Australian patent claims held to be clear … again – 2 October 2014
Last year in our article “Construing the (almost) un-construable“, we described some (then) recent authority as continuing the Australian tradition of refusing to hold claims invalid for lack of clarity, and mentioned that the authority had been appealed.
The appellant Court’s decision has now been published. The appeal has been dismissed, thus continuing the tradition.
The decision highlights:
- that claim construction is ultimately for the Court; and
- the malleability of the English language (the Court’s construction may not be what you might expect!).
Relevant background is set out in our earlier article and is not repeated here. Central to the appeal decision was whether two integers of the claim should be read independently. In keeping with modern practice, the Court divided the claim language into nine distinct integers. Integers 7 and 8 appeared within the same paragraph of the claim:
(7) said beads having an average Particle size within the range of 1.5-4.5 millimeters and
(8) a particle size distribution defining, major component of said beads within a relatively large incremental size range and a minor component of said beads within a smaller incremental size range.
The appellants argued that the claim was ‘unintelligible, incapable of infringement and invalid, primarily because integer 8 of claim 1 did not identify a “specified midpoint”‘. We understand ‘midpoint’ to be a reference to a particle size at which the specified size ranges meet, and observe that the claim does not explicitly specify that there be any such midpoint – for example, there is no explicit prohibition against:
- the specified size ranges overlapping so that some particles fall into both ranges; or
- the specified size ranges being spaced so that some ‘medium sized’ particles sit between the two ranges.
The appellants’ argument was forcefully rejected. The Court considered it self-evident that integer 8 must be read with integer 7 and concluded:
‘In effect, the appellants’ argument is that there is no way of deciding how to identify a larger or a smaller bead. Given the reference in integer 7 to average particle size, we have no doubt that it was to be the criterion for distinguishing between relatively large and relatively small particles’.
The Court gave weight to the two integers being presented in the same paragraph:
‘Paragraphing is an aspect of punctuation which is designed to identify discrete parts of the subject matter in question’.
The decision is a reminder that the English language is a malleable thing – a reminder both for draftsmen and for those charged with interpreting the draftsmen’s work:
- For draftsmen – whilst here the patentee has won the day (with all the benefit of hindsight), its business goals may have been achieved without the expense and disruption of Court proceedings if the patent had been worded more clearly.
- For interpreters – as unintelligible as a claim may seem, a Court (with the benefit of expert testimony, etc) may well be able to give it meaning.
 At paragraph 30
 At paragraph 42
 At paragraph 37