mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79
Outcome: followed
In constructing a patent claim, the ordinary meaning of the language selected to define the claim is of prime importance: see Baygol Pty Ltd v Foamex Polystyrene Pty Ltd (2005) 64 IPR 437. Although a claim must be understood in the light and context of the whole specification, as a general rule, the words of a claim are not to be altered by a gloss taken from the body of the specification and essential integers are determined by a common sense assessment of what the words of the claim convey in the context of the existing published knowledge at the time: see Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79 at 92; Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1. It is not legitimate to narrow or expand the boundaries of an anomaly as fixed by the words of a claim by adding words drawn from other parts of the specification: see Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [74]. In addition, claims are not to be construed by reference to the actual intentions or opinions of the inventor: see Sartas (No 1) Pty Limited v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 485-6.
Case: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1
Outcome: followed
In constructing a patent claim, the ordinary meaning of the language selected to define the claim is of prime importance: see Baygol Pty Ltd v Foamex Polystyrene Pty Ltd (2005) 64 IPR 437. Although a claim must be understood in the light and context of the whole specification, as a general rule, the words of a claim are not to be altered by a gloss taken from the body of the specification and essential integers are determined by a common sense assessment of what the words of the claim convey in the context of the existing published knowledge at the time: see Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79 at 92; Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1. It is not legitimate to narrow or expand the boundaries of an anomaly as fixed by the words of a claim by adding words drawn from other parts of the specification: see Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [74]. In addition, claims are not to be construed by reference to the actual intentions or opinions of the inventor: see Sartas (No 1) Pty Limited v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 485-6.
Case: Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331
Outcome: followed
In constructing a patent claim, the ordinary meaning of the language selected to define the claim is of prime importance: see Baygol Pty Ltd v Foamex Polystyrene Pty Ltd (2005) 64 IPR 437. Although a claim must be understood in the light and context of the whole specification, as a general rule, the words of a claim are not to be altered by a gloss taken from the body of the specification and essential integers are determined by a common sense assessment of what the words of the claim convey in the context of the existing published knowledge at the time: see Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79 at 92; Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1. It is not legitimate to narrow or expand the boundaries of an anomaly as fixed by the words of a claim by adding words drawn from other parts of the specification: see Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [74]. In addition, claims are not to be construed by reference to the actual intentions or opinions of the inventor: see Sartas (No 1) Pty Limited v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 485-6.
Case: Sartas (No 1) Pty Limited v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479
Outcome: followed
In constructing a patent claim, the ordinary meaning of the language selected to define the claim is of prime importance: see Baygol Pty Ltd v Foamex Polystyrene Pty Ltd (2005) 64 IPR 437. Although a claim must be understood in the light and context of the whole specification, as a general rule, the words of a claim are not to be altered by a gloss taken from the body of the specification and essential integers are determined by a common sense assessment of what the words of the claim convey in the context of the existing published knowledge at the time: see Rehm Pty Ltd v Websters Securities Systems (International) Pty Ltd (1988) 81 ALR 79 at 92; Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1. It is not legitimate to narrow or expand the boundaries of an anomaly as fixed by the words of a claim by adding words drawn from other parts of the specification: see Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [74]. In addition, claims are not to be construed by reference to the actual intentions or opinions of the inventor: see Sartas (No 1) Pty Limited v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 485-6.
Case: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228
Outcome: followed
The test for anticipation is whether use of a product or process in accordance with the prior disclosure would constitute an infringement of the claim. If the answer is in the affirmative, then the claim has been anticipated and is invalid for lack of novelty: see Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235 per Aickin J; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [125] .
