FEDERAL COURT OF AUSTRALIA

Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2010] FCA 723

THE COURT DECLARES THAT:

1.                  Innovation Patent No AU 2008100126 is invalid.

the court orders that:

1.         The amended application pursuant to s 120 of the Patents Act 1990 (Cth) for infringement by the respondents of Australian Innovation Patent No 2006100980 is dismissed.

2.         The applicant pay the costs of the respondents of its application and of the cross-claim of the respondents, including reserved costs, but excluding any order as to costs ordered to be paid by the respondents to the applicant on any interlocutory application.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

1                                             This is an amended application pursuant to s 120 of the Patents Act 1990 (Cth) (the Act) which concerns the alleged infringement by Richard Bass Pty Ltd (the first respondent) and Richard Robert Bass (the second respondent) of two innovation patents belonging to Seafood Innovations Pty Ltd (the applicant).

2                                             The two innovation patents, and the two alleged infringing devices, are directed towards a mechanism useful for the harvesting of fish on a commercial scale, which requires a speedy throughput of fish, in the range of two or more thousand fish per hour.

3                                             The first patent is entitled “fish stunning apparatus”, and is Australian Innovation Patent No 2006100980 (First Innovation Patent).  It claims an earliest priority date of 3 December 2002 (Priority Date), claiming priority from AU Provisional Patent Application No 2002953070, filed 3 December 2002 (Provisional Patent Application), and was granted on 7 December 2006.  It was granted a Certificate of Examination by the Commissioner of Patents on 18 January 2007 pursuant to s 101E of the Act.  The eight year term of the First Innovation Patent will expire on 3 December 2011.

4                                             The second patent has the same title.  It is Australian Innovation Patent No 2008100126 (Second Innovation Patent) and claims the same priority date of 3 December 2002, as a divisional patent from AU Australian Patent Application No 2003302671 (Australian Patent Application).  The Second Innovation Patent was granted on 28 February 2008, and was granted a Certification of Examination by the Commissioner of Patents on 7 August 2008, also pursuant to s 101E of the Act.  Its eight year term will also expire on 3 December 2011.

5                                             The parties agree that the priority dates for the two Innovation Patents are the same, namely, 3 December 2002.

6                                             The applicant alleges that the two innovation patents have been infringed by the manufacture, sale, use, import, export or keeping of fish killing devices known as the “MT5” and “RB6” devices manufactured by the first respondent.

7                                             The second respondent is the sole director and controller of the first respondent, and it is not in dispute that if the first respondent has infringed the two innovation patents, then accessorial liability attaches to the second respondent.

8                                             The respondents have denied infringement of Claims 1 and 5 of the First Innovation Patent, but have not challenged the validity of that innovation patent.  The respondents have admitted that the MT5 and RB6 devices of the respondents infringe claims 1 to 4 of the Second Innovation Patent, but say that that patent is invalid.

9                                             The grounds of invalidity relied upon are lack of innovative step (s 18(1A)(b)(ii) of the Act), that the claims of the patent are not clear and succinct and are not fairly based on the matter described in the specification (s 40(3) of the Act), and that the claims do not define the invention (s 40(2) of the Act).

10                                          The particulars of the contentions in relation to s 40 of the Act set out in the Cross-Claim at [29] are:

Particulars

The Claims do not explain how the fish is to be acted upon by the striker and guided towards it, how the fish is to be restrained when being hit by the striker, how the striker is activated, the manner in which the striker retracts and how the fish is to be released or to be caused to exit from the device.

chronology

11                                          The first respondent was incorporated on 1 March 2001. 

12                                          On 3 December 2007, there was a letter of demand from the applicant’s solicitors to the respondents to stop selling fish stunning machines which were claimed to infringe the First Innovation Patent.

13                                          It is now accepted that from 12 December 2007, the first respondent commenced making the allegedly infringing fish stunning machines, MT 5 and RB 6.

14                                          On 13 December 2007, Cullen & Co, patent attorneys, wrote to the applicant’s former solicitors setting out the basis on which it was said that the First Innovation Patent was not infringed.

15                                          On 20 December 2007, these proceedings commenced by the applicant filing an Application and a Statement of Claim.

16                                          It is relevant to note that these proceedings were commenced prior to the grant of the Second Innovation Patent, on 28 February 2008.

17                                          On 9 January 2008, an application by the applicant for interlocutory relief was dismissed, on terms that the respondents keep full records of product sales.

