mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Flexible Steel Lacing Company v Beltrico Ltd (2000) 49 IPR 331
Outcome: cited
The gravamen of the submission by Austal is that the language of claim 1 is so obscure, ambiguous and uncertain in important respects that it cannot give rise to an infringement. The submission relies on the principle adopted by Hely J in Flexible Steel Lacing Company v Beltrico Ltd (2000) 49 IPR 331 at 348-349, that a claim may be bad for uncertainty notwithstanding that the Court could find its true meaning in the circumstances, if it is so obscure that its proper construction must remain a matter of doubt. The difficulty in the application of the principle is in defining the level of clarity required in the context of a particular claim. It is not sufficient to show merely that a claim might have been better drafted or that it is capable of more than one construction. 26 The imprecise language which Austal says makes claim 1 invalid for uncertainty resides particularly in the drafter's use of the undefined expressions 'substantial portion' and 'narrow waisted' in integer 1.6. The vagueness which arises from these expressions is said to be compounded because they are interrelated features relating to the bulbous underwater part of the hull shape. Austal notes that the expression 'substantial portion' was first introduced into the claim by an amendment as a consequence of opposition. 27 Mr Soars who gave evidence for the applicant is a qualified naval architect. He graduated with a Bachelor of Science in engineering and is a member of the Royal Institution of Naval Architects. He has had considerable experience in the design of large twin hull vessels. His expertise and experience is not in issue. Between 1980 and the year 2000 he was involved in the design of over 120 high speed light craft ranging from 16 metres to 100 metres. He was the Senior Naval Architect at Incat Designs between 1983 and 1985, a role which involved computer programming, structural design, design technology developments, supervision and project management for high speed catamarans.
Case: Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461
Outcome: cited
Where the language of the specification is unambiguous, a court should not readily depart from the wording of the claim by reading words into it or using stray phrases in the body of the specification in order to narrow or widen the boundaries of the monopoly fixed by the plain words of a claim. As Lord Russell of Killowen stated in Electric and Musical Industries Ltd v Lissen (1938) 56 RPC 23 at 39: 'The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.' See also Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46 at [20] (per Lord Hoffmann); Kimberly-Clark Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at 12; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 at 479.
Case: Kimberly-Clark Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1
Outcome: considered
There is no significant dispute as to the relevant legal principles of interpretation. It is clear that the claims must not be read in the abstract, but rather in their context, including existing published knowledge. What is being construed is a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood: Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 476. In Kimberly-Clark Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at 16, the majority joint judgment noted that it is necessary to construe the complete specification in the light of the common general knowledge and the art before the priority date, allowing the Court to place itself in the position of a person reading the specification who is acquainted with the surrounding circumstances as to the state of that art and its manufacture at that time. 20 Where the language of the specification is unambiguous, a court should not readily depart from the wording of the claim by reading words into it or using stray phrases in the body of the specification in order to narrow or widen the boundaries of the monopoly fixed by the plain words of a claim. As Lord Russell of Killowen stated in Electric and Musical Industries Ltd v Lissen (1938) 56 RPC 23 at 39: 'The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.' See also Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46 at [20] (per Lord Hoffmann); Kimberly-Clark Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at 12; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 at 479.
Case: Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46
Outcome: cited
Where the language of the specification is unambiguous, a court should not readily depart from the wording of the claim by reading words into it or using stray phrases in the body of the specification in order to narrow or widen the boundaries of the monopoly fixed by the plain words of a claim. As Lord Russell of Killowen stated in Electric and Musical Industries Ltd v Lissen (1938) 56 RPC 23 at 39: 'The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.' See also Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46 at [20] (per Lord Hoffmann); Kimberly-Clark Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at 12; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 at 479.
Case: Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 12
Outcome: considered
In Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 134, the Full Court stated that it is not inadmissible to use an imprecise word in a claim where, in an appropriate context, it conveys the necessary meaning. The Court there referred to the use in patent claims of imprecise expressions such as 'relatively small', 'a minor amount', 'substantial effect' and 'substantially above' as terminology which does not necessarily invalidate a patent. Relative expressions which require the exercise of judgment can be used but they must be understood in a practical commonsense manner. Moreover, as Dixon CJ cautioned in Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 at 60, a patentee does not have to express his claim with a precision that implies an arbitrary restriction on the inherent variability of a feature which is part of the invention.
