FEDERAL COURT OF AUSTRALIA

Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179

THE COURT ORDERS THAT:

1.    The application for leave to appeal be granted.

2.    The appeal is dismissed.

3.    The appellant pay the respondent’s costs of and incidental to its application for leave to appeal and its appeal.

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

REASONS FOR JUDGMENT

KENNY AND BEACH JJ:

1    Product Management Group Pty Ltd (PMG) has sought leave to appeal from the primary judge’s orders made on 19 December 2014 which gave effect to his reasons delivered on 8 December 2014. The primary judge made declarations that PMG’s Pocket Hose product (the Pocket Hose) infringed claims 1, 2, 4 and 5 of Australian Innovation Patent 2012101797 (the First Patent) and claims 1, 2 and 5 of Australian Innovation Patent 2013100354 (the Length Patent) held by Blue Gentian LLC (Blue Gentian). His Honour also dismissed PMG’s cross-claim for invalidity. Invalidity had been asserted based upon, inter alia, a lack of an innovative step by reason of the disclosures in US Patent 6,523,539.

2    Before us PMG has principally submitted that the primary judge erred by:

(a)    misconstruing the claims, and accordingly erroneously finding that the claims were infringed; and

(b)    failing to apply the correct test for assessing innovative step.

3    In our opinion, leave to appeal should be granted (as we said at the hearing of the appeal) but the appeal dismissed.

PROCEEDINGS BELOW

4    The proceeding at first instance concerned a claim by Blue Gentian and Brand Developers Aust Pty Ltd (allegedly the exclusive licensee) that PMG had infringed or authorised the infringement of the First Patent and the Length Patent, both titled “Expandable and Contractible Hose” (the Patents). The position of Brand Developers Aust Pty Ltd can be put to one side given the nature of the issues raised before us.

5    Blue Gentian contended that PMG had directly infringed claims 1, 2, 4 and 5 of the First Patent and claims 1, 2 and 5 of the Length Patent. PMG owns and operates a business supplying in Australia a garden hose marketed under and by reference to the name “Pocket Hose” (the Pocket Hose). Blue Gentian alleged that PMG directly infringed the Patents because it imported, offered for sale or otherwise disposed of, sold or otherwise disposed of, and kept for the purpose of selling or otherwise disposing of, the Pocket Hose in Australia without the relevant licence or authority to do so, or authorised others to do so. Further, Blue Gentian alleged that PMG indirectly infringed the Patents pursuant to s 117(2)(c) of the Patents Act 1990 (Cth) (the Act).

6    PMG, by way of cross-claim, alleged that the Patents were invalid and liable to be revoked. In particular it alleged that:

(a)    Claims 1, 2, 4 and 5 of the First Patent and claims 1, 2 and 5 of the Length Patent were anticipated by US Patent 6,523,539, titled “Self-elongating oxygen hose for stowable aviation crew oxygen mask” (the McDonald Patent). At first instance the primary judge rejected the lack of novelty argument. PMG does not challenge that finding.

(b)    Claims 1, 2, 4 and 5 of the First Patent and claims 1, 2 and 5 of the Length Patent did not involve an innovative step in light of the McDonald Patent. At first instance the primary judge rejected the lack of innovative step argument. That finding has been challenged on appeal (appeal grounds 1, 4 and 5(a)).

(c)    Particular claims of each of the Patents were not fairly based on the matter described in the respective specifications of those Patents. Further, particular claims of each of the Patents were not clear and succinct. Further, particular claims of the First Patent did not describe the invention fully. At first instance the primary judge rejected all such arguments. PMG no longer challenges such findings (appeal grounds 2 and 3 have not been persisted with).

7    The issues of infringement and validity were heard and determined separately and before any questions of pecuniary relief.

8    Blue Gentian relied on the evidence of Mr William Hunter, who was a qualified mechanical engineer who had worked in the area of product development and engineering design in relation to a wide range of products over the last 28 years, both within industry and as a consultant. Mr Hunter made three affidavits, namely: (a) the first affidavit dated 25 July 2013 addressing whether there had been an infringement of the First Patent; (b) the second affidavit dated 3 September 2013 addressing whether there had been an infringement of the Length Patent; and (c) the third affidavit dated 19 December 2013 responding to PMG’s evidence in chief on invalidity, and evidence in answer on infringement.

9    PMG relied on the evidence of Professor Steven Armfield, who was a Professor of Computational Fluid Dynamics and Head of the School of Aerospace, Mechanical and Mechatronic Engineering at the University of Sydney. Professor Armfield made two affidavits, namely: (a) the first affidavit dated 15 November 2013 responding to Mr Hunter’s first and second affidavits and addressing what was disclosed in the McDonald Patent; and (b) the second affidavit dated 23 January 2014 responding to Mr Hunter’s third affidavit.

10    Further, a joint expert report was also prepared and tendered of Professor Armfield, Mr Hunter and Mr Michael Elmore, consultant, dated 28 January 2014 (the Joint Report). As Mr Elmore was not called, his contribution to the Joint Report was not relied upon by the parties and put to one side.

the patents

11    Before proceeding further, it is appropriate to discuss the Patents; we have drawn, in part, upon the summary given by the trial judge in his reasons ([9] to [24]).

12    The First Patent and the Length Patent essentially have the same text in the body of their specifications. Further, the claims differ in substance in only a few respects. The Patents claim a garden hose that expands substantially in length (the First Patent) or two to six times (the Length Patent) when the water faucet it is coupled to is turned on. The hose returns to its original length after use.

13    The elongation is achieved by reason of the garden hose having an elastic inner tube and an inelastic outer tube which are only attached at their ends, such that when the faucet is turned on water pressure causes the inner tube to engorge, expanding in length and diameter to the point where it is constrained by the length and diameter of the inelastic outer tube. A “water flow restrictor” (or a “fluid flow restrictor” referred to in the claims of the First Patent) in, or attached to, the far end of the hose causes an additional increase in water pressure in the hose (compared to a hose with no such water flow restrictor).

14    When the faucet is turned off, the water drains from the garden hose and the resulting decrease in water pressure allows the inner tube to contract. The outer tube reduces in length by catching on the rubbery surface of the inner tube and gathering tightly in folds along the length of the hose.

15    The perceived advantages of garden hoses made in accordance with the Patents are that they have the ability to expand their length when in use without bursting, they are lightweight and easy and convenient to pack, transport and store, and do not kink in use.

(a)    The body of each specification

16    The field of the invention of the First Patent, which similarly applies to the Length Patent, is described in the First Patent as follows:

The present invention relates to a hose for carrying fluid materials. In particular, it relates to a hose that automatically contracts to a contracted state when there is no pressurized fluid within the hose and automatically expands to an extended state when a pressurized fluid is introduced into the hose. In the contracted state the hose is relatively easy to store and easy to handle because of its relative short length and its relative light weight, and in the extended state the hose can be located to wherever the fluid is required. The hose is comprised of an elastic inner tube and a separate and distinct non-elastic outer tube positioned around the circumference of the inner tube and attached and connected to the inner tube only at both ends and is separated, unattached, unbonded and unconnected from the inner tube along the entire length of the hose between the first end and the second end.

17    The background section ([0002] to [0004]) describes problems encountered with garden hoses. The identified problems relate to storage, such as the need for a reel or a container, and to tangling, kinking and the weight of the hose. The Patents state that it would be of great benefit to have a hose that is light in weight, expandable and contractible in length and kink-resistant.

18    Following a discussion listing numerous items of prior art hoses (the McDonald Patent is listed only in the Length Patent at [0026]), a summary of the invention starts at [0030] of the First Patent and [0031] of the Length Patent. Following the summary of the invention, the Patents set out a detailed description and several figures.

19    The invention is described as a hose comprising an inner tube inside an outer tube. The outer tube is secured to the inner tube only at the ends. The hose expands when connected to a pressurised water supply such as a water faucet. The hose can expand longitudinally, and in the case of the Length Patent, by up to six times in length. On release of the pressurised water from the inner tube, the inner tube will contract. The inner tube could be made of rubber while the outer tube could be made of an inelastic relatively soft fabric like woven nylon, which gathers in folds about the inner tube when the inner tube is contracted.

20    Figures 5 and 6 of the Patents (as set out below) show the invention in its unexpanded and in its expanded states. In relation to the notations, number 12 refers to the outer tube, number 14 refers to the inner tube and number 15 refers to the space between the inner and outer tubes.

21    In the unexpanded state, when there is no fluid pressure within the hose, the inner tube is in a relaxed condition. There are no forces being applied to expand or stretch it. In this state the outer tube is folded, compressed and tightly gathered around the outer circumference of the inner tube. When the hose is connected to a water supply and the supply is turned on, fluid pressure is applied, expanding the inner tube. The inner tube will expand laterally (also referred to as radially) and will also expand longitudinally (also referred to as axially), i.e. along the length of the hose. As the inner tube expands the wall thickness of the inner tube material is reduced. If the expansion is not constrained, the wall would become too thin and would likely rupture. The lateral expansion is therefore constrained by the diameter of the outer tube. The longitudinal expansion is similarly constrained by the length of the outer tube. As the water inflates the inner tube, the hose expands longitudinally and the folds of the outer tube unfurl until it is smooth (see figures 5 and 6 of the Patents, reproduced above). In this state the hose is ready to be used. The hose may also have a fluid flow restrictor, such as a nozzle or sprayer:

(a)    attached to the second coupler, e.g. a trigger nozzle; and/or

(b)    within the second coupler (which can be a narrower bore than the bore of the hose).

22    When water is allowed to flow within the hose the pressure inside will drop to some extent but there will be enough pressure remaining in the hose to keep it expanded in use.

23    The Patents describe the various benefits of the invention, including:

(a)    savings in weight, since it contracts without the need for metal components, and since a conventional 50 foot garden hose is said to weigh 12 lbs (5.4 kg) whereas the Patents describe a hose which “may only weigh less than 2 pounds” (0.9 kg);

(b)    the hose automatically contracts when there is no pressure in the inner tube;

(c)    the empty hose of the invention can be readily stored without kinking or becoming entangled as most conventional hoses do; and

(d)    savings in time, because the hose contracts automatically from its expanded condition thus avoiding the need to carry or drag the hose, or the need for a hose reel, for storage.

(b)    The claims

24    The claims of the First Patent are as follows:

1.    A garden hose including:

a flexible elongated outer tube constructed from a fabric material having a first end and a second end, an interior of said outer tube being substantially hollow;

a flexible elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow, said inner tube being formed of an elastic material;

a first coupler secured to said first end of said inner and said outer tubes for coupling to a pressurized water faucet;

a second coupler secured to said second end of said inner and said outer tubes for discharging water;

the inner and outer tubes being unsecured to each other between first and second ends thereof; and

said second coupler also coupling said hose to a fluid flow restrictor or including a fluid flow restrictor so that the fluid flow restrictor creates an increase in water pressure between said first coupler and said second coupler within said inner tube, said increase in water pressure expanding said elongated inner tube longitudinally along a length of said inner tube and laterally across a width of said inner tube thereby substantially increasing a length of said hose to an expanded condition and said hose contracting to a substantially decreased or relaxed length when there is a decrease in water pressure between said first coupler and said second coupler.

2.    The water hose of claim I, wherein said inner tube and said outer tube are made from materials which will not kink when said inner and said outer tubes are in their contracted condition.

3.    The water hose of claim 1 or claim 2, wherein said first coupler is a female coupler and said second coupler is a male coupler.

4.    The water hose of any one of claims 1 to 3, wherein the outer tube is unattached, unconnected, unbonded, and unsecured to the elastic inner tube along the entire length of the inner tube between the first end and the second end so that the outer tube is able to move freely with respect to the inner tube along the entire length of the inner tube when the hose expands and contracts.

5.    The water hose of any one of claims 1 to 4, wherein the outer tube catches on a rubbery outer surface of the elastic inner tube and automatically becomes folded, compressed and tightly gathered around the outside circumference of the entire length of the contracted inner tube.

25    The claims of the Length Patent are as follows:

1.    A garden hose including:

a flexible fabric material elongated outer tube having a first end and a second end, an interior of said outer tube being substantially hollow;

a flexible elastic material elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow;

a first coupler for connection to a water faucet, secured to said first end of said inner and said outer tubes, and a second coupler for discharging water, secured to said second end of said inner and said outer tubes, said outer and inner tubes being unattached, unconnected. unbonded, and unsecured to each other along their entire lengths between the first end and the second end so that the outer tube is able to move freely with respect to the inner tube along the entire length of the inner tube when the hose expands or contracts; and

a water flow restrictor connected to or being in the second coupler for increasing water pressure between said first coupler and said second coupler within said hose, said increase in fluid pressure expanding said elongated inner tube longitudinally along a length of said inner tube and laterally across a width of said inner tube thereby increasing a length of said hose by 2 to 6 times to an expanded condition and said hose being contracted to a decreased length when there is a decrease in water pressure between said first coupler and said second coupler.

2.    The garden hose of claim 1, wherein said garden hose is at least 10 feet long.

3.    The garden hose of claim 1 wherein the hose increases in length by 4 to 6 times.

4.    The garden hose of any one of claims 1 to 3, wherein the first coupler is a female coupling for connection to a water faucet, and the second coupler is a male coupling for discharging water.

5.    The garden hose of claim 1 wherein, when the extended elastic inner tube begins to contract from its expanded length, the unattached, unbonded, unconnected and unsecured fabric material outer tube catches on a rubbery outer surface of the inner tube material, causing the outer tube to automatically become randomly folded, compressed and tightly gathered around an outside circumference of the entire length of the contracted inner tube.

26    His Honour divided up the relevant integers for claim 1 of each Patent in the tables set out below. In part, this was a reflection of how the case was argued before him by the parties. But it must be said that to so divide up these integers in this way may have had the tendency to produce various difficulties with construction that we will later address in more detail. Instead of the last paragraph of claim 1 of the First Patent being treated as a whole, it was divided into the tabulated integers numbered 1.7 to 1.9. Instead of the penultimate paragraph of claim 1 of the Length Patent being treated as a whole, it was divided into the tabulated integers numbered 1.4 to 1.6. Instead of the last paragraph of claim 1 of the Length Patent being treated as a whole, it was divided into the tabulated integers numbered 1.7 to 1.9. There is nothing inherently wrong with such divisions, provided that such divisions do not distract from reading each particular claim as a whole. Moreover, reading each claim as a whole, as the hypothetical skilled addressee is expected to do, is more likely to give such an addressee an appreciation of what is really meant by the words used rather than some literal and grammatically parsed construction devoid of practicality and context.

