Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4)
[2015] FCA 651
•30 June 2015
FEDERAL COURT OF AUSTRALIA
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651
Citation: Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651 Parties: BRITAX CHILDCARE PTY LTD (ACN 006 773 600) v INFA-SECURE PTY LTD (ACN 092 222 994); INFA-SECURE PTY LTD (ACN 092 222 994) v BRITAX CHILDCARE PTY LTD (ACN 006 773 600) File number: VID 109 of 2009 Judge: MIDDLETON J Date of judgment: 30 June 2015 Catchwords: PATENTS – construction – reading specific terms in context of the patent as a whole – infringement – validity – external fair basis – internal fair basis – novelty – inventive step – innovative step – utility – clarity.
PATENTS – nature of skilled addressee – inventiveness of skilled addressee – hindsight – common general knowledge – evidence of an inventor.
PATENTS – modification statements – nature and purpose of consistory clauses.
EVIDENCE – nature of evidence of a skilled addressee – compliance with section 79 of the Evidence Act 1995 (Cth) – sections 135 and 136 of the Evidence Act 1995 (Cth)
Legislation: Evidence Act 1995 (Cth)
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth)
Patents Regulations 1991 (Cth)Cases cited: Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171
Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593
Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411
Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618
Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1
Apotex Pty Ltd v AstraZeneca AB (No 4) (2013) 100 IPR 285
Apotex Pty Ltd v Les Laboratoires Servier Pty Ltd (No 2) (2009) 83 IPR 42
Arrow Pharmaceuticals Ltd v Merck and Co Inc (2004) 60 IPR 548
Aspirating IP Limited v Vision Systems Limited (2010) 88 IPR 52
Australian Mud Company Pty Ltd v Coretell Pty Ltd (2010) 88 IPR 270
Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75
Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (2012) 210 FCR 21
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 2) [2012] FCA 1018
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019
Browne v Dunn (1893) 6 R 67
C Van der Lely NV v Bamfords Ltd (1962) 1A IPR 86
Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 318 ALR 483
Delnorth Pty Ltd v Commissioner of Patents (2013) 100 IPR 175
Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) 78 IPR 463
Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239
Eli Lilly and Co Ltd v Apotex Pty Ltd (2013) IPR 451
Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151
ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20
Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68
Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155
Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21
Lane Fox v Kensington and Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424
Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 1) (2004) 217 CLR 274
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173
Lux Traffıc Controls Ltd v Pike Signals Ltd [1993] RPC 107
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248
Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd (2009) 176 FCR 575
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513
Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43
PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1
Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30
PLG Research Ltd v Ardon International Ltd [1993] FSR 197
Populin v HB Nominees Pty Ltd (1982) 41 ALR 471
Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449
Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238
Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132
SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd (2012) 204 FCR 325
Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd (2007) 73 IPR 257
The Sunnyfield Association v Cronk (2009) 80 IPR 300
The Wellcome Foundation Ltd v VR Laboratries (Aust) Pty Ltd (1981) 148 CLR 262
Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496
Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Williams Advanced Materials Inc v Target Technology Co LLC (2004) 63 IPR 645
Windsurfing International Inc v Petit (1983) 3 IPR 449Date of hearing: 13, 14, 15, 16 August 2013 and 17, 18, 20, 21 February 2014 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 587 Counsel for the Applicant and Cross-Respondent: Mr B J Hess QC with Dr L J Duncan Solicitor for the Applicant and Cross-Respondent: Norman Waterhouse Lawyers Counsel for the Respondent and Cross-Claimant: Ms J Baird SC with Mr R J L McCormack Solicitor for the Respondent and Cross-Claimant: Chrysiliou Lawyers
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 109 of 2009
BETWEEN: BRITAX CHILDCARE PTY LTD (ACN 006 773 600)
ApplicantINFA-SECURE PTY LTD (ACN 092 222 994)
Cross-ClaimantAND: INFA-SECURE PTY LTD (ACN 092 222 994)
RespondentBRITAX CHILDCARE PTY LTD (ACN 006 773 600)
Cross-Respondent
JUDGE:
MIDDLETON J
DATE OF ORDER:
30 June 2015
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.This proceeding be adjourned for directions at 10.15 am on Friday 14 August 2015.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 109 of 2009
BETWEEN: BRITAX CHILDCARE PTY LTD (ACN 006 773 600)
ApplicantINFA-SECURE PTY LTD (ACN 092 222 994)
Cross-ClaimantAND: INFA-SECURE PTY LTD (ACN 092 222 994)
RespondentBRITAX CHILDCARE PTY LTD (ACN 006 773 600)
Cross-Respondent
JUDGE:
MIDDLETON J
DATE:
30 June 2015
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
INTRODUCTION [1] INFRINGEMENT [44] Topic 1 — “carried by” or “with respect to” [45] Topic 2 —“connection strap” or “connection plate” [50] Topic 3 — connection strap (or means) “attached” to the tether strap (or strap) “adjacent the intermediate point” [53] Topic 4 — “wherein the connection strap is attached to the tether strap” [59] Topic 5 — “secured” (with respect) to a “head end of the back rest portion” [63] Topic 6 —“adapted to” [69] Topic 7 — “secured to” and direct connection [74] Topic 8 — harness “loops” at the “ends” [77] Topic 9 — “connected/attached to” and direct connection [81] Topic 10 — “to which” [84] Topic 11 — “harness extends from the backrest portion” [87] Topic 12 — “slidably locate” [97] Topic 13 — “harness comprising…a pair of shoulder straps” [104] Topic 14 — “further includes” [110] Topic 15 — “for connection” [113] Topic 16 — “tethering means for tethering the backrest portion of the child safety seat” [117] Version 1 [122] Versions 1b and 3 [124] Versions 4 and 5 [126] Topic 17 —“second aperture” [129] Topic 18 —“substantially as illustrated” (the “flat plate” as a “major improvement”) [133] Topic 19 — “anchorage locations” (Tenth Patent) [141] Topic 20 — “end” (Tenth Patent) [149] Topic 21 — forward or rearward facing (Tenth Patent) [155] Topic 22 — “body” [160] Topic 23 — omnibus claims [165] Sixth Patent — Omnibus claim 4 [171] Anchorage-Connection Arrangement versions 4 and 5 [175] Eighth Patent — Omnibus claims 2, 3, 4 and 5 [180] Anchorage-Connection Arrangement version 1 [185] Anchorage-Connection Arrangement versions 4 and 5 [187] Tenth Patent — Omnibus claim 20 [190] Anchorage-Connection Arrangement versions 4 and 5 [195] VALIDITY — General [197] Skilled Addressee [213] Evidence Act [232] Credibility [236] Browne v Dunn [239] Use of expert evidence [241] EXTERNAL FAIR BASIS [255] Legal principles [260] Consideration [269] Not limited to invention disclosed in Parent Application [282] Harness not secured independently of seat shell [285] Direct connection [287] Broader terms used [289] Precise wording not used [292] Features not present [299] Flexible connection strap [304] Omnibus claims [305] INTERNAL FAIR BASIS [307] Legal principles [308] Preliminary observations [310] Mr Hunter [311] Modifications statement [312] Consistory clauses [328] Innovation Patents [341] “Connection means” [341] “With respect to” [354] “Anchorage point” [355] “Carried by” and independent harness [356] Separate components [360] Connection means and tether strap [363] Loop at each end and incorporated length adjustment means [366] Tenth Patent [367] NOVELTY [372] Legal principles [373] The relevant comparison [375] Prior art documents and specifications [378] Prior public use [380] Publicly available [387] Hindsight and common general knowledge [397] Use of expert evidence [400] Alleged anticipatory prior art (documents and specifications) [407] Prior art specifications [408] Prior art documents [411] Consideration – prior art specifications [415] AU-B-29978/92 [415] FR 2548983 [423] AU 750497 [429] AU 781955 [435] Consideration – prior art documents [442] Alleged anticipatory prior public use [447] Pigtail arrangements [447] Century seats [450] Consideration – prior public use [451] Pigtail arrangements [451] Messrs Hall, Wade and Newman [456] Conclusion on pigtail prior use [473] Century seats [483] Century 575 baby shuttle [487] Century 572 baby shuttle [488] Century 1500A, 1500B and 1500C seats [489] Century 2500 seat [492] Tether guides as “anchorage locations” [496] INNOVATIVE STEP [499] Legal principles [500] Consideration [505] INVENTIVE STEP [524] Legal principles [525] Consideration [533] UTILITY [544] Legal principles [546] Consideration [556] First, Third and Fifth Patents [556] Tenth Patent [561] Expert Evidence [569] CLARITY [579] DISPOSITION [587] INTRODUCTION
This is the fourth judgment in this proceeding. The various claims and cross-claims that have been made in this proceeding are set out in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47 (‘Construction Judgment’). I adopt the same terms and abbreviations in these reasons for judgment. I assume a familiarity by the reader of these reasons with the earlier judgments in this proceeding, particularly the Construction Judgment.
This judgment concerns the validity of certain claims of the Patents in suit, and an issue relating to infringement, namely whether the allegedly infringing Infa products are within the scope of certain integers of the claims of the relevant patents in suit. The parties agreed that upon delivery of these reasons, they would consider appropriate orders, including timetabling (if necessary) for the consideration and determination of any outstanding issues.
Between the date of the first judgment in this proceeding and the last hearing in February 2013, there was a great deal of procedural disputation between the parties. This disputation was mainly concerned with the reception of expert evidence in relation to infringement, although some aspects impacted on the validity dispute.
I make this preliminary observation. The parties and the expert witnesses now have had the opportunity to address the Construction Judgment, and to apply the Court’s construction of the principal terms in the context of the claims in suit. Since the Construction Judgment the Court and the parties have moved on from the specific terms and phrases chosen by the parties for interpretation by the Court at the time of the Construction Judgment. It was hoped that by delivery of the Construction Judgment the parties could resolve their dispute, but this has not occurred. Therefore, it has become necessary to revisit the construction of each patent in context, in dealing with the allegations of infringement and invalidity.
As I said at [280] of the Construction Judgment:
Before construing each term or phrase in issue, the following consistencies claimed by the expert witnesses should be noted. The expert witnesses assert in the joint expert report that Issues 1, 2, 3, 4, 5, 6, 8, 9, 10, 11 and 12 represent universal points of difference between Mr Newman and Mr Hunter, which are common across the patents where these terms are used. This does not necessarily mean, however, that once a decision as to the construction of one of these “Issues” is reached, it will apply globally to each claim in suit. Each must be assessed in the context of the claim in which it appears using, if necessary, the specification of the patent to aid construction. The context must not be forgotten even though we are focussing on particular words or phrases.