18                                          The Second Innovation Patent was granted on 28 February 2008, that is, after proceedings for infringement of the First Innovation Patent had been commenced.  On that day, I also made orders concerning a Notice of Motion by the applicant in relation to interlocutory procedural matters.

19                                          On 5 March 2008, I ordered by consent:

…

3.         Pursuant to Order 29 Rule 2(a) of the Federal Court Rules, the issue of the First and Second Respondents liability to the Applicant for the injunctive relief claimed by the Applicant in this action be determined at trial before any trial to determine the quantum of any damages or claims for an account of profits or interest on either that may be payable by either of the Respondents to the Applicant.

20                                          On 7 August 2008, the Certificate of Examination for the Second Innovation Patent under s 101E of the Act was granted.

21                                          On 14 August 2008, there was a letter of demand from the applicant’s solicitors to the respondents to stop selling fish stunning devices which allegedly infringed the Second Innovation Patent.

22                                          On 5 September 2008, I granted leave to the applicant to file an Amended Application and Amended Statement of Claim, on terms that the applicant pay the costs of the respondents thrown away.

23                                          The trial on the issues of infringement and validity of the Second Innovation Patent commenced on 20 October 2009.

24                                          On 3 December 2011, the eight-year term of the First and Second Innovation Patents expire.

25                                          The issues regarding infringement of the First Innovation Patent are within a narrow compass.  The respondents accept that each of the MT 5 and RB 6 devices contain all the integers of Claims 1 and 5 of that patent, with the exception of the final integer for each of those claims.  The issue in this respect is whether the devices possess all of the integers of those claims, including that final integer.

26                                          A second issue arises as to whether the exporting of the MT 5 and RB 6 devices are “capable of supporting an infringement action”.   That issue can be immediately addressed.

27                                          The respondents admit having made, used, and exported from Australia and kept for the purpose of doing such things, the MT 5 and RB 6 fish stunning devices. 

28                                          The owner being granted a patent, has the exclusive right to “exploit the invention, the subject of the patent, or to authorise others to exploit the patent”: s 13 of the Act.  The term “exploit” is defined in the Dictionary in Schedule 1 to the Act as follows:

Exploit, in relation to an invention, includes:   

(a)        where the invention is a product – make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or …

29                                          The definition of “exploit”, where the invention is a product, indicates that the definition is an inclusive and not exclusive definition.  The power to exploit the invention by exporting products made in accordance with the invention is not specifically excluded from the definition of exploit, and the phrase “or otherwise dispose of it” is sufficiently broad to encompass the act of exporting, in my opinion. 

30                                            In any event, the act of “making” is itself an infringement in those circumstances.

principles of construction

31                                          The relevant principles of patent construction are not in dispute.

32                                          The specification, including the claims, is not to be read in the abstract, but instead with common sense, in the light of the common general knowledge as at the priority date; Austral Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805 at [71].

33                                          In H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, Bennett J, with (whom Middleton J agreed said, at [118], after citing extensive authority:

… the end point is that the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear.  Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification … This applies to words used in the claims.  As Emmett J observed at [53], the construction of a specification, including the claims, is ultimately a question of law for the Court.

specification

34                                          The following summary from the applicant’s written submissions on infringement is not controversial:

15.       Each patent is entitled “a fish stunning apparatus”.  The “Field of the Invention” … relates “in particular” to a “fish stunning apparatus including a fish stunning device, a fish guide and/or a fish delivery table”.

16.       The “Background of the Invention” describes prior art means of stunning fish, including the hitting of a fish with a bat to more complex devices in which the fish are stunned with a pneumatically driven ram.  The Background observes that for pneumatically driven forms, when fish are harvested, the fish are located in a holding area and then pumped onto a table.  Each fish is then grabbed by the operator and a guide is used to guide the head of the fish into the stunning device to activate a trigger to cause the ram to be extended and stun the fish.  The fish is then withdrawn from the guide and passed further along the table for other operations such as bleeding.

17.       The Background describes a problem with this process being that fish are pumped onto the table in waves, often creating a backlog of fish.  The operator using the pneumatic stunning apparatus experiences difficulties when the fish must be removed as the backlog often hinders or prevents removal from the guide.  Further, as there is a passageway that must be provided to allow the fish to be passed further along the table, fish that have not been stunned can be passed through this passageway…

18.       The “Object of the Invention” is to overcome or alleviate the above disadvantages or provide the consumer with a useful or commercial choice; …

19.       It is apparent from the description that the invention is directed towards a mechanism useful for the harvesting of fish on a commercial scale.  The evidence indicates that commercial harvesting requires speedy throughput of fish – in the range of two or more thousand fish per hour.

