Actions Trump Intentions in Determining Infringement of ‘Swiss’ Claims in Australia

In what might well be the final word on the scope and effect of so-called ‘Swiss type’ claims in Australia – at least for the foreseeable future – an enlarged panel of five judges of the Federal Court has clarified what is required for infringement of this form of claim: Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2020] FCAFC 116.  A Swiss type claim (the terminology used by the Court in this case, although they are also known as ‘Swiss-style’ or simply ‘Swiss’ claims) is generally of the form: ‘Use of [compound X] for the manufacture of a medicament for treatment of [condition Y].’  Such claims invoke a kind of legal fiction, in that according to the normal rules of interpretation the scope of the claim encompasses any and every method of making a medicament of any kind that includes the compound X as an active ingredient, subject only to this being suitable for treating the new condition.  Interpreted in this way, a Swiss type claim would never be valid in the usual case that medicines containing compound X already exist for the purpose of treating one or more different conditions.  We have collectively agreed, however, that as a matter of law a Swiss type claim is to be construed as if reciting the new therapeutic purpose (i.e. ‘treatment of condition Y’) imposes a distinct limitation on the scope of the claim sufficient to impart novelty to the invention.

In the Mylan case, a representative Swiss type claim – namely claim 1 of Australian patent no. 2006313711 – was:

Use of fenofibrate or a derivative thereof for the manufacture of a medicament for the prevention and/or treatment of retinopathy, in particular diabetic retinopathy.

A corresponding claim for a method of treatment is claim 7 of the same patent:

A method for the prevention and/or treatment of retinopathy, the method comprising administration of fenofibrate or a derivative thereof to a patient in need thereof.

While both types of claims are allowable in Australia (as discussed further below), a key distinction between them is the identity of a direct infringer.  A Swiss type claim is directed to the manufacture of a product, and thus may be directly infringed by the manufacturer – normally the party that a patentee would want to restrain.  Method of treatment claims, on the other hand, are directly infringed in the course of treatment, i.e. by a physician and/or patient, who are typically not the desired targets of infringement action.  A patentee must therefore generally rely on indirect or contributory infringement provisions in order to pursue a manufacturer or supplier on the basis of a method of treatment claim.

In this case, the Court found that both the Swiss type claims and the method of treatment claims were invalid for lack of novelty and/or inventive step in view of various prior art disclosures.  Thus there could be no infringement in any event.  However, the Court nonetheless considered important questions of the interpretation and requirements for infringement of Swiss type claims.  In particular, the Court determined that ‘infringement of a Swiss type claim is concerned with what the allegedly infringing manufacturer has done, not what it intended to do.’

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Tags: Claim construction, Infringement, Patent law, Pharmaceuticals

Australian Patent Law Contains, Includes, and Comprises Dangers for Foreign Applicants

It is the function of a patent claim to define the scope of the invention protected by the patent.  Infringement occurs when an accused system, article, or process is covered by the particular terminology used in a patent claim.  Many inventions are combinations, e.g. a system, article, or process made up of two or more elements, components, or steps that work together to provide some new and useful function or result.  Claims directed to such inventions must therefore recite the relevant combination.

A generic example of a combination claim is: ‘a widget including element A, element B, and element C.’  In this example, the word ‘including’ is a transitional term signifying that what follows is a list of elements, each of which must be present in a widget that falls within the scope of the claimed invention.

The choice of transitional terms in combination claims can be significant.  To illustrate, if I tell you that my breakfast this morning included coffee and toast, you would probably not assume that this was necessarily the entire content of my breakfast.  My statement would be true if I also had cereal and juice.  Similarly, if I were to add that my coffee contained milk, you might suppose that I could also have added sugar.  On the other hand, if I were to say that my breakfast consisted of coffee and toast, you would naturally understand me to be saying that this is all that I had for breakfast today.

But what if I were to tell you that my breakfast comprised coffee and toast?  If you are a patent attorney, and you know that I am also a patent attorney, then in all likelihood you would understand that I am not excluding the possibility that my breakfast included other elements.  If you are not a patent attorney, then you might think it odd that I would choose an uncommon and potentially confusing word like ‘comprised’, when I could just as easily have been clear and said ‘included’ or ‘consisted of’.