I have already referred to some relevant principles of construction in the Construction Judgment. I stress that in further construing the claims in each patent, I have made no reference to the alleged infringing products. It is clearly impermissible to do so.
I make the observation that in this proceeding, Infa has taken an overly literalistic view of the terms of the claims in each patent, where such an approach is inappropriate in the context of each claim in each Patent. Whilst Britax suggested that the Court took such an approach in one instance in the Construction Judgment (in relation to the terms “ends” and “carried by”), that approach was conducted in context. I arrived at that interpretation because of the plain meaning to be given to those terms —I was not persuaded that any surprising or absurd result would arise by adopting the natural meaning of the terms “ends” or “carried by” in the context of the patents I was considering. That view stands despite an invitation by Britax to re-consider those terms.
Britax further submitted that Mr Hunter’s opinion as to the construction of the terms “ends” and “carried by” was correct and therefore my findings in relation to those terms in the Construction Judgment were incorrect.
There is no reason in principle for the Court not to correct an error made in interlocutory reasons. That said, I am not persuaded by Britax’s submissions or Mr Hunters’ evidence in relation to the construction of those terms, and I do not depart from my reasons and findings in relation to construction of those (or any other) terms in the Construction Judgment.
Now that the parties have had the opportunity to place before the Court submissions and evidence to deal with the principal terms referred to in the Construction Judgment in context, the most appropriate way to deal with the current dispute between the parties is to consider the various topics raised by the parties for my determination, and proceed accordingly.
This was what was anticipated following upon my orders and reasons in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 2) [2012] FCA 1018, delivered on 17 September 2012. I will not repeat the background to those orders and reasons, which background is set out in those reasons.
In that decision, the Court gave reasons in support of its orders and in furtherance of the Court’s preference to receive a Further Joint Expert Report from the two experts, Mr Hunter (for Britax) and Mr Newman (for Infa). In addition, the Court made certain statements and observations (at [26-30]) about the task then envisaged for the two expert witnesses.
By orders dated 17 September 2012, in summary, the Court ordered that the Construction Judgment should be provided to the expert witnesses, and that those witnesses should be asked to provide further evidence by way of a Further Joint Expert Report as to the presence or absence of the claimed patent integers in the allegedly infringing Infa products. Further, the Court specifically confined the materials to be provided to the two experts and made allowance for either expert to seek additional time, materials, information or advice if that was required.
In furtherance of the Court’s orders, on 20 and 21 November 2012, the expert witnesses conferred in a supervised conference in the presence of Registrar Sia Lagos and the solicitors for the parties. Thereafter, the expert witnesses provided the Court with the Further Joint Expert Report.
As required by the Court, the Further Joint Expert Report both applied the Court’s Construction Judgment to each of the allegedly infringing Infa products and patents in suit, and provided the Court with the experts’ position as to the presence or absence of the relevant patent integers in those Infa products. In large part, the two experts were in agreement as to the presence or absence of the relevant integers in the relevant Infa products.
Accordingly, the position was that after provision of the Further Joint Expert Report, the only matters relating to infringement which remained for determination by the Court were those limited matters where the persons skilled in the art (the two expert witnesses in this proceeding, Messrs Hunter and Newman) were in disagreement or had some other basis for failing to arrive at an agreed position as to the presence or absence of particular patent integers in the Infa products.
Following the provision of the Further Joint Expert Report, a further hearing relating to the Further Joint Expert Report was to commence on 10 December 2012. It was envisaged that the two expert witnesses would be in attendance and would provide the Court with further explanation on the limited number of infringement issues upon which there was remaining disagreement as relevant to the specific Infa products.
On 10 December 2012, Infa handed up to the Court and to Britax documentation by way of four new tables which were contended by Infa to contain conclusions on construction and infringement that arose from the Construction Judgment. These tables contained material which put into contest some of the experts’ agreed views and conclusions relevant to infringement as set out in the Further Joint Expert Report. Infa’s Counsel advised the Court that Infa wished to cross-examine the two experts as to the matters in the four tables, including an application to treat Mr Newman as an “unfavourable witness” under s 38 of the Evidence Act 1995 (Cth) (‘Evidence Act’).
Britax submitted that the Court reject this new material. It submitted that Infa was seeking to make a new case under the guise of applying the Construction Judgment. Britax also contended that it had had no time to consider the extensive material set out in the four new tables and was in no position to proceed with the hearing on that day. The Court ultimately decided that Infa should be permitted to explore the issues raised by the four tables with the two experts.
As a consequence, on Britax’s application, the hearing was adjourned to 13 August 2013 to enable Britax to further consider the material advanced by Infa in the four tables, and on Infa’s explanation to the Court that those four tables represented its “non-infringement” position.
On 5 August 2013, Infa filed and served another affidavit from Mr Newman, (‘Fifth Affidavit’). It raised a number of matters of significance in the content of the Further Joint Expert Report, including matters upon which Mr Newman had changed his mind.
Despite the lateness of the filing and serving of the Fifth Affidavit of Mr Newman, the hearing set down for 13 August 2013 proceeded. It was ultimately adjourned to 17 February 2014 but not before Mr Newman was cross-examined by Britax on the circumstances surrounding the coming into existence of the Fifth Affidavit of Mr Newman. Mr Newman confirmed that he had no problems with the process that led to the preparation of the Further Joint Expert Report in November 2012, nor any issues with the content of the document at the time of its preparation. Nevertheless, Mr Newman did not now adopt his position as expressed in the Further Joint Expert Report.
Mr Newman’s problems with the Further Joint Expert Report appeared to arise following a discussion with the lawyers for the Infa on 11 December 2012, shortly after the December 2012 adjourned hearing. In his Fifth Affidavit, Mr Newman stated that on 11 December 2012 he was asked by Chrysiliou Lawyers (the lawyers representing Infa) to explain a particular statement contained in the Supplemental Report to the Further Joint Expert Report, and that as a result he re-examined all the integer tables of the Further Joint Expert Report.
Mr Newman’s evidence was that he had reflected upon the process of his giving of evidence in the proceeding, including his participation in the Further Joint Expert Report, and had decided that he could not maintain his position as set out in that Report. He gave various reasons for this.
Mr Newman had found the whole process in participating in the Further Joint Expert Report “incredibly complicated” and “confusing”. He found it difficult in determining how to interpret the Patents on their own, but also in light of the Construction Judgment. He felt confused at the time of the November 2012 conference with Mr Hunter, and had been influenced by Mr Hunter’s superior mental agility, when at a time his own mind was “in a spin”.
A great deal of time has been undertaken by the Court and the parties on the production and receipt of the expert evidence, including the Further Joint Expert Report in November 2012. However, the reliance on the Fifth Affidavit of Mr Newman by Infa caused further delay. The August 2012 hearing needed to be adjourned until 17 February 2014 to allow sufficient time for the parties to consider their position and file further material.
On 31 October 2013, Infa (not wholly accepting Mr Newman’s new approach) filed and served tables raising points of construction and disputing the presence of the patent integers in the Infa products.
When the matter came on for hearing on 17 February 2014, Britax contended that the matters and issues raised by those tables should be rejected by the Court for a number of reasons. One reason was that such matters and issues had not been considered earlier, particularly in the Further Joint Expert Report. Another reason was that to the extent the matters and issues were raised by Mr Newman in his Fifth Affidavit, these should be rejected either because they were raised by him only due to influence brought to bear upon him following the adjourned hearing in December 2012, and because in any event, Mr Hunter (whose evidence was to be preferred) did not accept Mr Newman’s position.
I am sympathetic with some of the observations made by Britax on the way the proceedings progressed after the introduction of the Fifth Affidavit of Mr Newman. Mr Newman clearly changed his mind upon reflection after the Further Joint Expert Report, and this has significantly disrupted the flow of the proceedings. It has been a substantial cause for the extensive material now before the Court.
However, Mr Newman (as an expert witness) was under an obligation to inform the Court of his changed position. After all, the Court should receive such expert evidence so that the Court may be fully assisted in its task. This is not to say that Mr Newman’s position must be accepted; only that it should be considered. Further, Britax and Mr Hunter were given adequate opportunity, of which they availed themselves, to address Mr Newman’s changed position as well as Infa’s subsequently filed tables.
I have therefore accepted the Fifth Affidavit of Mr Newman into evidence, to consider it along with all the other expert evidence, including significantly the Further Joint Expert Report.
I have also (over the objection of Infa) accepted the eighth affidavit of Mr Hunter. This affidavit was in response to the earlier material of Infa and Mr Wainohu, and is in my view responsive to that material. Infa had ample opportunity to address that affidavit, and the issues raised by the experts have been adequately ventilated between them in the presence of the Court. In the way the proceeding has progressed, it would be unfair to Britax (and Mr Hunter) not to consider his response to matters raised by Infa’s evidence in his eighth affidavit.
Both parties proceeded in the February 2014 hearing on the basis of the terms as construed in my Construction Judgment, as is apparent from the approach of the experts in dealing with the issues formulated for and considered by them at that hearing, and the submissions themselves. No party was disadvantaged by this approach. Each had an opportunity through their experts and legal representatives to address the construction of the integers in the context of each claim and each patent in suit and issues of invalidity.
Nevertheless, the above process and Mr Newman’s own self-confessed confusion, does impact on the confidence the Court can repose in Mr Newman’s evidence. I do not find that Infa’s legal representatives did anything improper. I also do not accept Britax’s submission that Mr Newman can no longer be regarded as an independent expert. Mr Newman remained independent, but was simply out of his depth in the task he was asked to perform. Mr Newman’s experience was primarily as a fitter of child safety seat products. Whilst he was a qualified motor vehicle mechanic, he was not an engineer. He has not been involved in the design, testing or manufacture of child restraint products. During the course of this proceeding, Mr Newman has had general difficulty in dealing with specific issues and has changed his views or admitted error. In contrast, Mr Hunter’s evidence involved a practical, common sense approach to the working of the relevant claims of the patents in suit, and, in the main, I have found it persuasive.