20.       The Patent then provides a “Summary of the Invention” … which includes the consistory clauses, a “Brief Description of the Drawings”… which provides descriptions of embodiments “by way of example only” followed by a “Detailed Description of the Preferred Embodiment”…. The preferred embodiment depicts a device that, inter alia, uses the force of gravity in conjunction with other elements to effect a unidirectional flow through of a fish from the entrance of the device to the exist in an automated procedure.

infringement

35                                          Claims 1 and 5 of the First Innovation Patent are set out below, with integer numbers added for convenience:

36                                          Claim 1 of Patent 1 is:

1.                  A fish stunning apparatus comprising:

2.                  a fish stunning device including a striker; said striker including a cylinder and a piston, said piston movable between a retracted position and an extended position;

3.                  a fish guide having an entrance and an exit; said fish guide guiding a fish below the striker so that the piston contacts said fish when the piston is in the extended position;

4.                  a trigger to cause the piston to be moved from the retracted position to the extended position when the fish is passed through the fish guide;

5.                  wherein the fish guide includes a floor being pivotally movable between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit.

37                                          Claim 5 of Patent 1 is:

1.         A fish guide for guiding fish below a stunning device; said fish guide comprising:

2.         an entrance for allowing fish to pass into the device;

3.         an exit to allow fish to pass from the device;

4.         a floor being pivotally movable between a first position and a second position;

5.         wherein the floor is pivotally movable between the first position and the second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit.

38                                          The issue is whether the MT 5 device, which is exhibit 4 in these proceedings, and the RB 6 device, which is exhibit 5 in these proceedings, fall within Claim 1 of the First Innovation Patent, in that, in addition to the other integers of that claim the presence of which is not in dispute, they contain the final integer:

5.         wherein the fish guide includes a floor being pivotally movable between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit.

39                                          Important words in integer 5 are “wherein” and “to allow”.

40                                          This integer, the respondents say, is not found in the two impugned devices, because, in each of those devices, the movement of the floor or chin plate from the first to the second position does not enable the fish to move unidirectionally through the device to the exit: that movement happens only if the movement of the chin plate occurs in conjunction with the movement of the two or four cheek plates in the two devices and the top plate.

41                                          In both the MT 5 and RB 6 devices of the respondent, the fish are allowed to exit the device by four components moving in unison:

(i)         the trigger plate moves up and back;

(ii)        the cheek plates (there are two in the MT 5 and four in the RB 6) fold back against the sides of the device;

(iii)       the chin plate folds down.

42                                          On the devices of the respondent, those components only ever move in unison.

43                                          There are four experts in this proceeding who report on matters relating to patent infringement.  The applicant’s experts are Dr Gilmore and Mr Smart.  The respondents’ first expert is its patent attorney, Dr Finney.  Their second expert is Dr Jenkins.  All experts have considerable qualifications. 

44                                          Both Dr Gilmore and Dr Jenkins are mechanical engineers.  Neither can be regarded as possessing the relevant knowledge in the field at the relevant priority dates.  Dr Finney does not hold any engineering qualifications, nor does he claim to be a person skilled in the art in respect of fish harvesting devices.  He does claim some knowledge in relation to mechanical devices.

45                                          Mr Smart is a aqua-culture consultant with tertiary qualifications, and I accept him as a person skilled in the art. 

46                                          Both Dr Gilmore and Dr Jenkins departed in their oral evidence from much of what they concluded in their joint report.  Neither is an expert in the field of fish stunning.  Their evidence can be of assistance in the Court forming a view about the prior art, but is no substitute for that assessment.  The joint report of mechanical engineers was, in large measure, superseded by their oral evidence.

47                                          Mr Shipway, who has extensive experience with the RB 6 device and also the applicant’s SI5 device, which is made in accordance with the invention disclosed in the First Innovation Patent, in his affidavit of 12 March 2009, said, at [39]:

Once a fish is stunned in the stunning chamber then all four of those aspects of the RB6 machine (the trigger plate, the side plates and that lower section) move in unison.  They all have to move simultaneously to allow the fish to pass out of the stunning chamber (and so out of the RB 6) on to the next stage of the processing line.

(Emphasis added).

