FEDERAL COURT OF AUSTRALIA

Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019

REASONS FOR JUDGMENT

Introduction

1    The applicant and cross-respondent, Britax Childcare Pty Ltd (Britax), brought proceedings against the respondent and cross-claimant, Infa Products Pty Ltd (formerly known as Infa-Secure Pty Ltd) (Infa), alleging patent infringement. Specifically, Britax alleged infringement of nine innovation patents (all of which derive from a single ‘parent’ patent application, referred to by Britax as Australian Standard Application 2005251826) and one standard patent, all relating to child safety seats. The patents are as follows:

•    Innovation Patent No. 2007100856 (First Patent)

•    Innovation Patent No. 2007100854 (Second Patent)

•    Innovation Patent No. 2008100763 (Third Patent)

•    Innovation Patent No. 2008100764 (Fourth Patent)

•    Innovation Patent No. 2008100765 (Fifth Patent)

•    Innovation Patent No. 2009100835 (Sixth Patent)

•    Innovation Patent No. 2009100836 (Seventh Patent)

•    Innovation Patent No. 2009100837 (Eighth Patent)

2•    Innovation Patent No. 2009100445 (Ninth Patent)

(collectively referred to herein as the “Innovation Patents”)

•    Standard Patent No 680150 (Standard Patent)

2    On 9 May 2012, I delivered my reasons for judgment on the issue of patent claim construction. On 12 June 2012, in preparation for determining the further issue of patent infringement, I ordered that the parties file and serve submissions regarding the dates to apply as a matter of law in relation to the infringement allegations made in respect of each relevant patent. At that time I also foreshadowed that I would address in a future judgment the issue of omnibus claims, about which the parties had already made submissions but which were not the subject of the reasons for judgment published in May 2012. I will address each of these issues in turn.

Applicable dates relating to infringement allegations

3    It is convenient to deal with the two types of patent in issue in this proceeding (standard and innovation) separately for the purpose of this analysis.

The Standard Patent

4    Section 13 of the Patents Act 1990 (Cth) (the Act) provides that a patentee has the exclusive rights to exploit an invention (and to authorise another person to do so) during the term of a patent. Section 67 provides that the term of a standard patent is 20 years from the “date of the patent”. Section 65 in turn defines the “date of a patent” as being either the date of filing of the relevant complete specification, or the date determined under the Patents Regulations 1991 (Cth) (the Regulations), if applicable. For these purposes, ‘complete specification’ is defined in Sch 1 of the Act as the specification (or amended specification) filed in respect of a complete patent application.

5    Britax submits that the Regulations do not apply to the Standard Patent for the purpose of s 65, and that the date of filing of the complete specification for this patent was 28 July 1995. Assuming that this is correct, the 20-year term of the Standard Patent commenced on this date.

6    However, the rights of a patentee to sue for infringement of a standard patent during the term of the patent are qualified by s 57 of the Act. Subsection 57(1) provides that where a complete specification relating to an application for a standard patent has become open to public inspection, but a patent has not yet been granted, prima facie the applicant has the same rights as they would have had “if a patent for the invention had been granted on the day when the specification became open to public inspection”. Nevertheless, the right to commence infringement proceedings in respect of acts carried out during this time does not arise unless (i) the standard patent is ultimately granted, and (ii) the acts in question would, if done after the grant of the patent, have constituted infringement of a claim of the specification: see s 57(3).

7    Britax states in its submissions that the date on which the complete specification relating to the Standard Patent application became open for public inspection was 15 February 1996. I do not understand Infa to dispute this fact. Accordingly, for the foregoing reasons, I find that the earliest date on which infringement of the Standard Patent can be considered is 15 February 1996, being the date on which the complete specification became open for public inspection for the purpose of s 57.

The Innovation Patents

8    As is the case with standard patents, s 13 of the Act provides that an innovation patent gives a patentee the exclusive rights to exploit an invention (and authorise another person to do so) during the term of such a patent. Pursuant to s 68, the term of an innovation patent is eight years from the date of the patent. As with standard patents, the date of an innovation patent for these purposes is determined by the application of s 65, which states that the date of “a patent” (defined in Sch 1 to mean either a standard patent or an innovation patent) is either the date of filing of the relevant complete specification, or the date determined under the Regulations (if applicable).