These reasons have taken some time to be delivered, and despite the passage the time, I have not deviated from the initial view I took as to the correct approach to adopt in this proceeding. That approach was to consider the evidence of Mr Newman including his Fifth Affidavit, but to take into account the various matters that I raise in these reasons for treating his evidence with caution. Much of the evidence and submissions before me has been in written form, and transcript has been available. In formulating these reasons I have re-visited that documentation. Neither party suggested that Mr Hunter or Mr Newman were not trying to assist the Court to the best of their ability. The principal issue with Mr Newman relates to his capacity to properly understand the patents in suit, or articulate, his position. It was in this sense that Britax submitted Mr Newman’s evidence was not credible, putting aside the issue of independence. I now have the competing expert views as to construction, infringement and validity. I must make an assessment based upon analysis of the evidence (both expert and lay), the documentary material in evidence and the submissions.
The position that the Court now needs to consider is as follows.
Subject to the two substantive reservations (as to meaning of “ends” and “carried by”), Britax otherwise accepts the agreed position relating to infringement that Mr Newman and Mr Hunter arrived at in the Further Joint Expert Report.
Noting that Mr Hunter has reservations with some of the findings of the Court in the Construction Judgment in relation to the interpretation of certain terms (to which I will return), and insofar as the Court may now review its earlier construction of such terms, Britax adopts the position of Mr Hunter but accepts that Mr Hunter is disagreeing with certain of the Court’s findings in the Construction Judgment (namely as to the meaning of “ends” and “carried by”).
As I have indicated, shortly before the August 2013 hearing, Mr Newman in his Fifth Affidavit resiled from many of the opinions he expressed in the Further Joint Expert Report. Further, Infa did not accept all the views of Mr Newman.
In light of this position of the parties, and in preparation for the hearing adjourned to February 2014, by orders of the Court dated 16 August 2013 the parties were required to prepare “Green and Red” tables specifying, by reference to the “Newman Tables” annexed to the Fifth Affidavit of Mr Newman and in relation to construction and infringement, what matters in the Newman Tables Infa adopted and what additional matters it relied upon (each marked green), and what matters relied upon by Infa were agreed by Britax, and if not why not, (such marked in red). Infa provided its tables, and Britax provided its response.
Britax adopted the report of the expert Mr Hunter who set out his views on the Infa Green Tables by his own Red Table analysis supported by his supporting narrative set out in three Addendums, each of which are annexed to the affidavit of Mr Gregory R Tye sworn 17 December 2013 and marked respectively “GRT-4”, “GRT-5”, and “GRT-6”, and each of which were referred to respectively as “Hunter Addendum-1”, “Hunter Addendum -2”, and “Hunter Addendum -3”.
I have not reproduced the tables referred to above, as they were of more assistance to the parties and the Court in focussing attention upon the context of the issues raised.
The matters canvassed by Britax and Mr Hunter insofar as they relate to infringement can be considered against the diagrammatic depictions of the various Infa product versions illustrated in Exhibit A7 (which is ‘Annexure A’ to these reasons). Some of the actual Infa products were in evidence.
INFRINGEMENT
I will now deal with the issues before the Court concerning infringement. For the purposes of these reasons, my consideration of infringement is limited to the question of whether the allegedly infringing products fall within the scope of the relevant patent claims. To that end, the parties agreed that the issues in contention in this regard were confined to 22 discrete “topics”, and a question as to whether the Infa products fall within the omnibus claims present in the patents (which I will refer to as “topic 23”). Those topics are titled by reference to certain issues or terms as construed in my Construction Judgment. I address each of the topics in turn, and in doing so, I make reference to the Infa products which are alleged to have been infringed in relation to that topic (‘Infa Products’), the diagrams of which are contained in Annexure A. The various Infa Products are identified by their product code and version (eg “CS53” or “CS53v4”), and the “Anchorage-Connection Arrangement” version (or ‘Version’) used with that product, as depicted in Annexure A.
Topic 1 — “carried by” or “with respect to”
In my Construction Judgment, I distinguished between the terms “carried by”, which I found refers to a direct carrying, and “with respect to”, which may include indirect carrying: see Construction Judgment at [314] and [377]. In the context of the relevant claims, those terms refer to the tether strap which transports, moves, bears or carries the “connection strap” or “means”, and suggest an interaction between the two.
I construed the term “connection means” in my Construction Judgment to be a broad term not limited to a buckle (eg at [318]) and which could therefore include other components, such as a latching hook.
Infa submitted that the word “by” in “carried by” required the tether strap to be an “active” carrier, and the carried connection strap to be a “passive” component. It submitted that this was not so in the Infa Products, by reference to the fact that if the tether strap were to be severed, the connection strap would remain attached to (or “carried by”) the anchorage point, which would demonstrate that the tether strap was a passive component which was in fact “carried by” the connection strap.
However, the term “carried by” must be understood in the context of the relevant patent. For example, claim 1 of the First Patent describes “a connection strap carried by the tether strap and secured at a first end with respect to the anchorage point and having a connection means at the other end”. The object is clearly the (carried) connection strap, which is then secured. Whether the outcome of that anchoring or “securing” shifts or reverses the load bearing dynamics, so that the connection strap bears the load of the tether strap, is not relevant for the purposes of the patent.
This view accords with the views of both skilled addressees, Messers Hunter and Newman. As Mr Hunter opined, the unsecured connection strap is clearly carried, in the sense that its load is borne, by the tether strap. In the Further Joint Expert Report, the experts agreed (and I accept) that all Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5, contain this feature, and therefore fell within the scope of the relevant “carried by” integers in claim 1 of the First, Third, Fifth and Sixth Patents, and claim 5 of the First, Third and Sixth Patents.
Topic 2 —“connection strap” or “connection plate”
In my Construction Judgment, I held that the term “connection strap” was broad enough to include straps of different materials (including metal or flexible webbing) in different contexts: see [311]. At [307] I detailed Mr Hunter’s accepted approach which gave the term “strap” a “broad, functional and contextual interpretation” and explained a connection strap to be an “interconnecting device which allows the harness and tether strap to be connected to the vehicle anchorage point”.
Infa contended that the U-shaped metal connecting component present in Infa Product Anchorage-Connection Arrangement versions 3, 4 and 5 is not a “strap”, but rather a “plate”. However, this distinction is unnecessary for the purposes of construing the Patent terms. As I stated in my Construction Judgment at [311], a “connection strap” may be metal. That is so in the context of a child safety seat, and regardless of whether it is characterised as a “plate”.
In the Further Joint Expert Report, both Messers Newman and Hunter agreed on this basis that the “connection strap” feature was present in all Infa Products which have any of the Anchorage-Connection Arrangement versions. All Infa Products therefore fall within the scope of the relevant “connection strap” integers in the following claims:
(a)claim 1 of the First and Sixth Patents;
(b)claim 2 of the First Patent;
(c)claim 3 of the Second and Third Patents;
(d)claim 4 of the Third Patent; and
(e)claim 5 of the First Patent.
Topic 3 — connection strap (or means) “attached” to the tether strap (or strap) “adjacent the intermediate point”
In my Construction Judgment at [319] I held that that term “attached” did not require “fixation”, and in its context could refer to the connection strap being slidably attached to the relevant strap. I also construed the “intermediate point” by reference to my construction of the term “ends”: at [302]. As I mentioned earlier, Mr Hunter and Britax took issue with my construction of the term “ends”, which I did not accept.
In the Further Joint Expert Report, Messrs Newman and Hunter agreed that the connection strap or means in all Infa Products was “slidably attached”. Nevertheless, they both concluded that integers 1.2.2 and 3.2.2 were not present in any of the Infa Products. This conclusion was drawn solely on the basis that the connection strap (or means) was not attached to the tether strap adjacent the intermediate point, as a consequence of their construction of the term “ends”, which was at odds with my finding in the Construction Judgment.
Infa submitted that a slidable attachment takes it out of the scope of the relevant claim, since in the unanchored child safety seat, the slidable connection could result in the connection strap sliding away from the intermediate point.
However, the reference to “intermediate point” in claim 2 in each of the First and Third Patents is dependent on the respective claim 1 in those patents, and relates to the term “point intermediate its ends” in that claim. In claim 1 of both patents, the attachment adjacent the intermediate point is described as occurring when the tether strap is in its anchored state: “secured with respect to the anchorage point at a point intermediate its ends” (emphasis added).
I agree with Mr Hunter’s observation that “[o]nce these seats are installed, the connection strap is attached adjacent the intermediate point notwithstanding the slidable connection of the connection strap with respect to the tether strap”.
I therefore find in applying the terms as construed in the Construction Judgment and the evidence of the experts that all Infa Products fall within the scope of those integers in claim 2 of the First and Third Patents.
Topic 4 — “wherein the connection strap is attached to the tether strap”
Infa contended that the presence of a “latching hook” in the Infa Products which have the Anchorage-Connection Arrangement versions 1b and 3, means that those products do not fall within the scope of claim 2 of the First Patent. This is because the intermediate component (ie the latching hook) prevents the required “attachment” of the connection and tether straps.
However, there is no requirement in the claims that there must be a direct attachment. This is a different matter from the context of “carried by” as interpreted by the Court. An attachment can involve an intermediate component, as is in fact depicted in many of the preferred embodiments in the First Patent. In that patent, the attachment of the connection and tether straps is depicted (in figures 4-6) with an intermediate component.
As I mentioned in relation to Topic 3, the experts did not find that the Infa Products fell within the scope of integer 1.2.2 on the basis of a construction of the term “ends” which was at odds with the Construction Judgment. Importantly, neither Mr Newman nor Mr Hunter expressed any issue with the latching hook found in some of the Infa Products as taking those products beyond the scope of integer 1.2.2.
For those reasons I am not persuaded by Infa’s submission in relation to this topic.
Topic 5 — “secured” (with respect) to a “head end of the back rest portion”
In my Construction Judgment I determined that the term “secured” does not require fixation, and allows for any fastening, whether slidable or not as long as “the fastening is firm, so that it will not tear or break when used for the purpose for which it was developed”: at [299]. I adopted this construction for the Second Patent (at [333]), Third Patent (at [340]), Fourth Patent (at [356]), Fifth Patent (at [361]) and Seventh Patent (at [383]).
