FEDERAL COURT OF AUSTRALIA

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651

THE COURT ORDERS THAT:

1.    This proceeding be adjourned for directions at 10.15 am on Friday 14 August 2015.

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

REASONS FOR JUDGMENT

INTRODUCTION

1    This is the fourth judgment in this proceeding. The various claims and cross-claims that have been made in this proceeding are set out in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (2012) 290 ALR 47 (‘Construction Judgment’). I adopt the same terms and abbreviations in these reasons for judgment. I assume a familiarity by the reader of these reasons with the earlier judgments in this proceeding, particularly the Construction Judgment.

2    This judgment concerns the validity of certain claims of the Patents in suit, and an issue relating to infringement, namely whether the allegedly infringing Infa products are within the scope of certain integers of the claims of the relevant patents in suit. The parties agreed that upon delivery of these reasons, they would consider appropriate orders, including timetabling (if necessary) for the consideration and determination of any outstanding issues.

3    Between the date of the first judgment in this proceeding and the last hearing in February 2013, there was a great deal of procedural disputation between the parties. This disputation was mainly concerned with the reception of expert evidence in relation to infringement, although some aspects impacted on the validity dispute.

4    I make this preliminary observation. The parties and the expert witnesses now have had the opportunity to address the Construction Judgment, and to apply the Court’s construction of the principal terms in the context of the claims in suit. Since the Construction Judgment the Court and the parties have moved on from the specific terms and phrases chosen by the parties for interpretation by the Court at the time of the Construction Judgment. It was hoped that by delivery of the Construction Judgment the parties could resolve their dispute, but this has not occurred. Therefore, it has become necessary to revisit the construction of each patent in context, in dealing with the allegations of infringement and invalidity.

5    As I said at [280] of the Construction Judgment:

Before construing each term or phrase in issue, the following consistencies claimed by the expert witnesses should be noted. The expert witnesses assert in the joint expert report that Issues 1, 2, 3, 4, 5, 6, 8, 9, 10, 11 and 12 represent universal points of difference between Mr Newman and Mr Hunter, which are common across the patents where these terms are used. This does not necessarily mean, however, that once a decision as to the construction of one of these “Issues” is reached, it will apply globally to each claim in suit. Each must be assessed in the context of the claim in which it appears using, if necessary, the specification of the patent to aid construction. The context must not be forgotten even though we are focussing on particular words or phrases.

6    I have already referred to some relevant principles of construction in the Construction Judgment. I stress that in further construing the claims in each patent, I have made no reference to the alleged infringing products. It is clearly impermissible to do so.

7    I make the observation that in this proceeding, Infa has taken an overly literalistic view of the terms of the claims in each patent, where such an approach is inappropriate in the context of each claim in each Patent. Whilst Britax suggested that the Court took such an approach in one instance in the Construction Judgment (in relation to the terms “ends” and “carried by”), that approach was conducted in context. I arrived at that interpretation because of the plain meaning to be given to those terms —I was not persuaded that any surprising or absurd result would arise by adopting the natural meaning of the terms “ends” or “carried by” in the context of the patents I was considering. That view stands despite an invitation by Britax to re-consider those terms.

8    Britax further submitted that Mr Hunter’s opinion as to the construction of the terms “ends” and “carried by” was correct and therefore my findings in relation to those terms in the Construction Judgment were incorrect.

9    There is no reason in principle for the Court not to correct an error made in interlocutory reasons. That said, I am not persuaded by Britax’s submissions or Mr Hunters’ evidence in relation to the construction of those terms, and I do not depart from my reasons and findings in relation to construction of those (or any other) terms in the Construction Judgment.

10    Now that the parties have had the opportunity to place before the Court submissions and evidence to deal with the principal terms referred to in the Construction Judgment in context, the most appropriate way to deal with the current dispute between the parties is to consider the various topics raised by the parties for my determination, and proceed accordingly.

11    This was what was anticipated following upon my orders and reasons in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 2) [2012] FCA 1018, delivered on 17 September 2012. I will not repeat the background to those orders and reasons, which background is set out in those reasons.

12    In that decision, the Court gave reasons in support of its orders and in furtherance of the Court’s preference to receive a Further Joint Expert Report from the two experts, Mr Hunter (for Britax) and Mr Newman (for Infa). In addition, the Court made certain statements and observations (at [26-30]) about the task then envisaged for the two expert witnesses.

13    By orders dated 17 September 2012, in summary, the Court ordered that the Construction Judgment should be provided to the expert witnesses, and that those witnesses should be asked to provide further evidence by way of a Further Joint Expert Report as to the presence or absence of the claimed patent integers in the allegedly infringing Infa products. Further, the Court specifically confined the materials to be provided to the two experts and made allowance for either expert to seek additional time, materials, information or advice if that was required.

14    In furtherance of the Court’s orders, on 20 and 21 November 2012, the expert witnesses conferred in a supervised conference in the presence of Registrar Sia Lagos and the solicitors for the parties. Thereafter, the expert witnesses provided the Court with the Further Joint Expert Report.

15    As required by the Court, the Further Joint Expert Report both applied the Court’s Construction Judgment to each of the allegedly infringing Infa products and patents in suit, and provided the Court with the experts’ position as to the presence or absence of the relevant patent integers in those Infa products. In large part, the two experts were in agreement as to the presence or absence of the relevant integers in the relevant Infa products.

16    Accordingly, the position was that after provision of the Further Joint Expert Report, the only matters relating to infringement which remained for determination by the Court were those limited matters where the persons skilled in the art (the two expert witnesses in this proceeding, Messrs Hunter and Newman) were in disagreement or had some other basis for failing to arrive at an agreed position as to the presence or absence of particular patent integers in the Infa products.

17    Following the provision of the Further Joint Expert Report, a further hearing relating to the Further Joint Expert Report was to commence on 10 December 2012. It was envisaged that the two expert witnesses would be in attendance and would provide the Court with further explanation on the limited number of infringement issues upon which there was remaining disagreement as relevant to the specific Infa products.

18    On 10 December 2012, Infa handed up to the Court and to Britax documentation by way of four new tables which were contended by Infa to contain conclusions on construction and infringement that arose from the Construction Judgment. These tables contained material which put into contest some of the experts’ agreed views and conclusions relevant to infringement as set out in the Further Joint Expert Report. Infa’s Counsel advised the Court that Infa wished to cross-examine the two experts as to the matters in the four tables, including an application to treat Mr Newman as an “unfavourable witness” under s 38 of the Evidence Act 1995 (Cth) (‘Evidence Act’).

19    Britax submitted that the Court reject this new material. It submitted that Infa was seeking to make a new case under the guise of applying the Construction Judgment. Britax also contended that it had had no time to consider the extensive material set out in the four new tables and was in no position to proceed with the hearing on that day. The Court ultimately decided that Infa should be permitted to explore the issues raised by the four tables with the two experts.

20    As a consequence, on Britax’s application, the hearing was adjourned to 13 August 2013 to enable Britax to further consider the material advanced by Infa in the four tables, and on Infa’s explanation to the Court that those four tables represented its “non-infringement” position.

21    On 5 August 2013, Infa filed and served another affidavit from Mr Newman, (‘Fifth Affidavit’). It raised a number of matters of significance in the content of the Further Joint Expert Report, including matters upon which Mr Newman had changed his mind.

22    Despite the lateness of the filing and serving of the Fifth Affidavit of Mr Newman, the hearing set down for 13 August 2013 proceeded. It was ultimately adjourned to 17 February 2014 but not before Mr Newman was cross-examined by Britax on the circumstances surrounding the coming into existence of the Fifth Affidavit of Mr Newman. Mr Newman confirmed that he had no problems with the process that led to the preparation of the Further Joint Expert Report in November 2012, nor any issues with the content of the document at the time of its preparation. Nevertheless, Mr Newman did not now adopt his position as expressed in the Further Joint Expert Report.

23    Mr Newman’s problems with the Further Joint Expert Report appeared to arise following a discussion with the lawyers for the Infa on 11 December 2012, shortly after the December 2012 adjourned hearing. In his Fifth Affidavit, Mr Newman stated that on 11 December 2012 he was asked by Chrysiliou Lawyers (the lawyers representing Infa) to explain a particular statement contained in the Supplemental Report to the Further Joint Expert Report, and that as a result he re-examined all the integer tables of the Further Joint Expert Report.

24    Mr Newman’s evidence was that he had reflected upon the process of his giving of evidence in the proceeding, including his participation in the Further Joint Expert Report, and had decided that he could not maintain his position as set out in that Report. He gave various reasons for this.

25    Mr Newman had found the whole process in participating in the Further Joint Expert Report “incredibly complicated” and “confusing”. He found it difficult in determining how to interpret the Patents on their own, but also in light of the Construction Judgment. He felt confused at the time of the November 2012 conference with Mr Hunter, and had been influenced by Mr Hunter’s superior mental agility, when at a time his own mind was “in a spin”.

26    A great deal of time has been undertaken by the Court and the parties on the production and receipt of the expert evidence, including the Further Joint Expert Report in November 2012. However, the reliance on the Fifth Affidavit of Mr Newman by Infa caused further delay. The August 2012 hearing needed to be adjourned until 17 February 2014 to allow sufficient time for the parties to consider their position and file further material.

27    On 31 October 2013, Infa (not wholly accepting Mr Newman’s new approach) filed and served tables raising points of construction and disputing the presence of the patent integers in the Infa products.

28    When the matter came on for hearing on 17 February 2014, Britax contended that the matters and issues raised by those tables should be rejected by the Court for a number of reasons. One reason was that such matters and issues had not been considered earlier, particularly in the Further Joint Expert Report. Another reason was that to the extent the matters and issues were raised by Mr Newman in his Fifth Affidavit, these should be rejected either because they were raised by him only due to influence brought to bear upon him following the adjourned hearing in December 2012, and because in any event, Mr Hunter (whose evidence was to be preferred) did not accept Mr Newman’s position.

29    I am sympathetic with some of the observations made by Britax on the way the proceedings progressed after the introduction of the Fifth Affidavit of Mr Newman. Mr Newman clearly changed his mind upon reflection after the Further Joint Expert Report, and this has significantly disrupted the flow of the proceedings. It has been a substantial cause for the extensive material now before the Court.

30    However, Mr Newman (as an expert witness) was under an obligation to inform the Court of his changed position. After all, the Court should receive such expert evidence so that the Court may be fully assisted in its task. This is not to say that Mr Newman’s position must be accepted; only that it should be considered. Further, Britax and Mr Hunter were given adequate opportunity, of which they availed themselves, to address Mr Newman’s changed position as well as Infa’s subsequently filed tables.

31    I have therefore accepted the Fifth Affidavit of Mr Newman into evidence, to consider it along with all the other expert evidence, including significantly the Further Joint Expert Report.

32    I have also (over the objection of Infa) accepted the eighth affidavit of Mr Hunter. This affidavit was in response to the earlier material of Infa and Mr Wainohu, and is in my view responsive to that material. Infa had ample opportunity to address that affidavit, and the issues raised by the experts have been adequately ventilated between them in the presence of the Court. In the way the proceeding has progressed, it would be unfair to Britax (and Mr Hunter) not to consider his response to matters raised by Infa’s evidence in his eighth affidavit.

33    Both parties proceeded in the February 2014 hearing on the basis of the terms as construed in my Construction Judgment, as is apparent from the approach of the experts in dealing with the issues formulated for and considered by them at that hearing, and the submissions themselves. No party was disadvantaged by this approach. Each had an opportunity through their experts and legal representatives to address the construction of the integers in the context of each claim and each patent in suit and issues of invalidity.

34    Nevertheless, the above process and Mr Newman’s own self-confessed confusion, does impact on the confidence the Court can repose in Mr Newman’s evidence. I do not find that Infa’s legal representatives did anything improper. I also do not accept Britax’s submission that Mr Newman can no longer be regarded as an independent expert. Mr Newman remained independent, but was simply out of his depth in the task he was asked to perform. Mr Newman’s experience was primarily as a fitter of child safety seat products. Whilst he was a qualified motor vehicle mechanic, he was not an engineer. He has not been involved in the design, testing or manufacture of child restraint products. During the course of this proceeding, Mr Newman has had general difficulty in dealing with specific issues and has changed his views or admitted error. In contrast, Mr Hunter’s evidence involved a practical, common sense approach to the working of the relevant claims of the patents in suit, and, in the main, I have found it persuasive.

35    These reasons have taken some time to be delivered, and despite the passage the time, I have not deviated from the initial view I took as to the correct approach to adopt in this proceeding. That approach was to consider the evidence of Mr Newman including his Fifth Affidavit, but to take into account the various matters that I raise in these reasons for treating his evidence with caution. Much of the evidence and submissions before me has been in written form, and transcript has been available. In formulating these reasons I have re-visited that documentation. Neither party suggested that Mr Hunter or Mr Newman were not trying to assist the Court to the best of their ability. The principal issue with Mr Newman relates to his capacity to properly understand the patents in suit, or articulate, his position. It was in this sense that Britax submitted Mr Newman’s evidence was not credible, putting aside the issue of independence. I now have the competing expert views as to construction, infringement and validity. I must make an assessment based upon analysis of the evidence (both expert and lay), the documentary material in evidence and the submissions.

36    The position that the Court now needs to consider is as follows.

37    Subject to the two substantive reservations (as to meaning of “ends” and “carried by”), Britax otherwise accepts the agreed position relating to infringement that Mr Newman and Mr Hunter arrived at in the Further Joint Expert Report.

38    Noting that Mr Hunter has reservations with some of the findings of the Court in the Construction Judgment in relation to the interpretation of certain terms (to which I will return), and insofar as the Court may now review its earlier construction of such terms, Britax adopts the position of Mr Hunter but accepts that Mr Hunter is disagreeing with certain of the Court’s findings in the Construction Judgment (namely as to the meaning of “ends” and “carried by”).

39    As I have indicated, shortly before the August 2013 hearing, Mr Newman in his Fifth Affidavit resiled from many of the opinions he expressed in the Further Joint Expert Report. Further, Infa did not accept all the views of Mr Newman.

40    In light of this position of the parties, and in preparation for the hearing adjourned to February 2014, by orders of the Court dated 16 August 2013 the parties were required to prepare “Green and Red” tables specifying, by reference to the “Newman Tables” annexed to the Fifth Affidavit of Mr Newman and in relation to construction and infringement, what matters in the Newman Tables Infa adopted and what additional matters it relied upon (each marked green), and what matters relied upon by Infa were agreed by Britax, and if not why not, (such marked in red). Infa provided its tables, and Britax provided its response.

41    Britax adopted the report of the expert Mr Hunter who set out his views on the Infa Green Tables by his own Red Table analysis supported by his supporting narrative set out in three Addendums, each of which are annexed to the affidavit of Mr Gregory R Tye sworn 17 December 2013 and marked respectively “GRT-4”, “GRT-5”, and “GRT-6”, and each of which were referred to respectively as “Hunter Addendum-1”, “Hunter Addendum -2”, and “Hunter Addendum -3”.

42    I have not reproduced the tables referred to above, as they were of more assistance to the parties and the Court in focussing attention upon the context of the issues raised.

43    The matters canvassed by Britax and Mr Hunter insofar as they relate to infringement can be considered against the diagrammatic depictions of the various Infa product versions illustrated in Exhibit A7 (which is ‘Annexure A’ to these reasons). Some of the actual Infa products were in evidence.

INFRINGEMENT

44    I will now deal with the issues before the Court concerning infringement. For the purposes of these reasons, my consideration of infringement is limited to the question of whether the allegedly infringing products fall within the scope of the relevant patent claims. To that end, the parties agreed that the issues in contention in this regard were confined to 22 discrete “topics”, and a question as to whether the Infa products fall within the omnibus claims present in the patents (which I will refer to as “topic 23”). Those topics are titled by reference to certain issues or terms as construed in my Construction Judgment. I address each of the topics in turn, and in doing so, I make reference to the Infa products which are alleged to have been infringed in relation to that topic (‘Infa Products’), the diagrams of which are contained in Annexure A. The various Infa Products are identified by their product code and version (eg “CS53” or “CS53v4”), and the “Anchorage-Connection Arrangement” version (or ‘Version’) used with that product, as depicted in Annexure A.

Topic 1 — “carried by” or “with respect to”

45    In my Construction Judgment, I distinguished between the terms “carried by”, which I found refers to a direct carrying, and “with respect to”, which may include indirect carrying: see Construction Judgment at [314] and [377]. In the context of the relevant claims, those terms refer to the tether strap which transports, moves, bears or carries the “connection strap” or “means”, and suggest an interaction between the two.

46    I construed the term “connection means” in my Construction Judgment to be a broad term not limited to a buckle (eg at [318]) and which could therefore include other components, such as a latching hook.

47    Infa submitted that the word “by” in “carried by” required the tether strap to be an “active” carrier, and the carried connection strap to be a “passive” component. It submitted that this was not so in the Infa Products, by reference to the fact that if the tether strap were to be severed, the connection strap would remain attached to (or “carried by”) the anchorage point, which would demonstrate that the tether strap was a passive component which was in fact “carried by” the connection strap.

48    However, the term “carried by” must be understood in the context of the relevant patent. For example, claim 1 of the First Patent describes “a connection strap carried by the tether strap and secured at a first end with respect to the anchorage point and having a connection means at the other end”. The object is clearly the (carried) connection strap, which is then secured. Whether the outcome of that anchoring or “securing” shifts or reverses the load bearing dynamics, so that the connection strap bears the load of the tether strap, is not relevant for the purposes of the patent.

49    This view accords with the views of both skilled addressees, Messers Hunter and Newman. As Mr Hunter opined, the unsecured connection strap is clearly carried, in the sense that its load is borne, by the tether strap. In the Further Joint Expert Report, the experts agreed (and I accept) that all Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5, contain this feature, and therefore fell within the scope of the relevant “carried by” integers in claim 1 of the First, Third, Fifth and Sixth Patents, and claim 5 of the First, Third and Sixth Patents.

Topic 2 —“connection strap” or “connection plate”

50    In my Construction Judgment, I held that the term “connection strap” was broad enough to include straps of different materials (including metal or flexible webbing) in different contexts: see [311]. At [307] I detailed Mr Hunter’s accepted approach which gave the term “strap” a “broad, functional and contextual interpretation” and explained a connection strap to be an “interconnecting device which allows the harness and tether strap to be connected to the vehicle anchorage point”.

51    Infa contended that the U-shaped metal connecting component present in Infa Product Anchorage-Connection Arrangement versions 3, 4 and 5 is not a “strap”, but rather a “plate”. However, this distinction is unnecessary for the purposes of construing the Patent terms. As I stated in my Construction Judgment at [311], a “connection strap” may be metal. That is so in the context of a child safety seat, and regardless of whether it is characterised as a “plate”.

52    In the Further Joint Expert Report, both Messers Newman and Hunter agreed on this basis that the “connection strap” feature was present in all Infa Products which have any of the Anchorage-Connection Arrangement versions. All Infa Products therefore fall within the scope of the relevant “connection strap” integers in the following claims:

(a)    claim 1 of the First and Sixth Patents;

(b)    claim 2 of the First Patent;

(c)    claim 3 of the Second and Third Patents;

(d)    claim 4 of the Third Patent; and

(e)    claim 5 of the First Patent.

