Case: Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date Alphapharm submits that "the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim", citing Sachtler at [53]. Alphapharm submits that the cross-examination of Professor Banwell established that the steps of the A process were different from the integers of Claim 6(b). Another defence raised by Alphapharm concerns the definition of "exploit" in Schedule 1 to the Act. Section 13(1) of the Act provides that, subject to the Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to do so. Section 13(3) provides that a patent "has effect throughout the patent area". The definition of "exploit" in the Dictionary in Schedule 1 is as follows: exploit , in relation to an invention includes: (a) where the invention is a product make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import 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 or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use. Alphapharm submits that para (b) of the definition requires that the use of the method or process be in the "patent area". The "patent area" is defined in the Dictionary in Schedule 1 and may, for convenience, be thought of as being "Australia". Consideration of the claim of infringement of the product claims (claims 1, 3 and 5) The authorities relating to infringement were recently reviewed by Bennett J in Sachtler at [43]-[67]. Her Honour cautioned against the purported application of the "pith and marrow" or "substance of the invention" approach, untrammelled by the form of the claims (at [55]). It is necessary for the Court to construe claim 6(b) in the light of the common general knowledge as at the priority date. How would the non-inventive person skilled in the art at that time, possessed of that common general knowledge, have understood the words of the claim?