Knauf Plasterboard Pty Ltd v CSR Building Products Limited - [2020] APO 7

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2020] APO 7
Patent Application: 2014201979

Title:WALL STRUCTURE AND METHOD

Patent Applicant: CSR Building Products Limited

Opponent:Knauf Plasterboard Pty Ltd

Delegate:Dr S. J. Smith

Decision Date: 29 January 2020

Hearing Date: Written submissions completed on 13 November 2019

Catchwords: PATENTS – opposition under section 104 – allowability under section 102(2)(b) considered – opposition unsuccessful – amendment allowed – costs awarded against the opponent

Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014201979

Title:WALL STRUCTURE AND METHOD

Patent Applicant: CSR Building Products Limited
Date of Decision: 29 January 2020
DECISION
The opposition is unsuccessful. I allow the amendments.
I award costs according to Schedule 8 against Knauf Plasterboard Pty Ltd.
REASONS FOR DECISION
Background

Patent application 2014201979 in the name of CSR Building Products Limited (CSR) was filed on 8 April 2014 claiming priority from provisional application 2013901190 which was filed on 8 April 2013. The application was advertised as accepted on 5 April 2018.
A notice of opposition to the grant of the patent was filed, out of time, by Knauf Plasterboard Pty Ltd (Knauf) on 12 July 2018, and an extension of time in relation to the filing of the notice was allowed on 18 September 2018.[1] Evidence in support was filed on 18 October 2018.
[1] Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64
CSR filed a request to amend the specification on 11 January 2019. Leave to amend was granted on 13 February 2019 and the amendment advertised for opposition purposes on 28 February 2019. Knauf filed a notice of opposition to the allowance of the amendments on 26 April 2019.
The opposition
Knauf filed a statement of grounds and particulars on 24 May 2019 specifying a single ground of opposition: lack of compliance with section 102(2) due to a failure of the amended claims to comply with section 40(3).
No evidence was filed and the opposition was heard by way of written submissions which were completed on 13 November 2019.
The legislation
Amendments to the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the application as it was filed after its commencement.
Section 102(2) of the Act as it applies to the present application is as follows:

(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).

The “relevant time” for the purpose of section 102(2)(a) is after the specification has been accepted (section 102(2A) of the Act). As the present specification had been accepted when the amendments were requested, the requirements of section 102(2) apply.
Section 40(3) of the Act as it applies to the present case is as follows:

(3)The claim or claims must be clear and succinct and supported by matter described in the specification.

The nature of the amendments

The key amendment is to claim 1. There are corresponding amendments to the description, and some apparently uncontroversial amendments to dependent claims. To illustrate the nature of the amendment, a marked up version of claim 1 is shown below:
1. A wall structure for a wall of a building, the wall structure comprising a first inner wall member for providing support for the wall structure, the first inner wall member extending between the ceiling and the floor of a room of the building, a second inner wall member extending substantially between the ceiling and the floor, a first outer wall member connected to the first inner wall member for forming a covering for the first inner wall member, said first outer wall member extending in alignment with the first inner wall member to a first distance in the direction between the ceiling and the floor to form a covered part of the first inner wall member and an uncovered part of the first inner wall member, the first outer wall member having a first upper edge spaced from the ceiling, a second outer wall member connected to the second inner wall member for forming a cover of the second inner wall member, said second outer wall member extending in alignment with the second inner wall member to a second distance in the direction between the ceiling and the floor to form a covered part of the second inner wall member and an uncovered part of the second inner wall member, the second outer wall member having a second upper edge spaced from the ceiling, a first cover member located on a first side of the wall structure, and a second cover member located on a second side of the wall structure, the first cover member extending from the ceiling in a direction towards the floor to a distance so as to contact the first outer wall member to cover the uncovered part of the first inner wall member, the second cover member extending from the ceiling in a direction towards the floor for a distance to contact the second outer wall member to cover the uncovered part of the second inner wall member, wherein the first cover member extends with respect to the first outer wall member to a distance greater than the distance of the uncovered part of the first inner wall member from the ceiling to cover the uncovered part of first inner wall member so that the first upper edge of the first outer wall member ~~is concealed by~~extends above the level of a first side cover element of the first cover member, and the second cover member extends with respect to the second outer wall member to a distance greater than the distance of the uncovered part of the second inner wall member from the ceiling to cover the uncovered part of the second inner wall member so that the second upper edge of the second outer wall member extends above the level of a second side cover element of ~~is concealed by~~ the second cover member, wherein the first distance and the second distance are both less than the distance between the ceiling and the floor, to allow a part of the first inner wall member to remain uncovered by the first outer wall member and a part of the second inner wall member to remain uncovered by the second outer wall member, wherein the first cover member includes a the first side cover element extending outwardly from the first outer wall and a first end element arranged so that the first end element is angularly inclined to the first side cover element and the second cover member includes a the second side cover element extending outwardly from the second outer wall and a second end element angularly inclined to the second side cover element.
Section 102(2)(b)
Knauf submitted that the amendment is not allowable under section 102(2)(b) because the introduction of the term “the level” gives rise to a lack of clarity. Given that the reference to “the level” has been introduced in the amendment, it is apparent than any associated lack of clarity will arise “as a result of the amendment”.
It is a requirement of section 40(3) of the Act that the claims be clear. This requirement is satisfied if a person could ascertain “whether or not what he proposes to do falls within the ambit of the claim”.[2] However, the terms used in claims need not be precise and absolute, as set out in Flexible Steel Lacing Company v Beltreco Ltd:

“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, commonsense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection.”[3]
[2] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59 at 60.
[3] [2000] FCA 890; (2001) 49 IPR 331 at [81] (cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (citations omitted).

