W & M Klein Pty Ltd v Art Plastics Pty Ltd
[2003] FCA 1406
•4 DECEMBER 2003
FEDERAL COURT OF AUSTRALIA
W & M Klein Pty Ltd v Art Plastics Pty Ltd [2003] FCA 1406
CORRIGENDUM
W & M KLEIN PTY LTD (ACN 006 528 543) v ART PLASTICS PTY LTD (ACN 009 438 706)
V 767 of 2001FINN J
4 DECEMBER 2003 (CORRIGENDUM DATED 4 DECEMBER 2003)
CANBERRA (HEARD IN MELBOURNE)
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V 767 OF 2001
BETWEEN:
W & M KLEIN PTY LTD (ACN 006 528 543)
APPLICANTAND:
ART PLASTICS PTY LTD (ACN 009 438 706)
RESPONDENTJUDGE:
FINN J
DATE OF ORDER:
4 DECEMBER 2003
WHERE MADE:
CANBERRA (HEARD IN MELBOURNE)
CORRIGENDUM
- The costs order is vacated.
I certify that the preceding one (1) paragraph
is a true copy of the Corrigendum to
the Reasons for Judgment of his Honour
Justice FinnAssociate:
Dated: 4 December 2003
FEDERAL COURT OF AUSTRALIA
W & M Klein Pty Ltd v Art Plastics Pty Ltd [2003] FCA 1406
PATENTS – combination patent – alleged infringement – not all essential integers of applicant’s claim taken
Populin v W B Nominees Pty Ltd (1982) 59 FLR 37 cited
Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 applied
Bartlem Pty Ltd v CMMC Pty Ltd (2001) 53 IPR 124 cited
Bartlem Pty Ltd v Cox Industries (Aust) Pty Ltd (2002) 55 IPR 449 cited
Root Qualities Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 cited
Welcome Real Time SA v Catuity Inc (2001) 51 IPR 327 applied
Décor Corporation v Dart Industries Inc (1988) 13 IPR 385 applied
News Ltd v South Sydney District Rugby League Football Club Ltd (2003) 200 ALR 157 cited
Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 citedW & M KLEIN PTY LTD (ACN 006 528 543) v ART PLASTICS PTY LTD (ACN 009 438 706)
V 767 of 2001FINN J
4 DECEMBER 2003
CANBERRA (HEARD IN MELBOURNE)
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V 767 OF 2001
BETWEEN:
W & M KLEIN PTY LTD (ACN 006 528 543)
APPLICANTAND:
ART PLASTICS PTY LTD (ACN 009 438 706)
RESPONDENTJUDGE:
FINN J
DATE OF ORDER:
4 DECEMBER 2003
WHERE MADE:
CANBERRA (HEARD IN MELBOURNE)
THE COURT ORDERS THAT:
- The application be dismissed with costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V 767 OF 2001
BETWEEN:
W & M KLEIN PTY LTD (ACN 006 528 543)
APPLICANTAND:
ART PLASTICS PTY LTD (ACN 009 438 706)
RESPONDENT
JUDGE:
FINN J
DATE:
4 DECEMBER 2003
PLACE:
CANBERRA (HEARD IN MELBOURNE)
REASONS FOR JUDGMENT
The applicant, W & M Klein Pty Ltd (“Klein”), is the patentee of an Australian standard patent (No 630615), for which the priority date is 1 August 1989. The patent, which is for an invention entitled “An Improved Removable Plug Means”, must be taken for present purposes to be a valid and subsisting one.
This proceeding, at least as now prosecuted, is for an alleged infringement by the respondent, Art Plastics Pty Ltd (“Art Plastics”), of the above patent. The only relief presently sought is by way of declaration and injunction, any question of pecuniary relief being deferred pending my determination here.