Topic 3 — connection strap (or means) “attached” to the tether strap (or strap) “adjacent the intermediate point”

53    In my Construction Judgment at [319] I held that that term “attached” did not require “fixation”, and in its context could refer to the connection strap being slidably attached to the relevant strap. I also construed the “intermediate point” by reference to my construction of the term “ends”: at [302]. As I mentioned earlier, Mr Hunter and Britax took issue with my construction of the term “ends”, which I did not accept.

54    In the Further Joint Expert Report, Messrs Newman and Hunter agreed that the connection strap or means in all Infa Products was “slidably attached”. Nevertheless, they both concluded that integers 1.2.2 and 3.2.2 were not present in any of the Infa Products. This conclusion was drawn solely on the basis that the connection strap (or means) was not attached to the tether strap adjacent the intermediate point, as a consequence of their construction of the term “ends”, which was at odds with my finding in the Construction Judgment.

55    Infa submitted that a slidable attachment takes it out of the scope of the relevant claim, since in the unanchored child safety seat, the slidable connection could result in the connection strap sliding away from the intermediate point.

56    However, the reference to “intermediate point” in claim 2 in each of the First and Third Patents is dependent on the respective claim 1 in those patents, and relates to the term “point intermediate its ends” in that claim. In claim 1 of both patents, the attachment adjacent the intermediate point is described as occurring when the tether strap is in its anchored state: “secured with respect to the anchorage point at a point intermediate its ends” (emphasis added).

57    I agree with Mr Hunter’s observation that “[o]nce these seats are installed, the connection strap is attached adjacent the intermediate point notwithstanding the slidable connection of the connection strap with respect to the tether strap”.

58    I therefore find in applying the terms as construed in the Construction Judgment and the evidence of the experts that all Infa Products fall within the scope of those integers in claim 2 of the First and Third Patents.

Topic 4 — “wherein the connection strap is attached to the tether strap”

59    Infa contended that the presence of a “latching hook” in the Infa Products which have the Anchorage-Connection Arrangement versions 1b and 3, means that those products do not fall within the scope of claim 2 of the First Patent. This is because the intermediate component (ie the latching hook) prevents the required “attachment” of the connection and tether straps.

60    However, there is no requirement in the claims that there must be a direct attachment. This is a different matter from the context of “carried by” as interpreted by the Court. An attachment can involve an intermediate component, as is in fact depicted in many of the preferred embodiments in the First Patent. In that patent, the attachment of the connection and tether straps is depicted (in figures 4-6) with an intermediate component.

61    As I mentioned in relation to Topic 3, the experts did not find that the Infa Products fell within the scope of integer 1.2.2 on the basis of a construction of the term “ends” which was at odds with the Construction Judgment. Importantly, neither Mr Newman nor Mr Hunter expressed any issue with the latching hook found in some of the Infa Products as taking those products beyond the scope of integer 1.2.2.

62    For those reasons I am not persuaded by Infa’s submission in relation to this topic.

Topic 5 — “secured” (with respect) to a “head end of the back rest portion”

63    In my Construction Judgment I determined that the term “secured” does not require fixation, and allows for any fastening, whether slidable or not as long as “the fastening is firm, so that it will not tear or break when used for the purpose for which it was developed”: at [299]. I adopted this construction for the Second Patent (at [333]), Third Patent (at [340]), Fourth Patent (at [356]), Fifth Patent (at [361]) and Seventh Patent (at [383]).

64    At [328] of the Construction Judgment, I found that the meaning of the term “head end of the backrest potion” depended on whether the headrest was adjustable or not. In the former, the term referred to the upper part of the back rest underneath the headrest, and in the latter, it referred to the upper part of the back rest.

65    In the Further Joint Expert Report, Messrs Newman and Hunter agreed that in all Infa Products the tether strap or tethering means was “secured to”, or “secured with respect to”, the head end of the back rest portion as claimed. Mr Newman’s position in this respect did not change in his Fifth Affidavit.

66    Infa submitted that the experts’ views in this regard narrowly considered the “secured” feature in the context of an installed seat experiencing sudden deceleration (such as a collision scenario) in which the tether straps would tighten. It submitted that this context represented a “momentary and transitory state”, and that in normal use the tether straps would not be “secured”.

67    However, I do not understand the experts to consider the term so narrowly. Once installed, the pressure of the taut tether straps on the safety seat satisfies the “secured” requirement. Considering this integer in the context of an uninstalled safety seat with the tether straps falling loosely, as Infa contended, is to fail to take a common sense approach to the patent claims, or to understand its terms in the context of the relevant integers. It is important to focus upon the word “secured” which connotes an installed state in this context.

68    I therefore do not accept that the tether strap or tethering means is not “secured” to the head end of the back rest portion, with the consequence that all Infa Products fall within the scope of the relevant integers of the following claims:

(a)    claim 1 of the Second, Fourth and Fifth Patents;

(b)    claim 2 of the Seventh Patent; and

(c)    claim 5 of the First and Third Patents.

Topic 6 —“adapted to”

69    The term “adapted to” means “being capable of”. This is the ordinary meaning of the term and was as agreed between the experts.

70    The contexts in which the phrase is used relates to “a connection means arrangement adapted to co-operate with a tether strap” (integer 8.1.2), and a tether strap or child safety harness being “adapted to”:

(a)    be secured to an anchorage point on a motor vehicle (see, eg, integer 1.5.7);

(b)    tether the child safety seat (integer 8.1.2); and

(c)    be used with a child safety seat (integer 9.1.2).

71    Infa contended that the relevant item (eg the tether strap) must itself be capable of the relevant function (eg being secured to an anchorage point) without any intermediate components. Infa also relied in this regard on my Construction Judgment where I held (at [291]) that “the tether strap includes the material which makes up the strap itself and nothing more”.

72    However, context is essential. In my view, the relevant contexts outlined above allow for the use of intermediary components which facilitate the necessary “adaption”, such as latching hooks. For example, as Mr Hunter pointed out, in the context of a tether strap adapted to be secured to an anchorage point, figure 5 of the First Patent, which appears in all of the innovation patents in suit (‘Innovation Patents’), depicts intermediate componentry.

73    Further, both experts agreed in the Further Joint Expert Report (and I accept) that all Infa Products fell within the scope of this integer in the relevant claims.

Topic 7 — “secured to” and direct connection

74    In the Further Joint Expert Report, both experts agreed that the “secured” and “secured to” features were present in all Infa Products. This position was not changed in Mr Newman’s Fifth Affidavit.

75    In line with its argument in relation to topic 6, Infa submitted that the term “secured to” requires that there be a direct connection, so that, for example, the phrase “tether strap adapted to be secured to an anchorage point” (see, eg, integer 1.5.7) negates the presence of intermediate componentry. For the reasons outlined above, I agree with the experts’ conclusion and do not find that the term means that the tether strap (for example) must be directly connected to the vehicle anchorage location without intermediate components. I further reiterate my finding in the Construction Judgment that the term “secured” simply requires firm “fastening”, the nature of which is unrestricted by that term: see [299], [333], [340], [356], [361] and [383].

76    All of the relevant Infa Products are therefore within the scope of the integers containing the terms “secured” or “secured to” in the relevant claims.

Topic 8 — harness “loops” at the “ends”

77    In the Construction Judgment (at [300]) I found that the “ends” of the tether strap are to be understood as the physical termination points of the tether strap. Some integers refer to the “strap having at least one loop at each end” (see, eg, integers 2.2.2 and 4.2.2). The depiction of such an arrangement in figures 2 and 3 of the Innovation Patents is consistent with my finding.

78    However, Infa submitted that figure 1 of each of the Innovation Patents reveals that one of the loops is not formed at the “termination point” of the strap, and instead, there is some length of strap extending back behind the padding after forming a loop. It therefore characterised this arrangement as a single strap with a loop at only one “end”.

79    As I have mentioned, the terms of the integers must be understood in a way in which makes practical sense in their context. In the particular context of the relationship between the harness and the seat belt, the reference to “ends” sensibly means the lower looped ends of the pair of shoulder straps through which the vehicle seat belt is passed. Whether or not that looped end is formed at the physical termination point of the strap, is of no consequence in this context. I agree with Mr Hunter’s view in this regard that a skilled addressee would readily understand this.

80    I note that both experts in the Further Joint Expert Report relevantly agreed that an “H” or “Protecta” harness (ie a harness which includes a pair of shoulder straps that are each connected at their lower end to the seat belt by respective loops) would fall within the scope of the relevant integers of the relevant claims. Accordingly, any Infa Product when used with such a harness would fall within the scope of those integers.

Topic 9 — “connected/attached to” and direct connection

81    In line with its argument in relation to topics 6 and 7, Infa submitted that the terms “connected to” and “attached to” require a direct connection without intermediate components. It therefore viewed all Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5 (which contain components interposed between the tether strap and anchorage point), as not falling within the scope of those terms.

82    Infa’s reading in this way is at odds with the findings in my Construction Judgment, and a practically sensible reading of the patents in context. There is no basis in the patent specifications to limit such terms in the manner proposed by Infa. For the reasons outlined above, I agree with the experts’ conclusion and do not find that the terms “connected to” or “attached to” require a direct connection to the vehicle anchorage location without intermediate components.

83    In the Further Joint Expert Report, Mr Newman and Mr Hunter agreed that all Infa Products incorporated components that were relevantly attached or connected as expressed in the above terms of the patents, and therefore fell within the scope of the relevant integers of claim 3 of the Second and Fourth Patent.

Topic 10 — “to which”

84    Claim 3 of the Second and Fourth Patents refers to a connection strap or means “attached to and extending from the tether strap latching hook to which the upper ends of said shoulder straps are attached”. Infa submitted that the words “to which” are referable to the “tether strap latching hook”, and not the “connection strap [or means]”, so that they require the latching hook to be directly attached to the shoulder straps. It therefore contended that the Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5, where the connection strap (or plate) is interposed between the upper ends of the shoulder strap and the latching hook are therefore not captured by those integers.

85    I do not consider there to be ambiguity in those integers, when read in the appropriate context. The syntax of the claim dictates that the correct antecedence for the integer “... to which the upper ends of said shoulder straps are attached” is the relevantly preceding “connection strap” or “connection means”. This reading is reinforced by figures 2, 4, 5 and 6 in both patents and by reference to

(a)    the specification of the Second Patent which states at 8.8-10 in relation to figures 3 to 5 that:

The harness 20 is secured with respect to the vehicle through latching hook connector 26, connection strap 44, an aperture in buckle 45 and latching hook connector 43.

(Emphasis added)

(b)    the specification of the Fourth Patent which states at 6.27-9 in relation to figures 3 to 5 that:

The harness 20 is secured with respect to the vehicle through latching hook connector 26, connection means comprising a connection strap 44, an aperture in buckle 45 and latching hook connector 43.

(Emphasis added.)

86    Further, in the Further Joint Expert Report, the experts agreed (and I accept) that all Infa Products fell within the scope of integers 2.3.5 and 4.3.5 of claim 3 of the Second and Fourth Patent.

Topic 11 — “harness extends from the backrest portion”

87    Claim 1 of the Fourth and Seventh Patents contains the words “wherein said harness [or ‘child safety harness’] extends from the backrest portion”: integers 4.1.11 and 7.1.11.

88    Infa contended that some Infa Products require the harness to pass over or around the headrest, not the backrest, and therefore would not fall within the scope of those integers.

89    In relation to backrests and headrests, the Infa Products contain two broad types: those without a headrest (such as CS53, CS55 and CS57) and those with a headrest (CS54 and CS56).

90    I pause to note that consistent with my findings in my Construction Judgment (at [328]), CS53, which does not have an adjustable headrest section, is not considered, for the purposes of construction of the patents, to have a separate headrest. Rather, on my construction, its non-adjustable headrest would constitute the “head end of the back rest”.

91    On all Infa Products without a headrest, the harness necessarily “extends from the backrest portion”. On those Infa Products which contain a headrest, the tethering arrangements in Annexure A clearly depict the harness extending from the backrest portion and not from the adjustable headrest.

92    Infa also submitted that integers 4.1.11 and 7.1.11 require a “positional” arrangement wherein the harness extends from the physical backrest (via, for example, apertures in the backrest itself). This was contrasted with a “directional” arrangement, whereby the harness straps simply pass the back rest (via, for example, grooves in the perimeter of the seat).

93    Although figures 3, 4 and 5 of the patents depict the harness passing through apertures in the backrest, the specification of the Fourth Patent, in relation to figures 3-5 states (at 6.21-4) that:

Although multiple pairs of apertures are shown in this preferred embodiment, it would also be possible to have the harness passed through a single aperture in the head end of the backrest portion or around grooves in the perimeter of the backrest portion.

(Emphasis added.)

94    Almost identical wording to the above paragraph is contained in the specification of the Seventh Patent: at 7.19-22. It is therefore clear from the context of those integers that the relevant patents contemplate either a “positional” or “directional” arrangement of the harness in relation to the backrest.

95    The experts agreed in the Further Joint Expert Report that all Infa Products fell within the scope of integers 4.1.11 and 7.1.11 of claim 1 of the Fourth and Seventh Patents respectively.

96    All of the relevant Infa Products are within the scope of the relevant integers for the relevant claims.

Topic 12 — “slidably locate”

97    Claim 3 of the Third Patent refers to “a latching hook connector...attached with respect to the [tether] strap by a strap opening in the latching hook connector that allows the latching hook connector to slidably locate on the strap”. Claim 2 of the Fifth Patent refers to a “child safety seat…wherein the connection means slidably locates on the tether strap”.

98    Infa submitted that Infa Products which have the Anchorage-Connection Arrangement versions 1, 4 and 5 are not within integer 3.3.3. Infa focussed on the directness of the latching hook connector being slidably located on the tether strap. However, there is no requirement in the Third Patent that the latching hook connector must directly slidably locate on the tether strap. In those Versions, the latching hook connector is indirectly slidably located on the tether strap via the loop or aperture in the connection strap or plate. Versions 1, 4 and 5 therefore fall within the terms of integer 3.3.3, as observed by Mr Hunter.

99    Infa also contended that Infa Products which have the Anchorage-Connection Arrangement versions 1b and 3 are not within integer 5.2.2, since they do not include the incorporated antecedent integer 5.1.7 —“a connection means carried by the tether strap”. I have already addressed the issue of “carried by”.

100    Further, as I mentioned in topic 1, the term “connection means” is not the same as “connection strap”. The former is a broader term —“any item or thing which would perform the function of connection” and includes the latching hooks in the Fifth Patent: see Construction Judgment at [316-8] and [366]. The specification of the Fifth Patent (at 6.21-3) describes the “connection means” as “comprising a connection strap 44, an aperture in buckle 45 and latching hook connector 43”.

101    Both Infa’s Anchorage-Connection Arrangement versions 1b and 3 have the above described “connection means”. Both include a tether strap which is slidably located through an aperture in the latching hook connector. Conversely, the latching hook connector (and thereby the “connection means”) is slidably located on the tether strap. That arrangement falls within integer 5.2.2.

102    In the Further Joint Expert Report, Messrs Newman and Hunter agreed that the latching hook connector is slidably located on the tether strap for Infa Anchorage-Connection Arrangement versions 1, 4 and 5, and that the connection means is slidably located on the tether strap for Infa’s Anchorage-Connection Arrangement versions 1b and 3.

103    For the above reasons, all of the relevant Infa Products fall within the scope of the relevant integers of claims 3 and 2 of the Third and Fifth Patents respectively.

Topic 13 — “harness comprising…a pair of shoulder straps”

104    Infa appears to contend that the requirement in claim 1 of each of the Fourth and Seventh Patents that the harness comprises “a pair of shoulder straps” (emphasis added) is not present in a Protecta Harness. It contended that a Protecta Harness, which its customers are expected to use with its Infa Products, is properly characterised as a single shoulder strap with a loop to allow for connection with a seatbelt.

105    Figures 1 to 4 of the Fourth and Seventh Patents depict a Protecta Harness. I agree with Mr Hunter that it is clear from those figures that such a harness has two shoulder straps each ending in a loop through which the seat belt is connected. I also agree with both experts’ conclusion in the Further Joint Expert Report that a Protecta Harness is so characterised, and falls within the relevant integers 4.1.9 and 7.1.9 in claim 1 of the Fourth and Seventh Patents.

106    Infa submitted that the pair of shoulder straps are not relevantly “connected at their lower end to said vehicle seat belt” :integers 4.1.10 and 7.1.10.

107    The reference to “lower end” must be read in context. In the context of the Fourth and Seventh Patent specifications, the claimed reference to “lower end” means the lower looped end of the pair of shoulder straps depicted and described, through which the vehicle seat belt is passed.

108    The Fourth and Seventh Patents depict the Protecta harness in figure 1, and state that “the lower end of each shoulder strap 21 is provided with a loop 24 to receive a vehicle seat belt”: see 5.22-4 of the Fourth Patent and 6.17-9 of the Seventh Patent. Therefore, notwithstanding the presence of an adjuster, the ends of the shoulder straps in the Innovation Patents are described and depicted as having a loop as in the Infa Products when used with a Protecta harness.

109    All of the Infa Products are within the scope of the relevant integers for the relevant claims.

Topic 14 — “further includes”

110    Claim 3 of the Fifth Patent refers to a connection means which “further includes at the first end a latching hook connector” (emphasis added). As I found in the Construction Judgment (at [366]) and reiterated above in relation to topic 12, the connection means of the Fifth Patent includes the latching hook. On the basis of that construction, Infa contended that the qualifying words “further includes” of claim 3, as they relate to the “connection means” of claim 1, must require an additional “latching hook connector”, which additional latching hook connector is not present in the Infa Products.

111    It is to be recalled that in accordance with the Construction Judgment (at [317] and [366]) “connection means” is “any item or thing which would perform the function of connection”. In the context of the claims of the Fifth Patent, the words “further includes” is understood to limit the connection means to one in which a latching hook connector (and not any other connector) is used for securing the tether strap to the anchorage point. In my view, based upon Mr Hunter’s evidence it would be readily understood by the skilled addressee applying a practical sensibility to the patent, that integer 5.3.2 is not calling for multiple latching hook connectors in the one “connection means”.

112    In the Further Joint Expert Report, both experts agreed that all Infa Products utilised a latching hook as part of its connection means to secure the tether strap to the anchorage point. All of the relevant Infa Products are therefore within the scope of integer 5.3.2.

Topic 15 — “for connection”

113    Integer 6.2.1 (in claim 2 of the Sixth Patent) refers to “a tethering means for a child safety seat for connection to an anchorage point in a motor vehicle” (emphasis added). Infa contended that the words “for connection” in that context imply that the “tethering means” does not itself include the components necessary “for connection”. This argument is consistent with its submission that “connection” must be direct, and therefore, while it accepted that the tethering means was securable via the latching hook of the connection means, such a connection was indirect, which, it submitted, was not claimed in the patents.

114    I reiterate my earlier comments about “connection” in topics 6, 7 and 9. The term “tethering means” is broad and can include more than the tether strap itself: see Construction Judgment at [380]. I add that integer 6.2.1 contains no such requirement or limitation on the “tethering means” as contended for by Infa. The words “for connection” in that integer simply qualify the antecedent “tethering means” as having (at least) the capability of “connection to an anchorage point on a motor vehicle”.

115    In the Further Joint Expert Report, both experts agreed that claim 2 of the Sixth Patent was infringed for all Infa Products. Mr Newman’s position in this regard was unchanged in his Fifth Affidavit.