At [328] of the Construction Judgment, I found that the meaning of the term “head end of the backrest potion” depended on whether the headrest was adjustable or not. In the former, the term referred to the upper part of the back rest underneath the headrest, and in the latter, it referred to the upper part of the back rest.
In the Further Joint Expert Report, Messrs Newman and Hunter agreed that in all Infa Products the tether strap or tethering means was “secured to”, or “secured with respect to”, the head end of the back rest portion as claimed. Mr Newman’s position in this respect did not change in his Fifth Affidavit.
Infa submitted that the experts’ views in this regard narrowly considered the “secured” feature in the context of an installed seat experiencing sudden deceleration (such as a collision scenario) in which the tether straps would tighten. It submitted that this context represented a “momentary and transitory state”, and that in normal use the tether straps would not be “secured”.
However, I do not understand the experts to consider the term so narrowly. Once installed, the pressure of the taut tether straps on the safety seat satisfies the “secured” requirement. Considering this integer in the context of an uninstalled safety seat with the tether straps falling loosely, as Infa contended, is to fail to take a common sense approach to the patent claims, or to understand its terms in the context of the relevant integers. It is important to focus upon the word “secured” which connotes an installed state in this context.
I therefore do not accept that the tether strap or tethering means is not “secured” to the head end of the back rest portion, with the consequence that all Infa Products fall within the scope of the relevant integers of the following claims:
(a)claim 1 of the Second, Fourth and Fifth Patents;
(b)claim 2 of the Seventh Patent; and
(c)claim 5 of the First and Third Patents.
Topic 6 —“adapted to”
The term “adapted to” means “being capable of”. This is the ordinary meaning of the term and was as agreed between the experts.
The contexts in which the phrase is used relates to “a connection means arrangement adapted to co-operate with a tether strap” (integer 8.1.2), and a tether strap or child safety harness being “adapted to”:
(a)be secured to an anchorage point on a motor vehicle (see, eg, integer 1.5.7);
(b)tether the child safety seat (integer 8.1.2); and
(c)be used with a child safety seat (integer 9.1.2).
Infa contended that the relevant item (eg the tether strap) must itself be capable of the relevant function (eg being secured to an anchorage point) without any intermediate components. Infa also relied in this regard on my Construction Judgment where I held (at [291]) that “the tether strap includes the material which makes up the strap itself and nothing more”.
However, context is essential. In my view, the relevant contexts outlined above allow for the use of intermediary components which facilitate the necessary “adaption”, such as latching hooks. For example, as Mr Hunter pointed out, in the context of a tether strap adapted to be secured to an anchorage point, figure 5 of the First Patent, which appears in all of the innovation patents in suit (‘Innovation Patents’), depicts intermediate componentry.
Further, both experts agreed in the Further Joint Expert Report (and I accept) that all Infa Products fell within the scope of this integer in the relevant claims.
Topic 7 — “secured to” and direct connection
In the Further Joint Expert Report, both experts agreed that the “secured” and “secured to” features were present in all Infa Products. This position was not changed in Mr Newman’s Fifth Affidavit.
In line with its argument in relation to topic 6, Infa submitted that the term “secured to” requires that there be a direct connection, so that, for example, the phrase “tether strap adapted to be secured to an anchorage point” (see, eg, integer 1.5.7) negates the presence of intermediate componentry. For the reasons outlined above, I agree with the experts’ conclusion and do not find that the term means that the tether strap (for example) must be directly connected to the vehicle anchorage location without intermediate components. I further reiterate my finding in the Construction Judgment that the term “secured” simply requires firm “fastening”, the nature of which is unrestricted by that term: see [299], [333], [340], [356], [361] and [383].
All of the relevant Infa Products are therefore within the scope of the integers containing the terms “secured” or “secured to” in the relevant claims.
Topic 8 — harness “loops” at the “ends”
In the Construction Judgment (at [300]) I found that the “ends” of the tether strap are to be understood as the physical termination points of the tether strap. Some integers refer to the “strap having at least one loop at each end” (see, eg, integers 2.2.2 and 4.2.2). The depiction of such an arrangement in figures 2 and 3 of the Innovation Patents is consistent with my finding.
However, Infa submitted that figure 1 of each of the Innovation Patents reveals that one of the loops is not formed at the “termination point” of the strap, and instead, there is some length of strap extending back behind the padding after forming a loop. It therefore characterised this arrangement as a single strap with a loop at only one “end”.
As I have mentioned, the terms of the integers must be understood in a way in which makes practical sense in their context. In the particular context of the relationship between the harness and the seat belt, the reference to “ends” sensibly means the lower looped ends of the pair of shoulder straps through which the vehicle seat belt is passed. Whether or not that looped end is formed at the physical termination point of the strap, is of no consequence in this context. I agree with Mr Hunter’s view in this regard that a skilled addressee would readily understand this.
I note that both experts in the Further Joint Expert Report relevantly agreed that an “H” or “Protecta” harness (ie a harness which includes a pair of shoulder straps that are each connected at their lower end to the seat belt by respective loops) would fall within the scope of the relevant integers of the relevant claims. Accordingly, any Infa Product when used with such a harness would fall within the scope of those integers.
Topic 9 — “connected/attached to” and direct connection
In line with its argument in relation to topics 6 and 7, Infa submitted that the terms “connected to” and “attached to” require a direct connection without intermediate components. It therefore viewed all Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5 (which contain components interposed between the tether strap and anchorage point), as not falling within the scope of those terms.
Infa’s reading in this way is at odds with the findings in my Construction Judgment, and a practically sensible reading of the patents in context. There is no basis in the patent specifications to limit such terms in the manner proposed by Infa. For the reasons outlined above, I agree with the experts’ conclusion and do not find that the terms “connected to” or “attached to” require a direct connection to the vehicle anchorage location without intermediate components.
In the Further Joint Expert Report, Mr Newman and Mr Hunter agreed that all Infa Products incorporated components that were relevantly attached or connected as expressed in the above terms of the patents, and therefore fell within the scope of the relevant integers of claim 3 of the Second and Fourth Patent.
Topic 10 — “to which”
Claim 3 of the Second and Fourth Patents refers to a connection strap or means “attached to and extending from the tether strap latching hook to which the upper ends of said shoulder straps are attached”. Infa submitted that the words “to which” are referable to the “tether strap latching hook”, and not the “connection strap [or means]”, so that they require the latching hook to be directly attached to the shoulder straps. It therefore contended that the Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5, where the connection strap (or plate) is interposed between the upper ends of the shoulder strap and the latching hook are therefore not captured by those integers.
I do not consider there to be ambiguity in those integers, when read in the appropriate context. The syntax of the claim dictates that the correct antecedence for the integer “... to which the upper ends of said shoulder straps are attached” is the relevantly preceding “connection strap” or “connection means”. This reading is reinforced by figures 2, 4, 5 and 6 in both patents and by reference to
(a)the specification of the Second Patent which states at 8.8-10 in relation to figures 3 to 5 that:
The harness 20 is secured with respect to the vehicle through latching hook connector 26, connection strap 44, an aperture in buckle 45 and latching hook connector 43.
(Emphasis added)
(b)the specification of the Fourth Patent which states at 6.27-9 in relation to figures 3 to 5 that:
The harness 20 is secured with respect to the vehicle through latching hook connector 26, connection means comprising a connection strap 44, an aperture in buckle 45 and latching hook connector 43.
(Emphasis added.)
Further, in the Further Joint Expert Report, the experts agreed (and I accept) that all Infa Products fell within the scope of integers 2.3.5 and 4.3.5 of claim 3 of the Second and Fourth Patent.
Topic 11 — “harness extends from the backrest portion”
Claim 1 of the Fourth and Seventh Patents contains the words “wherein said harness [or ‘child safety harness’] extends from the backrest portion”: integers 4.1.11 and 7.1.11.
Infa contended that some Infa Products require the harness to pass over or around the headrest, not the backrest, and therefore would not fall within the scope of those integers.
In relation to backrests and headrests, the Infa Products contain two broad types: those without a headrest (such as CS53, CS55 and CS57) and those with a headrest (CS54 and CS56).
I pause to note that consistent with my findings in my Construction Judgment (at [328]), CS53, which does not have an adjustable headrest section, is not considered, for the purposes of construction of the patents, to have a separate headrest. Rather, on my construction, its non-adjustable headrest would constitute the “head end of the back rest”.
On all Infa Products without a headrest, the harness necessarily “extends from the backrest portion”. On those Infa Products which contain a headrest, the tethering arrangements in Annexure A clearly depict the harness extending from the backrest portion and not from the adjustable headrest.
Infa also submitted that integers 4.1.11 and 7.1.11 require a “positional” arrangement wherein the harness extends from the physical backrest (via, for example, apertures in the backrest itself). This was contrasted with a “directional” arrangement, whereby the harness straps simply pass the back rest (via, for example, grooves in the perimeter of the seat).
Although figures 3, 4 and 5 of the patents depict the harness passing through apertures in the backrest, the specification of the Fourth Patent, in relation to figures 3-5 states (at 6.21-4) that:
Although multiple pairs of apertures are shown in this preferred embodiment, it would also be possible to have the harness passed through a single aperture in the head end of the backrest portion or around grooves in the perimeter of the backrest portion.
(Emphasis added.)
Almost identical wording to the above paragraph is contained in the specification of the Seventh Patent: at 7.19-22. It is therefore clear from the context of those integers that the relevant patents contemplate either a “positional” or “directional” arrangement of the harness in relation to the backrest.
The experts agreed in the Further Joint Expert Report that all Infa Products fell within the scope of integers 4.1.11 and 7.1.11 of claim 1 of the Fourth and Seventh Patents respectively.
All of the relevant Infa Products are within the scope of the relevant integers for the relevant claims.
Topic 12 — “slidably locate”
Claim 3 of the Third Patent refers to “a latching hook connector...attached with respect to the [tether] strap by a strap opening in the latching hook connector that allows the latching hook connector to slidably locate on the strap”. Claim 2 of the Fifth Patent refers to a “child safety seat…wherein the connection means slidably locates on the tether strap”.
Infa submitted that Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5 are not within integer 3.3.3. Infa focussed on the directness of the latching hook connector being slidably located on the tether strap. However, there is no requirement in the Third Patent that the latching hook connector must directly slidably locate on the tether strap. In those Versions, the latching hook connector is indirectly slidably located on the tether strap via the loop or aperture in the connection strap or plate. Versions 1, 4 and 5 therefore fall within the terms of integer 3.3.3, as observed by Mr Hunter.