Put shortly, the invention claimed in the patent relates to a plug used in the field of plumbing which can be inserted in, and removed from, open fluid carrying pipes so as to provide a seal in an effectively leak-proof manner. As described in the claims, the plug presupposes that the open pipe is “threaded” on its exterior (though one of the preferred embodiments is designed for, and one of the claims (claim 8) relates (inter alia) to, a pipe with an interior thread).
A sealing plug manufactured, distributed and sold by Art Plastics is alleged to infringe Klein’s patent. That infringement is denied.
The Claims of the Patent
Of the eight claims defining the invention, Art Plastics is now alleged to have infringed seven. Only one of that seven (claim 1) need be considered in any detail as the remaining six alleged to have been infringed incorporate claim 1 directly or indirectly. It is agreed that a decision on claim 1 will determine all of the allegations made.
By way of setting to the claims, the specification indicates that in any context in which plumbing services are provided the situation often arises in which a pipe or duct carrying a fluid needs to be worked on by a plumber in circumstances where it is necessary to “plug” the free or open end of the pipe to prevent unwanted loss of fluid (e.g. water).
The prior art base refers to different means and materials that have been used to achieve the plugging of a pipe. The deficiencies of the “prior art means” are described as having “involved or necessitated the expenditure of an inordinate or unacceptable amount of time and effort in their positioning and, perhaps even more importantly, the prior art means more often than not still allowed for leakage from the pipe or piping intended to be sealed.” The object of Klein’s plug is to overcome those deficiencies.
Two preferred embodiments of a removable plug are described in the specification, though the description given is said to be “by way of non-limitative example only and is with respect to the accompanying drawings” (being Figure 1 and Figure 2).
Before reproducing those figures it is appropriate to refer first to the claims defining the invention. For present purposes it is necessary to refer only to claim 1. It is as follows:
A removable sealing means for a pipe or the like ducting, said pipe or the like ducting having an externally threaded portion at the free end thereof, said sealing means including: a main body having two opposed, blind bores therein, said blind bores being separated by an intervening transverse wall, a first said blind bores having an internal thread extending along at least a portion thereof and being adapted, in use, to receive and releasably retain said threaded free end portion of said pipe or the like ducting to be sealed, with the other of said blind bores including means adapted to co-operate with a tool or the like means whereby to assist in location of said sealing means on said pipe or the like ducting.
The claims made are obviously those of a combination patent: see Populin v W B Nominees Pty Ltd (1982) 59 FLR 37 at 41. The parties agree the essential integers of the invention are the following:
(1)a main body having two opposed, blind bores therein;
(2)said blind bores being separated by an intervening transverse wall;
(3)a first said blind bore(s) [sic] having an internal thread extending along at least a portion thereof;
(4)and being adapted, in use, to receive and releasably retain said threaded free end portion of said pipe or the like ducting;
(5)with other of said blind bores including means adapted to cooperate with a tool or the like means whereby to assist in location of said sealing means on said pipe or the like ducting.
The issues of construction that arise from these relate to the meaning of the first, second and fifth integers.
The two figures containing the preferred embodiments are represented cross-sectionally in the specification in the following manner:
It is only necessary to provide a description of Figure 1 and this merely for explanatory purposes. I have used my own hopefully neutral language in so doing.
The Figure 1 embodiment is designed to plug an externally threaded pipe. The shaded portion of the Figure is a single piece of cylindrical tubing, open at both ends but sealed completely at a point near to the centre by an entire wall so as to produce two discrete chambers (ie Nos 3 and 4) that are each open at one end. In the larger of the two of these are saw-toothed, internal markings (No 5) which represent the cross-section of an internal thread. Between the thread and the wall is to be inserted a “sealing means”, for example, a rubber seal (ie No 6). The two protrusions marked (No 7) on the exterior of the smaller represented chamber are two of four ribs the purpose of which is to facilitate screwing of the plug onto an open pipe when inserted in the larger chamber.
The Art Plastic Plug
The components of the accused product are best revealed diagrammatically. I have taken the following figure from part of an annexure to the affidavit of Scott Johnstone, the general manager of Art Plastics. The markings on it are my own.