Case: Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: cited
The priority date of the claims is to be determined according to ss 43 and 114 (1) of the Act and regs 3.12 and 3.14 of the Patents Regulations 1991 (Cth) ("Regulations"). The effect of these provisions is that the priority date of the current patent is the filing date in Australia, namely 28 January 1992, unless the Regulations so provide. However, if the claims of the patent are fairly based on matter which is disclosed in the original application document in Sweden, then the priority date will be the date of filing in Sweden, namely 30 January 1991. In other words, if the present claims cover matters which were in substance really and reasonably clearly disclosed, so that the invention as now claimed is broadly described in the body of the original specification considered as a whole, then the priority date will be taken as 30 January 1991: see Pfizer Inc v Commissioner for Patents [2005] FCA 137 ; (2005) 141 FCR 413 at 420; Rhem Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95; Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 at 300-301. 105 As to the question of fair basis, because I consider the patent as granted is fairly based on the disclosure in the original application in Sweden, and taking into account the similarity of that patent specification and the present patent specification, I consider there is fair basis for the claims in this case. The claims do not travel beyond the disclosure. The consistory clauses at pages 3 to 3A reflect the language of the claims and provide a fair basis for them: see Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; [2004] 217 CLR 274 at 293-294.
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21
Outcome: followed
The principles relating to 'inventive step' and 'obviousness' were recently considered by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21. In that case, their Honours referred to ss 7(2) and (3) the Act , which describe the statutory test as to what constitutes an 'inventive step'. Their Honours noted at [122] and [150] that the standard by which obviousness is to be determined is by reference to the understanding of a person skilled in the relevant art, who, at the priority relevant date, would possess common general knowledge in that art, and who would have had regard to any additional information referred to in s 7(3): see also Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 at 287-289; Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414 (per Burchett J). The Court clarified at [152] that s 7(3) has the effect of enlarging the prior art base to include relevant prior disclosures beyond that information which is shown to constitute common general knowledge in that art. 105 As to the question of fair basis, because I consider the patent as granted is fairly based on the disclosure in the original application in Sweden, and taking into account the similarity of that patent specification and the present patent specification, I consider there is fair basis for the claims in this case. The claims do not travel beyond the disclosure. The consistory clauses at pages 3 to 3A reflect the language of the claims and provide a fair basis for them: see Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; [2004] 217 CLR 274 at 293-294.
Case: Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17
Outcome: considered
In Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 134, the Full Court stated that it is not inadmissible to use an imprecise word in a claim where, in an appropriate context, it conveys the necessary meaning. The Court there referred to the use in patent claims of imprecise expressions such as 'relatively small', 'a minor amount', 'substantial effect' and 'substantially above' as terminology which does not necessarily invalidate a patent. Relative expressions which require the exercise of judgment can be used but they must be understood in a practical commonsense manner. Moreover, as Dixon CJ cautioned in Martin v Scribal Pty Ltd [1954] HCA 48 ; (1954) 92 CLR 17 at 60, a patentee does not have to express his claim with a precision that implies an arbitrary restriction on the inherent variability of a feature which is part of the invention.
Case: Melbourne v Terry Fluid Controls Pty Ltd (1993) 26 IPR 292
Outcome: considered
In Melbourne v Terry Fluid Controls Pty Ltd (1993) 26 IPR 292, Jenkinson J decided that the words 'substantial portion' used in a claim to describe a sleeve of a mechanical assembly did not apply to a situation where the portion was less than 50% of the total length. In that case it was 48%. In reaching this conclusion his Honour had regard to context of the complete specification and to the expert evidence concerning the functions which the sleeve was intended to perform in operation of the device. 24 The above interpretation principles are relevant in the present case to a consideration of the particular expressions in the patent specification which Austal submits display uncertainty and lack of clarity. The relevant expressions are found in integers 1.5 and 1.6 and, to a lesser extent, in claim 7.
