29 March 2015

Minding Your (Claim) Language: What ‘Means For’ Means

Swear BubbleA common idiom employed in patent claims is to define an element of the invention in terms of its function.  For example, a claim might recite an apparatus including a part ‘A’, and part ‘B’, and ‘means for fastening the part A to the part B’. 

The purpose – under Australian law – of this so-called ‘means-plus-function’ language is to define the invention as broadly as possible.  The patent specification might describe a number of different mechanisms for joining the two parts, e.g. nails, screws, and rivets. 

But there may be other ways to achieve the necessary connection, some of which the inventor has failed to think of, some of which might be unknown to the inventor, and some of which might not even have been developed at the time of filing the application.  By using broad, functional, language to define the fastening mechanism, the inventor gains the benefit of capturing all of these alternatives within the scope of the claim.

However, as a Full Bench of the Federal Court of Australian recently reminded everyone, there is a price to be paid, and a risk that is taken, through such broad claiming.  In Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6, the court confirmed that ‘[a] claim to an apparatus for a particular purpose is a claim to an apparatus that is suitable for that purpose …. To establish infringement of such a claim it is not necessary for the patentee to establish that the apparatus is intended to be used for that purpose. The patentee need only show that the apparatus is suitable for that purpose’ (emphasis added).

Of course, what is true when assessing infringement after the date of the patent is also true when assessing novelty and inventive step based on information published before the priority date of the patent.  And, unfortunately for the patentee, Garford, the Full Court disagreed with the primary judge, and found that the prior art disclosed an element of Garford’s patent claims expressed in means-plus-function form, namely ‘a feed means [suitable] for supplying a multi-strand cable from a rotatable supply reel’ (at [124]).

There is nothing new in this, from a legal perspective.  It has long been established in Australian law that, when used in a patent claim, the word ‘for’ means only ‘suitable for’ and not, for example, specifically ‘adapted’ or ‘configured’ for the function.  It is, however, a handy reminder that claiming broadly is a double-edged sword.

But this decision also got me thinking about the implications for applicants operating in multiple jurisdictions, because the way in which means-plus-function language is treated is not the same everywhere.  The scope of claims using this format may be quite different, for example, in the US when compared with Australia, which has implications for both infringement and validity.  And while means-plus-function claiming is unobjectionable in itself in Australia, a European examiner might refuse to allow a claim in this form if it is able to be expressed in more concrete terms.

22 March 2015

When Does ‘Novel’ Not Mean ‘New’?

News News NewsOne of the fundamental requirements for an invention to be patentable is that it must be novel.  The word derives ultimately from the Latin novus or novellus, meaning ‘new’.  It has other counterparts in modern Romance languages, including Spanish (novillo), French (nouveau), Italian (novello) and Romanian (nuia).  In English, the word tends to connote something a little more nuanced than merely ‘new’ – perhaps a note of surprise, unexpectedness or particular originality.  It also has the alternative meaning of a long-form work of fiction, contracted from the Italian novella storia.

And then there is the meaning of ‘novel’ within patent law, where it means ‘new’ in the relatively narrow sense of not having been previously publicly known or discovered in essentially the same form subsequently claimed as an invention.

The key word here, however, is ‘publicly’.  Patents can be – and have been – validly granted for inventions that had been known and used by one or more other people prior to the later inventor filing a patent application.  Basically, if an invention exists, but has not been made available to the public, then it remains available for someone else to independently invent and, if they so wish, to patent.  This could happen because the invention has been locked away in the original inventor’s basement and never disclosed or, in a commercial setting, because the company responsible for its original development made a deliberate decision to retain the invention as a trade secret.

So far this may seem quite sensible.  However, consider the following scenario.  A first person imports a product from overseas, and offers it for sale in Australia.  Samples of the product are placed on display in a showroom, where they are seen by many potential buyers, however none are actually sold.  The product has an internal mechanism that cannot be seen during normal use (or display), but which can be readily accessed for inspection or servicing, should anyone wish, or need, to do so.  The product is subsequently withdrawn from sale.

Later on, a second person develops, and files a patent application for, an equivalent product having an internal mechanism with essentially the same features as the earlier unsuccessful imported product.  A patent is granted.

The question, then: is this granted patent valid, or does it lack novelty in light of the earlier imports?  More specifically, is it enough that the imported products were on public display, such that anyone who wished to could have inspected and disassembled them (either before or after purchase), or is it necessary to show that some member of the public actually did inspect and disassemble a sample in order to show that the later patented invention is not novel?

The answer, according to a recent ruling of a Full Bench of the Federal Court of Australia, is that it is necessary to establish, by evidence, that some person was ‘in fact interested in the internal componentry’ or ‘was in fact free to examine the product as he or she pleased’, or ‘actually had the opportunity to ascertain the internal workings’ of the product: Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31.

15 March 2015

Compliance with 3G Standards ‘Prima Facie’ Evidence of Infringement

3gpp LogoA recent procedural decision of the Federal Court of Australia (Vringo Infrastructure Inc v ZTE (Australia) Pty Ltd (No 4) [2015] FCA 177) has revealed new details of the case against Chinese telecoms equipment manufacturer ZTE by Vringo Infrastructure, Inc.