27    The integers of claim 1 of the First Patent were described as follows:

28    The integers of the Length Patent were described as follows:

CONSTRUCTION

29    There is no disagreement as to the nature of the invention claimed. It is a garden hose.

30    Similarly, the identification of the relevant skilled addressee is not in dispute.

31    The field of the invention relates to:

… a hose that automatically contracts to a contracted state when there is no pressurized fluid within the hose and automatically expands to an extended state when a pressurized fluid is introduced into the hose.

32    The skilled addressee is a person with a working knowledge of the materials used for, and the design and manufacture of, hoses. He or she would also have an understanding of fluid mechanics. The general physical principles applying to garden hoses similarly apply to all hoses.

33    The primary judge regarded both Mr Hunter and Professor Armfield as relevant skilled addressees, and that identification is not in dispute.

(a)    Principles of construction

34    The relevant principles of construction are not in doubt.

35    A claim is to be construed from the perspective of a person skilled in the relevant art as to how such a person, who is neither particularly imaginative nor particularly inventive (or innovative), would have understood the patentee to be using the words of the claim in the context in which they appear. A claim is to be construed in the light of the common general knowledge before the priority date.

36    In construing the claims, a generous measure of common sense should be used (Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11 at [108] per Middleton J and Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (2014) 110 IPR 82 at [58] to [69] per Beach J). Further, ordinary words should be given their ordinary meaning unless a person skilled in the art would give them a technical meaning or the specification ascribes a special meaning (Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21 at [39] per Greenwood and Nicholas JJ).

37    The body of the specification may be used in the following fashion in construing a claim:

    The claim should be construed in the context of the specification as a whole even if there is no apparent ambiguity in the claim (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47 at [222] per Middleton J and more generally Welch Perrin and Co Pty Ltd v Worrel (1961) 106 CLR 588 at 616); even the ordinary meaning of words may vary depending on the context, which the specification may provide;

    Nevertheless, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of a claim by adding to these words glosses drawn from other parts of the specification (Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at [67]; Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 at [44]); and

    More particularly, if a claim is clear and unambiguous, to say that it is to be read in the context of the specification as a whole does not justify it being varied or made obscure by statements found in other parts of the specification.

38    Now the specification may stipulate the problem in the art before the priority date and the objects of the invention that are designed to address or ameliorate this. Nevertheless, what is being construed are the claims. The specified objects may be useful in construing a claim in context. Nevertheless, the specified objects are not controlling in terms of construing a claim.

39    A claim should be given a “purposive” construction. Words should be read in their proper context. Further, a too technical or narrow construction should be avoided. A “purposive rather than a purely literal construction” is to be given (Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd at [41] per Greenwood and Nicholas JJ). Further, the integers of a claim should not be considered individually and in isolation. Further, a construction according to which the invention will work is to be preferred to one in which it may not (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005) 68 IPR 1 at [250]).

40    But to give a claim a “purposive” construction “does not involve extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims” (Sachtler GmbH and Co KG v RE Miller Pty Ltd (2005) 221 ALR 373 at [42] per Bennett J). To apply a “purposive” construction does not justify extending the patentee’s monopoly to the “ideas” disclosed in the specification (GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd (2013) 305 ALR 363 at [60]).

41    Finally on this aspect, it is useful to set out Lord Hoffmann’s observation in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 at [34] where he said:

“Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

42    His Lordship also said at [35] that:

I do not think that it is sensible to have presumptions about what people must be taken to have meant, but a conclusion that they have departed from conventional usage obviously needs some rational basis.

(b)    Integers of claims — primary judge’s construction

43    His Honour made findings on construction (reasons at [37] to [81]) relevant to, inter alia, the following integers:

(a)    a garden hose (integer 1.1 in the Patents);

(b)    a water/fluid flow restrictor causing an increase in pressure between the couplers (integer 1.7 of the Patents);

(c)    said increase in water/fluid pressure (integer 1.8 of the Patents); and

(d)    substantially increasing a length of said hose/increasing a length of said hose by two to six times (integer 1.8 of the Patents).

44    His Honour accepted that these phrases and passages had to be considered in the context in which they appeared. As his Honour said, the Patents were for a garden hose. A skilled addressee would know how a garden hose worked and how it was used and this knowledge had to be applied in the construction of the claims. The skilled addressee would know, as the first paragraph of the Patents indicated, that expansion is to occur when a pressurised fluid is introduced into the hose — for example, when a water tap is turned on and water enters the hose.

45    Because of their direct or indirect relevance to the appeal grounds, we propose to set out in detail his Honour’s findings on construction on integers 1.1, 1.7 and 1.8 of the Patents, although it is only integer 1.8 that has been the subject of a specific challenge before us on the question of construction. But his Honour’s construction of integer 1.8 is to be read with his construction of integer 1.7.

Garden hose (integer 1.1)

46    His Honour considered ([39] and [40]) that whatever else was referred to in the specification, the claims all described the invention as either a “garden hose” (claims 1 to 5 of the Length Patent, and claim 1 of the First Patent) or a “water hose” (claims 2 to 5 of the First Patent). It was clear that “water hose” was used synonymously with “garden hose” as it is described as a “water hose of claim 1” of the First Patent.

47    His Honour held that the proper construction of “garden hose” was a hose capable of being used as a garden hose and performing the functions one would ordinarily expect a garden hose to perform — for example, being attached to a water source and being suitable for watering a garden. That construction was not in doubt before us.

Water/fluid flow restrictor causing an increase in pressure between the couplers (integer 1.7)

48    His Honour referred to the fact that integer 1.7 of the Patents required a fluid flow restrictor (the First Patent) or a water flow restrictor (the Length Patent) (reasons at [46] to [64]):

    which “creates an increase in water pressure between said first coupler and said second coupler within said inner tube” (the First Patent); or

    “for increasing the water pressure between said first coupler and said second coupler within said hose” (the Length Patent).

49    The restrictor in either case could be connected to the second coupler or incorporated within.

50    His Honour held that the word “creates” means “causes” or “generates”. His Honour referred to the fact that there was some debate about this. His Honour stated that the debate was raised late in the proceedings by Professor Armfield as to the term “creates”, which Professor Armfield preferred to interpret as “maintains”. Professor Armfield made reference to the water pressure being created in Sydney by the Warragamba Dam which was up in the mountains, and not created by the faucet. Therefore, he considered that there was just a modifying or maintaining of the water pressure in the hose. His Honour said that this was probably technically correct. But his Honour said that that is not what was meant by the claim in the First Patent when it used the word “creates”. His Honour said that, in simple terms, when there was, for instance, a complete flow restrictor, the water pressure in the hose was caused or generated by, say, the use of a nozzle.

51    His Honour addressed the submissions of the parties before him in this context.

52    PMG had submitted that a change in the geometry of the flow path introduced by the second coupling could also constitute a fluid flow restrictor with respect to the First Patent; the same principles applied in respect of the phrase “water flow restrictor” in the Length Patent claims. It also submitted that the integer was not capable of a sensible construction. That is because the principles of fluid mechanics dictated that in a hose such as that described in the Patents, water pressure would either be reduced between the entry and exit points if the fluid exited at atmospheric pressure, or be constant if there was no fluid flow. Further, PMG submitted that the Patents did not explain how water pressure could be increased between the first and the second couplers. It submitted that the skilled addressee would understand that it was not possible to increase the pressure between these points.

53    Blue Gentian submitted that this integer meant that a fluid flow restrictor must be present at the outlet end of the hose which created an increase in the water pressure between the first and second couplers, compared with the pressure that would exist if there was no such fluid flow restrictor. It also submitted that “a ‘fluid flow restrictor’ or ‘water flow restrictor’ could only comprise a ‘change in the geometry of the flow path introduced by the second coupling’ if it also constitute[d] a reduction in the tube diameter that a person skilled in the art would consider provide[d] a practical (i.e., not insignificant) restriction to fluid flow”.

54    Blue Gentian submitted that the skilled addressee would consider whether the narrowing of the tube diameter caused by the flow restrictor was likely to have the practical effect of restricting the flow of the fluid in question and increasing the water pressure, and whether he or she would naturally describe it as a water or fluid flow restrictor.

55    His Honour considered that there were two elements to the construction of the integer: the flow restrictor and the effect that it had on the water pressure within the hose.

56    His Honour said that it should be self-evident that the component coupled to the second downstream coupler, or the coupler itself, must restrict the flow of water. He said that the specification was not explicit about what the flow restrictor must be and describes in [0055] of the Patents that “[a]nything that restricts the flow of fluid within the hose can be employed …”. Nozzles with various amounts of restriction and sprayers are offered as examples. He said that the specification specifically contemplated that the flow restrictor may be an L-shaped nozzle with a pivoting on-off handle which operates an internal valve which permits, limits or stops the flow of water. His Honour said that this indicated that the specification contemplates a flow restrictor that permits various levels of flow restriction.

57    His Honour then said that it follows that a water or fluid flow restrictor is any component coupled to or integrated within the second downstream coupler, or the downstream coupler itself, if it restricts the flow of fluid. His Honour said that this should not be controversial.

58    However, his Honour said that construction of the second element — that is, the function of the water or fluid flow restrictor — was more complex.

59    His Honour said that, in general terms, the dispute was whether the fluid flow restrictor creates an increase in pressure “from” the first coupler “to” the second coupler (PMG’s construction) or whether the increase relates to an increase in pressure as measured within the hose that is located between the first and second couplers as compared to a hose without a flow restrictor (Blue Gentian’s construction).

60    His Honour then referred to figure 4 in Appendix A of the Joint Report (reproduced below), which the experts agreed was an accurate representation of the change in water pressure along the hose in various states, namely, the hose completely choked off, with a partially choked nozzle, with a standard hose (with the first coupler attaching the hose to the tap and the second coupler/flow restrictor), and with a modified hose (without a second coupler/flow restrictor). It is appropriate at this point to interpolate our own description (modified from Annexure A) of some of the variables used. The variables on the vertical (y) axis are the following. P_atmos is atmospheric pressure and is the pressure within the hose before the introduction of the water (black dotted line). When pressurised water from the faucet is introduced into the hose the hose fills with water and becomes elongated. The water entering the hose inlet is at pressure P_i, which is above P_atmos. P_i is determined by the pressure in the trunk main, which may be considered for present purposes to be a constant. If the hose is a standard hose with a second coupler/flow restrictor, the pressure reduces from P_i as the fluid passes along the hose (blue line). The pressure change occurs in the direction of flow partly as a result of friction between the fluid and the hose wall. As the fluid passes through the second coupler/flow restrictor, the increased friction partly leads to a more rapid change in pressure to P_u. If you modify the hose and remove the second coupler/flow restrictor, the fluid enters the hose at P_im (red line). The flow velocity increases, leading to greater frictional effects. P_im is accordingly less than P_i. Take another case where you have the hose with the second coupler/flow restrictor with a nozzle (adjustable) and you close it off completely. The pressure is shown on figure 4 as P_ic. And as there is no flow, there is no pressure drop; there are no frictional effects (see black line). Alternatively, if the nozzle operates as a partial choke, there will be some pressure change (green line). Before proceeding further we should make one other point here concerning frictional effects. For the invention the subject of the Patents, you are dealing with an inner tube and an outer tube which are flexible. When you have flow through the inner tube, you have frictional effects, which cause an expansion of the hose (both lateral and longitudinal). In other words, friction has two causal dimensions, being its effect on fluid pressure and its effect producing expansion.

61    His Honour said that it was correct that when water is introduced into the hose there is a reduction in pressure from the upstream end of the hose to the point at which the water exits the hose. Therefore, his Honour said that if he was to accept PMG’s construction, the integer would be a “scientific nonsense”. His Honour said that it is clear that there is no increase of pressure from the first coupler “to” the second coupler — in the three conditions of the hose where there is water flowing out of the hose (that is, the hose with a partially choked nozzle, with a second coupler that restricts flow, and with no second coupler) the water pressure decreases along the length of the hose.

62    His Honour recognised that the two experts disagreed as to the interpretation to give to this integer. Professor Armfield (who supported PMG’s construction) took a “literal” approach to the interpretative task accepting that his approach led to a “scientific impossibility”.

63    His Honour noted however that during cross examination, Professor Armfield accepted that it was a “reasonable” use of language to describe the “increase” in pressure as shown in the difference between the red and blue lines in figure 4 reproduced above as being the relevant increase created by the fluid flow restrictor.

64    In his Honour’s view, Mr Hunter, who supported Blue Gentian’s construction, took a common sense approach to interpreting claim 1 in the context of it being a garden hose. Mr Hunter’s interpretation of the integer required that the water flow restrictor caused an increase in water pressure between the two couplers, and that it was this overall water pressure increase from the hose’s original condition (prior to attachment to a faucet) to its pressurised condition that had to “substantially increase” the length of the hose. His Honour did not consider (as was submitted by PMG) that Mr Hunter changed his position as the proceeding developed.

65    His Honour concluded that the words in dispute, properly understood in the context of a garden hose, could be readily understood if read in this common sense way. His Honour said that it could be seen from the above figure that while the pressure decreases along the length of the hose, it is still greater at the position of the second coupler if there was a flow restrictor than if there was not.

66    His Honour said that, furthermore, the distance between the couplers was the entirety of the hose. His Honour said that another way of looking at “between said first coupler and said second coupler” would be to consider it as a way of describing the hose as a singular item. When looking at the above figure, generally, the water pressure within the hose with a flow restrictor is always greater than the water pressure without a flow restrictor. His Honour concluded that this construction accorded with the words of the integer.

67    In summary, his Honour concluded that presented with two constructions of an integer, where one was a scientific nonsense and the other a plausible construction, then provided the principles of construction were followed, the plausible construction should be favoured. His Honour said that he did not consider that by adopting Blue Gentian’s construction he was extending the patentee’s monopoly, or reading into the claims words by reference to the purpose of the monopoly. His Honour said that he was interpreting the claims in a manner consistent with the wording, and in a manner which gave sense to the operation and function of a garden hose. His Honour said that a skilled addressee, having common general knowledge of a garden hose, its design and use, would readily read claim 1 in the manner interpreted by Mr Hunter.

