Case: Sachtler GMBH &amp; Co KG v RE Miller Pty Ltd (2005) 221 ALR 373
Outcome: approved
The parties are not in dispute as to the applicable principles which have been the subject of frequent discussion in the decisions of this Court: see, for instance, Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 (' Beltreco '); PhotoCure ASA v Queen's University at Kingston (2005) 64 IPR 314 (' Photocure '); Sachtler GMBH &amp; Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 (' Sachtler '). While it may be useful for me to set out some of the relevant principles I shall do so only briefly. 18 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. 28 I do not accept the applicant's attempt to introduce the concept of an 'intermediate' feature. Either the feature is necessary for an article to infringe the Patent or it is not. Mr Hess' submissions qualifying his concession go to the proper construction of the relevant claims (and in particular the meaning of 'straight' in this context) rather than to whether this requirement is essential. The construction of the requirement found in the specifications that these sides be 'straight' is a separate question and is discussed below. In my view the requirement that the front and rear panels be joined along three straight sides is an essential integer of the relevant claims and the Hercules Bag must possess this element in order for infringement to be demonstrated. On this issue I respectfully agree with Bennett J in Sachtler at [55] where her Honour said: 'To the extent that recent judgments of this court have suggested that there may be infringement by taking what is determined to be the substantial idea disclosed by the specification but not the essential integers of the claim, I must respectfully disagree.'