Case: Electric &amp; Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23
Outcome: followed
It is well established that the claims contained in the specification set out the legal limits of the monopoly. Yet, when construing the claims and determining the nature and extent of this monopoly it is necessary to consider the context in which the claims are made. This requires a consideration of the specification as a whole even if there is no apparent ambiguity in the claim; Minnesota Mining &amp; Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 (' Minnesota Mining ') at 267-272; D&eacute;cor at 410-411; Beltreco at [75]-[78]. The specification is made up of several parts which have different functions: Welch Perrin &amp; Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 (' Welch Perrin ') at 610; D&eacute;cor at 391, 398; Beltreco at [73]. Nevertheless, reference to it as a whole may explain or elucidate the background to the claims, assist in ascertaining the meaning of a technical term or in resolving ambiguities in the construction of claims: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 (' Martin ') per Taylor J at 97; Welch Perrin at 610-611; Electric &amp; Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 (' Electric &amp; Musical Industries ') at 41-42, Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 (' Interlego ') at 478-479; D&eacute;cor at 400; Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 (' Sartas ') at 486; Beltreco at [75]. 17 It is important, however, that the focus of the inquiry remain on the claims under consideration. If claims are clear and unambiguous, they are not to be varied, qualified or made obscure by statements found in other parts of the patent: Welch Perrin at 610; Interlego at 478-479; Electric &amp; Musical Industries at 41; Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69; Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113; Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333; Beltreco at [74]. It is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of the claims by adding to those words a gloss drawn from other parts of the specification: Welch Perrin at 610; D&eacute;cor at 391, 398; Braas &amp; Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284; Beltreco at [74]. 19 As a general rule, the terms used in a specification should be accorded their ordinary English meaning. Put another way, the terms must be understood in a practical, commonsense manner: Electric &amp; Musical Industries at 41; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513; Interlego at 478; Minnesota Mining at 270; Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95; Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338. 22 Ultimately, however, the construction of the specification is for the court, not for the expert witness. Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corp [1994] RPC 443 at 486; Sartas at 485-486; Patent Gesellschaft at 455. Further, if the evidence before the court does not establish that a technical meaning is to be given to a term, it is to be given its ordinary meaning: Electric &amp; Musical Industries at 226; Minnesota Mining at 279; Patent Gesellschaft at 455; Photocure at [170].