68    His Honour’s construction of integer 1.7 is not generally in issue. But it is important to be clear on his Honour’s findings concerning integer 1.7 as they bear upon the construction of integer 1.8 and PMG’s challenge to his Honour’s construction of integer 1.8. Before proceeding further, we would also note that PMG has not challenged his Honour’s general approach to construction as set out in the preceding paragraph, albeit in the context of considering integer 1.7. His Honour in dealing with integer 1.8 continued, consistently, with that same general approach. At all times he sought to identify what the skilled addressee would look for, namely, a plausible construction consistent with the context, and which avoided a construction that was a scientific nonsense or scientifically implausible.

Said increase in water / fluid pressure (integer 1.8)

69    His Honour considered integer 1.8 (reasons at [65] to [78]) and the phrase “said increase in water / fluid pressure”. As his Honour described it, integer 1.8 of the First Patent describes:

said increase in water pressure expanding said elongated inner tube longitudinally along a length of said inner tube and laterally across a width of said inner tube thereby substantially increasing a length of said hose to an expanded condition

(emphasis added)

70    Integer 1.8 of the Length Patent reads in similar terms, but it speaks of “fluid” pressure, rather than water pressure.

71    His Honour said that the construction of “said increase in water pressure” turned on whether the word “said” was to be as construed as referring to only the increase in water pressure between the first coupler and the second coupler within the inner tube created by the fluid flow restrictor alone (PMG’s construction) or whether it also included the increase in pressure created by the introduction of pressurised water from the faucet — that is, the increase in pressure was not limited to the increase caused by the fluid flow restrictor (Blue Gentian’s construction).

72    His Honour said that PMG’s construction referred back to the previous use of the words “increase in water pressure” as defined and limited by the language of the immediately preceding integer 1.7, so that the relevant “increase in water pressure” was limited to that caused by the relevant fluid flow restrictor only.

73    Contrastingly, for Blue Gentian’s construction, the word “said” referred back to the words “increase in water pressure” more generally, including the increase that resulted from the first coupler being connected to the “pressurized water faucet” which had been opened.

74    His Honour then discussed the evidence of the experts. Professor Armfield’s evidence in chief was that where water flows through the hose, the expansion of the hose is caused principally by frictional effects within the inner tube (that is, the friction between the fluid and the wall of the hose) with the flow restrictor only making a minor contribution to the expansion of the hose.

75    Mr Hunter’s evidence was generally that it was upon the application of pressurised water from a faucet that frictional effects or the flow restrictor, or a combination of both, caused the lateral and longitudinal expansion of the hose.

76    His Honour said that he found Mr Hunter’s evidence persuasive, whose evidence was confirmed, so his Honour considered, by some of the evidence of Professor Armfield.

77    His Honour said that in cross-examination, Professor Armfield accepted that the skilled addressee would consider the effect on the hose of the overall increase in water pressure, and not just that which was contributed to by a fluid flow restrictor. Professor Armfield accepted that the words “expanded condition” in the claim referred to the hose once it had been expanded by having pressurised water introduced into it. Professor Armfield accepted that, for a dynamic system (that is, with water flowing) the expansion would be caused by both the fluid flow restrictor and the frictional effects caused by the flow of water through the hose itself, and that the skilled addressee would be aware of this. Professor Armfield also accepted that integer 1.9 of the claim, “said hose contracting to a substantially decreased or relaxed length when there is a decrease in water pressure between said first coupler and said second coupler” referred to the overall decrease in pressure as the pressure inside the hose returned to atmospheric pressure. This was the “corollary” of the “substantial increase” that resulted in the “expanded condition” of the hose from its initial state where the internal pressure started at atmospheric pressure.

78    His Honour said that Professor Armfield had said in re-examination that the decrease in water pressure mentioned in integer 1.9 was referring to the same water pressure as the phrase in integer 1.7 “the fluid flow restrictor creates an increase in water pressure between said first coupler and said second coupler” — that is, the entire water pressure increase or decrease between the couplers, not just that caused by the fluid flow restrictor.

79    His Honour said that it was to be noted that the percentage contribution of the fluid flow restrictor to the overall increase in water pressure could vary, according to the type of fluid flow restrictor and degree of restriction it provided. His Honour said that Blue Gentian’s construction permitted this whereas PMG’s more literal construction required the measurement of the contribution to expansion made by a fluid flow restrictor, and the issue further arose as to what usage or flow conditions were present. His Honour said that this added complexity pointed against PMG’s construction. On PMG’s construction, how would anyone know or establish for a particular hose what was within or without claim 1? At the least, to so establish would be a difficult forensic exercise. We agree with his Honour’s point to some extent but such an argument cannot dictate what construction to use.

80    His Honour then said that he thought the argument concerning the construction of integer 1.7 was slightly distracting. The claims were for the assembly of a garden hose. There must be a fluid flow restrictor as required by the claim — being in the second coupler, and/or connected to the second coupler and it must be causative of an increase in water pressure in the hose. His Honour said that the skilled addressee would recognise that, when there are substantial flows of water through the hose, the frictional effects within the inner tube of the hose were an additional significant cause of the increase in water pressure within the hose.

81    Accordingly, his Honour construed “said increase in water / fluid pressure” to be the result of frictional effects and the presence of a flow restrictor. In other words, the phrase was not limited to the increase caused by the fluid flow restrictor.

82    The other aspect of integer 1.8 dealt with the requirement of substantially increasing a length of said hose/increasing a length of said hose by two to six times, which aspect we will put to one side for the moment.

appeal Ground 6: Construction and infringement

(a)    PMG’s contentions

83    PMG contended that his Honour should have found that integer 1.8 of claim 1 of the Patents required the “said increase in water pressure” to be brought about by the flow restrictor (and not by other means) and to “substantially” increase the length of the hose (in the case of the First Patent) or to increase the length of the hose “by 2 to 6 times” (in the case of the Length Patent). It is said that the specification of each Patent provided context for the meaning of “substantial” in the claims including explaining that the hose could expand up to 4 to 6 times its relaxed or unexpanded length.

84    PMG contended that his Honour inconsistently construed “an increase in water pressure” and “for increasing the water pressure” in integer 1.7 of the Patents (which the judge found was “created” by the flow restrictor) ([60] and [64]) and the “said increase in water pressure” and “said increase in fluid pressure” in integer 1.8 (which the judge found was the result of frictional effects and the presence of a flow restrictor, not limited to the increase caused by the flow restrictor) ([78]).

85    PMG contended that the pressure increase referred to in integer 1.7 of each Patent must be the same as the pressure which expands the inner tube in integer 1.8 and increases the length of the hose, given the use of the word “said” in integer 1.8. In other words, “said” was to be construed literally. We note at this point that this was the only substantive argument raised by PMG to support its construction. PMG referred to Memcor Australia Pty Ltd v GE Betzdearborn Canada Company (2009) 81 IPR 315 at [31] per Jagot J, where it was found that “said” referred back to the first mentioned item in a claim. But we do not consider that that case takes the debate before us very far as the word “said” in that case had to be construed in the light of the integers and claims that her Honour was then dealing with. PMG also contended that its construction was consistent with dictionary definitions: “said” means “named or mentioned before” (Macquarie Dictionary, 4th ed) and “already named or mentioned” (Shorter Oxford English Dictionary, 5th ed). We can agree with those literal meanings. But again, we are required to consider “said” in the context of the claims before us. PMG also referred to Australian Mud Company Pty Ltd v Coretell Pty Ltd (2011) 93 IPR 188 where a particular construction of the word “device” was rejected in part because it would lead to the same word having different meanings in different parts of the claim (see at [76] to [78] per Bennett, Gilmour and Yates JJ). But again we do not consider that that case is of much assistance, except to recognise that in construing the same word or phrase used in a claim(s), consistency should be maintained unless there is a good reason to depart therefrom i.e. where the skilled addressee would take a practical and scientific approach consistent with the context rather than a literal approach that was inconsistent therewith.

86    Moreover, PMG contended that in construing the claim (and in particular, the extent to which the fluid flow restrictor was responsible for increasing the length of the hose), his Honour relied heavily on the evidence of Mr Hunter (see [71] and [72]). PMG contended that Mr Hunter’s analysis was antithetical to a proper approach to construction, since it was premised on the basis that “All of the integers of the claim must be read with an understanding of the Patent Specification in mind, and not in isolation” (see the Joint Report, page 5, lines 123-124). PMG also contended that because the specification did not expressly provide that the increase in water pressure needed to occur as the result of the fluid flow restrictor only, Mr Hunter inappropriately read the claim down (see the third affidavit of Mr Hunter at [5.3]; Joint Report, page 5, lines 123 to 155). But even assuming PMG’s criticisms to have some force, none of those points establish that his Honour was in error in his ultimate construction of integer 1.8.

87    PMG then contended, as noted in Kimberly-Clark v Multigate Medical Products at [45] per Greenwood and Nicholas JJ, that a patentee is “presumed” to have good reason for introducing a limitation into a claim. But that passage does not use the language of presumption. Rather, their Honours said that “[a] patentee may have good reason for introducing a limitation into a claim”. We do not consider that it is useful to talk about presumptions in this context.

88    PMG also said that the consistory clause of the First Patent was broader than the claim. Accordingly, so it was said, it may be inferred that the claim was deliberately narrower than the description of the invention in the specification. Paragraph [0036] of the First Patent provided that the increase in fluid pressure expands the elongated inner tube thereby increasing the length of said hose to an expanded condition and that the hose is contracted to a decreased length. But the claim only provides that both the increase and decrease in length are substantial. But assuming this to be so does not assist in our view in construing integer 1.8. Further, we also do not consider that the difference in the language of [0037] significantly assists either party one way or the other.

89    PMG further contended that it would be possible to have a hose in which the fluid flow restrictor was alone responsible for a substantial increase in the length of the hose, as it said Professor Armfield explained (T 156 lines 23 to 27). We interpolate here that what Professor Armfield said was that it was “not necessarily a nonsense”. PMG said that an example of such a hose is also given in the specification of each Patent, at [0054]. In that example, the pressure at the nozzle (the relevant fluid flow restrictor) is 35 PSI and it is that 35 PSI which is said to be “enough pressure to cause” the hose to be “expanded to its maximum length”. It is said that this description is consistent with the wording of the claims. We do not agree that [0054] provides support for PMG’s submission in this respect.

90    Further, PMG contended that integer 1.9 calls for a substantially decreased length when there is a decrease in water pressure. But this was not a corollary of the increase caused by the flow restrictor. That is, there was no equivalence between the decrease or its cause and the increase and its cause. It is said that contrary to his Honour’s finding (see [73] and [117]), Professor Armfield did not accept that the decrease was the corollary of the “substantial increase” that resulted in the “expanded condition” of the hose. It was also said that there would not be a decrease in water pressure unless the hose was emptied. If the tap is turned off and the hose is blocked the pressure will be maintained. It is only when the pressure is released by the fluid flowing out of the hose (through the flow restrictor) that there is a decrease in length (Patents at [0058]).

91    Finally, PMG also put the argument that the expression “said increase in water pressure” meant that one comparator must start with water being in the hose under some pressure, which is then compared with another scenario where there is an increase of that pressure. In other words, one of the comparators was not a scenario where there was no water in the hose and hence no water pressure. It was said that to take that scenario and then introduce water into the hose was not an increase in water pressure, but rather the creation of water pressure. Building on that foundation, PMG then said that the only comparator scenarios that the “said increase in water pressure” could refer to were the difference between the red and blue lines depicted in the figure referred to earlier. That is, the comparator scenarios were between the water pressure measured in the “modified hose (no coupler)” scenario as compared with the “standard hose (including coupler/flow restrictor)” scenario. Accordingly, so the argument went, the reference to “said increase” must be a reference to the effect produced only by the restrictor added to or being part of the second coupler.

92    But the difficulty with PMG’s belated contention is that:

(a)    it was only put for the first time on appeal and accordingly was not dealt with by the parties or the primary judge below;

(b)    it was not dealt with by or put to any of the expert witnesses;

(c)    it was accepted by the parties and the witnesses below (and the primary judge) that the words “increase in water pressure”, putting to one side the word “said” for a moment, could be a reference to a scenario where one of the comparators was the situation starting with where there was no water in the hose as compared with a scenario where water was introduced.

93    Accordingly, we have put this final and late argument to one side given that to permit it to be now raised would cause inherent unfairness.

(b)    Analysis

94    In our opinion, his Honour was correct to construe integer 1.8 such that the “said increase in water pressure” was a reference to the overall increase in water pressure within the hose resulting from the tap turned on.

95    When water flows through the hose, there will be resistance to the water flow. The resistance is caused by two factors (Joint Report and reasons at [70] to [77]). First, it is caused by the frictional effects of the water flowing past the walls of the inner tube of the hose. Second, it is caused by the fluid flow restrictor in the downstream coupler or attached thereto. A skilled addressee would be aware that in a dynamic system where water is flowing through the hose, expansion will be caused by both the restrictor and the frictional effects caused by the flow through the hose (reasons at [77]).

96    If a trigger nozzle is attached to the hose, and acts as a fluid flow restrictor, it will affect pressure. Further, frictional effects from fluid flow will also affect pressure. But when the nozzle restricts or chokes flow to zero, frictional effects will be negligible.

97    For the purposes of integer 1.8, the “said increase in water pressure” is not just limited to an increase in pressure caused by the fluid flow restrictor which integer 1.7 is referring to. It is an increase which is caused by both:

(a)    the presence of the restrictor; and

(b)    friction caused by the flow of water through the hose.

98    PMG’s construction relies on a literal view of the word “said”. But a number of observations may be made.

99    First, the language “said increase in water pressure” should be construed in the overall context of that paragraph of claim 1, indeed the entirety of claim 1 itself.

100    Second, the language “said increase in water pressure” should be construed in the overall context of the specification. Although the specification and the claims explain that the inclusion of a fluid flow restrictor is necessary, the language of the specification describes the overall pressure increase within the hose (from the restrictor and the frictional effects although the latter is not expressly mentioned); see the Patents at [0001], [0030], [0031], [0048], [0051], [0053], [0054], [0058] and [0063].