Infa also contended that Infa Products which have the Anchorage-Connection Arrangement versions 1b and 3 are not within integer 5.2.2, since they do not include the incorporated antecedent integer 5.1.7 —“a connection means carried by the tether strap”. I have already addressed the issue of “carried by”.
Further, as I mentioned in topic 1, the term “connection means” is not the same as “connection strap”. The former is a broader term —“any item or thing which would perform the function of connection” and includes the latching hooks in the Fifth Patent: see Construction Judgment at [316-8] and [366]. The specification of the Fifth Patent (at 6.21-3) describes the “connection means” as “comprising a connection strap 44, an aperture in buckle 45 and latching hook connector 43”.
Both Infa’s Anchorage-Connection Arrangement versions 1b and 3 have the above described “connection means”. Both include a tether strap which is slidably located through an aperture in the latching hook connector. Conversely, the latching hook connector (and thereby the “connection means”) is slidably located on the tether strap. That arrangement falls within integer 5.2.2.
In the Further Joint Expert Report, Messrs Newman and Hunter agreed that the latching hook connector is slidably located on the tether strap for Infa Anchorage-Connection Arrangement versions 1, 4 and 5, and that the connection means is slidably located on the tether strap for Infa’s Anchorage-Connection Arrangement versions 1b and 3.
For the above reasons, all of the relevant Infa Products fall within the scope of the relevant integers of claims 3 and 2 of the Third and Fifth Patents respectively.
Topic 13 — “harness comprising…a pair of shoulder straps”
Infa appears to contend that the requirement in claim 1 of each of the Fourth and Seventh Patents that the harness comprises “a pair of shoulder straps” (emphasis added) is not present in a Protecta Harness. It contended that a Protecta Harness, which its customers are expected to use with its Infa Products, is properly characterised as a single shoulder strap with a loop to allow for connection with a seatbelt.
Figures 1 to 4 of the Fourth and Seventh Patents depict a Protecta Harness. I agree with Mr Hunter that it is clear from those figures that such a harness has two shoulder straps each ending in a loop through which the seat belt is connected. I also agree with both experts’ conclusion in the Further Joint Expert Report that a Protecta Harness is so characterised, and falls within the relevant integers 4.1.9 and 7.1.9 in claim 1 of the Fourth and Seventh Patents.
Infa submitted that the pair of shoulder straps are not relevantly “connected at their lower end to said vehicle seat belt” :integers 4.1.10 and 7.1.10.
The reference to “lower end” must be read in context. In the context of the Fourth and Seventh Patent specifications, the claimed reference to “lower end” means the lower looped end of the pair of shoulder straps depicted and described, through which the vehicle seat belt is passed.
The Fourth and Seventh Patents depict the Protecta harness in figure 1, and state that “the lower end of each shoulder strap 21 is provided with a loop 24 to receive a vehicle seat belt”: see 5.22-4 of the Fourth Patent and 6.17-9 of the Seventh Patent. Therefore, notwithstanding the presence of an adjuster, the ends of the shoulder straps in the Innovation Patents are described and depicted as having a loop as in the Infa Products when used with a Protecta harness.
All of the Infa Products are within the scope of the relevant integers for the relevant claims.
Topic 14 — “further includes”
Claim 3 of the Fifth Patent refers to a connection means which “further includes at the first end a latching hook connector” (emphasis added). As I found in the Construction Judgment (at [366]) and reiterated above in relation to topic 12, the connection means of the Fifth Patent includes the latching hook. On the basis of that construction, Infa contended that the qualifying words “further includes” of claim 3, as they relate to the “connection means” of claim 1, must require an additional “latching hook connector”, which additional latching hook connector is not present in the Infa Products.
It is to be recalled that in accordance with the Construction Judgment (at [317] and [366]) “connection means” is “any item or thing which would perform the function of connection”. In the context of the claims of the Fifth Patent, the words “further includes” is understood to limit the connection means to one in which a latching hook connector (and not any other connector) is used for securing the tether strap to the anchorage point. In my view, based upon Mr Hunter’s evidence it would be readily understood by the skilled addressee applying a practical sensibility to the patent, that integer 5.3.2 is not calling for multiple latching hook connectors in the one “connection means”.
In the Further Joint Expert Report, both experts agreed that all Infa Products utilised a latching hook as part of its connection means to secure the tether strap to the anchorage point. All of the relevant Infa Products are therefore within the scope of integer 5.3.2.
Topic 15 — “for connection”
Integer 6.2.1 (in claim 2 of the Sixth Patent) refers to “a tethering means for a child safety seat for connection to an anchorage point in a motor vehicle” (emphasis added). Infa contended that the words “for connection” in that context imply that the “tethering means” does not itself include the components necessary “for connection”. This argument is consistent with its submission that “connection” must be direct, and therefore, while it accepted that the tethering means was securable via the latching hook of the connection means, such a connection was indirect, which, it submitted, was not claimed in the patents.
I reiterate my earlier comments about “connection” in topics 6, 7 and 9. The term “tethering means” is broad and can include more than the tether strap itself: see Construction Judgment at [380]. I add that integer 6.2.1 contains no such requirement or limitation on the “tethering means” as contended for by Infa. The words “for connection” in that integer simply qualify the antecedent “tethering means” as having (at least) the capability of “connection to an anchorage point on a motor vehicle”.
In the Further Joint Expert Report, both experts agreed that claim 2 of the Sixth Patent was infringed for all Infa Products. Mr Newman’s position in this regard was unchanged in his Fifth Affidavit.
On the basis of Mr Hunter’s evidence, I view the purpose (and certainly the capability) of the tethering means in all Infa Products to be for connection to an anchorage point in a motor vehicle, precisely as claimed in the patent. All of the relevant Infa Products are therefore within the scope of integer 6.2.1.
Topic 16 — “tethering means for tethering the backrest portion of the child safety seat”
Integer 7.3.7 (in claim 3 of the Seventh Patent) refers to “a connection means which is adapted to be secured at one end to the anchorage point”. Infa raised three arguments in relation to whether the Infa Products fall within the scope of this integer.
First, in his Fifth Affidavit, Mr Newman deposed in relation to Infa Products which have the Anchorage-Connection Arrangement version 1, that while those products contain a connection means (which he identified, in this context, as a particular buckle), it (ie the buckle itself) is not “adapted to be secured at one end to the anchorage point”.
Secondly, Infa submitted that in Versions 1b and 3, the tether strap passes through an opening in the latching hook connector and are therefore not relevantly “secured…to” via a direct connection as contended in topic 7.
Thirdly, Infa highlighted that integer 7.3.7 is preceded by the words: “a tethering means for tethering the backrest portion of the child safety seat and adapted to be secured at one end to the anchorage point”. It therefore contended that in the context of the claim, integer 7.3.7 requires an additional separate connection means, which is not present in Versions 4 and 5.
I will deal with each of these arguments in turn.
Version 1
In the Construction Judgment I found that the term “connection means” as used in the Seventh Patent is not limited to a buckle (at [318] and [384]) and can include multiple components, including for example a latching hook, connecting strap and buckle.
A “connection means” comprising such components is adapted to be secured at one end to the anchorage point as required by the integer of the claim, and Mr Newman was not correct to limit the “connection means” of integer 7.3.7 to a particular buckle.
Versions 1b and 3
On the basis of my construction of the term “connection means”, the latching hook present in Versions 1b and 3 could be considered a part of the “connection means”, in which case the entire connection means will be directly “secured at one end to the anchorage point”, as illustrated by Mr Hunter.
However, direct securement is not required, and I do not read the integer as being so limited. In this regard, I reiterate my comments above in relation to topic 7. The latching hook present in Versions 1b and 3 may be considered part of intermediate componentry which ensures the required securement.
Versions 4 and 5
The specification does not limit or preclude the sharing of components between the “tethering means” and “connection means”: see Construction Judgment at [145]. Further, the Seventh Patent specification (at 4.23-5) states that:
[t]he connecting component which is connected to the vehicle anchorage point could then be shared by both the tether strap and child safety harness. There are, of course, other ways in which a component may be shared.
Accordingly, a component can simultaneously constitute part of the “tethering means”, and the “connection means”. Claim 3 of the Seventh Patent includes within its scope arrangements such as Versions 4 and 5 wherein the latching hook may be characterised as “shared” between the “tethering means” and the “connection means”. In those Versions, the “connection means” is therefore “adapted to be secured at one end to the anchorage point”, as required.
All of the relevant Infa Products are therefore within the scope of integer 7.3.7.
Topic 17 —“second aperture”
Integer 7.3.9 refers to a connection means “having a second aperture through which the tethering means locates”. Infa contended on the basis of Mr Newman’s evidence that Infa Product Anchorage-Connection Arrangement version 1 (and presumably 1b) lacks the relevant second aperture.
Mr Newman’s view was based on Mr Newman’s identification of the “connection means” as a particular buckle. For reasons given in relation to topic 16, this is not correct.
Further, as I noted in topic 16 and in the Construction Judgment (see [384]), the “connection means” may have multiple components, including the connection strap. The connection strap in Version 1 (and 1b) contains an opening through which the tether strap passes. Therefore the “connecting means” of Version 1 (and 1b) contains the required “second aperture through which the tethering means locates”.
In the Further Joint Expert Report, Mr Newman and Mr Hunter agreed that claim 3 of the Seventh Patent was infringed for all Infa Products. All of the relevant Infa Products are within the scope of integer 7.3.9.
Topic 18 —“substantially as illustrated” (the “flat plate” as a “major improvement”)
Claims 2 and 3 of the Eighth Patent refer to an apparatus or child safety seat and harness “substantially as…illustrated in…figures [4 to 9]”. Claims 4 and 5 of that Patent similarly refer to “substantially as…illustrated in the accompanying drawings”.
Infa submitted that figures 6 and 7 of the Eighth Patent are substantially different to the others, in that they do not contain the flexible strap (44) and buckle (45) arrangement. Rather, figures 6 and 7 depict a “flat plate” (48) which contains its own latching hook and an aperture for the tether strap, and to which a harness latching hook is or can be connected. Mr Newman viewed the use of the “flat plate” as a “major improvement” in that the more rigid connection prevents the connection aperture for the harness from falling away or becoming difficult to locate. This was not accepted by Mr Hunter. However, as Britax correctly submitted, a difference in the figures is irrelevant for the purposes of determining whether or not a particular article infringes one or other of the figures referred to in the omnibus claim
Infa further contended that figures 4 and 5 depict connection points (41) and (42) which are not present in those Infa Products in which the tether strap is connected to the seat through intermediary webbing loops.