116    On the basis of Mr Hunter’s evidence, I view the purpose (and certainly the capability) of the tethering means in all Infa Products to be for connection to an anchorage point in a motor vehicle, precisely as claimed in the patent. All of the relevant Infa Products are therefore within the scope of integer 6.2.1.

Topic 16 — “tethering means for tethering the backrest portion of the child safety seat”

117    Integer 7.3.7 (in claim 3 of the Seventh Patent) refers to “a connection means which is adapted to be secured at one end to the anchorage point”. Infa raised three arguments in relation to whether the Infa Products fall within the scope of this integer.

118    First, in his Fifth Affidavit, Mr Newman deposed in relation to Infa Products which have the Anchorage-Connection Arrangement version 1, that while those products contain a connection means (which he identified, in this context, as a particular buckle), it (ie the buckle itself) is not “adapted to be secured at one end to the anchorage point”.

119    Secondly, Infa submitted that in Versions 1b and 3, the tether strap passes through an opening in the latching hook connector and are therefore not relevantly “secured…to” via a direct connection as contended in topic 7.

120    Thirdly, Infa highlighted that integer 7.3.7 is preceded by the words: “a tethering means for tethering the backrest portion of the child safety seat and adapted to be secured at one end to the anchorage point”. It therefore contended that in the context of the claim, integer 7.3.7 requires an additional separate connection means, which is not present in Versions 4 and 5.

121    I will deal with each of these arguments in turn.

Version 1

122    In the Construction Judgment I found that the term “connection means” as used in the Seventh Patent is not limited to a buckle (at [318] and [384]) and can include multiple components, including for example a latching hook, connecting strap and buckle.

123    A “connection means” comprising such components is adapted to be secured at one end to the anchorage point as required by the integer of the claim, and Mr Newman was not correct to limit the “connection means” of integer 7.3.7 to a particular buckle.

Versions 1b and 3

124    On the basis of my construction of the term “connection means”, the latching hook present in Versions 1b and 3 could be considered a part of the “connection means”, in which case the entire connection means will be directly “secured at one end to the anchorage point”, as illustrated by Mr Hunter.

125    However, direct securement is not required, and I do not read the integer as being so limited. In this regard, I reiterate my comments above in relation to topic 7. The latching hook present in Versions 1b and 3 may be considered part of intermediate componentry which ensures the required securement.

Versions 4 and 5

126    The specification does not limit or preclude the sharing of components between the “tethering means” and “connection means”: see Construction Judgment at [145]. Further, the Seventh Patent specification (at 4.23-5) states that:

[t]he connecting component which is connected to the vehicle anchorage point could then be shared by both the tether strap and child safety harness. There are, of course, other ways in which a component may be shared.

127    Accordingly, a component can simultaneously constitute part of the “tethering means”, and the “connection means”. Claim 3 of the Seventh Patent includes within its scope arrangements such as Versions 4 and 5 wherein the latching hook may be characterised as “shared” between the “tethering means” and the “connection means”. In those Versions, the “connection means” is therefore “adapted to be secured at one end to the anchorage point”, as required.

128    All of the relevant Infa Products are therefore within the scope of integer 7.3.7.

Topic 17 —“second aperture”

129    Integer 7.3.9 refers to a connection means “having a second aperture through which the tethering means locates”. Infa contended on the basis of Mr Newman’s evidence that Infa Product Anchorage-Connection Arrangement version 1 (and presumably 1b) lacks the relevant second aperture.

130    Mr Newman’s view was based on Mr Newman’s identification of the “connection means” as a particular buckle. For reasons given in relation to topic 16, this is not correct.

131    Further, as I noted in topic 16 and in the Construction Judgment (see [384]), the “connection means” may have multiple components, including the connection strap. The connection strap in Version 1 (and 1b) contains an opening through which the tether strap passes. Therefore the “connecting means” of Version 1 (and 1b) contains the required “second aperture through which the tethering means locates”.

132    In the Further Joint Expert Report, Mr Newman and Mr Hunter agreed that claim 3 of the Seventh Patent was infringed for all Infa Products. All of the relevant Infa Products are within the scope of integer 7.3.9.

Topic 18 —“substantially as illustrated” (the “flat plate” as a “major improvement”)

133    Claims 2 and 3 of the Eighth Patent refer to an apparatus or child safety seat and harness “substantially as…illustrated in…figures [4 to 9]”. Claims 4 and 5 of that Patent similarly refer to “substantially as…illustrated in the accompanying drawings”.

134    Infa submitted that figures 6 and 7 of the Eighth Patent are substantially different to the others, in that they do not contain the flexible strap (44) and buckle (45) arrangement. Rather, figures 6 and 7 depict a “flat plate” (48) which contains its own latching hook and an aperture for the tether strap, and to which a harness latching hook is or can be connected. Mr Newman viewed the use of the “flat plate” as a “major improvement” in that the more rigid connection prevents the connection aperture for the harness from falling away or becoming difficult to locate. This was not accepted by Mr Hunter. However, as Britax correctly submitted, a difference in the figures is irrelevant for the purposes of determining whether or not a particular article infringes one or other of the figures referred to in the omnibus claim

135    Infa further contended that figures 4 and 5 depict connection points (41) and (42) which are not present in those Infa Products in which the tether strap is connected to the seat through intermediary webbing loops.

136    Both of these issues concern the omnibus claims of the Eighth Patent, and are relevant to the omnibus claims issue in topic 23, to which I will return. However, I will consider the specific issue raised in relation to this topic here.

137    Britax contended that in any event, the Infa approach as to the infringement of the Eighth Patent is flawed as it ignores the embodiment depicted in figure 6 as described in the Eighth Patent. I accept this submission. Figure 6 of the Eighth Patent contemplates a metal connecting component that connects the harness and tether strap to the vehicle anchorage point. Therefore, as contended by Britax, such a single metal plate is included within the scope of figure 6 of the Eighth Patent.

138    I add that Infa Product Anchorage-Connection Arrangement versions 3 to 5 contain such a flat plate which is “substantially as illustrated” in figures 6 and 7, whilst Versions 1 and 1b contain an arrangement “substantially as illustrated” in figures 4, 5, 8 and 9. All Infa Products therefore fall within the omnibus claims of the Eighth Patent.

139    In relation to the connection points, in my view, the purpose of the embodiment of the connection points in figures 4 and 5, is to depict the securing of the backrest via two mutually spaced connection points. I agree with Mr Hunter that all Infa Products involve “substantially” the same arrangement, regardless of whether they utilise loops or grooves on the head end of the back rest. Mr Hunter was of the view, as a person skilled in the art, that any variation in the Infa Products was minor.

140    All Infa Products therefore fall within the omnibus claims of the Eighth Patent.

Topic 19 — “anchorage locations” (Tenth Patent)

141    Claims 1 and 19 of the Tenth Patent refer to the “first and second mutually spaced anchorage locations on said head end of said backrest” and describe a tether strap “with one end extending from said first anchorage location…to said second anchorage location”.

142    Infa submitted that there are more than two “anchorage locations” on many of the Infa Products, and therefore those products do not fall within this claim.

143    Infa’s submission is at odds with my Construction Judgment where I found that the meaning of “anchorage locations” did not preclude circumstances where there were more than two anchorage locations: at [402]. A product having more than two anchorage locations does not escape the scope of these claims.

144    In the words of the Construction Judgment at [401] the term “anchorage location” only requires “a location or position at which there is a contrivance (that is, a design feature) which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration”. Such a “contrivance” need not be an aperture, as depicted in figures 4 and 5. It can, for example, include a feature in which the tether strap “sits” in grooves in the perimeter of the seat (as in Version 5 on CS53 and CS54), or a feature wherein the tether strap passes through “loops” (as in the other Versions of CS53 and CS54).

145    In each of the Infa Products, there are at least two such “contrivances” located on the head end of the backrest “which holds fast, or gives security to, the seat and occupant in the event of sudden movement or deceleration”: Construction Judgment at [401]. The requirement that contrivance “holds fast, or gives security” does not necessarily mean that it bears any load “in the event of sudden movement or deceleration”. It simply means that the anchorage location plays a role in ensuring that the seat remains connected to the anchorage point on the vehicle. Mr Newman failed to appreciate this construction in his oral evidence before the Court on 18 February 2014, when he argued that the entire back portion of CS53v4 (for example) provided a single anchorage location, or bore the relevant load, since if the “loops” were to be cut, those “contrivances” could be rendered useless for anchorage.

146    Infa also contended that the “mutually spaced anchorage locations” are not on “said head end of said backrest” on the basis of the issues raised in topic 11. I reiterate my comments in relation to that topic, and note the Construction Judgment at [399]. Even in an uninstalled state, as Mr Hunter demonstrated with CS53v4, the relevant loops “revert to a fairly well defined point” or location on the head end of the backrest.

147    All Infa Products contain (at least) two mutually spaced anchorage locations on the “head end of said backrest” described by claims 1 and 19 of the Tenth Patent, as agreed by both experts in the Further Joint Expert Report.

148    All of the relevant Infa Products are therefore within the scope of the relevant integers for the relevant claims.

Topic 20 — “end” (Tenth Patent)

149    In relation to the same claims as detailed in topic 19 above, Infa contended that the Infa Products do not have such a feature, because in those products the physical end of the tether strap (ie where it terminates) does not “extend from” any anchorage location. Rather, it submitted, the tether straps of the Infa Products either travel in a circuit (having an adjuster in that circuit), or through other loops.

150    Infa’s submission is based on my finding of the meaning of the term “ends” in the Construction Judgment: see, eg, at [300-1]. However, that finding was in relation to the First Patent, and specifically adopted (at [340]) in relation to the Third Patent. The construction determination for any term cannot simply be transposed or applied to an asserted equivalent term outside of the context in which it was specifically contested and construed.

151    The context of claims 1 and 19 of the Tenth Patent is different to that of the First and Third Patents. The term “end” in this context is not used in the sense of the physical termination points. Rather it means the part of the tether strap which “commences” at the first anchorage location, and which tether strap then extends in a loop from that first anchorage location (through the strap opening) to a second anchorage location. The embodiments in the Tenth Patent reinforce this interpretation — neither of them depict an arrangement as contended by Infa.

152    I note that in construing the terms of a patent claim, clear language is not to be changed, and the Court must take a common sense approach so as to avoid a surprising or absurd result. Care must also be taken not to take into account the alleged infringing product in construing the claim. In arriving at the above construction of the word “end” in the Tenth Patent, I have adopted the same process of construction as with the First and Third Patents, and have applied the ordinary meaning of the word to a specific context.

153    Infa submitted that the construction of the term “end” in the context of claims 1 and 19 of the Tenth Patent, should be informed by the deliberate introduction (after the Tenth Patent was laid open for inspection on 15 February 1996) of the phrases “with one end” and “with the other end extending” and the reordering of the text of the claims. Infa submitted that in order to obtain the grant of the patent, Britax amended the claims to make express the requirement that the ends of the tether strap be its physical ends. However, in my view, that amendment does not impact upon the proper construction I have given to the Tenth Patent.

154    All of the relevant Infa Products are within the scope of the relevant integers for the relevant claims of the Tenth Patent.

Topic 21 — forward or rearward facing (Tenth Patent)

155    Claim 20 of the Tenth Patent refers to a safety seat “substantially as hereinbefore described with reference to and as illustrated in the accompanying drawings”. Infa submitted that the Infa Products are not within the scope of this omnibus claim, because figure 2 of the Tenth Patent depicts a rearward facing safety seat, which is not a feature present in the Infa Products.

156    This submission takes too literal a view of the Patent’s embodiments. The Tenth Patent is not about forward or rearward facing seats per se. It is, as Mr Hunter noted as the skilled addressee reading the Tenth Patent through the application of common sense and common general knowledge:

primarily about a split tether strap which may be used either with a forward facing seat or with a rearward facing seat, or with a seat that has the capability of being reversed to be either forward or rearward facing.

157    Further, it is only figure 2 in which a rearward facing seat is depicted; in figures 1, and 3 to 11 of the Tenth Patent, all of the seats are depicted as forward facing.

158    Mr Newman and Mr Hunter in the Further Joint Expert Report agreed that Versions 1, 1b and 3 of CS53 and CS54, and Versions 3,4 and 5 of CS55 fell within the scope of omnibus claim 20 of the Tenth Patent.

159    In my view, on the basis of Mr Hunter’s evidence, all Infa Products involve a forward facing arrangement which uses a split tether strap and are “substantially…as illustrated” (emphasis added) in figures 1 to 11 of the Tenth Patent. They therefore fall within the scope of integer 10.20.1.

Topic 22 — “body”

160    This was not described as a “topic” identified by the parties, but it is appropriate to deal with it here as if it were.

161    Different views were expressed in the Further Joint Expert Report on the interpretation to be given to the term “body” of the connector as it appears in claims 1, 2 and 5 of the Ninth Patent.

162    In my view, the term “body” in claim 1 (integer 9.1.3) is further defined by the additional integers being “a connection means…a first aperture…and a second aperture…”: integers 9.1.4-6. The context and wording of the integers themselves indicate that conclusion. The integers following the word “body” refer to “at one end of the body” and “in the body”.

163    The experts agreed that if this interpretation is correct, Version 4 of CS53, CS54 and CS55, and Version 5 of CS53 and CS57 fall within the scope of claims 1, 2 and 5 of the Ninth Patent.

164    On the basis of my construction, the agreed position of the two experts in the Further Joint Expert Report is that the Infa Products with Versions 4 and 5 are within the scope of claims 1, 2 and 5 of the Ninth Patent. I agree with that conclusion.

Topic 23 — omnibus claims

165    I now turn to the omnibus claims to the extent I have not dealt with them under the foregoing specific topics.

166    I have already made observations about the omnibus claims in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019 (‘Omnibus Judgment’) at [23–44]. I will not repeat them.

167    I do stress that the construction of the omnibus claims depends on the context and the precise language used. Whilst the omnibus claims in this proceeding do vary in their precise language, I proceed on the basis that the relevant reference in the omnibus claims is to the figures or drawings. However, the figures or drawings must be viewed in the context of the specification and through the eyes of the skilled addressee taking a practical approach to what the figures or drawings describe. Each claim describes something actually shown in the figures or drawings, subject to variations that a person skilled in the art would regard as minor or not substantial.

168    Where the reference is to one or more figures, which are identified, I treat this as a claim which is notionally separable into a number of claims, each of which makes reference to only one example, the scope of which is limited by reference to that specific example: see eg Williams Advanced Materials Inc v Target Technology Co LLC (2004) 63 IPR 645 at [57].

169    The omnibus claims in issue in the proceeding and which Britax asserts are infringed by the various Infa Products are:

(a)    Sixth Patent — claim 4;

(b)    Eighth Patent — claims 2, 3, 4 and 5; and

(c)    Tenth Patent — claim 20.

170    In the Further Joint Expert Report, the experts agreed on the presence of all integers in many of the Infa Products for many of the omnibus claims. Hence, the combined construction and infringement issues had crystallised into a consideration of a confined set of Infa Products for each of the above identified claims of the Sixth, Eighth and Tenth Patents.

Sixth Patent — Omnibus claim 4

171    The Sixth Patent is concerned with various tether strap arrangements enabling connection of a harness and child safety seat to a single anchorage point on a motor vehicle. The claims describe and the figures depict various tethering means and connection arrangements. Although omnibus claim 4 is directed to a tether strap, the reference made to the drawings relates to the connection means.

172    Specifically, the claimed tether strap of claim 4 is described as:

(a)    incorporating “means for connecting both the tether strap and a child safety harness used with the safety seat to an anchorage point of the vehicle”; and

(b)    in a manner which is “substantially as herein described and with reference to the accompanying drawings” (that is, figures 1 to 9).

173    To establish infringement, the infringing product must contain all the essential features described and claimed. However, there is no escaping infringement by either or both of the substitution of “mechanical equivalents” which make no essential difference to the way that the invention performs; or the presence of immaterial variations to the essential features of the described and claimed invention, or as illustrated in the drawings: see, eg, Populin v HB Nominees Pty Ltd (1982) 41 ALR 471, 475-6.

174    As Britax contended, context is important. In the context of omnibus claim 4 of the Sixth Patent, the following aspects are all relevant:

(a)    the Background of the Invention (page 2);

(b)    the Summary of the Invention including the consistory clauses describing “aspects” of the invention (pages 2 - 4);

(c)    the description of the embodiments of the invention depicted in the accompanying drawings (pages 4-5);

(d)    the embodiments illustrated in the accompanying drawings (figures 4-9) which make clear that there are separate drawings (and embodiments) each of which must be individually considered;

(e)    the descriptions of the preferred embodiment (pages 5-8); and

(f)    the statement that “the invention is not limited to the embodiments disclosed” (page 8).

Anchorage-Connection Arrangement versions 4 and 5

175    Mr Newman gave evidence that Versions 4 and 5 were not within the scope of this omnibus claim. This was due to the absence in the drawings of the “flexibly” linked metal components, namely the latching hook and connection plate, which were present in Versions 4 and 5.

176    I consider that Mr Newman was basing his differentiation solely on his literal interpretation of the drawings. I consider this to be a narrow, and incorrect, approach. In my view, it is relevant for infringement that the relevant product function in the way described or depicted. In the context of an omnibus claim, it is relevant that the product function substantially in the way described or depicted.

177    Mr Hunter noted that figure 6 depicts an embodiment in which of the connection functions in the same way as seen in Versions 4 and 5. This is the correct approach, and I accept this evidence.

178    The connection means arrangement of Versions 4 and 5 has all of the features of the substance of the innovative concept embodied in figure 6 of the Sixth Patent. Both have a flat plate portion, an aperture (or “U”-shaped end) through which the tether strap locates, and another aperture for connection of a child safety harness. In concept, Versions 4 and 5, contain substantially the same essential components as are present in figure 6 of the Sixth Patent.

179    The separate latching hook used in Versions 4 and 5 is a variation which Mr Hunter, as a skilled addressee, viewed as “minor”, and adds no functionality or utility to the embodiment depicted in figure 6. Versions 4 and 5 therefore fall within the scope of integer 6.4.3 of claim 4 of the Sixth Patent.

Eighth Patent — Omnibus claims 2, 3, 4 and 5

180    Like the Sixth Patent, the Eighth Patent is concerned with various arrangements for connecting a child safety seat and a child safety harness to a single anchorage point on a motor vehicle. The claims describe and the figures depict various tethering means and connection arrangements. I have described these claims in topic 18 above and in the Omnibus Judgment at [34].

181    Specifically, the omnibus claims are directed either to:

(a)    an “[a]pparatus to secure a child safety seat and child safety harness to a single anchorage point on a motor vehicle” (claims 2 and 5); or

(b)    a “child safety seat and child safety harness adapted to be secured to a single anchorage point on a motor vehicle ...” (claims 3 and 4);

in a manner which is substantially as hereinbefore described and illustrated in:

(a)    any one of figures 4 and 5, 6, 7, 8, and 9 (claims 2 and 3); or

(b)    the accompanying drawings (claims 4 and 5).