101    Third and relatedly, some support for his Honour’s construction comes from the expression “expanded condition”. This refers to the expanded hose by having pressurised water introduced into it. But the expansion is from the two pressure effects that we have identified.

102    Fourth and relatedly, integer 1.9 uses the language “contracting to a substantially decreased or relaxed length when there is a decrease in water pressure”. This is a reference to an overall decrease in water pressure within the hose where the water pressure reduces down to atmospheric pressure and the hose relaxes (see reasons at [73], [74] and [117] and Professor Armfield’s evidence at T 195 line 27 to T 196 line 17). The words “substantially decreased or relaxed length” in integer 1.9 is the converse of the expansion referred to in integer 1.8. The reference to “decrease in water pressure” in integer 1.9 is the converse of “said increase in water pressure” in integer 1.8.

103    Fifth, PMG does not offer any practical or scientific reason supporting its literal view.

104    Sixth, PMG has made reference to the fact that “said” appears 22 times in claim 1 of each of the Patents. It is asserted that on each occasion it “clearly refers” to an item which was previously mentioned. First, that assertion seeks to foreclose the issue under discussion. Second, perhaps the frequency of use may in fact demonstrate over-use or, at least, increase the risk of an inadvertent use.

105    Seventh, PMG has asserted that “said” is a word of reference and not a technical term that needs expert evidence. But that assertion rather distorts the issue. One is considering the word in the context of integer 1.8, more broadly claim 1, and even more broadly the specification. In looking at the word in these contexts and how a skilled addressee would construe claim 1, expert evidence is useful and probative.

106    Eighth, PMG has asserted that Blue Gentian’s approach is “misconceived” as it begins with the field of the invention and a paraphrase of the invention rather than the words of the claim. We consider there to be nothing in that criticism. After all, integer 1.1 is for a “garden hose”. That is both the language of claim 1 and the context within which the claim is to be construed.

107    Ninth, it is true that neither in the claim nor in the body of the specification is express reference made to frictional effects. But for a skilled addressee, such frictional effects are likely to be a given and not necessary to make express reference thereto. Perhaps this is why integers 1.7 and 1.8 are expressed the way they are. They proceed on the undoubted basic knowledge of the skilled addressee and hence no reference needed to be made.

108    Tenth, Professor Armfield accepted in the Joint Report at lines 89 to 94 that there was an incorrect use in language in claim 1 dealing with the use of the word “increase”. If that be accepted, it is less of a step to accept that there were other imprecisions in the use of language — for example, one of the uses of the word “said”.

109    Eleventh, his Honour was quite entitled to rely upon (see at [71] and [72]) the evidence of Mr Hunter generally (third affidavit at [5.3] to [5.7] and Joint Report at lines 117 to 133 and 223 to 303), even if some aspects were not properly expressed within the framework of the proper constructional approach to be used. To accept such imperfections is not to deny the force of his evidence as to how a person skilled in the art would look at the claims practically and in context in terms of his experience with the design and dynamics of hoses.

110    Twelfth, Professor Armfield accepted that the skilled addressee reading the specification and claims would consider the effect on the hose of the overall increase in pressure from the two causes (restrictor and frictional effects) and not just the one cause (restrictor). His Honour was entitled to rely upon that evidence (see at [73] and [77]).

111    In summary, we consider that the present case is one of those exceptional cases where a skilled addressee would not construe the integer with the word “said” in such a literal way. First, to a skilled addressee it would make little, if any, scientific or technical sense. It does not accord with how the operation of a garden hose and the causes of an “increase” in pressure would be understood. Second, a skilled addressee reading the integer and claim in the context of the specification as a whole would not use such a literal interpretation. Third, the skilled addressee when reading integer 1.8 in the context of and with integers 1.7 and 1.9 would appreciate that a literal meaning of “said” was not being used. This is one of those occasions referred to by Lord Hoffmann as not expected to happen very often. Moreover, and again to use his language, there is a “rational basis” in the present case for departing from the literal use of the word “said”. His Honour departed from this literal use, and we see no error in his approach.

112    Alternatively, although his Honour did not so find, another way to read integer 1.8, accepting for the sake of the argument that “said” is to be construed as contended for by PMG, is perhaps to read “said increase in water pressure” caused by the restrictor as not being the sole cause for the expansion of the hose but only a cause. This is also consistent with integer 1.9. It is also how a skilled addressee might read it practically and in context. Further, it is also consistent with the use of the indefinite article “an” in integer 1.7, which uses the expression “fluid flow restrictor creates an increase in water pressure”. That language does not negate other causes as also producing an increase in pressure. It is not expressed as “fluid flow restrictor creates the increase in water pressure”. Further, on that construction, the word “thereby” in integer 1.8 would be read as “thereby together with other causes”. It would have also been open to his Honour to have construed claim 1 of each Patent accordingly.

appeal Ground 7: Indirect Infringement

(a)    Introduction

113    Blue Gentian at trial claimed that PMG directly infringed claims 1, 2, 4 and 5 of the First Patent and claims 1, 2 and 5 of the Length Patent by importing, offering to sell and otherwise disposing of, selling or otherwise disposing of and keeping a garden hose marketed as the Pocket Hose. The earliest date of alleged infringement was 15 November 2012. The publication dates of the First Patent and the Length Patent were 17 January 2013 and 18 April 2013 respectively.

114    Blue Gentian at trial also asserted that PMG had indirectly infringed claims 1, 2, 4 and 5 of the First Patent and claims 1, 2 and 5 of the Length Patent pursuant to inter alia s 117(2)(c) of the Act because the Pocket Hose had been supplied together with instructions for use, where such use would infringe the Patents.

115    In relation to indirect infringement s 117 relevantly provided as follows:

(1)    If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.

(2)    A reference in subsection (1) to the use of a product by a person is a reference to:

(a)    if the product is capable of only one reasonable use, having regard to its nature or design — that use; or

(b)    if the product is not a staple commercial product — any use of the product, if the supplier had reason to believe that the person would put it to that use; or

(c)    in any case — the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.

116    The supply of a product with instructions, which would infringe a claim if used as instructed, would also constitute infringement under s 117(2)(c); see Beadcrete Pty Ltd v Fei Yu (t/as Jewels 4 Pools) (No 2) (2013) 100 IPR 188 at [126]–[128] per Jagot J, referred to with approval on appeal (Fei Yu (t/as Jewels 4 Pools) v Beadcrete Pty Ltd (2014) 107 IPR 516 at [82] to [86] per Dowsett, Middleton and Robertson JJ).

(b)    His Honour’s findings

117    His Honour stated in his reasons ([203]) that PMG did not challenge Mr Hunter’s conclusion in his first and second affidavits that the Pocket Hose had each of the features of claims 1, 2, 4 and 5 of the First Patent, and 1, 2 and 5 of the Length Patent (assuming the construction issues to have been found in favour of Blue Gentian). He also stated that Professor Armfield confirmed that he did not disagree with any of those conclusions.

118    His Honour also stated that Professor Armfield conducted a number of experiments on the Pocket Hose in which the hose approximately doubled in length from the contracted state to the expanded state. His Honour stated that on the basis of the construction of claim 1 of each of the Patents that he favoured, there would be a substantial increase in the length of the garden hose, or an increase in the length of the garden hose by, relevantly, at least a factor of two.

119    Accordingly, on his Honour’s interpretation of claim 1, he held that direct infringement was established.

120    As to the question of indirect infringement, his Honour made the following findings. His Honour found ([211]) that Professor Armfield accepted that where the trigger nozzle completely blocked flow, the features of claim 1 were satisfied since the fluid flow restrictor was responsible for the entire elongation of the hose to its “expanded condition”. This resulted because the closed trigger nozzle “redistribute[d] that pressure in a way that the upstream pressure [was] greater than it otherwise would be”. He further accepted that even if PMG’s and Professor Armfield’s construction of “said increase” in integer 1.8 was correct, the Pocket Hose with a closed trigger nozzle attached had all the features of claim 1.

121    His Honour referred to the fact ([212]) that Professor Armfield also confirmed that the experiments that he had designed involved conducting all measurements at a state of equilibrium, and that was consistent with his understanding of what the claims required to be measured. He further confirmed that position specifically in relation to the closed trigger nozzle (zero flow) condition.

122    Relating to the elements of s 117(2)(c), his Honour found ([213]) that the instructions supplied by PMG with the Pocket Hose instructed a user to connect one end of the hose to a tap, connect the other end of the hose to a spray nozzle, (with the nozzle in the off position), and turn on the water supply and allow the hose to fully expand before using the hose.

123    On this basis, and even on PMG’s and Professor Armfield’s approach to the construction of integer 1.8, his Honour found that the use of the Pocket Hose as instructed involved use of a garden hose having all of the features of the pleaded claims.

124    His Honour said that accordingly PMG had supplied the product, where the use of the product was to be in accordance with instructions given to the consumer by PMG, which instructions taught the use of a trigger nozzle in a closed position which then entailed an infringing use of the product.

125    In summary, his Honour held ([216]) that claims 1, 2, 4 and 5 of the First Patent, and claims 1, 2 and 5 of the Length Patent were directly infringed (if Blue Gentian’s and his Honour’s construction of integer 1.8 applied), and indirectly infringed pursuant to s 117(2)(c) of the Act (even if PMG’s construction of integer 1.8 applied).

(c)    PMG’s arguments on indirect infringement

126    PMG contended that the judge erred in finding that Professor Armfield accepted that where the trigger nozzle of the Pocket Hose completely blocked flow, the features of claim 1 were satisfied, even if Professor Armfield’s approach to construction was accepted. PMG contended that Professor Armfield made no such concession. It contended that in any event, the evidence was that the flow restrictor was only responsible for an average 22% increase in the length of the hose where the fluid flow restrictor was a plug connected to the second coupler and completely blocked flow. It was said that such expansion could not be seen as substantial. We will address that contention later.

127    More generally, Professor Armfield’s evidence was that the expansion of the hose was caused largely by frictional losses, with the flow restrictor making only a minor contribution (see his Honour’s reasons at [70]). Mr Hunter’s evidence was that frictional loss or the flow restrictor or a combination of both caused expansion [71]. This evidence was accepted by the judge [72]. But of course in the scenario where the trigger nozzle completely blocked flow, there would be no relevant frictional effects, which is the relevant scenario on the indirect infringement case under discussion.

(d)    Analysis

128    In our opinion, even if the primary judge’s construction of integer 1.8 was incorrect, his Honour was correct in finding that PMG nonetheless indirectly infringed the Patents pursuant to s 117(2)(c) by its sale of the Pocket Hose with instructions to use it with a trigger nozzle fully closed. The instructions supplied by PMG with the Pocket Hose “instruct[ed] a user to connect one end of the hose to a tap, connect the other end of the hose to a spray nozzle, (with the nozzle in the off position), and turn on the water supply and allow the hose to fully expand before using the hose” (reasons at [213]). Those instructions were not preliminary to use but part of use. In any event, for a standard suburban garden, you might want to carry the hose to different parts of the garden to water with the tap turned on, but with no water released until you arrived at the desired location within the garden to then open the nozzle. At the least, that would be a sensible water saving measure.

129    As his Honour correctly found, even on PMG’s construction of integer 1.8, PMG infringed claims 1, 2, 4 and 5 of the First Patent and claims 1, 2 and 5 of the Length Patent because:

(a)    where the trigger nozzle completely blocks the flow of water, the “fluid flow restrictor is responsible for the entire elongation of the hose to its ‘expanded condition’” (reasons at [211]); and

(b)    experiments showed that the Pocket Hose doubled in length from the contracted state to the expanded state which amounted to a “substantial increase” in the length of the garden hose within the meaning of the First Patent and an increase in the length of the garden hose by “at least a factor of two” within the meaning of the Length Patent (reasons at [204]).

130    When the fluid flow restrictor is fully choked (as occurs with a trigger nozzle used in accordance with PMG’s instructions), there is no flow of water through the hose and hence no relevant frictional effects. In that scenario, and in the context of determining infringement, the proper comparison (as his Honour rightly made) was between:

(a)    the length of the hose in its original condition (prior to the tap being turned on); and

(b)    the length of the hose after the tap was turned on with the hose fully choked by the trigger nozzle.

In either comparator there is no water flowing through the hose and no relevant frictional effects. The experimental evidence adduced before his Honour demonstrated that there was a doubling in the length of the hose caused by the fully choked trigger nozzle (in accordance with PMG’s instructions for the use of the Pocket Hose with a trigger nozzle). This met the requirements of claim 1 of both Patents (reasons at [214]) even on PMG’s construction of integer 1.8 in relation to the “said increase” aspect.

131    PMG has asserted that the evidence demonstrated that the fully choked flow restrictor was only responsible for an “average 22% increase” in the length of the hose. PMG contended that this did not amount to a substantial increase or increase of at least a factor of two within the meaning of the latter aspect of integer 1.8. But we agree with Blue Gentian that that percentage increase used the wrong comparator for the purposes of calculation. It measured the difference between:

(a)    the hose with a fully choked fluid flow restrictor (equivalent to a trigger nozzle in the closed position) (zero flow and no frictional effect); and

(b)    a hose with the fluid flow restrictor removed but with the water tap still on (water flow with frictional effect).

132    But that comparison ignored the introduction of a substantial frictional effect caused by the flow of water in the comparator (b) scenario thereby generating PMG’s advantageous mathematical outcome of 22%. But that comparator was erroneous. Integer 1.8 is addressing what causes the expansion. In order to get the expansion produced by the fully choked case as instructed for the Pocket Hose, one is moving from the starting position (and true comparator) being the length of the hose in its original condition prior to the tap being turned on.

133    In our opinion, no error has been demonstrated in his Honour’s analysis of indirect infringement, even assuming in favour of PMG its construction of integer 1.8. But in any event, its construction of integer 1.8 is incorrect. Accordingly, there has also been direct infringement as his Honour found.

grounds 1, 4 and 5(a) of notice of appeal: Innovative Step

134    PMG has contended that the Patents lacked an innovative step when compared with the disclosure in the McDonald Patent. The publication date of the McDonald Patent was 2 January 2003. The priority date of each of the Patents is 3 April 2012.