9    The Innovation Patents in issue are patents to which the Regulations do apply for the purpose of s 65. Each of the Innovation Patents was the subject of a divisional application made pursuant to s 79B of the Act in respect of a single ‘parent patent’ application, being Australian Standard Application 2005251826. Britax submits that the relevant regulation to be applied in the circumstances is reg 6.3(7)(c)(i), which prescribes that the date of a patent granted on a divisional application made under s 79B(1) will be “the date of the patent of the first-mentioned application referred to in subs 79B(1) of the Act”. This does not seem correct. It was stated at [64] of my reasons for judgment dated 9 May 2012 that the parent patent application was ultimately not granted, but that nonetheless, “from its complete specification for a standard patent, nine innovation patents were filed as divisional applications”. I do not understand this point to have been the subject of contention between the parties. Accordingly, insofar as it purports to refer to a patent granted in respect of the parent patent application, I consider that reg 6.3(7)(c)(i) does not apply (as no such patent was ever granted on that application). Instead, the more appropriate provision to apply in the circumstances is reg 6.3(7)(c)(ii), which prescribes that the ‘date’ of a patent granted on a divisional application made under s 79B(1) is “the date that would be the date of the patent if a patent had been granted on that first-mentioned application”. No suggestion was made that the parent patent application was itself a divisional application (which might enliven reg 6.3(7)(c)(iii)), so I do not consider that possibility further in these reasons.

10    According to Britax, the complete parent patent application from which the divisional Innovation Patents were derived was filed on 9 June 2005. I understand – and it has not been the subject of dispute between the parties – that a complete specification for the purpose of s 65(b) of the Act was also filed on this date (as is required by s 29(4) of the Act). If a patent had been granted on the parent patent application, the date of this patent would be determined in accordance with s 65. No submissions have been made that the Regulations would apply to this patent for the purpose of determining its date. Therefore, pursuant to s 65, the date of the parent patent had it been granted would have been 9 June 2005, being the date of filing of the relevant complete specification. Accordingly, reg 6.3(7)(c)(ii) provides that each of the Innovation Patents has a common date of 9 June 2005 for the purpose of s 65, and a common eight-year term commencing on 9 June 2005 for the purpose of s 68.

11    In any event, if I am wrong about the precise provision of reg 6.3(7)(c) to be applied in the circumstances, I note that each alternative (namely, regs 6.3(7)(c)(i) and (ii)) produces the same outcome in terms of the date to be attributed to each of the Innovation Patents (namely, 9 June 2005) for the purpose of s 65.

12    Notwithstanding the foregoing conclusion, it is here that the analysis of the relevant date for determining infringement of the Innovation Patents departs in an important respect from the analysis conducted in respect of the Standard Patent. Section 57 is expressed to apply only in relation to standard patents. The Act does not contain an equivalent provision to s 57 for innovation patents. Infa submits that this means that the patentees of innovation patents do not have any right to obtain relief for acts occurring prior to the grant of an innovation patent. I do not accept this submission.

13    The absence of an analogous provision in the Act to s 57 for innovation patents simply reflects the reality of the operation of the innovation patent system. As noted in my reasons for judgment on construction at [25] to [26], the innovation patent system was introduced in 2001, when it replaced the previous petty patent system. It was intended that innovation patents would provide a relatively “inexpensive, quick and easy” way to protect inventions of a lower inventive standard than standard patents, or those with a short commercial life: see Commonwealth, Parliamentary Debates, House of Representatives, 29 June 2000, at 18,583 (per Warren Entsch). A major feature of this new system was the grant of such patents without first undergoing time-consuming and costly substantive examination.

14    Accordingly, in practice there may be little or no difference between the time of filing an application for an innovation patent, publication of a complete specification and the grant of such a patent. Indeed, under s 62(2) of the Act, publication of an innovation patent request and complete specification typically follows the grant of such a patent. These two events – publication of a complete specification and grant of an innovation patent – may therefore occur at or around the same time. Recourse to the Revised Explanatory Memorandum to the Patents Amendment (Innovation Patents) Bill 2000 (Cth) (the Bill) indicates that for this reason, the legislature deliberately decided not to have an analogous provision to s 57 in the Act for innovation patents, as there is no practical need. Previously, a comparable provision to s 57(1) had existed in relation to petty patents (set out in now-repealed s 57(2)). The Revised Explanatory Memorandum to the Bill relevantly provides:

Item 28 – Subsection 57(2)

45.    This item repeals subsection 57(2) of the Patents Act consequential to the repeal of the petty patent system. The subsection deals with the publication of petty patents prior to grant. This provision will not apply to innovation patents because innovation patents will only be published after grant.

