Case: Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90 ; (2005) 222 ALR 155 , (2005) 65 IPR 86 , (2005) AIPC 92-098
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 Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (No 2) [2006] FCA 1787 ; (2006) 71 IPR 46 at [62] [64] (pp 61 62), Young J distilled from a number of authorities a set of principles which his Honour held should ordinarily guide the construction of patents. The observations which his Honour made in that case are reminiscent of the statements made by the Full Court in Jupiters [2005] FCAFC 90 ; 222 ALR 155 , 65 IPR 86 , AIPC 92-098 and need not be set out in full here. However, I am content to adopt and apply what his Honour said, which, to some extent, helpfully adds to the statements of principle made by the Full Court in Jupiters [2005] FCAFC 90 ; 222 ALR 155 , 65 IPR 86 , AIPC 92-098.