JSIP 2019
Overview of Australian Patent
Litigation and Mock Trial
Sarah Matheson, Partner
Philip Kerr, Senior Patent Counsel

Allens is an independent partnership operating in alliance with Linklaters LLP.

Venue and Jurisdiction for Patent Litigation> Almost all patent claims in Australia are heard by the Federal Court ofAustralia> Trial before single judge. No jury
> Cases are generally split into separate phases: Determination of liability – validity, infringement and injunctive relief Determination of quantum of damages or an account of profits> All parties have a right of appeal to the Full Court of the Federal Court> Decisions of the Full Court can be appealed, with leave, to the High
Court of Australia

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Overall Flow of a Patent Case in Australia (1 of 2)
Letter ofDemandStarting
ProceedingsInterlocutory
Injunction• Letter to infringer demanding that it provide undertakings to stop infringing• Non-compliance as evidence of threat to infringe• Any threats of legal action must be justified• Originating Application, Statement of Claim and Genuine Steps Statement filed with Federal Court andserved on infringer• Application seeking relief on preliminary basis• Interlocutory relief is only available in limited circumstances• Applicant usually required to give ‘undertaking as to damages’• Date fixed by Court
First Direction • Purpose of hearing is to set timetable for progress of proceedings
HearingPleadings• Infringer required to file and serve a defence to infringement, and may also seek to file a cross-claim• Typical cross-claim alleges patent invalidity and seeks revocation of the patent

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Overall Flow of a Patent Case in Australia (2 of 2)• Discovery follows pleadings, and evidence usually follows discovery• Evidence is normally given in the form of affidavits supplemented by oral evidence (including cross-examination) in Court
Discovery and • Normal for exchange of evidence to take between 3 and 6 months
evidence• Performance of experiments sanctioned by the Court may be necessaryExperts

Trial• Expert(s) retained to give evidence on technical issues• Retaining appropriate expert critical• In many cases the experts are asked to prepare a joint report for the Court, and give concurrent evidence• Trial date is set once evidence has been exchanged• Trial involves opening submissions from each party, examination and cross examination of witnesses, followed by closing
submissions from each party• Court delivers judgment (which, in some cases, can take in excess of 12 months)
Judgment

Remedies• Available remedies include a final injunction, and order for a damages inquiry or account of profits, and an award of costs• Usual course is to have hearing on liability, followed by a separate hearing on the issue of damages or an account of profits

allens.com.au |4Costs in Patent Litigation

COSTS ORDERS

SECURITY FOR COSTS AND
FOREIGN CORPORATIONS

Unsuccessful party usuallyordered to pay costs of successful
party

Where no realisable assets inAustralia, party may be ordered toprovide security to cover any costs
orders which may ultimately bemade in favour of the other party

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Definition of Patent Infringement> Infringement is understood to mean exploitation of a product or process
claimed in a patent> To ‘exploit’ an invention means:- (a) where the invention is a product - make, hire, sell or otherwise disposeof the product, offer to make, sell, hire or otherwise dispose of it, use orimport it, or keep it for the purpose of doing any of those things; or- (b) where the invention is a method or process - use the method orprocess or do any act mentioned in paragraph (a) in respect of a productresulting from such use;

> There will be no infringement unless the alleged infringer has taken allof the essential features or integers of the patentee's claim.
> Infringement is determined after construction of the claims.
allens.com.au |6Construction of Patent Claims> The proper construction of the claims is a matter of law.
> A claim is construed from the perspective of a person skilled in the relevantart, and in the light of the common general knowledge.
> Ordinary words should be given their ordinary meaning unless: a person skilled in the art would give them a technical meaning; or the specification ascribes a special meaning.