15    Notwithstanding this fact, Infa submits that, in any event, the relevant date for assessing infringement of the Innovation Patents is not the date of the parent patent application, but the date of certification of each innovation patent. To this end, Infa purports to rely on s 120(1A) of the Act, which provides that “[i]nfringement proceedings in respect of an innovation patent cannot be started unless the patent has been certified”.

16    I accept Infa’s submissions that by virtue of the operation of s 120(1A), certification is a prerequisite for commencement of infringement proceedings in respect of innovation patents. However, I do not accept that as a result, a patentee’s rights in respect of an innovation patent (whether divisional or otherwise) also date from the time of certification. Such an interpretation of s 120(1A) is not consistent with the fact that s 13 confers on a patentee the rights to exploit an invention during the term of a patent, which is defined for both standard and innovation patents by reference to the “date of the patent” (and which in turn is determined in accordance with s 65). When a patentee may enforce their rights, and at what time those rights first arise, are different questions.

17    Infa submits that this approach is incorrect, and that s 13 must be construed as being subject to and operating consistently with the express provisions of ss 57 and 120(1A) of the Act, such that it is these sections – not s 13 – that govern the time at which liability for infringement arises in respect of standard and innovation patents. However, I do not think that the certification requirement imposed by s 120(1A) was intended to mark the date from which rights in respect of innovation patents accrue. Rather, the requirement that innovation patents must be certified prior to commencement of infringement proceedings (among other things) serves to ensure that certain policy aims of the innovation patent system are met. These aims include the need to facilitate the quick and convenient grant of patents that are not subject to extensive review prior to grant, whilst at the same time ensuring that proceedings are only commenced in relation to meritorious innovation patents that meet the criteria set out in Ch 9A of the Act. This position is reflected in those parts of the Revised Explanatory Memorandum to the Bill that were quoted by Infa in its submissions:

Items 59 and 60 — Subsection 120(1) and after subsection 120(1)

101.    These items amend section 120 of the Patents Act to establish that a patentee or an exclusive licensee cannot commence infringement proceedings in respect of an innovation patent unless the patent has been certified.

102.    These are the first of a number of items that specify that processes such as infringement proceedings, applications for non-infringement declarations, applications for revocation in response to counter-claims against infringement and applications for compulsory licenses in relation to innovation patents all require that the patent has been examined and certified. This ensures that these proceedings are only carried out in relation to patents that have met the criteria laid out in section 101B and are certified according to section 101E.

18    Further, the Outline to the Revised Explanatory Memorandum to the Bill states:

[i]nnovation patents will not be available for plants or animals or biological processes for the generation of plants and animals. An innovation patent will be granted after a formalities check and will provide the patent owner with a right that is quick and cheap to obtain, is relatively simple, and lasts for a sufficient time to encourage investment in developing and marketing the invention. Substantive examination, that is the time consuming and costly process in which the invention is assessed against statutory criteria, will only occur if directed by the Commissioner of Patents or requested by the patent owner or a third party. If the patent meets the requirements of examination it will be certified and if not it will be revoked. To reduce the scope for unsubstantiated threats, an innovation patent owner can only enforce their rights if their patent has been certified.

19    Infa contends – without citing any specific authorities – that such a result would “give to divisional applications (for both standard patents and for innovation patents), and to innovation patents that are not divisional applications, more extensive rights than their respective parent applications and then [sic] other standard applications”.

20    Infa further asserts that this is inconsistent with the purpose or object “underlying the Act in its treatment of divisional applications as according no greater rights than the parent applications from which they divided”, and “in the introduction and implementation of the innovation patent system, as a simpler and shorter form of protection for ‘lower level inventions’”. Cited in purported support of this latter proposition by Infa is the decision of the Full Court of the Federal Court of Australia in Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 at [5]-[10].

21    These submissions are not consistent with the express provisions of the Act and Regulations governing patent dates that are the subject of these reasons (and nor, it must be said, do they seem to find specific support in the cited paragraphs of Dura-Post 177 FCR 239). The Act and the Regulations together expressly provide for divisional patents (whether innovation or otherwise) to share the ‘date’ of their parent patent or parent patent application. I do not consider that this necessarily affords the divisional Innovation Patents in this proceeding “greater rights” than those of their parent patent application. Indeed, to some extent it may be said that the opposite is true for these divisional Innovation Patents: the fixed eight-year term of these patents started to run from an earlier date (namely, the date of the parent patent application) than might otherwise be the case for non-divisional innovation patents, and under the Act, there is no provision for obtaining an extension of the term of innovation patents. For all of these reasons, I decline to adopt the position advocated by Infa regarding the interpretation of s 120(1A) of the Act.

