2.5 Patent infringement
2.5.1 Claim construction
This section focuses on claim construction in the Federal Court of Australia, given that patent matters are primarily conducted in that jurisdiction.
2.5.1.1 The role of claim construction
The proper construction of a patent is a question of law. The construction of the patent in question is important to most issues in patent disputes and can often be determinative of them. In particular, the proper construction of a patent may:
- indicate the meaning to be attributed to the claim features (integers) for the purposes of determining whether the allegedly infringing product or method, or prior art said to anticipate the claim or render it obvious, possesses those features;
- determine whether the words of the claim meet the requirement for the claim to be clear;
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determine the breadth of the monopoly claimed. This is particularly important for the “internal” grounds of invalidity, including:
- a lack of fair basis and insufficiency (the relevant law for these grounds is that applying before the 2013 amendments brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth));
- a lack of support and no clear and complete enough disclosure of the invention (the relevant law is that applying after the 2013 amendments brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth));
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determine the standard, if any, of the claimed product or process. This is particularly important for grounds, including:
- a lack of inventive step (a claim with a higher “standard” is less likely to be obvious); and
- utility (a broader claim, or one that does not have a limitation by result, is more likely to include within it things that do not work).
2.5.1.2 When claim construction occurs
Argument about the proper construction of a patent generally takes place at a final hearing and at the same time as argument about infringement, invalidity and associated legal and factual issues. Determination of the proper construction of a patent before a hearing on infringement and invalidity is rare. However, the court may choose to follow this course, especially if this leads to efficiencies in how the case will be run.
One consequence of the construction of a patent being determined at the same time as issues of infringement and invalidity is that, often, evidence is prepared and argument occurs based on more than one possible claim construction. It is common for the alleged infringer to argue that it wins the case on any construction; for example, if the construction is X, then there is no infringement, but if the construction is Y, then the claim is invalid .
That said, the alleged infringement or prior art is to be ignored when construing the patent. Although the forensic contest in any patent dispute will raise the particular construction issues to be resolved, a patent must “be construed as if the infringer had never been born”48 and without “an eye to the prior art.”49
The court does not need to adopt a construction put forward by any of the parties or their expert witnesses and may come up with its own construction. Further, as there are often multiple construction issues in a case, it is common for different construction issues to be determined both in favor of and against a party.
The construction of a patent is often an issue on appeal. While an appeal court may give some deference to a trial judge’s construction, it generally will not hesitate to adopt and apply a different construction if it perceives that the trial judge’s construction involved error(s). This is because the construction of a patent is a question of law, and, generally, the appeal court is in as good a position as the primary judge to construe the patent.
2.5.1.3 Pleadings and claim construction
When filing originating documents alleging infringement or invalidity, a party does not generally need to indicate its position as to how the claim is to be construed.
Nonetheless, in some cases, the court may require the parties to indicate their position on construction at an early stage of the proceeding either directly (e.g., by requiring it to plead the various consequences for infringement and invalidity if a particular construction is adopted) or indirectly (e.g., by requiring the filing of position statements on infringement or a claim chart regarding invalidity).50
2.5.1.4 How claim construction occurs
The principles of claim construction are settled. Disputes about construction usually concern the language of a particular claim rather than matters of principle. The determination of the proper construction of a patent specification including the claims is based on how the person skilled in the relevant art would understand it. Such a person is regarded as being neither particularly imaginative nor particularly inventive (or innovative).
The court seeks to determine how the skilled addressee would have understood the patentee to be using the words of the claim in the context in which they appear. The construction of a patent is objective in the sense that it is concerned with what the skilled addressee would understand from the patent, not what the patentee meant to say. The claims must be construed in the context of the specification read as a whole and in light of the CGK. However, it is not permissible to alter the words of a claim by adding glosses drawn from other parts of the specification. Further, if a claim is clear, it is not to be made obscure simply because obscurities can be found in parts of the specification.
It is often said that claims should be given a purposive – not a purely literal – construction and that a too “technical” or “narrow” construction should be avoided.51 In construing claims, “a generous measure of common sense should be used,” and a literal construction devoid of practicality and context is to be avoided.52 Claims should be construed while bearing in mind that the invention is to be put to practical use. A claim should not be construed to give a foolish result. Where possible, different claims in the same patent should be construed in such a way that their scopes are different. This is known as the presumption against redundancy.
The patentee may provide a “dictionary” of the jargon used in the claims, in which case that dictionary definition of the term generally applies. There are two kinds of terms for which a dictionary may be used: words that otherwise do not appear to have a positive meaning and common words that are to be given a different meaning.
2.5.1.5 The role of evidence in claim construction
Construction is a matter for the court. Although expert evidence regarding the meaning that the skilled addressee would give to technical or scientific terms and phrases may be submitted, it is for the court to interpret words bearing ordinary meaning. Indeed, the court can construe the claims without reference to expert evidence.
Despite this, it is relatively common for parties to adduce expert evidence that solely concerns the meaning a skilled person would attribute to a claim that does not contain technical or scientific terms. Often, however, the court gives such evidence little weight, although it is rare for the court to hold that it is inadmissible.
2.5.1.6 Patent Office file wrapper
The general rule in Australia is that the file wrapper is neither relevant nor admissible in construing the claim. The only qualification to this is Section 116 of the Patents Act 1990 (Cth), which, in interpreting a complete specification as amended, allows the court to refer to the specification without amendment. Besides this narrow exception, Section 116 does not permit recourse to other documents on the Patent Office file.