Australia – Mock Trial Judgment
Justice John Nicholas
Federal Court of Australia

Patent Construction
The relevant principles of construction are:o A patent specification should be read in light of the common general knowledge in the art as it stoodat the priority date. It should be given a purposive rather than a purely literal or abstract construction.
It should also be read in a practical and common sense way.
o The words used in a patent specification are to be given the meaning which a person skilled in the art
would give them having regard to the common general knowledge as at the priority date and what isdisclosed in the specification when read as a whole.
o The claims define the scope of the patentee’s monopoly. While they are to be construed in light ofthe patent specification as a whole, it is not legitimate to narrow or expand the boundaries of thepatentee’s monopoly as fixed by the words of a claim by adding to or subtracting from the meaning of
those words based on glosses drawn from other parts of the specification.

o In particular, it is not permissible to read down clear and unambiguous language of a claim byreference to the description of a preferred or exemplary embodiment described in the body of thespecification. However, it is permissible to resolve ambiguity in the claims by reference to the body ofthe specification.

o The proper construction of a patent specification is a matter of law. While experts can give
evidence as to the common general knowledge and the meaning of technical or scientific terms in
the patent specification, the meaning of the claim is ultimately a matter for the Court to determine.
o Since a patent specification must describe the invention fully, including the best method known to
the inventor of performing the invention, a patent specification will usually contain a detailed
description of at least one embodiment of the invention around which the claims are drawn.
o Provided a claim is fairly based upon matter disclosed in the specification, it may define theinvention more broadly than the embodiment that is described in the body of the specification.
Equally, the claim may define the invention more narrowly than the embodiment that is describedin the specification.
o A limitation in a claim cannot be ignored simply because the embodiment disclosed in thespecification is more broadly described or because a valid claim could have been drawn without
the same limitation. Further, the fact that a particular integer is a necessary feature of the best
method of performing the invention does not require that it be imported into the claim.

Issue 1

Whether claim 1 requires that all of the features of themethod for controlling the car navigation system referred toin claim 1 be installed in the vehicle?

The words “car navigation system” are clear and unambiguous and are not limited to systems having any
particular design or configuration. There is nothing in the specification that requires that all of the features ofthe method for controlling the car navigation system referred to in claim 1 be installed in the vehicle. In
particular, claim 1 does not require that either the first memory means or the second memory means to belocated inside the vehicle.

Issue 2

Whether the “first memory means” referred to in claim 1
must be a portable storage medium (eg. a CD-ROM) thatcan be installed in the vehicle?

There is nothing in claim 1 which requires that the first memory means be a portable storage medium thatcan be installed in the vehicle. The relevant language (ie. “memory means”) is deliberately broad andshould be given full effect. It encompasses any memory means capable of performing the function
attributed to it in the claim regardless of whether or not such means takes the form of a portable storage
medium. The fact that the embodiment described in the specification utilises a portable storage device(ie. a CD-ROM) does not provide a sufficient basis for importing any such requirement into claim 1.

Issue 3

Whether claim 1 requires that there be a separate “secondmemory means” for storing and reading coordinate data as
registered user data?

• The language of claim 1 refers to a “first memory means” and a “second memory means” (rather thanjust “memory means” or “one or more memory means”) which suggests that the facility data and coordinate data are stored in two separate memory means. However, the language may also be
understood as extending to a first and second memory means that may be provided by a single
memory device serving two distinct memory functions.
• Claim 1 is ambiguous in that it is not clear from the language used whether the first memory means
and the second memory means are necessarily separate components of the car navigation system.
Since the claim is in this respect ambiguous it is permissible to have regard to the description in thespecification and the views of the expert witnesses for the purpose of seeking to resolve theambiguity.

• In my opinion, claim 1 is to be understood as requiring that there be two separate memory means inthe form of two separate devices. This interpretation of claim 1 finds support in the language of theclaim (referring to a first and a second memory means) and in the description of the invention which
also distinguishes between the first memory means (the CD-ROM) and the second memory means(re-writable RAM). Each of these is a separate component with its own distinct function to perform in
the method of the invention.

Ruling on Evidence
Exclusion of the written opinion

During the course of the hearing, Donkey sought to tender in evidence a written opinion filedby Pony during the course of the prosecution of the application for the Patent in which Pony
explained why it disagreed with the Examiner’s interpretation of certain prior art. It wassubmitted by Donkey that the written opinion was relevant to the proper construction of thePatent.

The written opinion was excluded from evidence on the ground that it is not relevant to theproper construction of the Patent and is therefore inadmissible. This is because the Patent isto be construed in accordance with the principles of construction previously discussed which
do not usually permit the Court to receive opinion evidence as to the meaning and effect of
the claims or the prior art except by way of admissible evidence from an expert witness
qualified as a person skilled in the relevant art.

ConclusionClaim 1 requires that the method for controlling the car navigation system utilise a firstmemory means and a second memory means constituted by two separate memory devices.
The D system utilises a single memory device that performs the functions of both the firstmemory means and the second memory means. It follows that the D system does not
infringe claim 1.