Case: Welch Perrin &amp; Co Pty Ltd v Worrel [1961] HCA 91 ; (1961) 106 CLR 588
Outcome: applied
the present case, there is no dispute amongst the parties as to the principles of construction to be applied to the Patent. All parties referred me to the joint judgment of the Full Court in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90 ; (2005) 222 ALR 155 , (2005) 65 IPR 86 , (2005) AIPC 92-098 at [67] . Reliance was also placed by some of the respondents upon the statements made at [68] in the same case. Those paragraphs are in the following terms: There is no real dispute between the parties as to the principles of construction to be applied in this matter although there is some difference in emphasis. It suffices for present purposes to refer to the following: (i) the proper construction of a specification is a matter of law: D&eacute;cor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; (ii) a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 ; [2000] FCA 890 at [81] ( Flexible Steel Lacing ); and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 ; 177 ALR 460 ; 50 IPR 513 ; [2001] HCA 8 at [24] ; (iii) the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: D&eacute;cor Corporation Pty Ltd at 391; (iv) while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin &amp; Co Pty Ltd v Worrel [1961] HCA 91 ; (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1 ; (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric &amp; Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224 5 ; (1938) 56 RPC 23 at 39; (v) experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Lt d [1994] FCA 1529 ; (1994) 30 IPR 479 at 485 6 ( Sartas No 1 Pty Ltd ); the court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time ( Kimberley-Clark v Arico at [24]); and (vi) it is for the court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd at 485 6. We may add that the area of invention with which this proceeding is concerned is a particularly narrow one. It is one in which business rivals are striving to invent around the patented inventions of others and within narrow regulatory limits. In such a context it is, in our view, important to recognise that claims made for an invention may need to be formulated narrowly to avoid invalidity. While accepting the primacy of purposive construction in interpreting patents, such a construction may well provide little by way of illumination where, as here, the inventive context is a cramped one. It is not appropriate to take a claim carefully drawn to avoid invalidity and then permit a wider "purposive" construction of it for infringement purposes: Grove Hill Pty Ltd v Great Western Corp Pty Ltd (2002) 55 IPR 257 ; [2002] FCAFC 183 at [311] . In Welch Perrin &amp; Co Pty Ltd v Worrel [1961] HCA 91 ; (1961) 106 CLR 588 , a Full Court of the High Court (Dixon CJ, Kitto and Windeyer JJ), said (at 609): Most of the argument before us centred upon the construction of the specification and, as in every patent case, it is necessary to determine from it what exactly is the invention it describes and for which a monopoly is claimed, before proceeding to consider objections to the validity of particular claims: Electrical and Musical Industries Ltd. v. Lissen Ltd [(1938) 56 RPC 23 , at p 39]. At 610, the Court said: If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, that, of course, is an end of the matter. But this objection is not established by reading the specification in the abstract. It must be construed in the light of the common knowledge in the art before the priority date. The general principles governing the construction of specifications are well known, and no lengthy reference to them is necessary. It is, however, fitting that we remind ourselves of the criterion to be applied when it is said that a specification is ambiguous. For, as the Chief Justice pointed out in Martin v. Scribal [(1954) [1954] HCA 48 ; 92 CLR 17 , at p 59], referring to Lord Parker's remarks in National Colour Kinematograph Co. Ltd. v. Bioschemes Ltd [(1915) 32 RPC 256] , we are not construing a written instrument operating inter partes, but a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood. Nevertheless, it is to be remembered that any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed (see Kauzal v. Lee [(1936) [1936] HCA 39 ; 58 CLR 670 , at p 685]). The specification must be read as a whole. But it is a whole made up of several parts, and those parts have different functions. Courts have often insisted that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Similarly, if a claim be clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document. The Court then moved to consider in some detail the patent in dispute in that case. After setting out the objects of that patent, the Court said (at 612): At this point in a modern specification one might expect to find a general description of what the inventor asserts his invention consists of, commonly called a "consistory clause". This, however, is not an essential part of the body of a specification. It is not required by the Act. Its purpose may be quite well met by the claims themselves: United Shoe Machinery Corporation's Application [(1939) 57 RPC 71]. Indeed, the usual practice in England is now to use in the consistory clause the wording of the broadest of the claims: see Mr. Blanco White's book, Patents for Inventions 2nd ed. (1955) p. 34n. The present Australian Act expressly requires the claim or claims to define the invention: s. 40. In a patent for a combination, such as this is, the most important function of the body of the specification is to show what are the mechanical means which, operating together, produce the result claimed; and how they so operate.