MMD Australia Pty Ltd v Camco Engineering Pty Ltd

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FEDERAL COURT OF AUSTRALIA

MMD Australia Pty Ltd v Camco Engineering Pty Ltd [2024] FCAFC 38

Appeal from: MMD Design and Consultancy Limited v Camco Engineering Pty Ltd [2023] FCA 827
File number: VID 768 of 2023
Judgment of: YATES, BURLEY AND JACKMAN JJ
Date of judgment: 19 March 2024
Catchwords: PATENTS – construction of patent – invention of tooth construction for a mineral sizer – meaning of “front cover which is weldingly secured to and seated in face to face contact with the front face of the support body” – where primary judge rejected claim because, inter alia, “face to face contact” requires physical contact over most of two faces
Legislation:

Competition and Consumer Act 2010 (Cth), Sch 2 (Australian Consumer Law) s 18

Patents Act 1990 (Cth)
Cases cited:

Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7; (2023) 170 IPR 225

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

Erickson’s Patent (1923) 40 RPC 477

ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46; (2018) 131 IPR 1

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

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71; (2018) 264 FCR 474

Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd [2019] FCAFC 162; (2019) 145 IPR 39

Jupiters Limited v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 65 IPR 86; 222 ALR 155

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1

Meat and Livestock Australia Limited v Cargill, Inc [2018] FCA 51; (2018) 129 IPR 278

Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545

Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; (2005) 68 IPR 1; 225 ALR 416

Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179; (2015) 240 FCR 85

Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289

Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225

Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Division: General Division
Registry: Victoria
National Practice Area: Intellectual Property
Sub-area: Patents and associated Statutes
Number of paragraphs: 57
Date of hearing: 19–20 February 2024
Counsel for the Applicants: Mr B Caine KC and Ms C Cunliffe
Solicitor for the Applicants: Wrays Lawyers
Counsel for the Respondent: Mr A Ryan SC and Mr A Fox SC
Solicitor for the Respondent: Griffith Hack Lawyers

ORDERS

VID 768 of 2023
BETWEEN:

MMD AUSTRALIA PTY LTD

First Appellant

MMD DESIGN AND CONSULTANCY LIMITED

Second Appellant
AND:

CAMCO ENGINEERING PTY LTD ACN 067 041 641

Respondent

ORDER MADE BY:

YATES, BURLEY AND JACKMAN JJ

DATE OF ORDER:

19 MARCH 2024

THE COURT ORDERS THAT:

1.The appeal be dismissed.

2.The cross-appeal be dismissed.

3.The appellants’ pay…

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Details
Case
[2024] FCAFC 38
Decision Date

CaseChat Overview and Summary

The case of MMD Australia Pty Ltd v Camco Engineering Pty Ltd concerns a dispute over the interpretation of a patent for a mineral sizer. The matter was heard in the Full Court of the Federal Court of Australia, which was called upon to resolve issues regarding the construction of certain terms in a patent claim and whether there was any infringement of the patent by Camco Engineering. The appellant, MMD Australia, argued that the primary judge had misconstrued several terms in the patent claim, which related to the construction of the tooth in the mineral sizer. Specifically, MMD contended that the primary judge had erred in interpreting the phrase "front cover which is weldingly secured to and seated in face to face contact with the front face of the support body." The court found that the primary judge's interpretation of this phrase was correct; it required physical contact across most of the surfaces, which was consistent with the ordinary meaning of the words used. The court further held that the appellant's proposed construction was inconsistent with the language of the patent claim and the description provided in the specification. As a result of this finding, the court concluded that there was no infringement of the patent by Camco Engineering. Consequently, the court dismissed the appeal and the cross-appeal, and ordered that the appellant pay the respondent's costs of both the appeal and the cross-appeal.

Orders

Orders of the court

1. The appeal be dismissed.

2. The cross-appeal be dismissed.

3. The appellants’ pay the respondent’s costs of the appeal and cross-appeal.

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

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In relation to this expression, MMD accepts that the primary judge correctly held at [216], [245] and [305] that a “separate rear cover” in the concluding words to Claim 1 is separate from the front cover. However, MMD submits that the primary judge erred at [246] in concluding that the rear cover must be separate from the front wall of an intermediate cover. But if the primary judge was correct in finding that the front wall of the intermediate cover is the front cover referred to in Claim 1, as we have held above, then it must follow that the rear cover is separate from the front wall of the intermediate cover.Conclusion It follows, in our view, that the primary judge was correct on the issues of construction concerning the three integers of Claim 1 with which we have dealt. MMD’s submissions concerning infringement pre-suppose that MMD’s construction of one or more of those integers is the preferred construction. Given that we have rejected MMD’s submissions concerning the construction of those integers, the issues of infringement do not arise. In the absence of any infringement, MMD’s ground of appeal concerning additional damages also does not arise. Similarly, MMD’s claim for contravention of s 18 of the Australian Consumer Law, which was directed to an alleged representation by Camco that Camco and its customers were lawfully entitled without the consent of MMD to exploit Camco’s products in Australia and failed to warn customers of infringement of the Patent, does not arise. Nor is there any need to deal with the grounds set out in Camco’s notice of contention and cross-appeal. Accordingly, the appeal and cross-appeal should be dismissed. The appellant must pay the respondent’s costs of the appeal and cross-appeal.

Ratio Decidendi

Legal Principle Established

MMD also submits that its construction (which is sufficiently broad to include the configuration shown in Diagram 3) is supported by references in the specification concerning both the first and second embodiments to the side covers being “preferably co-planar” with the front and rear faces: page 4, lines 25 to 26; page 9, lines 13 to 14. Given that that is expressed merely as a preference, MMD submits that the Specification contemplates that the side covers can be shorter or longer than the face of the horn (as illustrated in Diagram 3 where the side covers extend beyond the horn).Consideration In our view, the primary judge was correct in construing the expression “seated in face to face contact” as meaning physically touching across most of the faces of the cover and the support body. The natural meaning of the ordinary English words used in the relevant expression is that the surfaces directly and physically touch across their surfaces. The well-established insistence in the authorities (referred to above) on adopting a commonsense construction means that, in the context of components which are sand cast, the physical touching need not be perfectly across all of the respective surfaces, but must allow for undulations and roughness in the surfaces, such that physical touching across most of the surfaces is sufficient. The notion that the expression is wide enough to include the indirect transmission of force through an intermediate component (whether an intermediate cover or weld) is inconsistent with the clear language used in Claim 1. We regard that ordinary and natural meaning of the expression as being plain and unambiguous. As the High Court said in Welch Perrin at 610, if a claim is clear it is not to be made obscure simply because obscurities can be found in particular sentences in other parts of the document. See to the same effect Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 at [15] (Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ). Further, in our view the detailed method of construction described in the Specification for both the first embodiment and the second embodiment reinforces the plain meaning of the expression in Claim 1. In particular, we respectfully adopt the reasoning of the primary judge at [267] and [280] to which we have referred above, to the effect that the Specification speaks of weld as a preferable way to secure the covers of the tooth construction but says nothing about the transmission of forces through weld or the adjustment of the welds to bear transmission of the majority of the force as shear force, and describes components as seated in face to face contact before welding has taken place. As we have indicated above in dealing with MMD’s submissions on the point, we do not regard the references to “face to face contact” in relation to the intermediate cover and the tip cover as pointing towards MMD’s construction. The evidence on which MMD sought to rely established that the perceived practical difficulties could be met by machining the sand cast components, which would involve a costly and time-consuming process, but could not be described as impractical, impossible or not economically viable.