Federal Court of Australia

Miele & Cie KG v Bruckbauer [2025] FCA 537

ORDERS

THE COURT ORDERS THAT:

1.    The parties are directed to confer and provide a draft order giving effect to these reasons to the Chambers of Justice Rofe by 11 June 2025.

2.    In the event that the parties are unable to reach agreement about the form of orders, then the parties are to notify Chambers and provide their own version of a draft order, with the areas of disagreement set out in mark-up.

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

REASONS FOR JUDGMENT

ROFE J:

Overview

1    The applicants (Miele) seek to revoke each of claims 1 to 13 and 15 (relevant claims) of Australian Patent No. 2012247900 entitled “Hob with central removal of cooking vapours by suction-extraction in the downward direction”. Claim 1 is the only independent claim of the Patent.

2    Miele intends to launch its new product models, KMDA 7272 Silence and KMDA 7473 Silence (collectively, the Miele Silence Products) after October 2024. Since at least May 2018, Miele has sold, and continues to sell in Australia the product models, KMDA 7476 FL, KMDA 7774 FL, KMDA 7633 FL, KMDA 7633 FR, KMDA 7634 FL and KMDA 7634 FR (collectively, the Current Miele Products).

3    The respondents (BORA) cross-claim, seeking relief in relation to the infringement of claims 1 and 11 of the Patent (asserted claims). The first respondent/cross-claimant, Mr Bruckbauer is the inventor of the invention claimed in the Patent, and the registered owner of the Patent. BORA - Vertriebs GmbH & Co KG, the second respondent/cross-claimant, is the exclusive licensee of the Patent. BORA also seeks to amend the Patent pursuant to s 105 of the Patents Act 1990 (Cth) to amend what they describe as “two obvious typographical errors” in the Patent.

4    The only issue on the infringement case relates to the Miele Silence Products, as Miele admits that the Current Miele Products have the features claimed in claims 1 and 11 of the Patent.

5    Miele contends that each of the relevant claims is invalid for lack of support and sufficiency, and that if the invention as claimed is sufficiently described in the Patent, for lack of novelty by reason of a deferred priority date. Further, Miele alleges that amendments to a Chinese patent application were publicly available and disclosed the invention claimed in the Patent.

6    On 28 September 2022, O’Bryan J ordered that all questions concerning the quantum of any award of damages (including any entitlement to, and amount of, additional damages), profits or interest be determined separately from, and after, all other questions in the proceeding. Thus it is not for determination in this part of the proceeding whether additional damages are enlivened.

Patent

Prosecution history

7    The Patent claims a priority date of 28 April 2011, based on an application filed in Germany. It is common ground between the parties that the provisions of the Act which apply to this Patent are those amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth).

8    An International Patent Application PCT/DE2012/000458 (WO 2012/146237) (PCT Application) was filed on 28 April 2012. The Patent was granted from Australian Patent Application No. 2012247900 A1 (the A1 Application), which is an Australian national phase application based on the PCT Application. I refer to the A1 Application interchangeably with the PCT Application in this judgment. Section 29A of the Act stipulates that the corresponding PCT Application is to be treated as the complete specification as filed for the corresponding patent.

9    Amendments to the PCT Application were filed when the PCT Application entered national phase in Australia on 12 November 2013. I refer to these amendments as the 2013 Amendments.

10    On 11 November 2015, Mr Bruckbauer, the Patentee, filed amendments to the Patent in response to a first examination report dated 23 September 2015. Those amendments, which I will call the 2015 Amendments, were accepted on 1 December 2015. The Patent was granted on 31 March 2016.

11    As discussed below, the Patentee now seeks to amend the Patent in this proceeding to correct two typographical errors in the specification and claim 1.

Specification

12    The specifications of the Patent and the PCT Application do not have numbered paragraphs or numbered lines. The parties and their experts adopted a numbering scheme to refer to paragraphs in the specification. A reference to a paragraph is by reference to the page number and paragraph number on that page. For example, the first complete paragraph on page 1 will be [1.1] and the second complete paragraph on page 1 will be [1.2]. I will adopt the same paragraph numbering scheme in these reasons.

13    As Miele contends that the 2015 Amendments were not allowable under s 102 of the Act and that the invention claimed in Patent is not entitled to a priority date earlier than 11 November 2015 (Deferred Priority Date), I will start with a consideration of the specification of the PCT Application. Where appropriate, I will set out the relevant differences between the Patent and the PCT Application.

PCT specification

14    The PCT specification begins by noting that the present invention relates to a hob with the features of claim 1. The invention in the Patent relates to “a hob”. Both experts agreed that a ‘hob’ as used in the specification refers to the top part of the cooktop assembly comprising hotplates for heating pots and pans, rather than an entire standalone assembly (i.e., a cooktop).

15    Claim 1 of the PCT claims:

A hob (1) with one or more cooking locations (2), characterized in that, as viewed from above, it exhibits one or more recesses (4) only in the area (25) around its geometric centre (3), which are connected with one or more devices (5) for removing cooking vapours through suction, wherein these devices (5) for removing cooking vapours through suction downwardly remove the cooking vapours that arose or arise above the cooking locations (2) by suction in a direction pointing vertically below the hob (1).

16    Claim 1 includes reference to the numbers by which the integers are identified in the figures in the PCT. Figure 1, replicated below, is a top view of a hob (1) according to the preferred embodiment of the invention, with one or more cooking locations (2), a central recess (4) for a device (5) for downwardly removing cooking vapours through suction.

17    BORA places emphasis on the reference to “a device (5)” as providing a basis for a form of the invention with only one fan, as opposed to two fans.

18    The known prior art hob is described as a hob that “exhibits oblong, rectangular suction slits on both sides and on the back, through which cooking vapours that arise in the hob area are downwardly removed through suction”.

19    The known hob is said to have a number of disadvantages, including:

(a)    the countertop that carries the hob cannot be completely used for temporary storage or similar purposes, at least right to the side of the hob;

(b)    the lateral and rear suction flows cancel each other out completely or at least partially, especially in the centre of the hood;

(c)    marked manufacturing and material costs, in particular due to the design of the three suction devices and the foul-air duct system connected with the latter;

(d)    high maintenance costs, including maintaining three grease filters;

(e)    high noise from three fan motors and low efficiency;

(f)    installation is time intensive and expensive.

20    The object of the “present invention” is said at [2.4] to address each of these disadvantages. This object is said to be achieved “in a generic device by the features indicated in the characterizing clause of claim 1”. Whether the skilled reader would understand “device (5)” and the word “device” in this paragraph to be interchangeable with “fan” was a subject of debate between the parties.

21    Both experts agreed that the invention is not restricted to induction heating hobs, the heating elements may be electrical coils or ceramic hotplates.

22    Especially preferred embodiments are said to be the subject of the sub-claims.

23    There is then a brief description of the drawings. Figures 1 to 11 are various views of a hob according to the invention. Figures 2 to 7, 10 and 11 are schematic cross-sections of a hob. Figures 12 to 16 are of a hob according to the invention which takes the form of an “assembly unit with a device (36)”. The “assembly unit with a device (36)” is described from [10.4] of the Patent. Figures 17 and 18 are said to be a schematic view of a hollow cylindrical grease filter connected with, respectively, a single or two opposing, foul-air vents.

24    At [6.4] the present invention is said to relate to a hob with one or more cooking locations, which, as viewed from above, exhibits one or more recesses only in the area around its geometric centre, but not in its edge area. The specification notes that:

[a]s a rule, these recesses (4) are connected with one or more devices (5) for removing cooking vapours through suction, wherein these devices (5) for removing cooking vapours through suction downwardly remove the cooking vapours that arose or arise above the cooking location(s) (2) by suction in a direction pointing vertically below the hob (1).

25    Figures 2 to 7 deal with different options for the configuration of the grease filter insert in the central recess and for the configuration of the floor for collection of grease and oil. Paragraphs [7.1] to [10.3] describe variations of the grease filter, closure options and overflow protection.

26    Miele contends that the PCT specification is not deploying those figures to tell the reader about the fan configuration. Figure 2 is a schematic cross-section of a hob along the A–A line depicted on Figure 1. Figures 3 to 7 are cross-sections along the B–B line depicted on Figure 1. Figures 10 and 11 are cross-sections along the B–B line depicted on Figure 9.

27    After introducing the general features of the hob, the PCT specification then describes the device “for downwardly removing cooking vapours by suction”. From [10.4], the word “device” is used in a different manner, as part of the larger integer, “an assembly unit with a device”. The present invention is said to further relate to:

a hob (1) with a central recess (4), which takes the form of an assembly unit with a device (36) provided on its bottom side (35) for operating the hob (1) and downwardly removing cooking vapours by suction, and can be quickly and easily inserted into a recess of the kitchen countertop (54) whose dimensions correspond thereto.

28    Figures 12 to 16 are of a hob according to the invention which takes the form of an “assembly unit with a device (36)”.

29    It is apparent that the “device (5)” is not the same as the item labelled (36) which is described as “an assembly unit with a device”. Item (36) is the composite assembly, being an assembly unit with device. On the basis that the Patentee has made consistent use of words, the device in the assembly unit would be the “device” in item (5).

30    Later references in the PCT Application appear which are to “the invention designed as an assembly unit with a device (36)”: PCT Application at [13.4].

31    The PCTspecification continues:

[11.1]    As depicted in particular on Fig. 12 to 16, the bottom side (35) of the hob (1) in the device (36) as viewed downwardly sequentially in a vertical direction can encompass a housing (44) for the heating or hob heating and control electronics, a fan housing (48) for two or more radial fans (38), and one or more cooking vapour aspiration chambers (39) for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans (38) provided in the fan housing situated vertically higher.

[11.2]    One special advantage to this hob (1) designed according to the invention is that the distance (40) between the bottom side (35) of the hob (1) on the one hand and the bottom side of the floor (42) of the cooking vapour aspiration chambers (39) on the other only measures between 110 mm and 260 mm, preferably between 140 mm and 230 mm , in particular between 150 mm and 200 mm.

(Emphasis added.)

32    At [12.1], the PCT Application states that in “preferred embodiments of the hob (1) according to the invention described as an assembly unit with a device (36), two or more deep cooking vapour aspiration chambers (39) can be provided downstream from the hollow cylindrical grease filter (6) …”.

33    Figures 14 and 16 are described in [12.2] as showing that

two or more recesses (61) for guiding the cooking vapours (63) from the bottom up to the radial fans (38) provided downstream from the recesses can be provided in the middle areas (59) of the covers (60) of the cooking vapour aspiration chambers (39) lying vertically at the top.

34    The housing (44) for the heating or hob heating and control electronics first appears at [11.1]. At [12.3] the specification explains that the radial fan motors can be centrally secured by way of their recesses in the middle areas of the covers of the cooking vapour aspiration chambers to the bottom side of the housing (44) for the heating or hob heating and control electronics. The housing, and what it can, amongst other things, incorporate is discussed at [12.4]:

Among other things, for example, the housing (44) for the hearing or hob heating and control electronics can incorporate the hob heating elements (37), the power electronics (55) for the fan motors (56) and touch-control operating components (57) (see Fig. 12). Among other things, for example, the bottom side of the housing (44) for the hearing or hob heating and control electronics can be provided with a device power supply line (58) (see Fig. 13).

35    Figure 15 is a schematic top view of an assembly unit according to the invention. Figure 15 has two perpendicular lines (A–A) and (B–B) drawn on it which show where the longitudinal sections depicted in Figure 14 and Figure 16 are taken. Figure 14 is a schematic, longitudinal section along the A–A line of the assembly unit depicted in Figure 15, and Figure 16 is a schematic longitudinal view along the B–B line. Figure 15 and Figure 16 are shown below:

36    Figures 14 and 16 are also said to show that the “rotational axes (62) of the radial fan motors (56) can be vertically aligned, and that the cooking vapours (63) aspired vertically upward by the rotating fan wheel (65) can be transported in the fan housing (48) provided above the respective aspiration chamber (39)”. The rotational direction of the two radial fan wheels is preferably opposite to each other: PCT Application at [14.2].

37    The specification notes at [14.3] that:

[t]he advantage to oppositely aligning the rotational directions according to Figure 15 is that the two cooking vapour exhaust flows (69) stream toward the odour filter (71) provided downstream from the space (68) for dividing and aligning the exhaust flows (69), either indirectly by way of air guiding surfaces (70), or in a uniformly direct manner.

38    At [15.2] the specification brings the threads together, commencing “[i]n sum, let it be noted that the present invention provides a hob with a device for removing cooking vapours through suction in a direction lying vertically below the plane of the hob”. It continues: “For the first time ever, a cooking vapour removal device is combined with a hob in the device according to the invention to form a single component, thereby yielding especially low manufacturing and assembly costs”.

39    BORA submits that it is that characteristic which sets apart the invention claimed in the PCT specification from predecessor downdraft extraction products, which were separate products installed adjacent to the hob, rather than being integrated with the hob. This general characteristic is submitted to be independent from the additional, special characteristics of the “assembly unit” (which are described in paragraphs [16.5] to [17.1]).

40    Advantages of the hob according to the invention designed as an assembly unit with a device (36), are said to be, its energy efficiency, quietness, low height, low operating costs, and as it can be completely pre-assembled at the factory, its fast, simple and easy installation.

41    Miele submits that the only device as part of the below hob assembly unit described and disclosed is a device with two or more radial fans, and the advantages of the assembly unit described are confined to the unit with two or more radial fans. The discussion of the “device (5)” at [16.1] speaks of “sufficiently strong suction flows that do not cancel each other out”, consistent with there being two or more fans. The description of the assembly unit that follows at [17.2] and [17.3] refers only to plural radial fans and fan motors.

42    At [17.2] it is noted that:

providing two or more opposing radial fans (38) downstream from the hollow cylindrical grease filter (6) according to Fig. 17 and 18 markedly enlarges the working surface of the grease filter (6) and elevates throughput volume… The advantage to this is that the fan motors (56) of the radial fans (38) can exhibit an especially small, energy-saving, energy-efficient and quiet design. In addition, a lower speed can be selected for the fan motors, as a result of which the radial fans used according to the invention operate in an especially quiet, low-vibration and energy efficient manner.

43    Miele contends that the skilled reader understands [17.2] of the PCT Application to say that the invention of that specification is to use two radial fans in the device forming part of the assembly unit and Figure 17 is used in that aspect by way of contrast or counterexample to illustrate the advantage of the two-fan configuration of the invention (as seen in Figure 18) in comparison to a single fan configuration. BORA contends otherwise and submits that the skilled reader understands [17.2] of the PCT Application as containing a distinct reference to a particular embodiment of the invention claimed in claim 14 of the PCT Application, which is “characterized in that two radial fans as viewed from above are positioned in the fan housing on either side of the tubular foul air line”. BORA submits that a skilled reader would not understand a description of an advantage of this particular, narrow embodiment with two opposing radial fans to effectively be disclaiming any embodiment with one radial fan (which, it submits, is virtually every other claim of the PCT Application which is dependent on claim 1).

