22 April 2008

Federal Court Recaps Claim Interpretation

The matter of Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCA 314 was handed down by the Federal Court of Australia on 11 March 2008.

There is some useful material on how the claims of a patent should be interpreted. The case can be downloaded from the above link. Have a look at paragraphs 40 to 45.

Spender J. cited Hely J. in Flexible Steel Lacing Co v Beltreco Ltd (2001) 49 IPR 331:
  • As a general rule, the terms of a specification should be accorded their ordinary English meaning.
  • 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 which might otherwise bear their ordinary meaning.
  • However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
The term "mounted on" is used often by us practitioners. In short, the court held that A is "mounted on" B even though there is an intervening component interposed between A & B. Of course, that conclusion was reached in the light of the above rules.

If a reading of the specification indicates that A should always be directly mounted on B, then it might be necessary to limit the interpretation of "A mounted on B" to direct mounting.

So, if you're looking for broad protection, make sure that the language of the specification does not indicate that it is essential for A to be mounted directly on B.

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