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Nailed It – Full Federal Court upholds purposive construction of fuel cell claims

Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7

Date:

Court:

Judges:

13 February 2023

Full Federal Court of Australia

Rares, Moshinsky and Burley JJ 

Highlight 

This decision provides a good example of the principles of claim construction in operation, and provides a helpful reminder that construction is a matter for the Court.   The decision underscores the importance of careful and precise drafting ensuring that key terms and phrases are clearly defined and contextualised to support a purposive interpretation of the claims. 

Background 

In this Full Court decision, Airco’s appeal on the claim construction adopted by Justice Rofe at first instance in Illinois Tool Works Inc v Airco Fasteners Pty Ltd [2022] FCA 495 was dismissed, and consequently Airco was found to infringe ITW’s patent. 

Illinois Tool Works Inc (ITW) is the owner of Australian Patent no 2005232970 titled “In-can fuel cell metering valve” relating to a fuel cell designed for use with combustion tools like nail guns.  This fuel cell includes an internally mounted metering valve that dispenses a measured dose of fuel each time its stem is pressed into the open position.   

Claim 1 specifies several key features, including the requirement for the fuel metering chamber to be in close proximity to the closure, and the presence of a valve body with a second end opposite the fuel metering chamber located within a separate fuel container.   

ITW commenced proceedings against Airco Fasteners Pty Ltd (Airco) for infringement of various claims of the patent in relation to a combustion tool fuel cell supplied by Airco.  Airco did not challenge the validity of the patent.   We reported on the decision of Justice Rofe at first instance, addressing both the infringement claim and amendments sought by ITW, in our 2022 Patent Case Summary. 

Since validity of the patent was not in issue, the question of infringement depended on claim construction of the key terms “close proximity” and “opposite”.  As was noted by Justice Rofe at first instance, claim construction is a matter for the Court.  Her Honour found that that the Airco Fuel Cell infringed ITW’s patent based on her construction.   

Airco filed an appeal with the Full Federal Court contending that Her Honour’s construction was wrong. 

Key Issues 

The appeal related to these two construction issues.   

The principles of claim construction under Australian law are well known.  These include: 

  • The proper construction of a specification is a matter of law. 
  • A patent specification should be given a purposive, not a purely literal, construction. 
  • The words used in a specification should be interpreted based on how a person skilled in the art would understand them. 
  • While claims should be construed in the context of the specification, it is not permissible to expand or narrow their boundaries by adding glosses from other parts of the specification. 
  • Experts may assist the Court by providing evidence on construction, but this is ultimately a matter for the Court. 

At first instance, Her Honour held the term “close proximity” implies a relative nearness of the fuel metering chamber to the closure within the context of the entire fuel cell.  The requirement is functional, aiming to ensure that the fuel metering chamber is sufficiently close to the closure for efficient and safe fuel metering and dispensing during combustion tool operation.  Her Honour highlighted that the objectives of the patent included minimising fuel and propellant leakage and ensuring precise fuel emission.  Rejecting Airco’s submissions, she held there was not requirement that the two components be adjacent, or as close as possible, to achieve this.    

On appeal the Full Court agreed with Justice Rofe that the term was not to be determined solely by the relative location of those two components alone but in the context of the fuel cell as a whole.  Notably, as the size and length of the fuel cell is not specified in the patent specification, such lack of precise dimensions does not invalidate the claim as long as it provides a workable standard suitable for its intended use, reflecting the purposive approach to claim construction.  The Full Court was of the view that the primary judge correctly considered functional aspects when interpreting the “close proximity” requirement to ensure the fuel metering chamber allows efficient operation of the fuel cell. 

Justice Rofe also held “opposite” in the context of the “second end opposite” integer to mean that the second end of the valve be “facing” or “across from” the fuel metering chamber, implying a spatial relationship between those two components across the same axis.  The Full Court agreed, rejecting Airco’s proposed interpretation that “opposite” had a different meaning in this context, referring to one end of the valve relative to its other end (similar to a first end and a second end), as not supported by the claims and inconsistent with the drawings presented in the patent specification. 

Interestingly, the Full Court also relied on dependent claims 3 and 7 of the patent to aid in construction of claim 1, albeit acknowledging that claim 7 provided a weaker support for the construction.  The Full Court highlighted that there is nuance in the construction of a word in different contexts within a specification. Their Honours found that “the word ‘opposite’ is sensitive to context”, and Justice Rofe’s construction of the term did not involve construing the word to have “different meanings” throughout the specification. 