The fact is that in a number of major jurisdictions the transitional term ‘comprises’ (and variations, such as ‘comprising’) is essentially regarded as a ‘term of art’ in patent drafting.  The US Patent and Trade Marks Office Manual of Patent Examining Procedure, Section 2111.03, lists a number of rulings of the US Court of Appeals for the Federal Circuit (CAFC) to the effect that the term ‘comprising’ is ‘inclusive or open-ended and does not exclude additional, unrecited elements or method steps.’  In the 1997 case of Genentech, Inc. v Chiron Corp. 112 F.3d 495 the CAFC expressly stated that: ‘”Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.’  Similarly, the European Patent Office Guidelines for Examination, Part F, Chapter 4, Section 4.21, states that: ‘While in everyday language the word “comprise” may have both the meaning “include”, “contain” or “comprehend” and “consist of”, in drafting patent claims legal certainty normally requires it to be interpreted by the broader meaning “include”, “contain” or “comprehend”.’

Internationally, then, the settled expectation of many practitioners drafting patent specifications and claims is that the words ‘comprises’ and ‘comprising’ can safely be used to indicate that the elements or steps recited in a combination are not intended to be exhaustive.  Thus a claim defining ‘a widget comprising element A, element B, and element C’ will be infringed not only by an unauthorised widget consisting only of elements A, B, and C, but by widgets including these elements along with one or more additional elements that are not essential to the functioning of the claimed invention.

Those international practitioners may therefore be surprised to learn that ‘comprises’, and its variants, enjoy no such presumption of non-exhaustiveness in Australia, as a judge of the Federal Court of Australia recently reminded us in Nichia Corporation v Arrow Electronics Australia Pty Ltd (No 4) [2017] FCA 864.

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Tags: Australia, Claim construction, Infringement, Validity

Federal Appeals Court Considers ‘Omnibus Claims’

The word ‘omnibus’ derives from the Latin ‘omnis’, meaning ‘all’.  More particularly, the Latin ‘omnibus’ is the plural dative or ablative case of the noun (grammar nerds are getting excited right now), and may therefore be translated as ‘to, for, by, with or from everybody or everything’.  Appropriately, therefore, omnibus is the origin of the same English word referring to a collected edition of multiple works, such as novels.  And our modern word ‘bus’, describing a form of mass transit, is itself a contraction of the word ‘omnibus’, which was used back in the days when such things were still drawn by horses.

To put it bluntly, then, ‘omnibus’ is an old-fashioned word for a variety of old-fashioned things.

One of those things is a type of patent claim, intended to cover all forms of an invention disclosed in a patent application.  The exact form of an omnibus claim varies, but typically goes something like ‘a splendiferous widget substantially as described herein with reference to the accompanying drawings.’  You can see how the patentee of such a claim is trying to hedge her bets, by including the word ‘substantially’.  What even does that mean?  How ‘substantial’ is substantial enough?  How is someone to know whether or not they are infringing such a claim, assuming that they have not copied one of the described embodiments exactly?

It is for precisely this reason that omnibus claims have fallen out of fashion and favour over time.  In most jurisdictions they are no longer permitted (if they ever were), on the grounds that their scope is unclear.  In Australia, they have been banned in new applications as of 15 April 2013 by the Raising the Bar reforms, which added section 40(3A) to the Patents Act 1990, prescribing that a claim ‘must not rely on references to descriptions or drawings unless absolutely necessary to define the invention.’

However, patents and applications that were subject to examination under the former provisions may still validly contain omnibus claims, and so they will continue to be relevant in Australia until at least 2033.  It is therefore significant that a Full Bench of the Federal Court of Australia has recently had a rare opportunity to consider the scope of omnibus claims: GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90 (‘GSK’).

The court’s decision confirms that, in the majority of cases involving consistently-drafted patent specifications, an omnibus claim should be interpreted to have relatively narrow scope, being restricted by the essential features of the invention as described and defined elsewhere in the specification.

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Tags: Australia, Claim construction, Omnibus claims

New Patent Office Guidelines for Computer-Implemented Inventions: Would the CSIRO Wi-Fi Invention be Patentable?

On 1 February 2016, IP Australia updated the Australian Patent Office Manual of Practice and Procedure to clarify (their word, not mine) ‘examination practice regarding patentable subject matter in view of the Full Federal Court decision Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.’