This plastic device is open only at one end. It consists internally of a large chamber (No 1) in which there is an internal thread (No 2) leading to a smaller chamber (No 2). A holed washer is inserted at the top of the larger chamber. This permits fluid to pass from the larger to the smaller chamber. On the exterior sides of the smaller chamber are two of six ribs (Nos 4 and 5) which facilitate the screwing of the plug onto an open pipe when inserted into the larger chamber. The top exterior of the smaller chamber (No 7) is hexagonal in shape. It also is used to facilitate attachment of the plug to an open pipe.
The Proper Construction of the Claims
(a) Applicable Principles
Recent case law has reviewed comprehensively the principles to be applied in the construction of a patent: see esp Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at 347-350; Bartlem Pty Ltd v CMMC Pty Ltd (2001) 53 IPR 124 at 129-130, affirmed by Bartlem Pty Ltd v Cox Industries (Aust) Pty Ltd (2002) 55 IPR 449; see also Root Qualities Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 232ff. There is no disagreement between the parties as to those principles (although there are understandable differences in the emphases placed on particular propositions). For this reason I will only state in short form the principles of particular present relevance though I should indicate that I accept and rely upon the comprehensive statement of principles made by Hely J in Flexible Steel Lacing.
First, the alleged infringement is to be ignored when construing a patent. As Heerey J commented in Welcome Real Time SA v Catuity Inc (2001) 51 IPR 327 at 333:
“Although the forensic contest will throw up the particular construction issues to be resolved, a patent must, as the saying goes, be construed as if the infringer had never been born.”
Secondly, when determining the extent of the monopoly claimed in a patent, the specification must be read as a whole. But as Hely J said in Flexible Steel Lacing (at 347):
“… as a whole it is made up of several parts, and those parts have different functions: Welch Perrin [Co Pty Ltd v Worrel (1961) 106 CLR 588] at 610, Décor [Corp Pty Ltd Dart Industries Inc (1988) 131 PR 385] at 391, 398. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent. What is not claimed is disclaimed : Walker v Alemite Corporation (1933) 49 CLR 643 at 656, Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 35 and 39. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that.
Hence, although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification : Welch Perrin at 610, Decor at 391,398, Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document: Welch Perrin at 610, Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478-479, Electric & Musical Industries at 41, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69, Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113, Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333.
It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims.”
Thirdly, a patent specification should be given a purposive, rather than a purely literal, construction: Décor Corporation v Dart Industries Inc (1988) 13 IPR 385 at 400; Root Quality at 236 ff.
Finally, and again to adopt the language of Hely J in Flexible Steel Lacing (at 349):
“The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date: Welch Perrin at 610, Populin at 476, Fisher & Paykel at 254, 260, Decor at 397, Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583. The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification: Decor at 391 - per Lockhart J.
There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe: Stanway Oyster Cylinders at 585 per Drummond J.”
(b) The Issues of Construction
I have referred already to what the parties agree are the five essential integers and have foreshadowed that there is disagreement as to the construction of three of them (the first, second and fifth). For reasons I give below I consider the first and second integers to be so interrelated as to require that they be construed together.
Integers (1) and (2)
To reiterate these are:
(1)a main body having two opposed, blind bores therein;
(2)said blind bores being separated by an intervening transverse wall.
Of the words I have highlighted, the parties have given particular attention to respective meanings to be ascribed to the words “opposed”, “blind bore” and “wall”. I should indicate at the outset that I have not found the disaggregated treatment of these terms to be of much assistance in revealing the proper construction of the two integers. Disaggregation merely highlights the “dangers in splitting up” terms that are meant to be read together: cf News Ltd v South Sydney District Rugby League Football Club Ltd (2003) 200 ALR 157 at [68] per Gummow J. Further, whatever may be encompassed in the abstract by the description “blind bore” I consider its meaning in this setting to be clear, as also is the meaning of the two integers themselves.
