court decision Populin v HB Nominees 41 ALR 471, the essential integers are to be determined by a common sense assessment of what the words used convey in the context of the then existing published knowledge and not by an abstract and uninformed construction.

In what is perhaps the most well-worn case in Australian patent law, Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183, a UK case, Lord Diplock said that: "'…a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (ie 'skilled in the art'), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge …" It's a classic statement and worth repeating.

However, in Nicaro Holdings Pty Ltd v Martin Engineering Company (1990) 91 ALR 513, Gummow J. did not think that Catnic created some new category of non-textual infringement. Rather, as pointed out by his honour in this matter, the solution proposed by Lord Diplock was a construction that "gave effect to what the skilled addressee would understand to be the protection claimed.

It is interesting that in the Catnic case the point at issue was an integer that set out a "rear support member" that extended "vertically". The alleged infringer had the member inclined at 6 or 8 degrees from the vertical. The inclination had very little effect on the function and the House of Lords found infringement.

In this case, a similar question that arose was whether a so-called "Product B" infringed the Patent. More specifically, the main question was whether or not the integer of "parallel facing sidewalls" of claim 1 was taken by parts A, B and C of the mount of Product B (shown above). For that to occur, "parallel" would have to be interpreted as having to be as close to true parallel as possible.

However, his honour said that was not necessary for the required function of the mount. He said that the skilled addressee would understand that "substantially parallel" would suffice. The variation in Product B would have no effect on the function of the sidewall on the end portion of the scissor assembly.

Fair Basis

The respondents argued that if the claims are to be interpreted as covering walls that are just reasonably parallel and do not create one planar surface, they cannot be fairly based on the matter described in the specification.

His honour referred to Synthetic Turf Development Pty v Sports Technology International Pty Ltd (2005) 67 IPR 475, reported in my post of 3 February 2006. The question is whether there is a real and reasonably clear disclosure in the body of the specification of what is claimed. Or, does the body of the specification describe the invention as claimed in a general sense?

In this case, the description of the preferred embodiment did make it clear that the sidewalls are required to be parallel. It also mentioned that planar contact surfaces are formed.

However, his honour held that the specification should not be construed as disclosing an invention limited to the preferred embodiment. It is possible for a consistory clause to be treated as disclosing the invention. The relevant consistory clause describes sockets of the mounts as having "spaced-apart facing sidewall portions".

Evidence for Obviousness


The use of hindsight is strictly forbidden in Australia. See my post of 1 September 2005.

One of the respondent's witnesses was given a design task prior to him seeing the patent in suit. However, the court held that the description of the task and the questions arising in its course were such that he was effectively directed to the use of brackets and sockets having parallel facing sidewalls. At one point he was asked to "explain the general engineering principles behind using parallel facing sidewalls in sockets". If they improved strength, he was asked to explain how.

His honour did not consider that his evidence could carry any weight.

Lessons

It appears that we do have purposive construction but we just don't call it that. It does appear, though that it is always important to interpret the claims in the shoes of the person to whom the specification is addressed.

Thus, when preparing patent specifications, try not to use words that might indicate that a particular integer is textually essential.

Also, make sure that the Summary of the Invention (the "consistories") has plenty of broad paragraphs.

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