Had the Full Court been clearer, perhaps IP Australia would have been in a better position to establish some form of coherent and objective approach to examination.  As it is, however, the ‘guidance’, which is principally to be found in Section 2.9.2.7 of the Manual, is little more than a laundry list of ‘principles’ to be considered when examining computer-implemented subject matter.  I do not think that this is very helpful, either for applicants and their representatives, or for the patent examiners who are supposed to follow the published practice.

The guidelines open with:

Under Australian law, there are no specific exclusions for software or methods that are implemented as computer software or a related product. However, they are only patentable if what is claimed “as a matter of substance” meets the requirements for a manner of manufacture and in particular is not a mere scheme, abstract idea or mere information.

This is an accurate statement of the approach taken by the courts in both the Research Affiliates (Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150) and RPL Central cases.  In neither case, however, did the court provide clear guidance as to how to determine, in any given case, the ‘substance’ of the invention.  This is extremely problematic, and can result in essentially arbitrary and subjective decision-making.  As the first point in the laundry list of principles correctly states:

Each case must be considered on its merits.

The next point goes on to explain – again, quite reasonably – that an ineligible invention cannot be made eligible for a patent merely because some clever patent attorney might have dressed up the claims to look superficially like the invention is not a mere scheme, or some other class of excluded subject matter:

In considering whether the substance of the claimed invention is a scheme, abstract idea or mere information, it is necessary to go beyond the form of words used. The alleged invention is to be understood in the context of the specification as a whole and the relevant common general knowledge.  For example, the substance of an alleged invention may be a scheme even if the claims literally define a physical product, e.g. a system or computer when programmed to carry out a scheme.

From here, however, the guidance becomes decidedly more difficult to apply consistently and objectively.

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Tags: Australia, Claim construction, Computer programs, Patent Office, Patentable subject matter

Can What You Say In Patent Examination Be Held Against You in Court?

Imagine that you have applied for a patent on an improved iron ore wagon.  During examination, you wanted to distinguish your invention from pre-existing ore wagons.  You therefore explained that your wagon has ‘an internal ridge’ that reinforces the side wall, and is ‘integrally formed within the side wall’, and you amended your claim to include this ‘integrally formed’ language.

Flash forward to a few years later, and you are in court arguing that one of your competitor’s iron ore wagons infringes your patent.  However, the competitor’s product has an internal ridge that is initially made separately from the side wall, and subsequently attached, e.g. by welding or riveting.  The court therefore has to decide whether this structure falls within the scope of the terminology ‘integrally formed within the side wall’.

This is, in a nutshell, the question that recently came before Justice Nicholas in the Federal Court of Australia (Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2015] FCA 1100).  Interestingly, it raises four separate issues:

1. whether the term ‘integrally formed’, in and of itself, excludes the two-step constructions;
2. whether the amendment of the claims to include the ‘integrally formed’ language during examination informs interpretation of the term;
3. whether the applicant’s accompanying explanation of the advantages of the claimed structure should be taken into account when interpreting ‘integrally formed’; and
4. whether the patentee is now barred (or, in legal parlance ‘estopped’) from making a different argument in court to the one it made during examination.

To put it another way: to what extent can what the applicant did and said during examination of the application be held against it in a court of law?

The short answer is ‘somewhat’, but to nowhere near the extent it would be in some other jurisdictions, and in particular the United States.  And – spoiler alert – no, ‘integrally formed’ does not include something made in two parts and then joined together!

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Tags: Claim construction, Estoppel, Examination

Patenting Swiss-Style, In Australia and the UK

Last week I wrote about the ways in which medical treatments – including pharmaceutical compounds and therapeutic methods – are protected using a variety of different forms of patent claim.  One of these is the so-called ‘Swiss-style’, ‘Swiss-type’, or simply ‘Swiss’ claim, which takes the form ‘[compound] for use in the manufacture of a medicament for treatment of [new condition].’  I explained that Swiss-type claims are treated as if they cover any and every method of making a medicament of any kind that includes the compound as an active ingredient, and with the intention of it being used to treat the new condition.