Case: Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220
Outcome: followed
The test for anticipation is whether use of a product or process in accordance with the prior disclosure would constitute an infringement of the claim. If the answer is in the affirmative, then the claim has been anticipated and is invalid for lack of novelty: see Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235 per Aickin J; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [125] . 91 This test calls for consideration of whether the prior disclosure incorporates all of the integers of any of the claims: see Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [128] - [152] . That is, the prior disclosure must reveal the totality of the invention and the antecedent information and must be such that a person of ordinary knowledge of the subject would perceive, understand and be able to practically apply the invention without needing to do experiments or obtain further information before the invention can be made useful: see Hill v Evans (1862) 4 De GF &amp; J 288 per Lord Westbury LC; Olin Corporation v Super Cartridge &amp; Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 261 per Stephen and Mason JJ. In other words, the principal issue is whether the content and effect of the claimed anticipation is sufficient to destroy the element of novelty in the invention: see Pfizer-Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224 at [311] - [324] . 92 Of particular importance is whether the disclosure has been sufficiently clear. That is, the disclosure must contain clear and unmistakable instructions as to how to use the claimed invention: see Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224 at [314] ; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [140] and [153]. In documentary anticipations, the insistence upon clear and unmistakable instructions does not require the equivalence of language between the claimed invention and the disclosure. What matters is what is taught by the material: Evans Medical Ltd's Patent [1998] RPC 517 at 576 per Laddie J.
Case: Hill v Evans (1862) 4 De GF &amp; J 288
Outcome: followed
This test calls for consideration of whether the prior disclosure incorporates all of the integers of any of the claims: see Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [128] - [152] . That is, the prior disclosure must reveal the totality of the invention and the antecedent information and must be such that a person of ordinary knowledge of the subject would perceive, understand and be able to practically apply the invention without needing to do experiments or obtain further information before the invention can be made useful: see Hill v Evans (1862) 4 De GF &amp; J 288 per Lord Westbury LC; Olin Corporation v Super Cartridge &amp; Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 261 per Stephen and Mason JJ. In other words, the principal issue is whether the content and effect of the claimed anticipation is sufficient to destroy the element of novelty in the invention: see Pfizer-Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224 at [311] - [324] .
Case: Evans Medical Ltd's Patent [1998] RPC 517
Outcome: followed
Of particular importance is whether the disclosure has been sufficiently clear. That is, the disclosure must contain clear and unmistakable instructions as to how to use the claimed invention: see Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co [2005] FCAFC 224 at [314] ; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [140] and [153]. In documentary anticipations, the insistence upon clear and unmistakable instructions does not require the equivalence of language between the claimed invention and the disclosure. What matters is what is taught by the material: Evans Medical Ltd's Patent [1998] RPC 517 at 576 per Laddie J.
Case: Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182
Outcome: followed
The acts or prior publication said to anticipate the invention must be publicly available, that is, they must be communicated to a member of the public without any restraint as to the use of the information by the recipient: see Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182 at [99]. A similar test was outlined by Drummond J in Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71.
Case: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71
Outcome: followed
The acts or prior publication said to anticipate the invention must be publicly available, that is, they must be communicated to a member of the public without any restraint as to the use of the information by the recipient: see Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182 at [99]. A similar test was outlined by Drummond J in Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71.
Case: General Tyre &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457
Outcome: followed
The relevant parts of the document are, to some extent, contradictory. However, the emphasis in the document is on the efficacy of a solution made at pH 7. In my view, having regard to the above, a skilled reader would be left confused by the document as to the pH at which the complex is manufactured. As stated in General Tyre &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486, it is not sufficient that the prior disclosure contains a direction which is capable of being carried out in a manner that would infringe the patentee's claim, but is at least as likely to be carried out in a way which would not infringe the claim. The references to pH in the document cannot be described as "clear and unmistakable directions" as to how to produce the complex. Professor Reynolds gave evidence that the type of information in the document is not sufficient to enable the manufacture of the product. Mr Quigley, in cross-examination, referred to discrepancies between the information in the Information Package and the process actually employed during the production trials by the CSIRO. The evidence of Mr Nunn was that the information in the document would not enable the manufacture of the Calpep product without more information. 117 Accordingly, it cannot be said that the document anticipates the integers of Claims 7 and 18.