Both Klein and Art Plastics called experts who gave evidence of their respective understandings of the meaning of the integers and of whether Art Plastics’ plug displayed all of the features defined in the five integers. Art Plastics also called Mr Johnstone, the company’s general manager. While I will refer to all aspects of his evidence later in these reasons, I derived no real assistance from him in construing integers 1 and 2.
The tenor and the contrasting character of the evidence given by the two experts (Mr Bayly called by Klein and Dr Cheng, by Art Plastics) is sufficiently revealed in the following extracts from their various affidavits:
Mr Bayly
(a) Integer 1
“I understand the word “bore” to describe a hole which has some depth and has been made by a drill or a revolving tool such as a boring bar or similar tool.
…
I understand the term “opposed bores” describes bores aligned on a common axis so as to allow a single bolt, shaft or pin to pass through them.
Opposed bores can be opposite each other or be one in front of each other but with their axis aligned.
I understand the term “blind bore” to mean that the bore is open at one end and having a cylindrical surface which is not continuous such that a member when inserted into the blind bore will be arrested by a wall, step or shoulder projecting inwardly from the inside cylindrical surface of the bore.
Blind bores are often open for some of their cross-section, usually with a through passage of smaller diameter than the bore diameter, but the bore diameter is arrested by a step, wall or shoulder.
I understand the term “two opposed blind bores” to include two bores with their axis aligned and either having their open ends facing away from each other or with one blind bore placed in front of the other which would necessitate one bore being of smaller diameter.”
(b) Integer 2
“I understand [this] to require that the two blind bores are each discontinuous having a transverse wall defining one end of each of the two bores…
This is clearly illustrated by the preferred embodiment, as shown in Fig. 1, wherein the two bores are opposed with their open ends facing away from each other, one…being separated from the other by an unbroken wall which forms the means to seal the pipe.
Alternatively the two blind bores could be arranged one in front of the other, one larger than the other, with a threaded portion at the inner end of either one of the bores and the shoulder, step or wall between the two bores forming the blind end of the larger bore and the open end of the smaller bore which is closed at its blind end to form the means to seal the pipe.”
(2) Dr Cheng (who shared Mr Bayly’s understanding of the meaning of “bore”)
(a) “Blind bore”
“[Mr Bayly’s] understanding of the meaning of the term “blind bore” does not accord with my understanding of the meaning of that term.
My understanding of the term “blind bore”, as it would be used in an engineering or design and manufacturing context, is that it refers to a bore which is entirely stopped at one end, so that it has one open end and one end completely closed.
I note that Mr Bayly states that in his understanding the term “blind bore” would cover a bore that is “arrested by a wall, step or shoulder.” My understanding of the terms ‘wall’, ‘step’ or ‘shoulder’, as they would be used in an engineering or design and manufacturing context, and as they would be understood by engineering workshop personnel generally are as follows:
7.1 A’ wall’ is a barrier or an enclosure that clearly defines a space.
A ‘shoulder’, as that term would be used in relation to a bore, is a portion of a bore that shows a decrease or increase in diameter (depending on the direction of the bore from which the shoulder is encountered). A shoulder in a bore would decrease (or increase) the diameter of the bore without forming an enclosure in the bore, in the manner that walling the bore off would.
The term ‘step’ means much the same as the term ‘shoulder’, although it would be correct to use the term ‘step’ in relation to a shoulder that levels off relatively abruptly.
…
The creation of a shoulder in a bore does not create two blind bores, as those terms are understood in the field of engineering. Rather, a bore stopped entirely at one end and containing a shoulder would be describing in engineering terminology as a blind bore with a stepped shoulder, and not as two blind bores.”
(b) “Opposed blind bores”
“[T]he term “opposed” would signify that the objects said to be opposed are set against each other in some manner.
…
The arrangement of bores Mr Bayly describes as opposed in the passage from his affidavit quoted above would be better described as concentric.