48                                                      Mr Smart, at [5.4] of his report annexed to his affidavit filed 17 March 2009 says: 

… in my experience, the bottom part of the MT5 and RB6 that supports the fish is a pivotally moveable “chin plate” which supports the ventral surface (bottom) of the fish in place, in a stationary position so that a precise blow to the brain can be effected by the captive bolt.  This chin plate then drops down to allow passage of the fish through the machine, in addition with other parts of the machine moving out of the way (stunning cylinder moves upwards and the side guides move outwards). 

49                                          Dr Jenkins, in  his report dated 17 December 2008, dealing with the MT 5 device, says at page 3:

Once the head of the fish is constrained between the chin plate and the head plate (and the two converging side plates) the trigger plate is activated by contact with the front of the fish’s head.  This activates the pneumatically powered plunger which stuns the fish.  An automatic timing system then causes the various surfaces of the guide passageway to retract, allowing the fish to continue to pass down the slope to the exit.  The four elements, which are mechanically linked and move synchronously, are the two side walls, the head plate and the chin plate.  When these elements are retracted, the passage available for the fish to pass through appears as shown in Figure 3.

50                                          He later expresses the view:

… having the chin plate in the raised position would not in itself prevent passage of a fish through the device, provided that the other three components were in their retracted positions.

51                                          Dr Jenkins goes on to express the view that:

… lowering of the chin plates to the floor of the passageway is not necessary to allow the passage of the fish to the exit of the device, on the assumption that the sides and head plate are retracted, but the chin plate is held in the raised position.  

52                                          However, on this scenario, there appears to be no means by which the fish is arrested, so as to activate the trigger plate by contact with the front of the fish’s head which activates the pneumatically powered plunger which stuns the fish.

53                                          This raises the crucial issue of whether “the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit” describes a requirement that is necessary, or whether it is simply a sufficient requirement.

54                                          The method of the exiting of the fish after it has been stunned in the two devices of the respondent involves the retraction of all of the various surfaces of the guide passageway to allow the fish to continue toward the exit.  The question is whether this is a different exiting mechanism from that claimed in integer 5 of Claim 1 of the applicant’s patent, which in terms says that it is the movement of the pivoting floor from the first position to the second position, which allows the fish, after stunning, to pass towards the exit.

55                                          It is true that the second respondent in cross-examination agreed that the MT 5 device and also the RB 6 device accords with the description taken from the patent application for the MT 5 patent:

… In the raised position the plate supports the chin the fish while, in the lower position, the plate rests flat against the floor of the channel, allowing the fish to be carried on through the channel.

56                                          Mr Bass, however, is deaf.  I am not at all sure that he was alive to the nuance of his answer.  Mr Burley in cross-examination put that passage to Mr Bass and said:

And that’s an accurate description of what the chin plate in the RB6 device does?---At the time of the writing of this, that was correct.

Yes.  And you – this patent application was prepared, as was the MT5 patent application before the proceedings had commenced; that’s right, isn’t it?---Will you say that again, please?

Both this patent application - - - ?---Yes.

- - - and the patent application for the MT5 device - - - ?---Yes.

- - - were prepared with your assistance before the commencement of these legal proceedings?---They were.

57                                          However, Mr Bass in his affidavit of 7 January 2008 at [54], said:

            If only the chin plate moved, then the fish would not be able to exit.  That is because there is not enough room for a fish to pass between the trigger plate, the cheek plates and the ceiling of the chamber even if the chin plate were to fold down to be flush with the floor.  It must be remembered that this device is most often used with fish between 2 and 6 kilograms.  They are too large to fit through the small space created by the chin plate folding down.

58                                          Dr Gilmore, the mechanical engineer expert called by the applicant, at page 12 of his report dated 4 June 2008, said:

In the MT 5 device, movement downwards of the floor portion (chin plate) is a physically necessary requirement to allow a fish to pass unidirectionally …

59                                          Mr Smart, at page 15 of his report dated 16 March 2009, confirmed the “necessary” requirement of dropping the chin plate in both the MT 5 and RB 6 machines, saying that “the operative angle to which both the MT 5 and RB 6 machines would be set to allow fish to exit without lowering the chin plate would be extreme and beyond normal operating parameters”.

60                                          Mr Shipway expressed the view that if the chin plate did not drop down, the stunned fish would not pass through the machine under gravity.

61                                          A contention for the applicant is that the chin plate in the impugned devices operates in the manner required in integer 5 of the First Innovation Patent, namely:

It is a floor that pivots to allow the fish to pass through the apparatus.

