14 July 2011

Still A Wrap! Kimberly-Clark Fails to Show Infringement on Appeal

Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd [2011] FCAFC 86 (12 July 2011)
Appeal from: Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd [2010] FCA 1318

Claim construction – function of consistory clauses – whether claims limited to two separate sheets which have been joined together – effect of statement of ‘spirit and scope’ of invention

Infringement – whether product made from single sheet that is folded over infringes patent

A full bench of the Federal Court of Australia, comprising Justice Emmett, Justice Greenwood and Justice Nicholas, has unanimously upheld the first-instance decision of Justice Stone.

In two sets of concurring reasons, one by Justice Emmett, and one jointly authored by Justices Greenwood and Nicholas, the Full Court has confirmed that Kimberly-Clark’s claims (in three patents related as ‘grandparent’, ‘parent’ and ‘child’), which all recited, in some form, both ‘an inner wrap sheet’ and ‘an outer wrap sheet’, are limited to products comprising two separate sheets.  A single sheet which has been folded over to provide two ‘layers’ is therefore not within the scope of the claims.  This being the configuration of Multigate’s product, there was no infringement found.

We find the reasons of Greenwood and Nicholas JJ most interesting, largely due to their discussion of the role of consistory clauses in the specification.  Also of some interest is their Honours’ brief discussion of a ‘spirit and scope’ passage appearing in the Kimberly-Clark patent specifications.


As stated in the reasons of Greenwood and Nicholas JJ (at [46-7]):

Patent specifications often include a general description or summary of the invention which may include a consistory clause. A consistory clause is in the nature of a general description of an invention which is often expressed in terms which mirror the broadest of the claims …. Such clauses are not compulsory but are routinely included by those responsible for drafting patent specifications often with a view to providing fair basis for the broadest claim. Whether or not a consistory clause does so will depend upon whether there are other matters disclosed in the body of the specification which show that the invention is narrower than that described in the consistory clause ….

The part of a patent specification which is put forward by the patentee as a general description or summary of the invention may have a significant role to play in the construction of a claim which is open to different interpretations. This is because the general description or summary of the invention will often describe the invention by reference to features that the skilled addressee would understand to be common to all possible embodiments of the invention. (Citations omitted.)

The significance of this in the present case is that all three Kimberly-Clark patents contain such consistory clauses, and all, in their Honours’ view, have a bearing on the construction of the terms ‘inner wrap sheet’ and ‘outer wrap sheet’

Thus, in the ‘grandparent’ specification, ‘the consistory clause, and other passages appearing in the summary of the invention, refer to “an inner wrap sheet” and “an outer wrap sheet” which may be made of different materials which have different properties in which case they can, and should be, “visually distinguishable as separate sheets”.  This is significant in that it cannot be suggested that these words describe characteristics of preferred embodiments only.’ (At [67].)

Similarly, in the ‘parent’ specification, the consistory clause ‘describes a method of providing a sterilization wrap formed from two substantially flat joined sheets which comprise an inner wrap sheet and an outer wrap sheet joined such that the two sheets are visually distinguishable as separate sheets.  It is once again significant that this language is not being used to describe a preferred embodiment.  Rather, it reflects the broadest description of the invention which, as is customary with a consistory clause, is carried through into the broadest of the claims.’ (At [70].)

Finally, in the ‘child’ specification, a consistory clause ‘refers to “bonding or joining two separate sheets of sterilization wrap” in a manner which makes the wrapping and unwrapping process easier and less time consuming.  Importantly, “each of the individual sheets” can be made from different materials having different properties.  The ability to use sheets made from different materials having different properties is clearly held out as an advantage of the invention. This ability is not merely a feature of a preferred embodiment but a key characteristic of the invention as it is most broadly described in the body of the specification.’

Ultimately, these considerations overrode Kimberly-Clark’s arguments that corresponding terms appearing in the claims of the respective patents could be construed to encompass a single sheet that is folded over to provide two layers, equivalent to the use of two separate sheets.


