Case: Australian Mud Company Pty Ltd v Coretell Pty Ltd  FCA 1169
Judge: Barker J
This court considered the question of whether or not "a device" has one or two parts. It emphasised the need to consider such questions in the context of the specification as a whole. The issue of "fair basis" was also considered. Fair basis must not be confused with any of the other requirements of s40 from which it is conceptually distinct. The fair basis test does not involve isolating an integer and then looking for its equivalent within the specification.
The Australian Mud Company sued Coretell for infringement of its innovation patent . Coretell denied infringement and cross-claimed based on unjustified threats and invalidity of the patent. One of the respondents was a company called Mincrest Holdings Pty Ltd (Mincrest).
The Innovation Patent
The patent covered the determination of down-hole orientation of core samples taken during drilling operations, typically in the mining industry.
The determination of infringement requires the application of the principles of claim construction, already covered extensively in these posts. In short, as set out by the court, the "ultimate point of claim construction is to establish whether the respondents have exploited a product which possesses each and every one of the “essential integers” of each claim alleged to be infringed: Olin Corporation v Super Cartridge Co Pty Ltd  HCA 23.
The word "device" was one of the essential integers in dispute.
The question was whether the term "device" could encompass a core orientation tool in two or more separate and separated parts or whether it was limited to a unitary tool comprised of a single piece. Coretell would not infringe if it did not cover a tool in multiple parts.
The claims referred to "the device" consistently in the singular. Nowhere in the specification was there mention of a a device with more than one part. Even when recourse was had to the specification as a whole in order to resolve any ambiguity in the meaning of the word “device”, the specification did not at any point suggest the invention was to be construed as encompassing tools in more than one part. If anything, the background art disclosed in the specification suggested that the invention disclosed in the Patent was designed to replace other unitary downhole systems of core sample orientation that relied on physically marking the core sample.
Furthermore, an appended claim spoke of "an orientation device as claimed in claim 1" which is "attached to an inner tube assembly of a core drill". It followed that to encompass a tool in two parts the claims would need to have been rewritten to make it clear that only the downhole part of a multi-part tool would be attached to the inner tube assembly of a core drill, not the entire device.
The reference in the claims to the "orientation of the device" suggested a whole device, that is, a device as a single part. The court referred to the principle that what is not claimed is disclaimed - EMI v Lissen Ltd (1938) 56 RPC 23. Also, as set out in H Lundbeck A/S v Alphapharm Pty Ltd  FCAFC 70, a method of construction that gives a patentee what it might have wished or intended to claim, rather than what the words of the relevant claim actually say should not be used. The Court should read the claims purposively and not with an eye for pedantry. But even an appropriately liberal approach to construction should not permit the words of the claims to be stretched beyond their textual limits.
Claim 1 defined: "an orientation device for providing an indication of the orientation of a core sample relative to a body of material from which the core (sample) has been extracted."
Coretell said that the defined orientation could only be achieved if the core orientation tool and the core sample were continuously maintained in a known or fixed relationship both during drilling down the hole and during re-alignment of the tool and the core sample on the surface. The experts agreed that such a relationship was required to determine the rotational orientation of the core sample.
Coretell pointed to that part of the specification describing the "Best Mode" and said that the fixed relationship was achieved by ensuring that the tool was attached to the lower portion of the inner tube assembly of the core drill. Then Coretell went on to say that this fixed relationship was not present in any of the claims of the patent. Consequently, they contended that the claims were wider than what was disclosed in the specification and so were not fairly based on the specification.
The Court said that the respondents focussed too narrowly on the preferred embodiment to the exclusion of the specification as whole. This was contrary to what was held to be the correct approach in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd  HCA 58. Thus, the court said that this approach isolated an “integer” in the preferred embodiment in the specification and compared it unfavourably to what is said to be in the claims. This was an erroneous approach and ignored consideration of the specification as a whole.
As set out by the court, the test for fair basis requires no more than a real and reasonably clear disclosure in the specification of what is claimed.
As part of their argument, Coretell cited Seafood Innovations Pty Ltd v Richard Bass Pty Ltd  FCA 723, in which the court found an innovation patent to be invalid. The ground for invalidity was s 40(2) which requires that the claims define the invention. In that case, the invention – a device for stunning fish - could not operate without a mechanism to stop, hold, stun and release fish. That mechanism was not disclosed in the claims. Consequently, the court held that the claims did not define the invention and were invalid.
Coretell cited that case, claiming that it was analogous to the present case. But Coretell's onus was to make out a case based on s 40(3) which requires that the claim or claims be clear, succinct and fairly based on the matter described in the specification. The two grounds of invalidity in s 40(2) and (3) are and must be kept conceptually distinct (Lockwood).
In this case, the court said that there was no such element necessary to make the invention work missing from the claims in the patent.