Claim construction and internal requirements of Australian patent specifications: Full Federal Court
Seafood Innovations Pty Ltd v Richard Bass Pty Ltd  FCAFC 83
In a recent decision concerning the infringement and validity of patents for fish-stunning apparatus, the Full Federal Court has provided guidance on the ambit of the expression “claims defining the invention”, which is a requirement of a patent specification set out in section 40(2) of the Australian Patents Act 1990. Furthermore, the decision applies and reinforces known claim construction principles, and also reinforces the approach identified by the High Court in determining whether or not a claim lacks fair basis.
Facts Of The Case
Seafood Innovations Pty Ltd is the owner of Australian Innovation Patent No. 2006100980 and Australian Innovation Patent No. 2008100126 (the first and second patents, respectively). Both patents relate generally to fish stunning apparatus of a type that is suitable for use in commercial fisheries. To this end, both patents have claims defining a fish stunning apparatus that includes:
- a fish stunning device;
- a fish guide; and
- a trigger.
The patent claims in question
For the purposes of this decision, the significant features of the claims relate to the fish guide. The claims of both patents define that the fish guide has an entrance and an exit, said fish guide guiding a fish below the striker [of the stunning device] so that the piston [of the striker] contacts said fish when the piston is in the extended position”.
The claims of the first patent call for the fish guide to have “a floor [that is] pivotally movable between a first and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit”. In practice, this enables the floor to be put in the first position to arrest the movement of the fish through the guide at the striker for stunning. Subsequently, the floor is moved to the second position, releasing the fish so as to continue through the guide to the exit.
The claims of the second patent require that “the height of the striker is adjustable with respect to the fish guide”. This enables the striker to be brought down onto the head of the fish for stunning.
Submissions and the Court’s decision at first instance
At first instance, Seafood Innovations claimed that Bass had infringed both patents by their manufacture and sale of two fish killing apparatus. Bass denied infringement of the first patent, and admitted infringement of the second patent but claimed that it was invalid. The primary judge found that the first patent was not infringed, and that the second patent was invalid for failing to define the invention. In doing so, the primary judge considered the second patent failed to meet a requirement of section 40(2)(c) of the Patents Act 1990 that the claims define the invention.
In this appeal, Seafood Innovations appealed both findings of the primary judge on infringement and invalidity, while Bass filed a Notice of Contention seeking to affirm that the second patent is also invalid for lack of fair basis.
The Full Court’s findings on appeal
Infringement of the first patent
Both parties conceded that the Bass apparatus took all the physical integers of at least some claims of the first patent. The matter at issue involved the construction of the function expression in these claims: “the floor [moves] from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit” (emphasis added). Whether or not the Bass apparatus infringed the claim turned on the construction of the term “allow” within this expression.
The primary judge observed that the Bass apparatus included movable cheek and top plates, that act together with a movable floor (a “chin plate”) to allow a fish to pass through the guide. The movement of the chin plate to the second (lower) position alone without retraction of the cheek and top plates still prevented a fish from passing through the guide; in other words, collective movement of all three plates was required to allow a fish to pass. In light of this performance of the Bass apparatus, the primary judge held the view that movement of the chin plate did not allow a fish to pass through the fish guide, and consequently that the Bass apparatus did not infringe the claims of the first patent.
On appeal both Justices Bennett and Greenwood held the view that the primary judge’s restrictive construction was incorrect. The reason given for this view was that the language of the claims does not support the position that for a fish stunning apparatus to fall within the scope of the claim, the movable floor must be the only component that permits and restricts the passage of fish through the guide. Placing such a restrictive interpretation on the claims was considered to be importing an impermissible gloss on the claims. Justice Dowsett concurred with Justice Bennett’s findings in their entirety.
Do the claims of the second patent define the invention?
It was accepted by Bass that both of their apparatus infringed the claims of the second patent. However, they contended that the claims did not “define the invention”, and therefore failed to meet one of the requirements of section 40(2)(c). The primary judge held the view that the claims of the second patent did not define the invention, because they did not disclose elements of the invention that were necessary to make the apparatus work. These elements were those features of the preferred embodiment that effectively held the fish for stunning and subsequently released the fish to exit the apparatus; that is, the movable floor of the guide.
Justice Bennett noted that the “monopoly is set out in the claims”, and that the fact that the claims of themselves did not provide adequate instructions to realise the invention did not result in the claims failing to define the invention. It appears that the primary judge took a view on the invention that was clouded by the preferred embodiment when assessing this ground of revocation, although Justice Bennett did not go so far as to draw this conclusion.
It is interesting to observe that the primary judge’s decision appears to suggest that his view was based on the language of claim 1, and then extrapolated to all four claims of the second patent. However, dependent claim 3 contains all the features of claim 1 of the first patent, without defining that the floor allows the fish to pass unidirectionally from the entrance to the exit of the guide.
Are the claims of the second patent fairly based?
Bass contended that the “pivotally movable floor” was an essential integer of the invention and should have been included in the claims. Of course, Seafood Innovations took the opposite view and contended that “pivotally movable floor” was a feature of the preferred embodiment, and that there was no statement in the specification indicating that the feature was “essential”.
Justice Bennett held that:
- the claims were consistent with the broadest consistory statement in the body of the specification; and
- Bass’ analysis “seeks to isolate essential integers from the body of the specification in understanding the described invention”, which is contrary to the approach applied in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd  HCA 58.
It follows that Justice Bennett concluded that the second patent satisfied the requirements of sections 40(2)(c) and 40(3), and that the second patent was not invalid on the grounds pursued by Bass. On the validity of the second patent, both Justices Dowsett and Greenwood concurred with Justice Bennett’s findings.
This decision applies and reinforces well-established principles in claim construction, and in the assessment of lack of fair basis. In addition, Justice Bennett’s comments put to rest the notion that the expression “defining the invention” in section 40(2) requires that the claims specify all the components needed to put the invention into practice. Thus, the claims are only required to define the monopoly provided to the patentee.