Case: Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479
Outcome: cited
The question of infringement is prefaced by a proper understanding of what is described in the body of the specification and a proper construction of the claims: see Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 486 per Gummow J. 54 In Sartas No 1 30 IPR at 485-486, Gummow J set out the following propositions: The construction of the patent plainly is a matter of primary importance in the litigation. In Glaverbel SA v British Coal Corp [1994] RPC 443 at 485-486, Mummery J set out a number of what his Lordship said were uncontroversial propositions as to construction. Some of these are certainly applicable here, as being in accordance with the development of the law in Australia. From what was said by his Lordship useful guidance, in particular, is to be derived from the following propositions. Some of them were applied in rulings on evidence in the course of the trial. They are: (1) It is for the court, not for any witness, however expert, to decide the question of construction in accordance with the meaning of the language used. Evidence can be given by experts to enlighten the judge on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning. ( Cf Agfa-Gevaert Ltd v Collector of Customs (1994) 124 ALR 645.) (2) The specification should be construed without reference to the prior documents relied on as a ground for invalidity with a view to avoiding the effect of the prior documents. A fortiori, documents subsequent to the complete specification are inadmissible in aid of its construction. (3) ... it is not permissible to construe the claims by reference to the subjective thoughts, intentions, purposes and opinions of the patentee or his witnesses or by reference to his actions before or after the grant of the patent. (4) In reading the specification as a whole the different functions of the claim and the rest of the specification should be observed. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent: and "what is not claimed is disclaimed". The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not permissible to restrict, expand or amend the clear language of a claim by reference to a limitation or gloss in the language used in the earlier part of the specification, but not repeated in the claim itself. It is legitimate , however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of the technical terms and resolve ambiguities in the construction of the claims . The passage which I have emphasised is better understood by reference to the remarks of Taylor J in Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 at 97 (affd [1956] HCA 32 ; 95 CLR 213 (PC)): Plain language must be given its plain meaning, and clear words in a claim must not be tortured into an unnatural meaning by importing passages from the body of the specification: see Lord Russell's speech in Electrical and Musical Industries Ltd v Lissen Ltd (1939) 56 RPC at 41, line 34). The claims must also be construed without an eye on the alleged infringer's acts. (So said Greene LJ in RCA Photophone Ltd v Gaumont British Picture Corp (1936) 53 RPC at 202, line 16). On the other hand, it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work this is an application of the old doctrine ut res magis valeat quam pereat and is illustrated in Nobel's Case (1894) 11 RPC at 524; and, where the language of a claim is obscure or doubtful, the doubt may sometimes be resolved by referring to words in the body of the document to explain it. This is known as the dictionary principle: see Lord Haldane's speech in British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1921) 39 RPC at 67, line 44). See also Melbourne v Terry Fluid Controls Pty Ltd (1994) AIPC 91-058 at 38,214; CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 417 at 424.