182    In context of omnibus claims 2, 3 4 and 5 of the Eighth Patent, the following aspects are all relevant:

(a)    the Background of the Invention (page 2);

(b)    the Summary of the Invention including the consistory clauses describing “aspects” of the invention (pages 2- 4);

(c)    the descriptions of the embodiments of the invention depicted in the accompanying drawings (pages 4-5);

(d)    the embodiments illustrated in the accompanying drawings (figures 4-9) which make clear that there are separate drawings (and embodiments), each of which must be individually considered;

(e)    the description of the preferred embodiment (pages 5-8); and

(f)    the specific statement (on pages 7-8) that the description in relation to the preferred embodiments:

…is not limited to the above described embodiments disclosed, but is capable of numerous rearrangements, modifications and substitutions without departing from the scope of the invention. For instance, it is not necessary that the latching hook connector and connection means be a single component but may include two or more connected components to achieve the same result. Other modifications and variations such as would be apparent to a skilled addressee are deemed within the scope of the present invention.

183    As with the Sixth Patent, I consider Mr Newman was basing his position upon too restrictive an approach to the drawings. Mr Newman failed to bring into consideration the entirety of the description in his perception of the drawings, and also failed also to see them in the context of the various aspects of the invention (pages 2-4) and the preferred embodiments.

184    Similar comments to those made in relation to the Sixth Patent apply to the features of the Eighth Patent.

Anchorage-Connection Arrangement version 1

185    Infa contended on the basis of Mr Newman’s evidence, that the interrelationship of the tether strap and the connection strap in respect to the latching hook in Version 1 is not reflected in any of the figures in the Eighth Patent. However, Mr Newman accepted that Version 1b is within the scope of the omnibus claims of the Eighth Patent. In particular, Mr Newman’s concern with Version 1 is based on the perpendicular or nonlinear arrangement of the tether strap with respect to the connection strap, as opposed to the relatively linear arrangement of components depicted in the patent.

186    However, that is only an issue of orientation which does not impact upon the “substance” of the componentry described in the Patent. I accept Mr Hunter’s evidence that there is no relevant difference in function between Version 1 and the embodiments depicted in the Eighth Patent. In my view, based on Mr Hunter’s evidence, the perpendicular placement of the tether strap in Version 1 is a variation which a skilled addressee would view as minor, and adds no functionality or utility to the embodiment depicted in figures 4 to 9. Version 1 therefore falls within the scope of the omnibus claims of the Eighth Patent.

Anchorage-Connection Arrangement versions 4 and 5

187    Mr Newman stated that Versions 4 and 5 were not within the scope of the omnibus claims of the Eighth Patent for the same reasons as he gave in relation to the omnibus claims of the Sixth Patent, namely that the patent embodiments do not depict the “flexibly” linked metal components found in Versions 4 and 5.

188    I reiterate my comments above in relation to the omnibus claims of Sixth Patent. The connection means arrangement of Versions 4 and 5 has all of the features of the substance of the innovative concept embodied in figure 6 of the Eighth Patent, and the additional feature is immaterial to the question of infringement for the same reasons stated above.

189    All Infa Products therefore fall within the scope of claims 2, 3, 4 and 5 of the Eighth Patent.

Tenth Patent — Omnibus claim 20

190    The Tenth Patent is concerned with various split tether strap arrangements. Necessarily, the patent drawings depict a “means” to connect the tether strap and safety seat to a vehicle. No particular orientation (ie forward-facing or rearward-facing) of the safety seat is required. The patent neither describes nor depicts a harness or connections for a harness. Although the patent refers to a “connector”, that aspect is not the focus of the invention.

191    Importantly, and by contrast to the later dated Innovation Patents, the Tenth Patent is not concerned with the connection arrangements for securing both the safety seat and a child harness to a vehicle or vehicle anchorage point. The inventive concept of the Tenth Patent is primarily about the split tether strap arrangement.

192    In the context of omnibus claim 20 of the Tenth Patent, the following aspects are all relevant:

(a)    the described problems with the tethering arrangements of the prior art (pages 1a-2);

(b)    the stated object of the invention (page 2);

(c)    the broad statement of invention, or “consistory clause” (page 2);

(d)    the various statements about the tether strap and adjustment arrangements (page 2);

(e)    the specific statement that “it should be realised that the invention is not to be confined or restricted to the precise details of the described embodiments” (page 3);

(f)    the embodiments illustrated in the accompanying drawings (figures 3-11);

(g)    the description and drawings relevant to the separate embodiments (pages 3-7); and

(h)    the forward facing seat orientation of figures 4-11.

193    Prior to Mr Newman’s change of view in his Fifth Affidavit, Mr Newman accepted that in relation to omnibus claim 20, there was a correlation between the Infa Products and the figures (save for CS53v4 and 5, and CS54v4 and 5). Mr Newman and Infa now contended there to be no infringement of any omnibus claim 20 of the Tenth Patent.

194    However it is to be recalled that Mr Newman still appears to accept (save for the issue of the construction of the term “end”) that the Infa Products have all the features of claims 1 and 19 of the Tenth Patent.

Anchorage-Connection Arrangement versions 4 and 5

195    Infa submitted that Versions 4 and 5 do not fall within the scope of the omnibus claim 20 of the Tenth Patent, because those Versions do not contain an “end” extending from an anchorage location. This is an extension of the construction issue raised in topic 20 above, and arises because omnibus claim 20 includes claims 1 and 19 by reference, and I therefore reiterate and apply my comments in relation to topic 20.

196    Infa further submitted that Versions 1 to 4 of both CS53 and CS54 contain an arrangement in which the tether strap passes through “loops”, rather than the apertures depicted in the figures of the Tenth Patent. This argument raises the issues covered in topic 19, which I reiterate and apply here. I emphasise in this context that the function described in the patent by the words “mutually spaced anchorage locations” is unaffected by a “looped” arrangement as is present in Versions 1 to 4 of both CS53 and CS54, and that such a modification or variation would be viewed by as “minor” by a skilled addressee, as indeed it was by Mr Hunter. I agree with Mr Hunter’s view that the loop arrangement present in Versions 1-4 are substantially as depicted in the figures of the Tenth Patent, and therefore fall within the scope of omnibus claim 20.

VALIDITY — General

197    By the transitional provisions contained in s 55 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), the relevant provisions of the Patents Act 1990 (Cth) (‘the Act’) relating to the validity of the patents in suit remain as they were prior to the passage of that legislation and its coming into full effect on 15 April 2013. All references to the Act are therefore references to that Act prior to the amendments.

198    By its Amended Third Substituted Defence dated 18 December 2012 and Fourth Substituted Particulars of Invalidity dated 25 March 2011 (‘Fourth POI’), Infa denied infringement of the patents and cross-claimed for revocation of the following claims of the patents in suit:

(a)    First Patent — claims 1, 2, and 5;

(b)    Second Patent — claims 1, 2, 3 and 4;

(c)    Third Patent — claims 1, 2, 3, 4 and 5;

(d)    Fourth Patent — claims 1, 2, 3 and 4;

(e)    Fifth Patent — claims 1, 2 and 3;

(f)    Sixth Patent — claims 1, 2, 3, 4, and 5;

(g)    Seventh Patent — claims 1, 2, 3, 4, and 5;

(h)    Eighth Patent — claims 1, 2, 3, 4, and 5;

(i)    Ninth Patent — claims 1, 2 and 5; and

(j)    Tenth Patent — claims 1, 19 and 20.

199    Although Britax opposed leave being granted to Infa to amend its Particulars of Invalidity in accordance with the (then proposed) Fourth POI, Britax addressed the issues raised therein. It is appropriate to grant leave for Infa to amend its Particulars. By the effluxion of time and bifurcation of the proceeding, Britax had (as shown by the submissions and evidence it put before the Court) ample opportunity to consider and respond to the (then proposed) amended Particulars of Invalidity. However, in relation to the new ground of invalidity in relation to the Tenth Patent (lack of utility) I do not give leave, as in my view (for the reasons I later give), Infa’s attack on this basis is without merit, and any amendment would be futile.

200    I have already set out the general basis of the invalidity claims in the Construction Judgment: at [7]. I note that the following grounds of invalidity were withdrawn in the course of the proceeding:

(a)    lack of entitlement, on the basis of recent changes to the law;

(b)    external fair basis, (only in relation to certain aspects as a consequence of the construction of the terms “tether strap” and “head end” in the Construction Judgment), although Infa reserved its rights on appeal and on any reconsideration of those terms; and

(c)    clarity (only in relation to certain aspects); although Infa reserved its rights on appeal and on any reconsideration of the terms “tether strap” and “head end”.

201    Before proceeding to address the various grounds of invalidity asserted by Infa, I turn to the principal evidence relied upon by the parties on the various issues of invalidity.

202    On some aspects of invalidity in this proceeding, Infa sought to rely upon the evidence of Mr Hunter, the expert witness called by Britax. There is no obstacle to such an approach — if in cross-examination Mr Hunter gave evidence on invalidity issues which was favourable to Infa, then Infa could rely upon such evidence, provided that Britax is accorded procedural fairness.

203    However, I must consider Mr Hunter’s evidence in the context in which it was given and be satisfied that it in fact supports Infa’s submissions. In a proceeding such as this, involving many issues agitated by the parties, an expert being cross-examined must be directed to the appropriate context or issue, so that he or she can focus his or her mind and answer accordingly. For example, whilst Infa (as cross-examiner) was entitled to canvass various matters going to infringement, I do not consider it fair to Britax or Mr Hunter to take various answers made solely in that context and rely on those answers for invalidity purposes where Mr Hunter was not directed to the relevant issue.

204    Further, Mr Newman was not called upon to give evidence by Infa on many aspects of invalidity. The fact that a party chooses not to lead evidence from an expert conversant with a relevant issue would indicate that the party has deliberately chosen such a course, and that the witness would not have been of assistance to that party.

205    Having made these observations, I outline the focus of the evidence of Mr Newman and Mr Hunter.

206    Mr Newman gave evidence in chief on invalidity for Infa on matters relating to external fair basis and novelty (in relation to certain prior art).

207    There was no evidence in chief from Mr Newman in support of Infa’s pleaded invalidity challenges of:

(a)    internal fair basis;

(b)    novelty (prior art patent specifications);

(c)    innovative step;

(d)    inventive step (in relation to the Tenth Patent); and

(e)    inutility.

208    Mr Hunter gave evidence in chief in relation to novelty and innovative step (in relation to certain prior art), and external and internal fair basis.

209    In cross-examination, Mr Hunter gave evidence in relation to prior art patent specifications and the Century 2500 prior art seat (as described below) for the purpose of novelty. This evidence was summarised by Mr Hunter in Exhibit A15. There was objection made by Infa to receiving Exhibit A15 as evidence. It was submitted that it should be treated only as a submission. In my view, Exhibit A15 stands as evidence of Mr Hunter’s opinion. In any event, even if Exhibit A15 was to be treated as a submission, Mr Hunter has effectively otherwise provided the evidence which is summarised in Exhibit A15 in affidavit evidence or in cross-examination.

210    There was not sufficient evidence in chief from Infa in support of its allegations that the asserted pigtail prior art anticipated the claims of the patents in suit. Some evidence has been led relating to these matters, but no expert has put this evidence in context to support Infa’s contentions and to assist the Court in seeing the evidence through the eyes of the relevant skilled addressee.

211    In the circumstances in which this proceeding has been run, the approach I take is as follows. I do not accept the submission of Britax that all of the Infa submissions on novelty and fair basis should be dismissed on the basis that they are “unfair and prejudicial to both Mr Hunter and Britax”. As I have said, the parties and their experts have had ample opportunity (of which they have availed themselves) to consider the issues I am considering in this part of the proceeding. It will be necessary to consider the specific claims of each patent and the validity challenges. In doing so, I will view the expert opinion evidence of Mr Hunter and Mr Newman in the context in which it was given, and will take account of Infa’s failure to call evidence from Mr Newman (or any other witness) on certain invalidity issues.

212    I dealt with the specific objections to evidence during the course of the trial. It is convenient now to consider Infa’s objections to the totality of the evidence of Mr Hunter, which raised a number of issues.

Skilled Addressee

213    Infa submitted that Mr Hunter was not a person skilled in the art able to give relevant and admissible evidence on issues of validity. I have already discussed the nature of a skilled addressee in relation to Mr Hunter (and Mr Newman) in the context of construction and infringement in the Construction Judgment. In relation to expert evidence on the validity of the impugned patents, only Mr Hunter’s position was challenged on the basis he was not a skilled addressee. I now focus on the position of Mr Hunter in relation to his evidence on validity. Undoubtedly this consideration of Mr Hunter’s evidence overlaps with my other observations in these reasons and in the Construction Judgment.

214    If Mr Hunter is not in the appropriate skilled addressee then his evidence would be irrelevant, even if the evidence otherwise conformed with s 79 of the Evidence Act. I will return to this aspect of the admissibility of Mr Hunter’s evidence later after I deal with the question of whether Mr Hunter’s evidence is relevant.

215    Each of the impugned patents relates the manufacture (including mechanical engineering) and use of child safety seats, and to various tethering arrangements of the child safety seat and harness to an anchorage point in a motor vehicle.

216    The Innovation Patents are concerned with ensuring that the harness of the child safety seat is connected to the anchorage location in a way in which the harness remains independent of the (integrity) of the seat shell in the event of an accident. The Tenth Patent is concerned with using the same split tether strap for a child safety seat in both rearward and forward facing mode, and ensuring that when tightened and installed, the seat is closer to the anchorage location than previously available arrangements.

217    The skilled addressee must have had the relevant experience at the relevant priority date. I have found that the priority date for the Tenth Patent is 1 August 1994 and the priority date for all the Innovation Patents is 9 June 2004. The skilled addressee therefore requires an understanding or experience of the installation and operation of child safety seats and their tethering systems as at those dates. That said, the skilled addressee does not need to have expertise and experience specifically in the child restraint industry, if his or her expertise and experience are sufficient to give reliable evidence on the state of the common general knowledge of a skilled addressee in the relevant art as at the priority dates.

218    As I have already observed in the Construction Judgment, at the relevant priority dates, Mr Hunter was a well-qualified professional engineer and consultant. His engineering qualifications and experience made him capable of addressing design, manufacture and testing issues concerning child safety seats. Mr Hunter has had a practical interest in the subject matter of the inventions. For a short period in 1993, he was also involved in the design, assessment for manufacture and testing of a child safety seat for Britax in its “Galaxy” project, which gave him some specific industry knowledge and experience in the design, manufacture and testing of child safety seats and associated components. It cannot be said that he is simply an engineer with a basic knowledge of manufacturing techniques or mechanics, although this is relevant knowledge.

219    The span of 10 years between the priority dates of the Tenth Patent and the Innovation Patents does not of itself disqualify Mr Hunter as a skilled addressee. During that time he continued to have consultancy experience as a skilled engineer, which required him to retain and develop his knowledge in order to be able to give competent advice. Further, both parties accepted (as I observed in the Construction Judgment at [254]) that the field of child safety seats and related technology had undergone a number of incremental developments over the 10 years between 1994 and 2004, but was not one of rapid fundamental technological advancement. I should say, however, that this does not mean that I should assume in the context of the invalidity claims, that there is not the possibility of some technological advancement in that period.

220    Mr Hunter did not have experience with the relevant Australian standards concerning child restraints (nor, for that matter, did Mr Newman). Infa made a number of submissions concerning Mr Hunter’s misunderstanding of the relevant Australian Standards 1754 and 3629, which I accept. However, I do not regard this as significant. It does not detract from the other qualities that qualify Mr Hunter as a skilled addressee.

221    Further, whilst Mr Newman relies upon Australian Standards to assist him in understanding and applying his task relevant to the issues of construction and infringement, the Australian Standards are not relevant to this exercise (at least for this part of the proceedings). In my view, the Australian Standards neither impact on construction nor the assessment of whether an Infa Product is within the scope of a claim.

222    Apart from contending that Mr Hunter lacks the necessary expertise and experience, Infa also contended that Mr Hunter’s evidence should be rejected because he is impermissibly “inventive”, and thereby disqualified as a relevant “person skilled in the art”.

223    In Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 (‘Alphapharm’) Gleeson CJ, Gaudron, Gummow and Hayne JJ noted that there are conceptual difficulties in applying what is said in some of the older authorities respecting “workmen” and the like to modern conditions in the pharmaceutical and other industries: see [30] and [55]. Whilst this proceeding does not concern complex pharmaceutical patents, highly qualified experts, even if they have a capacity for original research, should not on that basis be disqualified from assisting the Court.

224    The courts have accepted evidence, at least on matters of construction and infringement, from witnesses who are highly qualified and skilled as well as being inventive: see eg JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 (‘JMVB’) and Australian Mud Company Pty Ltd v Coretell Pty Ltd (2010) 88 IPR 270.

225    In considering the evidence of Mr Hunter in the context of invalidity, I adopt the approach of Crennan J in JMVB at [91-5] and [98]:

[91]    Lahore’s Patents, Trade Marks and Related Rights, vol 1, Butterworths, Australia, 2001 at 12,892 contains the following commentary on the Fina decision:

The importance of evidence on the state of knowledge of a skilled addressee at the priority date and his understanding of the available evidence cannot be over-emphasised. It is equally important that the evidence should be directed to showing what the “notional skilled worker” would have known, not what a leading expert in the field would have known. There are numerous decisions in which evidence has been discounted because the expert witness knew too much. An expert witness should have no “excess of any peculiar or special knowledge”, he should not be over-qualified and, most importantly, he should be able to depose to the state of the common general knowledge in Australia at the priority date.

[92]    The applicant submitted that the respondent’s witness, Associate Professor Field, was not a ‘notional skilled worker’ because he was over-qualified and too inventive. Associate Professor Field is an Associate Professor in the Department of Mechanical Engineering at Monash University who teaches and researches machine design and industrial innovation, creativity and invention. He was named as an inventor in respect of some twelve patents.

[93]    The applicant submitted that there was no evidence that persons in the caravan industry in May 1994 were skilled engineers with the qualifications of Associate Professor Field. Associate Professor Field himself admitted that he had no involvement in the caravan industry in May 1994. The evidence of the applicant’s witness, Mr Funder, was that persons in the caravan industry prior to May 1994 were largely businessmen/entrepreneurs, who worked with a team of tradesmen. Mr Funder gave further evidence during cross-examination that persons designing and manufacturing caravans in May 1994 were generally ‘blacksmiths and carpenters’. He also said that he could not recall having contact within the caravan manufacturing industry with a professional engineer until 5 or 6 years ago. The applicant also refers to the fact that Mr Page asserted that some caravan manufacturers consulted engineers in their design process in 1994 but, in cross-examination, he admitted that he was never present at any such consultations.

[94]    The relevant skilled worker against which to judge the inventiveness or not of the invention as claimed is the person or persons designing and improving caravans as at the priority date.

[95]    Further, the applicant submitted that Associate Professor Field’s evidence was largely inadmissible, or, if admissible, should be qualified or given little weight because Associate Professor Field avoided the issue of the inventiveness of claim 1 until cross-examined in this respect. This interpretation of Associate Professor Field’s evidence is incorrect as he clearly dealt with the issue of the inventiveness of claim 1 in his affidavit evidence.