In support of its contention that the claims should be interpreted broadly, Kimberly-Clark also pointed to the following passage, at the final paragraph in the body of the specification (see at [73]):

Having thus described the invention in detail, it should be apparent that various modifications and changes can be made without departing from the spirit and scope of the present invention. For example, a wide variety of individual sterilization wraps have been described herein. Thus, a wide variety of combinations of inner and outer wraps are possible including combinations of both disposable and reusable sterile wrap sheets. The inner and outer wraps may be made from the same or different basis weight materials to engineer specific properties into each of the wraps. In addition, a wide variety of bonding techniques were also disclosed which may be used alone or in combination with each other to impart varying bond patterns to the sterilization wrap system of the present invention. Consequently, these and other modifications are contemplated to be within the spirit and scope of the following claims.

Many of our readers will no doubt be aware that such statements are considered objectionable in many jurisdictions, and patent examiners may require their removal on the grounds that they may render the scope of the claims themselves unclear.

While not precisely expressing this view, Greenwood and Nicholas JJ found that a statement regarding the ‘spirit and scope’ of an invention should not be regarded as affecting in any way the otherwise clear scope of the claims (at [75]):

Statements as to the “spirit and scope” of the invention are often found in the bodies of patent specifications. They were characterised by one learned author as devices aimed at overcoming what he perceived at the time of writing to be the judicial tendency towards literal interpretation which instead created uncertainty and added nothing to the true construction of the claims: see Sir Arthur Dean, “The Claiming Clauses of Patent Specifications” (1949) Res Judicatae 144 at 148. In any event, it is now well established that a statement of this kind does not make inessential what would otherwise be an essential requirement of a claim….


In the final reckoning, Kimberly-Clark’s arguments that the claims should be broadly construed to encompass not only separate wrap sheets, but also a single sheet folded over to form two layers, were not accepted by Greenwood and Nicholas JJ because this interpretation was simply not supported by the language chosen for the claims, read in light of the specification as a whole.  As their Honours pointed out (at [88-9]):

…Kimberly-Clark emphasised in its submissions that the fact that the inventions the subject of the patents in suit were directed to problems encountered by hospital staff when double wrapping articles for sterilization using two separate sheets of sterilization wrap did not mean that the claims might not be read as extending to the use of a single sheet of sterilization wrap which was folded over.  That is certainly true. However, it is not the description of the problem so much as the language of the claims themselves that is most significant to our interpretation of them. In our view each of the relevant claims, read in the context of the specification in which it appears, is limited to arrangements involving the use of two sheets which have been joined together. Whether or not a valid claim that did not include such a limitation might have been included in any of the patents in suit is not a relevant consideration.

Similarly, whether or not any of the claims were intended by Kimberly-Clark to be interpreted as encompassing the use of a single sheet of sterilization wrap folded over to provide inner and outer layers is irrelevant to the question of construction which we have to decide. It is conceivable that the invention has been defined as it has to avoid any suggestion that hospital staff who may have used a single sheet which was folded over to double wrap surgical supplies might have anticipated one or more of the relevant claims. We raise this not because it is suggested that this was Kimberly-Clark’s intention or that this actually occurred but to illustrate the point made [in the authorities] to which we previously referred.

Notably, Justice Emmett, in reasons based on both similar and complementary considerations, makes a similar statement with regard to Kimberly-Clark’s arguments (at [25]), and reaches a concurring conclusion (at [32]).


This decision appears unsurprising in light of the established principles of claim construction, and four judges of the Federal Court have now all arrived at exactly the same conclusion.

If the case serves as a reminder of anything, it is that patent claims should always be drafted with possible alternative implementations of the inventive concept in mind. 

Sometimes, of course, the claims cannot be broadened to encompass alternatives without also falling foul of prior art.  In this case, Multigate did, in fact, allege that the claims would be invalid for lack of novelty (and lack of fair basis) if the court accepted the construction for which Kimberly-Clark contended.  However, since the court did not do so, these allegations were not revisited on appeal.


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