Infringement
17 The invention the subject of the patent is for a new combination. The applicants must show that the two products which the respondents imported and sold have taken 'each and every one of the essential integers' of the claims, in order to establish infringement: Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475.
18 It would appear that the first of the two versions of the 'Caravan Instant Shelter' ('Product A') was imported and sold by the second respondents in a period from about September 2000 to mid November 2002 and by the first respondent from some time prior to May 2002 to February 2003. The respondents admit that Product A has all of the essential integers of the claims in question, as earlier mentioned.
19 The second version ('Product B') is said to have been imported and sold by the first respondent from May 2002 and by the second respondent from 15 October 2002. It has all the features of Product A, and therefore of the relevant claims, except that one of the sidewalls of the brackets on the fixed and sliding mounts is inclined away from the other sidewall and it has a rib. The general consensus is that the extent of the inclination is about 8 degrees.
20 The respondents' principal contention is that these features of Product B mean that the integers of parallel facing sidewall portions of the mounts and planar contact surfaces are missing. The two integers cannot be taken separately, for claims 1 and 18 make plain that the parallel sidewalls are to form planar contact surfaces for the purpose of resisting lateral and torsional deflections. There does not appear to be any dispute about this. Claim 23 does not have these integers, but does require that there be a close-fitted engagement between the sidewall and the end of the member of the scissor assembly that is inserted into the socket. The respondents contend this produces a similar requirement and is not met.
21 The other aspect of the invention is the use of a non-compressive pin. The respondents' Product B uses a screw. I shall refer to the respondents' argument in connection with this point of difference after dealing with the main issue.
22 The question whether there has been infringement is determined by the construction of the claims: Olin v Super Cartridge 180 CLR at 246. The claims are construed in the context of the specification as a whole, but that does not permit the limits of the monopoly claimed to be expanded by adding to the words of a claim glosses drawn from other parts of the specification: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610.
23 In construing the patent specification the court is to place itself in the position of the person to whom it is addressed: Kimberly-Clark v Arico [2001] HCA at [24]. The specification is to be read in the light of common general knowledge before the priority date. It is accepted that experts can give evidence as to the meaning which those skilled in the art would give to technical terms and phrases and unusual or special meanings which would be given by them to words which might otherwise bear their ordinary meaning. It is however the court's task to construe the specification: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; Jupiters v Neurizon 65 IPR at [67].
24 The respondents submit that, in determining the question whether there has been infringement, regard should be had to the words of the claims alone, following the 'purposive' approach to the construction of patents suggested by Lord Diplock in Catnic [1982] RPC 183. It is not correct, and contrary to such an approach, to identify the 'substance' or the pith and marrow of the invention and determine the issue of infringement on that basis, it is submitted. The respondents view such an approach as non-textual. That approach, drawn from Clarke v Adie (1875) LR 10 Ch App 667 at 675, is not consistent with Catnic [1982] RPC 183, which changed the law in this area, it is submitted. This latter fact was recognised by Finkelstein J in Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231; 49 IPR 225; [2000] FCA 980 and more recently by Hoffman LJ in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444; [2004] UKHL 46 (at [42]), it was submitted. In each case it was considered that a purposive construction, particularly one given effect to by the questions posed in Improver Corporation v Remmington Consumer Products Ltd [1990] FSR 181 at 189, leaves no area of operation for a pith and marrow approach (see also PhotoCure ASA v Queen's University at Kingston (2005) 216 ALR 41; 64 IPR 314; [2005] FCA 344). The respondents also point to the recognition by Lindgren J of the 'tension' between two ideas in the construction of patent claims: the idea that a person should be able to take the substance of the invention and avoid infringement by side-stepping the language of the claims and the idea that the language of patent claims sets the boundaries of the monopoly and ought not to be extended by the courts to catch that which the patentee has left open: Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd (2005) 67 IPR 576; [2005] FCA 1893 at [40]. It would follow from the respondents' submission that the first mentioned idea reflects the 'pith and marrow' approach but that the latter is the correct approach.
25 Two recent decisions of this Court confirm that the identification of the substance, or essence, of an invention and its use in connection with allegations of infringement to be an incorrect method: Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 at [55] per Bennett J; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [38]-[43] and [92]. As the Full Court explained in Fresenius [2005] FCAFC 220, it is an error of principle to ascertain the 'essence' of the invention to determine whether infringement has occurred. Fresenius [2005] FCAFC 220 reiterated that the correct approach is to identify the essential integers and that the form and wording of the claim are determinative. The two decisions also make plain that the incorrect approach reflects a misunderstanding of what was envisaged by the doctrine of pith and marrow. That doctrine has not been regarded by Australian courts as inconsistent with a proper approach to the construction of patent claims.
