White SW Computer Law
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Patent Cases





  • Samsung Electronics Co. Limited v Apple Inc.12) Interlocutory Injunction overturned
    • Legal protection of biotechnological inventions
    • Extraction of precursor cells from human embryonic stem cells
    • Patentability – Exclusion of ‘uses of human embryos for industrial or commercial purposes’
    • Concepts of ‘human embryo’ and ‘use for industrial or commercial purposes’)
    • This case related to “surgical wraps” and in particular whether the patent should be construed so that a “single” wrap infringed.
    • The Full Court found no infringement based on its construction of the claims. Emmett J set out the law as follows
      • It is for the Court to construe the language of the claims.
      • The principles guiding construction are not significantly different from those applicable to the construction of any other written instrument.
      • Ordinary words should be given their ordinary meaning unless a person skilled in the relevant art would, in the context of the claims, give a special meaning or unless the complete specification ascribes a special meaning to the words of the claim.
      • Expert evidence may be given in support of a claim that a word has a technical meaning.
      • However, in the absence of a special technical meaning, expert evidence is not determinative of the construction of the claims.
      • As meaning may vary with context, it is necessary, with any question of construction, to read the whole of the relevant instrument, whether or not there is any apparent ambiguity in the language to be construed.
      • Ultimately, however, it is the claims that are to be construed, and the context provided by the complete specification cannot limit, vary or qualify the clear meaning of the claims.
      • The author of a document such as a patent specification uses language to make a communication for a practical purpose.
      • A rule of construction that gives that language a meaning differing from how that language would have been understood by the persons to whom it is addressed is liable to defeat the author’s intentions.
      • Thus, a patent specification should be given a purposive construction rather than a purely literal one derived from applying to it a meticulous verbal analysis.
      • Construction of a patent is not subjectively concerned with what the author meant to say.
      • Rather, it is objective, in the sense that it is concerned with what a reasonable person to whom the patent is addressed would have understood the author to be using the words to mean 17).
      • The notional addressee of a patent is a person skilled in the art to which the patent relates.
      • That person comes to a reading of the specification with common general knowledge of the art, and reads the specification on the assumption that its purpose is both to describe and to demarcate an invention.
      • The purpose of a patent specification is simply to communicate the idea of an invention.
      • An appreciation of that purpose is part of the material that is used to ascertain the meaning.
      • However, purpose and meaning are different.
      • Purposive construction does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims.
      • The question is what a person skilled in the art would have understood the patentee to be using the language of the claim to mean.
      • Accordingly, for that purpose, the language chosen is of critical importance.
      • The specification is a document in words of the patentee’s own choosing, which will usually have been chosen upon skilled advice 18)
    • (discovery) Construction of the claims of a patent is ultimately a matter for the Court, and experience shows that there might be many competing constructions available.
    • (discovery) In these circumstances I cannot see any proper basis upon which the applicants should not obtain discovery in relation to the whole of the … process relevant to the …. systems.
    • (discovery) If only part of the …. process is disclosed, there is a real risk that an incorrect impression of that process may be obtained, not only by the applicants but also by the Court.
    • There is also a risk that the parts disclosed may make little sense without an understanding of the whole.




    • (construction) A patent specification should be given a purposive construction rather than a purely literal one.
    • (construction) The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date.
    • (construction) The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification.
    • (construction) There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe.
    • (construction) It is permissible for an invention to be described in a way which involves matters of degree. Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.
    • (construction) As a general rule, the terms of a specification should be accorded their ordinary English meaning.
    • (construction) Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
    • (construction) However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
    • (construction) There is no requirement of patent law that subsequent claims narrow the scope of earlier claims, even though, as a matter of practice, this is often the case. For the claims click here.


    • the proper construction of a specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc25)
    • a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Co v Beltreco Ltd26)
    • it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd27);
    • the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation Pty Ltd28);
    • while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico29); Welch Perrin & Co Pty Ltd v Worrel30); Interlego AG v Toltoys Pty Ltd31);
    • the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter Electric & Musical Industries Ltd v Lissen Ltd 32);
    • experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd33); the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time 34); and
    • it is for the Court, not for any witness however expert, to construe the specification; 35)




    • (construction) It is well settled that the complete specification is not to be read in the abstract; here it is to be construed in the light of the common general knowledge and the art before the priority date; the court is to place itself “in the position of some person acquainted with the surrounding circumstances as to the state of [the] art and manufacture at the time”.
    • (full disclosure) The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?
    • (reopen case)



