Snappi Holdings P/L v R.P. International P/L

[1993] FCA 889

IN THE FEDERAL COURT OF AUSTRALIA )	NO. QG 200 of 1992
QUEENSLAND DISTRICT REGISTRY	1
GENERAL DIVISION	1

BETWEEN:  and

SNAPPI BABY PTY. LTD. (ACN: 010 959 190)

Applicants

AND :	R.P. INTERNATIONAL PTY. LTD. (ACN: 009 340 265), CLIFFORD RAYMOND PAGET and DELORES
MAURI

Respondents -

MINUTES OF ORDERS

- 7 D E C 1993

FEDERAL COURT OF

JUDGE MAKING ORDER:	Drummond J	AUSTRALIA
DATE OF ORDER:	26 October, 1993	PRINCIPAL  REGISTRY
WHERE MADE:	Brisbane

the applicants by their counsel giving the usual undertaking as to damages THE COURT ORDERS THAT:

1.        The respondents be restrained until the trial of this action or earlier order from making, offering for sale, selling, or otherwise using or dealing with the device identified as exhibit "A" to the affidavit of Mr. A.P. Mizzi filed herein on 25 October, 1993 or any substantially similar device.

November, 1993.

Costs of and incidental to the interlocutory proceedings are reserved to the trial judge.

The costs of today so far as they relate to the directions are costs in the proceedings.

1.        The respondents file and serve their defence and cross-claim, if any, by Tuesday, 9 November, 1993.

2.        The applicants file and serve their reply and answer to the defence and cross-claim by Tuesday, 23

The parties give discovery by filing and serving their verified lists of documents by Tuesday, 7 December, 1993.

Mutual inspection be complete by Tuesday, 21

December, 1993.

The matter is adjourned for further directions to

9.15 a.m. on Tuesday, 8 February, 1994.

m:  Settlement and entry of orders is dealt with in
Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )	No. QG 200 of 1992
QUEENSLAND DISTRICT REGISTRY	)
GENERAL DIVISION	1

BETWEEN: SNAPPI HOLDINGS IPROPRIETARY) LIMITED and

SNAPPI BABY PTY. LTD. (ACN: 010 959 190)

Applicants

AND :	R.P. INTERNATIONAL PTY. LTD. (ACN: 009 340
265), CLIFFORD RAYMOND PAGET and DEL0RF.S
MAURI

Respondents

Coram:	Drummond J
Date:	26 October, 1993

Place: Brisbane

EX TEMPORE REASONS FOR JUDGWENT

This is an application by the first applicant as patentee and the second applicant as its exclusive licensee for an interlocutory injunction in an action in which it is alleged that the respondents, a company and its two directors, are infringing a patent in respect of a nappy fastener and are

respect of this fastener. The interlocutory injunction is	also infringing a registered design which the patentee owns in	sought, however, only in respect of the claim for infringement.
While the defence to the amended statement of claim has not yet been filed, it is not suggested in the proceedings before me that the applicantsr patent is invalid. The only question that arises here in deciding whether the applicants meet the first limb of the test that must be satisfied if they are to obtain the injunction they seek is whether they have shown a serious question to be tried that the respondents' device infringes their patent.
These proceedings were commenced in December 1992 after the applicants learned of the sale by the first respondent of a nappy fastener different in design to that which has provoked this application. An application for interlocutory relief was not pursued when the respondents agreed to cease the manufacture and sale of that particular article and also agreed to deliver up the manufacturing moulds to the applicants. The respondents also gave a written undertaking in February last not to market for sale or cause to be marketed a product directly infringing the patent. The reason for the terms in which this undertaking was framed are explained by the evidence before me. At that time, Mr. Paget had already formulated plans, after taking expert advice, to make and sell the fastener that is the subject of the present
application in the belief that that would not be an infringement of the applicants' rights.

A sample of the applicants* fastener is exhibit

"JGA1" to Mr. Adam's affidavit filed 18 December, 1992 while a

sample of the respondents' new fastener is exhibit "A" to Mr. Mizzi's affidavit of 25 October, 1993. A sketch showing an example of the way the applicants' fastener is used is figure 1 to the patent specification. The respondents' fastener is

used in the same way to hold in place the three corners of a
nappy on a baby's body.

I take the proper approach to the construction of a patent specification from the decision of this court in Populiq v HB Nominees Ptv. Ltd. (1982) 41 A.L.R. 471 at 476-7, the court approved the following statement of Lord Diplock in the House of Lords case of Catnic Com~onents Ltd. v Hill & Smith (1981) 7 F.S.R. 60 at 65-6:

"... patent specification is a unilateral statement

by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his intention i . e . 'skilled in the art') by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called 'pith and marrow' of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge ..."