Case: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR
Outcome: followed
I am satisfied that the document was made available to a limited body of persons in circumstances where it appeared, on the face of the document, that it had the quality of confidence about it. It appeared that the document was communicated for limited purposes and imported an obligation not to disclose it and suggested to the reader that its disclosure would amount to a breach of confidence: see Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414 at 437-438. 120 Section 24 of the Act provides that for the purpose of deciding whether an invention is novel, the Court must disregard information made publicly available without the consent of the patentee through any publication by another person who derived the information from the patentee. 121 NSI contends that the Information Package was made publicly available and that the evidence demonstrates that the Information Package was sent from Professor Reynolds' office to a number of prospective third party licensees in about May 1996, including Dr Barnett of SmithKline Beecham, Ms Finidori of Synthelabo in France, Dr Nelson of Consumer Health Care in the United States, Mr Markowitz of the Block Drug Company in the United States, Mr Faller of Procter &amp; Gamble in the United States, Mr Ziemkiewicz of Chesebrough Ponds in the United States and Mr Garland of NZP in New Zealand.
Case: Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9 ; (1980) 144 CLR 253
Outcome: cited
In Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9 ; (1980) 144 CLR 253 at 292, Aickin J defines "common general knowledge" as: "that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge." 165 The University submits that Dr Mackinlay's evidence must be approached with some caution because it is unclear precisely what his knowledge was before March 1997. This is because it is unclear what Dr Mackinlay personally knew before March 1997 and what facts he assumed or additional knowledge he gained by reading articles provided to him by his instructing solicitors. The University also submits that Dr Mackinlay's views could have been influenced by hindsight because he was given a copy of the Complex Patent early in the litigation. Taken in isolation, this is not a decisive objection. However, the authorities show that it is a matter that goes to the weight to be given to Dr Mackinlay's evidence and points to the need to exercise a degree of caution when considering his evidence: see, for example, Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited [1980] HCA 9 ; (1980) 144 CLR 253 at 293-294 per Aickin J. 166 NSI asserts that the claims lack the necessary inventive step because it was common general knowledge as at March 1997 that the Cluster Sequence was present in casein and that it served to bind calcium phosphate. It is contended that this knowledge, when taken with the 1958 paper by Reeves and Latour entitled "Calcium Phosphate Sequestering Phosphopeptide from Casein" ("the Reeves and Latour article"), would make the invention obvious to the skilled addressee. 167 Subject to my comments above regarding the skilled addressee, the principal relevant skilled addressees include Dr Mackinlay and Dr McKinnon.
Case: Olin Mathieson Chemical Corporation v Biorex Laboraties Ltd [1970] RPC 157
Outcome: referred to
At the outset, it is necessary to describe the attributes of the skilled addressee and the relevant patent area. The skilled addressee is a legal construct and is assumed to be a person, or team, who is "not 'particularly imaginative or inventive'": Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [288] per French and Lindgren JJ. This does not mean that the addressee is a technician or person with only practical and non-academic qualifications. In fields such as chemistry, the addressee can be a person or group with high level qualifications and a capacity for original research: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [30] . The test formulated by the majority in Alphapharm at [53]-[54] is whether the addressee would directly be led, as a matter of course, to pursue one avenue in the expectation that it may well produce the claimed result. Their Honours referred to the approach taken by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboraties Ltd [1970] RPC 157 at 187-188. His Honour framed the question in terms of whether a notional research group, at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of a chemical, would be led directly as a matter of course to try a particular substitution in the expectation that it might well produce a useful alternative to, or better drug than, the existing drug or a body useful for any other purpose.
Case: In re Farbenindustrie AG's Patents (1930) 47 RPC 289
Outcome: cited
In approaching the question of obviousness, it is necessary to assess the inventiveness of the invention and not simply to examine each integer in isolation. In Alphapharm , the majority said at [58]: "The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course." This observation is pertinent to the present case. Mere verification or discovery is not an invention. An invention may be made by a brilliant sudden insight or act or by a slow and laborious approach: see In re Farbenindustrie AG's Patents (1930) 47 RPC 289 at 322 per Maugham J. Obviousness is not determined by asking whether a particular avenue of research is worth a try.