44    Figures 17 and 18 are shown below.

PCT claims

45    Claim 1 of the unamended PCT Application and the A1 Application claims:

A hob (1) with one or more cooking locations (2), characterized in that, as viewed from above, exhibits one or more recesses (4) only in the area (25) around its geometric centre (3), which are connected with one or more devices (5) for removing cooking vapours through suction, wherein these devices (5) for removing cooking vapours through suction downwardly remove the cooking vapours that arose or arise above the cooking locations (2) by suction in a direction pointing vertically below the hob (1).

(Emphasis added.)

46    Miele observes that there are no references to fans in the PCT claims until claim 11, which claims a fan housing for two or more radial fans. The only reference to radial fans in the claims after claim 11 are to more than one fan (i.e., fans or fan motors).

47    Claim 11 of the unamended PCT Application and the A1 Application is dependent on claims 1 or 2 and claims the following:

The hob (1) according to one of claims 1 or 2, characterized in that the bottom side (35) of the hob (1) is provided with a device (36) for operating the hob (1) and downwardly removing cooking vapours by suction that together with the hob (1) forms an assembly unit, wherein the bottom side (35) of the hob (1) in the device (36) as viewed downwardly sequentially in a vertical direction encompasses a housing (44) for the heating or hob heating and control electronics, a fan housing (48) for two or more radial fans (38), and one or more cooking vapour aspiration chambers (39) for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans (38) provided in the fan housing (48) situated vertically higher, wherein the distance (40) between the bottom side (35) of the hob (1) on the one hand and the bottom side of the floor (42) of the cooking vapour aspiration chambers (39) on the other measures between 110 mm and 260 mm.

48    Claim 14 claims:

The hob (1) according to one of claims 1, 2, 11, 12 or 13, characterized in that two radial fans (38) as viewed from above are positioned in the fan housing (48) on either side of the tubular foul air line (50) provided downstream from the central hob recess (4), wherein the rotating directions (73) of the two fan wheels (65) of these two radial fans (38) are opposite to each other, wherein the left fan wheel (65) can be rotatively driven counterclockwise as viewed from above, so that the two pressure chambers (67) of the two radial fans (38) are adjacent to the central foul air line (50), and the two cooking vapour exhaust flows (69) stream toward the odour filter (71) provided downstream from the space (68) for dividing and aligning the exhaust flows (69), either indirectly by way of air guiding surfaces (70), or in a uniformly direct manner.

PCT Amendments (2013 Amendments)

49    Amendments were made to claims 1 and 11 of the PCT Application as filed on 28 April 2012 under article 34 of the Patent Cooperation Treaty (Washington, 19 June 1970) prior to entering national phase in Australia on 12 November 2013. The body of the specification and claims 2 to 10 and 12 to 15 remained identical to the PCT Application. These amendments were made to the A1 Application. As noted above, I refer to these amendments as the 2013 Amendments.

50    The 2013 Amendments replaced the original claims 1 and 11 of the PCT Application. The body of the specification and claims 2 to 10 and 12 to 15 remained identical to the PCT Application.

51    Claim 1 was narrowed to the hob assembly unit claimed in former claim 11 (but with the former limitation as to the ‘compactness’, (i.e., the distance references) of the hob deleted). Claim 11, dependent on claim 1 as amended (i.e., the hob assembly unit) retained the limitation as to the ‘compactness’ of the hob.

52    Following the 2013 Amendments, claim 1 as amended in the PCT Application claimed:

A hob (1) with one or more cooking locations (2), which, as viewed from above, exhibits one or more recesses (4) only in the area (25) around its geometric centre (3), which are connected with one or more devices (5) for removing cooking vapours through suction, wherein these devices (5) for removing cooking vapours through suction downwardly remove the cooking vapours that arose or arise above the cooking locations (2) by suction in a direction pointing vertically below the hob (1), characterized in that the bottom side (35) of the hob (1) is provided with a device (36) for operating the hob (1) and downwardly removing cooking vapours by suction that together with the hob (1) forms an assembly unit, wherein the bottom side of the hob (1) in the device (36) as viewed downwardly sequentially in a vertical direction encompasses a housing (44) for the heating or hob heating and control electronics, a fan housing (48) for two or more radial fans (38), and one or more cooking vapour aspiration chambers (39) for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans (38) provided in the fan housing (48) situated vertically higher.

53    Following the 2013 Amendments, claim 11 as amended in the PCT Application claimed:

A hob (1) according to one of claims 1 or 2, characterized in that the distance (40) between the bottom side (35) of the hob (1) on the one hand and the bottom side of the floor (42) of the cooking vapour aspiration cambers (39) on the other measures between 110 mm and 260 mm.

2015 Amendments

54    On 11 November 2015, BORA filed the 2015 Amendments discussed above. Pages 1 to 5a of the Patent were added with the 2015 Amendments.

55    Paragraph [1.1] was amended as follows: “The present invention relates to a hob”, with the proceeding phrase “with the features indicated in claim 1” removed. Miele submits that, as such, the present invention was no longer confined to the hob assembly unit having two or more radial fans. Miele contends that this is also apparent in the amendment at [4.2], with the amendments quoted below:

[4.2] PRIOR TO AMENDMENT: Fig. 1 is a top view of a hob (1) according to the invention with a central recess (4) for a device (5) for downwardly removing cooking vapours through suction;

[4.2] FOLLOWING AMENDMENT: Fig. 1 is a top view of a hob (1) according to a preferred embodiment of the invention with a central recess (4) for a device (5) for downwardly removing cooking vapours through suction;

56    The description of the prior art hob and its disadvantages are the same as the PCT Application.

57    The object of the present invention is succinctly stated as being “to substantially overcome or at least ameliorate one or more of the above disadvantages”. The object is no longer to overcome all of the disadvantages specified. Consistently with this amended object, the Patent states that a “preferred embodiment aims to provide a hob with a device for removing cooking vapours through suction in a [direction] lying vertically below the plane of the hob…”.

58    Paragraph [2.5] describes a “first aspect” that is disclosed in the Patent. This “first aspect” is a consistory clause for the invention as claimed in claim 1 of the Patent. A “second aspect" is described at [3.1] which corresponds with claim 10.

59    The Patent states at [4.1] that “[p]referred exemplary embodiments are described in more detail based on the drawings”. Those drawings are Figures 1 to 18, which are described on pages 4 to 6 of the Patent and which appear on pages 1/17 to 17/17, after the claims. The drawings are the same as those in the PCT.

60    Other differences between the PCT and the Patent are:

(a)    The narrowing of claim 1 in the Patent by making it substantially the same as claim 11 of the PCT Application, but without the dimension limitation of claim 11 of the PCT Application (that dimension limitation remained in claim 11 of the Patent), which change occurred through the 2013 Amendments;

(b)    Changing the description of the fan housing of the invention as claimed in claim 1 of the Patent (i.e., a change from the invention as claimed in claim 11 of the PCT Application) in the following manner: “a fan housing for one, two or more radial fans”, and “by means of the one, two or more radial fans provided in the fan housing” (Emphasis added.);

(c)    Adding the words “wherein the fan housing is situated above the one or more cooking vapour aspiration chambers” at the end of claim 1.

61    Paragraphs [10.4], [11.1], [11.2], [12.2]–[12.4], [15.1]–[17.3] are the same as those in the PCT Application.

Patent claims

62    BORA adopted a numbering system for the integers of claim 1 of the Patent. I adopt this system herein. Claim 1 of the Patent claims:

63    Following the 2015 Amendments, claim 11 of the Patent claims:

A hob according to one of claims 1 or 2, wherein the distance between the bottom side of the hob on the one hand and the bottom side of the floor of the cooking vapour aspiration chambers on the other measures between 110 mm and 260 mm.

64    Both the expert witnesses proceeded on the basis of the claims as amended through the 2015 Amendments in preparing their evidence.

Witnesses

Experts

William Hunter

65    Mr William Samuel Hunter is a mechanical engineer, with more than 30 years’ experience in the research, development, design, testing and manufacture of various consumer products and systems involving the application of mechanical engineering principles, including those which require the control, manipulation and/or extraction of fluids such as air and liquids.

66    Mr Hunter holds a Bachelor of Engineering Science (Mechanical) (with first class honours) from the University of Melbourne (obtained in 1982) and a Master of Engineering Science, also from the University of Melbourne (obtained in 1985). He has been a member of the Institute of Engineers Australia since 1985.

67    In the course of his work as a mechanical engineer, Mr Hunter has obtained considerable experience with both centrifugal (radial) and axial fans. As a result of his undergraduate studies in mechanical engineering, Mr Hunter has specialised knowledge of fluid (air) flow.

68    As he noted in his first affidavit, Mr Hunter has also provided expert opinions to the Federal Court of Australia in relation patent and design matters, including some fan related matters: a ceiling fan design registration matter (Hunter Pacific International Pty Ltd v Martec Pty Ltd (2016) 121 IPR 1); and centrifugal fans and air conditioning systems (Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd (2018) 135 IPR 403). He has also given evidence to the Australian Patent Office related to the design of a retractable blade ceiling fan design.

69    Mr Hunter gave considered evidence on the basis of his qualifications as a mechanical engineer, making concessions where appropriate.

70    BORA made a number of criticisms of Mr Hunter, including that he was not representative of the person skilled in the art and that he was a “professional witness”. I deal with BORA’s specific criticisms of Mr Hunter under the heading “Person skilled in the art” below.

Justin McLindin

71    Mr Justin Joseph McLindin is a retired Product Manager. He has a Bachelor of Applied Science in Industrial Design and a Bachelor of Industrial Design. Mr McLindin began his career as an industrial designer with Email Limited in 1983, working primarily on cookers, ovens, cooktops, hobs, and refrigerators. In 1996, he joined Electrolux Ltd as a design engineer, where he worked on cooking products like freestanding cookers, built-in ovens, cooktops/hobs and rangehoods. In that role, he was involved with the mechanical design and testing of new products which included how the products are made, how they are put together, all the bill of materials, the testing and proving of the product, getting it through compliance testing and having the product ready for production at a target price point.

72    Mr McLindin returned to Electrolux in 2001, after a two-year stint at Hills Industries, where he worked as a senior research and development engineer, within the home and hardware products division of Hills Industries. From 2001 to 2008, he was a Senior Product Design Engineer working on the development of freestanding cookers, built-in overs, cooktops/hobs and ranges/hoods. In 2008 he became Asia Pacific Regional Product Manager, and in 2015 he became Regional Product Manager for barbeques, dishwashers and cooking products.

73    Miele accepted that Mr McLindin was suitably qualified to express an opinion as to matters of product design, it observed that whilst Mr McLindin had extensive experience in hob design and manufacture, he had no experience in downdraft hobs before the priority date other than as a consumer. Mr McLindin also had no expertise in the field of optimising fluid dynamics and would engage a consultant to perform such analysis if required.

74    This proceeding was Mr McLindin’s first engagement as an expert witness.

75    Aspects of Mr McLindin’s evidence evolved through the process of written evidence, joint expert report (JER) and the joint session. He also made extensive written corrections to his responses in the JER. Mr McLindin sought to explain this on the basis that it was his first experience as an expert witness. For example, when questioned about his JER corrections in the joint session:

MR McLINDIN: I did, and I considered that I probably should have reviewed it a little bit more carefully than what I did. Obviously, this process is new to me, so that’s why. I noticed there were a number of things that needed to be corrected in there.

Joint Expert Report

76    On 1 July 2024, Mr Hunter and Mr McLindin prepared a JER in which they addressed questions set by the parties, noting where they agreed or disagreed with each other on particular issues.

77    On 19 July 2024, Mr McLindin prepared a three-page document entitled “Joint Expert Report Clarifications”, which clarified many of his responses in the JER (JER Clarifications).

Lay witnesses

Miele

Marco Wiechert

78    Mr Marco Wiechert is a mechanical engineer employed by a subsidiary of the first applicant. Mr Wiechert has been involved in the advanced development of Miele cooking fume extractors (including the Miele Silence Products) since 2014. Since 2017, Mr Wiechert has been a member and/or co-convenor of the International Electrotechnical Commission standardisation bodies related to cooking fume extractors.

79    Mr Wiechert verified the Miele Silence Products’ description, which set out the products which are alleged by BORA to infringe. He was not cross-examined.

Ji Liu

80    Mr Ji Liu is a Patent Attorney and the Director of the Patent Litigation Department at CCPIT Patent and Trademark Law Office. Mr Liu holds a Bachelor of Science and Masters of Science in Applied Chemistry. He commenced work as a patent engineer with CCPIT in 2001 on completion of his Masters of Science. In 2009, Mr Liu was admitted to the patent bar in China and commenced employment with CCPIT as a qualified Patent Attorney.

81    Throughout his over 23 years of practice, Mr Liu has acquired expertise in relation to the prosecution, enforcement, defence and challenge of Chinese patent applications and granted patents and has become familiar with the systems, practices and procedures of the Chinese National Intellectual Property Administration (CNIPA).

82    Mr Liu’s affidavits were written in English and were prepared without the assistance of an interpreter. Mr Liu declared that Miele’s solicitors, Davies Collison Cave, provided him with drafting assistance in preparing the affidavits.

83    Mr Liu was cross-examined. Mr Liu at times required the assistance of a Chinese language interpreter, however, when the interpreter asked for clarification on certain questions raised in English, Mr Liu was able to respond to the cross-examiner in English.

84    Mr Liu’s answers to questions were at times unnecessarily prolonged, particularly to ‘yes’ or ‘no’ questions. At times, Mr Liu responded to questions with irrelevant and extended answers, which did not answer the question posed.

85    Overall, I found Mr Liu to be a credible and reliable witness.

Sensen Min

86    Mr Sensen Min is a Patent Attorney and a Counsel at the Shanghai office of JunHe law firm, a private partnership law firm in China. He holds a Bachelor of Engineering and a Master of Laws.

87    Mr Min joined JunHe as a junior associate in 2014. In 2017, Mr Min obtained certification as a licensed attorney in China. That same year he became a registered patent agent at the CNIPA.

88    Since 2014, Mr Min’s experience has included drafting and handling Chinese and PCT patent applications, specialising in medical devices, semiconductors, autonomous driving, and intelligent manufacturing. Mr Min has expertise in relation to the prosecution, enforcement, defence and challenge of Chinese patent applications and granted patents across various technology fields, and as a result of his practice, he has become familiar with the systems, practices and procedures of the CNIPA, including in 2015.