Case: Minnesota Mining &amp; Manufacturing Company v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253
Outcome: considered
Patent language which uses terms expressing approximation or requiring assessment according to circumstances does necessarily not mean that the impugned claim lacks clarity. Exact expressions are not always essential. An example of this dictum is found in Minnesota Mining &amp; Manufacturing Company v Beiersdorf (Australia) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 at 274, where Aickin J said that lack of precise definition in claims is not fatal to validity so long as they provide a workable standard suitable to the intended use. In that case, his Honour did not consider the word 'inextensible' to be imprecise because on its correct construction in the circumstances his Honour considered that it meant 'relatively inextensible' or 'not capable of extending appreciably'. As can been seen from his Honour's use of language in deciding the meaning of the term, his Honour did not shrink from using other words of general connotation.
Case: Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236
Outcome: cited
In order to succeed on the infringement claim, Stena must show that Austal has taken each and every one of the essential integers of the patentee's claim; that is, Stena must show that each of the Austal 94, Austal 196 and Austal 285 vessels possesses all of the essential features of the relevant claims: see Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 246 (per Gibbs J).
Case: Pfizer Inc v Commissioner for Patents [2005] FCA 137 ; (2005) 141 FCR 413
Outcome: cited
The priority date of the claims is to be determined according to ss 43 and 114 (1) of the Act and regs 3.12 and 3.14 of the Patents Regulations 1991 (Cth) ("Regulations"). The effect of these provisions is that the priority date of the current patent is the filing date in Australia, namely 28 January 1992, unless the Regulations so provide. However, if the claims of the patent are fairly based on matter which is disclosed in the original application document in Sweden, then the priority date will be the date of filing in Sweden, namely 30 January 1991. In other words, if the present claims cover matters which were in substance really and reasonably clearly disclosed, so that the invention as now claimed is broadly described in the body of the original specification considered as a whole, then the priority date will be taken as 30 January 1991: see Pfizer Inc v Commissioner for Patents [2005] FCA 137 ; (2005) 141 FCR 413 at 420; Rhem Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95; Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 at 300-301.
Case: Populin v HB Nominees Pty Ltd (1982) 41 ALR 471
Outcome: cited
There is no significant dispute as to the relevant legal principles of interpretation. It is clear that the claims must not be read in the abstract, but rather in their context, including existing published knowledge. What is being construed is a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood: Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 476. In Kimberly-Clark Pty Ltd v Arico Trading International Pty Limited [2001] HCA 8 ; (2001) 207 CLR 1 at 16, the majority joint judgment noted that it is necessary to construe the complete specification in the light of the common general knowledge and the art before the priority date, allowing the Court to place itself in the position of a person reading the specification who is acquainted with the surrounding circumstances as to the state of that art and its manufacture at that time. 53 In order to succeed on the infringement claim, Stena must show that Austal has taken each and every one of the essential integers of the patentee's claim; that is, Stena must show that each of the Austal 94, Austal 196 and Austal 285 vessels possesses all of the essential features of the relevant claims: see Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475; Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23 ; (1977) 180 CLR 236 at 246 (per Gibbs J).
Case: Rhem Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79
Outcome: cited
The priority date of the claims is to be determined according to ss 43 and 114 (1) of the Act and regs 3.12 and 3.14 of the Patents Regulations 1991 (Cth) ("Regulations"). The effect of these provisions is that the priority date of the current patent is the filing date in Australia, namely 28 January 1992, unless the Regulations so provide. However, if the claims of the patent are fairly based on matter which is disclosed in the original application document in Sweden, then the priority date will be the date of filing in Sweden, namely 30 January 1991. In other words, if the present claims cover matters which were in substance really and reasonably clearly disclosed, so that the invention as now claimed is broadly described in the body of the original specification considered as a whole, then the priority date will be taken as 30 January 1991: see Pfizer Inc v Commissioner for Patents [2005] FCA 137 ; (2005) 141 FCR 413 at 420; Rhem Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95; Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58 ; (2004) 217 CLR 274 at 300-301.