> Claims should be construed in the context of the specification as a whole,
but cannot be narrowed or expanded by adding glosses drawn from thespecification.
> Claim should be given a purposive construction.
> Use of patent office file to aid construction is not allowed.
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Mock Trial Scene 1: Closing submissions by theOverview
of the scope of the Applicant’s Invention
ApplicantFeature
1

Control method for a car navigation system that displays a map on a display screen, themethod comprising steps of:2

reading, from first memory means in which facility data comprising display dataa plurality of service facilities and coordinate data indicative of existing positions of theservice facilities have previously been stored, the display data to display the plurality ofservice facilities on the display screen

3

designating one of the plurality of service facilities displayed on the display screen inaccordance with an operation4

reading coordinate data corresponding to the designated one service facility from thememory means

5storing the read coordinate data as user registered data in second memory means; and6

displaying a position indicated by the coordinate data read from the second memory
by superimposing a predetermined pattern on to the map when the map is displayed onthe display screen
allens.com.au |8Mock Trial Scene 1: Closing submissions by theApplicant
Comparison of claimed Invention with the D MethodFeature
1

A control method for car navigation system that displays a map on a screen of D
which includes:

2

holding D spot data including D name data indicative of a plurality of spots and D
data indicative of existing positions of the spots in D server of the car navigation system
in order to display the plurality of spots corresponding to the D name data on the screen

3receiving an instruction to register one of the plurality of spots displayed on the screen
a "memo position"4obtaining D position data corresponding to the designated spot from D server

5to be registered according to the instruction in order to store the D position data as Dmemo data

6

superimposing an icon on the map indicated by the D position data of D memo data readfrom D server when the map is displayed on the screen
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Mock Trial Scene 1: Applying claim construction principles

CAR NAVIGATION SYSTEMFIRST MEMORY MEANSSECOND MEMORY MEANS

The claimed method is for a carnavigation system, but this does
not require all elements of thesystem to be physically installed in
the car.

The first memory means is any
electronic storage medium which
is used to store the “display data”(i.e. the names of locations which
can be searched by a user) and“coordinate data” (i.e. latitude andlongitude position of selectedlocations).

The second memory means is any
electronic storage medium whichis rewritable and is used totemporarily record the coordinate
data for the selected location. Thisdata is retrieved for display on thedisplay screen.

There is no ambiguity in the claim
language, meaning any
requirement for the entire system
to be installed in a vehicle adds animpermissible gloss to the claim
based on the example
embodiment described in thespecification

This corresponds to the D Server,which stores the names andlocations of “spots”.

This also corresponds to the DServer, which registers a selected
location as “memo data” andretrieves the information for
display on the D Terminal.

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Mock Trial Scene 2: Closing submissions by Respondent> Ambiguities in claim construction can be clarified by having reference tothe disclosure in the specification as a whole.
 Where many different car navigation systems were available as at thepriority date, it is necessary to refer to the body of the specification toidentify the type of system forming part of the Invention.

> Adopting a purposive construction does not extend the patentee’s monopoly to
the “ideas” disclosed in the specification.
 The examples of the first memory means and second memory means
provided in the body of the specification are very limited.
 The patentee’s monopoly should not extend beyond the matters clearly
disclosed in the specification as a whole.
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Mock Trial Scene 2: Closing submissions by Respondent> Key distinctions between Invention and D Method: Equipment used in D Method is not entirely contained in the car, but isseparated between an in-car D Terminal (display screen) and remote D
Server – the D Method therefore does not involve a car navigation system
as described in the patent.
 The D Server is not a portable memory means, distinct from the CD-ROM
used as the first memory means in the claimed method.

 D Method uses only a single memory means – the D Server – rather thanemploying separate first and second memory means.

> Doctrine of equivalents does not apply in Australia, so cannot assist thepatentee is expanding the scope of the claimed invention.
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Mock Trial Scene 3: Closing reply submissions by
Applicant> The Applicant does not seek to rely on the doctrine of equivalents.
> The essential integers of the Invention map directly onto the featuresof the D Method as below:
Read from firstmemory means

Coordinate data

Map on adisplay screen

Display data
User registereddata
Read from secondmemory means
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Mock Trial Scene 4: Judgment

CONCLUSIONS ON
CONSTRUCTION

DETERMINATION ON
INFRINGEMENTORDERS

The judgment will set out what theCourt considers to be the proper
construction of the claim in suit,
having regard to the evidence ofexpert witnesses whereappropriate.

Based on the findings on
construction, the Court will makefindings of fact on infringement.

Orders disposing of the liability
portion of the proceeding will be
made, and further orders for
progressing the hearing on thequantum of damages or account ofprofits (if the Applicant issuccessful) will be made.

The Court will then conclude
whether infringement is made out.

allens.com.au | 14Allens is an independent partnership operating in alliance with Linklaters LLP.