89    Mr Min is the co-author of an article published on JunHe’s website on 12 November 2015, the title of which translates to “Analysis of the Public Opinion Procedure in Patent Applications”. This article is discussed below.

90    Mr Min was cross-examined. His answers were responsive to the questions asked and he appeared to be a frank and credible witness. I consider that Mr Min’s answers were more responsive to counsel’s line of questioning than Mr Liu’s.

Xinyu Pei

91    Mr Xinyu Pei is a NAATI qualified translator, certified in relation to Chinese into English and vice versa.

92    Mr Pei translated various documents in this proceeding from Chinese to English. Mr Pei was not cross-examined.

BORA

Paul Ganter

93    Dr Paul Ganter is a partner of Rau, Schneck & Hübner Patentanwälte Rechtsanwälte PartGmbB, BORA’s patent attorneys in Germany. Dr Ganter is a German and European Patent Attorney. He affirmed an affidavit on 30 November 2023 and gave evidence in relation to the application to amend the Patent.

94    Dr Ganter has acted for BORA in relation to intellectual property matters globally since 2015. Dr Ganter was not cross-examined.

Ting Nan

95    Ms Ting Nan is a Patent Attorney and Executive Partner of Cohorizon Intellectual Property Ltd in China. She gave evidence regarding guidelines and practices of the CNIPA.

96    Ms Nan made two affidavits in this proceeding.

97    Ms Nan was cross-examined with the assistance of an interpreter. Ms Nan gave evidence that she had no problem reading or speaking English, and that, in the preparation and drafting of her affidavits filed in this proceeding, she did not have any draft versions of the affidavits translated into Chinese in order for her to understand them. However, when counsel for Miele attempted to cross-examine Ms Nan, Ms Nan required the aid of an interpreter and stated that she required their assistance as she could not understand the cross-examiners’ questions.

98    Ms Nan’s inability to answer questions without the aid of an interpreter, coupled with her unresponsive answers to questions, were suboptimal.

99    Ms Nan gave evidence regarding rule 5.2(2), chapter 4, part 5 of the 2010 Patent Examination Guidelines (2010 Guidelines), that certain Patent claim amendments were not publicly available on the CNIPA website. I deal with Ms Nan’s evidence further below.

Jianguo Wang

100    Mr Jianguo Wang is a Patent Attorney and Partner of Chinable IP in Beijing, China. Mr Wang holds a Bachelor’s Degree in Mechanical Engineering from Xi’an Jiaotong University and a Masters in Law from Peking University. He became a registered patent attorney in 2010. As a consequence of his years of experience as a patent attorney, he has become familiar with and knowledgeable about the systems, practices and procedures of CNIPA and its systems for obtaining access to documents on file in relation to Chinese patent applications.

101    Mr Wang was cross-examined. Initially, Mr Wang gave considered responses when initially cross-examined. However after an adjournment, Mr Wang returned the following week and provided lengthier answers which were often not responsive to questions asked, and at times, argumentative. I elaborate on Mr Wang’s evidence further below.

Daniel McKinley

102    Mr Daniel McKinley is a Principal at Gestalt Law and is the solicitor on the record for BORA in this proceeding. He affirmed an affidavit on 28 March 2024. He gives evidence relating to Miele’s alleged infringement of the Patent, and puts into evidence certain dictionary definitions and correspondence relevant to BORA’s application to amend the Patent.

103    Mr McKinley was not cross-examined in this proceeding.

Mario Blersch

104    BORA sought to tender an affidavit of Mr Mario Blersch, the Intellectual Property Management Team Lead of the second respondent in this proceeding. I did not allow this affidavit to be tendered and I indicated to the parties that I would address this in my reasons.

105    Mr Blersch’s affidavit and the annexures to that affidavit contained a variety of models of BORA downdraft extraction products and modular cooktops which predate the Patent.

106    There was no inventive step challenge in this proceeding. BORA submitted that Mr Blersch’s affidavit was relevant to the consideration of the technical contribution to the art for the purposes of the support challenge made against the Patent under s 40(3) of the Act.

107    The technical contribution of the invention of the Patent is assessed by reference to the invention described and claimed in the Patent. In the case of a product claim, it is the product, not by reference to the state of the common general knowledge. Furthermore, the common general knowledge is used for the purpose of interpreting the disclosure of the specification or priority document and placing it in a context. It is not permissible to use the common general knowledge to go further than eliciting the explicit or implicit disclosure, for the purpose of supplementing that disclosure or adding to it what may seem to be an obvious further feature.

108    The experts did not refer to the BORA products discussed in Mr Blersch’s affidavit in their evidence, including in their discussion of whether they would be able to make a hob assembly unit with one fan, and how they might go about that task.

109    I also note that Mr Blersch’s affidavit, and the material in it, was not mentioned by either party in their written submissions or their oral opening submissions, which were completed before I ruled on the parties’ objections.

110    As such, I do not consider Mr Blersch’s affidavit to be relevant to any matter in issue in this proceeding.

Amendment

111    Mr Bruckbauer seeks to amend the Patent pursuant to s 105 of the Act to correct two clerical errors or obvious mistakes in the Patent.

112    Notice was given to the Commissioner of Patents under s 105(3) of the Act on 26 September 2023. On 27 September 2023, IP Australia advised the Patentee that the Commissioner was prima facie satisfied that the proposed amendments met the requirements of s 102 of the Act, and that the Commissioner did not intend to appear in this proceeding. The proposed amendments were advertised in the Australian Official Journal of Patents on 12 October 2023, in accordance with r 34.41 of the Federal Court Rules 2011 (Cth).

113    Miele does not oppose BORA’s application to amend the Patent. Both Mr McLindin and Mr Hunter considered the Patent as if it has been amended to correct the typographical errors.

The proposed amendments

114    The first error sought to be amended appears in claim 1. The line as written currently reads, “a housing for the heating of hob heating and control electronics”; BORA contends that it should read, “a housing for the heating or hob heating and control electronics” (Emphasis added.). BORA submits that this is clearly the result of a clerical error and an obvious mistake in transcribing claim 1. This is demonstrated by the multiple instances of use of the correct phrase (i.e., “heating or hob heating”) elsewhere in the Patent, such as paragraphs [3.1], [11.1], [12.4], [17.3], and claims 12 and 13.

115    The other error sought to be amended appears on page 2 (at [2.4]). The words “direct ion” should be the word “direction”. BORA contends that this is also clearly the result of a clerical error and obvious mistake.

Relevant sections of the Act

116    Section 105 of the Act relevantly provides:

(1)     In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent request or the complete specification in the manner specified in the order.

…

(4)     A court is not to direct an amendment that is not allowable under section 102.

117    Section 102 of the Act concerns allowable amendments and relevantly provides:

(1)     An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a) the complete specification as filed;

(b) other prescribed documents (if any).

…

(3)     This section does not apply to an amendment for the purposes of:

(a)     correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or

…

Principles

118    BORA contends that both the amendments are for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, the complete specification of the Patent.

119    The onus to establish that the error is a clerical error or an obvious mistake lies with the patentee seeking the amendment: Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (2010) 88 IPR 1 at [13] (per Bennett J).

120    Justice Yates distinguished between a “clerical error” and “obvious mistake” in Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039 at [14]–[19], stating:

14    In The Queen v Commissioner of Patents; Ex Parte Martin (1953) 89 CLR 381, Williams ACJ said (at 395):

… A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different. …

15    Fullagar J (with whom Kitto J and Taylor J agreed (at 408)) said (at 406), that the expression “clerical error” is of a “somewhat elastic character”. After considering various dictionary meanings of the word “clerical”, his Honour continued:

… Probably no one would deny that a clerical error may produce a significant, and even profound, effect as for example, in a case in which a writer or typist inadvertently omits the small word “not”. But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing. …

16    In General Tire & Rubber Company (Frost’s) Patent [1972] RPC 271, Graham J (at 279) considered an “obvious mistake” to be one which:

… involves that the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction.

17    In reaching that conclusion, his Lordship distinguished between such a mistake and a mistake that had been “obviously made”. His Lordship (at 278) explained the distinction as follows:

It is the mistake which must be obvious and not the fact that it has been made. This implies, to my mind, that both the fact of mistake and the correction necessary must be clear to the reader’s mind, and it is not enough if he merely appreciates the presence of a mistake. If, in a mathematical context, it is said “2 and 2 make 5”, the reader would immediately say: “5 is an obvious mistake for 4”. If, however, there is more than one possible correct answer to the question, particularly where the answers may depend on intention or judgment, the reader would say: “Obviously a mistake has been made but I cannot tell you what is the right answer”. The wording of the section itself therefore, to my mind, shows an intention in favour of the first construction rather than the second.

18    In the course of considering that question, his Lordship observed (at 277) that, for the purpose of correcting an obvious mistake:

… it does not matter that the claim may be enlarged by the amendment.

19    Both these cases accept that the correction of clerical errors and obvious mistakes may involve the making of very significant amendments to the specification and, in particular, the claims. Yet, such amendments are allowable if they are truly “clerical errors” or “obvious mistakes”.

121    The characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing: The Queen v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381 at 406 (per Fullagar J).

122    In Expo-Net, Bennett J considered the issue of “obvious mistake” and at [13] approved the statement of Graham J in General Tire and Rubber Co (Frost’s) Patent [1972] RPC 259 at 279 that an obvious mistake is one that “the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction”. Such a mistake is to be distinguished from a mistake that has been “obviously made”, but where the correction is not obvious to the reader.

123    A mistake can be an obvious mistake even where trained minds have failed to notice that mistake for “quite a long time”, as Russell LJ further explained in Farmhand Inc v Spadework Ltd [1975] RPC 617 at 619–20:

One is familiar, in all sorts of realms, with the fact that a person who may be in fact responsible for the production of a document may know perfectly well what he means to say and may well think he has said it, and is therefore the last person who is likely to notice that he has failed to say it by mistake. If one really set a standard… that a mistake cannot be an obvious mistake because a trained mind has failed to notice it, then of course… you could never have an obvious mistake in a patent, because some trained mind at some stage has produced that document and has not noticed the mistake… In some sense it may be true to say that the more glaring (and therefore the more unexpected) the mistake is, the less likely is anybody with a skilled mind to notice it. They simply would not believe that it could be there; and this is just that kind of mistake.

124    Even where the requirements of s 102 are met, the word “may” in s 105(1) of the Act indicates that the Court has a discretion as to whether or not to allow an amendment.

125    The discretion whether to allow the amendment is a broad one. The discretionary factors identified in the cases do not constitute a set of rigid rules to be inflexibly applied: Meat & Livestock Australia Limited v Cargill, Inc (No 2) (2019) 139 IPR 47 at [462] (per Beach J). As Yates J observed in Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (2012) 99 IPR 59 at [162], what is essentially at issue with respect to s 105 of the Act is “whether, by its conduct, the patentee has abused the monopoly that has been conferred upon it by the grant of the patent in its unamended form”.

126    Even where no public or private detriment is apparent, a reasonable explanation is required where there has been a delay: Novartis AG v Bausch & Lomb (Australia) Pty Ltd (2004) 62 IPR 71 at [135] (per Merkel J). A patent applicant’s relevant knowledge of risk may be informed by its overseas experiences, with the genesis being a PCT Application, and its experiences thereafter being seen not as “a collection of isolated events, but as a continuum against which the applicants’ actual or constructive knowledge of the need for an amendment might be inferred ”: CSL Ltd v Novo Nordisk Pharmaceuticals Pty Ltd (No 2) (2010) 89 IPR 288 at [88] (per Jessup J); BlueScope Steel Ltd v Dongkuk Steel Mill Co., Ltd (No 2) (2019) 152 IPR 195 at [1356] (per Beach J).

127    In Novartis, Merkel J recognised that there appeared to be a distinction in the exercise of the discretion in the authorities between validating amendments to cure otherwise invalid claims, and other amendments, such as deletion amendments involving deleting invalid claims, or the correction of errors or mistakes. At [66], Merkel J observed that a more lenient approach may be adopted for the latter type of amendments, noting that:

… The reason for the leniency was explained by Pearson LJ in [C. Van der Lely NV v Bamfords Limited [1964] RPC 54] at 74–5 where his Lordship observed that a court is prima facie disposed to the deletion of invalid claims because if such claims were to remain in the patent they would constitute a potential “nuisance to industry”. A similar observation can be made in respect of the mere correction of errors or mistakes which are not sought to cure any actual or potential invalidity.

Background to errors

128    The PCT is an English translation of the original PCT Application which was in German. An English translation of amended claims 1 and 11 of the PCT Application which were made under Article 34 of the Treaty prior to entering the national phase in Australia and which were filed with IP Australia on 12 November 2013 when the national phase was entered in Australia

129    The PCT and the 2013 Amendments were examined by IP Australia and an examination report was issued by IP Australia on 23 September 2015. The first error occurred in the course of the preparation of an amended claim set in response to the examination report. According to Dr Ganter, the amended claim set was based on a claim set of a corresponding European patent specification which was identical to the 2013 Amendments except that they included numerals in brackets. The amended claim set contains a typographical error in claim 1 at line 14 where it reads “a housing (44) for the heating of hob heating and control electronics” (Emphasis in original.), instead of “a housing (44) for the heating or hob heating and control electronics” (Emphasis in original.). Dr Ganter places the blame for the error on his secretary. Dr Ganter failed to notice and correct the typographical error when he reviewed and settled the proposed amended claim set.

130    Dr Ganter gave four reasons why he considered the first error to be a typographical error:

(a)    The document was setting out amendments to claim 1 of Application No 2012247900 as amended following the 2013 Amendments, and at that time claim 1 of Application No 2012247900 included the words “a housing for the heating or hob heating and control electronics” (emphasis added) and did not include the words “housing for the heating of hob heating and control electronics”.

(b)     The Amended Claim Set identifies amendments to the claims of Application No 2012247900 using the Microsoft Word “track changes” function, with additions underlined and deletions struck-through. In line 16, “(44)” is struck-through (indicating a deletion), but there is no strike-through of the word “or” or underlining of the word “of”. That is, there is no indication in the Amended Claim Set that the word “or” was intended to be replaced with the word “of’.

(c)     The words “heating of hob heating and control electronics” (emphasis added) did not appear anywhere in the Translated Specification or the 2013 Amendments when the Amended Claim Set was prepared. However, the Translated Specification contains the phrase “a housing for the heating or hob heating and control electronics” (emphasis added) in claim 1 and at pages 12, 14 and 17.

