Australian Court adopts a non-literal patent claim interpretation

Australian Court adopts a non-literal patent claim interpretation – 2 February 2016

The Full Federal Court [1] recently considered [2] two patents that were exceptional in that a non-literal interpretation of the patent claims was called for. Both patents were to garden hoses that increased in length under the influence of the water pressure within.

One of the claims in question specified that a ‘fluid flow restrictor creates an increase in water pressure’ and ‘said increase in water pressure expanding [various components] and thereby substantially increasing a length of said hose’ (our emphasis).

The majority [3] note that this is an exceptional case and opine [4] that the Judge of first instance was correct to construe the underlined wording as ‘a reference to the overall increase in water pressure within the hose resulting from the tap turned on’:

‘In summary, we consider that the present case is one of those exceptional cases where a skilled addressee would not construe the integer with the word “said” in such a literal way. First, to a skilled addressee it would make little, if any, scientific or technical sense. It does not accord with how the operation of a garden hose and the causes of an “increase” in pressure would be understood. Second, a skilled addressee reading the integer and claim in the context of the specification as a whole would not use such a literal interpretation. Third, the skilled addressee when reading integer 1.8 in the context of and with integers 1.7 and 1.9 would appreciate that a literal meaning of “said” was not being used. This is one of those occasions referred to by Lord Hoffmann [5] as not expected to happen very often. Moreover, and again to use his language, there is a “rational basis” in the present case for departing from the literal use of the word “said”. His Honour departed from this literal use, and we see no error in his approach.’ [6]

This is indeed an exceptional case. It is unusual for an Australian court to explicitly depart from the literal meaning of the claim wording. The decision includes a general statement of principle in the following terms:

‘A claim is to be construed from the perspective of a person skilled in the relevant art as to how such a person, who is neither particularly imaginative nor particularly inventive (or innovative), would have understood the patentee to be using the words of the claim in the context in which they appear. A claim is to be construed in the light of the common general knowledge before the priority date.’ [7]

This is consistent with the approach of the Federal Court [8] and Full Federal Court [9] in recent years, although of course reasonable minds can differ on the application of this principle. Indeed Justice Nicholas was in dissent in this case. Leave to appeal to the High Court [10] has been sought. If leave is granted, we may well receive confirmation or modification of this accepted principle. In the meantime, the case is a reminder that:

  • whilst Australian Courts have consistently warned against over-meticulous verbal analysis, meticulous analysis is called for at the drafting stage; and
  • in the context of a freedom to operate assessment, one cannot disregard a competitor patent on the bases of ‘some literal and grammatically parsed constructions devoid of practicality and context’. [11]

[1] The court of first appeal for Australian patent matters

[2] In Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179

[3] Justices Kenny and Beach

[4] At paragraph 94

[5] A reference to the oft-cited paragraph 34 of Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9

[6] At paragraph 111

[7] At paragraph 35

[8] The court of first instance for Australian patent matters

[9] The court of first appeal for Australian patent matters

[10] Australia’s most authoritative court

[11] Words drawn from paragraph 26

Authored by

Ben Mott Patent Attorney & Mechanical Engineer Ben Mott

Mechanical Engineer & Patent Attorney