Miele & Cie KG v Bruckbauer

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FEDERAL COURT OF AUSTRALIA

Miele & Cie KG v Bruckbauer [2025] FCA 537

File number: VID 711 of 2023
Judgment of: ROFE J
Date of judgment: 27 May 2025
Catchwords: PATENTS – application to amend claims of a patent application under s 105 of the Patents Act 1990 (Cth) due to typographical error – correction of obvious mistake
PATENTS – infringement – standard patent for a
hob with a recess for a device for downwardly removing cooking vapours through suction – claim construction
PATENTS – validity – support – sufficiency – novelty – whether a document is publicly available – whether there are multiple forms of the invention – ss 40(2)(a), 40(3) and 43(3) of the Patents Act 1990 (Cth)
Legislation:

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Patents Act 1990 (Cth)

Patents Act1952 (Cth)

Federal Court Rules2011 (Cth)

Patents Regulations 1991 (Cth)

Patents Act 1949 (UK)
Cases cited:

Airco Fasteners Pty Ltd v Illinois Tool Works Inc (2023) 170 IPR 225

American Home Products Corp v Novartis Pharmaceuticals UK Ltd [2001] RPC 8

AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324

AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356

Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (2012) 99 IPR 59

BlueScope Steel Ltd v Dongkuk Steel Mill Co., Ltd(No 2) (2019) 152 IPR 195

Briginshaw v Briginshaw (1938) 60 CLR 336

Calix Ltd v Grenof Pty Ltd (2023) 171 IPR 582

Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183

CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260

Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH (2020) 151 IPR 181

CSL Ltd v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) (2010) 89 IPR 288

Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd (2018) 135 IPR 403

Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (2010) 88 IPR 1

Farmhand Inc v Spadework Ltd [1975] RPC 617

Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1

Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited (2005) 67 IPR 230

Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039

General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457

General Tire and Rubber Co (Frost’s) Patent [1972] RPC 259

HTC Corp v Gemalto SA [2014] EWCA Civ 1335

Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1

Icescape Ltd v Ice-World International BV [2019] FSR 5

Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 239 FCR 117

JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68

Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86

Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (2023) 176 IPR 336

Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444

Les Laboratoires…

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Details
Case
[2025] FCA 537
Decision Date

CaseChat Overview and Summary

The case of Miele & Cie KG v Bruckbauer involved a dispute over the validity, infringement, and amendment of a patent related to a hob with a recess for a device to remove cooking vapours through suction. The matter was heard in the Federal Court of Australia. The primary legal issues included the validity of the patent claims, whether the claims were sufficiently supported and novel, the interpretation of the patent claims, and the appropriateness of allowing amendments to correct typographical errors in the patent claims.

The court examined the nature of the errors and found them to be typographical in nature, not indicative of an attempt to alter the patent's scope. The typographical errors were deemed obvious mistakes, and the court found that the amendments proposed by Bruckbauer were not intended to cure any actual or potential invalidity of the patent. The court noted that a more lenient approach should be adopted for such corrections, as they do not pose a "nuisance to industry." The court concluded that there was no evidence of prejudice to Miele or any unfair advantage gained by Bruckbauer, and that the delay in seeking the amendments was reasonable. Therefore, the court allowed the proposed amendments under section 105(1) of the Patents Act 1990 (Cth).

The court also addressed the infringement issue, finding that the Miele Silence Products did not infringe the asserted claims of the patent. Additionally, the court found that the patent did not meet the sufficiency or support requirements under sections 40(2)(a) and 40(3) of the Act. The court further determined that the 2015 Amendments were not allowable under section 102 of the Act because the PCT Application did not disclose the invention in a manner that was clear enough and complete enough for a person skilled in the art to perform the invention. However, if the claims were valid, the court would not have considered the Chinese Amendments to be novelty destroying for a one-fan configuration with the Deferred Priority Date.

The court directed the parties to confer and provide a draft order reflecting these reasons to the Chambers of Justice Rofe by 11 June 2025. If the parties could not reach an agreement, they were to notify Chambers and provide their own version of a draft order, highlighting areas of disagreement.

Orders

Orders of the court

1. The parties are directed to confer and provide a draft order giving effect to these reasons to the Chambers of Justice Rofe by 11 June 2025.