…

[98]    After careful consideration it seems to me that Associate Professor Field’s evidence is strictly admissible on the issue of obviousness and I overrule the objection to the admissibility of the whole of his evidence on the basis of his competence as an expert. I deal with other specific reserved objections to his evidence in Annex E. Obviousness always involves issues of fact and degree. Whilst Associate Professor Field was a professional engineer with a special interest in design, rather than a specific caravan designer or manufacturer, there is no reason to doubt Mr Page’s evidence that sometimes such persons were consulted in the design process in 1994. Mr Page’ long experience in the industry provided a proper factual substratum for the giving of this evidence. I bear in mind that the hypothetical skilled worker can be a team and an individual can be a part of such a team. Further, despite being named as an inventor in respect of some patents, Associate Professor Field’s evidence did not proceed from any ‘excess of any peculiar or special knowledge’; rather he was a design consultant who could have formed part of a team as at the relevant date. It could not reasonably be contended, and it was not contended, that he was overqualified as a ‘leading expert’ in the field. The field is caravan design which is a simpler field than a complex scientific area of expertise in which ‘leading experts’ are far removed from skilled workers. There was no such problem on the facts here. Finally, I have taken the objections to admissibility into account when determining what weight to give evidence to which objections have been raised.

(Citations omitted.)

226    This approach is supported by the comments of the High Court decision in Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280. At paragraph [44], the High Court noted that Dowsett J at first instance had made the correct observation as follows:

[44]    Mr Ahrens stated that he considered himself to be an inventor. Firebelt contends that this diminishes the force of his evidence because he was not speaking as the uninventive notional addressee referred to in the authorities. However, when a similar complaint was made to the trial judge, his Honour correctly observed:

It is true that Mr Ahrens considers himself to be an inventor, but that of itself cannot disqualify him from giving evidence as to obviousness. To describe oneself as an inventor is merely to say something about one’s capacity to identify and solve a problem. The line between a competent technician, able to solve problems on the basis of an established state of knowledge in his or her industry and an inventor will not always be easily discerned. Further, a person who is an inventor may well also perform non-inventive work.

227    In cross-examination, Mr Hunter accepted that he was the named inventor of a number of inventions put to him by the cross examiner, but he stated that he did not consider himself to be inventive in the field of child restraints. There is nothing in the evidence that shows him to be inventive in the field of child restraints. All inventions put to him concern unrelated fields of mechanical engineering.

228    The fact that Mr Hunter may be inventive or an inventor in other unrelated technological fields does not mean he is inventive for current purposes. The evidence of Mr Hunter can and should be given weight because he is not an inventor, nor inventive, in the field of child safety seats.

229    It may well be, and this applies to Mr Newman as well, that a particular skilled addressee may have a more practical approach or a more theoretical approach in considering the operation of the patent.

230    As the Full Court stated in Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 (‘Jupiters’) at [154]:

…Section 7(2) of the Act refers to the hypothetical 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’. That person is wholly hypothetical. Much evidence is admissible from persons none of whom would precisely answer the statutory description. Some may be more skilled in the relevant art than others. Some may be skilled and inventive; some may be brilliant; some may be plodders; some may be aware of particular pieces of art claimed to be part of the common general knowledge and others not. It is for the court, having admitted relevant evidence, to come to a conclusion as to the application of the section. It appears that the view was taken that Gregory and Krimmer were not skilled or knowledgeable enough. That would not be a ground for rejecting the relevance of their evidence. Indeed, it may make their evidence very powerful if it were accepted that they did or would have come across the invention. The usual problem in cases of this sort is the over-qualified expert.

231    For the foregoing reasons, I see no basis to disqualify Mr Hunter as a relevant person skilled in the art for the purposes of his evidence on patent validity, or indeed any aspect of this proceeding.

Evidence Act

232    I now turn to the objection to Mr Hunter’s evidence as not complying with s 79 of the Evidence Act and Infa’s objection to the reception of some of his evidence on the basis it should be excluded or limited pursuant to ss 135 and 136 of the Evidence Act. It is true, as is the case with Mr Newman’s evidence, that much of the evidence states opinions about the terms of the patents and is in many aspects argumentative. I referred to this in the Construction Judgment at [205-6]. The Court must be astute to only use the expert evidence to the extent that it assists the Court in its task. The form in which the evidence is given, involving evaluative opinion, does not detract from its purpose in assisting the Court. As with all the evidence, I rely upon it to inform the Court as to the relevant art, common general knowledge and to inform the Court as to how the inventions are intended to work.

233    As to the operation of s 79 of the Evidence Act, in addition to the observations I made in the Construction Judgment, I regard the comments of Crennan J in JMVB, who admitted the expert evidence in dispute, at [96-7] as apposite:

[96]    The applicant also argued that Associate Professor Field’s evidence should be deemed inadmissible or given little weight because he continually referred to various dependent claims as being ‘obvious’. Section 76 of the Evidence Act provides that evidence of an opinion is not admissible to prove the existence of a fact about which the existence of the opinion is expressed. This is qualified by s 79, which provides that this does not apply to opinion evidence of a person where the person has specialised knowledge based on the person’s training, study or experience and the opinion is wholly or substantially based on that specialised knowledge. Under s 80, evidence of an opinion is not inadmissible only because it is about a fact in issue or an ultimate issue.

[97]    In Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 at 259 (3M v Tyco) the Full Court held that even if it is assumed that an opinion as to obviousness is within s 80 of the Evidence Act, s 79 must still be satisfied. An opinion on obviousness will often not only be based on specialised knowledge, but also upon patent law. This was the basis of reiterated objections that Associate Professor Field drew conclusions of law. Experts would not necessarily have a detailed understanding of patent law and the Full Court in 3M v Tyco at 259 found that ‘such evidence, even if it is strictly admissible, is unlikely to be helpful and it is preferable to exclude it’: see also Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280; 54 IPR 449; 76 ALJR 816; [2002] HCA 21 at [46] (Firebelt).

234    The nature of evidence of a skilled addressee can readily satisfy the requirements of s 79 of the Evidence Act without explicit articulation or amplification, once the skilled addressee has described his qualifications and experience, and identifies the process of reasoning by reference to the terms, figures and drawings in the documents under consideration. In my view, the evidence of Mr Hunter is admissible.

235    In relation to ss 135 and 136 of the Evidence Act, and the issues of validity, I conclude as follows. I do not consider there was any danger that the evidence of Mr Hunter was unfairly prejudicial to Infa, or misleading or confusing. Mr Hunter’s evidence was of significant probative value, and resulted in the saving of time by bringing his various views (as with Mr Newman) before the Court. Infa had ample opportunity to consider and address (in cross-examination or by way of submission) Mr Hunter’s evidence. I do not exclude or limit the evidence of Mr Hunter (which is otherwise admissible) by exercising my discretion under either s 135 or s 136 of the Evidence Act.

Credibility

236    It is necessary in light of Infa’s submissions, to make some comments on Mr Hunter’s credibility. I accept Mr Hunter approached the task of being an expert witness honestly, openly and thoroughly. His demeanour at all times was appropriate. His opinions were well reasoned, justified and supported with a cogent basis, and he made concessions where appropriate.

237    Mr Hunter had considerable knowledge of the technical art concerned with the design and manufacture of child safety seats as well as each of the patent specifications, and each of the Infa Products.

238    Both experts presented as genuine and cooperative witnesses seeking to carry out the role of an expert witness and assist the Court. Nevertheless, the opinions of Mr Hunter were more persuasive and of more assistance to the Court than those of Mr Newman for reasons I have already alluded to in considering Mr Newman’s evidence and the circumstances surrounding the Fifth Affidavit of Mr Newman.

Browne v Dunn

239    It is also necessary to make some brief observations on the application of the principle in Browne v Dunn (1893) 6 R 67 (‘Browne v Dunn’) in this proceeding. In relation to the invalidity part of the proceeding, the parties did not “waive” compliance with the principle in Browne v Dunn as they did on the construction issues.

240    The principles of Browne v Dunn are based on fairness. In light of the way this trial was run by the parties, the extensive filing of written submissions over a period of time, and the approach taken by the expert witnesses in particular, I consider that each party and the witnesses were well aware of all the issues to be addressed. Each witness had a full opportunity to address the issues. I do not consider that any unfairness arose in the cross-examination of the witnesses. Each party equally had a full opportunity to address the issues and to make submissions in this proceeding.

Use of expert evidence

241    Finally, I turn to consider the need for expert evidence in determining the validity issues raised in this proceeding.

242    Infa submitted that in relation to each aspect of Infa’s invalidity case, the Court need not refer to expert opinion evidence. Rather, it submitted, it is a question for the Court whether, or the extent to which, it requires assistance.

243    In this proceeding, the Court must consider various drawings and descriptions in patent specifications and technical documents. The comments made in Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-8 are apposite:

Having regard to these authorities, it would not be right to hold that a drawing alone could not provide fair basis for a particular integer of a claim. It is a matter of interpretation of the drawing. In principle, the problem for the court is not different from the problem arising when words are examined in order to determine whether they provide fair basis for a particular integer of a claim. But, just as technical words or scientific concepts may require the assistance of experts to enlighten the understanding of the court so as to put it in a position to determine such a question, so, in the case of the interpretation of a drawing, the court may need assistance. There is no rigid rule, since whether guidance is required must always depend upon the particular issue and the particular drawing. But where a close analysis of drawings, or indeed of descriptions, in patent documents is called for, the court may need the assistance of those with the appropriate technical expertise.

(Emphasis added.)

244    Similarly, the Full Court in ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000)  106 FCR 214 (‘ICI Chemicals’) said at [43]:

[43]     It is, on the other hand, equally clear that, though construction is a matter for the court, a prior publication is to be assessed by reference to what it would disclose to the skilled addressee. The question then is whether the skilled addressee is taken to consider the publication at its date or (as the Full Court assumed, but without needing to decide the point, in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 at 248; 44 IPR 481 at the priority date of the patent the claims of which are under challenge.

245    The Full Court in ICI Chemicals added at [47]:

[47]    That leads to another significant matter to which we must refer before turning to the alleged anticipation. It is that expert evidence as to what will be inferred by the skilled addressee is important. In the course of discussing Vander Lely, Gummow J said in Nicaro (at ALR 542; IPR 574-5):

Lord Reid was at pains to point out the importance of evidence in resolving such an issue. The question was what the eye of the man with appropriate engineering skill and experience would see in the photograph ...

[Lord Reid’s] words are to be borne in mind where, as in the present case, the appellants’ submissions invited a close analysis of the drawings and descriptions constituting the alleged anticipations ...

The evidence in this respect was strikingly deficient. In substance, what the appellants were seeking to have this court do on appeal was substitute its view, unaided by evidence of the category I have described, for the construction placed upon [an alleged anticipation] by the learned trial judge.

246    Aside from the admission into evidence of the relevant patents in suit, and each prior art document, specification or evidence of use, the court must determine whether, and the extent to which, factual or opinion evidence is required to establish any aspect of invalidity in each case. That determination depends upon the particular ground of invalidity and the relevant prior art.

247    Infa submitted that its witnesses, who at the relevant times have worked in the field of child safety seats and are familiar with their tethering arrangements, have ably demonstrated that the art with which this proceeding is concerned is one of practical and common sense, and is therefore readily intelligible to the Court.

248    Infa also submitted that in the present proceeding the issues of internal and external fair basis can be readily determined by a comparison between the claims of the Innovation Patents and the text and figures of their parent application (in the case of external fair basis), or the body of the respective Innovation Patent specifications (in the case of internal fair basis). Likewise, it submitted that the issue of novelty can be determined by a comparison of the claims of the Innovation Patents against each item of the prior art, whether documentary or as evidenced by prior use. On the basis of those submissions, Infa contended that the Court is able to make the necessary determinations without the assistance of expert opinion evidence, and that there was therefore no need for either party to adduce expert opinion in relation to the prior art, nor the claimed priority document.

249    In my view expert opinion is needed in relation to various aspects of the invalidity challenge. This is particularly so, not just to assist the Court’s understanding of the drawings and specifications, but also in relation to the combination of features that are said to exist in the prior art, and in their comparison to the various patents. Importantly, the Court must consider the arguments challenging patent validity from the point of view of the skilled addressee.

250    In addition to the general matters raised above, I emphasise two matters as to why a court requires the evidence of a skilled addressee.

251    First, prior art must be viewed through the eyes of a person skilled in the art to examine what is disclosed to such skilled addressee by the asserted prior art with regard to matters of common general knowledge. A court cannot do this itself.

252    In Eli Lilly and Co Ltd v Apotex Pty Ltd (2013) IPR 451 at [293] I put the position as follows in relation to prior art disclosure:

Therefore, evidence will establish whether there is sufficient disclosure to the skilled reader of olanzapine in prior art documents. Whilst one does not talk so much of “teaching away” in the context of novelty, such is permissible to the extent one has to look at the disclosures in context: see SNF (Australia) (2012) 204 FCR 325 at 401 [313] per Bennett J. Thus, it becomes necessary to investigate the prior documents said to give rise to the anticipation, and to take into account the expert evidence as to what those prior documents disclose.

253    I do not consider that this observation only applies to complex sciences; it applies in other contexts such as this proceeding dealing with child safety seats and tethering arrangements.

254    Secondly, drawings, descriptions and technical terms are matters for a person skilled in the art. The court may often be unable to determine whether a term has a technical meaning or what the meaning is, if no evidence is led as to how the person skilled in the art would read the prior art. A word that might appear to have an ordinary meaning to the court might have a technical meaning to the skilled addressee. A court could make no findings about these matters without evidence. Equally, even if no technical terms are involved, a court could readily misunderstand even the simplest of inventions or specification descriptions, by not being made aware of “hidden” or subtle aspects of such inventions or descriptions only discernible to the eye of a skilled addressee.

EXTERNAL FAIR BASIS

255    Britax claimed a priority date of 9 June 2004 for each of the nine Innovation Patents, on the basis of the evidence of Mr Hunter, that each of those patents is fairly based on:

(a)    Australian Provisional Application 2004903092 filed on 9 June 2004 (‘Provisional Application’); and

(b)    PCT Application WO 2005/120910 filed on 9 June 2005, claiming priority from the Provisional Application that entered the national phase in Australia as Australian Patent Application No. 2005251826, being the parent application from which the Innovation Patents were divided (‘Parent Application’).

256    Infa accepted that the Parent Application was entitled to a priority date of 9 June 2004, being fairly based on the Provisional Application. However, Infa disputed Britax’s claim that the Innovation Patents are entitled to the priority date of 9 June 2004, since they are divided from the Parent Application, not the Provisional Application.

257    Infa challenged the validity of Britax’s Innovation Patents on the ground that they lack the required external fair basis. In particular, Infa submitted that the claims of Britax’s Innovation Patents were not fairly based on the Parent Application, which has a deemed priority date of 9 June 2004, and were therefore not entitled to that priority date.

258    I note that all of the nine Innovation Patents contain drawings which are consistent with the 11 drawings in the Provisional Application, the PCT Application and the Parent Application.

259    I reject Infa’s challenge, and conclude that the claims of the nine Innovation Patents are entitled to a priority date of 9 June 2004. I interpolate here that as a consequence of this conclusion, Infa’s novelty and inventive step challenges based on documents filed after 9 June 2004 cannot be sustained.

Legal principles

260    The issue of external fair basis concerns the priority date on which the impugned patents can rely. A claim of an Australian complete patent application is entitled to an earlier priority date than that of the filing date of the complete application if, for example, the complete application is associated with an earlier provisional application, or is a divisional application divided from an earlier complete application.

261    Priority dates are governed by s 43 of the Act and the Patents Regulations 1991 (Cth). Each claim must have a priority date (s 43(1)) which is the date of filing of the specification or the date determined by the Regulations: s 43(2).

262    The principal relevant regulation determining priority dates is reg 3.12, and particularly sub-regs (1)(c) and (2C) in respect of divisional applications. The effect of reg 3.12 is to accord a priority date to a claim earlier than the date of filing the complete specification if the claim is fairly based on “matter disclosed” in the specification from which priority is sought. In such circumstances, the claim’s priority date would be the date of filing the document in which the matter was first disclosed. Section 79B(1)(a) of the Act also refers to making an application for an invention disclosed in the earlier application.

263    In Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd (2009) 176 FCR 575 at [23-4] Bennett J stated:

[23]    Each claim of a specification must have a priority date (s 43(1) of the Act). Different claims of a specification may have different priority dates (s 43(4)). Generally speaking, the priority date of a claim is the date of filing of the specification (s 43(2)(a)). Section 43(2)(b) provides that the Regulations may provide for the determination of a different date as the priority date. Regulation 3.12(1) relevantly provides that the priority date of a claim of a specification is the earliest of the following dates:

(a)    the date of filing of the specification;

(b)    if the claim is fairly based on matter disclosed in one or more priority documents, the date of filing the priority document in which the matter was first disclosed;

(c)    if the specification is a complete specification filed in respect of a divisional application under s 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to ins 79B(l)(a) of the Act- the date mentioned in reg 3.12(2C).

[24]    Regulation 3.12(2C) provides that the date for a specification to which reg 3.12(1)(c) applies is the date that would have been the priority date of the claim if it had been included in the parent specification. That is, the claims in the divisional which are fairly based on matter disclosed in the parent specification take the same priority date as the claims in the parent.

264    The purpose of a priority document is only to describe the general nature of the invention, its field of application and the anticipated result. More particularly, the purpose of a priority document is to:

describe the general nature of the invention, its field of application, and the anticipated result. Some generality and uncertainty in the provisional specification is permitted and it is not necessary to give all the details as to the manner in which the invention is to be carried out.

(See Lahore’s Patents, Trade Marks and Related Rights, vol 1, Butterworths, Australia, 2001 at 15,020).

265    There may be differences between the claims of the Innovation Patents and the disclosure in the Parent Application: see, eg, Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd (2007) 73 IPR 257 at [66], [105] (Tamberlin J); Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) 78 IPR 463 (‘Delnorth’) at [20-21] (Gyles J); and The Sunnyfield Association v Cronk (2009) 80 IPR 300 at [16-22], [53] and[56] (Tamberlin J); Aspirating IP Limited v Vision Systems Limited (2010) 88 IPR 52 (‘Aspirating IP’) at [93], [98], and [100].

266    This point was also made in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 20, where Lockhart J said:

The relevant principles are stated by Mr Blanco White QC in the fifth edition of his Patents for Inventions, 1983, at para 2-209 in these terms:

It should be noted that the question of ‘fair basing’ upon a provisional specification is not altogether analogous to that of ‘fair basing” upon a complete specification ... It has always been considered legitimate to develop an invention to some extent after filing a provisional specification, and the expression ‘fairly based” in the present context allows for such development.

See also Terrell on the Law of Patents (13th ed, 1982), op cit, pp 63-4, where the learned authors state that the primary object of the provisional specification is to enable the inventor to improve and perfect the invention during the period of “provisional protection”. See also Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 11 IPR 20 at 436 and Rehm Pty Ltd v Websters Security System (International) Pty Ltd (1988) 11 IPR 289; Interact Machine Tools (NSW) Pty Ltd v Yamazaki Mazak Corp (1993) 27 IPR 83.

All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting an inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in its rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional.

267    Justice Yates in Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496 (‘Vehicle Monitoring Systems’) comprehensively set out the approach to take. Despite contrary suggestions by Infa in this proceeding in relation to that judgment, his Honour was well aware of, and did not overlook, the interplay between reg 3.12(1)(c) and reg 3.12(2C). As Yates J said at [120-6]:

The nature of the required comparison

[120]    Regulations 3.12(1)(b) and (c) each require, relevantly, that the claim be “fairly based on matter disclosed” in the specification from which priority is claimed.