By sheer coincidence, on 29 June 2015 Justice Yates, in the Federal Court of Australia, handed down a ruling in Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 4) [2015] FCA 634, in which he has a great deal to say about Swiss-type claims.  Furthermore, the previous week the England and Wales Court of Appeal issued a decision in Actavis UK Ltd & Ors v Eli Lilly & Company [2015] EWCA Civ 555, which also involved Swiss-type claims.

It is interesting to compare the two decisions, particularly because, in my view, the UK court managed to completely undermine the European prohibition on patents for methods of medical treatment and must surely, therefore, be wrong!

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Tags: Claim construction, Patent law, Pharmaceuticals

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

A 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.

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Tags: Australia, Claim construction, Europe, US

‘Why Do I Need a Patent Attorney?’

‘I hesitate not to pronounce, that every man who is his own lawyer, has a fool for a client’ – an unknown lawyer, early 19^th century.

While the above is often regarded, cynically, as a self-serving proverb promulgated by the legal profession, for better or worse it is almost always true.  There may be no other profession for which lay people are more inclined to persuade themselves that they do not require the services of an expert with years of training and experience behind them.  After all, virtually nobody would dispute the same sentiment if the word ‘lawyer’ were replaced with ‘surgeon’, ‘engineer’, ‘architect’ or ‘pilot’!

And, although patent attorneys (in Australia, at least) are mostly not also lawyers, we are, quite rightly, generally regarded as providers of specialist legal services.  One consequence of this is that there are people out there who wish to avoid paying our fees, and have a go at representing themselves before the Patent Office, and even in the Federal Court.

One such person is Mr Svetko Lisica, who recently lost his appeal against the rejection of his patent application no. 2012200955, somewhat grandly entitled ‘Universal Intonation System For Music, The Absolute and The Beyond’: Lisica v Commissioner of Patents [2014] FCA 433.

Sadly, Mr Lisica had taken it upon himself to prepare and file his own provisional patent application (no. 2011903465), an international application under the Patent Cooperation Treaty (no. PCT/AU2011/000257), and the Australian patent application which eventually became the subject of the Federal Court appeal. 

I say ‘sadly’ because, although Mr Lisica avoided payment of any patent attorney fees, I estimate that the process he has been through has cost him at least A$8500-A$9000 in Patent Office and Court fees.  This does not take into account any incidental expenses he may have had, or the value of his time, energy and stress in taking on the system.  And he has nothing of any value to show for this exhausting experience.

To make matters worse, it seems possible that Mr Lisica might have had something potentially patentable.  While it is difficult to discern from his various patent specifications, which are largely couched in theoretical terms more arcane than those employed by most lawyers and patent attorneys, there are indications that his musical theories may have practical application in the form of new instruments and computer software for assisting in the creation of musical compositions.  There is, however, no sufficiently clear disclosure of any such practical, and potentially patentable, applications of the theoretical concepts.

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Tags: Appeal, Claim construction, Examination, Inventions, Patent Office, Patentable subject matter

When (and Where) is a Claim ‘Preamble’ Limiting?

A reader of this blog recently asked me about the ‘preamble’ to a patent claim, and in particular whether statements made in the preamble are limiting under Australian law, and whether the position is different under US law.  In other words, can a claim with the same wording nonetheless mean different things in different jurisdictions?

The preamble to a claim is the opening part which generally sets the context for the main features of the claimed invention.  These main features could be the interrelated components of a claim directed to some apparatus, or the series of steps making up a claimed method or process.

The reader in question specifically asked me about the CSIRO WLAN claim, which I analysed in detail about a year ago.  I am only going to talk about the preamble here, so if you are interested in the remainder of the claim you will have to go back and read the earlier article.  That claim opens as follows:

A method for transmitting data in a confined multipath transmission environment of radio frequencies, said data being provided by an input data channel coupled to transmission signal processing means in turn coupled to antenna means, said method comprising the steps of…

This tells us right away that the claim is directed to a method, and we therefore expect that it will define a sequence of steps which together make up the method.  Certainly those steps will be essential to the claimed invention unless there is some very clear indication to the contrary.

But does it make any difference to the scope of the claim that the method is said to be ‘for transmitting data in a confined multipath transmission environment of radio frequencies, said data being provided by an input data channel coupled to transmission signal processing means in turn coupled to antenna means’?  And is the answer to this question likely to depend upon the jurisdiction in which the claim is being interpreted?