When used in relation to two blind bores, the term “opposed” in engineering or design terminology would be taken to mean that the bores were opposed around their blind ends.” Emphasis added.
(3) Mr Bayly (referring to Dr Cheng’s first affidavit)
“Cheng states in paragraph 17… “The Patent features a transverse wall that segregates the two blind bores…”
The patent does not claim that the two blind bores are “segregated”, that is the bores are not “set apart from each other”, but the Patent does claim that the bores are “separated” by a transverse wall, that is that they are “distinct and individual” bores.”
The applicant’s case on Integers 1 and 2 is in substance as Mr Bayly opines; the respondent’s, as Dr Cheng does.
For my own part I consider the matter to be relatively free from difficulty, though bearing in mind that various of the terms used (and particularly “opposed”) can have differentially nuanced, if not altogether distinct meanings depending upon the context in which they are used: see e.g. the terms “blind”, “oppose” and “opposed” in The Oxford English Dictionary (2nd ed, 1989).
I am prepared to accept as an abstract proposition that a single hole, open at one end and enclosed at the other, but being constituted internally by two bores of differing diameters larger then smaller, could properly be characterised as two blind bores by an “hypothetical addressee…skilled in the art” – the more so if each bore has a separate purpose (not necessarily common to the other) of preventing the passage of some substance or thing beyond its particular enclosed end (be this the fully enclosed end of the smaller diameter bore or the partially enclosed end of the larger diameter bore). I would note in passing that there are textual indications in the specification itself that are consistent with this conclusion. The description given of the second preferred embodiment (which is of no direct relevance to this proceeding) includes the following:
“Preferably there will be provided, within the blind bore 15, a further blind bore – of a lesser diameter – perhaps even extending into the protruding portion 13”: emphasis added.
However, I am not concerned with an abstract question of what is capable of constituting a blind bore or bores. My concern is with two blind bores having a particular configuration relative to each other, i.e. they are “opposed”. My conclusion above does not of itself address this matter.
When one has regard (i) to the nature of the things to be “opposed”; (ii) to the body within which this is to occur; and (iii) to the defined manner of their separation, there is, in my view, no scope for the hypothetical addressee to entertain any serious doubt as to what is being described as the required configuration of the blind bores within the “main body”. That configuration is that they face away from each other but that their enclosed ends are separately constituted by a common wall that intervenes between the two bores within the main body.
The presupposition of integer 1 is that the two bores are to be aligned within the main body on a common axis. Or as the description of the first preferred embodiment has it, they are to be “opposed longitudinally”.
Given that the prescribed opposition is to occur within the main body, it is obvious that they cannot be “opposed” by being configured so as to face each other at their open ends and still retain their character as separate blind bores. Such a configuration would produce a fully enclosed cylinder.
The only alternative configuration which will have them opposed within the main body is that they be configured so that their open ends face away from each other. For reasons I give below, I do not consider that they could be “opposed” by being configured as the applicant suggests. They would merely be in line, one behind the other.
The reason I consider it to be important to construe integers 1 and 2 together is because I consider integer 2 illuminates the manner in which the two bores are to be “opposed”: they are to be “separated by an intervening transverse wall”. Despite the lengthy submissions made on what constitutes a “wall” and whether or not a “shoulder” is a “wall”, I am satisfied that in this setting the hypothetical addressee would not consider this combination of words to be technical in character. Knowing that the blind bores were to be opposed, that person would readily enough discern how this was to be achieved from the language of integer 2. They were to be kept apart one from the other (i.e. “separated”), that separation being effected by a wall situated between the two bores (i.e. an “intervening” wall) which provided the separate closed ends of each of them by extending across the full diameter of each of the bores (i.e. a “transverse” wall).