62                                          The applicant contends at [44] of its closing submissions on infringement that:

Infringement is not avoided by adding something to all of the features of what has been claimed, even if the result is an improvement on what is taught in the patent, or by producing something that is claimed in a different way to the way described in the patent, or by modifying a patented product to make it a little worse and the adding something to rectify the deficiency: C Bodkin Patent Law in Australia,2008, Lawbook Co [9130] …

63                                          The applicant contends that after the fish is stopped and stunned, the continuation of the fish along its flow is allowed to happen by the lowering of the pivoting floor.  In other words, the gravitational force on the fish will not take effect unless the pivoting floor is lowered.

64                                          The respondents say that, on the impugned devices, the continuation of the fish along its flow will not occur unless also, in addition to the chin plate, the trigger and the cheek plates also function to retract in conjunction with each other.

65                                          In short the applicant says that the respondents have taken the substance of the invention as claimed, taking each of the integers, including the pivoting floor which operates to enable the fish, through the action of gravity, to proceed to the exit of the fish guide.  The applicant says, at [45] of its closing submissions on infringement:

A defendant may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim; Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1979) 144 CLR 253 at 286.

66                                          Dixon CJ, Kitto and Windeyer JJ said in Welch Perrin & Co Pty Ltd v Worrel (1960) 106 CLR 588 at 610:

Courts have often insisted that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

67                                          Mr Burley for the applicant submitted:

… [A]n invention like every other invention may be pirated by a theft in a disguised or mutilated form and it would in every case be a question of fact whether the alleged piracy of the same in substance and effect were as a substantially new or different combination.  In our respectful submission the addition of something which further inhibits the flow of the fish only to be permitted to carry on its way once the ramp is lowered doesn’t take it outside of being a combination which takes the substance and effect of the invention.  

68                                          Mr Horton submitted for the respondents:

… the old principle still holds good: what is not claimed is disclaimed.  In the end, this is the definition of the monopoly.  And if confirmation of that were needed the word “wherein” in line 11 of the claims has about it an emphatic quality that within the apparatus as described in the preceding integers the movement is taking place.

69                                          I accept the evidence of the second respondent, and also Mr Smart, that if only the chin plate were down the fish would not go through.

70                                          The applicant says that without the movement of the chin plate, the fish would not pass to the exit of the fish guide as intended.

71                                          The applicant says, on its proper construction, integer 5, as claimed in Claim 1, is not to be interpreted as requiring the movement of the floor, by itself and without other events, to allow the fish to be carried on through the channel: the integer 5 is satisfied that movement of the floor is necessary to allow the fish to be carried on through the channel.

72                                          The applicant says that the interpretation for which the respondents contend requires the movement of the floor from the first to the second position by itself to allow the fish to be carried on through the channel.  It is said that the additional words “by itself”, suggests an impermissible gloss on the words of integer 5.

73                                          The respondents say that the movement of the floor, by itself and without regard to the connected movements of the cheek plates and the top plates, does not allow the fish unidirectionally to be carried on through the channel.  It is therefore not correct to say that, in the MT 5 and RB 6 devices, the movement of the floor allows the unidirectional movement of the fish down the channel.  Integer 5 imposes that requirement, and therefore the MT 5 and RB 6 devices do not infringe the First Innovation Patent.

74                                          In the written submissions of the applicant on Infringement, the applicant submits that the pivoting of the chin plate is plainly to “allow a fish to pass unidirectionally from the entrance to the exit.” 

75                                          However, the question is not what is the purpose of the chin plate, the question is whether the pivoting of the chin plate allows the fish to pass unidirectionally from the entrance to the exit.

76                                          I accept, on the whole of the evidence, that the lowering of the chin plate is necessary to allow the fish to pass unidirectionally from the entrance to the exit. 

77                                          On the whole of the evidence, however, I also accept that the lowering of the chin plate is not sufficient to allow the fish to pass unidirectionally from the entrance to the exit.

78                                          The applicant submits that the requirement in integer 5 of “the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit”specifies “a pivotally movable floor” and the result is “to allow a fish to pass unidirectionally from the entrance to the exit”.

79                                          The applicant contends that “allow” in that sense is permissive and means to aid, assist, or afford.

80                                          According to the Shorter Oxford Dictionary, “allow” in its transitive sense, means “to concede, permit (an action, etc)”; and in the Macquarie Dictionary, relevantly, “allow” means “to permit”.