When construing claims a “generous measure of common sense should be used”.[4] The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. … While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole … It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”[5]
The specification
[4] Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 at [36].
[5] [2009] FCAFC 70; 81 IPR 228 at [118]-[120].
While the present matter is confined to what arises as a result of the amendment, in order to determine the matter it is necessary to construe “the level” in the context of the claims, and, more generally, the specification. The specification relates to “wall structures of buildings for forming a noise attenuating structure in which the wall structure comprises more than a single component.”[6] In this regard, the specification indicates that the inventors “surprisingly discovered that not all parts of the wall need to extend from floor to ceiling in order for the wall to provide effective sound attenuation between adjacent rooms”.[7] The words of the claim are reproduced above and it is not necessary to consider the specification in great detail as the invention may be simply understood with reference to Figure 1, as shown below.
[6] Accepted specification, page 1, lines 5-8.
[7] Accepted specification, page 4, lines 7-10.
The specification explains that Figure 1 shows a multi layer or multi component wall 10 comprising a first inner wall member in the form of a metal stud 12 extending between the ceiling 16 and floor 14. Any number of individual studs 12 spaced apart from each other can be used to define a stud wall, and insulation, such as insulation batt 22, is optionally fitted in the stud cavity between adjacent studs. A second inner wall member in the form of building panel 26 is in alignment with studs 12 and extends substantially between the ceiling 16 and the floor 14 (i.e. between brackets 28 and 30). To each inner wall member is attached an outer wall member (plasterboard sheets 46 and 64) which extends towards the ceiling but does not meet the ceiling, thus providing covered and uncovered (48 and 66) parts of the inner wall members.
As shown in Figure 1, bulkheads 50 and 68 (cover members) with ends 54 and 72 (end elements) depending vertically downwards from ceiling 16 and false ceilings 52 and 70 (side cover elements) are constructed to hide the uncovered parts of the wall 48 and 66. At a more general level the specification indicates that:
“In one form, the room is provided with a bulkhead, ceiling box, false ceiling, ceiling cavity or the like. In one form, the plasterboard lining extends from close to the floor to above the level of the bulkhead or level of the false ceiling of the room. Typically, the bulkhead is boxed in or closed by a suitable end wall to form a more or less substantially enclosed cavity.”[8]
“Although one form of bulkhead 50 is shown as being rectangular, any other suitable form is possible to suit the design of the building and/or room, including the exposed outer surfaces of the bulkhead being provided with decorative effects or architectural features.”[9]
[8] Accepted specification, page 13, lines 5-11.
[9] Accepted specification, page 23, lines 4-8.
The specification explains the benefit of the described arrangement wherein the upper edge of the plasterboard sheet is covered:
“This arrangement allows for easier and faster installation of sheets of plasterboard 46 and construction of wall 10, since none of plasterboard sheets 46 need to be cut to fit vertically between ceiling and floor to the full height of wall 10, as is usually required in conventional building construction techniques, but rather, an unfinished edge along the top edge of the upper plasterboard sheet can remain, and further the top of the plasterboard sheet does not need to be joined to the ceiling such as for example, by forming a neat join or neat cornice…”[10]
[10] Accepted specification, page 22, lines 2-12.
Preferred embodiments are described, including preferred forms of the first and second inner wall members, first and second outer wall members, air gaps and insulation. Various means of attaching the wall components together, and to the floor and ceiling, are also disclosed. It is specified that in many forms of the invention an installer is required to fire-seal the wall to satisfy fire and acoustic requirements such that the wall structure is compliant with the Building Code of Australia.[11]
Clarity
[11] Accepted specification, page 14, lines 18-23.
Knauf submitted that “there is no antecedent for the unclear term ‘the level’ and it is unclear which level is being referenced.” In this regard Knauf submitted that the level could mean the top-most level, the bottom-most level or some intermediate level of the cover elements.[12]
[12] Knauf’s submissions filed 12 September 2019.
Knauf placed some emphasis on a submission that CSR has varied its interpretation of “the level” in relation to family members of the present application,[13] and pursued a position when attempting to enforce a related patent inconsistent with submissions made to the Commissioner.[14] However, I agree with CSR that Knauf’s assertions that CSR has taken a mercurial approach to the construction of the claims of other applications are, irrespective of their merit, irrelevant to the task at hand. Indeed, even in relation to the specific application under consideration, the contents of the file wrapper (other than as provided for by section 116, which the parties have not suggested is a consideration in this matter) are not relevant to the construction of the claims.[15] I do note, however, that a patent obtained by fraud, false suggestion or misrepresentation is, pursuant to section 138, liable to be revoked.
[13] Knauf’s submissions filed 12 September 2019.
[14] Knauf’s submissions filed 13 November 2019.