If all one was concerned with was defining the space of a particular blind bore, I consider it to be arguable that two bores aligned in the manner contended for by the applicant, could probably be said to be “separated” by the “wall” (or “shoulder”) which marked the point of change from a larger diameter bore to a smaller diameter bore in the sense that it marked the point of transition from one to the other. However, when the concern becomes, not the definition of the space of the respective bores, but the manner in which they are required to be opposed within the “main body”, the purpose of the wall (i.e. to keep the bores separate) and nature of the wall (i.e. an intervening transverse wall) become apparent enough. It is to, and does, effect a separation of the two bores by lying between the two so providing their separate enclosed ends. The integers, in other words, prescribe that the blind bores be opposed in a back-to-back configuration.
Integer 5
This integer is directed at the “non-threaded” or “other” blind bore and is in the following terms:
“with other of said blind bores including means adapted to co-operate with a tool or the like means whereby to assist in location of said sealing means on said pipe or the like ducting.”
The issue of construction raised here is a simple one. It is again revealed in the contrasting opinions of Mr Bayly and Dr Cheng.
(1) Mr Bayly and Integer 5
“I understand the term “including means adapted to cooperate with a tool” to require the bore to have a means for receiving a suitable tool, to provide engagement with the tool to enable the tool to assist in locating the open end of the “threaded bore” over the free end of the pipe and to provide means to rotate the pipe plug to engage the thread.
In my opinion, “means” could include locating and engagement means associated with both the cylindrical inner surface of the bore and the surrounding wall of the bore.”
(2) Dr Cheng
Dr Cheng agreed with the first of the above quoted paragraphs, but not to the second of which he said:
“[Mr Bayly] goes on to say that in his opinion ““means” could include locating and engagement means associated with both the cylindrical inner surface of the bore and the surrounding wall of the bore.” I do not consider that the word “means” as it is used in claim 1 of patent 630615 (“the Patent”)… could include such locating and engagement means.
This is because the means is stated in claim 1 of the Patent to be included as part of one of the blind bores specified in that claim.
In engineering and design terminology, the term “bore” does not extend to the external surface of the material in which the bore has been formed. Thus it makes sense in engineering and design terminology to speak of a component as having a smooth cylindrical bore and a jagged external surface. The external surface of the material in which the bore has been formed is considered as quite distinct from the bore itself.”
I should add that both Dr Cheng and Mr Johnstone were unaware of any tool or like means that could be inserted into the non-threaded (or “other”) blind bore to give special assistance in locating the sealing plug on a pipe to which it was to be attached.
Distinctly, the descriptions employed by each of the two preferred embodiments make the following references to the non-threaded bore.
As to Figure 1:
The second blind bore 4 may be employed for purposes of receiving a tool of any given type intended to assist in locating the plug 1 on the pipe in the prescribed manner. In the preferred embodiment illustrated a plurality of circumferential disposed ribs 7 are located or provided around the periphery or circumference of the plug 1: emphasis added.
As to Figure 2:
The arrangement as illustrated in Fig. 2 preferably includes a blind bore 15 adapted, in use, to receive and releasably retain a tool of any given shape whereby to assist in location of the plug 11 as desired. Preferably there will be provided, within the blind bore 15, a further blind bore – of a lesser diameter – perhaps even extending into the protruding portion 13. The further blind bore will be of a size and shape complementary to the aforementioned tool, which tool may be in the form of a key, spanner or the like: emphasis added.
Klein’s case is that, when integer 5 is read in the “practical and commonsense way” that it would be read by a person skilled in the art: cf Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 585; and when regard is had to the absence at the priority date of any known tool that could be inserted into the bore to assist in locating it on a pipe, that reader would understand that the relevant means could be located on either the inner or outer surface of the bore. Some support for this is also derived from the language of the third integer which refers expressly to the interior of the first blind bore when it says that bore has “an internal thread”: emphasis added. The absence of such an explicit reference in integer 5 is to be taken as meaning that the relevant “means” can be either on the exterior or interior of the bore. Alternatively, the reference to where the “means” is to be located is ambiguous and thus justifies reference to the specification for Figure 1. That specification refers expressly to external ribs which are clearly intended to assist in screwing the plug onto a pipe.
