Patentable subject matter - not a patentable invention

Apple Inc. v Samsung Electronics Co. Limited ¹³⁾ - Patent Infringement - Interlocutory Injunction - Apple ipad cf Samsung galaxy 10.1

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.

(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⁾

(revocation, particulars)

(revocation, particulars)

Old Digger Pty Ltd v Azuko Pty Ltd ³⁹⁾

(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)

(construction) (joint tortfeasor)

(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

(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

(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.