Finally, the Full Court rejected Airco’s criticism that Justice Rofe construed the claims contrary to the evidence of both parties’ experts, reminding the parties that “it is for the Court to determine the meaning of the language of the claims, aided by the evidence of experts to assist in understanding unfamiliar terms and the technical context of the subject matter”, as “expert opinion does not supplant the judicial role”. 

Implications 

Key takeaway points from Full Court’s decision can be summarised as follows: 

  1. Claim Construction is Crucial: The decision underscores the critical importance of clear and correct claim construction in patent litigation. The Court’s role in construing these claims is central to resolving patent disputes.
     
  2. Functional Interpretation: Functionality and the broader context of an invention can be key considerations in claim construction.  In this case, the term “close proximity” was construed not just in terms of physical location but in the context of the entire fuel cell’s efficient operation.  This emphasises the need to consider the practical function of the claimed features.
     
  3. Expert Testimony Is Important but Not Determinative: Expert witnesses may play a critical role in providing insights into technical matters and helping the Court understand the nuances of a patent’s construction, albeit that the final say on interpretation resides with the Court.  But ultimately it is the Court’s role to construe the claims, not the expert’s.  This means that the Court may adopt or reject the construction proffered by an expert, or adopt an alternative construction.
     
  4. Dependent Claims Provide Support: It is known that dependent claims within a patent can provide valuable support for the interpretation of key terms in independent claims.  In this case, dependent claims 3 and 7 were cited to support the construction that the relative location of components should be assessed based on the fuel cell as a whole.   

At a practical level, for businesses and inventors seeking to obtain or enforce patents, this decision underscores the usefulness of carefully drafting and reviewing patent specifications to ensure that key terms and phrases are clearly defined and contextualised to support a purposive interpretation of the claims. 

About Pearce IP

Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the life sciences industries (in particular, pharmaceutical, biopharmaceutical, biotech, ag-tech and food tech).  Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022.  Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property.

Our leaders have been recognised in virtually every notable IP listing for their legal, patent and trade mark excellence including: IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WIPR Leaders, 5 Star IP Lawyers, Best Lawyers, and Australasian Lawyer 5 Star Awards, and have been honoured with many awards including Australian Law Awards – IP Partner of the Year, Women in Law Awards – Partner of the Year, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.

Naomi Pearce

Naomi Pearce

CEO, Executive Lawyer (AU, NZ), Patent & Trade Mark Attorney (AU, NZ)

Naomi is the founder of Pearce IP, and is one of Australia’s leading IP practitioners.   Naomi is a market leading, strategic, commercially astute, patent lawyer, patent attorney and trade mark attorney, with over 25 years’ experience, and a background in molecular biology/biochemistry.  Ranked in virtually every notable legal directory, highly regarded by peers and clients, with a background in molecular biology, Naomi is renown for her successful and elegant IP/legal strategies.

Among other awards, Naomi is ranked in Chambers, IAM Patent 1000, IAM Strategy 300, is a MIP “Patent Star”, and is recognised as a WIPR Leader for patents and trade marks. Naomi is the 2023 Lawyers Weekly “IP Partner of the Year”, the 2022 Lexology client choice award recipient for Life Sciences, the 2022 Asia Pacific Women in Business Law “Patent Lawyer of the Year” and the 2021 Lawyers Weekly Women in Law SME “Partner of the Year”.  Naomi is the founder of Pearce IP, which commenced in 2017 and won 2021 “IP Team of the Year” at the Australian Law Awards.

Chris Vindurampulle PhD

Chris Vindurampulle PhD

Executive, Patent & Trade Mark Attorney

Chris is a senior Patent and Trade Mark Attorney who is registered to practice before the intellectual property offices of Australia and New Zealand.  He is experienced in patent drafting, patent and trade mark prosecution and opposition, and freedom to operate, opinion and due diligence work.  Through his experience and delivery of highly-regarded client service, Chris has been recognised as a leading patent practitioner having been listed in the IAM Patent 1000 as a recommended individual for patent prosecution, and a Rising Star in 2021, 2022 and 2023 by Managing IP.

Kate Legge

Kate Legge

Special Counsel, Lawyer

Kate is an experienced IP and patent lawyer, providing IP leadership for pharmaceutical product development and commercialisation in global markets – from initial scoping through to post-launch.

She has developed and implemented global IP strategies over more than 15 years at multi-national pharmaceutical companies. She is an Australian qualified and registered legal practitioner, and has a Master’s degree in IP Law and a BSc in biochemistry.

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