81                                          In my opinion, in integer 5 Claim 1 of the First Innovation Patent, the movement of the floor from the first position to the second position is not said to “aid” or “assist” a fish to pass unidirectionally from entrance to exit, but is used in the sense of “permitting” a fish to pass unidirectionally from entrance to exit.  

82                                          Lord Russell of Killowen in Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224; (1938) 56 RPC 23 at 39, said:

The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers.

83                                          In my opinion, integer 5 of Claim 1 claims a monopoly in which the movement of the floor from the first position to the second position allows, that is to say, permits, a fish to pass unidirectionally from entrance to exit within the device.

84                                          In my opinion, neither of the two devices MT 5 and RB 6 trespass on the boundary marked out in the invention claimed in Claim 1 of the First Innovation Patent.

85                                          In my judgment, integer 5 is directed at a fish guide in which the movement of the floor from the first position to the second position permits the fish to move unidirectionally from the front to the exit of the guide.  That movement, in the impugned devices, does not permit the fish to flow unidirectionally from the front to the exit of the device.  The joint operation of the cheek plates and the top plate, as well as the chin plate, is necessary to allow or permit the fish to move unidirectionally from the front to the exit.

86                                          That connection of movement of those parts is not of the same substance or effect as the movement of a pivoting floor from first to second position, allowing or permitting the fish to move unidirectionally from the front to the exit of the device.  Claims 1 and 5 of the First Innovation Patent teach that after the fish is stunned, the movement of the floor to the second position allows fish to move towards the exit.  The movement of the floor acts like a gate, door or flap, operating to allow the fish to move towards the exit.  In the respondents’ devices, after the fish is stunned, the passageway constituted by the chin plate, the two or four cheek plates, and the top plate, expands, sphincter like, to allow the fish to move towards the exit.

87                                          In the impugned devices, lowering of the chin plate, as a matter of language, does not allow or permit the fish to pass from the front to the exit of the device.  The mechanism in the impugned devices for achieving that unidirectional flow of fish is a substantially new or different mechanism.

88                                          For these reasons, the claims for infringement of the First Innovation Patent fail.

89                                          For completeness, the respondents contended the “chin plate” in its devices was not a “floor”.  It was submitted that both of the respondents’ devices possessed a floor which is quite separate from the chin plate, which “operates more as a flap”. 

90                                          I do not regard this as a material difference.  The chin plate sits on the bottom surface in the MT 5 device, and within the floor of the RB 6 device.

invalidity

91                                          It is, in my opinion, a highly relevant circumstance that the Second Innovation Patent was granted on 28 February 2008, after proceedings against the respondents for infringement of the First Innovation Patent had been commenced.

92                                          I confess that the timing of the application for the Second Innovation Patent is a matter which in my view bears on the question of the validity of the claims in that patent, being consistent with a view that the applicant sought by that application to cover possible weaknesses in its original infringement claim against the respondents.

93                                          The grant of the Second Innovation Patent occurred under s 79B of the Act:

79B     Divisional applications prior to grant of patent

(1)        If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:

(a)        disclosed in the specification filed in respect of the first-mentioned application; and

(b)        where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal – falling within the scope of the claims of the accepted application.

94                                          Section 79B therefore permits a further application for a patent for an invention to be made, after an application for a patent is made.

95                                          A “patent for an invention” includes an innovation patent – Patents Act Schedule 1.

96                                          As Crennan J observed in Pharmacia Italia Spa v Mayne Pharma Pty Ltd (2005) 66 IPR 84, at [29]:

The claims in a complete specification define the invention: s 40(2)(b) of the Patents Act.  They mark out the monopoly operating to disclaim what is not specifically and definitely claimed: Walker v Alemite Corp (1933) 49 CLR 643 at 656.  This is to ensure that the public and specifically a manufacturer will not have difficulty being satisfied that a claim is not infringed: General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (No 1) (1971) IA IPR 121 at 167; [1972] RPC 457 at 515.  There are no special rules for the interpretation of patent specifications: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 391 (per Lockhart J).  The approach to be taken is discussed by the High Court in Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; 177 ALR 460; 50 IPR 513; [2001] HCA 8 at [24]: 

It is well settled that the complete specification is not to be read in the abstract; here it is to be construed in the light of the common general knowledge and the art before … the priority date; the court is to place itself “in the position of some person acquainted with the surrounding circumstances as to the state of [the] art and manufacture at the time”.

