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Too late to challenge amendments once infringement proceedings commenced

by , | May 12, 2022

Earth Layers

Illinois Tool Works Inc v Airco Fasteners Pty Ltd [2022] FCA 495




5 May 2022

Federal Court of Australia

Rofe J


Illinois Tool Works Inc (ITW) is the owner of a patent relating to fuel cells for use in combustion tools (e.g. construction nail guns) (the Patent).  ITW commenced proceedings against Airco Fasteners Pty Ltd (Airco) for infringement of various claims of the Patent (Infringement Proceedings).  Airco did not challenge the validity of the Patent.

Prior to commencing these proceedings in September 2020, ITW sought amendments to the Patent in the Patents Office, including to add claims 17, 20 and 21 to the Patent.   The amendments were allowed without opposition in April 2020.  Claim 20 was amongst the claims asserted against Airco.  In the week prior to the hearing of the Infringement Proceedings, Airco commenced two separate proceedings (Amendment Proceedings) against the Commissioner of Patents, seeking to set aside the amendments.  It was agreed that the Infringement Proceedings and Amendment Proceedings would be heard together.

Key Issues

The invention the subject of the Patent is a fuel cell for use with a combustion tool which includes an internally mounted metering valve which dispenses a measured dose of fuel each time the stem is pressed into the “open” position.  Since validity of the Patent was not in issue, the question of infringement depended on the outcome on three construction issues, focused on the key terms “close proximity” and “opposite”.  As was noted by Rofe J these are ordinary English words such that construction of such terms was a matter for the Court. 

In the Airco Proceedings, Airco alleged that the amendments made by the Patent Office to add claims 17, 20 and 21 were contrary to s102(2)(a) of the Patents Act 1990 (Cth) (Patents Act) because they extended beyond the scope of the claims before amendment.  This argument was dependent on new claim 17 being construed so as to inform the meaning of “close proximity” in claim 1 as regards the relative location of the fuel metering chamber and closure, broadening its scope as compared to its scope before the amendment was made.  Airco sought to challenge the amendments firstly by seeking extensions of time to lodge an appeal to the grant of the amendments (required to be filed within 21 days of the decision) and to lodge an application for review under the Administrative Decisions (Judicial Review) Act 1977 (ADJR Act) (required to be filed within 28 days of the decision); and secondly by administrative review under the Judiciary Act 1903 (Cth) on the basis that the Commissioner did not have jurisdiction to allow the amendments.



In the context of the relevant claims, Rofe J accepted ITW’s argument that “disposed in said close proximity” required an assessment of the relative location of the metering chamber and closure within the context of the fuel cell as a whole, bearing in mind the express functional objectives of the invention namely that the two components were sufficiently close that the same measured dose of fuel is dispensed for each combustion event.  The metering chamber did not need to be positioned adjacent, or as close as possible, to the closure in order for the fuel cell to be configured more efficiently and effectively than the prior art fuel cells, and the words “close proximity” did not require this.   As to the claim 17 argument, Rofe J held that claim 17 adds a further requirement to claim 1 as to the location of the fuel metering chamber and did not informe the construction of “close proximity” in claim 1.

Rofe J also preferred ITW’s construction of the word “opposite”.  Drawing from the specification, and again considering the function of the invention she noted the claim feature of a valve body “having a second end opposite said fuel metering chamber” was a functional requirement that those two components be facing or across from each other, so that fuel will flow directly from the second end to the fuel metering chamber. 

On the basis of these constructions Rofe J found that the Airco fuel cell at issue infringed all the asserted claims.

Given her conclusions in relation to the construction of “close proximity” in claims 1 and 17, Rofe J found that the addition of claim 17 did not contravene s102(2)(a).  She nevertheless went on to make some general observations about the Amendment Proceedings. As to the extension of time sought to “appeal” the decision to grant the amendments, she quickly concluded that the authorities were clear that an appeal could only be sought (i) to an opposition decision and (ii) where it was the appellant that had commenced the opposition.  Any appeal would therefore be incompetent and so an extension of time would be rejected. On the extension of time sought to lodge a review under the ADJR Act, Rofe J considered that the reason given for the delay – a change of solicitor/counsel – may not be an acceptable reason for delay, and further that there was no explanation as to why Airco had not opposed the amendments.  She also that it was in public interest that, after expiry of the opposition period, the patentee and third parties are able to proceed on the basis that the amendments are valid.  Similarly, although there is no prescribed time limit for bringing a claim under the Judiciary Act, Rofe J noted that the remedies available are discretionary and that undue delay would be a relevant factor.  Further, the question of whether a decision exceeds the relevant decision-making authority due to failure to comply with a statutory condition (e.g. s102(1)(a)) is a matter of statutory interpretation.  Here s26(2) of the Patents Act provides that a patent is not invalid merely because an amendment was made that is not allowable.  Moreover, there is no provision in the Patents Act for revocation of amendments. In light of these factors Rofe J indicated that non-compliance with ss102 and 104(5) would not render the decision to allow the amendments invalid.   The Amendment Proceedings were dismissed.


Given that the infringement findings in this case are largely confined to its specific facts and claims, the most significant aspect of the case is Rofe J’s comments on Airco’s attempt to wind back the amendments made in the Patents Office prior to the litigation commencing.  These comments were obiter dicta since the merits of the proceedings were resolved by claim construction, but still provide a useful indication of the way such an attempt may be dealt with in the future.

In particular, Rofe J’s indication that the grant of an amendment to a patent specification which does not comply with s102 of the Act would not amount to an excess of jurisdiction would leave the only channels available for a challenge to the grant of amendments as an opposition and subsequent appeal, or ADJR Act review.  Both must be filed shortly after the decision granting such amendments.  Rofe J’s analysis indicates that an extension of time to bring such a challenge will need to be clearly justified, including as to why an opposition was not brought.

Airco have appealed this decision to the Full Federal Court; the appeal was dismissed in February 2023.

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