(a)    The McDonald Patent

135    The McDonald Patent is entitled “Self-elongating oxygen hose for stowable aviation crew oxygen mask” (reasons at [91] to [95]).

136    The specification described the field of the invention in the following terms:

The present invention is broadly concerned with supplemental gas assemblies such as supplemental oxygen units typically used in aircraft for supplying supplemental oxygen to aircraft crew in the event of a cabin depressurization or other emergency. More particularly, the invention is concerned with such assemblies wherein a self-elongating gas hose assembly is employed which, when pressurized, axially expands to a significant extent. This gives the user a relatively long effective hose length, while avoiding the problems of handling and stowage typical with conventional hoses.

137    Further, the specification summarised the invention in the following terms (see also the abstract which was set out in the primary judge’s reasons at [92]):

The present invention overcomes the problems outlined above and provides supplemental gas (e.g., oxygen) assemblies including a mask adapted to fit over at least the nose and mouth of a wearer, with a flexible hose coupled with the mask and a source of supplemental gas; at least a portion of the mask and the hose are received within a stowage box. In accordance with the invention, the hose assembly comprises a length-expandable hose which, when a user grasps the mask and pulls it from the stowage box, will inflate and axially expand to a deployed length greater than the relaxed length thereof. In this way, the stowage requirements for the hose assembly are reduced, or alternately a hose having a substantially longer effective length can be used in a standard stowage box designed to accommodate a much smaller length conventional hose assembly.

In preferred forms, the hose assembly includes an inflatable elastomeric inner tube together with an exterior sheath formed of woven or braided material which in use restricts the radial expansion of the inner tube upon pressurization thereof, while allowing the tube to expand axially. The hose assemblies may have a deployed length of at least about 1.5 times the relaxed length thereof, and more preferably greater than about two times the relaxed length.

138    The McDonald Patent contains three drawings of the invention, figure 2 (side view showing the gas hose in its relaxed condition) and figure 3 (side view showing the mask assembly in its elongated condition) being the following:

139    As his Honour rightly held ([94]), the McDonald Patent discloses a self-elongating hose assembly, which includes an inner, resilient, expandable inner tube secured at each end to an outer fabric sheath. The hose assembly is then connected to a mask at one end and threaded on to a gas fitting at the other. When pressurised gas is delivered into the hose, the inner tube expands longitudinally. The outer sheath inhibits the radial expansion and longitudinal elongation of the inner tube. The specification discloses that preferably the deployed length of the hose assembly is at least about 1.5 times the relaxed length thereof, and more preferably at least about two times the relaxed length. Further, the specification describes the advantage of the retraction characteristic as aiding “significantly in restowage, since the hose does not require the extent of gathering and coiling typical of conventional hose assemblies”.

140    The claims of the McDonald Patent are as follows:

1.    In a supplemental gas assembly including a mask adapted to fit over at least the nose and mouth of a wearer, a flexible hose operably coupled with said mask and source of supplemental gas and having a relaxed length, and a stowage box adapted to receive at least a portion of said mask and hose when the latter are not in use by said wearer, the improvement which comprises using as said hose a length-expandable hose which, when said wearer grasps said mask and pulls the mask from said box, will inflate and axially expand to a deployed length greater than said relaxed length, said length-expandable hose comprising an inflatable inner tube and an exterior sheath which restricts the radial expansion of said inner tube while allowing said axial expansion during said hose inflation.

2.    The assembly of claim 1, said inner tube formed of an elastomeric material, said sheath being a woven or braided material.

3.    The assembly of claim 2, said inner tube formed of an elastomeric material.

4.    The assembly of claim 1, said deployed length being at least about 1.5 times said relaxed length.

5.    The assembly of claim 4, said deployed length being greater than about 2 times said relaxed length.

6.    A supplemental gas mask assembly comprising:

a mask body adapted to fit over at least the nose and mouth of a wearer;

an elongated hose operably coupled with said mask for supplying supplemental gas to the mask body, and having a relaxed length.

said hose being a length-expandable hose which, when supplemental gas under pressure is directed through the hose, will inflate and expand in an axial direction to a deployed length greater than said relaxed length, said length-expandable hose comprising an inflatable inner tube and an exterior sheath which restricts the radial expansion of said inner tube while allowing said axial expansion during said hose inflation.

7.    The assembly of claim 6, said inner tube formed of an elastomeric material, said sheath being a woven or braided material.

8.    The assembly of claim 7, said inner tube formed of a material selected from the group consisting of silicone and nitrile materials.

9.    The assembly of claim 6, said deployed length being at least about 1.5 times said relaxed length.

10.    The assembly of claim 9, said deployed length being greater than about 2 times said relaxed length.

11.    The assembly of claim 6, the end of said hose opposite said mask body adapted for connection to a supplemental gas source.

(b)    Differences between McDonald Patent and the Patents

141    His Honour made the following findings comparing the disclosures in the McDonald Patent with the First Patent and the Length Patent (reasons at [97] to [140]). Most of these findings have not been challenged. They were made in the context of PMG’s lack of novelty argument. His Honour found against that argument ([141]) and that has not been the subject of challenge before us. But his Honour’s findings are an important foundation to his Honour’s discussion concerning PMG’s arguments dealing with a lack of innovative step, to the extent that his Honour identified differences between the McDonald Patent disclosures and the Patents in suit.

142    Before proceeding further we should make one other comment. PMG submitted to us, and we accept, that its case on lack of innovative step was put in the alternative. If his Honour did not correctly construe integer 1.8 and PMG’s construction is correct (contrary to what we have found), then PMG accepts that integer 1.8 dealing with the fluid flow restrictor and its effect was not disclosed by the McDonald Patent. Moreover, it also accepts that such an integer is an innovative step. In other words, its case on lack of innovative step is said to be an alternative case assuming that its construction of integer 1.8 has been rejected.

Claim 1 of the First Patent

Integer 1.1

143    Integer 1.1 in the First Patent calls for a garden hose. The invention in the McDonald Patent is not a garden hose, although PMG contends that the mechanics and behaviour of the McDonald Patent’s invention and the invention disclosed in the First Patent is essentially the same regardless of the fluid introduced into the hose. Further, the First Patent explicitly states that gases can be used in the hose.

144    His Honour found ([99]) that the McDonald Patent disclosed an invention containing a hose with a mask attached, whereas the First Patent disclosed the assembly hose alone. His Honour found that for the invention disclosed in the McDonald Patent to be used as a garden hose, the mask would have to be removed.

145    His Honour found ([100]) that the garden hose integer was not disclosed in the McDonald Patent. Indeed, the McDonald Patent described an apparatus having a hose and a mask which would not be suitable for use as a garden hose.

Integers 1.4 and 1.5

146    Integer 1.4 of the First Patent required a first coupler secured to the first end of the inner and outer tubes for coupling to a pressurised water faucet. Integer 1.5 of the First Patent similarly required a second coupler secured to the second end of the inner and outer tubes for discharging water.

147    His Honour recited the fact ([103]) that Mr Hunter gave evidence that the first coupler, described in the McDonald Patent as being a threaded hose fitting suitable for being threaded on to a box-mounted gas fitting, would not attach to a domestic pressurised water faucet. But he conceded that the first coupler was performing the function of coupling the McDonald Patent hose to a pressurised fluid source. But his Honour held that this concession did not detract from his evidence that the First Patent did not call for a coupler for coupling to any pressurised fluid source, but rather a water faucet. Mr Hunter’s evidence was that the couplers disclosed in the McDonald Patent would require adaptors to perform in the same way as the couplers disclosed in the First Patent.

148    His Honour recited the fact ([104]) that Professor Armfield accepted in his second affidavit that the couplers would need to be modified or attached to appropriate adaptors for the hose claimed in the McDonald Patent to function as a garden hose. In cross examination, while he stated that it might be possible that the first coupler would be able to connect to a water faucet without modifications, he later accepted that it was unlikely, and that it was likely that the couplers would need to be modified to fit to a water faucet.

149    His Honour referred to the fact ([105]) that with respect to the second coupler, the experts agreed that the mask was not suited to discharging water.

150    Generally, his Honour referred to the fact ([107]) that both expert witnesses gave evidence that if the mask was removed, and appropriate adaptors were attached to the couplers, the hose disclosed in the McDonald Patent could be used as a garden hose. But he concluded that this would require modifications to make the McDonald Patent hose suitable for coupling to a water faucet and discharging water. But this would go beyond any express or implied disclosure.

Integers 1.7 to 1.9

151    PMG submitted to his Honour that the presence of a downstream coupler in the McDonald Patent hose was sufficient to disclose to the skilled addressee that which was taught in integers 1.7 to 1.9.

152    Contrastingly, Blue Gentian submitted to his Honour that the McDonald Patent did not disclose a downstream flow restrictor, and furthermore, it did not disclose an increase or decrease in water pressure.

153    His Honour held that the McDonald Patent did not disclose integers 1.8 or 1.9 ([123]).

Claim 2 of the First Patent

154    Claim 2 of the First Patent taught that the hose was not to kink when contracted.

155    His Honour held ([125]) that the McDonald Patent did not explicitly require that the hose not kink when in the contracted condition. His Honour said that it may be the case that it is important for the McDonald hose to be kink-resistant when in the expanded condition. But claim 2 taught that the hose not kink in the contracted condition. His Honour held that there was no disclosure of relevant kink-resistance in the McDonald Patent. This finding has been challenged by PMG before us.

Claim 4 of the First Patent

156    His Honour held ([127]) that the assembly (when considered as an independent claim, rather than being dependent on claims 1 to 3) had been anticipated by the McDonald Patent.

Claim 5 of the First Patent

157    Claim 5 taught that the outer tube caught on the surface of the inner tube and automatically became folded, compressed and tightly gathered around the length of the contracted inner tube.

158    His Honour referred ([129]) to the Detailed Description of the Preferred Embodiment in the McDonald Patent which stated that “[a]s best seen in FIG. 2, in the relaxed condition of the assembly 14, the sheath 36 is in a gathered or shirred condition along the length of the unexpanded tube”.

159    His Honour referred ([130]) to Professor Armfield’s evidence that claim 5 was anticipated because the McDonald Patent uses the words “gathered” and “shirred” and he speculated that it would be impossible to prevent the outer sheath from coming into contact with the inner tube in the relaxed sheath. His Honour then referred ([131]) to Mr Hunter’s evidence that he did not consider that the integer was anticipated by the McDonald Patent because figure 2 showed a clearance between the inner and outer tubes in the contracted condition, and further that the McDonald Patent did not disclose the outer tube catching on the surface of the inner tube in its contracted state.

160    His Honour held ([133]) that the disclosure in the McDonald Patent that the outer tube is gathered or shirred along the length of the unexpanded tube does not give “a clear and unmistakeable direction” that the outer sheath would catch on the inner tube. This finding has been challenged by PMG before us.

Claim 1 of the Length Patent

161    His Honour considered ([135]) that claim 1 of the First Patent was synonymous with claim 1 of the Length Patent, and he adopted his analysis that we have set out earlier.

Claim 2 of the Length Patent

162    Claim 2 taught that the hose be at least 10 feet long. The McDonald Patent did not disclose the length of the hose. His Honour recited ([136]) that the experts agreed that claim 2, when considered as an independent claim, was not disclosed in the McDonald Patent.

163    His Honour said ([137]) that whilst it may be possible to make a McDonald hose of any length, he did not consider there was any evidence of express or implied disclosure whereby the skilled addressee would consider making a hose at least 10 feet long on the basis of what was disclosed in the McDonald Patent.

164    Accordingly, he held ([138]) that claim 2 of the Length Patent was not anticipated by the McDonald Patent.

Claim 5 of the Length Patent

165    His Honour held ([139]) that claim 5 of the Length Patent was “synonymous” with claim 5 of the First Patent, and he adopted the analysis that we have set out earlier.

(c)    Innovative step — principles

166    Before discussing his Honour’s specific findings on the innovative step question, building upon the above findings, it is appropriate to set out the applicable legal principles.

167    For a patentable invention so far as claimed in a claim, the question is whether it involves an innovative step when compared with the prior art base as it existed before the priority date of the claim (s 18(1A)(b)(ii) of the Act).

168    In terms of what is meant by an “innovative step”, s 7(4) of the Act at the relevant time (the priority date of the Patents is 3 April 2012) elaborated in the following terms:

7    Novelty, inventive step and innovative step

…

Innovative step

(4)    For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.

169    The present s 7(4) reads slightly differently; it now reads “… in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim …”.

170    Section 7(5) refers to information of the kind, inter alia, of prior art information made publicly available in a single document or through doing a single act.

171    There is a presumption that an invention involves an innovative step. Accordingly, the onus is on PMG to establish otherwise in terms of establishing the “no substantial contribution” aspect.

172    Before proceeding further, a number of general observations should be made.

173    First, the “innovative step” requirement is a different and lower threshold requirement than the “inventive step” requirement; one is considering lower level inventions, with the trade-off being the lower patent term of eight years rather than twenty years.

174    Second, the task to be undertaken is to:

(a)    identify the invention as claimed in the particular claim; this is not to be confused with loose concepts such as the “key idea”;

(b)    identify the relevant common general knowledge;

(c)    identify the relevant prior art information against which the invention as claimed is to be compared;

(d)    identify the person skilled in the relevant art; and

(e)    then pose and answer the question as to whether the claimed invention only varies from the particular single prior art in a way that makes no substantial contribution to its working.

175    But what is meant by “substantial” in the phrase “no substantial contribution to the working of the invention”? It does not mean “great” or “weighty”, but rather means “real” or “of substance” (Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 at [74] per Kenny, Stone and Perram JJ). So, not only is the “innovative step” a lower threshold than the “inventive step”, the latter of which only requires a “scintilla” of inventiveness in any event (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 at [52]), but for the “innovative step” one only requires a real or of substance contribution to the working of the invention. Moreover, this is in effect deemed to be the case unless PMG proves otherwise.

176    What is meant by the concept of “working of the invention”? Assume that the invention as claimed varies in a particular respect from the relevant prior art information and the question is whether this variation does or does not make a substantial contribution to the working of the invention. The question is not whether, absent the variation, the invention could still work effectively or whether, by other means, it could be adapted to so work. The question is whether the variation makes a substantial contribution to the working of the invention as claimed (Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496 (Vehicle Monitoring Systems) at [226] and [227] per Yates J). Moreover, the substantial contribution to the working of the invention must be across the full scope of the claim (see Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) 214 FCR 323 at [285] per Yates J).