  • Leonardis v Sartas No 1 Pty Ltd44)
    • (construction) It is not inadmissible to use in a claim an imprecise word in an appropriate context, where it conveys the necessary meaning…
    • (construction) the meaning of the words “substantially above” was sufficiently plain


  • Improver Corporation v Remington Consumer Products Ltd 45)
    • Held, by Hoffman J. (dismissing the action):
      • That, if the issue was whether a feature embodied in the alleged infringement which fell outside the primary, literal or a contextual meaning of a descriptive word or phrase in the claim (“a variant”) was nevertheless within its language as properly interpreted, the court should ask itself the following questions 46):
        • Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no:–
        • Would this (i.e.: that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes:–
        • Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
      • That Lord Diplock's speech in Catnic indicated the same approach to construction as that laid down by the Protocol on the Interpretation of Article 69 of the European Patent Convention. 47)
      • That in this case, Lord Diplock's three questions were to be answered “no”, “yes”, “yes” respectively.
      • Accordingly the “Smooth and Silky” device did not infringe the plaintiffs' patent.
      • The invention had satisfied a long felt want; its inventive merits had been amply demonstrated in the market and the patent was valid. on the approach to construction of an “equivalents clause” in a patent providing that “all variations which come within the meaning and range of equivalency of the claims are . . . intended to be embraced therein”.


  • Décor Corporation Pty Ltd v Dart Industries Inc 48)


  • Catnic Components Ltd v Hill & Smith Ltd 49)


  • American Cyanamid Company v Ethicon Ltd 50)


  • Solar Thomson Engineering Co Ltd v Barton51) - Exhaustion/Implied Licence


  • The General Tire & Rubber Company v The Firestone Tyre & Rubber Company Ltd 52)


    • (construction) It is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work – this is an application of the old doctrine ut res magis valeat quam pereat


  • Natural Colour Kinematograph Co. Ltd. (In liquidation) v. Bioschemes Ltd.53)
    • (construction) Further, though it may be true that in construing an instrument inter partes the Court is bound to make up its mind as to the true meaning, this is far from being the case with a Specification.
    • It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void.
    • Once again, though the Court may consider that the meaning of the Specification is reasonably clear, yet if the Specification contain statements calculated to mislead the persons to whom it is addressed, and render it difficult for them without trial and experiment to comprehend in what manner the patentee intends his invention to be performed, these statements may avoid the Patent.

More Information

1) [2015] HCA 30
2) [2015] HCA 35
3) [2014] FCA 21
4) Appeal No. 2013-1505 (Fed. Cir. Dec. 5, 2014)
5) [2014] FCAFC 183
6) [2014] FCAFC 150
7) [2013] FCA 1441
8) [2013] FCA 871
9) 657 F. 3d 1341
10) [2013] FCAFC 6
11) [2011] FCA 282
12) [2011] FCAFC 156 (30 November 2011)
13) [2011] FCA 1164
14) C‑34/10
15) [2011] FCA 1002 (30 August 2011)
16) [2011] FCAFC 86, First Instance Decision
17) see Kirin-Amgen Inc v Hoechst Marion Roussel Limited (2004) 64 IPR 444 at [30]-[32]
19) [2011] FCA 846
20) [2011] FCA 641
21) 2011 APO 28
22) [2009] FCA 945 (25 August 2009
23) Leave to appeal to the HCA refused
24) (2005) 222 ALR 155
25) (1988) 13 IPR 385 at 400
26) (2000) 49 IPR 331 at [81]
27) (2001) 207 CLR 1 at [24]
28) at 391
29) at [15]
30) (1961) 106 CLR 588 at 610
31) (1973) 130 CLR 461 at 478
32) (1938) 56 RPC 23 at 39
33) (1994) 30 IPR 479 at 485-486
35) Sartas No 1 Pty Ltd, at 485–486
36) [2003] FCA 656 (1 July 2003
37) [2003] FCA 642
38) [2002] FCA 1158 (18 September 2002)
39) (2000) 51 IPR 43
40) [2001] FCA 445
41) [2001] HCA 8
42) [2001] FCA 1079
43) [2000] FCA 980 (1 August 2000
44) (1996) 67 FCR 126
45) [1990] FSR 181
46) “Lord Diplock's three questions from Catnic Components Ltd. v. Hill & Smith Ltd. [1982] R.P.C. 183, 242
47) Anchor Building Products Ltd. v. Redland Roof Tiles Ltd. (C.A.), unreported, 23 November 1988, considered and applied
48) (1988) 13 IPR 385
49) [1982] RPC 183
50) [1979] RPC 215
51) [1977] RPC 536
52) [1972] RPC 457
53) (1915) 32 RPC 256

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