(d)     On my understanding of the invention described in the body of the Patent, the appearance of the words “heating of hob heating and control electronics” in claim 1 do not make sense, whereas the appearance of the words “heating or hob heating and control electronics” do make sense.

(Emphasis in original.)

131    The second error is the incorrect spelling of “direction” by the insertion of a space in the middle of the word: “direct ion” which also arose in the course of preparing the amended description pages of the response to the examination report. In the context of the specification, “direction” makes sense whereas “direct ion” is nonsensical. Thus BORA contends that the second error is also an obvious mistake.

Matters relevant to discretion

132    The two errors appeared in the amendments submitted to the Commissioner on 11 November 2015, in response to the examination report of 23 September 2015.

133    Dr Ganter’s evidence is that he first became aware of the two typographical errors on 27 February 2023, some seven years after they appeared. This was in the context of contemplated litigation, after BORA’s lawyers had sent a letter of demand to Miele on 15 February 2023 in respect of the threat of infringement of the Patent by the anticipated Australian launch of the Miele Silence Products. After that threat had dissipated, Gestalt Law wrote to Miele’s lawyers (Davies Collison Cave) on 28 August 2023 regarding the ongoing infringement of the Patent by the offering for sale and sale of the Current Miele Products. That letter noted the presence of the typographical error in claim 1 and stated that BORA would seek to have the error corrected by amendment. Miele commenced this proceeding on 7 September 2023.

134    Mr Bruckbauer sought an amendment of the Patent as part of the cross-claim for infringement which was filed on 22 September 2023.

135    To the extent that there was any delay by Mr Bruckbauer in seeking the amendment of the Patent, BORA submits that the period of delay was between 27 February 2023 and 22 September 2023. BORA contends that there was nothing unreasonable about Mr Bruckbauer not seeking to amend before the letter of demand regarding the Current Miele Products was sent on 28 August 2023.

Consideration

136    The purpose of the proposed amendments is to rectify the two errors. BORA submits that they are both clearly clerical errors. In relation to the first error, in claim 1, the same phrase is used in the body of the specification without the error (see [3.1], [11.1], [12.4] and [17.3] of the Patent). The second error, which I consider is also an obvious error, splits the word “direction” into “direct” and “ion”.

137    Since becoming aware of the errors in February 2023, BORA has moved reasonably promptly to notify Miele and the Commissioner of its intention to amend, and to commence the amendment process prescribed by the Rules.

138    No advantage has been gained by BORA as a result of its failure to notice the relevant errors, or its assertion of the unamended claim. The amendments are not sought to cure an invalid patent.

139    There is no evidence that Miele, or any other person, has been prejudiced by reason of the Patent in its unamended form. No unfair advantage has been sought or obtained. There has been no unreasonable delay in seeking the amendment, and there are no other circumstances which would lead the Court to refuse to make the proposed amendments.

140    In the circumstances I am satisfied that it is appropriate to allow the proposed amendments pursuant to s 105(1) of the Act.

Person skilled in the art

141    The person skilled in the art is not a reference to a specific person but is a legal construct drawn by reference to the available evidence. As French CJ explained in AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356 at [23] (AstraZeneca HC):

The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person — a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.

142    Relevant evidence will include the patent specification and, typically, evidence of persons with knowledge and experience in the field of the invention: Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 5) [2024] FCA 360 at [70] (per Nicholas J).

143    The legal construct may be a single person or may be a team of persons “whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed”: General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485 (per Sachs, Buckley and Orr LJJ). The hypothetical construct “is unimaginative and without inventive capacity”: General Tire at 485.

144    Miele submits that the Patent describes a device for downwardly removing cooking vapours by suction that, together with the hob, forms a hob assembly unit, including the use of radial (centrifugal) fans to direct the flow of the cooking vapour into, through and out of the device. Accordingly, the person skilled in the art includes, within a skilled team, a mechanical engineer with expertise in centrifugal fans and optimising fluid flow in industrial products. Miele submits that Mr Hunter is appropriately qualified to give relevant evidence in relation to centrifugal fans and air flow dynamics from the perspective of a mechanical engineer.

145    Miele accepts that Mr McLindin can give evidence relevant to the person skilled in the art. Miele observes, however, that as Mr McLindin admits, his expertise is not in the field of optimising fluid (e.g., air) dynamics in hobs or extraction systems and that he would engage an external consultant (like, Miele contends, Mr Hunter), to perform that analysis where required. Mr McLindin had not worked on downdraft extraction fan products before any priority date asserted in the proceeding.

146    BORA seeks to sideline the totality of the evidence of Mr Hunter on two grounds. First, BORA seeks to denigrate Mr Hunter as an expert witness by describing him as a “dual specialist”, on the basis that he had expertise in both mechanical engineering and being an expert witness in patent cases. Second, BORA contends that Mr Hunter is not “representative of the person skilled in the art” as he has not himself actually worked in the area of downflow hobs or been part of a team that did. Accordingly, Mr Hunter’s evidence should be ignored in favour of Mr McLindin’s evidence as he has had significant experience of working in the field. Mr McLindin’s background and experience is said to be “representative” of that of the person skilled in the art.

147    Ultimately BORA’s first ground of complaint about Mr Hunter distilled down to a species of the second:

Mr Hunter also has decades of experience as an expert witness in relation to patent and design cases which do not involve hobs or extractor products. That is also not the experience of the person skilled in the relevant art.

148    It was not suggested, and nor could it be on the evidence, that Mr Hunter was a partisan witness, a “gun for hire”, or that he had tried to hide his previous expert witness experience, or that he had not complied with his obligations as an independent expert witness.

149    BORA sought to impugn Mr Hunter’s qualification to comment on matters of fluid mechanics, on the basis that he studied fluid mechanics as part of his undergraduate engineering studies:

MR HENNESSY: Well, I want to suggest to you that you are rather searching around for a basis upon which to advance yourself as a PSA in this case, and things were so scarce in that regard you had to resort to a subject you undertook as an undergraduate 30 or 40 years ago at university.

MR HUNTER: I don’t agree with you.

150    This line of criticism appeared to proceed from a misunderstanding of the role of mechanical engineers and the concept of the person skilled in the art. The role of a mechanical engineer is to apply their knowledge of engineering principles (acquired during their university studies) to a variety of situations. This was exemplified by Mr Hunter being able to give a description of how induction cooktops worked, with which Mr McLindin agreed, despite not having personal experience working with induction cooktops.

151    BORA also submits that Mr Hunter is not able to construe the ordinary English words of the claims as he is not a person skilled in the art. In this he is to be contrasted with Mr McLindin, who BORA submits, based on his experience, is “representative of the person skilled in the art”.

152    In support of its submission, BORA referred to the comments of Nicholas J in Neurim at [71]–[74], that the person skilled in the art must have practical knowledge and experience in the field of the invention. In this respect, the notional skilled addressee is someone not only with a practical interest in the subject matter of the invention but also the relevant background knowledge and experience shared by those working in the field of the invention. His Honour accepted that it is necessary to identify the field of knowledge to which the invention relates and then identify the notional skilled addressee by reference to that body of knowledge: Neurim at [74] (per Nicholas J).

153    BORA submitted that the relevant field was the design of cooktops and rangehoods. According to BORA, hobs with a downward extraction device forming a single component did not constitute a separate field of knowledge at the priority date. BORA contrasts the background and experience of Mr McLindin in the relevant field of cooktop and rangehood design, with Mr Hunters’ lack of experience in that field to submit that Mr McLindin is “representative” of the person skilled in the art, whereas Mr Hunter is not.

154    In propounding Mr McLindin as being “representative” of the person skilled in the art, rather than populating the legal construct that is the person skilled in the art via relevant evidence, BORA, contrary to the High Court’s directions in AstraZeneca HC, seeks to put forward Mr McLindin as an avatar for the person skilled in the art. Such an approach is not endorsed by Nicholas J’s comments in Neurim noted above. His Honour’s reference to “evidence of persons with knowledge and experience in the field of the invention” was made following express recognition that the person skilled in the art was a legal construct. That tool of analysis, a pale shadow of a real person, guides the Court, by reference to expert and other evidence.

155    No one expert stands in the shoes of, or ‘is a representative of’ the person skilled in the art. Rather, the Court receives evidence from appropriately qualified experts, and armed with that evidence construes the Patent through the eyes of the skilled addressee, or determines other questions referable to the person skilled in the art, such as whether an invention involves an inventive step.

156    I consider that the Patent is addressed to someone who has an interest in hob and extractor design. As the Patent is concerned with extracting or removing cooking vapours by suction, that skilled person will also have knowledge and expertise in fans, including fans and fluid flow.

157    Once the relevant field is identified, evidence from relevantly qualified and experienced expert witnesses is used to frame the tool of analysis that is the person skilled in the art.

158    Mr McLindin has experience in cooktop design and manufacture and can give relevant evidence on matters of hob design. Mr McLindin has no qualifications or experience in designing downdraft rangehoods, or any training or specialised knowledge in fluid flow. When at Electolux, Mr McLindin led a team which included industrial designers and engineers. Mr McLindin’s experience qualifies him to provide admissible evidence as to the person skilled in the art in the boundaries of his experience. However, he is not an avatar or ‘representative’ of the person skilled in the art.

159    Mr Hunter has relevant qualifications and experience in product design, including with axial and radial fans, fluid (air) flow and suction. He is well qualified to provide relevant evidence on radial fans and product design related matters.

160    Lastly, I note that Mr McLindin’s evidence appeared to evolve following the JER and joint conclave. BORA sought to suggest that Mr McLindin’s evidence was more “authentic” as he was a first-time expert witness, unlike the “professional” expert, Mr Hunter. Aside from not being entirely sure what was intended to result from that submission, I do not accept that the evolution of aspects of an expert’s evidence through the JER and joint conclave process, or that witness’s failure to thoroughly check his recorded views in the JER, can be put down to it being his first time as an expert witness, and somehow used as the basis for a submission as to his being a more authentic witness than Mr Hunter, the so-called “professional” witness.

161    Expert witnesses are provided with the Harmonised Expert Witness Code of Conduct at an early stage in their engagement. The Code emphasises the seriousness of the expert witness task and its importance in assisting the Court. It is the expert witness’s ability to comply with their obligations to the Court to provide independent evidence to assist the court that is of importance and relevance to assessing the witness’s testimony, not whether it is their first time as an expert witness

162    There is no inventive step challenge, and the words of the claims in dispute are ordinary English words. Thus the role of the person skilled in the art is more limited in this case than in some cases. However, the person skilled in the art does have primary relevance to the support and sufficiency challenges discussed below.

Construction

163    It is appropriate to consider questions of construction shorn of the distraction of the forensic interests of the parties or, as if the infringer had never been born: Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327 at 333 (per Heerey J); CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 267–8 (per Spender, Gummow and Heerey JJ). Accordingly, in these reasons, I first consider questions of construction before turning to whether or not the Miele Silence Products may be said to infringe the claims.

164    The meaning of each of the following terms within each integer is in issue:

(a)    integer 1.5: “viewed downwardly sequentially in a vertical direction”;

(b)    integer 1.5.1: “a housing for the heating or hob heating and control electronics”;

(c)    integer 1.5.3: “cooking vapour aspiration chambers…”; and

(d)    integer 1.5.3(b): “for preparing the cooking vapour stream to be vertically aspirated upwardly by means of” the “one, two or more radial fans”.

165    The principles of construction are well settled and were not in dispute. They were set out recently by the Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc (2023) 170 IPR 225 at [48] (per Rares, Moshinsky and Burley JJ), citing Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86 at [67] (per Hill, Finn and Gyles JJ):

(i)    the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;

(ii)    a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];

(iii)    the words used in a specification are to be given the meaning which the normal 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: Décor Corp Pty Ltd at 391;

(iv)    while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;

(v)    experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; 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 (Kimberley-Clark v Arico at [24]); and

(vi)    it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485–486.

166    It is trite that a patent specification is a “unilateral statement by the patentee, in words of their own choosing, addressed to those likely to have a practical interest in the subject matter of this invention, by which [the patentee] informs them what [they claim] to be the essential features of the new product or process for which the letters patent grant [them] a monopoly”: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242–3 (per Diplock LJ), cited in Sachtler GmbH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 at [48] (per Bennett J) . The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean, not what the patentee intended to mean, or, when faced with an infringer, what the patentee wished they had claimed (or not included in the claim): Sachtler at [42] (per Bennett J). For this reason, the language chosen by the patentee is of critical importance.

167    It is well established that a patent specification should be given a “purposive” construction, not a “purely literal”, “meticulous verbal analysis” or a “too technical or narrow” construction: Jupiters at [67] (per Hill, Finn and Gyles JJ); Product Management Group Pty Ltd v Blue Gentian LLC (2015) 116 IPR 54 at [39] (per Kenny and Beach JJ), [272] (per Nicholas J); Tramanco Pty Ltd v BPW Transpec Pty Ltd (2014) 105 IPR 18 at [174] (per Nicholas J, Greenwood J agreeing). A specification should be read in a practical and common-sense way.

168    However, to apply a “purposive” construction does not justify extending the patentee’s monopoly to the “ideas” disclosed in the specification: Blue Gentian at [40] (per Kenny and Beach JJ). Instead, its application should be guided by considerations including those addressed by Hoffmann LJ when his Honour explained “purposive construction” in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444 at [33]–[34] (per Hoffmann LJ), a passage which has since been endorsed by the Full Court in Blue Gentian at [41] (per Kenny and Beach JJ); Tramanco at [174] (per Nicholas J, Greenwood J agreeing) and Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd (2024) 182 IPR 1 at [88] (per Yates, Charlesworth and Rofe JJ).

169    Calling in aid a combination of purposive construction and notions of functionality, does not enable the words deliberately chosen by the patentee to be broadened beyond their ordinary English meaning to expand the scope of the monopoly claimed (to what the patentee may have intended) in order to catch a creative alleged infringer.

170    BORA contended that the ordinary English words were to be given the meaning which the normal 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. BORA submitted that Mr Hunter was incapable of doing that as he was not a person skilled in the art. I reject that contention.

171    None of the words in the integers in dispute have a technical meaning. Neither party suggested that any of the words in the integers were terms of art. They are ordinary English words. It is not the province of an expert to give evidence of the meaning of words or phrases used in a claim if those words or phrases bear their ordinary English meanings and are not suggested to have a technical or special meaning: Multigate Medical Devices Pty Ltd v B Braun Melsungen AG (2016) 117 IPR 1 at [25]–[27] (per Bennett, Yates and Beach JJ).

Essential integers

172    The first step to assessment of infringement is to construe the claims of the patent. Infringement is assessed on the basis of the presence or absence of the essential integers of the claims.

