Case: Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co. (2006) 68 IPR 1
Outcome: cited
principles to be applied in construing the claims have been reviewed extensively in a number of recent authorities ( Sachtler GmbH &amp; Co. KG v R E Miller Pty Ltd [2005] FCA 788 ; (2005) 221 ALR 373 ; (2005) 65 IPR 605 per Bennett J ( Sachtler ); Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 ; (2005) 224 ALR 168 ; (2006) 67 IPR 230 , per Wilcox, Branson and Bennett JJ; K D Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 ; (2007) 71 IPR 615 per Kiefel J; Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254 per Stone J; Nufarm Ltd v Jurox Pty Ltd [2008] FCA 178 ; (2008) 75 IPR 341 per Middleton J; Ranbaxy Australia Pty Ltd v Warner-Lambert Co. LLC (No. 2) [2006] FCA 1787 ; (2007) 71 IPR 46 per Young J; Pfizer Overseas Pharmaceuticals v Eli Lilly &amp; Co. (2006) 68 IPR 1 per French and Lindgren JJ and Crennan J agreeing). I have had particular regard to the decision of the Full Court in Pfizer , the statement of ten principles of construction identified by Sheppard J in D&eacute;cor Corporation Pty Ltd v Dart Industries Inc. (1988) 13 IPR 385 at 400, the judgment of the Full Court in Insta Image Pty Ltd v K D Kanopy Australasia Pty Ltd [2008] FCAFC 139 ; (2008) 78 IPR 20 at [82] , the judgment of the Full Court in Kinabalu Investments Pty Ltd v Barron &amp; Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] and the judgment of the Full Court in PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 at [26] to [29]. As Lindgren J observed in Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd [2005] FCA 1893 ; (2006) 67 IPR 576 at [41] , the Court is frequently called upon to refer to the principles which govern the construction of claims and "on each new occasion it seems that the same authorities plus the last preceding one are reviewed. And so the list lengthens." I propose to simply state the propositions to be applied derived from these authorities and some others in construing claim 13 of the patent in suit and any claim upon which it rests. The question to be determined is whether US Patent 643 discloses to a skilled addressee with common general knowledge of the relevant art, each of the integers demanded by the claims defining the monopoly ( Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (supra) at [128] to [152]) and in that sense, the test of anticipation is the reverse infringement test. Would use of a spring clutch in accordance with the disclosures in US Patent 643 infringe claim 13? The skilled addressee must be able to read and understand the document as disclosing all of the integers of the monopoly in the combination without the exercise of "inventive ingenuity and the taking of an inventive step" ( Nicaro Holdings Pty Ltd &amp; Ors v Martin Engineering Co. &amp; Anor (1989) 91 ALR 513 , per Gummow J at 531 and 532) and without deducing an integer as part of a combination claim, by taking an obvious and non-inventive step to reach the combination. The disclosure in the document must be clear in the sense that the language of the document must provide unmistakable instruction to the addressee as to how the combination claimed is used, although the language of the disclosure need not be that of the claim. An anticipation of a claim is not determined merely by a textual comparison of the disclosure and the claim. The language of the disclosure might well be different to the language of the claim but the disclosure must teach the skilled addressee the invention (the combination of integers) and its use ( Pfizer (supra) at [311] to [324]; Evans Medical Ltd Patent [1998] RPC 517 at 576; Nicaro Holdings (supra)) The final ground of revocation involves a contention that SBriggs obtained the patent by fraud, false suggestion or misrepresentation ([11], s 138(3)(d) of the Patents Act ) and that the amendment to the patent ([12], [17], [18], [56] and [57]; s 138(3)(e) of the Patents Act ) was also obtained by fraud, false suggestion or misrepresentation. The question is whether the conduct of SBriggs said to bear the character required by the section, materially contributed to the Commissioner's decision to grant the patent or amend the claims. It is sufficient if the conduct is a material inducing factor which led to either of those outcomes ( Prestige Group (Australia) Pty Ltd v Dart Industries Inc. (1990) 26 FCR 197 ; Pfizer (supra); JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68). Sections 138(3)(d) and 138 (3)(e) do not require proof of a deliberate intention on the part of the applicant for the patent (or amendment) to deceive the Commissioner ( Pfizer ). If the representation is based upon a belief, it is relevant to consider whether the belief is false or not held reasonably ( NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542).