22    Accordingly, I find that the relevant date for determining infringement of the nine divisional Innovation Patents is 9 June 2005, being the date on which the complete specification of the parent patent application was filed.

Omnibus claims

23    A number of the patents in issue in this proceeding contain what are commonly referred to as ‘omnibus claims’. The omnibus claims in issue are claim 4 of the Sixth Patent, claims 2, 3, 4 and 5 of the Eighth Patent, and claim 20 of the Standard Patent (referred to by the parties for these purposes as the “Tenth Patent”).

24    Omnibus claims – which are often included amongst the concluding claims in Australian patent specifications – typically define a monopoly by reference to all or part of a specification, or by reference to examples or drawings that have been included in the specification in order to illustrate the invention. Common phraseology includes references to an invention “substantially as described” in a patent specification, or “as described with reference to” specific drawings or examples. The precise words used and references made in a claim (for instance, to drawings or examples, or to particular parts of the specification) have implications for the construction of these claims.

25    In this proceeding, the omnibus claims all refer to inventions “substantially as… described” in the foregoing specifications, and with reference to or as illustrated in various accompanying drawings. The claims in issue are set out in full below. At this stage in the proceeding, I am required to do only two things in respect of these claims: to set out the approach to be taken in the construction of omnibus claims, and in doing so, determine whether the instructions given in respect of this issue to the expert witnesses engaged by the parties were correct. The parties provided only limited submissions on this issue, as follows:

•    [75] to [78] of Britax’s ‘Outline of Opening Submissions – Infringement’ dated 25 January 2011;

•    [94] of Infa’s ‘Outline of Closing Submissions on Infringement’ dated 15 February 2011; and

•    [88] of Infa’s ‘Further Submissions in Reply’ dated 1 April 2011.

26    It is convenient to first set out some of the key principles that apply to the construction of omnibus claims, followed by a review of the omnibus claims in issue and an assessment of the instructions given about construing these claims to the parties’ expert witnesses.

Construction of omnibus claims – general principles

27    A general overview of the nature and purpose of omnibus claims was provided by Lord Morton of Henryton of the House of Lords in Raleigh Cycle Co Ltd v H Miller and Co Ltd (1948) 65 RPC 141, at 157:

For many years it has been a common practice to insert, as the last claim in a patent specification, a claim on the same lines as Claim 5 in the present case. I think that the reason why such a claim has been inserted, in the present case and in countless other cases, is as follows. The patentee fears that his earlier claims may be held invalid, because they cover too wide an area or fail sufficiently and clearly to ascertain the scope of the monopoly claimed. He reasons as follows: “If I have made a patentable invention and have described the preferred embodiment of my invention clearly and accurately, and without any insufficiency in the directions given, I must surely be entitled to protection for that preferred embodiment, and that protection may fairly extend to cover anything which is substantially the same as the preferred embodiment.”

28    As is the case with regular patent claims, the scope of omnibus claims will largely be determined by the precise language used therein, “the context of the specification in which the clause appears”, and “the nature of the descriptions or drawings” to which that clause refers: see Memcor Australia Pty Ltd (ACN 003 581 566) v GE Betzdearborn Canada Company (2009) 81 IPR 315 at 323; [2009] FCA 507; citing Lewis v Hall (2005) 68 IPR 89; [2005] FCAFC 251 with approval; Deere & Co v Harrison McGregor & Guest Ltd [1965] 82 RPC 461 at 465.

29    Without more and in the absence of evidence to the contrary, references in an omnibus claim to claims as “substantially as described herein” are typically construed as being more or less limited to the preferred embodiment described in the specification: see Townsend Controls Pty Ltd v Gilead (1989) 16 IPR 469 at 489; Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 241. Aspects of Justice Gummow’s decision in Rescare were reversed on appeal, but the principles his Honour set out regarding the construction of omnibus claims were not the subject of comment by the Full Court (see Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1).

30    “Substantially” in this context simply means ‘in substance’: see Deere & Co 82 RPC 461 at 463; Townsend Controls 16 IPR 469 at 489. In Raleigh Cycle Co 65 RPC 141 at 159 Lord Morton rejected an argument that the use of the word “substantially” in an omnibus claim would “introduce uncertainty as to the scope of the monopoly”. His Lordship held that:

[t]he word merely indicates that the patentees are not limiting their monopoly to an electric generator which corresponds in every detail with the generator shown in the drawings, but claim the right to object to the manufacture or sale of an electric generator which is in substance the same as the generator so shown. It may be said with some force that the rights of the patentees would have been the same if the word “substantially” had been omitted from the claim. Even so, its presence cannot render the claim invalid. It may be a matter of some difficulty, in some cases, for the Court to decide whether an alleged infringement is or is not substantially the same as the electric generator shown in the drawings, but the Court does not shrink from such a task.