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Tags: Australia, Claim construction, US

High Court Declines (Again) to Weigh In on Innovative Step

The High Court of Australia has turned down an opportunity to review the standard of ‘innovative step’ under the Patents Act 1990, effectively confirming once again that the Full Bench of the Federal Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 correctly decided the matter back in 2009.

This latest opportunity arose in relation to a dispute over mining processes, between SNF (Australia) Pty Ltd (‘SNF’) and Ciba Specialty Chemicals Water Treatments Limited (‘Ciba’).  Ciba is the owner of a number of innovation patents covering methods for processing waste products from mining, i.e. the so-called 'tailings', which generally comprise a slurry of particles (clay, sand, dirt, etc) suspended in water.  Ciba accused SNF of infringing its patents, and SNF in fact conceded that it had been using a process which fell within the scope of Ciba's claims, and thus would be liable for infringement, if the claims were valid.

Naturally, SNF contended that Ciba's patents claims were invalid for (among other grounds) lack of novelty, and lack.of innovative step.

I wrote about another aspect of the original decision in this case (the application of the indirect infringement provisions in section 117 of the Patents Act) back in July 2011.  The issues of novelty and innovative step, which appeared to have been decided in accordance with the established legal principles, did not seem very interesting at the time.

The Story In Brief

The primary judge found in favour of Ciba, i.e. that its claims were novel, and involved an innovative step.  SNF appealed this ruling to a Full Bench of the Federal Court, which handed down its decision upholding the original judgment in June last year (SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2012] FCAFC 95).  I did not report on that largely unremarkable decision at the time, however it has taken on new interest in view of the fact that SNF sought Special Leave to appeal to the High Court of Australia.

The Special Leave application was heard – and denied – on 15 March 2013.  SNF presented the High Court panel (comprising Chief Justice French and Justice Gageler) with an interesting proposition in relation to innovative step.  Specifically, counsel for SNF contended that if a point of difference between a claim of an innovation patent and the prior art could, in at least some circumstances, have a negative or disadvantageous effect, then this should mean that the claimed feature makes 'no substantial contribution to the working of the invention', and thus does not comprise an innovative step.

The High Court was profoundly uninterested in taking up this point.  Nor did it consider the other ground of appeal raised by SNF – regarding interpretation of the term ‘improved rigidification’ – to involve any legal principle worthy of its attention.  Indeed, the Court did not even need to hear from counsel for Ciba before refusing the application for Special Leave, with costs awarded against SNF.

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Tags: Appeal, Australia, Claim construction, Innovation patent, Novelty, Validity

How PatentlyApple Harms Patents – Including Apple’s

Up until now I have had an informal, unwritten policy of not critiquing other blogs.  After all, I know as well as anyone just how much hard work goes into maintaining a blog, coming up with ideas for articles, and finding the time and energy to actually write them.  Anybody who does that deserves a certain degree of respect, even if I happen to disagree with everything they say!  After all, everyone is entitled to their opinion.

However, there are opinions, and then there are facts.  And when a widely read blog consistently posts false or misleading information, there is absolutely no good reason not to call them on it.  This is particularly true when that misinformation has the potential to influence views in a matter of significant public interest, such as the debate over the merits (or otherwise) of patents for computer-implemented inventions (please note that I am deliberately avoiding the meaningless term ‘software patents’).

One blog with which I have a huge problem in this regard is PatentlyApple.  For those unfamiliar with the blog, it is an overtly partisan celebration of all things (allegedly and actually) innovative at Apple, Inc.  Occasionally, this involves spiteful attacks on all things (allegedly and actually) imitative at Apple’s competitors, such as Samsung and Microsoft.  However, it is not these matters of opinion or rhetoric with which I have a problem.

My big issue with PatentlyApple is the way in which it consistently misconstrues and misrepresents the content and scope of the patents and applications – of Apple and others – which it purports to explain.  The reason for this is simple – PatentlyApple is not written by a patent attorney.  The fact is that it takes many years of training and experience to interpret a patent specification, and particularly the claims, which are ultimately determinative when it comes to assessing what the patent covers.  And having typically spent a number of illustrated paragraphs purportedly explaining to a large audience what a patent application is all about, PatentlyApple’s disclaimer that it is necessary to read the ‘full text’ of the document to obtain complete details just does not cut it!