173    The Full Court in Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited (2005) 67 IPR 230 observed at [49] (per Wilcox, Branson and Bennett JJ) that the Full Court in Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 emphasised, as did Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253, that there is “no infringement if the patentee has, by the form of the claim, left open what the alleged infringer has done”.

174    BORA contends in relation to three integers, that if the Court construes them in a particular way, they are inessential integers, and that Miele’s replacement of them in the Miele Silence Products with “functional equivalents” does not avoid infringement. BORA’s submissions with respect to each of the three potentially inessential integers are outlined below. The three potentially inessential integers are:

(a)    “a housing for the heating or hob heating and control electronics”

•    In the event that “the” is construed to mean “all of the”, BORA submits that it is not an essential integer of the invention claimed in claim 1 that all of the heating or hob heating and control electronics are housed within the “housing for the heating or hob heating and control electronics”. Properly construed, the person skilled in the art would not consider it essential that all such electronics are housed within the one housing.

(b)    “wherein the fan housing is situated above the one or more cooking vapour aspiration chambers”

•    BORA submits that the use of “or” makes it clear that the presence of more than one cooking vapour aspiration chamber below the fan housing is not an essential integer of the claim.

(c)    “the cooking vapour stream”

•    In the event that the Court construes “the cooking vapour stream” to mean “all of the cooking vapour stream”, BORA submits that it is not an essential integer of the claim that the whole of the cooking vapour stream be vertically aspirated upwardly.

175    The assertion that particular integers were “inessential” was made by BORA only in the context of infringement, as an alternative if the Court found a particular construction, and not in the course of construction.

176    A patent specification is a unilateral statement by the patentee, in words of their own choosing, by which they inform the skilled reader what they claim to be the essential features of the new product or process for which patent grants a monopoly: see Catnic at 242–3 (per Diplock LJ).

177    In Fresenius, the Full Court stated at [70] that:

… Where a patentee defines the claimed invention as consisting of a number of essential integers, it is no answer to infringement that the claimed combination is taken but additional integers are added that do not affect and are not part of the invention.

178    The Full Court in Fresenius observed at [87] that to characterise a feature set out in the claim as not an essential feature of that which is claimed and consequently to disregard it in determining the scope of the claim, is rare. The Full Court in Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 20, warned that there is a need for caution in accepting in an infringement suit the suggestion by the patentee that what appears to be a limitation upon the claimed subject matter is merely the product of a slip of the pen and thus not to be held too readily against the patentee, or to be found inessential.

179    In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 559–60 Gummow J stated:

It is important for a patentee to claim only the essential integers in a combination and to distinguish what is essential from what is unessential. This is because to establish infringement of a combination patent the patentee must show that the defendant has taken each and every one of the essential integers of the plaintiff’s claim; if on its true construction the claim is for a particular combination of integers and the alleged infringer omits one of them, the infringer escapes liability: Populin v H B Nominees Pty Ltd (1982) 59 FLR 37 at 41. Further, where what is in question is an inessential integer, a device which contains the essential integers will fall within the claim, whether or not an inessential integer is replaced by an obviously equivalent device or omitted altogether; hence, the expression “mechanical equivalent”: Walker v Alemite Corp (1933) 49 CLR 643 at 650, 657; Sunbeam Corp v Morphy-Richards (Australia)·Pty Ltd (1961) 35 ALJR 212 at 217; Blanco White, Patents for Inventions, 4th ed, para 2–208.

180    At [94] in Fresenius, the Full Court further stated that:

The whole of the specification must be read in order to construe the claim. So much is not in dispute. However, that does not mean that the words of the claim are to be ignored. Nor can it be ignored that the patentee has chosen not to include in a claim matters, integers or aspects of the invention that have been referred to in the body of the specification. This accords with the well-accepted principle enunciated in Welch Perrin (at 610) that glosses drawn from the body of the specification cannot be used to narrow or expand the boundaries of the monopoly as fixed by the words of a claim.

181    Essential integers are determined by a common-sense assessment of what the words of the claims convey in the context of the then-existing published knowledge: Sachtler at [42]. The Court should not construe a claim in a manner that renders terms within the claim redundant if that can be avoided by adopting a sensible alternative construction: Meat & Livestock Australia Ltd v Cargill, Inc (2018) 129 IPR 278 at [356] (per Beach J).

Integer 1.5: ‘downwardly sequentially in a vertical direction’

182    This integer, like the other contentious integers (italicised below), arises in the second half of claim 1 in the context of the bottom side of the hob:

…wherein the bottom side of the hob in the device as viewed downwardly sequentially in a vertical direction encompasses

    a housing for the heating of hob heating and control electronics,

    a fan housing for one, two or more radial fans, and

one or more cooking vapour aspiration chambers for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated upwardly by means of one, two or more radial fans provided in the fan housing and wherein the fan housing is situated above the one or more cooking vapour aspiration chambers

(Emphasis added.)

183    Miele contends that the words “as viewed downwardly sequentially in a vertical direction” must be given their ordinary meaning. As viewed downwardly sequentially means “moving to a lower position in a sequence or fixed order”. In a vertical direction means, in effect, ‘up and down’ in a vertical plane.

184    According to Miele, the ordinary English meaning of the words require the electronics housing to sit vertically below the hob; the fan housing to sit vertically below the electronics housing; and the aspiration chambers to sit vertically below the fan housing. Not only is the sequence (or fixed order) mandated by the claim, Miele also contends this is the only sequence of components disclosed or described in the Patent.

185    Mr McLindin understood the words “as viewed downwardly sequentially in a vertical direction encompasses” to mean that the three components subsequently listed are required to be in a downward vertical sequence, but not in a specific sequence or fixed order. He did not understand that the order in which the components are listed in claim 1 to be the set sequence required by claim 1, or that the components were required to be vertically aligned.

186    In the joint session, Mr McLindin accepted that “downwardly sequentially” meant moving to a lower position in a sequence or fixed order but he maintained his position that a fixed order is not disclosed in the Patent or in claim 1. Mr McLindin queried the role of the last integer — “wherein the fan housing is situated above” — if the list was a set sequence, he considered that requirement would be redundant.

187    Mr Hunter understood integer 1.5 to require the downward vertical sequence of the components to be the sequence in which those components are listed in the claim.

188    BORA submitted that nothing turned on how the experts construed the integer, as Mr McLindin had considered the question of infringement on the basis that the order in which the components were listed in claim 1, were the required sequence. In other words, for the purposes of its infringement case, BORA has assumed the integer requires the listed components to occur in the sequence they are listed in claim 1.

189    I consider the construction propounded by Miele (and accepted by BORA for the purpose of infringement) is the correct construction of integer 1.5.3. The Patentee chose the precise words used in the claim, and it must be assumed that the Patentee intended each word of this integer to be there and to add something. In particular, the word “sequentially” imports a requirement that there be a sequence. In cross-examination, Mr McLindin was asked a question regarding the order in which he prepared portions of his affidavit. Mr McLindin responded that he “did it sequentially, I think, from the front”, indicating that Mr McLindin also understood the ordinary meaning of the word “sequentially” to mean following a particular order.

190    In my view, the sequence is the order in which the three components are listed in claim 1. If the sequence of the components was unimportant and the components could be stacked vertically in any order, there would be no need for the word “sequentially” to be used.

191    This construction is consistent with the description in the Patent. No other sequence of the three components is depicted, disclosed or described in the Patent. For example, the Patent at [11.1] states:

As depicted in particular on Fig. 12 to 16, the bottom side (35) of the hob (1) in the device (36) as viewed downwardly sequentially in a vertical direction can encompass a housing (44) for the heating or hob heating and control electronics, a fan housing (48) for two or more radial fans (38), and one or more cooking vapour aspiration chambers (39) for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans (38) provided in the fan housing (48) situated vertically higher.

(Emphasis added.)

192    Figure 14 depicts a hob assembly where the electronics housing sits vertically below the hob; the fan housing sits vertically below the electronics housing, and the aspiration chambers sit vertically below the fan housing:

193    An advantage of such an arrangement as depicted in Figure 14 is explained at [17.3] in that it offers effective protection against and insensitivity to overflowed liquid that has penetrated through the central recess up to a volume of 5 litres. This is said to be because suspending the fan motors on the floor of the housing for the heating or hob heating and control electronics essentially makes the trough-like volume of the deepest cooking vapour aspiration chamber available for accommodating overflowed liquids, precluding any danger to the fan motors.

194    To allow the electronics housing to be located at any position within the device would be inconsistent with the “special advantage” described in [17.3] to create the deepest possible cooking vapour aspiration chamber. Further, this final integer was inserted in the 2015 Amendments to the Patent. Section 116 of the Act states that “… a court may, in interpreting a complete specification as amended, refer to the specification without amendment”.

Integer 1.5.1: ‘a housing for the heating or hob heating and control electronics’

195    The experts agreed that there was no difference between “heating” or “hob heating” electronics in the context of the Patent. For ease of reference, I will use the term “heating electronics” in these reasons in place of “heating or hob heating and control electronics” unless the full phrase is necessary.

196    The experts agreed generally as to the meaning of “a hob”. Mr McLindin described “hobs” in his affidavit:

Hobs were often made of pressed metal and supported a number of hot plates (in the case of electrically powered hobs) or a number of burners (in the case of gas powered hobs). A pot or a pan would be placed on one of the hot plates or burners, which when turned on, would heat the base of the pot or pan. In electrically powered hobs, the heating elements were either comprised of individual radiant coil elements or solid elements that would heat up when supplied with an electrical current. There were also ceramic hobs which comprised a number of electrical heating elements underneath a ceramic glass plate. The heat from the heating element would pass through the glass to heat the base of the pot or pan resting on the top of the ceramic glass surface.

…

Induction hobs started to appear in the market in the 1990s, and they became more popular in the 2000s. In an induction hob, there is a glass top surface which supports a cooking pot or pan. … Electronics underneath the top surface create a magnetic field that switches backward and forward in different directions, and the resistance through the metallic base of the pot or pan generates heat in the pot or pan. … The glass only heats up as a result of being in contact with the base of the pot or pan which gets hot. …

197    Mr McLindin explained that a “housing” is a generic term, for a component that houses other components inside it. Mr Hunter agreed. Mr McLindin said that a housing is used to support and protect components or to prevent a user from touching components inside the housing. He considered that “heating” and “hob heating” electronics refer to any of the heating elements which are used to heat pans placed on the device, and that “heating or hob heating and control electronics” could include electronic controllers, power boards and induction coils. Mr McLindin considered that “control” electronics are electronics for operating the product, such as turning the extraction fan on and off or changing the amount of suction.

198    By reason of the presence of “or”, Mr McLindin understood the integer to mean that the housing could be for “heating electronics” or it could be for “hob heating and control electronics”. Mr Hunter considered that the only thing that is “heating” are the heating elements of the hob.

199    Miele observed that whether this integer is read disjunctively (i.e., ‘heating electronics’ or ‘heating and control electronics’) or distributively (i.e., ‘heating and control electronics’), at the very least there must be heating electronics in the housing. It contends that the heating elements are not heating electronics.

200    Miele submits that the skilled addressee would know, without needing to be told by the Patentee, where the heating elements are to be located in a hob of the invention. Hence the heating elements are not included in the heating electronics which, on any view, must be located within the housing. This is to be contrasted with the location of the power board (power electronics) that receives power from the mains supply and outputs power to control electronics and heating elements. The power board needs to be kept away from heat, as well as liquids, and located so as to accommodate the central recess in the hob.

201    In his written evidence, Mr McLindin said he understood heating electronics as being electronics for the heating elements — which are used to heat pans placed on the cooking locations. Mr McLindin explained that the heating elements in induction cooktops do not heat the ceramic glass top, but instead only heat the pans. He expressly noted that he did not recognise the claimed invention as being limited to induction cooktops and considered that it would include another type of electrically powered cooktop that does not use induction as a means to heat the pans. These heating elements could include radiant coiled elements or solid elements (“hot plates”) that would heat up when supplied with an electronic current.

202    In his written evidence provided before he saw the Miele Silence Product, Mr Hunter considered the integer to refer to a discrete unit that contains or houses the electronics required for operating (e.g., controlling and/or heating) the hob. Mr Hunter made reference to [12.4] of the Patent which provided as an example (described by reference to Figure 12) of the housing for the heating and control electronics, which it was stated can incorporate the hob heating elements, the power electronics for the fan motors and touch control operating components, amongst other things.

203    In his second affidavit, Mr Hunter expressed the view that electric heating elements, such as radiant coils or solid resistive elements, or induction coils were not “electronics” as their basic function is to convert electricity into heat. In contrast, he considered “electronics” to be made up of components with semiconductive elements to facilitate electrical flow in order to execute specific functions (such as circuit boards and semiconductors).

204    In the JER, Mr Hunter considered that the integer refers to the housing for the power electronics and the heating control printed circuit boards (PCBs). Mr Hunter did not consider that this housing includes the heating elements (e.g., induction coils) themselves. That is because the Patent at [12.4] states that “among other things the housing for the control electronics can include the hob heating elements”, Mr Hunter read this “can” to mean that the housing can, but does not have to, include the heating elements. He says that the housing is just the housing for the power and control electronics, which both powers the hob heating elements and which controls the heat going to the heating elements (e.g., induction coils).

205    BORA contended that Mr Hunter changed his evidence in the infringement context after he had seen the Miele Silence Product.

206    Mr McLindin disagreed with Mr Hunter in the JER that the housing is just for the control electronics, or as it is known in the appliance industry, the power board. According to Mr McLindin, the hob heating electronics are a package that do not work in isolation. Control electronics include coils, the sensors, the user interface, and not just the power board. The whole package is driven by multiple parts. The coils themselves have unique individual software driving them and they in turn send feedback to the control electronics. The coils, which produce a high frequency magnetic field, can work as individual coils or as pairs or sets as the controls and software drives them. In his experience there is usually a catalogue of electronic parts for induction cooktops that a manufacturer will use to build an induction hob variant. This catalogue always included coils, as single or multiple assemblies, a range of interfaces and power boards.

207    It is apparent from Mr McLindin’s comments in the JER that he was focussed on an induction hob, to the exclusion of other electrical hobs. In this, his position had changed since his first affidavit, where he considered that the Patent was not limited to induction plates and included electric hotplates of all kinds.

208    I consider that both Mr Hunter and Mr McLindin’s positions on this integer changed over the course of the evidence to arrive at points that I do not accept.

209    Mr McLindin’s initial position, that the invention described in the Patent is not limited to a hob with an induction cooktop is, to my mind, the better view. Mr Hunter agreed that the Patent was not so limited. The heating elements of the hob of the invention could include radiant coiled elements or solid elements (“hot plates”) that would heat up when supplied with an electronic current, as well as induction coils.