Vringo is a US-based non-practising entity (NPE) which commenced patent infringement proceedings against the Australian subsidiary of the Chinese company ZTE Corporation back in June 2013.  Although Vringo has been called a ‘patent troll’ by some media outlets (e.g. smartcompany.com.au and itwire.com), I have previously disputed that description in the case of this litigation by Vringo.

In the most recent development, the Federal Court has granted an application by Vringo allowing it to have the Chinese parent company joined to the proceedings in Australia.  I believe that Vringo’s motivation for this latest move is because it wishes to obtain further technical details regarding the ZTE products it is alleging to infringe its patents.  By adding the Chinese company – which manufactures the products – as a respondent, Vringo will be able to ask the court to order discovery by ZTE Corporation of the information Vringo needs in order to prove infringement.

Other interesting details to emerge from the recent decision are:
  1. that the accused products include a USB device used to access a 4G cellular mobile data network supplied by ZTE to Telstra;
  2. the accused products further include an item of network equipment identified as the ZXWN MSCS Mobile Switching Center Server; and
  3. the Vringo patents are said to be essential to implementation of standardised mobile data networking features including HSPA+ in 3G networks, and the Radio Link Protocol (RPL) which is a feature of 2G networks that was carried over into 3G.
The decision is also interesting in showing the relatively low bar set for establishing a prima facie case of infringement at an early stage of patent proceedings, i.e. prior to the availability of detailed evidence.  Vringo was able to meet its burden by relying upon analysis prepared by a patent attorney (i.e. without the evidence of an established technical expert), and based only upon a comparison between the patent claims and the technical standards documents (i.e. without reference to the operation of the actual products said to infringe the patents).

08 March 2015

‘Springboard Injunctions’ Considered by Federal Court of Australia

SpringboardYou may have read the title of this article and wondered, ‘what, exactly, is a “springboard injunction”?’  If so, I am sure you are not alone.  I encountered the term for the first time myself this past week, when I read a recent decision of the Federal Court of Australia, Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (No 2) [2015] FCA 140.

The background to this decision, very broadly speaking, is as follows.  Streetworx is the proprietor of two innovation patents relating to street lighting assemblies (also known as ‘luminaires’).  In a judgment handed down on 18 December 2014 (Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366), Justice Beach found that Artcraft had infringed the Streetworx patents by the supply of its own luminaires, which it had manufactured in China, and imported for sale in Australia. 

Artcraft has pre-existing contracts to provide luminaires to the Monash City Council and Moonee Valley City Council (which cover significant areas of Melbourne’s South East and North West, respectively).

After the December judgment was handed down, Artcraft determined that it was able to modify its existing stocks of luminaires such that they would no longer infringe the Streetworx patents, and could therefore be used to meet its obligations to supply luminaires under the council contracts.

Not surprisingly – considering its success in establishing the validity and infringement of its patents – Streetworx was not impressed by Artcraft’s ‘solution’ to its infringement problem.  Among other relief, Streetworx therefore sought an injunction restraining Artcraft from supplying its modified, non-infringing, luminaires to the Monash and Moonee Valley Councils.  It also sought orders requiring Artcraft to hand over all infringing luminaires in its possession for destruction by Streetworx.  The court has now denied both of these requests.

The so-called ‘springboard injunction’ is the requested order restraining Artcraft from supplying non-infringing products, on the basis that they have been produced by way of the importation and use of infringing products.  Acquisition of the infringing products may thus be regarded as a ‘springboard’ from which the non-infringing products are made and supplied.

01 March 2015

Patentee Punished for Failing to Heed Attorney’s Recommendation

SadnessA judge of the Federal Court of Australia has denied a request by patentee Les Laboratoires Servier (‘Servier’) to amend a patent in order to avoid cancellation for failure to disclose the best method of performing the claimed invention solely because it opted not to follow a recommendation made by its Australian patent attorneys during examination of the original application back in 2004: Apotex Pty Ltd v Les Laboratoires Servier (No 4) [2015] FCA 104.

Just be absolutely clear here, the court found that the requested amendment was allowable in principle (i.e. was not precluded by any provision of the Patents Act 1990), and that in all other respects Servier had acted promptly and appropriately, such that the court would otherwise have exercised its discretion to allow the amendment.  The one and only reason given for refusing the amendment request was that the patent attorneys had suggested that a similar amendment might be made prior to grant of the patent, but that the responsible person within Servier was of the opinion that the disclosure within the patent specification was adequate, and that the amendment was therefore not necessary.  The court bluntly describes this as ‘an error on her part’ (at [180]).

I find this decision frankly extraordinary, and I fully expect that it will be appealed.  The patent in question covers the compound perindopril arginine, which is the active ingredient in the brand name drug COVERSYL, which is used to treat hypertension (i.e. high blood pressure).  This patent, and foreign counterparts, have been extensively litigated in Australia and overseas.  It is clear that there is a great deal at stake in this case, and Servier is unlikely to abandon its efforts to save a patent that has been found, in all other respects, to be valid.

I should say, at this point, that the patent attorney firm in question here was Watermark, where I work.  However, Watermark no longer acts for Servier in relation to this matter, and nothing that I shall say in this article is based on anything other than publicly available information.  Opinions, as always, are my own, and should not be taken as representing the views of Watermark, its Principals, management, other employees or clients (past or present).