177    Further, the specification does not need to expressly identify or set out the substantial contribution that any particular integer of a claim might make to the working of the invention. That is to be ascertained by the Court with or without expert assistance.

178    Further, it is erroneous to assert that the test for “substantial contribution” requires establishing a difference between the prior art and the claim such that it could be characterised as an “advantage”. That is not the language of the Act. One may still have a “substantial contribution” even if the overall effect could be characterised in evaluative terms such as neutral from a particular perspective; any issue arising under s 18(1A)(c) as to utility is a separate question (see Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd at [234] per Beach J).

179    Further, the assessment requires consideration of the contribution the feature would make to the working of the invention as claimed, not the contribution it would make to the prior art (Streetworx at [237]).

180    Further, it is irrelevant whether the patentee has identified advantages not specifically described in the Patents or does not expressly refer to an advantage which is described in the Patents. The analysis required is whether the features in question make a substantial contribution to the working of the claimed invention, not whether the evidence as to that contribution matches the text of the patent specification (Streetworx at [238]).

181    Further, a feature does not need to provide an economic benefit in order to meet the test for innovative step.

182    PMG submits that the statutory test in s 7(4) of the Act looks to whether the underlying scientific principles remain the same when comparing the invention as claimed against what is disclosed in the prior art. PMG says that the test can be reworded to ask whether the two things “work in substantially the same way”. That was also the approach that Professor Armfield was asked to take in comparing the claims with the McDonald Patent.

183    But the statutory test does not involve asking whether the invention as claimed and the prior art disclosure “work in substantially the same way”. In Dura-Post, examples were given (at [84]) of differences from prior art marker posts that involved an innovative step, being a marker hole, a barb, a tapered end, longitudinally extending ribs, and the different dimensions. But the posts otherwise worked in “substantially the same way”. But this did not preclude a finding that the claimed invention involved an innovative step.

184    PMG’s references to Vehicle Monitoring Systems do not assist it. Vehicle Monitoring Systems reinforces the view that a relevant adaptation of the prior art to a different purpose can give rise to an innovative step, and it was not to the point whether the claimed invention and the prior art disclosure otherwise “worked in substantially the same way” (see at [235]). In that case, the claimed invention and the prior art apparatuses could in one sense be said to “work in substantially the same way”, but the fact that the claimed invention was adapted to a different purpose, namely, subterranean operation meant that there was a “substantial contribution to the working of the invention”.

185    Professor Armfield compared the McDonald Patent and the invention as claimed and, where he observed a difference, he gave his opinion as to whether that feature worked in the same way as the claimed invention. But in our opinion this evidence did not address the proper question.

186    PMG has made reference to Griffin v Isaacs (1938) 1B IPR 619 at 621 and 624 and also the prior decision of the Deputy Commissioner of Patents (see the Official Journal of Patents, Trade Marks & Designs Volume 8 No 5 (17 February 1938) at 355 to 364). It is difficult to see what can usefully be drawn from this case given that we are addressing the language of s 7(4). PMG also sought to put an argument that the descriptor of trouser or skirts in that case was irrelevant and that by analogy in the present case the descriptor garden hose should also be put to one side. We will address integer 1.1 in more detail, but for the moment we do not consider that Griffin v Isaacs provides much assistance.

187    Before addressing his Honour’s analysis we would make one other observation on the applicable principles.

188    Blue Gentian has contended that the comparators described in s 7(1) of the Act for novelty have parallels with the comparators described in s 7(4) for innovative step. Further, it contended that the Full Court in Dura-Post at [79] had described the test for innovative step as being a “modified novelty test deriving from Griffin [v Isaacs]”. Building upon that foundation, Blue Gentian contended that in considering the appropriate comparator from the prior art, the reference point must be a disclosure that meets the requirements of a novelty analysis, that is, a clear and unmistakeable disclosure. It cited General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) 1A IPR 121 at 138 in support of that contention. But we do not accept that that case stands for such a proposition when one is dealing with a lack of innovative step analysis. The strictures of the “clear and unmistakeable disclosure” requirement apply only to the context of anticipation.

(d)    His Honour’s findings on innovative step

189    His Honour found the following ([154] to [186]) in the context of his earlier findings concerning the differences between the disclosures in the McDonald Patent and the Patents in suit.

Claim 1 of the First Patent

190    His Honour held ([157]) that the requirement that the hose be a garden hose was a difference that made a substantial contribution to the working of a hose as a garden hose. That is the case whether the comparison was made with the mask and hose assembly or the hose alone disclosed in the McDonald Patent. This finding has been challenged by PMG before us.

191    In addition, his Honour held ([158]) that the following changes made a substantial contribution to the operation of the hose as a garden hose:

(a)    changing the upstream coupler to a coupler capable of attachment to a pressurised water faucet;

(b)    removing the mask; and

(c)    changing the downstream coupler from one for coupling to a mask to one that was capable of coupling to a garden hose attachment.

192    His Honour also held ([159]) that with respect to the dimensions of and materials used in different types of hoses, the diameter of a hose for carrying gas is likely to be less than that for carrying water in a garden hose application, and that the materials used for the former type of hose are also likely to be different and may not be capable of resisting the pressures produced by a typical domestic garden tap.

193    His Honour referred ([160]) to the fact that Professor Armfield accepted that the diameter of the hose disclosed in the McDonald Patent could be thinner than that suitable for a garden hose, although he also thought it was possible that a thicker hose, such as might be suitable for a garden hose, could be used for the McDonald type hose. His Honour said that the innovative step comparison must address whether a change in diameter makes a material contribution to the working of the invention.

194    His Honour then said ([161]) that, putting aside any issue of the diameter, the differences between the McDonald Patent and claim 1 of the First Patent made a substantial difference to the working of the hose, and as such involved an innovative step. This finding has been challenged by PMG before us.

Claim 2 of the First Patent

195    His Honour referred ([162]) to the fact that the kink-resistant feature when the hose as claimed in the Patents in suit was in a contracted state enabled the hose to be “stored without worry of the hose kinking or becoming entangled” and “enable[d] a user to store the hose in a very small space with no concern about having to untangle or unkink the hose when it [was] removed from storage and used”: First Patent at [0058].

196    His Honour said ([163]) that there was no mention of kink-resistance in McDonald, nor disclosure of the materials used to make the inner and outer tubes. His Honour said that whilst there would be an expectation of resistance to kinking in the McDonald Patent, this may not necessarily relate to the kink-resistant materials used to make the inner and outer tubes as found in the Patents. In addition, his Honour said that claim 2 taught that the hose would not kink in the contracted condition.

197    In his Honour’s view ([164]), a skilled addressee would appreciate the difference between claim 2 and the McDonald Patent in this regard, and that the kink-resistant feature made a substantial contribution to the working of the hose. This finding has been challenged by PMG before us.

Claim 3 of the First Patent

198    Claim 3 taught that the upstream coupler was a female coupler and the downstream coupler was a male coupler. The McDonald Patent disclosed two female couplers.

199    In his Honour’s view ([168]), the presence of a male coupler at one end and a female coupler at the other end enabling hoses to be coupled to each other did make a substantial contribution to the working of the invention.

200    His Honour said ([169]) that the skilled addressee would readily see this as a benefit of the claimed invention. He held that the ability to couple to another hose increased the versatility of the invention and made a substantial contribution to its working.

Claim 4 of the First Patent

201    Consistently with what his Honour had earlier said, there was no relevant difference from the McDonald Patent when considered independently of claims 1 to 3 ([170]).

Claim 5 of the First Patent

202    His Honour referred ([172]) to the fact that the experts differed in their opinions as to how the hose in the McDonald Patent would contract. Mr Hunter asserted that the drawings in the McDonald Patent did not show that the outer sheath would catch on the inner tube during contraction, and furthermore that the McDonald Patent did not disclose this claim in any event. In contrast, Professor Armfield expressed the view that the outer sheath in the McDonald Patent would contract in the same manner as the outer tube in the First Patent.

203    His Honour said ([173]) that the specification in the First Patent provided for the outer tube to catch “on the rubbery elastic inner tube 14 material causing the outer tube 12 to automatically become folded, compressed and tightly gathered around the outside circumference of the entire length of the contracted inner tube 14”. His Honour said that this permitted a long outer tube to be tightly gathered and in that state measured the same length of the contracted inner tube. This feature also ensured the even distribution of the outer sheath along the inner tube in the contracted state. His Honour said that implicitly then, if the hose subsequently has pressurised water introduced such that it extends to the expanded condition, and if the outer sheath is not evenly distributed along the inner tube, then the hose’s expansion and elongation might be adversely affected. His Honour said that the expansion and contraction of the hose was a central feature of the invention and that the feature in claim 5 ensured the hose expanded and contracted as intended.

204    His Honour then referred ([174]) to his earlier conclusion that the claim was not anticipated by the McDonald Patent. His Honour then said that Professor Armfield did not address whether the additional feature in claim 5 made a substantial contribution to the working of the invention as claimed (as Professor Armfield had considered the integer to be present in the McDonald Patent). His Honour concluded that on the basis of the working of the invention, he was satisfied that this feature substantially affected the working of the hose disclosed in the First Patent and therefore it followed that claim 5 involved an innovative step. This finding has been challenged by PMG before us.

Claim 1 of the Length Patent

205    His Honour adopted ([175]) his analysis of claim 1 of the First Patent for claim 1 of the Length Patent, but with one difference. Whereas claim 1 of the First Patent disclosed that the hose will increase in length substantially, integer 1.8 of the Length Patent disclosed that the hose increases in length two to six times.

206    His Honour ultimately concluded ([180]) that claim 1 of the Length Patent involved an innovative step. This finding has been challenged by PMG before us. In oral submissions before us, Blue Gentian has conceded this point.

Claim 2 of the Length Patent

207    As indicated earlier, claim 2 of the Length Patent taught that the hose must be at least 10 feet long. It was not in dispute that the McDonald Patent did not disclose the length of the hose nor that the hose would be more than 10 feet long. PMG submitted that despite this, it did not follow that the McDonald Patent hose worked differently. But his Honour said that this was the wrong enquiry ([182]). The correct enquiry was whether the length of the hose made a substantial contribution to the working of the hose as a garden hose.

208    His Honour also referred ([183]) to the fact that Professor Armfield suggested that the hose in the McDonald Patent would be 75 cm long and accepted that at most it would be 1.5 m long. His Honour said that this was an inappropriate length for a garden hose. Accordingly, increasing it to at least 10 feet made a substantial contribution to its working as a garden hose. Therefore, as his Honour concluded, claim 2 of the Length Patent involved an innovative step. This finding has been challenged by PMG before us.

Claim 3 of the Length Patent

209    Claim 3 taught that the hose will increase in length four to six times. For the same reason that integer 1.8 involved an innovative step, his Honour said ([184]) that it followed that an increase in four to six times in length must also involve an innovative step.

Claims 4 and 5 of the Length Patent

210    Claims 4 and 5 of the Length Patent made essentially identical disclosures to claims 3 and 5 of the First Patent respectively. On that basis, his Honour adopted ([185]) his analysis of claims 3 and 5 of the First Patent. This finding has been challenged by PMG before us.

Conclusion in relation to innovative step

211    In summary, his Honour held ([186]) that the relevant claims of the First Patent and Length Patent involved an innovative step. This finding has been challenged by PMG.

(e)    PMG’s arguments and analysis

212    Generally, PMG has submitted that his Honour erred in that he failed to properly compare and therefore incorrectly identified the relevant variations between the inventions as claimed in the Patents and the disclosures in the McDonald Patent. Further, PMG contends that his Honour erred in making findings that certain variations made a substantial contribution to the working of the inventions which were not open to him on the evidence and generally erred in concluding that the identified variations made a substantial contribution to the working of the inventions as claimed.

213    There are several other general propositions that PMG has submitted.

214    First, PMG has contended that properly understood, the McDonald Patent discloses to a skilled addressee a “self-elongating hose assembly, which includes an inner, resilient, expandable inner tube secured at each end to an outer fabric sheath ... [so that when] pressurised gas [that is, a fluid] is delivered into the hose, the inner tube expands longitudinally” (reasons at [94] with PMG’s modifications). Further, it discloses a hose which “when supplemental gas pressure is directed through the hose, will inflate and expand in an axial direction to a deployed length greater than said relaxed length” (McDonald Patent, column 4, lines 28 to 31) and which will contract to a relaxed condition after use (McDonald Patent, column 3, lines 37 to 39). Accordingly, so PMG asserts, the McDonald Patent discloses the same hose assembly as the Patents, but conveying a different fluid in a different application. In this context, PMG also says that Mr Hunter accepted that the McDonald hose expands and contracts in “fundamentally” the same way as the hose claimed in the Patents. The only qualification that was given to this admission was that: “with the possible difference that the length limitation feature is not expressly disclosed in the McDonald specification”. We interpolate that Mr Hunter went on to elaborate his qualification. It is said that Mr Hunter subsequently agreed that the McDonald Patent (the abstract) discloses expansion in length of up to three times.

215    Generally, PMG contends that the working of the inventions and the McDonald hose are exactly the same; reference was made to the abstract in the McDonald Patent reproduced at [92] of the reasons, [22] of the reasons and the reference to the McDonald Patent in the Length Patent at [0026]; we would note though that this latter reference is a two edged sword for PMG. We would note at this point that we do not consider that the generality of this theme, and its resonance with PMG’s other related general theme relating to the similar fluid dynamics of hoses transporting fluids, is properly focused on the specific working of the invention(s) as claimed.

216    Second, PMG has asserted that Professor Armfield’s evidence was that any variations between the McDonald Patent and the claimed inventions did not make a substantial contribution to the working of the inventions (annexure SWA-6 to his first affidavit and his second affidavit at [12] to [14]). It is also said that although Mr Hunter identified differences between the McDonald Patent and the inventions as claimed, he was never asked to look at whether those variations made a substantial contribution to the working of the inventions as claimed and did not give any evidence that they did. It is said that his evidence in relation to variations incorrectly approached the matter by reference to whether any change between the McDonald Patent and the inventions as claimed was obvious. We note though that if that was an error, it was not in PMG’s favour to the extent that Mr Hunter said that the relevant differences were not obvious. If they were not obvious i.e. had an inventive step (a higher threshold), then a fortiori they involved an innovative step (a lower threshold).