210    I agree with the experts that a “housing” is a generic term, for a component that houses other components.

211    Miele contends that whilst the heating elements are expressly contemplated at [12.4] as potentially being located in the housing, the heating elements are not “heating electronics”. Miele submits that no person skilled in the art would understand the “heating electronics” located in a housing on the bottom side of the hob as including the heating elements. Mr McLindin agreed that he would not understand radiant coil elements or solid elements to be on the bottom side of the hob. He also agreed that the electronics for powering and controlling the heating elements are different components to the heating elements themselves.

212    It seems clear that the hob heating elements may be included in the housing. The description at [12.4] states that the housing can incorporate the hob heating elements. The description at [12.4] is consistent with the depiction of the housing (44) in Figure 14, as including the hob heating elements (37) and also as depicted in Figures 12 and 16:

213    The housing is not limited to housing just the hob heating elements, or mandated to contain the heating elements. The lead in to [12.4] “[a]mong other things, for example”, indicates to the reader that the items listed are examples of things that can be incorporated in the housing. The items listed are not the only things that might be located within the housing, they are examples. According to the description at [12.4], the housing can, not must, incorporate the hob heating elements, the power electronics for the fan motors and touch control operating components. As Mr Hunter put it:

… in 12.4, quite clearly, the invention can work with the “can” doing its correct job, which means that the heating elements, the hob heating elements, the power electronics for the fan motors, and the touch control operating components, don’t have to be part of that housing…

214    Figure 12 (shown above at [212]) is a schematic perspective top inclined view of a hob, wherein the hob is in the form of an assembly unit with a device provided on the lower side of the hob. The perspective view of Figure 12 looks into the housing (44). Within the housing as depicted, are also illustrated the hob heating elements, the power electronics for the fan motors (55) and the touch control operating components (57).

215    Miele’s contention is, whether or not the heating elements are located in the housing, they are not “heating electronics” for the purposes of the integer. Miele says [12.4] must be read in context. That context is the skilled reader who understands where to place the cooking locations and heating elements on a hob, without directions, but who may need direction as to where to place the power board in order to both protect it from heat and to accommodate the recess in the centre of the hob. Miele submits that the absence of an express mention of the power board (or power electronics for heating) as being in the housing in the description at [12.4] (where there is express reference to the power electronics for the fan motors), supports its construction that those components are “heating electronics”.

216    In the specification, the housing is discussed in three contexts. First, the items that can be incorporated or located in the housing are discussed at [12.4]. Second, the housing, in particular the bottom side of the housing, is used as a reference point in relation to the discussion of the placement of other items within the hob assembly unit, and also in the measurement of distances between various aspects of the assembly unit. At [12.3] the specification describes that the radial fan motors can be secured to the bottom side of the housing, and at [12.4] the bottom side of the housing can be provided with a device power supply line. At [14.1] as part of a discussion about the height of the assembly unit, the specification notes that the distance between the bottom side of the hob and the bottom side of the housing can be between 45mm and 80mm, and the distance between the bottom of the housing and the bottom of the fan housing can be between 60mm and 100mm. Third, the role of the housing is discussed in achieving the advantages of the invention: for example, presence of the housing in achieving the claimed advantages of the hob assembly unit are discussed, with particular reference made to the low design height (at [16.5]), as well as the effective protection against, and insensitivity to, overflowed liquid that has penetrated through the central recess due to the suspension of the fan motors from the bottom of the housing at [17.3].

217    The emphasis in the specification on the importance of the position and role of the housing in achieving several of the objectives/claimed advantages of the invention, is consistent with the construction of the ‘downward sequentially’ integer as requiring a set order or sequence of components when viewed in the downward vertical direction.

218    “Electronics” is used as a broad term and it is not suggested that it is a term of art. The Patent provides no other discussion of electronics, other than in the composite phrase, and at [12.4] in relation to the power electronics for the fan motors. I do not consider that the term is being used to differentiate between components that have semiconductors and those that do not, as this is not supported by any of the descriptions in the specification.

219    Claim 1 requires that there be a housing for the heating or hob heating and control electronics. The claim does not limit the number of housings that may be present in the hob assembly unit.

220    I consider that the housing of claim 1 is a discrete unit which includes within in it at least basic control electronics (including but not limited to on/off switches for heating elements and fans, fan speed) and electronics associated with the operation of the heating elements, and may include other components (such as the hob heating elements, the power electronics for the fan motors and the touch-control operating components).

Integer 1.5.3: ‘cooking vapour aspiration chambers’

221    Miele contends that a cooking vapour aspiration chamber has a defined and enclosed volume with an inlet and an outlet from which air is sucked. For suction to occur, there must be negative pressure within the chamber, and to achieve and maintain negative pressure, the chamber must have physical boundaries.

222    BORA contends that a cooking vapour aspiration chamber may be a space within walls that is not necessarily closed off or separated from other chambers. It submits that this construction accords with the evidence of Mr McLindin.

223    Mr Hunter defined an aspiration chamber as a defined and enclosed volume with an inlet and outlet from which air is sucked. This definition was raised by Mr Hunter in the JER and maintained throughout cross-examination.

224    Mr McLindin agreed with this definition in the JER “which was consistent with dictionary definitions”, but in the next paragraph qualified his agreement that a chamber is a totally enclosed space by noting that a chamber could be a cavity which is open at both ends. Thus according to Mr McLindin, the aspiration chamber of the preferred embodiment could be “2 chambers and not closed off to, or enclosed from each other”. Mr McLindin agreed with Mr Hunter that Mr Hunter’s definition can be one of the definitions, but aspiration chambers can also be defined as Mr McLindin did.

225    Mr McLindin was not familiar with the term “aspiration chamber” and had reference to the Macquarie Dictionary which defined “aspirate” as meaning “to draw or remove by suction”. Next, Mr McLindin looked at the definition of “chamber” — “a compartment or an enclosed space; a cavity; a chamber of the heart”. From that definition, Mr McLindin alighted on the word “cavity” and had regard only to the definition of the word “cavity” in the Macquarie Dictionary — “any hollow place; a hollow; a cavity in the earth”, but not the word “compartment”. On the basis of these definitions, Mr McLindin said that he would understand a “cooking vapour aspiration chamber” to be “a cavity, space or hollow place into which cooking vapour is sucked and from which cooking vapour is sucked”.

226    The Macquarie Dictionary definition of compartment, overlooked by Mr McLindin, was:

a part or space marked or partitioned off.

2. a separate room, section, etc.: the compartment of a railway carriage; a watertight compartment in a ship…

227    Mr McLindin also considered other uses of the word “chamber” in the Patent: the “upstream guiding chamber” followed downstream by a “pressure chamber in the fan housing”. Mr McLindin considered these other uses to indicate that a “chamber”, as referred to in the Patent, may be a space within the walls of a structure that is not necessarily closed off or separated from any other chambers. Mr McLindin also looked at the description of the cooking vapour aspiration chamber in the preferred embodiment on page 12 of the Patent. From that description, he understood that the cooking vapour aspiration chambers of that preferred embodiment to be “a space between a cover and a floor in which cooking vapours are directed from one location to another”.

228    Mr McLindin had recourse to Figure 14 (shown above at [192]) to support his definition, observing that Figure 14 of the Patent shows two cooking vapour aspiration chambers identified by reference numeral (39) on either side of the central duct with what he described as an open space between them, i.e. the chambers were not enclosed. Mr McLindin also referred to Figure 15 (shown above at [35]) and said that he did not see a wall enclosing the chambers off from each other there either.

229    Mr McLindin sought to suggest that Figure 15 was a section through the assembly, rather than a view from the top looking down: “they’ve obviously cut the thing, and they’ve sectioned it through a certain part of the product”. On the basis that Figure 15 was a section through the assembly, Mr McLindin said that it did not show the aspiration chambers being closed off from one another.

230    Figure 15 is a plan view (as seen from above looking down) of the assembly unit with the hob removed to expose the fan housing, the specification described it as:

a schematic top view of an assembly unit according to a preferred embodiment of the invention comprised of a hob (1) and a device (36) for operating the hob (1) and downwardly removing cooking vapours by suction, wherein the hob (1) has been removed to improve the clarity of the image

231    Figure 14 is a schematic, longitudinal section along the A−A line of the assembly unit depicted in Figure 15. Mr Hunter described the aspiration chambers depicted in Figure 14, as having a bottom, a cover and side walls. Mr Hunter prepared a marked-up form of Figure 14, shown below, in which he highlighted in green the borders of the cooking vapour aspiration chambers.

232    Ultimately, Mr McLindin agreed in the joint session that each of the aspiration chambers depicted in Figure 14 has:

(a)    a floor;

(b)    a cover that extends from the central recess of the hob;

(c)    side walls;

(d)    a defined inlet from which the vapour stream flows from the central recess into the aspiration chamber; and

(e)    a defined outlet for guiding cooking vapours into the fans. The outlet is described in [12.2] of the Patent and depicted in Figures 14 and 16 as lying vertically at the top in the middle area of the cover of the aspiration chamber.

233    Once it is accepted that the word “aspiration” requires suction, and that suction requires negative pressure, as the experts agreed, then I consider that an aspiration chamber requires physical boundaries, with an inlet and an outlet, otherwise negative pressure will not be able to be achieved and maintained. That construction is consistent with the description of the cooking vapour aspiration chambers in the Patent.

Integer 1.5.3(b): ‘for preparing the cooking vapour stream to be vertically aspirated upwardly’

234    This integer arises in the broader integer:

…one or more cooking vapour aspiration chambers for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated upwardly by means of the one, two or more radial fans …

235    Miele contends that the entirety of the vapour stream (whether that is one or two streams) must be aspirated upwardly by means of the fan or fans.

236    The experts agreed that whether it was one stream or two streams, the entire vapour stream has to move vertically. Mr McLindin agreed that there was no description in the Patent of only some part of the vapour stream moving vertically.

237    The only matter in dispute between the experts was the meaning of “by means of” and whether that meant that the vapour stream must be vertically aspirated upwardly into the fans, or by means of, the fans.

238    In the JER, in the context of construction, Mr McLindin’s evidence was that the vapour stream, after moving vertically or upwards, as to allow entry into the fan or fans, can change direction either before or after the fans. Therefore, the vapour stream must move upwardly as a first direction, but it can also be moved in further and different directions by the fan or fans. Mr McLindin sought to move from the position he expressed in the JER in the context of infringement, ultimately suggesting that cooking vapour could travel in all directions, including downwards, as long as it moved upwards at some point.

239    Mr Hunter’s evidence was that he could not see how the invention would work unless all of the cooking vapour stream was aspirated upwardly into the fans. Otherwise, there would be dead spaces and smoke vapour which got left behind and deposited grease “where you didn’t want it to be”.

240    I consider that it is the entire vapour stream that must be vertically aspirated, by means of, and into, the fan or fans.

241    In the claimed invention, the three components: the housing for the heating or hob heating and control electronics, the fan housing and one or more cooking vapour aspiration chambers are vertically stacked in that sequence. The relative position of the fan housing and the aspiration chamber(s) of the hob assembly unit the subject of the invention necessarily means that all of the cooking vapour that enters through the central recess is sucked into the aspiration chamber(s) and up into the radial fans in the fan housing situated above the aspiration chamber(s). As Mr Hunter observed, if all the cooking vapour was not aspirated into the fans, there would be dead spaces and vapours would build up in the system and deposit grease where it was not supposed to be.

Infringement

242    Miele admit their Current Miele Products have each of the integers of the claims 1 and 11, but say that the relevant claims (which include the asserted claims) are invalid, and an invalid patent cannot be infringed. The Current Miele Products have the following unit model numbers:

(a)    KMDA 7476 FL;

(b)    KMDA 7774 FL;

(c)    KMDA 7633 FL;

(d)    KMDA 7633 FR;

(e)    KMDA 7634 FL; and

(f)    KMDA 7634 FR.

243    Miele admits that Miele Australia Pty Ltd has done acts in Australia included within the definition of “exploit” in the Act. Miele admits that the first respondent, Miele & Cie KG has acted in concert with Miele Australia in furtherance of a common design to do those acts.

244    BORA notes that in circumstances where a finding of infringement of claim 3 in addition to a finding of infringement of claims 1 and 11, would not affect the relief to be granted, BORA does not press its case for infringement of claim 3 with respect to the Current Miele Products.

245    The contested infringement case relates to the Miele Silence Products and claims 1 and 11 of the Patent.

Miele Silence Products

246    The Miele Silence Products are induction cooktops with integrated downwards vapour extraction systems. Mr Wiechert verified a product description of the Miele Silence Products. A photograph of one of the Miele Silence Products with the side removed is below.

247    A rendered view from the underside, and a cross-sectional view of one of the Miele Silence Products is below.

248    The Miele Silence Products have one “squirrel cage type” dual intake radial fan. The fan impeller is a single piece of polymeric material, which contains two halves of differing angle blades. The fan inlets are located at the top and bottom of the fan housing. The fan housing is located on stilts within an oblong casing (see photograph and diagrams above at [247]). There is empty space around the fan housing. The radial fan from the Miele Silence Products is pictured below.

Contested integers

249    Miele contends that, by reason of the following matters, each of which can be seen on the cross-sectional diagram below, the Miele Silence Products do not infringe claims 1 and 11 of the Patent:

(a)    The fan housing and aspiration chambers are not in the claimed sequence. The Miele Silence Products have a fan housing situated within an aspiration chamber, rather than above it.

(b)    The aspiration chamber does not prepare the cooking vapour stream to be vertically aspirated upwardly. It prepares the cooking vapour stream to be aspirated both downwardly and upwardly by means of a dual inlet radial fan.

(c)    The heating and control electronics housing does not sit vertically above a fan housing and an aspiration chamber. It has nothing underneath it.

250    Accordingly, Miele contends that its Miele Silence Products do not have the following integers of claims 1 and 11 of the Patent.

(a)    Integer 1.5 and 1.5.1;

(b)    Integers 1.5, 1.5.3, 1.5.3(b); and

(c)    Integer 1.6.

251    Miele admits that the Miele Silence Products have each of the remaining integers.

Aspiration chamber — integers 1.5, 1.5.3, 1.6

252    The experts agree that the Miele Silence Products have “one or more cooking vapour aspiration chambers”. They disagree as to what constitutes the aspiration chamber or chambers in the Miele Silence Products, which in turn relates to whether or not the fan housing is “situated above” the one or more cooking vapour aspiration chambers.