2. In the event that the parties are unable to reach agreement about the form of orders, then the parties are to notify Chambers and provide their own version of a draft order, with the areas of disagreement set out in mark-up.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

In Novartis, Merkel J recognised that there appeared to be a distinction in the exercise of the discretion in the authorities between validating amendments to cure otherwise invalid claims, and other amendments, such as deletion amendments involving deleting invalid claims, or the correction of errors or mistakes. At [66], Merkel J observed that a more lenient approach may be adopted for the latter type of amendments, noting that: … The reason for the leniency was explained by Pearson LJ in [C. Van der Lely NV v Bamfords Limited [1964] RPC 54] at 74–5 where his Lordship observed that a court is prima facie disposed to the deletion of invalid claims because if such claims were to remain in the patent they would constitute a potential “nuisance to industry”. A similar observation can be made in respect of the mere correction of errors or mistakes which are not sought to cure any actual or potential invalidity.Background to errors The PCT is an English translation of the original PCT Application which was in German. An English translation of amended claims 1 and 11 of the PCT Application which were made under Article 34 of the Treaty prior to entering the national phase in Australia and which were filed with IP Australia on 12 November 2013 when the national phase was entered in Australia The PCT and the 2013 Amendments were examined by IP Australia and an examination report was issued by IP Australia on 23 September 2015. The first error occurred in the course of the preparation of an amended claim set in response to the examination report. According to Dr Ganter, the amended claim set was based on a claim set of a corresponding European patent specification which was identical to the 2013 Amendments except that they included numerals in brackets. The amended claim set contains a typographical error in claim 1 at line 14 where it reads “a housing (44) for the heating of hob heating and control electronics” (Emphasis in original.), instead of “a housing (44) for the heating or hob heating and control electronics” (Emphasis in original.). Dr Ganter places the blame for the error on his secretary. Dr Ganter failed to notice and correct the typographical error when he reviewed and settled the proposed amended claim set. Dr Ganter gave four reasons why he considered the first error to be a typographical error:(a)The document was setting out amendments to claim 1 of Application No 2012247900 as amended following the 2013 Amendments, and at that time claim 1 of Application No 2012247900 included the words “a housing for the heating or hob heating and control electronics” (emphasis added) and did not include the words “housing for the heating of hob heating and control electronics”.(b) The Amended Claim Set identifies amendments to the claims of Application No 2012247900 using the Microsoft Word “track changes” function, with additions underlined and deletions struck-through. In line 16, “(44)” is struck-through (indicating a deletion), but there is no strike-through of the word “or” or underlining of the word “of”. That is, there is no indication in the Amended Claim Set that the word “or” was intended to be replaced with the word “of’.(c) The words “heating of hob heating and control electronics” (emphasis added) did not appear anywhere in the Translated Specification or the 2013 Amendments when the Amended Claim Set was prepared. However, the Translated Specification contains the phrase “a housing for the heating or hob heating and control electronics” (emphasis added) in claim 1 and at pages 12, 14 and 17.(d) On my understanding of the invention described in the body of the Patent, the appearance of the words “heating of hob heating and control electronics” in claim 1 do not make sense, whereas the appearance of the words “heating or hob heating and control electronics” do make sense. (Emphasis in original.)

Evidence

Evidence Before The Court

According to the CNIPA update, the CNIPA website would be updated to allow access to the prosecution history of the patent families of inventions from patent offices, including SIPO. Miele submitted that the availability of the claim amendments at the Deferred Priority Date is entirely consistent with these policy objectives and increased functionality of the CNIPA website described in the CNIPA Update, and the Cheng Article. Miele — Patent attorney evidence Mr Liu and Mr Min opine that based on their experience, the Chinese Amendments would have been publicly available through the CNIPA website at the Deferred Priority Date. Neither had personally accessed amended claims of published, but not granted, patent applications via the CNIPA website before the Deferred Priority Date. Mr Liu’s evidence, based on one example of access by colleagues at his firm, was that he “understood” that the CNIPA website was used in 2015 to access those types of documents. In his second affidavit, Mr Liu referred to a third-party observation submitted by his firm in March 2016, as evidence that his colleagues had been able to access the amended claims of a patent (being a document filed after publication of the patent application but prior to grant) on the CNIPA website. Mr Liu’s first affidavit, which was filed by Miele as evidence in chief in support of the publication of the Chinese Amendments, did not mention the 2010 Guidelines. Mr Liu’s evidence was that at the time the 2010 Guidelines were enacted, SIPO operated predominantly using paper forms and physical filing, and that rule 5.2 of the 2010 Guidelines regulated access to the paper files. As the 2010 Guidelines were enacted prior to the introduction of the electronic search system on the CNIPA website, Mr Liu did not consider that the 2010 Guidelines applied to the electronic system. Mr Liu agreed that rule 5.2 of the 2010 Guidelines was the relevant provision that regulated access to CNIPA documents. However, Mr Liu said that the 2010 Guidelines did not reflect the functionality of the CNIPA website and were inconsistent with what could be accessed in practice when searching the CNIPA website in late 2015. The inconsistency applied to access to electronic copies of documents, not documents held physically at the CNIPA offices. According to Mr Liu, the inconsistency between the 2010 Guidelines and the functionality of the CNIPA website continues to this day. Although Mr Liu said that it was his personal practice to access documents like the Chinese Amendments using the CNIPA website prior to the Deferred Priority Date, and that the example of his colleagues’ in March 2106 reflected his experience, Mr Liu gave no example of him accessing an amended claims document of a published but not granted patent application via the CNIPA website before or after the Deferred Priority Date. It was Mr Min’s evidence that, in his experience, claim amendments for published but not yet granted Chinese patent applications were publicly available via the CNIPA website prior to the Deferred Priority Date. According to Mr Min, after the CNIPA website was upgraded in May 2015, users could access a broader range of documents for published but not yet granted Chinese patent applications, including claim amendments filed after publication but prior to grant.

