Case: Hill v Evans (1862) 1A IPR 1
Outcome: cited
parties' written submissions referred to numerous authorities on the construction of patents, and, in particular, on the construction of patent claims. I need not refer to more than the following: The construction of a specification is a question of law and belongs to the Court: Hill v Evans (1862) 1A IPR 1 ( Hill v Evans ) at 3; The Court must construe the specification as it would be understood by the notional skilled addressee as at the relevant date: Hill v Evans at 3-4; D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ( D&eacute;cor ) at 400; Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 ; (2000) 49 IPR 331 ( Flexible Steel Lacing ) at [81]; Evidence from a skilled addressee in the field of the invention as to how he or she would have understood the specification at the relevant date is relevant evidence for the purposes of s 55(1) of the Evidence Act 1995 (Cth) (Evidence Act): EI Dupont De Nemours &amp; Co v Imperial Chemicals Industries plc [2002] FCA 230 ; (2002) 54 IPR 304 at 320-322; Flexible Steel Lacing at [81]; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 at [21]; Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 at [49] ; The claims must be construed in the context of the specification as a whole, and the rest of the specification may explain the background to the claims, assist in ascertaining the meaning of technical terms, or aid in the resolving of ambiguities in the construction of the claims: Clorox at [16]; Sachtler GmbH &amp; Co KG v RE Miller Pty Ltd [2005] FCA 788 ; (2005) 65 IPR 605 ( Sachtler ) at [42]; A patent specification must be given a purposive rather than a purely literal construction, and must be construed in a practical commonsense manner avoiding a too technical or narrow construction in favour of a construction under which the invention will work, as against one according to which it may not work: Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56; Pfizer Overseas Pharmaceuticals v Ely Lilly &amp; Co [2005] FCAFC 224 ; (2005) 225 ALR 416 ( Pfizer v Eli Lilly ) at [249]-[250]; The hypothetical addressee of the patent is the non-inventive person skilled in the art before the priority date, and the words used in the specification and the claims are to be given the meanings that that skilled addressee would give them, both in the light of his or her own general knowledge and what is disclosed in the body of the specification: Clorox at [20]; D&eacute;cor at 391; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 ; (2005) 216 ALR 41 at [170] . Professors Banwell and Davies on the meaning that the Patent claims would convey to the hypothetical skilled chemist at the priority date In my opinion, it is clear that the earlier disclosure must be "enabling": see for example, Hill v Evans at 8 ("the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful"); Flour Oxidising Co Ltd v Carr &amp; Co Ltd (1908) 25 RPC 428 at 457 per Parker J ("clear and unmistakable directions so to use [the earlier apparatus]"); Acme Bedstead Co Ltd v Newlands Bros Ltd [1937] HCA 63 ; (1937) 58 CLR 689 at 707 per Dixon J; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 260-262 per Stephen and Mason JJ; Nicaro Holdings Pty Ltd v Marlin Engineering Co (1990) 91 ALR 513 at 531-532 per Gummow J (the supposed anticipation must not require of the skilled but non-inventive addressee "the exercise of any inventive ingenuity and the taking of any inventive step"); Bristol-Myers Squibb Co v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 at [67] per Black CJ and Lehane J ("must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention"); Imperial Chemical Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2005) 213 ALR 399 at [61] ff per Crennan J; Pfizer v Eli Lilly at [313]-[324] per French and Lindgren JJ.