The respondent’s contention is that the applicant is engaged in an impermissible reading of the clear words of the integer and by so doing is seeking to expand the scope of the monopoly claims. The integer does not refer to the external surface of the “main body” cooperating with a tool or like means. Rather it requires that the tool or like means must be received into the bore. It is this that gives meaning to the need for there to be two bores for this invention.
It has justly been commented by Hely J that there is a “fine line” between reading words in “a practical and commonsense way” and impermissibly limiting or, I would add, enlarging, clear words of a claim because a skilled reader would be likely to apply them in that limited or enlarged way: see Flexible Steel Lacing at 349.
The language of the integer requires that the means employed are to be able to be used with (ie to cooperate with) a tool or like means and so assist in the “action of placing” (ie “location”: see Oxford English Dictionary, vol 8, 1082 “location” 2a (2nd ed, 1989)) the sealing means on the pipe or ducting.
Whatever doubts there may be said to be as to whether the language of the integer permits the “means” to be located otherwise that within the interior of the bore, I am satisfied that the language used in the specification to describe the first embodiment does not help to clarify the matter. That description seems ultimately not to differentiate between interior and exterior means. It refers, variously, to the bore “receiving a tool” (a reference suggesting internal reception) and to ribs located – a significant world – around the circumference of the plug (a clear reference to external location)
I do not consider that any help in this matter can be derived from the language used to describe the second preferred embodiment notwithstanding that it more readily suggests an internal location of the means. Not only is that embodiment not directly in issue in this proceeding, it has not been the subject of evidence. There must, additionally, be a very real doubt whether it is of an invention for which claims defining that invention have been made: Patents Act 1990 (Cth), s 40(2)(b).
Accepting Hely J’s “fine line”, I am satisfied that the construction propounded by the applicant is the proper one. It is, in my view, what the practical and commonsense understanding would be of a skilled reader. The alternative construction would make no advance on the prior art and would require a “means” intended to assist in placing the plug on a pipe which on the evidence did not then and still does not exist.
I am reinforced somewhat in this conclusion by the evidence of Mr Johnstone that the second bore serves a use in any event. First, an extension of the main body beyond the transverse wall away from the “first bore” to enable the device to be screwed and unscrewed onto a pipe. Secondly, given the limitations on moulding plastic, that extension could not be moulded. Thirdly, in any event, the use of a bore saves cost and expense.
Infringement
It is well understood that to establish infringement of a combination patent, the patentee must show that the respondent has taken each and all of the essential integers of the patentee’s claim. If the alleged infringer omits one of them, there will be no infringement: Populin v H B Nominees Pty Ltd at 41.
In the present matter it is clear that the Art Plastics plug has not taken either of the first two integers. While it can be said that that plug has two blind bores, those blind bores are not “opposed”. They are configured in line, one behind the other. Neither are they “separated by an intervening transverse wall”, though it can be said that their respective spaces are defined in part by a separating wall (or “shoulder”).
On the view I take of integer 5, the Art Plastics plug has taken this integer. The integer requires, and the plug has, the prescribed “means” on the external surface of the “other” bore.
In the event, as not all of the essential integers have been taken, no case of infringement has been established. While the invention claims and the Art Plastics plug may have functional equivalence, the monopoly claimed does not exhaust the possible means by which that functionality can be produced in a sealing device.
The application will be dismissed with costs.
I certify that the preceding sixty-one (61) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn.
Associate:
Dated: 3 December 2003
Counsel for the Applicant:
G Clarke SC with I Horak
Solicitor for the Applicant:
Callinan Lawrie Solicitors
Counsel for the Respondent:
I R Freeman
Solicitor for the Respondent:
Phillips Fox
Date of Hearing:
24-26 November 2003
Date of Judgment:
4 December 2003
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