97                                          Here, the terms of the First and Second Innovation Patents and, for that matter, the parent provisional application, are precisely the same as are the accompanying diagrams, save that the claims of each are different.

98                                          The grounds for revocation of a patent are set out in s 138(3) of the Act:

138      Revocation of patents in other circumstances

(3)        … the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground:

…

(b)        that the invention is not a patentable invention;

…

(f)        that the specification does not comply with subsection 40(2) or (3).

99                                          Section 40(2) and (3) of the Act relevantly provides:

(2)               A complete specification must:

(a)        describe the invention fully, including the best method known to the applicant of performing the invention; and

(b)        where it relates to an application for a standard patent – end with a claim or claims defining the invention …

(3)               The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

…

100                                       The patentability is determined by the criteria in s 18 of the Act:

18 Patentable inventions

Patentable inventions for the purposes of an innovation patent

(1A)     Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:

(a)        …

(b)        when compared with the prior art base as it existed before the priority date of that claim:

(i)         is novel; and

(ii)        involves an innovative step …

101                                       As Lord Russell observed in Electric & Musical Industries Ltd v Lissen Ltd at 39:

A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims.

lack of innovative step

102                                       Claims 1 to 4 of the Second Innovation Patent are as follows.

1.         A fish stunning apparatus comprising:

a fish stunning device including a striker; said striker including a cylinder and a piston; said piston movable between a retracted position and an extended position;

a fish guide having a front entrance and a rear exit; said fish guide guiding a fish below the striker so that the piston contacts said fish when the piston is in the extended position;

a trigger to cause the piston to be moved from the retracted position to the extended position when the fish is passed through the fish guide;

wherein a fish moves unidirectionally from the front entrance through the guide to the rear exit and the height of the striker is adjustable with respect to the fish guide.

2.         The fish stunning device of claim 1 wherein the trigger is activated to allow the fish to move through the guide.

3.         The fish stunning apparatus of claim 1 wherein the fish guide includes a floor being pivotally moveable between a first position and a second position.  

4.         The fish stunning device of claim 3 wherein the trigger is operatively connected to the floor to move the floor from the first position to the second position.

103                                       Section 7(4) provides that “innovative step”, in relation to an innovation patent, means the following:

Innovative step

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

(5)        For the purposes of subsection (4), the information is of the following kinds:

(a)        prior art information made publicly available in a single document or through doing a single act;

(b)        prior art information 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.

(6)        For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.

104                                       The cross claim alleges that the Second Innovation Patent “does not involve an innovative step when compared with the prior art base as it existed before the priority date”.  It is claimed that there is no inventive step having regard to the prior art WO 98/44805 [Hitchens]; US 6183356 [Middleton]; WO 1999/046997 [Walker] and US 6001011 [Johnson], and because those changes make no substantial contribution to the working of the invention having regard to the prior art information identified.

105                                       In determining the issue of innovative step, the Full Court in Dura-Post Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 said, at [54], that, inter alia, the Court is obliged to ask, in accordance with s 7(4) whether the invention, so far as is claimed in any claim, only varies from the kinds of information in s 7(5) in ways that make no substantial contribution to the working of the invention.  The Full Court said, at [79], that the test of innovative step involves a “modified novelty test”, which is derived from Griffin v Isaacs (1938) 1B IPR 619; (1938) 12 ALG 169.   The modified novelty test involves a number of steps in a factual inquiry described by the judge at first instance, Gyles J, in Delnorth Pty Ltd v Dura-Post Pty Ltd [2008] FCA 1225.  The approach of Gyles J was upheld by the Full Court. 

106                                       Gyles J said, at [52]-[54], [61]:

52        There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim.  The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences.  The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention.  It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so.  Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached.  If there is no difference between the claimed invention and the prior art base then, of course, the claimed invention is not novel. 

53        The phrase “no substantial contribution to the working of the invention” involves quite a different kind of judgment from that involved in determining whether there is an inventive step.  Obviousness does not come into the issue.  The idea behind it seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious.  Indeed, the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.

54        There is a question as to the proper construction of “substantial” in this context.  In some situations it may mean “great” or “weighty”; elsewhere it may mean “more than insubstantial” or “of substance” (for example, there is debate in the fields of both trade practices and copyright). 

…

61        In my view the provenance of the phrase “make no substantial contribution to the working of the invention” indicates that “substantial” in this context means “real” or “of substance” as contrasted with distinctions without a real difference.  That confirms my impression from construction of the words of the section itself. 

