mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41
Outcome: cited
a purposive approach to construction of the claims does not mean that clear limitations in the scope of the monopoly contained in the language of the claims can be avoided or the reach of the monopoly extended beyond the clear limits of the language selected. A purposive approach to construction as opposed to a purely literal one will raise the question of whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with the descriptive words or phrases used in a claim was intended to be an essential requirement of the invention. If so, as a matter of construction, a variant would fall outside the monopoly claimed even though it could have no material affect on the way the invention works. That question does not arise where the variant would in fact have a material affect upon the way the invention works ( Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183 ; Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd (2004) 64 IPR 444). The construction of the language of a claim, adopted by the Court, ultimately determines infringement. The question is whether the alleged infringement is comprehended by the clear language of the claim ( Sachtler applying Catnic and PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41). Construction of the claims
Case: Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231
Outcome: cited
point of this discussion is that it may tell the Court something about construction of the claims. If the claims are confined to a single unitary reverse wound spring, might that integer be regarded as an inessential integer if there is no functional difference between a spring clutch that includes such a spring and a spring clutch that incorporates three separate springs in adjacent alignment reflecting alternate winding. Would persons with practical knowledge and experience in the subject matter addressed by the invention understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variation would fall outside the monopoly claimed even though it could have no material affect upon the working of the invention. Lord Diplock in Catnic Components Ltd v Hill &amp; Smith Ltd (supra) noted that such a question would not arise where the variation would in fact have a material affect upon the working of the invention. The Improver or protocol questions ( Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181) pose questions, the answers to which assist construction . That is to say, the questions test whether a reasonable person skilled in the art reading the language of the claims in context would think that the patentee was intending to confine the monopoly to the natural or primary meaning of the words selected or, alternatively, would such a person think that the patentee was intending to include within that meaning a variant of no material functional difference ( Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231).
Case: D&eacute;cor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385
Outcome: cited
principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH &amp; Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in D&eacute;cor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron &amp; Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests.
Case: Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20
Outcome: cited
principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH &amp; Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in D&eacute;cor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron &amp; Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests.
Case: Kinabalu Investments Pty Ltd v Barron &amp; Rawson Pty Ltd [2008] FCAFC 178
Outcome: cited
principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH &amp; Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in D&eacute;cor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron &amp; Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests.
Case: PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18
Outcome: cited
principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH &amp; Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in D&eacute;cor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron &amp; Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests.
Case: Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: cited
says that if the claims of the patent, properly construed, include within the monopoly a spring clutch comprised of a plurality of springs with reverse windings and tabs, such claims are not fairly based upon disclosures in the body of the specification. Uniline says that the invention as claimed by the terms of the monopoly might well be narrower than the disclosures contained in the specification but the claims cannot travel beyond the disclosures in the body of the specification. Uniline asks, consistent with Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 , whether there has been a real and reasonably clear disclosure in the body of the specification of that which is claimed or, put another way, whether the claims travel beyond the disclosures in the specification ( Olin Corporation v Super Cartridge Co. Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236). I have construed the claims to require a single unitary reverse wound spring as an essential integer. Those claims so construed are consistent with the disclosures in the specification. If, however, an assumption is made that the proper construction of the claims brings within the scope of the monopoly a plurality of springs of alternate winding, do the claims travel beyond the specification? The specification contemplates an invention answering the problems of the prior art by providing for a bi-directional spring clutch that confers the advantages of a single spring engaging a non-complex slot and key engagement mechanism or control means. The specification plainly discloses the use of multiple springs sequentially engaged in prior art spring clutches by a complex configuration of openings and barriers as an aspect of a prior art bi-directional clutch. If the counter-factual hypothesis is adopted that the claims include use of a plurality of springs, that hypothesis would seem to follow necessarily from an acceptance of the proposition that the object of the invention, properly construed, is to avoid a plurality of springs in combination with a complex configuration of openings and barriers. Therefore, on that hypothesis of construction, a plurality of springs engaging a slot and key control means (that is, a non-complex control means) is sufficiently disclosed by the specification by reason of the description of the object of the invention and the claims are thus, upon the counter-factual, fairly based. However, neither the object nor the claims contemplate a plurality of springs as an integer of the claimed invention. If the object of the invention is construed to require the presence of the two identified advantages (within the invention and thus the monopoly), claims which, upon the counter-factual hypothesis, include a plurality of springs of alternate winding, travel beyond the disclosure. Inutility
Case: Olin Corporation v Super Cartridge Co. Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236
Outcome: cited