26 The decision in Fresenius [2005] FCAFC 220 also confirms as correct the explanation of the course the law has taken in this area in Populin v HB Nominees 41 ALR 471, which was confirmed in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 161 IPR 545. Populin v HB Nominees 41 ALR at 475 stressed the importance of a patentee distinguishing essential and inessential integers and claiming only the former, because it must be shown that the alleged infringee has taken each and every one of the essential integers of the claim. If one essential integer is omitted that person will escape liability. At the same time, it is explained, the courts sought to avoid too technical or narrow a construction. Accordingly they held that the omission of an inessential step or part, or the substitution of an equivalent (an immaterial variation) would not provide an escape from infringement. Considerations such as this led to the pith and marrow test, expressed in the classic statement in Clarke v Adie (1875) LR 10 Ch App at 675. After commenting that a patent for a new combination is entitled to the same protection as every other patent James LJ said:
'…The patent is for the entire combination, but there is, or may be, an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in a disguised or mutilated form, and it will be in every case a question of fact whether the alleged piracy is the same in substance and effect, or is a substantially new or different combination.'
27 The doctrine has continued to be recognised by the High Court, Populin v HB Nominees 41 ALR 471 observes at 476 (and see Olin v Super Cartridge 180 CLR 236 at 246 per Gibbs J). It has its limitations, however. As Gibbs J said in Olin v Super Cartridge 180 CLR 236, the doctrine does not mean that there will be an infringement where the patentee has, in the form of the claim, left open that which the alleged infringee has done; and it does not affect the fundamental rule that there will be no infringement unless all of the essential features or integers of the claim were taken.
28 Turning to the reading of the complete specification, the Full Court in Populin v HB Nominees 41 ALR 471 pointed out that the essential integers are to be determined not by an abstract and uninformed construction, but by a common sense assessment of what the words used convey in the context of the then existing published knowledge. It is in this connection that the Court referred (at 476-477) to the decision in Catnic [1982] PRC 183and in particular the statement by Lord Diplock (at 242-243):
'…a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (ie 'skilled in the art'), by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge …'.
29 In Nicaro Holdings 161 IPR 545 Gummow J observed (at 560) that the point at issue in Catnic [1982] PRC 183was an integer which spoke of a rear support member, in building construction, 'extending vertically'. The alleged infringer had the member inclined at 6 or 8 degrees from the vertical. The reduction had a negligible effect on function and the House of Lords found infringement, as would an Australian court. His Honour did not consider that Catnic [1982] PRC 183propounded any novel principle or created a new category of 'non-textual infringement' (see also Fresenius v Gambro [2005] FCAFC at [91]; Pharmacia Italian SpA v Mayne Pharmaceuticals Pty Ltd (2005) 661 IPR 84 at 98 and see the cases there cited).
30 In Catnic [1982] PRC 183the solution proposed by Lord Diplock was a construction which gave effect to what the skilled addressee would understood to be the protection claimed. The question identified by Lord Diplock (at 243) was whether a skilled addressee would understand that strict compliance with a word or phrase was intended to be an essential requirement, so that any variant would fall outside the claim, even though it could have no material effect upon the way the invention works. That question did not however arise if the variation had a material effect or if that would have been obvious to the informed reader.
31 The views expressed by Lord Diplock, that the essential features of a claim are what is referred to as the 'pith and marrow' and that they are to be determined by reference to the words of the claim, and not by some intuitive process, may also be seen as reflected in the statement of the High Court in Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 at 51 that, in connection with infringement, consideration must be given to 'the substantial idea disclosed by the specification and made the subject of a definite claim' (emphasis added, as it was by the Full Court in Fresenius v Gambro [2005] FCAFC at [50]).
32 The decision in Fresenius v Gambro [2005] FCAFC at [91]confirms that both Populin v HB Nominees 41 ALR 471 and Catnic [1982] RPC 183 stand for the proposition that the essential integers of claims are determined by a common sense assessment of what the words of the claims convey in the context of then-existing knowledge. The cases show that the principle of the pith and marrow is concerned with the identification of what is essential and inessential. Where the omission or substitution in the alleged infringing article is not of an essential feature, the variation is immaterial and a conclusion of infringement may follow.
33 It is convenient at this point to refer to the drawing by Dr Kneen of the mount on Product B, absent his explanations noted on it:
34 The square space to the right of the letters is identified by Dr Kneen as that for the vertical corner post. The focus here is upon the socket where A and B, on the one hand, and C, on the other, are the sidewalls. The inclined sidewall with rib is shown at A and B. The outer end portion of the scissor assemblies (or truss as it is also referred to) is inserted into the socket and held in place with a screw.
35 Claim 1 of the patent in suit envisages the sockets of the mounts being formed by sidewalls which are spaced apart and parallel. The outer end portions of the scissor assemblies are held closely in the socket between the sidewalls which are 'parallel facing' in a 'close-fitted engagement'. The end portions of the scissor assemblies 'thereby' form 'planar contact surfaces' with the sidewalls. The sidewalls, it is said, 'may act' on the outer end portions 'along the planar contact surfaces' to 'resist lateral and torsional deflections' of the scissor assemblies. Claim 18 repeats the reference to the sockets having spaced-apart parallel sidewalls in connection with both the stationary and sliding mounts, the close-fitted engagement and the sidewalls acting along the planar contact surfaces in order to resist deflections.