The specification for the applicants' patent

includes the following: 

"FIELD OF THE INVENTION

This invention relates to a diaper or babiest napkin fastener particularly adapted for use in conjunction with diapers ... which are made of cloth or woven fabric, as opposed to disposable paper products ...

BACKGROUND TO THE INVENTION

It is the object of this invention to provide a fastener for use in conjunction with such cloth or fabric diapers which can more easily be rendered operative.

SUMMARY OF THE INVENTION

In accordance with this invention, there is provided a fastener comprising a substantially planar base member having a central zone from which at least three operatively divergent arms extend, at least one of such arms being elastically extensible, and a hook or tooth formation associated with each end region of each arm, each of such hook or tooth formations having a series of teeth directed inwardly and generally in the direction of the length of the associated arm and being operable to catch and engage the fibres of a cloth or fabric diaper to anchor the diaper in the direction in which the arm extends when an elastically extensible arm is extended and tends to pull the hook or tooth formations in the general direction of the associated arm."

Claim 1, which is the widest statement of the scope of the invention the subject of the patent, is in these same terms. The summary of the invention continues:

"Further preferred features of the invention provide for 3 arms to radiate from the central zone; for the central zone and three arms to be integral with each other and to be made of elastomeric material".

Claim 2 is in similar terms to the last passage

which I have just read from the section of the specification
described as the summary of the invention.

Finally, in the section setting out a detailed description with reference to the drawings, there is one embodiment of the invention illustrated and described, and this section concludes with the following passage:

"It will also be understood that numerous variations may be made to the above described embodiment of the invention without departing from the scope hereof which is limited simply to a fastener having a base comprising at least 3 arms carrying hook or tooth formations at their free ends and whereof at least one arm is elastically extensible in the general manner described above."

It is unnecessary to refer further to the specification. It is the claims themselves that must be taken to describe the area of the monopoly conferred by the patent: "The forbidden field must be found in the language of the claims and not elsewhere." See Electric & Musical Industries Ltd. v Lissen Ltd. (1938) 56 R.P.C. 307 at 309.

It is true that the claims must be construed in the context of the entire specification, but the clear words of a particular claim must not be cut down by references to other passages in the specification. In the course of summarising the principles by which patent specifications should be construed, Neill LJ, in Van Der Lelv NV v Ruston's Enaineerina Co. Ltd. (1985) 102 R.P.C. 461 at 503, said:

monopoly which is claimed. It is therefore not	"Thus, it is the function of the claim to define the
legitimate if the meaning of the claim when read by itself is plain, to diminish the ambit of the monopoly merely because in the body of the specification the patentee has described his invention in more restricted terms or by reference to some limitation which is not expressly or by proper inference reproduced in the claim itself."

As to whether the applicants have shown that there
is a serious question as to whether the respondents' device

infringes the applicants patent to be tried, debate centred largely on whether that device embodied one of the essential elements of the applicants invention referred to in claim 1, namely, whether it could be said to have:

"A central zone from which at least three

operatively divergent arms extend."

Evidence was admitted from patent attorneys retained by each side who have expressed opinions as to the meanings that can be given to the specification or to the wording of the specification and, in particular, to that of claim 1 and, on the applicants' side, what are the features of the respondents' device that show that it is covered by the wording of claim 1 and why, on the respondents' side, that should not be taken to be the case. I have got some assistance from the various expressions of opinion by these gentlemen. It should be said that there is a substantial degree of agreement among them as to the scope covered by the wording of the different parts of the specification and

relevant claims.

In my opinion the term "central zone" in the context of claim 1 is well capable of being understood as a term of wide import that describes a general space or area rather than a particular part or portion of a device embodying the applicants invention. I see nothing in the wording of claim 1 that indicates that this expression is there used to refer to a physical object or a part of a physical object. That this is not the intent of claim 1 is made clear in my view when regard is had to claim 2.

It is, in my view, arguable that the wording of claim 1 can fairly be said to cover the respondents' device since that device can be regarded as one that has the following characteristics: firstly, it comprises three forked arms each of which is made up of a part of that pair of the sides of the triangular section of the device that form each angle of that section, together with the T-shaped region in which each pair of sides terminates. Secondly, there is a central zone within the respondents' fastener that consists of the shape formed by and including the three sides of the triangular section, a shape that is infinitely variable according to the positions in which the hooks are fastened when the device is used from time to time and which in part enables the device to perform its intended function. Thirdly, the three forked arms are each elastically extensible and they extend from this zone, in that when the device is in use, they

arms are operatively divergent, divergent in that they go in	can be said to stretch out from this zone. Fourthly, these
different directions from the central zone and from each other, and each is operatively divergent in that it is in part because of this divergence between the three arms that the device is able to perform its intended function, the extensibility of the arms enhancing this functional capacity. Fifthly, there is a hook formation associated with the T- shaped end region of each arm, the teeth of which are so oriented as to engage and anchor the fabric of the nappy in the direction in which the arm with which that hook is associated extends.
In other words, I think that it is clearly arguable that the respondents' device does embody the substantial idea disclosed, particularly in claim 1. See Po~uliq v m Nominees, supra, at 475 where the Full Court quoted the following passage from the judgement of Dixon J in Radiation Ltd. v Galliers and Klaerr Ptv. Ltd. (1930) 60 C.L.R. 36 at 51:

"But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe; it is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing."

