31 July 2016

CQMS v Bradken Resources

Case: CQMS Pty Ltd v Bradken Resources Pty Limited [2016] FCA 847.

Judge: Dowsett J.

Notes

  1. Construction of mechanical claims
  2. Wear assemblies and ground engaging tools for mining and construction
  3. Patent Attorneys should not be sending out Letters of Demand





Claim construction

Paragraph 32 sets out 10 well known rules of claim construction.

Paragraph 37 sets out the construction issues.

Paragraph 44 sets out some interesting analysis of the term "in use", which is often used in claim drafting. Dowsett J. said that the use of this term indicates that the various integers of the claim must be construed having regard to their anticipated interaction.

Dowsett J. made use of the Shorter Oxford English Dictionary.

"Aperture" is a word many of us use in drafting. Provided it is not limited by context or definition within the specification, the dictionary definition is nice and broad: "...the meaning of the word “aperture” is not limited to a gap wholly surrounded by the feature in which it appears...".

It was difficult to explain a number of submissions relating to "mount" and "via" other than by reference to the allegedly infringing products. Dowsett J. did so "reluctantly" (Para 55).

There was a rather dry reference to the way in which many in the profession coin words. In this case, the drafter had used the word "tensionable". According to the Court that word is unknown to the compilers of the Oxford English Dictionary, the Shorter Oxford English Dictionary or the Macquarie Dictionary. Personally, I dislike coining such words. The English language is more than capable of describing or defining any invention. Nevertheless, the Court did give the word meaning.

Going back to "Aperture" and reading up to para 66, the Court concluded that the term "wall aperture" should be interpreted. The Court held that the interaction of the various components as described in the specification and drawings indicated that the Aperture has a continuous perimeter. There was no support in the drawings, or otherwise in the specification, that the Aperture could be a  notch or slot.

Paragraphs 37 to 66 contain a fairly detailed analysis of claims covering a mechanical assembly for tools used in the mining and construction industry. There are worth reading for those of us involved in the preparation of specifications in this field.

One lesson that can be distilled here is that the drafter should always weave wording into the specification that casts as broad a definition as possible. For example, it might have been a good idea to set out that the aperture in this case could have been in the form of a "slot" or "notch". Of course, variations need to be feasible, technically.

Unjustified Threats

It appears that the patent attorneys sent the Letter of Demand (Para 158). This is not something that I would recommend. The Letter of Demand does form part of the record, as can be seen here, and it can have serious implications that might not be foreseen by a patent attorney. Examples of those appear in the Civil Dispute Resolution Act 2011, which should be considered when preparing the Letter (para 183). We are not trial attorneys and familiarity with that Act is outside of our area of expertise. The Letter of Demand could jeopardize a litigation strategy if it is not handled by the attorney that will actually be running the litigation.

The patent attorneys letter that was sent out was "a statement of the applicants’ case at its highest, coupled with a demand for all of the relief to which they might, in any circumstances, be entitled, than a genuine step, designed to lead to settlement.  It is, in effect, a letter of demand.  In my view it is a threat of infringement proceedings."

In short, any initial correspondence to an alleged infringing party should contain within it some effort to resolve the dispute and to achieve settlement without litigation.











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