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Tags: Apple, Claim construction, Computer programs, Innovation, Microsoft, Patents and society, Samsung

Innovation Patents Reach Back in Time for Infringement

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019 (18 September 2012)

Innovation patents – divisional applications – relevant dates for assessment of infringement – claim construction – omnibus claims

According to a recent decision of the Federal Court of Australia, innovation patents may, in some common circumstances, be infringed before they have even been filed!

In a third decision in the ongoing Britax v Infa-Secure saga (see earlier articles Federal Court Conducts Markman-Style Hearing in Hot Tub and Shocking – Judge Compels Experts Actually to Assist the Court!), Justice Middleton has considered the dates from which infringement of divisional innovation patents can be considered.  This is an important issue, because a patentee may be entitled to claim compensation for the commercial activities of an infringer going back to this date.

While it is well-established that the earliest possible date of infringement of a standard patent is the day on which it was published, Justice Middleton has found that an innovation patent may be infringed from its effective filing date.  In the case of an innovation patent which has been divided from a pending standard patent application, the relevant date is the date of filing of the original patent application, even though this may have occurred years earlier than the filing of the divisional innovation patent application itself.

For this early infringement date to apply, it does not appear to be relevant whether the claims of the innovation patent were present, or clearly foreshadowed, in the original patent specification.  According to Justice Middleton’s reasons, any valid innovation patent claims (i.e. novel claims which are adequately supported by the original disclosure, as well as satisfying the low ‘innovative step’ threshold) can potentially be enforced back to the original application date.

The court also considered the interpretation of so-called ‘omnibus claims’, i.e. claims which define an invention by reference to all or part of a specification, or by reference to examples or drawings that have been included in the specification in order to illustrate the invention.  The provisions of the Raising the Bar Act 2012, which will come into effect of 15 April 2013, will largely prohibit the use of such claims, although they will continue to exist legitimately for the lifetime of many existing patents and applications.

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Tags: Australia, Claim construction, Infringement, Innovation patent, Omnibus claims

Shocking – Judge Compels Experts Actually to Assist the Court!

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 2] [2012] FCA 1018 (17 September 2012)

Infringement – expert evidence following Markman-style claim construction hearing – whether appropriate to appoint assessor or referee

Earlier this year Justice Middleton, in the Federal Court of Australia, broke new ground in this country by holding a hearing, and issuing a decision, purely on the issue of claim construction as a preliminary matter in patent infringement proceedings (see Federal Court Conducts Markman-Style Hearing in Hot Tub). 

This week, Justice Middleton has issued two further decisions in the patent infringement case brought by Britax Childcare Pty Ltd (‘Britax’) against Infa-Secure Pty Ltd (‘Infa-secure’).  In the first of these decisions, he has rejected efforts by Infa-Secure to have the court order that infringement issues be referred to an independent third party for assessment.  Instead, the two experts will be returning to the so-called ‘hot tub’ to provide joint evidence to the court, based upon a claim construction with which neither one of them wholly agrees.

If all goes to schedule with this plan, the parties will be back in court for three days in December, for a further hearing to decide whether or not Infa-Secure infringes Britax’s patents.

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Tags: Claim construction, Evidence, Federal Court practice, Infringement

Extended Monopoly on ARAVA (Leflunomide) Upheld on Appeal

Appeal Decision:	Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102 (18 July 2012)
Appeal from:	Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846
See also:	Australian Federal Court ‘Evergreens’ ARAVA for Sanofi-Aventis

Claim construction – second medical use claims directed to treating specific ailments – Novelty – application of the ‘reverse infringement test’ where effect may be ‘inherent’ in practising the prior art – Infringement – infringement by supply of products

A Full Bench of the Federal Court of Australia has unanimously upheld a July 2011 decision of Justice Jagot barring the introduction of generic alternatives to Sanofi-Aventis’ ARAVA and ARABLOC products.  At first instance, the court found that a ‘second medical use’ patent directed to the use of the active ingredient leflunomide for the treatment of psoriasis effectively extends an existing monopoly on marketing of the drug for treatment of rheumatoid and psoriatic arthritis until 2014.  Sanofi’s original patent on leflunomide expired in 2004.