says that if the claims of the patent, properly construed, include within the monopoly a spring clutch comprised of a plurality of springs with reverse windings and tabs, such claims are not fairly based upon disclosures in the body of the specification. Uniline says that the invention as claimed by the terms of the monopoly might well be narrower than the disclosures contained in the specification but the claims cannot travel beyond the disclosures in the body of the specification. Uniline asks, consistent with Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 , whether there has been a real and reasonably clear disclosure in the body of the specification of that which is claimed or, put another way, whether the claims travel beyond the disclosures in the specification ( Olin Corporation v Super Cartridge Co. Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236). I have construed the claims to require a single unitary reverse wound spring as an essential integer. Those claims so construed are consistent with the disclosures in the specification. If, however, an assumption is made that the proper construction of the claims brings within the scope of the monopoly a plurality of springs of alternate winding, do the claims travel beyond the specification? The specification contemplates an invention answering the problems of the prior art by providing for a bi-directional spring clutch that confers the advantages of a single spring engaging a non-complex slot and key engagement mechanism or control means. The specification plainly discloses the use of multiple springs sequentially engaged in prior art spring clutches by a complex configuration of openings and barriers as an aspect of a prior art bi-directional clutch. If the counter-factual hypothesis is adopted that the claims include use of a plurality of springs, that hypothesis would seem to follow necessarily from an acceptance of the proposition that the object of the invention, properly construed, is to avoid a plurality of springs in combination with a complex configuration of openings and barriers. Therefore, on that hypothesis of construction, a plurality of springs engaging a slot and key control means (that is, a non-complex control means) is sufficiently disclosed by the specification by reason of the description of the object of the invention and the claims are thus, upon the counter-factual, fairly based. However, neither the object nor the claims contemplate a plurality of springs as an integer of the claimed invention. If the object of the invention is construed to require the presence of the two identified advantages (within the invention and thus the monopoly), claims which, upon the counter-factual hypothesis, include a plurality of springs of alternate winding, travel beyond the disclosure. Inutility
Case: Nicaro Holdings Pty Ltd &amp; Ors v Martin Engineering Co. &amp; Anor (1989) 91 ALR 513
Outcome: cited
question to be determined is whether US Patent 643 discloses to a skilled addressee with common general knowledge of the relevant art, each of the integers demanded by the claims defining the monopoly ( Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (supra) at [128] to [152]) and in that sense, the test of anticipation is the reverse infringement test. Would use of a spring clutch in accordance with the disclosures in US Patent 643 infringe claim 13? The skilled addressee must be able to read and understand the document as disclosing all of the integers of the monopoly in the combination without the exercise of "inventive ingenuity and the taking of an inventive step" ( Nicaro Holdings Pty Ltd &amp; Ors v Martin Engineering Co. &amp; Anor (1989) 91 ALR 513 , per Gummow J at 531 and 532) and without deducing an integer as part of a combination claim, by taking an obvious and non-inventive step to reach the combination. The disclosure in the document must be clear in the sense that the language of the document must provide unmistakable instruction to the addressee as to how the combination claimed is used, although the language of the disclosure need not be that of the claim. An anticipation of a claim is not determined merely by a textual comparison of the disclosure and the claim. The language of the disclosure might well be different to the language of the claim but the disclosure must teach the skilled addressee the invention (the combination of integers) and its use ( Pfizer (supra) at [311] to [324]; Evans Medical Ltd Patent [1998] RPC 517 at 576; Nicaro Holdings (supra))
Case: Evans Medical Ltd Patent [1998] RPC 517
Outcome: cited
question to be determined is whether US Patent 643 discloses to a skilled addressee with common general knowledge of the relevant art, each of the integers demanded by the claims defining the monopoly ( Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (supra) at [128] to [152]) and in that sense, the test of anticipation is the reverse infringement test. Would use of a spring clutch in accordance with the disclosures in US Patent 643 infringe claim 13? The skilled addressee must be able to read and understand the document as disclosing all of the integers of the monopoly in the combination without the exercise of "inventive ingenuity and the taking of an inventive step" ( Nicaro Holdings Pty Ltd &amp; Ors v Martin Engineering Co. &amp; Anor (1989) 91 ALR 513 , per Gummow J at 531 and 532) and without deducing an integer as part of a combination claim, by taking an obvious and non-inventive step to reach the combination. The disclosure in the document must be clear in the sense that the language of the document must provide unmistakable instruction to the addressee as to how the combination claimed is used, although the language of the disclosure need not be that of the claim. An anticipation of a claim is not determined merely by a textual comparison of the disclosure and the claim. The language of the disclosure might well be different to the language of the claim but the disclosure must teach the skilled addressee the invention (the combination of integers) and its use ( Pfizer (supra) at [311] to [324]; Evans Medical Ltd Patent [1998] RPC 517 at 576; Nicaro Holdings (supra))
Case: Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197
Outcome: cited
final ground of revocation involves a contention that SBriggs obtained the patent by fraud, false suggestion or misrepresentation ([11], s 138(3)(d) of the Patents Act ) and that the amendment to the patent ([12], [17], [18], [56] and [57]; s 138(3)(e) of the Patents Act ) was also obtained by fraud, false suggestion or misrepresentation. The question is whether the conduct of SBriggs said to bear the character required by the section, materially contributed to the Commissioner's decision to grant the patent or amend the claims. It is sufficient if the conduct is a material inducing factor which led to either of those outcomes ( Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197 ; Pfizer (supra); JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68). Sections 138(3)(d) and 138 (3)(e) do not require proof of a deliberate intention on the part of the applicant for the patent (or amendment) to deceive the Commissioner ( Pfizer ). If the representation is based upon a belief, it is relevant to consider whether the belief is false or not held reasonably ( NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542).
Case: JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 ; (2005) 67 IPR 68)
Outcome: cited
final ground of revocation involves a contention that SBriggs obtained the patent by fraud, false suggestion or misrepresentation ([11], s 138(3)(d) of the Patents Act ) and that the amendment to the patent ([12], [17], [18], [56] and [57]; s 138(3)(e) of the Patents Act ) was also obtained by fraud, false suggestion or misrepresentation. The question is whether the conduct of SBriggs said to bear the character required by the section, materially contributed to the Commissioner's decision to grant the patent or amend the claims. It is sufficient if the conduct is a material inducing factor which led to either of those outcomes ( Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197 ; Pfizer (supra); JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68). Sections 138(3)(d) and 138 (3)(e) do not require proof of a deliberate intention on the part of the applicant for the patent (or amendment) to deceive the Commissioner ( Pfizer ). If the representation is based upon a belief, it is relevant to consider whether the belief is false or not held reasonably ( NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542).