217    It is appropriate to turn now to the specific challenges to his Honour’s findings.

Requirement that the hose be a garden hose (integer 1.1, claim 1 of both Patents)

218    It is said that his Honour failed to consider what contribution the requirement the hose be a garden hose made to the working of the inventions as claimed (reasons at [157]). It is said that he only identified this variation and then asserted that it did make a contribution. It is said that there was circularity in his Honour’s approach.

219    Further, PMG contends that a difference in application does not, in itself, give rise to an innovative step. It says that if the fact that the claimed invention(s) was to a garden hose made a substantial contribution to the working of the invention(s), claims for hoses used for specific fluids or other applications (such as a fire-fighting or a ship hose) which expanded and contracted in “precisely” the same way as the claimed invention(s) and the McDonald Patent would satisfy the innovative step test. Again, we would interpolate that this level of generality in PMG’s assertions is not helpful.

220    Further, it is said that the claims of the Patents purport to be to a combination, in the patent law sense, in that they combine a number of elements “which interact with each other to produce a new ... product”. It is said that a combination in this sense is to be distinguished from a mere collocation of elements. It is said that this distinction provides some assistance in the context of the expression “no substantial contribution to the working of the invention”. It is said that a requirement of the claims which has no working relationship with another feature cannot be said to contribute substantially or at all to the working of the invention. Accordingly, it is said that the requirement of “a garden hose” falls into this category. It is said to be a mere descriptor of what is subsequently defined. It is said to have no working relationship with any subsequent element. It is asserted that it is only those subsequent elements which have working interrelationships. In summary, PMG contends that the requirement of a garden hose, accordingly, makes no contribution to the working of the invention.

221    PMG also contends that, in any event, the conclusion (that the requirement the hose be a garden hose made a substantial contribution to the working of the inventions as claimed) was not open to his Honour on the evidence. It is said that Mr Hunter did not give evidence as to whether the variation made a substantial contribution to the working of the invention, and Professor Armfield’s evidence was that it did not. On the evidence there was no such contribution, as the inventions as claimed worked in substantially the same way as the McDonald hose.

222    PMG also says that his Honour summarised parts of the specifications identifying the inventions as a garden hose (reasons at [9] to [12], [17] to [25] and particularly [18] to [23]), but mischaracterised the specifications. It is said that both described the inventions generally as an expandable hose, which could work in a variety of applications and with various fluids. In particular, so it was contended:

(a)    the specifications refer generally to fluids and hoses, not to garden hoses — see particularly [0065]; and

(b)    the breadth of the invention described in each Patent is also apparent from the observations at [0066]-[0068] of each specification.

223    PMG also says that Mr Hunter conceded that the general field of the inventions was not a garden hose, but a hose for carrying fluid materials and that “the field of invention described in the patents was very wide as to … different types of hoses … different applications and industries … carrying different fluids … Both liquids and gases … And in the [L]ength [P]atent, extending even to aviation gas hoses” (T 69 lines 5 to 16).

224    Finally, PMG says that his Honour’s narrow construction of the specification affected his Honour’s analysis of innovative step, since the specification of each Patent supported the conclusion that the claimed garden hose did not vary from an oxygen hose in a way which made any substantial contribution to the working of the invention. It is asserted that the fact that the claims in each case were narrower than the specification in this regard cannot affect this analysis.

225    We would reject each of PMG’s contentions.

226    In our view, the opening words of claim 1 “a garden hose” provide a limitation on the claim scope. The monopoly claimed is only for an article that answers the description of a “garden hose”; see by analogy Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 102 per Windeyer J discussing the article claimed in that case of an electric cooking vessel, being a frying pan or the like. Further, the fact that the field of the invention or some aspects of the specification may be broader does not affect the fact that the monopoly claimed is for a garden hose.

227    PMG has observed that the Patents teach, in the body of the specification, a broader range of applications of an expandable hose. However, those observations are irrelevant — what must be considered is the invention “so far as claimed in any claim” (ss 18(1A) and 138(3)(b)). Each claim in suit is limited to “a garden hose”.

228    PMG has asserted that the words “garden hose” are a “mere descriptor”. But the features of a product that make it a “garden hose” are features which make the requisite contribution to the working of the invention as claimed, enabling it to be used for that very application. Such a proposition is, moreover, directly analogous to the apparatus considered in Vehicle Monitoring Systems which was “adapted for subterranean operation” and therefore found to possess an innovative step.

229    It seems to us that the limitation of “garden hose” in and of itself provides the innovative step:

(a)    First, it is a hose used for a different purpose and function than the McDonald hose.

(b)    Second, the various other integers of claim 1 of each of the Patents necessarily work together and in combination within that context of a garden hose.

(c)    Third, in our view Professor Armfield used the wrong test for his analysis. Moreover Mr Hunter gave evidence that he considered that a hose and gas mask combination for transporting gas had a significantly different construction and properties to a hose that is suitable for use as a garden hose.

230    In our opinion, the fact that the invention was a garden hose by definition or inherently provided the “substantial contribution to the working of the invention”. PMG’s challenge to the primary judge’s conclusion at [157] fails.

Other integers

231    PMG asserts that his Honour erred in finding the following to have made a substantial contribution to the working of the inventions as claimed:

(a)    changing the downstream coupler ([158(c)]);

(b)    removing the mask ([158(b)]);

(c)    the dimensions and materials used ([159]);

(d)    the “catching” of the outer tube on the inner tube (for both Patents) ([133]);

(e)    in relation to the First Patent, kink-resistance ([163]);

(f)    in relation to integer 1.4 of claim 1 of both Patents, the upstream coupler ([102] to [107]);

(g)    in relation to the Length Patent, the increase in elongation range ([179]); this point was conceded before us by Blue Gentian in the course of oral submissions;

(h)    in relation to the Length Patent, the hose be at least 10 feet long ([181] to [183]).

232    It is appropriate to address each of these in turn. PMG in some cases has asserted that the relevant integer was not a variation on the prior art. But in all cases it has asserted that there was no relevant “substantial contribution”.

Changing the downstream coupler (integer 1.5, claim 1 of both Patents)

233    The downstream coupler is “a second coupler secured to said second end of said inner and said outer tubes for discharging water” (claim 1, First Patent) or “a second coupler for discharging water” (claim 1, Length Patent).

234    PMG has contended that in finding that “with respect to the second coupler … the experts agree that the mask is not suited to discharging water” (reasons at [105]), the primary judge incorrectly equated the mask with the second coupler in the McDonald Patent but did not make a finding as to whether the second coupler was suitable for discharging water. It is said that such a finding was not open to the judge on the evidence, since Mr Hunter accepted that when the mask was removed, the second coupler in the McDonald Patent may be suitable for discharging water. It is said that Professor Armfield gave evidence to similar effect. Accordingly it was submitted that because the downstream coupler in the McDonald Patent was capable of discharging water and included or was coupled to a fluid flow restrictor, there was no need to change it and therefore there was no relevant variation between the McDonald Patent and the claims. Further, it was submitted that because the couplers in the claimed inventions and the McDonald Patent both worked by discharging pressurised fluid, there was no variation that could make a substantial contribution to the working of the invention.

235    In our opinion, no error has been demonstrated in his Honour’s analysis as we have set out at [146] to [150] and [191] above. Further, whilst the downstream coupler of the McDonald Patent, without the mask attached, may have been capable of discharging water, a hose with such a coupler would not be a “garden hose” since that coupler would not be capable of coupling to a garden hose attachment. Having an appropriate coupler facilitates the use of a hose as a garden hose, and therefore makes the requisite substantial contribution to the working of the invention (Professor Armfield at T 179 lines 28 to 29).

The fluid flow restrictor and the absence of a mask (integer 1.7, claim 1 of both Patents)

236    PMG submitted that the primary judge found as part of the novelty analysis that integer 1.7 (which required the presence of a flow restrictor coupled or included in the second coupler) was anticipated by the McDonald Patent on the bases both that the second coupler integrated a flow restrictor and that the mask was an additional flow restrictor (reasons at [114] and [115]). This finding was consistent with:

(a)    the expert evidence that the downstream coupler had a change in geometry, and that a change in geometry would act as a fluid flow restrictor;

(b)    the experts’ consensus that the mask was a flow restrictor; and

(c)    the fact that specifications of the Patents were not explicit about what the flow restrictor in the inventions as claimed had to be, and stated that “anything that restricts the flow of fluid within the hose can be employed”.

237    PMG therefore contended that it was not open to his Honour to find that the absence of the mask was a difference between the McDonald Patent and the inventions as claimed. It is said that even if the absence of the mask was viewed as a variation, it did not make a substantial contribution to the working of the inventions.

238    In our view, whilst the mask in the McDonald Patent may be “coupled” to the hose, there is no teaching of a hose with the mask removed. PMG has not expressly challenged the finding at [158(c)]. A hose with a mask coupled to it is not a “garden hose”, and the absence of a coupled mask facilitates the use of a hose as a garden hose (Professor Armfield at T 179 lines 24 to 27). No error has been established in his Honour’s approach.

The dimensions and materials used (claim 1 of both Patents)

239    PMG contended that neither the claims of the Patents nor the McDonald Patent disclosed the diameters of the respective hoses. It is said that there was therefore no basis for finding that the claimed inventions differed from the disclosures made in the McDonald Patent in this respect.

240    Claim 1 of the First Patent disclosed “a flexible elongated outer tube constructed from a fabric material” and “a flexible elongated inner tube … being formed of an elastic material”. Claim 1 of the Length Patent likewise disclosed “a flexible fabric material elongated outer tube” and “a flexible elastic material elongated inner tube”. PMG said that the materials disclosed in the McDonald Patent would fall within the claims, being:

(a)    “an inner, resilient, expandable tube”, which “may be formed of an elastomeric material” (McDonald Patent, column 2, lines 53 to 54 and 61 to 62); and

(b)    “an outer sheath … formed of woven or braided material”, which is “preferably formed of … flexible fabric” (McDonald Patent, column 2, lines 55 to 56 and 64 to 65).

241    On this aspect, we note that PMG has not expressly challenged the findings of the primary judge at [159]. While the claims of the Patents do not limit the diameter and materials of the hose, those variables must be such as to render the hose capable of being described as a “garden hose”. It is that which is the relevant difference between the claims and the McDonald Patent disclosure. There was no relevant disclosure in the McDonald Patent of a hose that would have a diameter and materials suitable for use as a “garden hose”, and therefore constituting a garden hose that met the requirement of the claims (Professor Armfield at T 178 lines 12 and 13; T 178 lines 31 and 32; T 180 line 28 to T 181 line 4).

242    Indeed, we note that Professor Armfield agreed that the internal diameter of a standard tube (unexpanded) for delivering oxygen would be only millimetres wide (T 177 line 30 to T 178 line 4). He also agreed that, if the tube (and therefore, the hole in the tailpiece of the downstream coupler) was only millimetres wide, it would not be suitable for use as a garden hose (T 178 lines 31 and 32). Accordingly, whilst the downstream coupler works in the same way as the claimed coupler (in that they both discharge a fluid) a difference between the McDonald Patent and the garden hose as claimed will necessarily be the internal dimensions of the downstream coupler.

243    No error has been demonstrated in his Honour’s analysis.

The “catching” of the outer tube onto the inner tube (claim 5 of both Patents)

244    PMG contends that because the hose described in the McDonald Patent used materials which would have fallen within the claims of the Patents and in the same configuration, his Honour ought to have found that the hose described in the McDonald Patent would inevitably result in the outer tube catching on the inner tube in the same manner as stated in the claims. PMG made reference to Professor Armfield’s statement in the Joint Report, lines 529 to 533, but we note that what he precisely said was that “it would be impossible to prevent the outer sheath coming in contact with the inner tube”; that does not necessarily entail catching as such.

245    PMG submitted in effect that the “catching” integer was redundant over the requirements of claim 1, but there was no evidence led to that effect, and no such finding made. Further reference was also made to the Joint Report, but to Professor Armfield’s views only (recorded at [130]). But in the Joint Report at lines 539 to 543 Mr Hunter expressed a contrary view (recorded at [131]). He was not directly cross-examined on this evidence. The primary judge correctly found at [133] that there was no disclosure of the required catching on the inner tube. No error has been demonstrated in his Honour’s analysis that we have set out at [157] to [160] and [202] to [204] above.

Kink-resistance (claim 2 of First Patent)

246    PMG has asserted that the hose disclosed in the McDonald Patent was kink-resistant, given that:

(a)    its configuration and materials were the same as that of the invention as claimed in the First Patent; and

(b)    the primary judge found that it was the configuration and materials of the invention as claimed and described in the First Patent which gave the invention its kink-resistant quality.

247    It appears also to be contended by PMG that the “kink resistance” integer of claim 2 of the First Patent is redundant over the requirement in claim 1 that the garden hose have a flexible inner tube formed of an elastic material and an outer sheath. But no evidence was led to that effect, and no such finding was made.

248    In our opinion, no error has been established in his Honour’s findings as we have set out at [155] and [195] to [197] above.

The upstream coupler (integer 1.4, claim 1 of both Patents)

249    PMG asserts that his Honour failed to consider the evidence that the upstream coupler in the claimed inventions worked by introducing pressurised fluid into the hose. The first coupler disclosed in the McDonald Patent similarly worked to connect the hose there disclosed to sources of pressurised fluid (see Mr Hunter’s evidence at T 125 lines 35 to 36).

250    PMG does not challenge the finding made by the primary judge ([103] and [104]) that the McDonald hose does not disclose a “first coupler” for connection to a water faucet (integer 1.4). The coupler of the McDonald Patent was instead a “threaded hose fitting suitable for being threaded on to a box-mounted gas fitting” (reasons at [103]).

251    Instead, PMG has submitted that the coupler works in the same way since it connects the hose to a source of pressurised fluid. But in our view that is not the correct test. Facilitating connection of a garden hose to a water faucet makes a substantial contribution to the working of the invention as claimed, being a garden hose. No error has been demonstrated in his Honour’s findings that we have set out at [146] to [148] and [191(a)] above.