31    The test for validity of omnibus claims is the same as that which applies more generally: see PhotoCure ASA v Queen’s University at Kingston; DUSA Pharmaceuticals Inc v PhotoCure ASA (2005) 216 ALR 41 at 76. A claim must be sufficiently clear to indicate to the notional skilled addressee, to whom the specification is addressed, the limits of what it purports to claim: see PhotoCure ASA 216 ALR 41 at 76. Accordingly, if the specification describes more than one ‘preferred embodiment’ (or if the claim specifically refers to a number of potentially conflicting parts of the specification), there may be ambiguity about what an omnibus claim actually refers to: see Townsend Controls 16 IPR 469 at 489. In such a case, the claim may fail for being insufficiently specific to define the scope of the monopoly claimed: see PhotoCure ASA 216 ALR 41 at 75, citing a number of cases on point. Further, if the preferred embodiment as described in the body of the specification fails to comply with validity requirements, this may fatally affect any omnibus claim that seeks to refer to or rely on it. That was the case in Townsend Controls 16 IPR 469 (at 489); see also Williams Advanced Materials Inc v Target Technology Co LLC (2004) 63 IPR 645 at 655; [2004] FCA 1405.

32    If an omnibus claim also refers to specific drawings or examples, this will typically be construed to narrow the scope of such claims, substantially confining them to the particular embodiments shown in those drawings or examples, subject to those variations that the skilled addressee would regard as minor: see Emperor Sports Pty Ltd v Commissioner of Patents (2005) 146 FCR 159 at 181 citing PhotoCure ASA 216 ALR 41 and Raleigh Cycle Co 65 RPC 141 with approval; General Steel Industries Inc v State of New South Wales (1967) 40 ALJR 464 at 467; Deere & Co 82 RPC 461 at 477-478. Lord Morton commented in Raleigh Cycle Co 65 RPC 141 at 158 that this type of claim is “directed to saving the patent from revocation, if all wider claims are held to be bad”: see also Lewis 68 IPR 89 at 96; [2005] FCAFC 251.

33    The way in which such examples or drawings are referred to in an omnibus claim can also affect its scope. For example, a claim concluding with the words “with reference to the examples” was construed in one case as collectively defining the invention according to the variations illustrated in those examples, rather than notionally splitting the claim into a number of distinct claims to reflect the number of examples referred to: see Daikin Kogyo Co Ltd (Shingu’s) Application [1974] 91 RPC 559 at 579, 581. Lord Justice Buckley commented in that case at 579 that such splitting of a claim will not occur unless this is clearly intended according to “the fair sense of the document”. Of course, construction in each case is ultimately a matter for the Court, and will require a case-by-case approach.

Omnibus claims in issue in this proceeding

34    The omnibus claims in issue in this proceeding are as follows:

Claim 4 of the Sixth Patent:

A tether strap for tethering a child safety seat to a vehicle, wherein the tether strap incorporates means for connecting both the tether strap and a child safety harness used with the safety seat to an anchorage point of the vehicle substantially as herein described and with reference to the accompanying drawings.

Claims 2, 3, 4 and 5 of the Eighth Patent:

2.    Apparatus to secure a child safety seat and a child safety harness to a single anchorage point in a motor vehicle substantially as hereinbefore described and illustrated in any one of:

(a)    figures 4 and 5

(b)    figure 6

(c)    figure 7

(d)    figure 8, or

(e)    figure 9

3.    A child safety seat and child safety harness adapted to be secured to a single anchorage point of a motor vehicle by a connection means arrangement substantially as hereinbefore described and as illustrated in any one of:

(a)    figures 4 and 5

(b)    figure 6

(c)    figure 7

(d)    figure 8, or

(e)    figure 9

4.    A child safety seat and child safety harness adapted to be secured to a single anchorage point of a motor vehicle by a connection means arrangement substantially as hereinbefore described and illustrated in the accompanying drawings.

5.    Apparatus to secure a child safety seat and a child safety harness to a single anchorage point in a motor vehicle substantially as hereinbefore described and illustrated in the accompanying drawings.