253    Put simply, on Miele’s case, there is one aspiration chamber and the fan housing is located within that aspiration chamber. Thus, the fan housing is not “situated above the one or more cooking vapour aspiration chambers” and integer 1.6 is not present. On BORA’s case there are two aspiration chambers: one above and one below the fan housing, so the fan housing is situated above the lower cooking vapour aspiration chamber, satisfying integer 1.6.

254    For the reasons that follow, I find that the Miele Silence Products do not take integer 1.6.

255    I consider that the Miele Silence Products have one cooking vapour aspiration chamber, as I have construed that term above. That is the whole oblong enclosed space in which the fan housing is located. That space has defined physical boundaries (walls, a cover and a floor) with an inlet and an outlet. Negative pressure can be maintained over the whole chamber. The fan housing is mounted within that chamber, there is space around the fan housing. There is no physical separation between the area in the chamber above and below the fan housing; it is one chamber.

256    As the fan housing is located within the cooking vapour aspiration chamber, I do not consider that it satisfies the vertical sequence requirement of integers 1.5 and 1.5.3. Nor is the fan housing situated above the one or more cooking vapour aspiration chambers as required by integer 1.6.

257    Mr McLindin agreed that the whole chamber in which the fan housing is located was an enclosed space. However, he considered that whilst that enclosed space could be defined as one chamber, “functionally” it was two chambers. There was no physical boundary between Mr McLindin’s two “functional” aspiration chambers; he agreed that they were “intermixed” and that the boundary depended upon where the aspirated vapour stream splits, to be drawn up or down around the fan housing and into the two fan inlets. Given the different sizes of the impeller blades in the Miele Silence Product, the non-physical boundary between the “functional” chambers may well vary depending on the fan speed.

258    I reject Mr McLindin’s view that there are two “functional” aspiration chambers, housed within the larger enclosed space. I consider that an aspiration chamber requires physical boundaries, with an inlet and outlet, in order to maintain negative pressure within the aspiration chamber.

259    In the event that I am wrong and there are two aspiration chambers in the Miele Silence Products, I consider whether the Miele Silence Products with two aspiration chambers infringe in the next section.

One or more cooking vapour aspiration chambers

260    Miele submits that even if Mr McLindin was correct and there was an upper and lower aspiration chamber, the Miele Silence Products would still not infringe, as they do not have a fan housing situated above the one or more aspiration chambers.

261    Miele submits that the wording of the claim makes it clear that:

…wherein the bottom side of the hob in the device as viewed downwardly sequentially in a vertical direction encompasses a fan housing for one, two or more radial fans and one or more cooking vapour aspiration chambers

... wherein the fan housing is situated above the one or more cooking vapour aspiration chambers.

262    That is, on ordinary principles of construction, the language of the asserted claims required the fan housing to sit above the aspiration chamber(s). Nothing in the claims or the description of the invention in the specification allows for a fan housing situated above only some of the aspiration chambers.

263    According to Mr McLindin, the space below the fan housing in the Miele Silence Products is a “cooking vapour aspiration chamber”, and the fan housing is situated above that “cooking vapour aspiration chamber”. Mr McLindin explained how the Miele Silence Products fell within integer 1.5.3:

With respect to the space below the fan housing…, cooking vapour is relayed toward the outside and the cooking vapour stream is prepared to be vertically aspirated upwardly by means of the radial fan provided in the fan housing, as described in claim 1. As such, the space below the fan housing is a “cooking vapour aspiration chamber” as described in claim 1. In particular, it functions in the same way as the “cooking vapour aspiration chamber” described in claim 1.

(Emphasis added.)

264    BORA submits that Miele’s contention that where more than one cooking vapour aspiration chamber is included, the fan housing must be above both of them, ignores the use of “or” in integer 1.6. The claim requires there to be at least one cooking vapour aspiration chamber, and for the fan housing to be above it. Moreover, the use of “or” makes it clear that the presence of more than one cooking vapour aspiration chamber below the fan housing is not an essential integer of the claim. Therefore, according to BORA, a functionally equivalent second cooking vapour aspiration chamber above the fan housing does not avoid infringement.

265    I do not agree with BORA’s submission. The phrase “one or more cooking vapour aspiration chambers” appears twice in claim 1. First when the aspiration chamber integer is introduced at 1.5.3, and secondly where the fan housing is claimed to be “situated above” the “one or more cooking vapour aspiration chambers”. The presence of “or” in the phrase “one or more cooking vapour aspiration chambers”, means that there might be one chamber, or more than one chamber. There must be at least one chamber and there is no requirement to have more than one. If there is more than one aspiration chamber, I consider that integer 1.6 requires the fan housing to be situated above all the aspiration chambers that are present. BORA’s submission as to an additional integer would be apt where the claim required only one aspiration chamber, and there was another chamber present in the alleged infringing product. However, that is not the case with the claims of the Patent.

266    Even if BORA is correct on this point, the Miele Silence Products do not infringe as it does not take integer 1.5.3(b) as discussed in the next section.

Entire vapour stream vertically aspirated upwardly

267    BORA submits that the lower cooking vapour aspiration chamber performs the function described in integer 1.5.3. According to BORA, cooking vapour is relayed toward the outside of the device and the cooking vapour stream is prepared to be vertically aspirated upwardly by means of the fan provided in the fan housing (i.e., via the lower fan inlet).

268    BORA contends that Miele does not avoid infringement by interposing a second chamber above the fan housing which is functionally equivalent. It submits that it is no answer to infringement that the claimed combination is taken but additional integers are added that do not affect, and are not part of, the invention. As noted above, I do not consider that there is a second aspiration chamber in the Miele Silence Product, and that if I did, the upper aspiration chamber is an additional integer, outside the claim and not relevant to assessing infringement.

269    The experts agreed that it is the entire vapour stream which has to be vertically aspirated upwardly.

270    Miele contends that regardless of the disagreement between the experts as to the meaning of “by means of the one, two or more radial fans”, the Miele Silence Products do not infringe on any of the three scenarios discussed above.

271    First, if there is one aspiration chamber: the aspiration chamber in the Miele Silence Products does not prepare the entire cooking vapour stream to be vertically aspirated upwardly into the fans. Specifically, the radial fan in the Miele Silence Products has dual inlets at the top and bottom of the fan housing. The aspiration chamber is, as a whole, an area of negative pressure that directs the cooking vapour stream into the fan in the fan housing, via the fan housing inlets. The aspiration chamber in the Miele Silence Products prepares a portion of the cooking vapour stream to be vertically aspirated downwardly by the fans into the upper fan housing. This is indicated by the arrows in the cross-sectional diagram shown above at [249].

272    According to Mr Hunter, the top impeller blades of the fan of the Miele Silence Products are larger than those on the bottom one. There is also a “baffle” (a device used to restrain the flow of material in a particular direction) below the lower fan inlet. The result is that a larger proportion of the cooking vapour stream will be directed through the upper fan inlet, to be vertically aspirated downwardly, than is directed into the lower fan inlet.

273    The precise proportion of the cooking vapour stream being aspirated vertically downward via the top fan inlet does not matter, as according to the experts it is the entire vapour stream that must be vertically aspirated upwardly. In the Miele Silence Products, the larger proportion of the cooking vapour is likely to be vertically aspirated downwardly via the top fan inlet, thus the integer is not satisfied if there is one aspiration chamber.

274    Second, if, as according to Mr McLindin, there are two aspiration chambers: the vapour stream in the ‘lower’ aspiration chamber travels downwardly as a “first direction” then it is vertically aspirated upwardly into the lower fan inlet. The vapour stream in the upper aspiration chamber travels upwardly as a “first direction” and then it is vertically aspirated downwardly into the upper fan inlet. Recognising that it was the entire vapour stream that needed to be vertically aspirated, in the joint session Mr McLindin sought to suggest that the cooking vapour could travel in all directions as long as it moved upwards at some point on its journey:

HER HONOUR: So Mr McLindin, in figure 6 – so any time it moves up, you say the integer is satisfied, whether it’s the same point. Like, it comes from the right, moves left, one goes up, one goes down, so you take the up there, and then the other one on the bottom goes along for a while, and then it goes up. So at that point, that’s up.

MR McLINDIN: Yes.

275    Third, on BORA’s view that the Miele Silence Products only have one relevant “lower” aspiration chamber: that alleged aspiration chamber cannot be said to be for horizontally relaying the cooking vapours toward the outside and preparing the cooking vapour stream to be vertically aspirated upwardly by means of the one radial fan provided in the fan housing. The alleged “lower” aspiration chamber only horizontally relays and prepares some of the cooking vapour stream to be vertically aspirated upwardly by the radial fan (where that part of the vapour stream moved downwardly as a first direction on Mr McLindin’s evidence).

276    In each of these three scenarios, the vapour stream is split two streams; one stream is directed to the top fan inlet where it is vertically aspirated downwardly into the fan, whilst the other stream is directed to the lower fan inlet where it is vertically aspirated upwardly. Thus, the entire vapour stream, as required by the experts is not being vertically aspirated upwardly. I reject Mr McLindin’s proposition that as long as the cooking vapor stream is vertically aspirated upwardly somewhere in its pathway, the integer is satisfied.

277    In the event that the Court construes “the cooking vapour stream” to mean “all of the cooking vapour stream”, BORA submits that whilst vertical aspiration upwardly is an essential feature, it is not an essential integer of the claim that the whole of the cooking vapour stream be vertically aspirated upwardly. The substitution of that integer for an integer whereby some of the cooking vapour stream is vertically aspirated upwardly, but some of the cooking vapour stream is aspirated downwardly — which is what Miele has done (on this construction) —would, according to BORA, not avoid infringement. Such a construction is at odds with the evidence of both experts who considered that it was the entire vapour cooking stream that was to be aspirated.

Conclusion — Infringement

278    For the reasons outlined above, I consider that the Miele Silence Products do not infringe the asserted claims.

Validity

279    Miele seeks to revoke each of claims 1 to 13 and 15 of the Patent, which it terms the “relevant claims”. Miele challenges the priority date of the Patent by contending that, prior to the 2015 Amendments, the PCT Application disclosed a hob assembly unit with two or more radial fans only (not one). Miele contends that the 2015 Amendments which, amongst others, added a claim to one or more radial fans, were not allowable under s 102 of the Act, and (subject to overcoming the support and sufficiency attack) by operation of s 114 of the Act and r 3.14 of the Patents Regulations 1991 (Cth), the priority date is deferred to 11 November 2015, being the filing date of the amendments.

280    In addition to the priority attack, Miele submits that each relevant claim as amended is invalid for lack of support and sufficiency, and, for lack of novelty by reason of a Deferred Priority Date and by reason of the publication of the Chinese claim amendments.

281    According to BORA:

(a)    If Miele’s priority date attack fails, then its novelty attack also necessarily fails, as the priority date of 28 April 2011 is retained, and Miele does not rely on any prior art from before that date.

(b)    If Miele’s priority date attack succeeds, and the Court considers that s 43(3) of the Act applies, such that the hob assembly unit with one radial fan is a different form of the invention claimed with its own (later) priority date, then Miele’s novelty case will only succeed if Miele proves that: (i) the alleged prior art, which was labelled by the parties as the Chinese Amendments, were publicly available before 11 November 2015; and (ii) the Chinese Amendments anticipate the form of the invention of claim 1 of the Patent requiring a fan housing for one radial fan;

(c)    If Miele’s priority date attack succeeds, and the Court considers that s 43(3) of the Act does not apply, then BORA admits that the novelty attack would succeed.

Priority date

282    Miele contends that prior to the 2015 Amendments, the PCT specification described and disclosed as the invention a hob assembly unit with two or more radial fans. Miele submits that if the Patent sufficiently discloses and validly claims a hob assembly unit with one radial fan, it is only as a result of the 2015 Amendments. Miele does not accept that the Patent discloses a hob assembly unit with one radial fan and says that the Patent does not satisfy the sufficiency and disclosure requirements of ss 40(2)(a) and 40(3). I agree for the reasons I discuss later in the sufficiency and support sections.

283    Miele contends that, in the event that the relevant claims to one or more fans are sufficiently disclosed or described in the Patent only following the 2015 Amendments, then s 114(1) of the Act is satisfied, and s 114(2) is engaged, such that the priority date of the relevant claims as amended is the date of filing of the 2015 Amendments: 11 November 2015.

284    BORA rejects the contention and says that the PCT disclosed a hob assembly with one fan, and that the 2015 Amendments did not disclose matter that extended beyond that already disclosed in the specification.

285    Alternatively, BORA argues that the relevant claims as amended define “more than one form of an invention”, and that pursuant to s 43(3), only the form of the invention that relates to a hob assembly unit with one fan has a Deferred Priority Date.

Relevant legislation

286    Section 43(1) of the Act provides that each claim of a specification must have a priority date.

287    Section 43(2)(a) provides that if s 43(2A) applies to a claim, the priority date is the date determined under the Regulations. Otherwise, the priority date of a claim is the date of the filing of the specification: s 43(2)(b).

288    Section 43(2A) of the Act applies to a claim if:

(a)    prescribed circumstances apply in relation to the invention defined in the claim; and

(b)    a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

289    Section 43(3) provides that where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.

290    Section 102(1) of the Act provides:

Amendment of a complete specification not allowable if amended specification claims or discloses matter extending beyond that disclosed in certain documents

(1)     An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a)     the complete specification as filed;

(b)     other prescribed documents (if any).

291    Section 114(1) of the Act provides:

(1)     This section applies if:

(a)     a complete specification has been amended; and

(b)     the amendment was not allowable under subsection 102(1); and

(c)     as a result of the amendment, a claim of the amended specification claims an invention that:

(i)     was not disclosed by the complete specification as filed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; but

(ii)     is disclosed in that manner by the amended specification.

(2)     If this section applies, the priority date of the claim must be determined under the regulations.

    (Emphasis added.)

292    Regulation 3.14 of the Regulations provides as follows:

If section 114 of the Act applies to a claim of a specification, the priority date of the claim is:

…

(b)     in any other case--the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subparagraph 114(1)(c)(ii) of the Act.

Explanatory Memorandum

293    In relation to priority dates and the amendment to s 43(2)(b), the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) sets out the purpose for changes made to s 43 of the Act. The prior test for determining the priority date was whether the claim was fairly based on the disclosure of the priority document. It says (at p 49):

Item 10 aligns the requirement for securing a priority date from an earlier filed application with the requirement for disclosure in a complete application (see item 8 above [requirement to describe the invention fully in s 40(2)(a)]). …

The item amends paragraph 43(2)(b) to provide that, if prescribed circumstances apply in relation to the claim and the prescribed document discloses the invention claimed in that claim in a manner that is clear and compete enough for the claimed invention to be performed by a person skilled in the art, the priority date of the claim will be the date that is determined under the Regulations. For the intended operation of the ‘clear enough and complete enough’ test, see the notes relating to item 8 [s 40(2)(a)] above.