Decision

Reasons for decision

However, I have found that Miele has not made out its case with respect to novelty. CONCLUSION For the reasons above, I have found that the Miele Silence Products do not infringe the asserted claims (claims 1 and 11) of the Patent. However, the specification and relevant claims of the Patent do not meet the sufficiency or support requirements under ss 40(2)(a) and 40(3) of the Act. I have also found that, by reason of the PCT Application failing to disclose the invention in the Patent in a manner that is clear enough and complete enough such that the invention can be performed by a person skilled in the art, the 2015 Amendments were not allowable under s 102 of the Act. While I do not accept that that the relevant claims were valid, if I did, I would not have considered that the Chinese Amendments would have been novelty destroying for a one fan configuration with the Deferred Priority Date. I will direct the parties to confer and either provide my chambers with an agreed form of order which reflects these reasons, or with their own version of a proposed order.

Ratio Decidendi

Legal Principle Established

To the extent that there was any delay by Mr Bruckbauer in seeking the amendment of the Patent, BORA submits that the period of delay was between 27 February 2023 and 22 September 2023. BORA contends that there was nothing unreasonable about Mr Bruckbauer not seeking to amend before the letter of demand regarding the Current Miele Products was sent on 28 August 2023. Consideration The purpose of the proposed amendments is to rectify the two errors. BORA submits that they are both clearly clerical errors. In relation to the first error, in claim 1, the same phrase is used in the body of the specification without the error (see [3.1], [11.1], [12.4] and [17.3] of the Patent). The second error, which I consider is also an obvious error, splits the word “direction” into “direct” and “ion”. Since becoming aware of the errors in February 2023, BORA has moved reasonably promptly to notify Miele and the Commissioner of its intention to amend, and to commence the amendment process prescribed by the Rules. No advantage has been gained by BORA as a result of its failure to notice the relevant errors, or its assertion of the unamended claim. The amendments are not sought to cure an invalid patent. There is no evidence that Miele, or any other person, has been prejudiced by reason of the Patent in its unamended form. No unfair advantage has been sought or obtained. There has been no unreasonable delay in seeking the amendment, and there are no other circumstances which would lead the Court to refuse to make the proposed amendments. In the circumstances I am satisfied that it is appropriate to allow the proposed amendments pursuant to s 105(1) of the Act.PERSON SKILLED IN THE ART The person skilled in the art is not a reference to a specific person but is a legal construct drawn by reference to the available evidence. As French CJ explained in AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356 at [23] (AstraZeneca HC):The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person — a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step. Relevant evidence will include the patent specification and, typically, evidence of persons with knowledge and experience in the field of the invention: Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 5) [2024] FCA 360 at [70] (per Nicholas J). The legal construct may be a single person or may be a team of persons “whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed”: General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485 (per Sachs, Buckley and Orr LJJ). The hypothetical construct “is unimaginative and without inventive capacity”: General Tire at 485. Miele submits that the Patent describes a device for downwardly removing cooking vapours by suction that, together with the hob, forms a hob assembly unit, including the use of radial (centrifugal) fans to direct the flow of the cooking vapour into, through and out of the device. Accordingly, the person skilled in the art includes, within a skilled team, a mechanical engineer with expertise in centrifugal fans and optimising fluid flow in industrial products. Miele submits that Mr Hunter is appropriately qualified to give relevant evidence in relation to centrifugal fans and air flow dynamics from the perspective of a mechanical engineer.