Both of these issues concern the omnibus claims of the Eighth Patent, and are relevant to the omnibus claims issue in topic 23, to which I will return. However, I will consider the specific issue raised in relation to this topic here.
Britax contended that in any event, the Infa approach as to the infringement of the Eighth Patent is flawed as it ignores the embodiment depicted in figure 6 as described in the Eighth Patent. I accept this submission. Figure 6 of the Eighth Patent contemplates a metal connecting component that connects the harness and tether strap to the vehicle anchorage point. Therefore, as contended by Britax, such a single metal plate is included within the scope of figure 6 of the Eighth Patent.
I add that Infa Product Anchorage-Connection Arrangement versions 3 to 5 contain such a flat plate which is “substantially as illustrated” in figures 6 and 7, whilst Versions 1 and 1b contain an arrangement “substantially as illustrated” in figures 4, 5, 8 and 9. All Infa Products therefore fall within the omnibus claims of the Eighth Patent.
In relation to the connection points, in my view, the purpose of the embodiment of the connection points in figures 4 and 5, is to depict the securing of the backrest via two mutually spaced connection points. I agree with Mr Hunter that all Infa Products involve “substantially” the same arrangement, regardless of whether they utilise loops or grooves on the head end of the back rest. Mr Hunter was of the view, as a person skilled in the art, that any variation in the Infa Products was minor.
All Infa Products therefore fall within the omnibus claims of the Eighth Patent.
Topic 19 — “anchorage locations” (Tenth Patent)
Claims 1 and 19 of the Tenth Patent refer to the “first and second mutually spaced anchorage locations on said head end of said backrest” and describe a tether strap “with one end extending from said first anchorage location…to said second anchorage location”.
Infa submitted that there are more than two “anchorage locations” on many of the Infa Products, and therefore those products do not fall within this claim.
Infa’s submission is at odds with my Construction Judgment where I found that the meaning of “anchorage locations” did not preclude circumstances where there were more than two anchorage locations: at [402]. A product having more than two anchorage locations does not escape the scope of these claims.
In the words of the Construction Judgment at [401] the term “anchorage location” only requires “a location or position at which there is a contrivance (that is, a design feature) which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration”. Such a “contrivance” need not be an aperture, as depicted in figures 4 and 5. It can, for example, include a feature in which the tether strap “sits” in grooves in the perimeter of the seat (as in Version 5 on CS53 and CS54), or a feature wherein the tether strap passes through “loops” (as in the other Versions of CS53 and CS54).
In each of the Infa Products, there are at least two such “contrivances” located on the head end of the backrest “which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration”: Construction Judgment at [401]. The requirement that contrivance “holds fast, or gives security” does not necessarily mean that it bears any load “in the event of sudden movement or deceleration”. It simply means that the anchorage location plays a role in ensuring that the seat remains connected to the anchorage point on the vehicle. Mr Newman failed to appreciate this construction in his oral evidence before the Court on 18 February 2014, when he argued that the entire back portion of CS53v4 (for example) provided a single anchorage location, or bore the relevant load, since if the “loops” were to be cut, those “contrivances” could be rendered useless for anchorage.
Infa also contended that the “mutually spaced anchorage locations” are not on “said head end of said backrest” on the basis of the issues raised in topic 11. I reiterate my comments in relation to that topic, and note the Construction Judgment at [399]. Even in an uninstalled state, as Mr Hunter demonstrated with CS53v4, the relevant loops “revert to a fairly well defined point” or location on the head end of the backrest.
All Infa Products contain (at least) two mutually spaced anchorage locations on the “head end of said backrest” described by claims 1 and 19 of the Tenth Patent, as agreed by both experts in the Further Joint Expert Report.
All of the relevant Infa Products are therefore within the scope of the relevant integers for the relevant claims.
Topic 20 — “end” (Tenth Patent)
In relation to the same claims as detailed in topic 19 above, Infa contended that the Infa Products do not have such a feature, because in those products the physical end of the tether strap (ie where it terminates) does not “extend from” any anchorage location. Rather, it submitted, the tether straps of the Infa Products either travel in a circuit (having an adjuster in that circuit), or through other loops.
Infa’s submission is based on my finding of the meaning of the term “ends” in the Construction Judgment: see, eg, at [300-1]. However, that finding was in relation to the First Patent, and specifically adopted (at [340]) in relation to the Third Patent. The construction determination for any term cannot simply be transposed or applied to an asserted equivalent term outside of the context in which it was specifically contested and construed.
The context of claims 1 and 19 of the Tenth Patent is different to that of the First and Third Patents. The term “end” in this context is not used in the sense of the physical termination points. Rather it means the part of the tether strap which “commences” at the first anchorage location, and which tether strap then extends in a loop from that first anchorage location (through the strap opening) to a second anchorage location. The embodiments in the Tenth Patent reinforce this interpretation — neither of them depict an arrangement as contended by Infa.
I note that in construing the terms of a patent claim, clear language is not to be changed, and the Court must take a common sense approach so as to avoid a surprising or absurd result. Care must also be taken not to take into account the alleged infringing product in construing the claim. In arriving at the above construction of the word “end” in the Tenth Patent, I have adopted the same process of construction as with the First and Third Patents, and have applied the ordinary meaning of the word to a specific context.
Infa submitted that the construction of the term “end” in the context of claims 1 and 19 of the Tenth Patent, should be informed by the deliberate introduction (after the Tenth Patent was laid open for inspection on 15 February 1996) of the phrases “with one end” and “with the other end extending” and the reordering of the text of the claims. Infa submitted that in order to obtain the grant of the patent, Britax amended the claims to make express the requirement that the ends of the tether strap be its physical ends. However, in my view, that amendment does not impact upon the proper construction I have given to the Tenth Patent.
All of the relevant Infa Products are within the scope of the relevant integers for the relevant claims of the Tenth Patent.
Topic 21 — forward or rearward facing (Tenth Patent)
Claim 20 of the Tenth Patent refers to a safety seat “substantially as hereinbefore described with reference to and as illustrated in the accompanying drawings”. Infa submitted that the Infa Products are not within the scope of this omnibus claim, because figure 2 of the Tenth Patent depicts a rearward facing safety seat, which is not a feature present in the Infa Products.
This submission takes too literal a view of the Patent’s embodiments. The Tenth Patent is not about forward or rearward facing seats per se. It is, as Mr Hunter noted as the skilled addressee reading the Tenth Patent through the application of common sense and common general knowledge:
primarily about a split tether strap which may be used either with a forward facing seat or with a rearward facing seat, or with a seat that has the capability of being reversed to be either forward or rearward facing.
Further, it is only figure 2 in which a rearward facing seat is depicted; in figures 1, and 3 to 11 of the Tenth Patent, all of the seats are depicted as forward facing.
Mr Newman and Mr Hunter in the Further Joint Expert Report agreed that Versions 1, 1b and 3 of CS53 and CS54, and Versions 3,4 and 5 of CS55 fell within the scope of omnibus claim 20 of the Tenth Patent.
In my view, on the basis of Mr Hunter’s evidence, all Infa Products involve a forward facing arrangement which uses a split tether strap and are “substantially…as illustrated” (emphasis added) in figures 1 to 11 of the Tenth Patent. They therefore fall within the scope of integer 10.20.1.
Topic 22 — “body”
This was not described as a “topic” identified by the parties, but it is appropriate to deal with it here as if it were.
Different views were expressed in the Further Joint Expert Report on the interpretation to be given to the term “body” of the connector as it appears in claims 1, 2 and 5 of the Ninth Patent.
In my view, the term “body” in claim 1 (integer 9.1.3) is further defined by the additional integers being “a connection means…a first aperture…and a second aperture…”: integers 9.1.4-6. The context and wording of the integers themselves indicate that conclusion. The integers following the word “body” refer to “at one end of the body” and “in the body”.
The experts agreed that if this interpretation is correct, Version 4 of CS53, CS54 and CS55, and Version 5 of CS53 and CS57 fall within the scope of claims 1, 2 and 5 of the Ninth Patent.
On the basis of my construction, the agreed position of the two experts in the Further Joint Expert Report is that the Infa Products with Versions 4 and 5 are within the scope of claims 1, 2 and 5 of the Ninth Patent. I agree with that conclusion.
Topic 23 — omnibus claims
I now turn to the omnibus claims to the extent I have not dealt with them under the foregoing specific topics.
I have already made observations about the omnibus claims in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019 (‘Omnibus Judgment’) at [23–44]. I will not repeat them.
I do stress that the construction of the omnibus claims depends on the context and the precise language used. Whilst the omnibus claims in this proceeding do vary in their precise language, I proceed on the basis that the relevant reference in the omnibus claims is to the figures or drawings. However, the figures or drawings must be viewed in the context of the specification and through the eyes of the skilled addressee taking a practical approach to what the figures or drawings describe. Each claim describes something actually shown in the figures or drawings, subject to variations that a person skilled in the art would regard as minor or not substantial.
Where the reference is to one or more figures, which are identified, I treat this as a claim which is notionally separable into a number of claims, each of which makes reference to only one example, the scope of which is limited by reference to that specific example: see eg Williams Advanced Materials Inc v Target Technology Co LLC (2004) 63 IPR 645 at [57].
The omnibus claims in issue in the proceeding and which Britax asserts are infringed by the various Infa Products are:
(a)Sixth Patent — claim 4;
(b)Eighth Patent — claims 2, 3, 4 and 5; and
(c)Tenth Patent — claim 20.
In the Further Joint Expert Report, the experts agreed on the presence of all integers in many of the Infa Products for many of the omnibus claims. Hence, the combined construction and infringement issues had crystallised into a consideration of a confined set of Infa Products for each of the above identified claims of the Sixth, Eighth and Tenth Patents.
Sixth Patent — Omnibus claim 4
The Sixth Patent is concerned with various tether strap arrangements enabling connection of a harness and child safety seat to a single anchorage point on a motor vehicle. The claims describe and the figures depict various tethering means and connection arrangements. Although omnibus claim 4 is directed to a tether strap, the reference made to the drawings relates to the connection means.