The three main patent issues in the case are:

1. the correct interpretation of a ‘second medical use’ claim;
2. whether a prior art teaching to administer a compound to a patient anticipates a claimed effect of the compound on the patient; and
3. whether, and in what circumstances, marketing a compound for one medical purpose constitutes an indirect infringement of a patent directed to an alternative use of the compound.

A fourth issue – whether the patent claims were directed to suitable subject matter, i.e. a ‘manner of manufacture’ – was readily dismissed at first instance and on appeal.

The three appeal judges unanimously overturned Justice Jagot’s claim construction finding (quite rightly so, in our opinion).  However, the court’s original finding of novelty was upheld (Chief Justice Keane adopting different reasoning from Justices Bennett and Yates), as was a finding that supply of products containing leflunomide as an active ingredient would be an infringement under section 117 of the Patents Act 1990.

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Tags: Australia, Claim construction, Indirect infringement, Infringement, Novelty, Pharmaceuticals

Federal Court Conducts Markman-Style Hearing in Hot Tub

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [2012] FCA 467 (9 May 2012)

Claim construction – role of expert evidence – practice and procedure – concurrent testimony

Justice Middleton has issued a 413 paragraph (104 pages, not including Annexures) decision in a patent case involving child safety seats.  Not that there is anything unusual about lengthy decisions issuing from the Federal Court of Australia – this one is a minnow compared to the 1619 paragraphs penned by Justice French in the case of University of Western Australia v Gray (No 20) [2008] FCA 498.  Furthermore, the actual findings in this case will most likely be of interest only to those actually involved in the proceedings.

However, two things are notable about Justice Middleton’s decision.  Firstly, it addresses only one preliminary issue, namely ‘claim construction’, i.e. the question of how the patent claims asserted by the patent owner Britax Childcare should properly be interpreted.  Secondly, the hearing involved a rare instance of ‘hot-tubbing’ expert witnesses – which sounds entirely inappropriate, but actually is not, although it is a practice not without its critics.

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Tags: Claim construction, Evidence, Federal Court practice

An Analysis of the CSIRO WLAN Patent

In all of the debate over the past week around the CSIRO wireless LAN patent, there has been very little information – and much misinformation – about what the patent actually covers.

Various vague assertions have been bandied about, such as that the patent describes nothing much more than a few techniques that were well-known at the time (the priority date of the patent is 27 November 1992).

And some commenters on the various articles have complained that none of the authors have actually gone into any technical detail about the patent.

There is a good reason for this – it is not simple to explain in detail the technical and legal scope of a patent.  While patent attorneys actually do this all the time, in order to advise clients on various matters, we tend to charge significant sums for the service, because it takes great expertise and many hours to do it right.

The part of a patent that actually defines the extent of the monopoly is the section at the end containing a series of numbered statements, called ‘claims’.  If you do something which is actually within the entirety of the language of at least one claim, then you infringe the patent.  However, if you do something which is described in the patent specification, but which is not the entire subject matter of a claim, then you do not infringe.  Ideally, this would all be very clear-cut.  In practice, with the best will (and the best patent drafting) in the world, language is an imprecise and sometimes ambiguous tool!

Most patents describe many things that are not new.  However, granted patents (hopefully) describe and claim some combination of things which is new and inventive.

So in this article we will – at no charge, with no obligation, and with the strong disclaimer that this is not legal advice and cannot be relied upon for any purpose – take a look at what the CSIRO WLAN patent is actually all about.

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Tags: Australia, Claim construction, Infringement, Patent law, Patent litigation, US

Australian Appeals Court Further Clarifies ‘Purposive Construction’

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2011] FCAFC 121 (15 September 2011)
Appeal from: Australian Mud Company Pty Ltd v Coretell Pty Ltd [2010] FCA 1169
See also: Innovation Patent Claims Once Again Construed Narrowly

Claim construction –  whether ‘device’ encompasses apparatus in two parts

In an appeal from a decision of Justice Barker in the Federal Court of Australia, a full bench of the court comprising Justices Bennett, Gilmour and Yates has considered the interpretation of the term ‘device’ appearing in the claims of Australian innovation patent no. 2006100113, owned by the Australian Mud Company Pty Ltd.  In particular, the court was required to consider whether the term necessarily referred to a single unitary article, or would also encompass an apparatus having equivalent functionality yet implemented in two or more parts.