Case: Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405
Outcome: cited
The principles relating to 'inventive step' and 'obviousness' were recently considered by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21. In that case, their Honours referred to ss 7(2) and (3) the Act , which describe the statutory test as to what constitutes an 'inventive step'. Their Honours noted at [122] and [150] that the standard by which obviousness is to be determined is by reference to the understanding of a person skilled in the relevant art, who, at the priority relevant date, would possess common general knowledge in that art, and who would have had regard to any additional information referred to in s 7(3): see also Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 at 287-289; Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414 (per Burchett J). The Court clarified at [152] that s 7(3) has the effect of enlarging the prior art base to include relevant prior disclosures beyond that information which is shown to constitute common general knowledge in that art.
Case: Ryan v ETSA (No 1) (1987) 47 SASR 220
Outcome: referred to
Harris Scarfe did not (and subject to the outcome of these proceedings, does not) consider that either the television commercial or the catalogue breached ss 52 or 53(e) of the TP Act. Consequently, neither the development of the Advertising Rule Book, nor its contents can be taken as an admission. It is a sensible process to undertake, after an occurrence about which the ACCC is concerned, and to adapt to its concerns: see eg Ryan v ETSA (No 1) (1987) 47 SASR 220. Nevertheless, it is significant in my view, on the issue of the appropriateness of any orders, if a contravention or contraventions are established, that Harris Scarfe has sought to reinforce the processes which it had in place, and which it had reason to think would protect it from contravention of the TP Act, by the introduction of the Advertising Rule Book and the training associated with it. There is evidence of that training having now been undertaken. Harris Scarfe has also offered, on an open basis, to enter into yet a further s 87B undertaking in a form proposed. That form is responsive to the nature of the contraventions currently asserted in these proceedings. Further, Harris Scarfe has adopted a cooperative approach to the ACCC's inquiries at all times and endeavoured to address those concerns without the need for litigation.
Case: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191
Outcome: discussed
proceeding does not attempt to break new ground in the application of ss 52 and 53(e) of the TP Act. The applicable principles are now well established: see eg Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 ( Parkdale ); Taco Company of Australia Inc v Taco Bell Pty Ltd [1982] FCA 136 ; (1982) 42 ALR 177 ( Taco Bell ). Conduct is misleading or deceptive if it induces or is capable of inducing error (to adopt the expression in Harris Scarfe's written submissions). That must of course be understood as applying not in an absolute sense, but in relation to consumers or to a relevant class of consumers. Evidence of members of the public having been misled is not conclusive: Parkdale at 198-9. Of course, the converse is also not necessarily correct. That is, the absence of evidence that members of the public have been misled does not necessarily negate the fact of a contravention having occurred. It has also been held that the words "likely to mislead or deceive" do not add much to the section: Parkdale at 198. In the submissions, nothing was made of those particular words. It is sufficient if there is a real chance that the conduct will mislead or deceive: Global Sportsman Pty Ltd v Mirror Newspapers Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 87. Importantly, whether conduct is misleading or deceptive or is likely to mislead or deceive must be determined in context. In Parkdale it was said at 199: It seems clear enough that consideration must be given to the class of consumers likely to be affected by the conduct. Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by (sic) regarded as contemplating the effect of the conduct on reasonable members of the class. The heavy burdens which the section creates cannot have been intended to be imposed for the benefit of persons who fail to take reasonable care of their own interests. What is reasonable will or (sic) course depend on all the circumstances. The test is an objective one for the Court upon the whole of the evidence. Not every member of the public needs to have been misled or capable of having been misled for the conduct to be misleading or deceptive. The test is applied to the public, or a relevant section of the public, to whom the representation is made or in relation to whom the conduct is engaged in, including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations. See Taco Bell at 202. That passage was referred to with approval in Parkdale at 199 but, as the passage from Parkdale quoted above shows, it is to be measured against reasonable members of the class.