[121]    The parties accepted that the expression “fairly based” has the same meaning in this context as it has in s 40(3) of the Act dealing with internal fair basing, namely that there be “a real and reasonably clear disclosure” in the compared specification of that which is claimed: Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274 at [69]. However, the test of fair basis for determining the priority date of a claim is not the same as the test under s 40(3). Under s 40(3), the invention as claimed must be “fairly based on the matter described in the specification”. This comparison alludes to the coordinate requirement of s 40(2)(a) that the complete specification – of which the claims form part – must describe the invention fully. There is no corresponding requirement in relation to a priority document.

[122]    Section 40(3) of the Act deals with the question of claim width: Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240; Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1 at [15]. Section 40(3) of the Act is directed, in a general sense, to ensuring internal consistency between that which is described as the invention, and that which is claimed as the invention. Even so, the requirement is only that the claim be “fairly based”. The provision does not mandate a more stringent requirement. Thus, when considering the circumstances under which the prescription of s 40(3) will have been obeyed, the High Court in Lockwood (at [68]) said:

The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ “an over meticulous verbal analysis”. It is wrong to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.

[Footnotes omitted]

[123]    It was in this context that the High Court addressed and affirmed the requirement for “a real and reasonably clear disclosure” and noted that, even in the context of s 40(3), those words do not limit the relevant disclosure to the description of preferred embodiments. The High Court (at [69]) quoted with approval the following observations in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95:

The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.

[124]    It was in this context that the High Court in Lockwood drew attention to the need to look to the specification as a whole, “putting aside particular parts which, although in isolation they might appear to point against the ‘real’ disclosure, are in truth only loose or stray remarks”: at [69].

[125]    In Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 the Full Court specifically drew attention to the different language used for the purposes of regs 3.12(1)(b) and (c). The Full Court (at 139) said:

The expression “the claim is fairly based on matter disclosed in 1 or more priority documents”, in reg 3.12(1)(b), corresponds with the expression used in reg 3.12(1)(c), concerned with divisional applications, “the claim is fairly based on matter disclosed in the specification”. Both provisions are to be contrasted with s 40(3) of the Act, referring to “the matter described in the specification”. Whatever the precise effect of the definite article in s 40(3), in the regulation, its absence plainly suggests that the fair basis in question need not relate to all the matters disclosed in the respective documents referred to in pars (b) and (c). Paragraph (b), as is made clear by subreg (2)(a), relates to s 38 of the Act, subs (1) of which provides:

“If an applicant makes a provisional application, the applicant may make one or more complete applications associated with the provisional application at any time within the prescribed period.”

This indicates that the provisional application may provide fair basis for several complete applications, and the absence of a definite article which might require one claim to be fairly based on all the matter disclosed in a provisional application seems deliberate and appropriate. That the draftsman’s choice of words was deliberate is also suggested by the final words of reg 3.12(1)(b), in which the expression “the matter” is used to refer to the particular matter that provides the fair basis. Just as the nature of a provisional application, having regard to s 38, may explain the reference to “matter” in par (b), so the nature of a divisional application may explain the use of the same word, again without any article, in par (c).

[126]    These observations make clear that some part or parts of the overall disclosure made in the prior specification can provide “matter” on which a claim can be fairly based for the purpose of assigning a priority date to that claim.

268    Therefore, one must look to the claimed priority specification as a whole when determining whether there is a real and reasonably clear disclosure to found fair basis, focussing on the matter disclosed therein. The task is not limited to isolating only the essential features of the priority disclosure and asking whether they correspond to the integers of the later claim. The “real and reasonably clear disclosure” is not limited to a “bare bones” form of the invention disclosed in the alleged priority document. Some part or parts of the prior specification may sufficiently provide a “real and reasonably clear disclosure” for the purpose of assigning a priority date for a later claim.

Consideration

269    Infa submitted that external fair basis determinations (and for that matter internal fair basis determinations) must be made without reference to Mr Hunter’s (or any expert’s) evidence, for two main reasons.

270    It first argued that fair basis issues are to be determined by the Court alone, on a textual comparison between the relevant claims and the text of the Parent Application (for external fair basis), or the body of the specification and drawings (for internal fair basis).

271    I agree that fair basis is a matter for the Court to determine, upon a consideration of the relevant documents. However, as I have already explained, expert evidence will play a role in assisting the Court in understanding drawings, specifications, combinations of features and the operation of the invention itself. I re-iterate that expert evidence is needed where the Court is required to make an assessment from the perspective of a skilled addressee, as is the case here in considering external fair basis.

272    Infa then submitted that in any event, Mr Hunter’s evidence in his Fifth Affidavit is fatally flawed. It pointed to the fact that in Britax’s instructing letter, Mr Hunter was asked to:

4.    Examine the claims of each of the Innovation Patents, with particular attention to the features highlighted in yellow in the table. In doing so, have regard to the integer construction table at Tab 14 of your previous affidavit.

5.    For each innovation patent, you are asked to provide an opinion whether the invention as so claimed has a basis by way of disclosure, in a general sense, in the body of the Parent Patent. In answering this question, have regard to both the written description and the drawings in the Parent Application.

273    Infa contended that Mr Hunter was not asked to first read the Parent Application and to give his opinion as to what were the inventions disclosed in the Parent Application, as required by s 79B of the Act, nor was he asked to identify the extent of any correspondence between the breadth of the integers or features of the Innovation Patents and the disclosure in the Parent Application. It argued that it was apparent from Mr Hunter’s evidence that he did not have regard to the extent of the disclosure in the Parent Application or whether any of the claims of the Innovation Patents were within or travelled beyond that disclosure.

274    Thus, Infa contended that Mr Hunter took an impermissibly broad approach in finding supporting disclosures, in particular for the “connection means” and “means for connecting” features, as well as connections which were not “direct”. Relevantly, Infa put its submission (as one example) as follows:

Impermissible breadth of ‘connection means’

•    It must be kept in mind that there is no reference to ‘connection means’ in the Parent Application.

•    Nonetheless, at CB D-9, page D-2786, for integer 1.1.6, Mr Hunter says he finds a connection means at the other end of the connection strap in Figure 4 of the Parent Application. If Mr Hunter is referring to buckle 45 in Figure 4, there is nothing in the Parent Application which supports a conclusion that buckle 45 discloses (in the relevant sense) the broader range of components encompassed by ‘connection means’.

•    So too, at CB D-9, page D-2794, in relation to integer 3.1.5 ‘a connection means carried by or with respect to the tether strap’, Mr Hunter finds this feature at page 8, lines 6-7 and in Figures 5 and 8. The text says: ‘The harness 20 is secured with respect to the vehicle through latching hook connector 26, connection strap 44, buckle 45 and latching hook connector 43.’ This passage does not support the proposition that any connection means whatsoever is carried by or with respect to the tether strap. Figures 5 and 8 illustrate only a connection strap 44 connected to a latching hook. There is no disclosure in the Parent Application which supports a conclusion that connection strap 44 (or connection strap 44 and buckle 45) discloses (in the relevant sense) the broader range of components encompassed by ‘connection means’. The same comments apply to CB D-9, page D-2805, in relation to integer 6.2.4.

•    And similarly at CB D-9, page D-2802, in relation to integer 5.1.7 ‘a connection means carried by the tether strap’, Mr Hunter again says he finds this feature at page 8, lines 6-7 and in Figures 5 and 8, but there is no disclosure in the Parent Application which supports the broader grasp of ‘connection means’.

•    Again, at CB-9, page D-2809, in relation to integer 7.1.12 ‘to be secured with respect to said anchorage point by a connection means carried by or with respect to the tethering means’, Mr Hunter says he finds this feature in Figure 8, but there is no disclosure in the Parent Application which supports a conclusion that any item in Figure 8 discloses (in the relevant sense) the broader range of components encompassed by ‘connection means’.

Impermissible reliance on direct to support indirect connection

•    At CB D-9, page D-2788, in relation to integer 1.5.6, Mr Hunter finds the feature of the tether strap being secured with respect to a head end of the backrest portion (of the child safety seat) in Figure 4. But Figure 4 shows only a direct connection between tether strap 40 and the head end of seat shell 30, no indirect or other connection is disclosed: refer Parent Application specification at page 7, lines 18-19: ‘A tether strap 40 is connected at one end to the seat shell 30 at connection points 41 and 42,’. ‘With respect to’ however means ‘directly or indirectly’: see Construction Decision at [296] re 1.1.2.

Impermissible breadth of ‘means for connecting’

•    At CB D-9, page D-2906, in relation to integers 6.3.2 and 6.4.2 ‘the tether strap incorporates means for connecting both the tether strap and a child safely harness to an anchorage point’, Mr Hunter finds this feature in Figure 8, but there is no disclosure in the Parent Application which supports a conclusion that any item in Figure 8 discloses the breadth of the claim to all ‘means for connecting’.

275    In my view, the evidence of Mr Hunter is of assistance and enables the Court to consider the extent of disclosure in the Parent Application and the claims in the Innovation Patents. Although Mr Hunter was directed to specific aspects of the Parent Application, he provided an opinion on the disclosure “in a general sense” of the Parent Application and then considered the claims in the Innovative Patents. Mr Hunter appropriately referred to specific individual references in the Parent Application in considering, as a skilled addressee, the nature and extent of the disclosure in that Application. Infa led no conflicting evidence that it relies upon. Infa does not rely upon any evidence of the way in which a skilled addressee would read the relevant terms in the Parent Application, or how a skilled addressee would understand any apparent discrepancy between the matter disclosed and the terms of the Innovation Patents.

276    I consider that Infa, as the above submission demonstrates, takes an unduly narrow approach. The fact that there is no specific reference to say “connection means” does not lead to the conclusion Infa contended. Mr Hunter, viewing the Parent Application, indicates where the inventions later claimed are sufficiently described and disclosed. There may be differences between the disclosure in the priority document and the later invention. I do not consider it necessary for external fair basis that what is claimed in the Innovation Patents must be described in the same terms as the Parent Application. In addition, the Innovation Patents may permissibly contain a further development or refinement of the idea of the invention in the Parent Application, as has occurred here. This is to be contrasted with circumstances in which an entirely new feature is introduced to the extent that it constitutes a departure from the “idea of the invention” disclosed in the relevant priority document. It is also to be contrasted with the position where the Parent Application contains something which is inconsistent with the alleged later invention claimed.

277    Infa, in many circumstances, relied upon specific terms not being carried through to the Innovative Patents. As I have indicated, it is immaterial to an assessment of fair basis whether the precise words (such as “connection means”) are present in the Patent Application specification, as long as those terms of the Innovation Patents (relevantly here, as construed in the Construction Judgment) are included in the “idea of the invention” disclosed in the Parent Application.

278    The question is whether any modifications or refinements to the features claimed in the Innovation Patents add “something new into the combination which represents a departure from the idea of the invention described in the earlier document”: Delnorth at [20-1] (Gyles J). This aspect of his Honour’s reasons was not disturbed on appeal.

279    In my view, each of the Innovation Patents align sufficiently with the Parent Application as being refinements of aspects of the “child safety seats” which was the subject of the Parent Application.

280    I make one other observation. Infa’s contention is contradicted by its own submission in relation to novelty, namely that the claims of the Innovation Patents are anticipated by the Parent Application. Such a submission necessarily implies Infa’s acceptance that the Parent Application contains a “real and reasonably clear disclosure” of the relevant essential features of the claims of the Innovation Patents. Consequently, the corollary of Infa’s submission on novelty is its implied submission that the Innovation Patents are fairly based on the Parent Application. As Yates J said in Vehicle Monitoring Systems at [201]:

Secondly, the respondent specifically advanced the parent specification as an anticipatory disclosure of the invention as claimed in all claims. Had I found the priority date of the claims to be the deferred date, I would also have found that none of the claims of the patent would have been novel over the prior art information disclosed in the parent specification. Thus, on that basis, the claims would have been invalid and could not have been infringed. But if the disclosures in the parent specification anticipate the invention as claimed (as the respondent contended), the claims must at least pass the threshold of being fairly based on matter disclosed in the parent specification, in the sense that there must be a real and reasonably clear disclosure of the invention as claimed. I reject the respondent’s contrary submission. It can be seen, therefore, that the respondent’s challenge to validity, based on the prior publication of the parent specification, is self-defeating because that challenge provides an undeniable foundation for finding that the priority date of the claims is not the deferred date.

(Emphasis added.)

281    Having made those general conclusions which dispose of Infa’s challenge on the basis of external fair basis, I now proceed to address some of the specific matters raised in Infa’s submissions in relation external fair basis.

Not limited to invention disclosed in Parent Application

282    Infa submitted that the claims of all nine Innovation Patents are not entitled to claim priority from the Parent Application, because they do not disclose an invention comprising of one or more of the four “aspects” of the invention as described in the Parent Application, namely:

(a)    a child safety seat arrangement including a harness combined with a first mounting arrangement to secure the harness with respect to a vehicle, the first mounting arrangement being independent of the safety seat;

(b)    a child safety seat arrangement including in combination a seat shell having at least one aperture and a harness to hold the child in the seat shell, the harness having two shoulder straps, the harness passing through at least one aperture in the seat shell;

(c)    a seat shell for a child safety seat arrangement having apertures through which one or more parts of the harness can be passed; and

(d)    a harness for a child safety seat arrangement, the harness including a main shoulder strap for looping behind a seat shell to provide two shoulder straps to extend over a child’s shoulders.

283    As I have explained by reference to the authorities referred to above, those descriptions do not limit the matter disclosed in the Parent Application for the purpose of determining whether there is a “real and reasonable disclosure” in the context of the external fair basis challenge. Therefore I do not accept the basic premise upon which Infa puts its submission by reference to the four aspects of the invention.

284    There are no statements in the Parent Application that the disclosure was to be limited in this way, and there is no reason why the disclosure of the Parent Application in the context of the external fair basis challenge is limited to the four aspects of the invention referred to above.

Harness not secured independently of seat shell

285    Infa submitted that the Parent Application requires that the harness be secured independently of the seat shell, and that the claims of the relevant Innovation Patents are not so limited. As a related argument, it submitted that all of those patents describe an indirect relationship between the harness and the seat shell which contravenes the independence requirement.

286    The relevant “independence” referred to in the Parent Application is to be understood in the context of the “disadvantage” which the patent seeks to overcome, namely reliance “on the mechanical integrity of the seat shell to secure the child with respect to the vehicle”: Parent Application at 2.7-12. As long as the connection of the harness to the vehicle is not reliant on the integrity of the seat shell, the requisite “independence” is achieved. In applying this contextual reading, there is no requirement that the harness may not be indirectly connected to the seat shell. There is likewise no requirement that the mounting arrangements for the harness and the tether strap be completely independent of each other. In fact, the Parent Application (at 2.29-3.11) contemplates shared mounting arrangements:

Although the first and second mounting arrangements may be independent of each other, they may also include shared components. Indeed, as vehicle anchorage points often provide only one aperture or fitting to receive a latching hook connector, it may be preferable for the first and second mounting arrangements to include shared components.

Accordingly, in some embodiments, one of the mounting arrangements may include a connecting component to connect to the vehicle anchorage, which is further provided with an aperture to receive a connecting component which is part of the other mounting arrangement. The connecting component which is connected to the vehicle anchorage could then be shared by both the first and second mounting arrangements. There are, of course, other ways in which a component may be shared.

Direct connection

287    Infa submitted that the various claims of the Innovation Patents which use the term “with respect to” (which, based on the Construction Judgment can include an indirect attachment) extend beyond the scope of the direct connections described in the Parent Application.

288    Infa did not articulate the relevant terms of the Parent Application, and did not explain why the Court should construe the relevant terms of the Parent Application in the way in which it sought. I do not find that the terms in the Parent Application are limited to a direct attachment.

Broader terms used

289    Infa submitted that there were various claims which contained components or features which were described in broader terms than the specific terms used in the Parent Application. These included:

(a)    A “connection strap” (as opposed to, for example, the broader “connection means” or “connection means arrangement”);

(b)    “tethering means” (not, for example, “tether strap” as claimed); and

(c)    “connector” limited to latching hook (not the broader “connector” as claimed).

290    In my Construction Judgment, I drew a distinction between the construction of the terms “tethering means” and “strap” in that the former was a broader term: see, eg at [380] and [387]. As I mentioned above, that construction exercise was based on expert evidence and was performed in the context of the relevant patents in suit. Those determinations cannot simply be applied to terms of the Parent Application. Further, Infa did not provide any evidence that the use of those terms in the Parent Application would be construed by a skilled addressee as narrowly as Infa contends.

291    In relation to “connector”, Infa contended that the term as used in the Ninth Patent is broader than the same term in the Parent Application, which it argued only includes a latching hook. It is not necessary that all types of “connectors” claimed in the Innovation Patents are specifically referred to in the Parent Application, in order to establish fair basis. In any event, Mr Hunter found that this feature is disclosed by reference to figure 6 of the Parent Application.

Precise wording not used

292    Infa pointed to a number of words (such as “carried by”, “head end”, “adapted” and “body”) which are present in various claims of the Innovation Patents, but which do not appear in the Parent Application. It contended that such claims were therefore not fairly based.

293    In doing so, Infa is employing an “over meticulous verbal analysis”, as cautioned against in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 1) (2004) 217 CLR 274 (‘Lockwood’), in demanding exact matching of terms between claimed features and an associated disclosure being relied on to provide fair basis.

294    There is no requirement that the particular terms of a claim be employed in the relevant prior disclosure. This applies equally to the above terms such as “head end” as to the terms “carried away”, “extending away”, “connection means”, “tethering means” or “means for connecting”, “incorporates”, “carried by or with respect to”, and “extending towards the child safety seat”.

295    In relation to “carried by”, for instance, Mr Hunter had no difficulty in establishing a basis for this integer, referring to figure 4 and page 9, line 5 of the Parent Application. Mr Hunter approached this integer with the broad understanding that fixing of the connection strap to the tether strap is not necessary.

296    In the context of a tether strap as being “adapted to tether the child safety seat” or a safety seat and harness as being “adapted to be secured to a single anchorage point”, Mr Hunter found these features disclosed by reference to figures 4-9 (adapted to tether the child safety seat) and figures 4-5 (child safety seat and child safety harness adapted to be secured to a single anchorage point).

297    Further, Mr Hunter found the term “adapted” or “adapted to cooperate” to relate to a feature disclosed by reference to figures 4-9 of the Parent Application.

298    As another specific example, in relation to “body”, Mr Hunter found this feature disclosed by reference to figure 6 of the Parent Application.

Features not present

299    Infa contended that various claims of the Innovation Patents describe features or components which are not disclosed in the Parent Application and are “new matters”, including:

(a)    a harness comprising a length of strap (wherein a length adjustment means is incorporated in the harness) having at least one loop at each end;

(b)    a connection means which is “part of” the tether strap, the connection means extending away from the tether strap toward the safety seat;

(c)    a connection means attached to a strap ;

(d)    a latching hook connector as part of the connection means; and

(e)    a first and second strap.

300    In relation to (a), in my view this is not correct. This type of strap was disclosed in the Parent Application at 3.13-7 where it is stated:

The harness may include two shoulder straps to extend over the child’s shoulders, along their chest. These shoulder straps may be provided by looping a main harness strap behind the seat shell and through apertures in the seat shell. Further, the shoulder straps preferably each include a loop towards their bottom to receive a vehicle seat belt.