[15] Lynx Engineering Consultants Pty Ltd v The Pilbara Infrastructure Pty Ltd [2016] FCAFC 19 at [80]-[81].
I will say at the outset that I do not consider that the lack of an antecedent for “the level” in and of itself gives rise to a lack of clarity. The question is whether on a sensible and common sense reading the claim can be understood.
CSR submitted that the claim is clear:
“It would be abundantly clear to the skilled addressee that ‘the level’ referred to in claim 1 as proposed to be amended is clearly the uppermost (or topmost) level of the first and second side cover elements.
In particular, the references to the first and second cover members each extending ‘to a distance greater than the distance of the uncovered part’ make it unambiguously clear that the upper edges of the first and second outer wall members must extend above the uppermost level of the first and second side cover elements, respectively.”[16]
“This is also depicted in the preferred embodiments shown in Figures 1 through 4 where, with reference to Figure 1 in particular, the first upper edge of the first outer wall member (plasterboard sheet) 46 extends above the level of first side cover element (false ceiling) 52 and the first upper edge of the second outer wall member (plasterboard sheet) 64 extends above the level of second side cover element (false ceiling) 70.”[17]
[16] CSR’s submissions filed 23 October 2019.
[17] CSR’s submissions filed 23 October 2019.
In response, Knauf drew attention to the various possible levels within a given side cover element:
“The side cover elements defined in claim 1 are not limited to being horizontal and infinitesimally thin, in which case there would be a single level and no antecedent issue as there would be a single level (i.e. the level). Instead, the side cover elements can be of any orientation and shape, having many levels, and fall within the scope of claim 1. The skilled person would naturally wonder which of many levels is meant when interpreting the claim, particularly to avoid infringement.”[18]
[18] Knauf’s submissions filed 13 November 2019.
Knauf submitted that CSR’s approach involved the improper approach of confining the scope of the claims by reference to limitations found in the body of the specification, and that in any case, reference to the specification did not support the CSR’s conclusion (referring to an annotated version of Figure 1 extracted in part below):
“In its reasoning… the applicant states that ‘the first and second cover members (e.g. overall bulkheads 50 including end element 54 as claimed) each extending “to a distance greater than the distance of the uncovered part 48” make it unambiguously clear that the upper edges of the first and second outer wall members 46 must extend above the uppermost level of the first and second side cover elements 52.’ However, this is not actually the case.
As shown in Figure 1, the outer wall members 46 extend above the lowermost level, intermediate levels, and the uppermost level of the side cover elements 52. The skilled person would naturally wonder which is meant, given any of the foregoing levels mean that the cover members 50 will still extend to a greater distance than the distance of the uncovered part 48 and still have the same advantage of the invention previously stated by the Applicant during prosecution (i.e. that the end of the outer wall 46 is above the lowermost level of the side cover element 52 so as to no[t] be visible from below.)”[19]
[19] Knauf’s submissions filed 13 November 2019 (emphasis in original).
Having regard to the submissions of the parties and the words of the claim on their face and in the context of the specification as a whole, I do not consider that the amendment gives rise to a lack of clarity. The claim requires that the first side cover element extends outwardly from the first outer wall, and the upper edge of that wall extends “above the level” of the side cover element. In my view, the normal and natural meaning of this part of the claim is that advanced by CSR, which considers, effectively, the level of the side cover element as a whole. While I appreciate that there are uppermost and lowermost levels to the side cover element, and an effectively infinite number of intermediate levels, the construction of claims should be approached with common sense, and it is to my mind sensible that where the upper edge of the wall from which the side cover element extends is defined to extend “above the level” of that element, it extends above the element as a whole (in context, the uppermost level). That is, this would be an unusual and strained use of language to describe a circumstance in which the wall from which the side cover element extends terminated at or below the uppermost level of that element. This consideration of the side cover element as a whole is also consistent with the reference in the claim to “the level” rather than “a level” of the side cover element.
Insofar as Knauf has submitted that the side cover elements may be of any orientation and shape, in the context of the specification, and absent evidence that it would be understood otherwise by a person skilled in the art, it seems to me that the sensible understanding is that it is the (uppermost) level of the side cover element at the junction with the outer wall above which the upper edge of the outer wall must extend.

Accordingly, I am not satisfied that the introduction of reference to “the level” has introduced a lack of clarity into the claims. Knauf has not established that the proposed amendment does not comply with section 102(2)(b).
Conclusion
Knauf has not made out its ground of opposition; the opposition fails.
Costs
It is usual in matters before the Commissioner that costs follow the event. I see no reason to depart from this approach and so I will accord costs according to Schedule 8 against Knauf.
Dr S. J. Smith
Delegate of the Commissioner of Patents