Claim 20 of the Tenth Patent:

A safety seat substantially as hereinbefore described with reference to and as illustrated in the accompanying drawings.

35    The drawings referred to in these claims appear as Annexures “B” and “D” to the reasons for judgment dated 9 May 2012.

36    From the submissions of the parties, I am not entirely sure that, in the end, there is any real disputation on this issue relevant to a determination of this proceeding. I have already defined certain words or terms referred to in the omnibus claims, which will be determinative of the next issue of infringement. For instance, a “tether strap” as defined in the specific claims will have the same meaning where it appears in the omnibus claims. Similarly, the other terms or phrases will also have the same meaning, although to be read in the context in which they appear in the omnibus claims.

Instructions provided to the expert witnesses in this proceeding

37    I now turn to the issue of the instructions given to the expert witnesses in respect of the construction of the omnibus claims in this proceeding, and upon which the parties seek guidance and determination.

38    Mr Hunter, the expert witness engaged by Britax, was instructed:

to interpret phrases such as “substantially as herein before described and illustrated” as meaning that the monopoly claimed by the Patent is not limited to an apparatus which corresponds in every detail with the apparatus described and shown in the drawings, but covers an apparatus which is in substance the same as the apparatus so described and shown…

39    In contrast, Mr Newman, the expert witness engaged by Infa, was instructed:

when a claim states ‘substantially as hereinbefore described and illustrated in the accompanying drawings’ or refers to identified figures of the Patent, to interpret the features of the claim as described in the text of the Patent and limited to the specific form of the features described in the drawings.

40    As noted above, Infa provided two paragraphs of submissions on the subject of omnibus claims. It was submitted that Mr Hunter’s approach to the question of construction of omnibus claims was impermissible, as, contrary to what he was instructed, “unless an Infa Product is depicted in a drawing” (or “in all the drawings when the omnibus claim does not distinguish between drawings”), Infa’s products cannot infringe the relevant omnibus claims. Infa accepted, however, that the drawings are to be considered “substantively and not by way of infinite detail”.

41    In contrast, Britax characterises the approach adopted by Infa and its expert witness as being overly narrow and literal (whilst suggesting that despite this, Mr Newman’s evidence nonetheless establishes infringement of a number of the omnibus claims by certain Infa products). In its submissions, Britax referred to a number of authorities – Raleigh Cycle Co 65 RPC 141, Townsend Controls 16 IPR 469 and Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 – in support of its position.

42    Substantively there is little difference between the parties’ instructions to their respective expert witnesses on the subject of the omnibus claims. However, for the foregoing reasons, I consider that the instructions provided by Britax accord slightly better with the key authorities on point than those provided by Infa. The omnibus claims in issue in this proceeding claim a monopoly over products that are in substance what is described in the relevant specifications and depicted in the relevant drawings. As previously noted, the terms used in these claims are to be interpreted in accordance with my earlier reasons for judgment on construction, although in the context in which they appear in the omnibus claims.

43    Notwithstanding these facts, there are some further points I wish to raise in this context of a discussion of the construction of the omnibus claims, despite the fact that these points are principally relevant to the issue of infringement (which is to be determined at a later date with the further assistance of the expert witnesses).

44    Several authorities suggest that, for infringement of an omnibus claim that incorporates drawings to be made out, the “accused product” must be shown to have “the same appearance as the product shown in the drawings”: see Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at 365; [2000] FCA 890; cited with approval in Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd (2005) 64 IPR 281 at 306; [2005] FCA 69. For the avoidance of doubt, it does not seem to me that every detail of a drawing (no matter how minute) must be replicated in an allegedly infringing product for infringement to be made out. This would not accord with the usual tests of patent claim infringement. As Infa’s Counsel correctly acknowledged, such an “identikit” approach is inappropriate. But at the same time, a patentee “who chooses to make a claim… substantially as described and illustrated” should not be “better off than one who puts his claim in words”: see Deere & Co 82 RPC 461 at 477. The use of the word ‘substantially’ in an omnibus claim will not broaden the claim so as to cover replacement of an essential feature of the described invention with something different, so as to permit a finding of infringement: Deere & Co 82 RPC 461 at 477. Further, care must be taken so that the claim is not simply construed with reference to the alleged infringement: Deere & Co 82 RPC 461 at 477.

45    I make these preliminary comments now for the purpose of guiding the expert witnesses in the task that they are yet to undertake with the purpose of assisting in the determination of infringement in this proceeding (namely, the preparation of a further joint expert report).

Associate:

Dated:    18 September 2012