Case: ICI Chemicals and Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 ; (2000) 49 IPR 513 at [91]
Outcome: followed
It should be noted that the statement by the University is in the form of a submission as to the legal effect of the amended patent claim and it must be considered in that context. The statement involved a consideration of the state of the prior art. It is settled law that an applicant for a patent can make submissions to the Patent Office as to the proper construction or effect of a claim, and this will not be found to have been a false suggestion or representation simply because such a submission may later be held to have been incorrect: see ICI Chemicals and Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 ; (2000) 49 IPR 513 at [91] . 207 Insofar as the representation is based on belief, it has not been shown to be a false belief or one which is not reasonably held. On the contrary, the conclusions that I have reached on the issues of novelty and obviousness meet the submissions of NSI. 208 In closing addresses, NSI sought to raise other questions that were not pleaded. I do not consider that these should be entertained. However, in any event, in my view, they do not affect the conclusion that I have reached in any way.
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: referred to
Section 40 of the Act requires that a complete specification must be clear, succinct and fairly based on the matter described in the specification. NSI submits that the Complex Patent specification does not comply with these requirements. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 at [69] , the High Court formulated the relevant question as being whether there has been a real and reasonably clear disclosure in the body of the specification of what is then claimed so that the invention is broadly or in a general sense described in the body of the specification. Another way that the question can be posed is to ask whether the claim travels beyond the disclosure in the specification: Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 240 per Barwick CJ.
Case: Stuart v Alexander (1981) 37 ALR 161
Outcome: referred to
The University refers to authorities that support the proposition that there must be a basis in fact for comparative advertising and to publish comparative claims to ensure that the comparison is accurate: see Stuart v Alexander (1981) 37 ALR 161 at 163 per Lockhart J; Makita (Aust) Pty Ltd v Black &amp; Decker (A'asia) Pty Ltd (1998) 18 IPR 270 at 280; Duracell Australia Pty Ltd v Union Carbide Australia Ltd (1988) 14 IPR 293 at 299 per Burchett J. In Colgate Palmolive Pty Ltd v Rexona Pty Ltd (1981) 37 ALR 91, the Court held that it is misleading conduct to make comparative efficiency claims that imply they were made on a scientific basis when, in fact, there is no proper scientific basis for making those claims. That case related to a claim in respect of an ingredient in a toothpaste. A comparison may be misleading by omission of a material fact that would be necessary to render the comparison fair and it can be misleading for a corporation not to put forward sufficient information to dispel the possibility that a recipient may be misled. In some circumstances, it may be misleading to make a statement implying that there is an adequate foundation in scientific knowledge to justify it when, taken in context, the scientific statement does not provide a proper foundation, for example, see Sterling Winthrop Pty Ltd v Boots Co (Australia) Pty ltd (1995) 32 IPR 361 at 365 and the cases cited therein.
Case: Makita (Aust) Pty Ltd v Black &amp; Decker (A'asia) Pty Ltd (1998) 18 IPR 270
Outcome: referred to
The University refers to authorities that support the proposition that there must be a basis in fact for comparative advertising and to publish comparative claims to ensure that the comparison is accurate: see Stuart v Alexander (1981) 37 ALR 161 at 163 per Lockhart J; Makita (Aust) Pty Ltd v Black &amp; Decker (A'asia) Pty Ltd (1998) 18 IPR 270 at 280; Duracell Australia Pty Ltd v Union Carbide Australia Ltd (1988) 14 IPR 293 at 299 per Burchett J. In Colgate Palmolive Pty Ltd v Rexona Pty Ltd (1981) 37 ALR 91, the Court held that it is misleading conduct to make comparative efficiency claims that imply they were made on a scientific basis when, in fact, there is no proper scientific basis for making those claims. That case related to a claim in respect of an ingredient in a toothpaste. A comparison may be misleading by omission of a material fact that would be necessary to render the comparison fair and it can be misleading for a corporation not to put forward sufficient information to dispel the possibility that a recipient may be misled. In some circumstances, it may be misleading to make a statement implying that there is an adequate foundation in scientific knowledge to justify it when, taken in context, the scientific statement does not provide a proper foundation, for example, see Sterling Winthrop Pty Ltd v Boots Co (Australia) Pty ltd (1995) 32 IPR 361 at 365 and the cases cited therein.