The respondents point to claim 2 and say that even

if claim 1 is construed in the way I have mentioned so that by

device, when claim 1 is read with claim 2, it is not arguable	itself it may be capable of applying to the respondentsf
that the respondents' device is comprehended by the applicants' monopoly so described, since the central zone itself must be made of elastomeric material. However, in Blanco White's book "Patents for Inventions", 5 Ed., at pp. 14-15, it is said:

"Claims not expressed to be inter-dependent must be treated as independent, and the features claimed cannot be combined as if they constituted different portions of a single composite claim."

In the Australian work, "Patents. Desiuns and Trademarks Law" by Lahore and others, this same notion is discussed in paragraph 1.6.044 in the following terms:

"A later claim, referring back to an earlier claim, with the words "according to" should be construed as incorporating all the features of the earlier claim. On the other hand, the earlier claim should be

construed as not claiming the specific feature or features claimed by the later. If possible, each claim in the specifications should be construed to have a separate effective meaning."

I read claim 2 as a claim for a narrower invention than that the subject of claim 1. While claim 2 must, by its terms, be read with claim 2 to enable the content of claim 2 to be identified, that is not the case with claim 1. Claim 1 itself is a claim that is quite independent of claim 2.

In my view there is a serious question to be tried as to whether the respondents' device infringes the

applicants' patent.

I do not find it necessary to attempt to assess the strength of the applicants' case since I think that the balance of convenience clearly favours the grant of the relief sought. If the relief sought is granted but the respondents succeed at trial, firstly, the respondents (who only started to manufacture the device in July last after deciding to take

the risk that it would not infringe the applicants' patent, in circumstances in which they must have expected the applicants would seek to protect their rights) will only be delayed temporarily from continuing to market it. There is no suggestion from the respondents that the applicants will not be well able to pay any damages to which they will be entitled pursuant to the undertaking the applicants will have to give should the restraint be granted and the respondents succeed at trial.

Next, the respondents, according to Mr. Paget's evidence, have not incurred any really substantial expense in manufacturing and marketing their device to date. Moreover, an injunction will not render much of 'that expense nugatory in any event. It will only delay the receipt by the respondents of the fruits of that expenditure.

Thirdly, although in his affidavit, and particularly

in paragraphs 30 and 31, Mr. Paget suggested that such a

business activities, could well lead to the respondent	temporary restraint as the applicants seek on the respondents'
company's business ceasing to be viable, in his cross- examination, he resiled significantly from that. I do not accept that the grant of interlocutory relief is likely to have any catastrophic effect on the respondents' business.
On the other hand, if the injunction is refused and the applicants succeed at trial, firstly, there is real doubt as to whether the respondents will be in a position to pay damages or any profits to which the applicants would then be entitled in view of what appears from Mr. Paget's evidence to be the respondent company's fairly marginal operation and what
m. Paget says about the financial position of himself and
his wife in his two affidavits. Secondly, the respondents' marketing skills appear to have been such as enabled them to obtain a significant market for the fastener which they initially marketed. There is thus reason to think that those same skills will, unless the restraint granted is imposed, enable the respondents to achieve the same sort of market penetration for their new fastener in the period before trial. If this happens, as I think is likely to be the case, it is also likely to cause some unquantifiable injury to the applicants' goodwill, given the effort the applicants have expended over a number of years in establishing their product in the market, a product in which they will be found to have a monopoly if their action succeeds.
This morning, before I commenced to deliver judgment, counsel for the respondents made an offer on behalf of his clients to undertake to pay the gross proceeds from the future sales of the respondents' article into court or into a mutually agreed account until the trial of this action or earlier order. This offer was made on the premise that I might be minded to grant the injunction sought. It is not an offer that is acceptable to the applicants and I do not consider it appropriate, given the circumstances that I have already outlined, to decline to grant the injunctive relief to which I think the applicants are entitled, merely because the considerably less extensive protection for the applicants offered by this belated undertaking has now emerged.

The application therefore succeeds.

I certify that this and the preceding
11 pages are a true copy of the
reasons for judgment herein of the

Honourable Mr. Justice Drummond.

Associate: luflc. Date: 26 October, 1993