Biosimilars Deals 2021

Handing down the first Australian intellectual property judgment of 2023, the Full Federal Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7 has dismissed Airco Fasteners Pty Ltd’s (Airco’s) appeal and affirmed the purposive claim construction of primary judge Justice Rofe.

Key takeaways

The Full Court confirmed that:

• The Court can take into account appropriate, functional considerations when construing the specification in the context of constructing a claim
• Dependant claims can be used to assist in the construction of independent claims
• Key words repeated throughout a patent specification can be interpreted sensitive to context
• The Court must determine the construction of patent claims, aided by expert evidence, however that opinion evidence does not supplant the Court’s role

Background

The Illinois Tool Works Inc (Illinois) patent in question related to an in-can fuel cell metering valve, primarily used in combustion tools such as nail guns. The invention includes “an internally mounted metering valve arranged such that a measured dose of fuel is dispensed each time the stem is pressed into the “open” position”.^[1]

Illinois brought patent infringement proceedings against Airco who were importing, supplying and selling combustion tool fuel cells in Australia.

At first instance, Justice Rofe undertook an extensive construction analysis of the claims, and held that Airco’s combustion tool fuel cells had infringed Illinois’ patent.^[2]

Airco’s Appeal

Airco appealed to the Full Federal Court arguing that Justice Rofe erred in her construction of Illinois’ patent claims. The two primary issues before the Court were whether the Airco products had, as her Honour found:

• “a fuel metering chamber disposed in close proximity to said closure” (close proximity integer); and
• “a valve body having a second end opposite said fuel metering chamber located within said container” (second end opposite integer).^[3]

Concerning the close proximity integer, Airco argued that her Honour’s construction failed to give effect to the natural meaning of “close proximity” as emphasising the requirement of closeness, rather than simply proximity. Airco submitted that this was contrary to the expert evidence.^[4]  Further, Airco argued that because claim 1 mandated that the fuel metering chamber was within the valve body, a fuel metering chamber located in that part of the body furthest from the closure could not be characterised as being in “close proximity” to the closure.

Airco submitted that the second end opposite integer ought to have been construed to require the fuel metering chamber be located at the other (ie “opposite”) end of the valve body to the “second end” of the valve body and outside (not “within”) the fuel container. The appellant also argued that the construction adopted by the primary judge involved construing the word “opposite” to have different meanings in the same document.

The Full Court Decision

Justices Rares, Moshinsky and Burley unanimously dismissed the appeal and upheld the decision of Justice Rofe.

The Full Court agreed that the phrase “close proximity” is used to describe the disposition of the fuel metering chamber relative to the closure in the context of the fuel cell as a whole. The Full Court affirmed that considering functionality was appropriate to construction, finding that “the fuel metering chamber does not need to be positioned adjacent to, or as close as possible to, the closure in order for the internal valve fuel cell of the invention to be configured in a manner that operates more efficiently and effectively than the fuel cells described in the prior art incorporated by reference into the Patent. The words “in close proximity” do not require this.”^[5]

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.^[6]

Finally, the Full Court rejected Airco’s criticism that Justice Rofe, to some extent, construed the claims contrary to the evidence of both parties’ experts. Their Honours held 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”, and that “expert opinion does not supplant the judicial role”.^[7]

Conclusion

The Full Court has reaffirmed some key principles of patent construction, and has highlighted that the judicial role to construct patent claims cannot be usurped by expert evidence. It will be interesting to see whether these key issues will be expanded upon in future cases, and particularly how terms may be construed ‘sensitive to context’ throughout a specification.

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 broader interpretation of the claims.

—
^[1] Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7 at [7].
^[2] Illinois Tool Works Inc v Airco Fasteners Pty Ltd [2022] FCA 495 at [249].
^[3] Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7 at [4].
^[4] Ibid at [37].
^[5] Ibid at [55].
^[6] Ibid at [65].
^[7] Ibid at [59].

About Pearce IP

​Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the pharmaceutical, biopharmaceutical and life sciences industries. 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. Pearce IP leaders are well recognised as leading IP practitioners.

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, Women in Law Awards – Partner of the Year, Best Lawyers and Australasian Lawyer 5 Star Awards, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.

March 8 is International Women’s Day, a day where we together recognise the unique challenges women face around the world and seek to advance gender equality and the rights of women in a positive, respectful way.

Pearce IP has a female founder and more than 80% of its leaders across the firm are women.  It is a place where it is “normal” to see women in leadership and where pay equity is a ‘given’. We are proud to have a majority leadership of capable, respected women, which is rarely seen in law firms in Australia. Pearce IP also has a celebrated female workforce of above 80%.

In honour of International Women’s Day, we asked Pearce IP’s Executive Lawyer, Patent and Trade Mark Attorney, Eliza Jane Saunders about her experience as a woman in law, and her journey to Executive. Quadruply qualified as a lawyer, patent attorney, trade mark attorney, and molecular biologist, and with over 20 years of legal practice, Eliza discusses the challenges she has overcome, influences in her life and advice she would give to young women considering a career in law.

