Patent succeeds a second time – Full Federal Court rules Australian Mud Company’s patent is valid and infringed

Patent succeeds a second time – Full Federal Court rules Australian Mud Company’s patent is valid and infringed

Patent succeeds a second time – Full Federal Court rules Australian Mud Company’s patent is valid and infringed

Case note on Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162

 

A very small proportion of Australian patents are the subject of Federal Court judgments.  Notably, Australian Mud Company’s standard patent no. 2010200162 (AMC’s patent) has now been the subject of two different sets of Federal Court proceedings.

In the first proceedings, Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109, AMC’s patent was found to be infringed, but its validity was not contested (because of the outcome of related court proceedings concerning different patents in the same family).

In the second, most recent, proceedings, AMC’s patent was found to be valid and infringed both at trial and on appeal.  Construction of the claims was the principal issue in dispute in the appeal: Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162.

 

The Appeal Court’s decision

AMC’s patent is directed to a method of orienting a drilled sample of rock (a core) obtained during geological surveying operations.  Core orientation tools indicate the original orientation of a drilled rock sample (the orientation when the rock was underground), and this information allows geologists to more accurately determine the location of mineral bearing ore deposits.

The claims of the patent are directed to a method of orienting a core, in part by recording the orientation of the inner tube of the core drill at predetermined time intervals during drilling.  Two timers are needed to carry out the method, one timer which records the orientation of the inner tube (the downhole timer) and one timer on the surface (with the operator).

The core issue – no pun intended – in the appeal was the meaning of, and the relationship between, the timers used in the claimed method.  Relevant parts of claim 1, with some commentary, are as follows.

drilling a core sample from a body of material with a core drill having an inner tube: Step 1

recording the orientation of the inner tube at predetermined time intervals during said drilling, the time intervals being referable to an initial reference time: Step 2 [This refers to the downhole time.]

inputting the specific time beyond the reference time representative of when the core sample was separated from the body of material: Step 3 [This refers to the time the core is broken.  This step occurs on the surface.]

removing the inner tube, with the core sample held therein in fixed relation to it, from the body of material: Step 4 [This refers to removing the core from the ground and bringing it to the surface.]

relating the inputted specific time to the recorded time intervals to obtain an indication of the orientation of the inner tube and consequently the core contained therein at the specific time: Step 5 [This refers to relating the downhole time measurements to the surface time measurement.]

Globaltech asserted that claim 1 required:

  • both the surface timer and the downhole timer to count by reference to the same initial reference time, that is, for the two timers to be synchronised; and
  • the relevant calculation relating the downhole time to the surface time (in Step 5) is made from the starting time to the core break time.

The one embodiment in the specification described a method which conformed to Globaltech’s construction of claim 1.

In contrast, AMC asserted that the calculation in Step 5 can be made either from the start time to the core break time, or from the end time back to the core break time. 

The Full Court (Kenny, Robertson and Moshinksky JJ) unanimously agreed with AMC’s broad construction, finding that:

the word “relating [in Step 5] is a broad term.  In this context, it encompasses any means of relating the inputted specific time to the recorded time intervals so as to obtain an indication of the orientation of the core sample at the specific time’ (at [124], emphasis added).

In response to Globaltech’s focus on the fact that the one embodiment described in the specification was narrower than AMC’s construction, the Court noted that ‘it is usually not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment’ (at [94]).

Claim 6 assisted AMC’s construction. Claim 6 stated that a particular time is ‘representative of a duration of time relative to the initial reference time‘.  The Court considered that claim 6:

“… suggests that when the patentee intends to indicate that the time of a core break is to be measured in a way that is referrable to the initial reference time, it says so expressly” (at [143]).

Given the Court’s construction, Globaltech’s core orientation tool infringed the claims in suit.

 

Clear and fairly based

Globaltech also asserted that AMC’s patent was invalid for lack of clarity and lack of fair basis.  These invalidity claims were each dismissed quickly by the Full Court, essentially because they could not be sustained in light of the Court’s claim construction.

In relation to fair basis, Globaltech submitted that, when the claims took the meaning given to them by the trial judge (and AMC), they lacked fair basis because they were not supported by any matter in the specification other than the consistory clauses, given that, in particular, there was no example described in the specification of a method where the calculation in Step 5 was made from the end time back to the core break time.  The Full Court rejected Globaltech’s argument, noting the claims followed the terms of the description in the patent, and there was nothing in the balance of the description suggesting that the invention was narrower than the claims.

 

Lessons from the case

Often patents contain numerous claims (perhaps upwards of 40 claims), and, if a dispute arises, only a smaller number of those claims might be alleged to be infringed and invalid.  In patent litigation, parties tend to focus heavily on those claims “in suit”.

This case is a timely – no pun intended – reminder that, among other things, the meaning of words or phrases in a patent is to be resolved by considering the patent as a whole, and in particular, that construction issues arising in some claims might be resolved by considering whether, and if so, how, related terms are used in different claims.

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