36 The respondents concede that the word 'parallel' in the claims would not be understood by a person skilled to refer to the sidewalls being precisely geometrically parallel, but rather parallel within manufacturing tolerances. Dr Gilmore, in dealing with the issue of fair basing, said that a geometric parallel sidewall could not be achieved. The claim would be understood to say 'reasonably parallel' and consistent with the structure working as described.
37 The applicants' witnesses did not attempt to put a figure upon what would be 'reasonably parallel'. Mr McKinnon suggested that anything more than an inclination of 5 degrees from the other sidewall could not be considered to be parallel and could not function as such. It may easily be inferred from the claims that the requirement of parallelism is not to be read on its own and without reference to function. The focus then shifts to the formation of the planar contact surfaces and what is necessary to achieve this. The respondents did not deny such an approach, but submitted that the function of forming planar contact surfaces reinforces the meaning of parallel as being as close to parallel as can be achieved in manufacturing.
38 Dr Kneen gave evidence as to the importance of the contact sought to be achieved. He explained that the improvement sought in the behaviour of the mount, as seen in the specifications, the resistance of lateral and torsional deflection, is to be achieved by restraining the rectangular end portions of the scissor assemblies against rotation. This involves the end coming into contact with the sidewalls. The essential element is claimed to be the presence of planar contact surfaces on the sidewalls.
39 Mr McKinnon did not consider that the inclined side and rib of Product B provided a planar contact surface. Although he conceded that the end portion of the scissor assemblies would sit straight in the socket of Product B, and that it would be parallel with the other sidewall, he did not see this as achieving the same effect as a socket having sidewalls which were both parallel. Mr McKinnon pointed out that, if the gap between the two points of contact (A and B on Dr Kneen's drawing) was too great, it would allow for lateral and torsional deflection. He did not say however that this variation in Product B had the result that its function was different. I infer that it does not. Mr McKinnon's point was that the inclined wall and rib provided for contact points, not contact surfaces. He considered that the latter required the contact to be continuous.
40 Dr Gilmore was of the view that the gaps created by the angle of the sidewall in Product B maintained a reasonably planar surface. The applicants' case as to this feature, as with that of parallel sidewalls, was that there is a tolerance permitted by the claims when regard was had to their function.
41 Dr Kneen pointed out that the contact surface between the end member of the scissor assemblies and the sidewall in the specification will not always be over the whole of the plane as it moves. It may be at isolated points. The claim may imply that it is over a significant surface, but it does not say that it has to be over the whole plane. He would define a planar contact surface as a series of points that form a plane on which contact can be made. Dr Gilmore considered that the angle of the sidewall in Product B maintained a reasonably planar surface.
42 Dr Kneen observed that the claim did not require the planar contact surfaces to be the parallel sidewalls of the sockets. The claims suggest that the planar surfaces could be the sides of the ends of the scissor members. The patent itself says that the sidewalls may act on the end portions along the planar contact surfaces. I note that Mr McKinnon appears to have been alert to this question, but was not confident about the conclusion. It seems to me that Dr Kneen's view is borne out by the language of the claim. Dr Gilmore also referred to what the claims have to say about the end portion of the scissor assembly. It is not likely that it was predicted that it would always be entirely smooth and providing one continuous plane. If it is, its surface, which is the point of contact, may come into contact at a number of points. The claims refer to contact surfaces. The plane may then be the side of the end portion itself. The respondents submitted that if this were the case it is even more important that the sidewalls be as close to true parallel as possible. The evidence did not however suggest that a substantially parallel wall would act differently upon the end of the scissor assemblies in any significant way.
43 In reality the respondents' argument not only linked the requirements of the sidewall being parallel with the function of planar contact surfaces, it equated them. Once it is accepted that the claims see the end portion end of the scissor assembly providing the plane on which contact surfaces or points are provided, the remaining question is whether the sidewalls have to be as close to true parallel as possible. This is not necessary for the behaviour of the mount sought to be achieved. Substantially parallel will suffice. That is how the skilled addressee would understand the patent to require which regard was had to the function of the mount. The variation in Product B has no effect upon the function of the sidewall upon the end portion of the scissor assembly.
44 Claim 23 does not contain a requirement that the sidewalls be parallel. The respondents sought to resist a finding of infringement because there is only contact at two points. It was submitted that the integer, that there be a close-fitted engagement, is therefore missing. There is however nothing which suggests Product B failed to achieve this objective.
45 The respondents' approach to the requirement that there be a non-compressive fastening pin was curious. There was no dispute that it was an essential integer of claim 23. The respondents' witnesses accepted that the screw in Product B had the features of the pin referred to in the claim. Nevertheless the respondents in submissions reserved their position on infringement on the basis of the view expressed by Dr Gilmore, in connexion with the issue of anticipation, that the bolt utilised in Mr McKinnon's Original canopy did not anticipate the patent. The weight of the evidence however was that the screw in Product B functioned in the same way as the non-compressive pin in the claim.
46 Infringement of the independent claims 1, 18 and 23 has been made out. The respondents did not suggest that there was any feature of the dependant claims which excepted them from a finding of infringement. The applicants have therefore established infringement of claims 1, 2 and 8 to 23 inclusive by each of Products A and B.