Who were the most significant female role models in your life?

The most significant female influence in my life, including the best piece of advice I ever received, came from my mother.  Despite having a very high IQ my mother was not given the opportunity to have a good education and pursue a career.  She therefore instilled in me how lucky I was to have such opportunities.  She always said, “it doesn’t matter what you choose to do, be the best at it and you will succeed”.  It was based on this influence that I focussed myself on pursuing a career in an area of law that I was really interested in, life sciences intellectual property.  Irrespective of career, I encourage all girls, and women to choose a career in a field where you have added natural abilities, whether it is technical skills, artistic qualities, public speaking skills etc.  By following this advice, being the best you possibly can be in that field will come naturally.

Pearce IP is refreshingly different for me as when I first commenced practice as a lawyer, I faced a myriad of challenges that my male counterparts did not.  While some aspects of the workplace have improved for women over time, barriers still exist and I am passionate about seeing them removed and all women being provided with equal opportunity.

20 years ago, it was not easy for women to have a successful career and a family.  Most successful women I knew and worked with in law and in the patent attorney profession did not have children.  When I started my family 14 years ago, there was no paid maternity leave and the perception was that your career would suffer.  But, you not only lose traction in your career, returning to the workplace is also challenging. Today, parental leave it is far more acceptable and encouraged with most firms providing both mothers and fathers with paid parental leave.  But we can still do better when reintroducing women back to the workplace after parental leave to ensure they feel both supported and enabled to succeed.

Another challenge for women within a law environment has traditionally been that women are generally more gentle, kind and compassionate than men and don’t “sell” themselves as well. I think this is changing as society has become more appreciative of authenticity and the value of women in all workplaces.

There have also been advances over the past 20 years with technology, and with that, transparency, which has created a more equal playing field for women.

I have overcome every challenge thrown at me in the workplace by running my own race, not comparing myself to others, being grateful for the opportunities I have had and valuing my own worth.

What makes Pearce IP refreshingly different to the firms that made it hard for women to thrive?

Pearce IP has associated with it none of the stereotypes that can arise in the vast majority of law firms. First, the founder, Naomi Pearce is a dedicated mother and to that extent represents a more realistic humane and nurturing approach. Second, although an ultra-perfectionist herself, Naomi builds up her staff, focussing on all their positive attributes and successes rather than getting bogged down in any unrealistic negative. Thirdly, Pearce IP is not just a firm for women but is equally balanced in many respects, making for a wonderfully diverse working environment.

Looking to the future, what lessons do you want to pass on to the next generation of female lawyers?

As a leader and a mother, I encourage all women to pursue whatever career they are passionate about.  It is like falling in love, you know it when you see it and you will know there is no other career you wish to pursue.  If there is a particular field of law you dream of, focus on that, study more about it, look for and pursue as many opportunities as possible as you can obtain in that field, and last of all, do not give up.  You will face rejection and setbacks at times as standards are incredibly high in the legal profession.  Like in any career, perseverance and determination will result in a very rewarding career.

Surround yourself with good people, be driven to be the best at what you do and celebrate your successes, always.

—
Pearce IP’s founder Naomi Pearce is the 2022 Asia Pacific Patent Lawyer of the Year at the Women in Business Law Awards, is the only Australian practitioner recognised by WIPR as a Diversity Champion in IP for 2022, and the only Australian practitioner honoured by WIPR Diversity in 2021 in the world’s top 100 Influential Women in IP.  Naomi was honoured to be the recipient of the peer reviewed Lawyers Weekly Women in Law Partner of the Year (SME Law) in 2021.  Pearce IP was also one of 5 firms shortlisted for the jurisdiction award for Australia at the 2022  Women in Business Law Awards, an award which celebrates “law firms that have developed strong innovative practices and projects that highlight gender diversity”.

Pearce IP’s founder and CEO, Naomi Pearce says:

“I am incredibly proud of our dedicated lawyers and attorneys who are thriving in the Pearce IP “work from anywhere” business model.

The challenges faced by women facing a career in law are significant, and may appear overwhelming at times, but the fact that 80% of Pearce IP’s leaders are women is testament to the fact that in the right environment, women in law can thrive.

Today, on International Women’s Day, I celebrate Pearce IP’s diversity, and honour and congratulate our female leaders Eliza Jane Saunders, Jacinta Flattery O’Brien and Adele Chadwick and their teams for all they have endured and overcome, and all they have achieved professionally and personally throughout.”

About Pearce IP

​Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the pharmaceutical, biopharmaceutical and life sciences industries. 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. Pearce IP leaders are well recognised as leading IP practitioners.

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, Women in Law Awards – Partner of the Year, Best Lawyers and Australasian Lawyer 5 Star Awards, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.

Learn more about how Pearce IP demonstrates, promotes and leads diversity in the workplace.