Case: Sachtler GmbH &amp; Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605
Outcome: cited
Court might be aided in answering that question by evidence given by experts. Plainly enough, evidence can be given by experts of the meaning those skilled in the art relevant to the field of the invention would give to technical terms, phrases and concepts accepted within the relevant discipline. Where the specification addresses and the claims contain, technical terms, the Court must have evidence before it of the technical meaning so as to understand the meaning a person familiar with the state of the art at the priority date would attribute to those terms. A proper understanding of how a relevantly skilled reader would understand such terms enables the Court to construe the claims in the context of the specification and attribute meaning to the claims in isolating the essential integers. In undertaking that exercise, the Court will determine what weight ought to be attributed to particular expert evidence. The construction of the patent is a matter entirely for the Court aided by evidence of the understanding of the skilled reader. The proper construction of the patent is not determined by findings preferring one expert's view of the construction of the patent, over another. The patent will be construed according to the ordinary meaning to be attributed to the language of the document informed by the Court's understanding of technical terms through evidence reflecting the understanding of a person skilled in the relevant art (as to these principles generally, see Sachtler GMBH &amp; Co. v R E Miller [2005] FCA 788 ; (2005) 65 IPR 605 per Bennett J and particularly those authorities assembled at [20], [21] and [22]). Uniline called evidence from an expert, Dr Duncan Gilmore. Dr Gilmore holds the degrees of Bachelor of Engineering, Master of Engineering Science and a Doctor of Philosophy. Dr Gilmore is a Fellow of the Institution of Engineers Australia and the Society of Automotive Engineers Australasia and a member of other professional bodies in the engineering field. Dr Gilmore has undertaken design work in relation to "hand winders" for a participant in the blinds industry and has undertaken work for Uniline. Dr Gilmore has provided a number of affidavits with reports annexed. Dr Gilmore's evidence provides an analysis and explanation of the spring clutch assembly described in the patent in suit. Dr Gilmore describes the spring, the assembly of the components, the general utility of the assembly and the functional operation of the clutch. Dr Gilmore considers in detail claim 13 of the patent in suit and at page 12 of his report dated 11 February 2008, Dr Gilmore sets out his preferred interpretation of claim 13. Dr Gilmore also expresses views about the features of assembly of Uniline's spring clutch, its functionality and whether the Uniline spring clutch embodies each of the integers falling within claim 13 of the patent in suit. Apart from the question of construction of the patent in suit and matters going to functionality of each assembly, Dr Gilmore gives evidence as to the features of the spring clutch assembly described in US Patent 643 and expresses an opinion as to whether the disclosures in that patent anticipate essential features of the patent in suit. The 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. In that sense, the Court does not first construe the claims without reference to the specification and then determine whether ambiguity exists ( Sachtler ). The document is read in its entirety and clear meaning is to be given to the clear words of a claim. Although the Court seeks to construe the language of the claims taking account of the skilled reader's (e.g. a person skilled in the relevant art) practical and commonsense understanding of terms and particular language, clear language ought to be given its natural and apparent meaning and not read down as though the evidence of the skilled reader imported a qualification upon a claim inconsistent with that meaning. No doubt evidence of particular applied terms of art in any given field or discipline may make the construction of the language of a claim using those terms a difficult question of balance between the natural expression of the language of the claims and the conditioning influence of terms of art. Adopting 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