107                                       On the claimed lack of innovative step, I accept the evidence of Mr Smart in his report, which is annexed to his affidavit.  In section 7 of that report, he reviews each of the cited prior art documents, and identifies the differences between the inventions disclosed in each prior art document and that which is disclosed in the Second Innovation Patent.  Having identified the differences, consistent with the test in Dura-Post Pty Ltd v Delnorth Pty Ltd, he then considers whether those differences found in the claims of the Second Innovation Patent make a substantial contribution to the working of the invention.  He concludes that this is so.

CLAIMS OF INVALIDITY BASED ON S 40(2) AND S 40(3) OF THE ACT

108                                       It is pleaded that the claims of the Second Patent are not clear and succinct and are not fairly based on the matter described in the specification (s 40(3) of the Act) and the claims do not define the invention (s 40(2) of the Act).

109                                       The applicant submits that it is readily apparent from the body of the specification what is the nature and manner of operation of the fish stunning device, upon which the claims are fairly based within the meaning of the “liberal test” enunciated in Lockwood Security Products Pty Ltd  v Doric Products Pty Ltd (2004) 217 CLR 274 at 300; [68]-[69]:

The approach required by s 40(3)

68        Erroneous principles.  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.

69        “Real and reasonably clear disclosure”.  Section 40(3) requires, in Fullagar J’s words, “a real and reasonably clear disclosure”.  But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.

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.

Fullagar J’s phrase serves the function of compelling attention to the construction of 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.

(Footnotes omitted).

110                                       Dr Jenkins, in his evidence, appeared to accept that the invention as claimed in the Second Innovation Patent was embodied and described in the body of the specification.  I do not agree.

111                                       However, the evidence of Dr Jenkins in his report, although the evidence is mislabelled under the heading “Innovative Step”, concluded:

… the second patent omits details of the central functioning of the device, that is, whether and how the fish is restrained and located for the stunning operation, and how subsequently released.  The first patent gives significant information with respect to the moveable floor and its function.  The second patent is notably silent on such matters.

112                                       And later, in that report, Dr Jenkins said:

The claims of the second patent do not give any detail of how a fish is to be guided to the position where it is to be stunned, nor any details of whether it is essential that the fish be stopped and held stationary for stunning.

113                                       Claim 1 of the Second Innovation Patent is a fish stunning device of a combination which operates with the striker and trigger in cooperation with the fish guide, wherein “said fish guide guiding a fish below the striker so that the piston contacts said fish when the piston is in the extended position; a trigger to cause the piston to be moved from the retracted position to the extended position when the fish is passing through the fish guide.”

114                                       In my opinion, Claim 1 of the Second Innovation Patent is descriptive of the passage of the fish through the device, but not informative as to the means by which that passage is achieved, bearing in mind that the device of its nature must stop the fish and stun it.

115                                       The claims neglect to articulate any means of achieving a front entrance and rear exit.  In doing so, it omits what must be necessary elements of the invention, including how the fish is held while being stunned, and how it is caused to exit the device. 

116                                       The claims do not define the invention, because they do not disclose elements of the invention that are necessary to make it work, principally how it is that the striker operates on the fish so as to stun it (that is, how the fish is stopped, held, and then released).  The invention is an apparatus “wherein” (that is, in which) the fish moves from the entrance to the exit, yet how the fish so moves (that is, how it is held for stunning and then released) is not revealed.  That is the critical point which the patent must address, but is silent on this point. 

117                                       I suspect that this omission in the Second Innovation Patent was deliberate, so as to overcome perceived difficulties associated with perhaps the stopping, and certainly the exiting, mechanisms in the Claims 1 and 5 of the First Innovation Patent.  Whether this is so or not is irrelevant.  The validity of the claims of the Second Innovation Patent have to be assessed as I have indicated above, without any comparison with the claims of the First Innovation Patent.

118                                       For the above reasons, in my judgment the Second Innovation Patent is invalid.

119                                       I will order that the amended application pursuant to s 120 of the Patents Act 1990 (Cth) for infringement by the respondents of Australian Innovation Patent No 2006100980 be dismissed.

120                                       I will declare that Innovation Patent No AU 2008100126 is invalid.

121                                       I will order that the applicant pay the costs of the respondents of its application and of the cross-claim of the respondents, including reserved costs, but excluding any order as to costs ordered to be paid by the respondents to the applicant on any interlocutory application.

Associate:

Dated:         12 July 2010