The court considered the application of the principle of ‘purposive construction’, derived originally from the words of Lord Diplock in the UK case of Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.  Catnic was decided under the 1977 UK Patents Act which, considering the intended harmonisation with other member states of the European Patent Convention (EPC), requires a different – and more ‘expansive’ – approach to claim construction than was historically the case.  Nonetheless, Catnic (and its UK progeny Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181) have previously received some degree of approval in the Australian courts.

This decision confirms, however, that the application of ‘purposive construction’ in Australia does not permit any deviation in scope from the patent monopoly defined by the patentee in the specific terminology adopted in the claims, and in particular that it is not permissible to import broader ‘inventive ideas’ from the specification.

Rather, it remains the case in Australia that the words chosen by the patentee to define the monopoly are determinative of the scope of the patent, even though those words must be interpreted with an eye to the purpose to which they have been applied in the specification and claims.  Terms should not be interpreted in an excessively pedantic or literal manner, but nor may they be ‘stretched beyond their textual limits.’

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Tags: Appeal, Australia, Claim construction

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

See also: That’s a Wrap! Kimberly-Clark Patent Valid, but Not Infringed

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.

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Tags: Appeal, Australia, Claim construction, Infringement

Dispute Over Claim Construction Fails to Limit Discovery

Siemens Water Technologies Corp v GE Betz Pty Ltd [2011] FCA 641 (2 June 2011)

Practice and Procedure – whether extent of discovery may be limited by reference to the parties’ contended claim construction

As many readers – and particularly those from common law jurisdictions – will be aware, ‘discovery’ (or ‘disclosure’) is the process by which the parties to a legal dispute are able to obtain relevant evidence from each other prior to the commencement of the main trial.

Discovery can be vital in patent infringement proceedings, because sometimes it is not possible to demonstrate that a particular accused product or process infringes a patent without access to technical information known only to the alleged infringer.  Often the patentee will seek discovery of a wide range of material, while the accused infringer will resist extensive discovery on the basis that much of what is being sought will not be relevant, and the patentee is merely engaging in a ‘fishing expedition’.

Of course, an apparatus or process will only be infringing if it falls within the scope of one or more claims of the patent.  Consequently it is possible, in principle at least, that the legitimate extent of discovery may depend upon the proper construction (i.e. interpretation) of the patent claims.  In Australia, disputes over claim construction are decided by the court during the main trial, and not at some preliminary stage (such as the ‘Markman hearings’ normally held for this purpose in the US).

So what happens if the parties disagree on the proper construction of the claims in the course of discovery?

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Tags: Australia, Claim construction, Discovery, Federal Court practice

Innovation Patent Claims Once Again Construed Narrowly

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2010] FCA 1169 (29 October 2010)

Claim construction – meaning of ‘device’ – whether ‘core orientation device’ is a unitary tool or may be in multiple parts

We have commented previously that the price to be paid for the near-invulnerability of the Australian innovation patent to invalidity attacks based on lack of ‘innovative step’ may be a corresponding tendency for the claims to be interpreted more narrowly. 

There is nothing in the Australian Patents Act authorising any difference in treatment between the claims of a standard patent, and the claims of an innovation patent.  However, it is not uncommon in a patent dispute that makes it as far as the Federal Court for key issues to be finely-balanced.  If this were not so, the parties would most likely have settled the dispute earlier, rather than both sides believing that they may prevail in court.

Claim construction is just such a key issue.  A broad interpretation of claim terms makes infringement more likely, but also increases the likelihood that the claim is invalid when compared with the prior art.  Conversely, a narrow interpretation may allow an alleged infringement to escape the scope of the claim, even though the claim is valid.  The parties to a patent dispute will therefore often argue for alternative constructions of the claims, and in a finely-balanced case the Court’s decision could go either way.

All else being equal, it may well be open to the Court – as perhaps in this case – to fall on the side of a narrower construction when dealing with an innovation patent.

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Tags: Claim construction, Innovation patent