301    In relation to (b), Infa mischaracterises the relevant claims of the Third Patent, which do not refer to the connection means being “part of” the tether strap.

302    In relation to (c) and (e), I find that those features were disclosed in the Parent Application, on the basis of Mr Hunter’s evidence.

303    In relation to (d), contrary to the submission of Infa, the feature of “latching hook connector” is not recited as a feature in claims 1, 2 and 5 of the Third Patent. In any event, I do not consider that this specific reference to a latching hook connector is not disclosed in the Parent Application. The so called “new matter” referred to in the particulars expands on the original disclosure with reference to the figures in the Parent Application.

Flexible connection strap

304    Infa contended that in the Parent Application the term “connection strap” was limited to flexible or webbing material. It argued that as a result, the “connection strap” claimed in the Innovation Patents, which was construed in the Construction Judgment (at [311]) to include different materials (including metal) in different contexts, lacked fair basis on the Parent Application. However, that term as it appears in the Patent Application is not so limited, and Mr Hunter found this claimed feature to be disclosed in the Parent Application.

Omnibus claims

305    Infa contended that the descriptions and figures to which the omnibus claims in the Sixth and Eighth Patent refer, contain “new matter and labels” and amendments to the matter disclosed in the Parent Application. However, Mr Hunter found that such “new matter” and amendments were fairly based on the disclosure in the Parent Application. I accept his reading of the figures as the skilled addressee.

306    For the above reasons, I reject Infa’s challenge on the ground of lack of external fair basis.

INTERNAL FAIR BASIS

307    Infa submitted that the relevant claims of the nine Innovation Patents and the Tenth Patent lack the internal fair basis required under s 40(3) of the Act: “[t]he claim or claims must be clear and succinct and fairly based on the matter described in the specification”.

Legal principles

308    The parties accepted that the principles to be applied in considering internal fair basis are found in Lockwood, in which the High Court set out the approach to be taken in assessing compliance with the fair basis requirement in s 40(3) of the Act.

309    In Lockwood, their Honours made it clear that a consideration of s 40(3) does not import a consideration of novelty, inventive step, or innovative step. The application of s 40(3) requires an understanding of the invention described in the specification, which is reached by considering the body of the specification (including the consistory clause). In doing so, it is wrong to employ an “over meticulous verbal analysis” or to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential integers of the claim in question. The requirement for a “real and reasonable clear disclosure” does not limit those disclosures to a preferred embodiment. A claimed invention within the scope of the broadest description of the invention in the specification can be fairly based.

Preliminary observations

310    I make some general observations before descending into the detail of the particulars of invalidity relating to fair basis relied upon by Infa.

Mr Hunter

311    It is important to observe that Mr Hunter, who did provide evidence in relation to internal fair basis, did opine that all the claims were disclosed in the specification. I have already indicated my approach to his evidence, which I have accepted.

Modifications statement

312    Britax relied on the following statement (which I will call a “modifications statement”) appearing in each of the Innovation Patents to argue fair basis in the absence of supporting disclosure (eg in the First Patent at 7.15-21):

Although a number of embodiments of the present invention have been described in the foregoing detailed description, it will be understood that the invention is not limited to the embodiments disclosed, but is capable of numerous rearrangements, modifications and substitutions without departing from the scope of the invention. Modifications and variations such as would be apparent to a skilled addressee are deemed within the scope of the present invention.

313    Infa submitted that in each patent where it appears, the statement suffers from the fatal defect that it does not disclose anything. According to Infa, it does not identify what the patentee in each case considers is the “invention” and it does not disclose the nature of any rearrangements, modifications or substitutions which might be made without departing from the scope of the invention. Infa submitted it is an “empty statement, empty of content and meaningless” and “at most, it invites idle speculation”.

314    It is not unusual to have statements of a similar import in patent specifications, which have been referred to in some of the authorities.

315    In Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 (‘Welch Perrin’), the High Court considered the following statement:

Although I have herein shown and described my invention in what I have conceived to be the most practical and preferred embodiments, it is recognized that departures may be made therefrom with the scope of my invention, which is not to be limited to the details disclosed herein, but is to be accorded the full scope of the claims so as to embrace any and all equivalent devices and systems.

316    At 614 the High Court said:

This seems to mean no more than that the invention is not to be regarded as restricted to machines made exactly as described, but that any machine covered by the words of the claims is to be considered as within the scope of the invention. This is little more than a cautiously introduced assertion of the doctrine that a mere substitution of known mechanical equivalents will not suffice to avoid infringement. But the appellant put forward a different view of this sentence and based on it an argument that, briefly stated, ran as follows: it is not possible to spell out from the body of the specification what is the invention as distinct from the particular embodiment of it described: an incomplete description of an invention may sometimes be completed by filling in gaps in the body of the specification by reference to the claims: but that can only be done if the gap which has to be filled is filled by some feature appearing in all the claims. For this -proposition the decision of Morton J., as he then was, in United Shoe Machinery Corporation's Application (1), was relied upon. It was said that here the claims are so diverse that they could not be treated as by reference completing an incomplete description. This argument was not accepted by Menzies J. He said that in this case " it is possible upon a consideration of the specification as a whole, including the claims, to find a description of the invention; and that, in so far as any claim does not claim that invention, it is itself invalid, but its inconsistency with the general description of the invention does not totally destroy the specification" (2). His Honour was, we think, perfectly right in this. The words on which the appellant relies do not really operate to incorporate into the description of the invention in the body of the specification matter which appears for the first time in the claims, and Lord Morton's propositions referred to above are therefore not applicable.

(Emphasis added.)

317    In Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21 (‘Kimberley-Clark’) the Full Court considered the following statement described as the “spirit and scope” of the invention:

Having thus described the invention in detail, it should be apparent that various modifications and changes can be made without departing from the spirit and scope of the present invention. For example, a wide variety of individual sterilization wraps have been described herein. Thus, a wide variety of combinations of inner and outer wraps are possible including combinations of both disposable and reusable sterile wrap sheets. The inner and outer wraps may be made from the same or different basis weight materials to engineer specific properties into each of the wraps. In addition, a wide variety of bonding techniques were also disclosed which may be used alone or in combination with each other to impart varying bond patterns to the sterilization wrap system of the present invention.. Consequently, these and other modifications are contemplated to be within the spirit and scope of the following claims.

318    As to this statement Greenwood and Nicholas JJ said at [75]:

It is convenient to consider the last mentioned argument at the outset. Statements as to the “spirit and scope” of the invention are often found in the bodies of patent specifications. They were characterised by one learned author as devices aimed at overcoming what he perceived at the time of writing to be the judicial tendency towards literal interpretation which instead created uncertainty and added nothing to the true construction of the claims: see Sir Arthur Dean, “The Claiming Clauses of Patent Specifications” (1949) Res Judicatae 144 at 148. In any event, it is now well established that a statement of this kind does not make inessential what would otherwise be an essential requirement of a claim: Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 at 614. And while Kimberly-Clark argued against the construction of the relevant claims adopted by the primary judge, it did not advance a case based upon the distinction between essential and inessential integers and the use of known mechanical equivalents as substitutes for the latter. That it did not do so is entirely understandable. As will be seen, the form of the claims appearing in each of the patents in suit, not to mention their sheer multiplicity, does not permit us to hold that any requirement that the sterilization wrap be made from separate sheets is an inessential integer of the relevant claims: see Walker v Alemite Corporation (1933) 49 CLR 643 at 656-657, Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246.

319    Any statement made in a patent is not to be ignored, but like the consistory clause, is to be read in the context of the claim as a whole.

320    The modifications statement in this proceeding is not the same as in Welch Perrin or Kimberley-Clark. However, it is very similar to the clause considered and applied in Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 (‘Old Digger’). In the appeal from that decision, whilst submissions were made as to the modifications statement, which stated that “[m]odifications and variations such as would be apparent to a skilled addressee are deemed within the scope of the present invention”, no further explicit discussion was made relating to the approach of the trial judge on this aspect.

321    I adopt the approach of the trial judge in Old Digger. If a witness gives evidence that a modification would be apparent to a skilled addressee, the Court would be entitled to rely upon such evidence in construing the ambit of the claims, provided the scope of the claims is not impermissibly enlarged. If, for instance, the claim itself indicated that a modification has been deliberately left outside its scope, then the modifications statement would have little or no work to do in that circumstance.

322    If it is apparent to the skilled reader that the claim could not have been intended to exclude minor variations which would have no material effect on the working of the invention, then the exact compliance with the particular descriptive word or phrase in a claim is not to be read into the claim: see eg the analysis of Beaumont J in Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 at [41].

323    Infa also criticises that Britax relies on the following statement appearing in each of the Innovation Patents to argue fair basis in the absence of supporting disclosure, namely (eg in the First Patent at 7.4-6): “Of course, the mounting arrangements for securing the harness 20 and safety seat 30 with respect to the vehicle can take other forms”.

324    Infa submitted that this modifications statement suffers from the defect that it does not disclose what those “other forms” might be, or when those undisclosed other forms may be employed. Infa submitted that the statement is merely speculative and does not provide any “real and reasonably clear disclosure”.

325    Whilst the reference to “other forms” cannot expand the scope of the claims outside what the body of the specification read as a whole discloses to be the invention, it does indicate that the “mounting arrangements” may include some variations in form. Evidence of the skilled addressee would assist the Court in this regard, as it would in relation to any consideration of the modifications statement.

326    It is then to be observed that Infa did not rely upon expert evidence directed to the internal fair basis ground of challenge, contending the Court itself is in the position to simply compare the specification with the claims. No evidence was said to be required, even to interpret the drawings or figures, or to put them in context.

327    On the other hand, Mr Hunter gave evidence that for all claims of each of the patents in suit, there is a general disclosure and drawings supporting the subject matter of each of the claims of each of the patents. There was a criticism of this evidence, apart from the question of whether he was a skilled addressee, on the basis Mr Hunter’s evidence was mere assertion. I have not accepted this criticism. The evidence necessarily involves his reading of each Patent, interpreting the figures and drawings as the skilled addressee would view and interpret them. Mr Hunter then makes a conclusion based upon this approach. In many instances, as Infa itself contended, the conclusion is to the Court self-evident, although not in accord with the contentions of Infa. To say that there is no reasoning or detail in the evidence of Mr Hunter is to disregard the nature of the evidence he is giving as the skilled addressee expressing his own opinion upon reading the patent as what the notional skilled addressee would take from the document being considered.

Consistory clauses

328    Britax relies upon the consistory clauses in each patent. Infa contended that Britax’s reliance on the consistency clause is misplaced, and cannot be a basis for each of the impugned claims.

329    Infa identifies that there is no consistory clause for the following claims in suit:

    First Patent — claims 2 and 5;

    Second Patent — claims 2 to 4;

    Third Patent — claims 2 to 5;

    Fourth Patent — claims 2 to 4;

    Fifth Patent — claims 2 and 3;

    Sixth Patent — claim 4; and

    Tenth Patent — claims 1 and 19.

Whether there is a consistory clause or not, the Court must in this proceeding consider the whole of the specification, determining its true scope.

330    As to the purpose and possible significance of a consistory clause, Greenwood and Nicholas JJ in Kimberly-Clark at [46-7] made the following observations:

[46]    Patent specifications often include a general description or summary of the invention which may include a consistory clause. A consistory clause is in the nature of a general description of an invention which is often expressed in terms which mirror the broadest of the claims: Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 at 612. Such clauses are not compulsory but are routinely included by those responsible for drafting patent specifications often with a view to providing fair basis for the broadest claim. Whether or not a consistory clause does so will depend upon whether there are other matters disclosed in the body of the specification which show that the invention is narrower than that described in the consistory clause: Lockwood Security Products Pty Ltd v Doric Products Limited (2004) 217 CLR 274 at para [99].

[47]    The part of a patent specification which is put forward by the patentee as a general description or summary of the invention may have a significant role to play in the construction of a claim which is open to different interpretations. This is because the general description or summary of the invention will often describe the invention by reference to features that the skilled addressee would understand to be common to all possible embodiments of the invention.

331    Undoubtedly, circumstances where there might be lack of fair basis are where the consistory clause is inconsistent with the rest of the description in the specification, or the rest of the description in the specification makes it clear that the invention is narrower than the consistory clause. Hence, as I have said, the whole of the specification needs to be considered.

332    The High Court in Lockwood discussed the role of consistory clauses at [91-3] and [99-100]. At [91] the Court stated that:

Section 40(3) would only be satisfied if the specification read as a whole corresponded with the consistory clause; it cannot be satisfied by mere assertion in a consistory clause.

333    At [99] the Court said:

... the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 612-13). An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.

334    In Apotex Pty Ltd v Les Laboratoires Servier Pty Ltd (No 2) (2009) 83 IPR 42 after referring to the Lockwood decision and the High Court’s discussion of the role of the consistory clause, Bennett J stated (at [37-8]) that:

coincidence of language, such as in a consistory clause, is insufficient, on its own, to provide fair basis if that is inconsistent with the description of the invention when considering the specification as a whole

and that:

the inquiry is into what the body of the specification, read as a whole, discloses as the invention.

335    Similarly, in Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132 (‘Sigma’)at [90], Bennett J said that:

it is not simply a matter of matching a consistory clause or other stray phrases with a claim. It is a question of comparing the invention claimed with the invention disclosed. Frequently, indeed most often, there is no real difference; sometimes there is.

336    Bennett J added (at [91]) that if the consistory clause is not consistent with the description of the invention in the body of the specification considered as a whole, or is wider than that invention, the mere insertion of a statement mirroring the claim does not, of itself, provide fair basis for the claim. Justice Nicholas made similar general comments at [169]. At [243] Yates J summed up the position in this way:

A consideration of the entirety of the specification of the Amended Patent, with its express incorporation of the entire disclosures of the Grandparent Application and the Parent Application, and the retention of the text concerning the “fruitless” endeavours to produce an ER formulation by hydrogel tablet technology, which was “impossible to achieve”, shows that the consistory clauses do not reflect the description of the invention in the light of the specification as a whole: Lockwood at [87]; Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29 at 50.

337    Justice Yates added at [247] that on the facts in Sigma, the method involving ER formulations was a matter that was effectively disclaimed in the specification, and therefore there could be no basis to a claim for such a method. There are no such implicit or explicit disclaimers in the body of the specifications of the patents under challenge.

338    In Vehicle Monitoring Systems, Yates J again considered an internal fair basis challenge, finding at [142-3] that the claims were consistent with the consistory statements and with the general description of the invention as contained in the complete specification when read as a whole. At [143] Yates J described the Court’s process of reasoning in establishing internal fair basis as follows:

The respondent sought to treat all these disclosures, individually and cumulatively, as mere stray phrases that do not truly describe the invention. I do not accept that contention. It is true that the complete specification refers on many occasions to the use of wake-up signals. However, on a fair reading of the specification, those references are directed principally to embodiments where a portable or mobile data collection apparatus is employed. This is not to say that wake-up signals cannot be used where the data collection apparatus is at a fixed location. But there is no need for wake-up signals when a data collection apparatus is at a fixed location. In my view, this is made clear by the complete specification itself, especially (but not exclusively) in the passages I have quoted in [38] and [39] above. The specification makes plain that the invention it describes is not one limited to embodiments involving a portable or mobile data collection apparatus. It also makes plain that the invention it describes includes embodiments that employ a persistent wide area network. The recognition in the specification that some embodiments of the invention have advantages that others do not- because, advantageously a portable or mobile data collection device can be used - does not mean that the other described embodiments cannot be claimed validly.

339    All the nine innovation patents contain a consistory clause relevant to claim 1 of each patent. Thereafter each patent contains a description of preferred and optional features under the heading of Summary of Invention before dealing with a description of preferred embodiments. Aspects of those preferred or optional features then appear in the subsidiary claims. In my view, there is no inconsistency between the relevant consistory clause and the rest of the description for each patent, nor is there any claimed feature of the subsidiary claims which has no support in the specification description. Even where there is no consistory clause, the ambit of the innovation is disclosed in the specification such as to support the claims.

340    Having made these general conclusions, I now proceed to address some of the specific matters raised in Infa’s submissions in relation to internal fair basis by reference to identified terms or topics.

Innovation Patents

“Connection means”

341    Infa approaches this term, and others, by seeking to find references to such a term in the specification. This is too narrow an approach. To the extent that the term “connection means” (or other term) appears in the consistory clause or specification, this indicates that the “connection means” is not limited to the only feature which is disclosed in the specification strap (ie a buckle). There is no indication to the contrary that “connection means” cannot be interpreted and encompass a connection means as I have done in the Construction Judgment: see, eg, at [318], [348-9], [357] and [366].

342    Infa submitted that unlike in Lockwood, there is no explanation in the specification, of what a connection means may be or what form it may take. The term is not used in relation to the drawings. Infa contended that it is only via a process of elimination, and in a deliberate search to give possible content to the term, that one could seek to construe the buckle as a disclosure of something which could possibly fall within the scope of “connection means”.

343    It follows according to Infa that “connection means” in each of the relevant claims lack fair basis unless restricted to the only feature which is disclosed in the specification as at the relevant end of the connection strap, namely, a buckle. The term not being so restricted, each of the claims lack fair basis.

344    The essence of Infa’s internal fair basis challenge is that the term “connection means” is too broad, and Infa alleges that the disclosure in the drawings is limited to the connection strap having a buckle at the other end.

345    I will look at the First Patent as an example. Claim 1 of the First Patent is directed to a connection strap carried by the tether strap and having a connection means at the other end. Claim 5 is directed to a child safety seat including a seat, a tether strap incorporating a connection strap having a connection means at the other end, and a harness that is secured to the connection means.

346    The term “connection means” may be used to embrace all types of connection arrangements even though only a limited number are described in the body of the specification. Use of “means” type language is allowable in the claims unless there is a specific disclosure in the body of the specification that to a skilled addressee would be taken to limit the form of connection arrangement falling within the scope of the claims. There is no such limitation in the Patent, nor was any limitation seen by Mr Hunter.

347    Then, looking at the Third Patent as an example, Infa agreed that the description at 5.28-30 particularises the single embodiment illustrated in figures 3 to 5. Infa submitted that the reference to the illustrated embodiment does not, however, disclose connection means other than that illustrated and that described at 3.33-4 (comprising a strap adjustable in length or with a separate extension strap). Infa submitted that the text at 2.34-5 does not assist in determining the scope of “connection means”, and merely adds a layer of inconsistency to the disclosure.

348    Infa then submitted, by reference to the Third Patent, that the “connection means” in the claims is different from and clashes with the connection means at 2.34-5, 3.33-4 and at 5.28-30. The patent at 2.34-5 describes the connection means as having an active role —that of securing the tether strap — the connection means allows attachment of the harness while also securing the tether strap to the same anchorage point. If the connection means secures the tether strap, it cannot be carried by or with respect to the tether strap. As to 5.28-30, the connection means in this embodiment is all of the connection strap (44), the aperture in the buckle (45) and the latching hook connector (43). Since the tether strap (40) is carried by or with respect to latching hook connector (43) — that is, by part of the connection means — this embodiment of the connection means clashes with the requirements of the connection means in the claims. In addition, the extending away feature of the claim is not disclosed.