Specifically, the claimed tether strap of claim 4 is described as:
(a)incorporating “means for connecting both the tether strap and a child safety harness used with the safety seat to an anchorage point of the vehicle”; and
(b)in a manner which is “substantially as herein described and with reference to the accompanying drawings” (that is, figures 1 to 9).
To establish infringement, the infringing product must contain all the essential features described and claimed. However, there is no escaping infringement by either or both of the substitution of “mechanical equivalents” which make no essential difference to the way that the invention performs; or the presence of immaterial variations to the essential features of the described and claimed invention, or as illustrated in the drawings: see, eg, Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, 475-6.
As Britax contended, context is important. In the context of omnibus claim 4 of the Sixth Patent, the following aspects are all relevant:
(a)the Background of the Invention (page 2);
(b)the Summary of the Invention including the consistory clauses describing “aspects” of the invention (pages 2 - 4);
(c)the description of the embodiments of the invention depicted in the accompanying drawings (pages 4-5);
(d)the embodiments illustrated in the accompanying drawings (figures 4-9) which make clear that there are separate drawings (and embodiments) each of which must be individually considered;
(e)the descriptions of the preferred embodiment (pages 5-8); and
(f)the statement that “the invention is not limited to the embodiments disclosed” (page 8).
Anchorage-Connection Arrangement versions 4 and 5
Mr Newman gave evidence that Versions 4 and 5 were not within the scope of this omnibus claim. This was due to the absence in the drawings of the “flexibly” linked metal components, namely the latching hook and connection plate, which were present in Versions 4 and 5.
Further, whilst Mr Bowtell’s opinion that the invention was obvious may be admissible — despite it being the ultimate question before the Court (see s 80 of the Evidence Act) — it is not determinative. It is important for the Court to determine whether the expert witness attributes the correct meaning to the word “obvious” and to ensure that hindsight is not a factor in the experts opinion: see Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 60-1 per Latham CJ, with whom McTiernan J agreed.
Mr Bowtell’s knowledge of the AU 605621 prior art and what he knew about the Tenth Patent taints his evidence in relation to “obviousness” with hindsight. Further, in accordance with the legal principles I outlined above in relation to the skilled addressee, in contrast to Mr Hunter, Mr Bowtell is clearly inventive in the field of child restraints, and is therefore impermissibly “inventive” to qualify as the requisite non-inventive “person skilled in the art”.
In addition, Mr Bowtell’s conclusion that the invention described and claimed in the Tenth Patent is obvious, must be viewed with caution for three reasons. First, he does not address the inventive combination as claimed in the Tenth Patent; he only addressed the “Y” shaped or “split” tether. Secondly, he only had limited involvement in the design of the tether strap arrangements of the invention. Thirdly, he acknowledged that the Tenth Patent described an “invention” in the contemporaneous documentation concerning his inventorship and the invention described in the Tenth Patent, both in Australia and the United States.
I therefore do not view Mr Bowtell’s evidence as supportive of Infa’s inventive step challenge. Moreover, Infa has not established that the information in patent specification AU 605621 or any other prior art (at the priority date) would have been reasonably able to have been ascertained, understood and regarded as relevant in Australia by a person skilled in the art when seeking a solution to the problem the invention seeks to overcome. This would need to be established by the evidence for Infa to satisfy the requirements of s 7(3). As Nicholas J stated in Delnorth Pty Ltd v Commissioner of Patents (2013) 100 IPR 175 at [33]:
[w]hether or not a particular document that forms part of the prior art base meets the requirements of s 7 (3) of the Act is something that must usually be determined by evidence.
In the absence of such evidence, Infa’s inventive step challenge cannot succeed.
UTILITY
Infa challenged the validity of the First, Third and Fifth Patents on the ground of inutility on the basis set out in the proposed Fourth POI. As I have mentioned, Infa made an application to amend its pleadings to include an allegation of inutility against the Tenth Patent. Britax opposed that application to amend, principally on the ground that the allegation was of no substance.
I have come to the view that Infa has failed in its inutility challenge in relation to all the relevant patents (including the Tenth Patent), and on this basis have refused leave to amend in relation to the Tenth Patent on the ground that it would be futile to allow the amendment. If there had been any basis for the claim of inutility, I would have allowed the amendment sought by Infa, because Britax has had ample opportunity (which it successfully availed itself of) to defend the new allegations made by Infa in relation to the Tenth Patent.
Legal Principles
Subsections 18(1)(c) and 18(1A)(c) of the Act require that a patentable invention, so far as claimed in any claim, must be useful.
Invalidity based on inutility could only be made out if the claims include within their scope forms of the invention which do not work at all or do not fulfil the stated promise set out in the specification description.
In Apotex Pty Ltd v AstraZeneca AB (No 4) (2013) 100 IPR 285 Jagot J at [352], adopted the following submission as summarising the applicable principles:
Section 18(1)(c) requires that an invention be “useful”. This will be the case if the claimed invention does what it is intended by the patentee to do, in the sense of meeting the object or promise in the specification, and the end result obtained is itself useful. For this purpose, the claims must be construed from the perspective of a skilled person in a common sense way, and not in a way that any such addressee would appreciate would lead to an unworkable result.
It is not necessary for the description in the specification to spell out matters which the skilled person could supply without the exercise of any inventive faculty in order to achieve the promise of the invention. The patentee is entitled to assume that the reader has a reasonably competent knowledge of what was known before and reasonably competent skill in the practical mode of doing what was then known. A purposeful adoption of an embodiment that would obviously lead to an unworkable or inferior result is not an appropriate way of testing utility. It is also relevant to pay attention to the nature of the alleged “promise” in the specification. Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification.
(Citations omitted.)
The above principles were mentioned in the context of standard patents, but are also applicable to innovation patents. I emphasise for the purposes of this proceeding that “an asserted lack of utility must be established by appropriate evidence, not by mere speculation”, as Jagot J accepted. The evidence that would need to be led would be evidence relating to usefulness in light of the knowledge of persons skilled in the art, before or at the filing date or grant of the relevant patent. I need not investigate the exact date for the purposes of this proceeding, as I have concluded that Infa has either provided no evidence or insufficient evidence in support of its cross-claim on the ground of inutility.
In order to assess utility, it is necessary to determine the “promise” of the impugned patent, that is, what the patent intended to achieve. This involves construing the claims of the impugned patent, understanding the specification and considering the evidence of the skilled addressee. Whether or not the achievement of that purpose is difficult, expensive, or results in an invention of poor quality, is not to the point, unless those attributes are part of the promise or purpose of the invention.
The utility of a patent is to be objectively considered against the patent specification and claims. The High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 (‘Advanced Building Systems’) at [24] stated:
It is no objection to validity of a patent granted under the Act that it is commercially impracticable; its utility depends on whether, by following the teaching of the complete specification, the result claimed is produced.
In Advanced Building Systems, the High Court cited the Court of Appeal decision of Lane Fox v Kensington and Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 430-1. In that decision, in describing the essence of the utility requirement at 431, Lindley LJ said:
To judge of utility the directions in the amended specification must be followed, and, if the result is that the object sought to be attained by the patentee can be attained and is practically useful at the time when the patent is granted, the test of utility is satisfied. Utility is often a question of degree, and always has reference to some object. Useful for what? is a question which must be always asked, and the answer must be, Useful for the purposes indicated by the patentee.
The primary utility consideration is whether the invention as claimed will achieve the result promised by the specification, the result itself being useful. However, it must be recognised that if the appropriately skilled addressee is able to supply an omitted feature, which is part of the common general knowledge, then provided the invention achieves the promise with that feature supplied, the claim will not lack utility.
In Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525 at [117-8] Bennett J stated that:
[117] A principle has been expressed that all within the scope of a claim must be useful if the claim is not to fail for want of utility, so that a claim is bad if it covers something that will not produce the desired result, even if a skilled person would know which means to avoid it. This was the test applied by the primary judge in Lundbeck and the parties did not dispute this test in the appeal in that case. However, this principle does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning. The claims should be construed as they would be by the person skilled in the art desirous of making use of the invention. It has also been said that a claim does not need to specify a limitation that was common knowledge in the art for that limitation to apply in construing a claim to avoid want of utility. In Lundbeck, Bennett J, with whom Middleton J agreed, affirmed the test as set out in Ranbaxy and Austal Ships.
[118] The claims of the patents allow the reader to select which specific binding reagents to use in the device, although the specifications express preference for reagents such as highly specific antibodies and monoclonal antibodies. Where a claim omits a feature which, on a proper construction of the claim, is left for the reader to supply, the claim will not be invalid for want of utility if the feature is one that the skilled addressee could reasonably be expected to supply and the claimed invention is useful after the feature is supplied. A similar approach should be adopted where a claim leaves a choice to the skilled reader to select features to include in the invention. In such circumstances, the fact that it is possible to make a purposeful selection of inappropriate features with the intention of making something useless does not imply that the claim lacks utility.
(Citations omitted.)
I accept that it is not enough for the claimed invention to fulfil the promise of the impugned patent, but the result obtained must itself be useful: see, eg, Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449 at [141].
Consideration
First, Third and Fifth Patents
The specifications of each of the First, Third and Fifth Patents describe an invention which promises to secure the harness of a child safety seat to a vehicle, and to do so independently of the safety seat shell.
Infa submitted the promise of an independently secured harness is not achieved by the invention as described in the claims of those patents. It noted that:
(a)none of claims 1 or 2 of the First Patent has, as a feature, a connection strap that is connected or connectable to a child harness;
(b)none of claims 1 to 5 of the Third Patent has, as a feature, that the connections means is connected to, or suitable for connection to, a child harness, but is anchored independently of the child safety seat; and
(c)none of claims 1, 2, or 3 of the Fifth Patent has, as a feature, a harness or that the child safety seat incorporates a harness that is anchored independently of the seat shell.
I have already referred to the relevant claims in the Construction Judgment, and it will be observed that the scope of the inventions is for an apparatus for use in a motor vehicle.
Infa suggested that the independence of the harness from the seat shell could be tested by considering whether the harness would remain secured to the vehicle anchorage point, if the tether strap — connected “with respect to” the seat shell and to the vehicle anchorage point — were severed at the seat shell. It is not intuitively obvious that the harness would lose attachment to the anchorage point in such a scenario. In any event, Infa did not provide evidence in support of the asserted lack of utility.
