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Background

Australia bats above its average in terms of the number of high-profile litigious patent disputes conducted before its courts. Despite its relatively small population, the large consumer appetite and rigorous court process make Australia a popular testing ground before commencing litigation in other major jurisdictions, such as the United States (U.S.) and Europe.

Infringement proceedings are heard in the first instance by a single judge of the Federal Court, often in conjunction with revocation proceedings. There is an automatic right of appeal from a decision of a single judge of the Federal Court in infringement/revocation proceedings, which will be heard by a full bench of the Federal Court (usually 3, but sometimes 5 judges). However, leave must be sought to appeal a decision of the Full Federal Court to the High Court of Australia (Australia’s highest appellate court).

Relief for infringement can be in the form of an injunction and, at the option of the plaintiff, either damages or an account of profits. There is no cap on the amount of damages that can be awarded, and additional damages may be awarded by the court having regard to such matters as the flagrancy of the infringement, the need to deter similar infringements, the conduct of the infringer and any benefits accrued by the infringer.

In contrast to its U.S. and many of its European counterparts, in assessing infringement the Australian courts have ostensibly rejected the doctrine of equivalents. Nonetheless, a purposive approach to claim construction affords some degree of flexibility for Patentees seeking to enforce their patents in Australia

Infringement

Under section 13 of the Patents Act 1990 (Cth) (Patents Act), a Patentee has the exclusive right to exploit a patented invention and to authorize another person to exploit the invention. Therefore, a patent is infringed if a person exploits the patented invention without the Patentee’s authorization, by:

  1. making, hiring, selling or otherwise disposing of a patented product;
  2. offering to make, hire, sell or otherwise dispose of a patented product;
  3. using or importing a patented product;
  4. keeping a patented product for the purpose of doing an act described in 1, 2 or 3;
  5. using a patented method or process; and/or
  6. doing an act described in 1, 2, 3 or 4 with a product resulting from the use of a patented method or process.

Section 117 of the Patents Act also provides that supply of a product may also constitute an infringement if the use of that product would infringe a patent. In this context, contributory infringement is said to have occurred if:

  1. the product is capable of only one reasonable use; or
  2. the product is not a staple commercial product and the supplier has reason to believe that the person would put it to an infringing use; or
  3. supply of the product includes any instructions or inducement to put it to an infringing use.

There are, however, a number of statutory exemptions to infringement, including certain prior use, acts for obtaining regulatory approval and experimental use.

Claim construction

To determine whether infringement has occurred, the claims must first be construed by the court through the eyes of a skilled person. The rules of claim construction are well established in Australia and were summarized in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 at [67] as follows:

  • the proper construction of a specification is a matter of law;
  • a patent specification should be given a purposive, not a purely literal, construction;
  • the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification;
  • it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification;
  • experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning; and
  • it is for the Court, not for any witness however expert, to construe the specification.

Doctrine of Equivalents

The doctrine of equivalents was considered obliquely by the Full Federal Court on appeal in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (Lundbeck). In this case, Lundbeck asserted that Alphapharm infringed a claim of its LEXAPRO (escitalopram) patent directed to a method of manufacturing escitalopram via a cyano-substituted diol intermediate, by manufacturing and importing into Australia goods containing escitalopram. Alphapharm argued that it had not infringed Lundbeck’s method claim because it used a bromo-diol intermediate in place of the claimed cyano-diol intermediate.

At first instance, the trial Judge considered the use of the bromo- instead of the cyano-substituent to be ‘evanescent’ and immaterial to the process because the bromo-substituent was replaced by a cyano-substituent in a subsequent step. Thus, the trial judge held – in an apparent nod to the doctrine of equivalents – that the Alphapharm process did not infringe Lundbeck’s method claim. However, this finding was overturned on appeal, with the Full Court stating at [93]:

The author of [the method claim] clearly had in mind the existence of a convention whereby a substitutable element could be represented by the symbol “R”. The failure to use that symbol instead of the symbol “NC” signified that the cyano-diol was an essential integer of the method disclosed by [the process claim]. It follows that a method that involves substitution of the bromo-diol for the cyano-diol does not infringe the method disclosed by [the method claim]. (emphasis added)

This statement was a strong indication by the Full Court that it rejects the doctrine of equivalents approach, and that an essential feature of a claim cannot be substituted for an alternative that achieves the same result in the same way.

Purposive Construction

While claim construction in Australia is based on a plain reading of the claims through the eyes of a skilled person, a practical, common-sense approach must be applied (as opposed to a purely literal one). In doing so, the Australian courts have adopted a purposive approach to construction, following the seminal UK House of Lords decision in Catnic Components Limited & Anor v Hill & Smith Limited [1982] RPC 183 (HL) (Catnic).

In Catnic, the claims at issue concerned a galvanized steel lintel having a rear support member ‘extending vertically’ from the base plate. The alleged infringing lintel contained a support member that extended upwardly at an angle of 84°. While not extending precisely vertical (i.e., 90°) as required by a purely literal reading of the claims, the House of Lords held that infringement had nonetheless occurred because a skilled person would recognise that a precisely vertical support member was not essential to performing the invention.

The relevant question when applying a purposive construction is ‘what the person skilled in the art would have understood the Patentee to be using the language of the claim to mean’ (Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKPC 6; (2004) 64 IPR 444 at [34]).

Substitution of terms in a claim

In 2018, the Full Federal Court made it abundantly clear in GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited [2018] FCAFC 71 (GSK) that a purposive construction does not extend to the substitution of one term in the claims with another. In this case the Full Court considered whether claim 1 should be construed to correct a mistake, where the Patentee had used the term ‘basket’ when it had intended to use the term ‘cylinder’. This was relevant to the question of infringement because the alleged infringing product contained a cylinder, not a basket.

The Full Court held that the claims were not infringed because a skilled person would not have understood the Patentee to be using the term ‘basket’ to mean ‘cylinder’ (even if this could be deduced by the skilled person to be an obvious error based on the specification). The Full Court distinguished circumstances in which the court is required to re-write the claims to give effect to the Patentee’s intentions from those in which a skilled person would understand there to be some leeway in the parameters of the language used. For example, in Catnic, in the context of the invention a skilled person would understand ‘vertical’ to mean ‘substantially vertical’.

In cases such as Catnic, the Full Court in GSK acknowledged at [110]:

These are situations in which the court endeavours to give effect to the skilled addressee’s understanding of the claim language in preference to a purely literal or grammatical construction, not because the skilled addressee understands that the claim contains a mistake that requires correction, but because, when read in the context of the document as a whole and the common general knowledge, the words used would convey that meaning to the skilled addressee.

Where a Patentee has made a mistake in the claim language, the only possible recourse is to seek an amendment to the specification, which presents its own challenges and limitations once a patent has been accepted (allowed). Furthermore, the Patentee’s right to recover damages or an account of profits in respect of any infringement of the patent before the date of such an amendment is limited to circumstances in which the court is satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge.

Otherwise, the Patentee is taken to have drafted the claims in words of its own choosing and the purpose of the court is to interpret those words through the eyes of the skilled addressee, not to re-write the claims as the Patentee intended. Thus, while not expressly rejecting the doctrine equivalents, the approach of the Australian courts to date signifies that the substitution of alternatives in a claim will not be considered favourably.

This post was written by Lisa Mueller and Claire Gregg of Davies Collison Cave Pty Ltd.

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