Case: Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183
Outcome: applied
A patent specification should be given a purposive rather than a purely literal construction: Catnic Components Ltd v Hill &amp; Smith Ltd [1982] RPC 183 (' Catnic ') at 242-243; D&eacute;cor at 400; Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 (' Improver '); Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561; Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388; Beltreco at [81]; Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd (2004) 64 IPR 444 (' Kirin-Amgen '); Sachtler at [43]-[67]. It is inappropriate, however, to approach construction of the specification with a view to being 'fair' to the patentee; Kirin-Amgen at [33]; Sachtler at [60]. The fact that the monopoly is granted in consideration for the disclosure of the invention to the general knowledge base of society must be recognised: Beltreco at [70]. Indeed, the principles governing a definition of a monopoly operating over the public at large require a description of the claims that 'is not reasonably capable of misunderstanding': Martin at 59. The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell &amp; Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720. 20 The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 (' Populin ') at 476-477; Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 260; D&eacute;cor at 397; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583; Beltreco at [81]; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at [24] ; Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at [113]; Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 496; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 (' NV Philips ') at 531; Catnic at 225; Wheatley (Davina) v Drillsafe Ltd [2001] RPC 7 at 141 142. Thus, the words used in a specification are to be given the meaning that the hypothetical addressee would attach to them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: D&eacute;cor at 391; Photocure at [170]. 25 A feature of a claim is considered essential if the hypothetical reader (that is, a reader skilled in the art before the priority date) would have understood from the language used in the claim, in the context of the specification as a whole, that the patentee intended that strict compliance was an essential requirement of the invention: Catnic at 243; D&eacute;cor at 400; Populin at 476; Beltreco at [81]. 55 Mr Hess for Clorox submitted that the use of the word, 'straight' in this context referred to the visual approximation of straight. While Mr Caine submitted on behalf of the respondents that 'straight' was used in its geometric sense, he accepted that the term would encompass joinder involving a slight degree of curvature. In this sense, Mr Caine seemed to be accepting and adopting a purposive construction similar to that applied by Lord Diplock in Catnic in relation to the term 'vertical'. On one level at least the dispute seemed to be about just how much deviation from geometric precision was consistent with the description, 'straight'. This aspect of the debate seems to be what is behind the characterisation of the straight sides requirement as an intermediate term; see [26]-[28] above. 56 As noted above, the Patent is addressed to the hypothetical non-inventive person skilled in the art before the priority date. A patent is a public instrument designed to disclose the invention. As such, the term should be given a construction that is consistent with this role. The relevant claims require that the front and rear panels be joined along three straight sides. The claims do not require that these panels be joined along lines that appear to be straight or that the join is displayed as straight. In my view, in this context 'straight' must be construed to require that the joins, when the nominal bag is in the laid-flat form, are straight in the geometric sense but not so as to restrict the term to absolute or perfect geometric precision. It might, in my view, extend to encompass joinder along sides that display a slight or modest curvature. Ultimately, however, it is not necessary for me to be more precise on this point as, for reasons explained below, I have formed the view that the sides of the Hercules Bag are distinctly curved and do not fall within any possible meaning of straight as used in the Patent specification. 57 Section 13 of the Act relevantly provides that a patentee has the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention. The term 'exploit' is relevantly defined in Schedule 1 of the Act 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) ...'