Infa has therefore failed to discharge its burden of proof in relation to this ground. Neither Mr Hunter nor Mr Newman saw any difficulty in relation to the utility of each of the Innovation Patents. I do not accept that Infa has shown, in relation to each impugned patent, that within the scope of the invention there is any subject matter which would not achieve the promised result, or that the invention is not otherwise useful.
Tenth Patent
The specification of the Tenth Patent, having identified several problems with the prior art, states (at 2.7-11) that an object of the invention is:
… to overcome the above mentioned problems and in particular to provide a single tether strap in either the rear or forward facing mode, and which also allows for minimum distance between the rear of the seat and the attachment point on the vehicle.
The “above mentioned problems” are identified as problems arising from the need for two separate tether straps in dual purpose (ie rear or forward facing) seats, and the use of multiple intermediate componentry (such as an adjusting means, a hook, and a means of connecting the strap to the hook) which may sometimes result in the tether strap being too long for use with the most convenient anchorage location, even at its shortest length.
The Tenth Patent therefore makes two promises: that a single tether strap can be used regardless of the forward or rear-facing mode of the safety seat, and that the tether strap is adjustable to ensure a tight securing of the seat with respect to the anchorage point, regardless of the distance between the seat and anchorage point.
Infa contended that the promise of the invention requires the tether strap to remain “adjustable” after the seat is installed in the vehicle. In support of that contention, Infa made a number of submissions.
First, Infa noted that the specification of the Tenth Patent (in relation to the figures, at 7.29-35) states that:
[a]ll of the embodiments described above have the advantage of the tether strap 11 being suitable for use in either the rear or forward facing seats. Clearly, there is an advantage in being able to simply pull the tether strap in the required position regardless of what direction the seat is facing.
Secondly, it submitted that the above statement is said to be directed to the practicalities of use once the seat is already installed and in a particular mode (rear or forward facing). Similarly, Infa noted that it is evident from the specification, and from the presence of integer 10.1.1 and integer 10.19.1 as well as the adjustment means integers 10.1.8 and 10.19.11, that the promise in the Tenth Patent contemplates an ability to adjust the tethering arrangements both before and after installation of the safety seat.
Thirdly, Infa argued that it is no answer to say that the tether strap can be adjusted prior to the connection to the attachment point, or that it can be achieved in the abstract, since neither approach will achieve the promised “minimum distance” between the rear of the safety seat and the attachment point on the vehicle, and may still be “too long for use” — an identified problem with the prior art.
Fourthly, it submitted that for a patent to possess the requisite utility, the promise of the claimed invention must be practically achievable by a user of such an invention. It added that the promise in the Tenth Patent was not practically achievable, since it would not be practical for a user to uninstall the seat each time it was used, in order to adjust or correct tension in the tether strap. In support of this practical consideration, Infa pointed out the following documents, which impliedly acknowledge the accepted practical need to be able to adjust a child restraint once installed:
(a)Britax Safe-N-Sound brochure entitled “A Guide to Child Restraints and Safer Motoring”:
It is most important that the tether strap and the seat belt which hold the child seat in place are securely anchored and tightened. Check by tugging on the child seat.
It is not enough just to buckle your child in. Every time a child restraint or seat belt is used, you must check that the restraint is adjusted properly to fit your child and that it is securely fastened;
(b)NSW Infant and Child Resource Manual (1996):
Infant and Child Restraints
Advice on Installing a Restraint SafelyEnsure the top tether strap and the adult seat belt that keeps the restraint in position are properly adjusted - they shouldn’t have any slack. When tightening the seat belt and top tether strap, push the child seat firmly into the car seat back and cushion, with your body weight, so that they are compressed. This helps ensure a very tight fit, and minimises subsequent movement in a crash.
…
Installation and Adjustment
ŸFold down the rear stay bar and lock it in place.
ŸPlace the unit on the car seat and push it hard against the seat back.
ŸPass the seat belt between the two plastic mouldings.
ŸCouple the seat belt and remove any slack from it.
ŸPlace the child in the unit, fit and firmly adjust the harness.
ŸAttach the top tether strap to the anchor fitting and remove any slack from it while applying pressure to the top of the unit so that the top of the car seat back is slightly compressed.
(c)VicRoads Brochure “Why Use Child Restraints?”
How to use a child car seat
A child car seat must be installed correctly in your vehicle and adjusted properly to fit your child firmly. If it is not, the restraint may not protect your child at all.
(d)Australian Standard AS/NZS 1754:2000 ‘Child restraint systems for use in motor vehicles’
3.2.1 RESTRAINT SYSTEM
3.2.1 GeneralThe restraint system shall comply with the following: …
(f)Normal wearing adjustments shall be possible with the occupant in the restraint system and without loosening, or removal, of the restraint system from the vehicle. …
(g)The restraint system shall have adequate adjustments for fitment to every vehicle model and seating position for which it purports to be suitable. Adjustments shall be possible with the system in all intended installed seating positions. Adjustment shall be accomplished without the use of tools.
Expert Evidence
On the basis of the above submissions as to the impracticality of the promise, Infa challenged the utility of the Tenth Patent. In doing so, it relied on the evidence advanced by the witnesses Messrs Bowtell and Hunter about the unsuitability for use of some embodiments of the described invention depicted in the drawings.
Mr Bowtell gave evidence that the arrangements depicted in figures 6 to 9 and in particular figure 11 were impractical. In relation to those figures, Mr Bowtell said that if there was any tension in the system depicted (such as would occur in an installed state), it would be “almost impossible to adjust the tether strap due to the frictional values that are within that webbing system”.
Mr Bowtell answered a question from the Court concerning the presence of the lock of the adjustment means:
His Honour: If you didn’t have the lock on, you could adjust it, couldn’t you? It is not taut?
Mr Bowtell: It would still be difficult.
His Honour: Difficult, but that’s all? Not impossible?
Mr Bowtell: Be difficult. I would - it wouldn’t be impossible, but it would take a lot of force, so it would be impractical for the marketplace.
Mr Bowtell gave evidence that in his experience, consumers will not get the adjustment right the first time, and there will be a process of trial and error.
I accept that Mr Bowtell’s opinions concerning operation of the arrangements reflected in figures 6 to 9 and 11. Nevertheless, I consider that Infa still cannot succeed. Mr Bowtell accepted that all the figures in the Tenth Patent (including figure 11) could be put into practice (albeit with force) and the tether strap slackened for fitment and then tightened. He considered that some of the embodiments in the figures were unworkable, but this was in the sense that consumers had little patience and would give up after one or two attempts if there were difficulties in installing a safety seat and tether strap correctly. I do not consider that this shows inutility. In any event, there is evidence that the fitting of a child safety seat is often conducted by a professional “fitter” and therefore there may be some dispute as to whether it is relevant to consider the consumer.
Mr Hunter similarly concluded that the embodiments in each of figures 6 to 9 and 11 would be “difficult to use, impractical”.
Mr Hunter was asked in cross-examination whether he perceived problems with the embodiments of the Tenth Patent, particularly as to the adjustment of the tether strap under tension. He indicated that although some of the embodiments depicted in figures 5 to 11 might be difficult (to varying degrees) to install, it was nevertheless possible with a trial and error approach. Mr Hunter also stated that the tether strap adjustment would be required for different vehicles. He said that whilst a consumer might not persevere after a “second go” when installing the seat, the adjustment of the tether strap would be “difficult but not impossible”. Mr Hunter did not accept that the working of any of the embodiments of figures 5 to 11 was not possible.
Even based upon Mr Hunter’s evidence, I do not consider that Infa has provided sufficient evidence to succeed on the ground of inutility against the Tenth Patent.
In relation to Infa’s submissions, I find that the Tenth Patent does not promise the practicability or ease of adjustment of the tether strap, whether in an installed state or not. The second promise of the invention in the Tenth Patent is that a single tether strap may be employed in a safety seat in either rear or forward-facing mode, which allows for a minimum distance between the rear of the seat and the attachment point of the vehicle. This promise is accomplished by each of the embodiments depicted in the figures of the Tenth Patent, and does not require adjustment to occur at any particular point in time (ie pre- or post-installation). Otherwise, the result obtained by the invention is itself useful.
In my view, the contentions of Infa on utility must fail.
CLARITY
As pleaded, Infa challenges the validity of the First to Tenth Patents (inclusive) on the ground of non-compliance with s 40(3) of the Act (lack of clarity).
Section 40(3) requires, in part, that the claims must be clear and succinct. Accordingly, a cardinal principle of construction for patent claims is that the claims define the invention and that the forbidden field of the monopoly must be stated clearly, and with precision, in the claims and not elsewhere.
The patent must describe the invention with precision so that the precise extent of the patentee’s monopoly can be determined.
However, in Minnesota Mining, Aickin J stated at 274 that “[l]ack of precise definition in claims is not fatal to their validity so long as they provide a workable standard suitable to the intended use”.
A claim is not ambiguous or invalid for lack of clarity merely because it is difficult to construe, provided it can be properly and fairly construed.
Sometimes “imprecise” terms may be used in a claim – for example, “approximately”, “substantial” and “relatively”. If the skilled addressee, in the context of the claim and specification, can understand such term to provide a proper standard in which to understand the Patent, this will suffice. The skilled addressee must be able, through the application of common sense, to resolve any ambiguity in description.
Neither Mr Newman nor Mr Hunter had any difficulty in giving meaning to the various words or phrases in the claims although there was an evident difference of expert opinion as to the scope of some of those words or phrases. The Court has resolved any ambiguity in these reasons and the Construction Judgment, and has been able to ascertain the precise extent of the monopoly claimed.
It is not enough for Infa to contend, as Infa does, that the impugned terms lack clarity on account of the substantial discord between the parties and the experts as to interpretation of the claims when considering whether the Infa Products infringe.
DISPOSITION
I will order that the proceeding be adjourned for directions at 10.15 am on Friday 14 August 2015. I would expect that the parties confer and provide to the Court an indication of the issues still outstanding, and a timetable for their disposition.
I certify that the preceding five hundred and eighty-seven (587) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton. Associate:
Dated: 30 June 2015
ANNEXURE ‘A’
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