The increase in elongation range (integer 1.8, claim 1 of the Length Patent)

252    Claim 1 of the Length Patent disclosed that in the expanded condition, the hose increased in length by two to six times. The McDonald hose expanded up to three times. PMG contends that applying the reverse infringement test, there was no difference between a hose that increased in length from two to six times and a hose which expanded up to three times (since the latter hose would infringe and anticipate a claim for the former). Therefore, so PMG contended, it cannot be said that there was any variation between the McDonald Patent and Claim 1 of the Length Patent in this regard.

253    In oral submissions, Blue Gentian conceded this point. Accordingly, we do not need to discuss this further.

The hose be at least 10 feet long (claim 2 of the Length Patent)

254    Finally, PMG contends that his Honour erred in finding that the hose being more than ten feet long made a substantial contribution to the working of the invention as a garden hose. It is also said that his Honour erred in finding that the hose in the McDonald Patent would not be an appropriate length for a garden hose, in light of the findings that:

(a)    McDonald did not disclose the length of the hose ([181]); and

(b)    the underlying scientific principles of fluid mechanics were the same and applied identically whether concerning the First Patent or the McDonald Patent ([122]) (that is, the original length of the hose made no difference to the working of the hose).

255    Now PMG has not challenged the finding of the primary judge ([136] to [138]) that the McDonald Patent does not disclose a hose at least 10 feet long. Indeed, the experts agreed that such a length was not disclosed. Professor Armfield’s evidence was that the hose in the McDonald Patent at most would be 1.5 m long (reasons at [183]).

256    The principal submission by PMG is that whatever the length, the hose still works in the same way. But that is the wrong test, and the primary judge correctly rejected the same (reasons at [182]). Moreover, the fact that the hose of the invention can increase to a length of at least 10 feet long contributes to its utility as a garden hose in that it allows a practically useful area of garden to be reached (claim 2 of Length Patent). Contrastingly, Professor Armfield stated that you might need four McDonald hose lengths before you had “a normal garden hose” (T 179 lines 15 to 40). He was implicitly accepting that, the longer the hose, the more useful it is.

257    There is no error demonstrated in his Honour’s approach.

(f)    Other matters

258    We would raise three other matters for completeness.

259    First, it should not be lost sight of that the differences set out and discussed above although each separately amounting to a substantial contribution also cumulatively make such a contribution.

260    Second, as was dealt with earlier on the question of construction, integers 1.7 and 1.8 refer to the importance of a fluid flow restrictor operating to wholly or partly (put this issue to one side for the moment) “increase” water pressure between the first and second coupler. Where one is dealing with an oxygen mask and relevant fluid pressure of the gas of the type disclosed by the McDonald Patent, there is no such express disclosure. Indeed for such a mask to so operate may have potential counter-intuitive consequences and safety issues.

261    Third, as we have said earlier, PMG stressed that its case on lack of innovative step was put in the alternative. If his Honour was incorrect in his construction of integer 1.8, and PMG’s construction accepted, then PMG accepted that the McDonald Patent did not disclose integer 1.8 (as construed by it) and that integer 1.8 was a substantial contribution to the working of the invention.

(g)    Summary

262    In our opinion, none of PMG’s arguments are sustainable except that conceded by Blue Gentian in relation to elongation range. There was no error in his Honour’s approach to the innovative step question apart from that one aspect, which does not in and of itself justify the setting aside of his Honour’s decision.

other matters

263    Ground 8 of PMG’s notice of appeal fails as a consequence of our conclusions on the other grounds of appeal. Ground 9 of PMG’s notice of appeal has raised a separate question concerning paragraph 3(c) of his Honour’s final orders. This ground was not the subject of any oral submission. Nevertheless it was briefly touched upon in written submissions and does not appear to have been formally abandoned. It is convenient to dispose of it shortly. His Honour made the unusual order that PMG “request the return of all Pocket Hoses and any other garden hose falling within [the relevant claims] and any promotional material for such hoses from all wholesale and retail customers to whom it, its agents or servants have supplied those hoses and material …”. PMG contended that there was “no proper basis for that order”. It was said that the material was not in its power, possession or control, that delivery up was only available where a party retains title to the impugned goods (it was said that title had passed from PMG) and that “the process of recalling the products would be damaging, costly and time consuming”. Generally, it was said that the order was “punitive and draconian, rather than necessary for the protection of [Blue Gentian’s] rights”. We would reject this ground. The appellant’s assertions about the order were not in any way developed in oral argument. The order was, self-evidently, not for delivery up and much of the appellant’s criticism failed to take this into account. We accept that, as the respondent put it, order 3(c) might be characterised as “in aid of delivery up of products that had been found to infringe”. We do not, however, need to decide this. It suffices to say that we are not persuaded by the appellant’s brief statements that his Honour relevantly erred in making the order. We were not provided with any material demonstrating that his Honour’s discretion miscarried. But our rejection of this ground should not be taken as any endorsement of this form of order for the future. We doubt that such an order would ordinarily be appropriate. We do not need to comment further.

Conclusion

264    None of PMG’s grounds of appeal have been made good. Accordingly, its appeal must be dismissed. We see no good reason why costs should not follow the event.

Associate:

Dated:    14 December 2015

REASONS FOR JUDGMENT

NICHOLAS J

265    I have had the advantage of reading the draft reasons for judgment of Kenny and Beach JJ. They have thoroughly defined and explained the issues that arise in the appeal in a way that allows me to express my own views quite briefly. In these reasons I have used the defined terms adopted by their Honours.

266    Claim 1 of the First Patent states:

1.    A garden hose including:

a flexible elongated outer tube constructed from a fabric material having a first end and a second end, an interior of said outer tube being substantially hollow;

a flexible elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow, said inner tube being formed of an elastic material;

a first coupler secured to said first end of said inner and said outer tubes for coupling to a pressurized water faucet;

a second coupler secured to said second end of said inner and said outer tubes for discharging water;

the inner and outer tubes being unsecured to each other between first and second ends thereof; and

said second coupler also coupling said hose to a fluid flow restrictor or including a fluid flow restrictor so that the fluid flow restrictor creates an increase in water pressure between said first coupler and said second coupler within said inner tube, said increase in water pressure expanding said elongated inner tube longitudinally along a length of said inner tube and laterally across a width of said inner tube thereby substantially increasing a length of said hose to an expanded condition and said hose contracting to a substantially decreased or relaxed length when there is a decrease in water pressure between said first coupler and said second coupler.

267    The integers most relevant to the construction issues are those identified in the joint judgment as integers 1.7, 1.8 and 1.9. Using the language in which these integers are expressed in claim 1 of the First Patent they are as follows:

    “said second coupler also coupling said hose to a fluid flow restrictor or including a fluid flow restrictor so that the fluid flow restrictor creates an increase in water pressure between said first coupler and said second coupler within said inner tube” (integer 1.7);

    “said increase in water pressure expanding said elongated inner tube longitudinally along a length of said inner tube and laterally across a width of said inner tube thereby substantially increasing a length of said hose to an expanded condition and” (integer 1.8);

    “said hose contracting to a substantially decreased or relaxed length when there is a decrease in water pressure between said first coupler and said second coupler” (integer 1.9);

(emphasis added).

268    The language of claim 1 of the Length Patent is slightly different, but the differences are not material for present purposes.

269    In my opinion the language of claim 1 defines a particular causal relationship between the increase in water pressure created by the presence of the fluid flow restrictor and the increase in the length of the garden hose when the hose is pressurised. If the increase in water pressure attributable to the presence of the fluid flow restrictor of the garden hose does not result in a substantial increase in length, then the garden hose will be outside the scope of claim 1 of the First Patent.

270    The language of claim 1 of the First Patent may be contrasted with the language of the consistory statement which states:

In accordance with one aspect of the present invention, therefore, there is provided a water hose including: a flexible elongated outer tube having a first end and a second end, an interior of said outer tube being substantially hollow; a flexible elongated inner tube having a first end and a second end, an interior of said inner tube being substantially hollow, said inner tube being formed of an elastic material; a first coupler secured to said first end of said inner and said outer tubes; a second coupler secured to said second end of said inner and said outer tubes; and said first coupler fluidly coupling said hose to a source of pressurized fluid, said second coupler coupling said hose to a fluid flow restrictor, whereby said fluid flow restrictor creates an increase in fluid pressure between said first coupler and said second coupler within said hose, said increase in fluid pressure expands said elongated inner tube longitudinally along a length of said inner tube and laterally across a width of said inner tube thereby increasing a length of said hose to an expanded condition and said hose being contracted to a decreased length when there is a decrease in fluid pressure between said first coupler and said second coupler.

(emphasis added).

271    The consistory statement does not use the same language of cause and effect (“thereby substantially increasing”) found in claim 1. In particular, the consistory statement does not suggest that the fluid flow restrictor must itself create an increase in water pressure that will substantially increase the length of the hose.

272    The principles of construction are well settled and many of the relevant authorities are referred to in the reasons of Kenny and Beach JJ. A patent claim is not to be given a purely literal construction derived from a meticulous verbal analysis. But as Lord Hoffman recognised in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 at [34]:

… The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. … There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

273    It might be thought that the breadth of the consistory statement supports the construction of the claim favoured by the primary judge. I do not think it does. The difference in the language of the consistory statement and claim 1 is striking. In my view, claim 1 contains an additional limitation that constitutes an essential feature of the invention claimed. As Lord Upjohn remarked in Rodi v Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 392, “some claims may on a superficial reading appear to be unnecessarily circumscribed, but those who have drafted them may have done so in light of the prior art …”. In this case the patentee has gone to considerable lengths to distinguish a great deal of relevant prior art referred to in the body of the specification. Indeed, the section of the specification in which the prior art is described refers to 25 different patent specifications relating to a wide variety of hoses.

274    It is not permissible to vary or qualify the plain and unambiguous meaning of a claim by reference to the body of the specification: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610, Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478, Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [15].

275    The plain and ordinary meaning of claim 1 requires that there be a particular relationship between the water pressure increase attributable to the presence of the fluid flow restrictor and the increase in the length of the hose – it is this increase in water pressure that must substantially increase the length of the hose. I think the language of claim 1 is in this respect clear.

276    The effect of the interpretation propounded by Blue Gentian, as accepted by the primary judge, involves re-writing integer 1.8 so that it refers to “any increase in water pressure” in place of “said increase in water pressure” thereby breaking the postulated link between the increase in water pressure referred to in integer 1.7 and the increase in water pressure referred to in integer 1.8. I do not think it is open to disregard the presence of the word “said” in integer 1.8 or to treat it as referring to an inessential feature of the invention claimed.

277    The primary judge said at [75]:

It is to be noted that the percentage contribution of the fluid flow restrictor to the overall increase in water pressure can vary, according to the type of fluid flow restrictor and degree of restriction it provides. Blue Gentian’s construction permits this whereas PMG’s more literal construction requires the measurement of the contribution to expansion made by a fluid flow restrictor, and the issue further arises as to what usage or flow conditions are present. This added complexity is not, in my opinion, necessary to be read into the integer.

278    There are two points to make here. First, I do not think this is a case where PMG is seeking to read anything into claim 1 beyond what explicitly appears there. Secondly, I think arguments about complexities or difficulties involved in determining whether or not a particular garden hose will infringe claim 1 are beside the point. The question is what the claim means. The claim is not to be construed with an eye to the relative ease or difficulty with which the patentee might go about proving infringement. Proving infringement is often a difficult business. Nor do I think the claim should be afforded a broader interpretation than is otherwise justified on the basis that it may be difficult to know whether a particular garden hose is within the scope of the claim. That is not a proper basis for favouring a broad construction of a claim.

279    In my respectful opinion, the primary judge misconstrued claim 1 of the First Patent and Claim 1 of the Length Patent. This in turn led him to conclude, incorrectly in my view, that PMG directly infringed those claims and the related dependent claims. For that reason, I would grant leave to appeal, allow the appeal in part, and set aside the first of the declarations made by the primary judge.

280    With regard to paragraph 3(c) of the primary judge’s orders, it does seem to me that an order requiring the appellant to contact its customers to request the return of products which it has previously sold and delivered, and requiring it to offer them refunds, travels well beyond the scope of relief usually granted against a person who has been found to have infringed a patent. As a matter of practical reality, the primary judge’s order requires the appellant to offer to buy back products that it had already sold in which it no longer has any right of ownership or possession.

281    In its written submission in this Court the respondent submitted that paragraph 3(c) was not an order for delivery up, but an order made in aid of an order for delivery up. However, an order requiring a party to re-purchase goods, in which he or she no longer has any legal interest, so that they may in turn be delivered up pursuant to an order for delivery up is not an order in aid of an order for delivery up. The purpose of an order for delivery up is to relieve the infringer of the “temptation” to further infringe by (for example) using or selling any infringing goods that remain in his or her possession: Mergenthaler Linotype Company v Intertype Ld (1926) 43 RPC 381 at 382. This is why orders for delivery up are often described as being in aid of the injunction restraining the respondent from infringing.

282    The order made by the primary judge in this case is in a different class, and cannot be justified by reference to the purpose that informs the exercise of the Court’s power to make orders for delivery up. In those circumstances, I am satisfied that the primary judge’s discretion has miscarried and that paragraph 3(c) of his Honour’s orders should also be set-aside.

283    So far as other issues arising in the appeal are concerned, I am in general agreement with what has been written by Kenny and Beach JJ. In particular, I agree that a case of indirect infringement based on s 117(2)(c) of the Act was made out and I agree with their Honours’ reasons for so finding. Subject to one qualification, which I mention below, I also agree with what their Honours have said in relation to the validity of the claims in suit.

284    In their reasons, Kenny and Beach JJ state at [178], with reference to s 7(4) of the Act, that “[o]ne may still have a ‘substantial contribution’ even if the overall effect be characterised … as neutral from a particular perspective.” I think there may be difficulties with this interpretation of s 7(4) of the Act though it is unnecessary to explore them in any detail in this appeal. It is sufficient to say that, in my view, it is strongly arguable that the contribution referred to in s 7(4) of the Act must be a positive contribution to the working of the invention.

Associate:

Dated:    14 December 2015