Australian Federal Court hands down Markman-like decision on patent construction
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd  FCA 467
A recent judgment of the Federal Court of Australia has shown a willingness to hear and decide upon patent infringement cases in a phased manner—first ruling on the manner in which patent claims should be constructed and only then (if the parties choose to continue) hearing and deciding upon resultant issues of patent infringement or validity. This approach is a common practice in US patent litigation (and where it is referred to as a Markman hearing) but until now has been largely absent from Australian patent litigation.
Britax’s claims of patent infringement
In 2009, child accessories manufacturer Britax Childcare Pty Ltd sought relief from a competitor, Infa-Secure Pty Ltd, for infringement of nine innovation patents and one Australian standard patent concerning child safety seats. Infa subsequently sought revocation of patents upon various grounds of validity.
Interpretation of the claims
Due to the number of patents, the Federal Court decided to hand down an initial decision specifically concerning the claim construction only. Issues regarding validity and infringement are to be considered by the Court later should the parties wish to continue litigation. This appears to be the first time an Australian Court has issued a decision specifically with regard to claim construction without also considering issues such as validity or infringement.
Due to a significant amount of patent litigation turning on the interpretation of the language in the claims, the practice of handing down a decision specifically in relation to the claim construction provides insight for both parties regarding the likely outcome of the litigation should the Court be required to continue hearing the matter. As a result, this practice, which the Federal Court of Australia now appears willing to apply, at least in some circumstances, encourages a cost effective and timely process to promote settlement between parties in response to the Court’s interpretation of the claims.
Inventiveness of experts
In this decision, the Federal Court also shed light upon the level of inventiveness which an expert can possess for assisting the Court with the claim construction. Specifically, Justice Middleton acknowledged that traditionally, for issues such as inventive step, the person skilled in the relevant art is a non-inventive worker in the relevant field of technology in Australia. However, His Honour concluded that the same qualities were not necessary for an expert who provides evidence for the purposes of assisting the Court with matters of claim construction.
Thus, potentially an expert whom may be considered too inventive for assisting the Court with issues such as inventive step, may still provide assistance in relation to interpretation of the claims. This is particularly important to litigants as this decision potentially broadens the range of experts that can be utilised for the purposes of assisting the Court with interpretation of the claims.