Words matter – Specification guides claim construction

Date: 30 June 2021
Court: Full Court of the Federal Court of Australia
Judges: Yates, Moshinsky and Burley JJ

Background

The case concerns Australian Patents 2003200627 (627 Patent), 2010227121 (121 Patent), and 2008259388 (388 Patent), all of which relate to coffee capsule technology. Caffitaly Systems S.P.A (Caffitaly) brought infringement proceedings against One Collective Group Pty Ltd and others regarding the importation and sale of coffee capsules.

The primary judge rejected the infringement claim, finding that the asserted claims of the first two patents (the 627 and 121 Patents) lacked inventive step, and the claims of the third (the 388 Patent) did not satisfy the sufficiency requirement under s40(2)(a) of the Patents Act 1990 (Cth) to fully describe the claimed invention in the specification.

Caffitaly appealed all findings of infringement and invalidity.

Key Issues

A patent dispute will frequently turn on the construction of one or two phrases in a long claim. Here the meaning of the term “embossings” was a primary focus of claim construction.

Although the claims – and the term “embossings” – were to be read as understood by the notional person skilled in the art, and both sides presented expert opinion as to that meaning, the primary judge adopted neither of these constructions. Rather, the primary judge looked to the specification (which provided no specific meaning but did provide context for the term), drawings (which illustrated embodiments of the term), and to dictionary definitions.

The primary judge concluded that the claims of the 627 Patent lacked inventive step on the basis of evidence of an expert’s approach to a hypothetical design task, which approach was said to be derived from common general knowledge. Critically, the primary judge found not all features of the claimed invention were present in the expert’s design, but considered the missing feature of no great importance, finding that it would have been arrived at by well-known manufacturing techniques.

Outcome

The Full Court found that the primary judge erred in the inventive step analysis in relation to the 627 Patent, but the appeal otherwise failed.

In relation to construction of the term “embossings”, the Full Court confirmed that the task of construction was a matter for the primary judge, and that he was not required to accept, uncritically, the views of the parties’ experts on the term’s meaning. The Full Court was satisfied that the context of the specification, which was the “primary source of information available to the primary judge”, supported the meaning given by him to the term “embossings”. They found no error in the primary judge’s construction of the term.

The Full Court however found that the primary judge erred in his analysis of inventive step in relation to the 627 Patent. The expert’s response to the hypothetical design task did not actually reach the claimed invention as it was missing a feature, the so called “fluid director member”. According to the Full Court, this feature was simply missing from the expert’s hypothetical design and nothing in the design could be viewed as an alternative to that claim feature. The Full Court distinguished this case from the evidence in cases such as DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd¹ where the differences between the expert’s design and the invention of the claims were “mere design variants”. Here the feature was missing entirely.

Implications

On inventive step, this case confirms that to substantiate a lack of inventive step, it must be shown that the skilled person would be directly led to all the features in a claim from common general knowledge/prior art.

On claim construction, the Full Court affirmed that construction of patent claims is the role of the judge, and that they may reject constructions proffered by experts, finding an alternative construction in the specification. As the primary source for interpreting patent claims is the specification, this is the inventor’s opportunity to introduce and control the boundaries of claim terms and thereby the claim scope. A prudent patentee will ensure all key terms in the claims are defined/explained in the body of the specification to minimise room for debate around construction. Time spent carefully considering the terms of a claim and crafting their definitions is where the bulk of drafting time should be expended.

1. [2013] FCA 132; (2013) 100 IPR 19