349    However, in my view there is no contradiction between the disclosure at 2.34-5 and the disclosure at 5.28-30 as claimed by Infa. The latter refers to “connection means which in this embodiment comprises a connection strap 44, an aperture in buckle 45 and latching hook connector 43”, and is of one embodiment only. The former appears in a consistory clause, is consistent with the claims, and is a broader description of the invention than one embodiment only.

350    It is convenient to observe here that Infa has alleged (for example in relation to the Seventh Patent integer 7.4.6) that the inconsistent, contradictory and various uses of “means” (eg “connection means” and “tethering means”) shows that there is a lack of fair basis.

351    I do not accept this submission. All of the features of “connection means” and “tethering means” are disclosed in the consistory clause, the body of the specification and the figures. There is nothing in the body of the specification that contradicts or limits the use of the terms in the claim in the way sought to be advanced by Infa.

352    Further, Infa argued that the term “connection means arrangement” in the Eighth Patent (integer 8.4.1) is unsupported, so that none of claims 1, 3 or 4 of the Eighth Patent are fairly based on the disclosure in the specification.

353    There is specific reference in the consistory clause to a “connection means arrangement”. There is nothing in the body of the specification that contradicts or limits the use of the terms in the claim in the way sought to be advanced by Infa.

“With respect to”

354    Infa in some instances refers to parts of the specification where only direct securement is disclosed. However, in these instances the figures (as interpreted by Mr Hunter) indicate an indirect attachment. I have already considered the term “with respect to” in the Construction Judgment as including both direct and indirect securement: see, eg, at [296]. It is important to recall that when looking at inventions for tether strap arrangements, the focus is on securing to the vehicle independently of the child safety seat. In other words, the harness is capable of being secured independently of the seat shell. Obviously, securement of the harness is dependent on the securement of the tether strap, and this can be achieved in the Innovative Patents by shared components or indirect securement.

“Anchorage point”

355    Infa raises the contention that the specification does not contain the term “anchorage point”. However, this approach is too narrow by seeking to search for particular words or terms in the specification to match the claims. I find that the term refers in context to anchorage locations or apertures, as these terms are understood in their plain meaning and in context as read by Mr Hunter. There is disclosure within the specification of anchorage locations as understood by the skilled addressee. It is also argued by Infa (in relation to the Seventh Patent) that apart from the consistory statement there is no disclosure in the specification of an arrangement whereby both the tethering means and the connection means are secured to the same anchorage location on the vehicle. However, in my view, there is nothing in the specification that would otherwise indicate that the same anchorage location could be used (if this is in fact a requirement of claim 4 of the Seventh Patent). Mr Hunter had no difficulty with observing that claim 4 was supported by the description in the specification.

“Carried by” and independent harness

356    Infa contended that the specification describing a harness which is independent of the seat shell in order to demonstrate, as well as an absence of the concept, that there are disclosures in the specification which are contrary to the “carried by” feature in the claims. Infa contended there is no disclosure of the words “carried”, “carry”, “carries” or equivalent outside the consistory statement; on the other hand, the drawings, and the description of the drawings, are inconsistent with the feature that the connection strap is carried by the tether strap.

357    Infa seeks to demonstrate its independence point by postulating what would happen if the tether strap was cut. However, the concept of independence described in the specification relates to the occupant of the safety seat remaining secured to the vehicle anchorage point other than by dependence on the seat shell. In any event, a reference to the figures reveals that even if the tether strap was cut the harness would remain connected to the vehicle anchorage point as desired by the series connection arrangement of the Innovation Patents. Finally, failure of the tether strap, by cutting or otherwise, is not part of the problem with which the invention is concerned.

358    In my view there is a real and reasonably clear disclosure of the feature of the connection strap being carried by the tether strap. I also agree with Britax’s submissions that Infa’s challenge relating to the independence of the harness is based on a misunderstanding of the term “independently” at 3.7-13 of the First Patent. In the context of the specification of the First Patent for example, “independently” means that the harness is not secured to the seat shell but is in fact secured independently of the seat shell to a vehicle anchorage point. Should the integrity of the seat shell fail then the harness will still operate to secure the child. This is stated at 3.7-13:

Current arrangements rely on the mechanical integrity of the seat shell to secure the child with respect to the vehicle. In the event of a collision, the collision loads are applied to the seat shell. Therefore, the safety of the infant is dependent on the integrity of the seat shell. However, this disadvantage is alleviated with the present invention, where the upper securement point of the harness is able to be secured independently of the seat shell and with respect to the same anchorage point to which the tether strap is connected.

359    Infa also contended that there is a failure to include the feature that the connection strap is connected or connectable to the harness in the claims. However, it is not necessary that the harness be explicitly included as a feature of the claim. Contrary to Infa’s submission, the focus of the invention as described is upon the tether strap aspect of the invention and its interrelationship with the connection strap, and not on the harness and the securing of that harness to a vehicle independently of a child safety seat.

Separate components

360    Infa submitted for example in relation to the Third Patent, integer 3.4.6 relates to the fact that claim 3 provides that the connection means is attached to the latching hook connector, thus indicating that the connection means and the latching hook connector are separate features. This is said to be inconsistent with the body of the specification at 5.28-30, which states that the connection means comprises the latching hook connector (inter alia), that is, that it is part of the connection means, not separate from it.

361    Infa contended that the scope of “connection means” is not explained in the specification. Apart from the consistory statement and the claims, the term appears only at 2.34-5, 3.33-4 in respect of an adjustable strap or extension strap and in connection with the embodiment at 5.29-30. Infa contended that the passage at 2.34-5 does not assist in determining the scope of “connection means”. The statement at 5.29-30, with the adjustable strap of 3.33-4, stands alone as an explanation of what an embodiment of “connection means” can include, but it is inconsistent with the wording of claim 3.

362    Again, I consider Infa’s approach to be incorrect. It relies upon one embodiment as being the source of an alleged inconsistency within the specification. The description at 5.28-30 as relied upon by Infa is describing only one embodiment of the invention- that in figures 3 to 5.

Connection means and tether strap

363    Infa submitted that claim 5 in the Third Patent requires the connection means to be separate from the tether strap, where in the body of the specification at 2.25-32 (the consistory statement for claim 1), the tether strap is stated to comprise (2.27) a strap (2.28-9) and a connection means (2.30-2). This is said to result in a clear inconsistency between the claim and the body of the specification.

364    Infa’s argument is as follows. The Construction Judgment has construed “tether strap” as comprising the strap alone (at [339]). Claim 5 is inconsistent with the consistory clause about what the invention provides, at 2.25-32. In the absence of any statement in the specification, the skilled reader is entitled to think that the connection means must be part of the tether strap, as in the consistory clause and claim 1, but then gets confused by the wording of claim 1 itself, and the embodiment at 5.29-30. Given these inconsistencies between the claims and the specification there is no real and reasonably clear disclosure for claim 5 (nor for any of the claims) as required by s 40(3) of the Act.

365    However, as Britax contended, in claim 5 (as with claim 1) the connection means is carried by or with respect to the tether strap. This is consistent with the consistory clause and the general description of the invention in the specification. It is not necessary that the connection means be “part of” the tether strap as asserted by Infa.

Loop at each end and incorporated length adjustment means

366    Infa alleged that there is no disclosure in the specification of a harness comprising of a length of strap having at least one loop at each end and which also includes length adjustment means. Claim 4 of the Fourth Patent is then said to lack fair basis. Claim 4 of the Fourth Patent is dependent on “any one of the preceding claims”, including claim 2. The arrangement contemplated by claim 4 is disclosed in figure 1. Figure 1 shows a length adjustment means in the harness. Figure 1 in my view clearly depicts what is described in claim 4. On this basis, Infa’s challenge cannot succeed.

Tenth Patent

367    Infa alleged that claim 19 lacked internal fair basis because the specification does not contain the term “anchorage point”. However, the tether strap (11) as depicted in figures 1 and 2 of the Tenth Patent is extending towards “an anchorage point behind said seat back portion” as recited in claim 19. In my view, claim 19 is fairly based. Claim 19 deals essentially with the safety seat of claim 1 in combination with a vehicle. Figures 1 and 2 depict two configurations of a safety seat in use on a vehicle seat. The Tenth Patent (at 4.4-7) states:

Figs 1 and 2 illustrate the use of a safety seat 10 on a motor vehicle seat 8 in either the forward facing position (Fig 1) or a rearward facing mode (Fig 2). The safety seat 10 is held to the vehicle seat 8 by the vehicle seat belts 9.

368    In relation to Infa’s challenge with respect to claims 1 and 2, I say the following. Putting aside that the combination of features recited in claims 1 and 2 is disclosed by the consistory clause set out at 2.12- 21 and the description at 3.1-6, (subject to some minor differences in wording), the combination of features recited in claims 1 and 2 is disclosed and described in relation to the various embodiments depicted in figures 1 to 11 and the accompanying description set out in the body of the specification. The option of anchorage locations being located in the side wall is canvassed (see 3.7-8 and 4.8-16).

369    Infa also pleads a fair basis allegation that claim 20 (the omnibus claim) is not fairly based. However, the claim itself imports the description of the invention contained within the body of the specification including the drawings.

370    I briefly mention one other argument raised by Infa in relation to the Tenth Patent. It was submitted that each of claims 1, 2, 19 and 20 covers embodiments where the distance between the rear of the safety seat and the attachment point on the vehicle would be more than a “minimum distance” and therefore none of the claims are fairly based. Reading the claims in the context of the specification, I do not regard the claims as describing a “number of components” which add length to the tether strap. Infa did not elaborate on this argument before the Court, and did not provide any evidence to support its argument.

371    I reject Infa’s challenge to the Tenth Patent on the ground of lack of internal fair basis.

NOVELTY

372    In its Fourth POI, Infa challenged the validity of all nine Innovation Patents and the Tenth Patent on the basis of lack of novelty. In doing so, it relied upon prior art information in documents, acts and specifications.

Legal Principles

373    The requirement under s 18(1)(b)(i) of the Act that a patent be novel is informed by s 7(1), which provides:

(1)    Novelty

For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a)    prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;

(b)    prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;

(c)    prior art information contained in a single specification of the kind mentioned in subparagraph (b) (ii) of the definition of prior art base in Schedule 1.

374    The term “prior art information” in this context means information that is part of the “prior art base”. That term was relevantly defined (in Sch 1 of the Act) as including:

(b)…

(i)    information of a kind mentioned in paragraph (a) [ie information in a document that is publicly available, whether in or out of the patent area; and information made publicly available through doing an act, whether in or out of the patent area]; and

(ii)    information contained in a published specification filed in respect of a complete application where:

(A)    if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

(B)    the specification was published on or after the priority date of the claim under consideration; and

(C)    the information was contained in the specification on its filing date.

The relevant comparison

375    The law on novelty has been variously stated by the courts over time. In Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496 (‘Wake Forest’) , Dodds-Streeton J at [480-9] conveniently set out the relevant principles:

[480]    In determining whether a so-called invention is novel, it is necessary to compare the invention as claimed in the claims of the patent and prior art information, so as to ascertain whether the prior art anticipates what is claimed (H Lundbeck A/S & Anor v Alphapharm Pty Ltd (2009) 177 FCR 151 (“Lundbeck”) at 192 per Bennett J).

[481]    It was common ground that novelty was to be assessed by reference to the “reverse infringement test”, which was described by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 (“Meyers Taylor”) as follows (at 235):

The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.

[482]    Thus all the essential integers of the combination claims in suit must be disclosed by the prior art information sufficiently to enable the skilled addressee to perform the invention before the priority date.

[483]    In Lundbeck, Emmett J stated (at 169):

If the prior art information discloses information that enables the so-called invention to be performed, the so-called invention will not be novel. Whether prior art information does so will depend upon the claims made in respect of the so-called information. Thus, it is necessary to identify the so-called invention, so far as claimed in a particular claim. Once the so-called invention has been properly identified, it is a question of whether the prior art information discloses sufficient information to enable the relevant skilled addressee, at or before the priority date for the claim of the so-called invention, to perform the invention.

[484]    In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 (“BMS”), Black CJ and Lehane J held (at 548) that:

[A] prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.

[485]    In Hill v Evans (1862) 1A IPR 1 at 6 to 7 (“Hill v Evans”), Lord Westbury LC stated the classic test of the standard of disclosure required for a prior publication to anticipate an alleged invention:

I apprehend that the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent… the question is, what is the nature and extent of the information thus acquired which is necessary to disprove the novelty of the subsequent patent? There is not, I think, any other general answer that can be given to this question than this: that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited and accurate, and gives a specific rule of practical application.

The reason is manifest because much further information, and therefore much further discovery, are required before the real truth can be extricated and embodied in a form to serve the use of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it.

Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. There maybe a latent truth in the words of a former writer, not known even to the writer himself; and it would be unreasonable to say that there is no merit in discovering and unfolding it to the world.

Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use.

(emphasis added)

[486]    To similar effect, it was observed in General Tire at 138 that:

To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented: Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.

[487]    It has been frequently reiterated that the test for anticipation by a prior document or patent is quite rigorous. As Finkelstein J stated in Root Quality Pty Ltd v Root Control Technologies Pty Ltd & Ors (2000) 49 IPR 225 at 243, “[t]he prior publication must give directions which will inevitably result in something within the claim”.

[488]    It was observed in General Tire (at 485-486) that:

[I]f carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which… would constitute an infringement… the patentee's claim has in fact been anticipated.

[489]    The nature of the test has been described in other authorities in the following language:

(a)    “[a]ny information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent”: Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69 at 90;

(b)    “clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent”: General Tire at 138; and

(c)    in the case of anticipation by doing an act in public, one can usually ask “what information was given” to a person skilled in the art by the use in question: Insta Image Pty Ltd & Anor v KD Kanopy Australasia Pty Ltd & Ors (2008) 78 IPR 20 at 44-45 (“Insta Image”).

376    Infa’s novelty challenge is based on asserted invalidity arising both from prior art documents and from asserted acts of prior use of the claimed inventions before the priority date. Different considerations apply to assessing an invalidity challenge based on an asserted disclosure in a prior art document by contrast to an asserted disclosure by prior public use.

377    It is worth emphasising a number of matters. I will first deal with prior art information contained in a specification or publicly available document, and then with prior public use.

Prior art documents and specifications

378    The relevant comparison in s 7(1) requires that, to establish a lack of novelty, the prior art document must disclose all of the essential features of the impugned patent in order to anticipate that patent.

379    In Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238, the Full Court (at [127]) referred to the “stringency” with which the prior disclosure is to be assessed in relation to novelty. This concept of “stringency” was recently referred to by Yates J in Vehicle Monitoring Systems at [148]:

The ‘stringency’ referred to by the Full Court is illustrated in a number of cases, including The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486 (‘A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee’) and Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485 at [91] (‘Anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun’).

Prior public use

380    Section 7(1) of the Act relevantly provides that in relation to a prior public use, the relevant “information” must be made publicly available through either “a single act” (s 7(1)(a)) or through multiple acts “if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information”: s 7(1)(b).

381    In addition, the relevant act or acts must be strictly proved. In Arrow Pharmaceuticals Ltd v Merck and Co Inc (2004) 60 IPR 548, Conti J at [37] noted the decision of Waddell J in Windsurfing International Inc v Petit (1983) 3 IPR 449 at 484-90, where the Court discussed the extent of the evidentiary task of establishing the existence of prior user. At 489, Waddell J said as follows:

... It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation.

382    More recently, in Aspirating IP Besanko J rejected the uncorroborated evidence of a witness as to a series of alleged prior uses between 1980 and 1983. At [200-2], Besanko J said:

[200]    The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago. In Commonwealth Industrial Gases Ltd v M WA Holdings Pty Ltd [1970] HCA 38; (1970) 180 CLR 160 (at 165-166) Menzies J said:

It is not that I dismiss the evidence as deliberately untruthful- although I am disposed to think that the evidence relating to Ex 8 and Ex 9 – which was a less than accurate representation of Ex 8- was not wholly frank it is rather that I cannot accept as reliable, oral evidence relating to particular pieces of equipment to which some reference has been found in the records of the defendant company, and then, as if by unaided recollection of observations made up to twenty-eight years ago, that equipment has been identified and described by the witnesses. It is apparent that during the long period since the equipment was seen, the witnesses must have looked at hundreds, if not thousands, of unremarkable pieces of similar equipment, and I have no confidence in their stated recollections of particular pieces of equipment among those numbers.

[201]    In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 556-557 Gummow J said that proving an alleged anticipation by the recollection of witnesses and by drawings in catalogues and brochures is to be approached with “some caution”.

[202]    In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.

383    At [230] Besanko J further noted:

The critical aspects of Mr Miles’ evidence are the conversation concerning Billy Guyatts Moonee Ponds and the precise features of the smoke detection systems he saw at Billy Guyatts Blackburn and Radio Australia. Those aspects are not corroborated by any other witness. There are no contemporaneous records of the conversation he deposed to or records or drawings of the smoke detection systems he described.

384    At [236] Besanko J further said:

I have considered Mr Miles’ evidence very carefully. I do not think that he was trying to mislead the Court at any stage. Nevertheless, the matters and events about which he deposed took place many years ago and, as I have said, there are no contemporaneous records or drawings. Although I think that he genuinely believed the matters he gave evidence about, there were aspects of his evidence which lead me to think that his recollection about critical matters was not as clear as he considered.

385    At [242-3] Besanko J held:

[242]    As I have already said, Mr Miles’ evidence stands alone on critical matters. He said that he took photographs of the smoke detection system at Radio Australia, but no photographs were produced. He said that Mr Petersen designed the smoke detection system at Billy Guyatts Blackburn, and yet Mr Petersen did not give evidence of the features of that system.

[243]    In all the circumstances, including the time which has elapsed and the onus on the respondent, I am not prepared to act on the evidence of Mr Miles and find the alleged prior public uses relied on by the respondent.

386    Further, it is fundamental to the statutory mandate of s 7(1) that the asserted prior art information (in the form of the prior use) must make the invention publicly available in the form of the combination as claimed.

Publicly available

387    Subsections 7(1)(a) and (b) require the prior art information (both documents and use) to be “made publicly available”. The Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20 (‘Insta Image’) considered the concept of “publicly available” by the doing of an act, summarising the relevant principles at [124] as follows:

•    The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it. (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887).

•    It is immaterial whether or not the invention has become known to many people or a few people. As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality.

•    The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity.

•    In order to be ‘available’, information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention.

•    In order to be ‘available’, information said to destroy novelty must ‘enable’ the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point.

(Citations omitted.)

388    In the recent Full Court decision of Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 318 ALR 483 (‘Damorgold’), the above principles were generally endorsed: see [12].

389    In Damorgold, Bennett J stressed a number of points at [9] and [11]:

[9]    … in order to establish lack of novelty through doing a single act, it is necessary to establish that the prior art information was made publicly available through the doing of that act.

…

[11]     This is a matter of evidence. The question is whether an act can be identified that did in fact make the information being the integers of the invention publicly available. This is not the same requirement for anticipation by prior publication, which is satisfied if the information is in a document that is publicly available. Further, the information that is made publicly available does not destroy novelty unless it extends to the invention so far as claimed in a claim. That is, it must extend to each of the essential integers of the claim; a general idea of the mechanism of an invention is not sufficient.

390    Her Honour also observed that it is not possible to combine a single act with a document (at [12]). Finally, Bennett J stated at [57]: