‘For’ means ‘suitable for’ – 15 May 2015
Last year, in our article ‘Novelty and infringement by intended use’ we:
- observed that much can turn on the extent to which claim scope is limited by recitals of intent;
- outlined what we regard as an orthodox approach to recitals of intent; and
- outlined recent Australian authority that we regard as suggestive of a departure from the orthodox approach.
Since that article, the Australian Full Federal Court[1] has construed the oft-debated term ‘for’ in line with the orthodox approach.
The decision[2] (Garford) relates to an ‘apparatus … characterised by a feed means for supplying a multi-strand cable from a rotatable supply reel …’ and includes[3]:
‘… the DSI parties submitted that the language of claim 1 does not require that the apparatus have a supply reel and that claim 1 will be satisfied if the feed means is suitable for the purpose of supplying cable from a rotatable supply reel. The DSI parties also submitted that the experts were agreed that the [prior art] disclosed a feed means (the tension displacement means) that is suitable for supplying cable from a rotatable supply reel.
The question is whether claim 1 requires that the apparatus have a rotatable supply reel or that it merely be capable of receiving cable from a rotatable supply reel. It is true that the description of the invention in the body of the patent specification (including the drawings) discloses the presence of a cable being fed from a rotatable supply reel. However, we think this is because the patent specification not only describes the relevant components that make up the combination of the claimed invention but also how it operates. In these circumstances, we do not think the description of the invention in the patent specification advances the matter.
A claim to an apparatus for a particular purpose is a claim to an apparatus that is suitable for that purpose: see, for example, Bühler AG v Satake UK Ltd [1997] RPC 232 (Jacob J); Insituform Technical Services Ltd v Inliner UK Plc [1992] RPC 83 at 102 (Aldous J). To establish infringement of such a claim it is not necessary for the patentee to establish that the apparatus is intended to be used for that purpose. The patentee need only show that the apparatus is suitable for that purpose. The fact that the apparatus could be modified to make it suitable for a specified purpose does not put it within the scope of the claim unless it has been so modified.
We are satisfied (as was the primary judge) that the evidence established that the apparatus described in the [the prior art] was suitable for use with a rotatable supply reel.
The word “for” appears in claim 1 in four places. In our opinion it is used on each of these occasions in the sense we have identified. If the apparatus and each of the relevant means is suitable for its specified purpose then the requirements of claim 1 will be satisfied. In particular, if the apparatus described in the [prior art] has a feed means suitable for supplying multi-strand cable from a rotatable supply reel then this requirement of the claim will be satisfied’ (our emphasis).
Whilst this reasoning seems unimpeachable, it is difficult to reconcile with the Federal Court’s[4] recent conclusion in Fieldturf[5] that ‘can receive’ in the claims means ‘is designed or intended to receive’. That decision included[6]:
‘First, an integer of claims 1 and 2 and dependent claims is that the “synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill” (emphases added).
TigerTurf submitted that the word “can” ought to be understood as meaning “capable of”, as this “meaning is consistent with the meaning of the word as a matter of ordinary English. The Macquarie Dictionary [Sixth Edition (2013)] defines ‘can’ (relevantly) as ‘to be able to; have the strength, means, authority to”’. Accordingly, “claims 1 and 2 do not require the claimed synthetic surface to have a level of infill to approximately 2/3 height of the ribbons but rather to have a gauge and length whereby the synthetic surface is capable of receiving an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill” (original emphasis).
FieldTurf submitted that this does not mean that “the synthetic surface is capable of receiving sufficient infill to extend two-thirds up the length of the ribbon. Rather, the height of the infill is but one element of a combination…interacting with other elements, to achieve the benefits of the invention. Thus ‘can receive’ in the claims means ‘is designed or intended to receive’”. Otherwise, the integer would include any surface with infill up to any level provided the surface was capable of receiving infill to extend two-thirds up the length of the ribbon, which is an unlikely construction given the claimed benefits of the invention.
I prefer FieldTurf’s construction. The claims are to be construed in context. The invention concerns a field of practical application. It is not concerned with hypotheses or potentialities. In this context, which includes a detailed discussion of preferred infill characteristics (including the two-thirds infill ratio) and associated benefits, the integer is not satisfied by a theoretical potential for the surface to receive the two-thirds infill or for the ribbons to overlap. The integer requires that the surface be designed or intended to receive the two thirds infill and the ribbons designed or intended to overlap’ (original emphasis in underline; our emphasis in bold).
The words of an Australian patent claim must be interpreted from the point of view of the person skilled in the art, and given their plain and ordinary meaning in the context of the patent specification read as a whole. In the Garford and FieldTurf decisions, there is no apparent reason why these principles of construction should lead to anything other than the everyday meaning of the words. Is not ‘for’ more often used to convey design intent that ‘can’?
Whilst Garford comes from higher authority than FieldTurf[7], (particularly in view of the High Court[8] decision[9] discussed in our earlier article), we suggest giving weight to FieldTurf as a cautionary tale as to how claims may be construed.
Further reading
[1] The first appellant court for Australian patent matters
[2] Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6 (30 January 2015)
[3] At paragraphs 120 to 124
[4] The Court of first instance for Australian patent matters
[5] Fieldturf Tarkett Inc v Tigerturf International Limited [2014] FCA 647 (20 June 2014)
[6] At paragraphs 20 to 23
[7] And the relevant portions of FieldTurf may well be obiter
[8] The Court of final appeal for Australian patent matters
[9] Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd [2013] HCA 50 (4 December 2013)