The item is intended to achieve two objectives:

First, the amendment is intended to maintain consistency between the requirement of subsection 40(2) and the requirement for priority. Applicants should not be able to secure a priority date on the basis of a disclosure in a provisional or other relevant application that is less complete than required in a complete specification. Otherwise the applicant is in a position to deter competitors before they have fully realised the invention. Since an enabling disclosure will be required, the amendment will also align the requirements for securing a priority date with most other major patent jurisdictions.

Secondly, the amendment is intended to increase the transparency of the Act. The priority date is fundamental to the validity of a patent. Accordingly, it is more appropriate that the key aspect (‘clear and complete enough’) of such an important test for priority is explicit in the Act. However, the less crucial procedural details of how the test is to apply are prescribed in the Regulations. This will permit the other aspects of the existing priority date test to be re-made in the Regulations.

294    The legislative language indicates the disclosure requirements under s 43 and the Regulations are the same as that under s 40(2)(a) of the Act.

2015 Amendments

295    The nature of the 2015 Amendments is set out earlier.

296    The dispute between the parties is whether the Patent, as a result of the 2015 Amendments, claimed or disclosed matter that extended beyond that disclosed in the complete specification as filed (i.e., the PCT Application).

Principles

297    Following the 2015 Amendments, the Patent expressly claimed a hob assembly unit with a fan housing for one, two or more radial fans. The question is: did the PCT disclose a hob assembly unit with one radial fan, or if not, does the Patent, as a result of the 2015 Amendments, claim or disclose matter that extends beyond that disclosed in the PCT? In other words, were the 2015 Amendments allowable under s 102 of the Act, or did they impermissibly result in the specification as amended disclosing or claiming matter that extended beyond that disclosed in the PCT as filed?

298    If the 2015 Amendments were not allowable under s 102 of the Act, then s 114 may apply and if so, the priority date will be determined pursuant to reg 3.14 of the Regulations.

299    The first step is to consider whether the PCT discloses the invention claimed in the Patent. If the PCT sufficiently discloses the invention claimed in the Patent in a manner that is clear enough and complete enough such that the invention can be performed by a person skilled in the art, the invention claimed in the Patent will be able to claim priority from the PCT by reason of s 43(2A)(b) of the Act.

300    Where the requirement of s 43(2A)(b) is in issue, the sufficiency of the disclosure of the priority document will be assessed against the invention of the claim in the complete specification. Since that claim may not be reproduced in the priority document (which might not include any claims at all) it is necessary to determine whether there is any disclosure of the invention (as claimed in the Patent) in the claim in the priority document and, if so, whether it is clear enough and complete enough for it to be performed by the person skilled in the art: ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [181] (per Nicholas J).

301    The invention in the claim of the complete specification must be disclosed in the priority document and must be also disclosed in a manner that is clear enough and complete enough for the invention in the claim to be performed by the person skilled in the art: ToolGen at [181]–[183].

302    What the invention is depends on the proper construction of the claim. Once the claim is construed it is then necessary to determine whether performance of the invention as claimed is enabled in the priority document.

303    The external sufficiency requirement of s 43(2A)(b) largely overlaps with the wording of the internal sufficiency requirement, as amended by the Raising the Bar Act, contained in s 40(2)(a). Although s 40(2)(a) does not expressly refer to the invention as the invention defined by the claim, or the invention in the claim (c.f. s 43(2A)(b)), Nicholas J considered in ToolGen at [175] that there was no reason to doubt that the sufficiency of the disclosure for the purposes of s 40(2)(a) was to be assessed against the invention as claimed. That result was consistent with the intention expressed in the Explanatory Memorandum.

304    In assessing whether the PCT as filed disclosed the invention claimed, the observations of Nicholas J in ToolGen at [193] must be kept in mind. It is not sufficient for the priority document to provide a starting point from which the person skilled in the art may transition from one invention to another by the use of common general knowledge. The question is not what is made obvious to the person skilled in the art from the disclosure of the priority document but what it explicitly or implicitly discloses to that person.

305    As noted by Floyd LJ at [65] (with whom Vos and Laws LJJ agreed) in HTC Corp v Gemalto SA [2014] EWCA Civ 1335, the skilled person must be able to derive the subject matter of the claim directly and unambiguously from the disclosure in the priority document. The priority document is to be read through the eyes of the skilled person equipped with the common general knowledge: Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd (2011) 92 IPR 21 at [41] (per Greenwood and Nicholas JJ). But that knowledge is used for the purpose of interpreting the disclosure and placing it in context, not for the purpose of supplementing the disclosure or adding to it what may seem an obvious further feature: see Icescape Ltd v Ice-World International BV [2019] FSR 5 at [43] (per Kitchin LJ).

306    On the topic of priority dates and the requirements of s 43(2A) of the Act for claiming priority from a disclosure in a priority document, the Explanatory Memorandum stated:

Applicants should not be able to secure a priority date on the basis of a disclosure in a provisional or other relevant application that is less complete than required in a complete specification. Otherwise the applicant is in a position to deter competitors before they have fully realised the invention. Since an enabling disclosure will be required, the amendment will also align the requirements for securing a priority date with most other major patent jurisdictions.

307    Item 33 of the Explanatory Memorandum makes clear that s 114 applies in cases where an amendment that should not have been allowed under s 102 has been inadvertently allowed:

This amendment is consequential to the changes to section 102 (see item 29).

Despite best intentions, sometimes amendments that should not be allowed are inadvertently allowed. Section 114 provides a mechanism for dealing with this situation by giving claims relying on such an amendment the priority date prescribed by the Regulations. This will generally be the date the amendment was made.

The item amends section 114 to ensure that the provision continues to apply in circumstances where an amendment that should not be allowed under section 102 is inadvertently allowed.

The item also amends the section to make the requirements for priority explicit in the Act, consistent with the changes discussed in item 10 above.

The item also amends the heading of section 114 to clearly indicate that the section applies equally to amendments to the claims and to the descriptive parts of the specification. The heading has been changed to better describe its purpose and the change is not intended to affect the operation of the section.

308    In Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH (2020) 151 IPR 181, Beach J considered the allowability of particular amendments under s 102 of the Act. In that context, Beach J first considered the requirements of s 102 under the form of the Act before the Raising the Bar Act. Justice Beach noted at [174] the nature of the task under the previous form of s 102 was explained by Carr and Goldberg JJ in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 at 466.

309    Commencing at [179], Beach J summarised the background to the introduction of the amended form of s 102, noting the apparent rationale for the amendment to s 102 as being to avoid the situation where patent rights accrue in the period before the applicant has fully described their invention: CSIRO at [183]. At [185], Beach J observed that it seemed that the Raising the Bar Act aligned the approach taken under s 102(1) of the Act with the approach taken by the UK and Europe. At [187], Beach J noted that the addition of the words “or disclose” have a broader purview than the invention defined by the claim under the previous form of s 102.

310    After considering the Explanatory Memorandum in relation to the strengthened operation of s 40(2)(a), in particular, that the “full description” requirement in s 40(2)(a) should not be able to be satisfied by amending the complete specification as filed, Beach J concluded at [189] that there may be impermissible added matter if the amendment disclosed new information that was material to the implementation of the invention, that is, material to satisfying the requirements of s 40(2)(a).

311    At [192], Beach J observed that the present wording of s 102(1) of the Act now corresponds more closely with the language of s 76(2) of the Patents Act 1977 (UK) and he looked to the UK authorities for guidance as to the scope of s 102(1). At [202], Beach J set out Jacob J’s “added matter” test from Richardson-Vicks Inc’s Patent [1995] RPC 568 at 576:

I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.

312    In CSIRO at [215]–[219], Beach J summarised the principles that emerged from his review of the UK authorities, as to the amended form of s 102.

(a)    The test is a strict one.

(b)    Subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.

(c)    The required disclosure may be express or implied, but must be clearly and unambiguously so.

(d)    A patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.

(e)    Context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. The UK authorities termed this “intermediate generalisation”.

313    In relation to “intermediate generalisation”, Beach J noted at [219] that even under the prior form of s 102(1) an “intermediate generalisation” was seen as a form of prohibited amendment, referring to Les Laboratoires Servier v Apotex Pty Ltd (2010) 89 IPR 219, in particular the observations of Emmett J (at [25]), Kenny and Stone JJ (at [72]):

The proposed additional claims, incorporating the additional limitation of the product and the process, by reference to individual needles, are not fairly based on the matter contained in the body of the Specification. As a matter of construction of the Specification, the passage that follows the description of the various embodiments of the process invention should not be read back into the description of the product invention. The former does not, as Servier would have it and the primary judge held, link back to the latter. The proposed amendments are not allowable under s 102.

314    Justice Beach also noted at [339] that even though stray references may include or cover the matters in the application as proposed to be amended, that does not disclose those matters for the purposes of s 102(1). Observing at [340]:

If I have not already made it clear, you cannot just take the page 8 paragraph as free-standing and add to it feature B. To do so you are decontextualising both. Both are to be read in the context of the bridging paragraph. And nor is it permissible to just take the page 8 paragraph as free-standing and to say that the page 8 paragraph together with feature B is just a sub-set. Again that is impermissibly decontextualising.

Submissions — PCT disclosure

BORA

315    It is BORA’s case that a hob assembly unit with one radial fan is disclosed in the PCT Application in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.

316    BORA relies on claims 1 and 11 and the phrase in the middle of claim 1 in the PCT, “one or more devices (5) for removing cooking vapours via suction”, as providing the disclosure of a one radial fan hob assembly.

317    Claim 11 of the PCT is dependent on claim 1 and claims an embodiment of the invention constituting the hob as claimed in claim 1 (i.e. with “…one or more devices (5) for removing cooking vapours through suction…”) and with the further features described in claim 11, i.e. the hob assembly device.

318    According to BORA, consistently with the expert evidence, the person skilled in the art understands the phrase “devices for removing cooking vapours through suction” to be describing fans. Mr McLindin indicated that a fan or fans are the only way to generate suction. BORA points to the following textual support in the PCT specification for that understanding.

(a)    Paragraph [4.3] describes Figure 8 as “a schematic top view of the hob (1) according to the invention” and refers to “the fan energy to be expended on the device (5) for removing cooking vapours by suction”.

(b)    The “known hob” is described in paragraph [1.5] as having “three suction devices”, and in [2.2] the “fan motors” in the “known hob” are described as generating noise.

(c)    Paragraph [1.5] describes “the foul-air duct system” to be “connected with the [suction devices]”, with the ducting not part of the suction device itself.

319    BORA also refers to the description of the hob assembly unit with a device as claimed in claim 11, at [10.4]–[11.2]:

10.4    The present invention further relates to a hob (1) with a central recess (4), which takes the form of an assembly unit with a device (36) provided on its bottom side (35) for operating the hob (1) and downwardly removing cooking vapours by suction, and can be quickly and easily inserted into a recess of the kitchen countertop (54) whose dimensions correspond thereto.

11.1    As depicted in particular on Fig. 12 to 16, the bottom side (35) of the hob (1) in the device (36) as viewed downwardly sequentially in a vertical direction can encompass a housing (44) for the heating or hob heating and control electronics, a fan housing (48) for two or more radial fans (38), and one or more cooking vapour aspiration chambers (39) for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans (38) provided in the fan housing (48) situated vertically higher.

11.2    One special advantage to this hob (1) designed according to the invention is that the distance (40) between the bottom side (35) of the hob (1) on the one hand and the bottom side of the floor (42) of the cooking vapour aspiration chambers (39) on the other only measures between 110 mm and 260 mm, preferably between 140 mm and 230 mm, in particular between 150 mm and 200 mm.

320    BORA notes that the PCT distinguishes between the devices denoted by (5) and (36). Their separate reference numerals and different descriptions identify them as different — one, the device marked (5) is one or more devices “for removing cooking vapours through suction”, and the other, (36) is a device “for operating the hob and downwardly removing cooking vapours by suction”.

321    According to BORA the distinction between “one or more devices (5)” and the “device (36) is clear in claim 1 of the PCT as amended by the 2015 Amendments:

A hob (1) with one or more cooking locations (2), which, as viewed from above, exhibits one or more recesses (4) only in the area (25) around its geometric centre (3), which are connected with one or more devices (5) for removing cooking vapours through suction, wherein these devices (5) for removing cooking vapours through suction downwardly remove the cooking vapours that arose or arise above the cooking locations (2) by suction in a direction pointing vertically below the hob (1), characterized in that the bottom side (35) of the hob (1) is provided with a device (36) for operating the hob (1) and downwardly removing cooking vapours by suction that together with the hob (1) forms an assembly unit, wherein the bottom side of the hob (1) in the device (36) as viewed downwardly sequentially in a vertical direction encompasses a housing (44) for the heating or hob heating and control electronics, a fan housing (48) for two or more radial fans (38), and one or more cooking vapour aspiration chambers (39) for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans (38) provided in the fan housing (48) situated vertically higher.

(Emphasis in original.)

322    As can be seen, after the “one or more devices (5)” has been mentioned in the claim, the next reference to those one or more devices is a reference to “these devices (5)”. Then when the “device (36)” is mentioned for the first time in the claim, it is referred to as “a device (36)” and the subsequent reference to it is a reference to “the device (36)”.

323    Mr McLindin understood in his first affidavit, the device of “one or more devices (5)” (which he refers to as the “first devices”) was different from the “device (36)” (which he refers to as the “second device”), but he accepted that the first devices could be part of the second device. Mr McLindin understood the “one or more devices (5)” to be one or more fans. Thus, he understood the PCT to disclose a “one device embodiment” (a one fan embodiment).

324    BORA contrasts claim 1 and claim 11 of the PCT Application with claim 14, which does expressly specify that the embodiment claimed in that claim has two fans: i.e., “…characterized in that two radial fans (38) as viewed from above are positioned in the fan housing (48) on either side …”. BORA notes that claim 14 has a reference to “two radial fans” and not a reference to “the two radial fans”, which it submits would be expected to have been used if two radial fans had previously been mentioned as a component of the invention.

325    Similarly, claim 12 is to be contrasted with claim 11. Claim 12 describes an embodiment with “two or more deep cooking vapour aspiration chambers” and a fan described in association with each cooking vapour aspiration chamber — i.e., “the radial fans (38) provided downstream from the recesses (61) are provided in the middle areas (59) of the covers (60) of the cooking vapour aspiration chambers lying vertically at the top…”. That is, claim 12 claims two cooking vapour aspiration chambers and two fans. However, claim 11 is an embodiment with “one or more devices (5) for removing cooking vapours through suction” and “one or more cooking vapour aspiration chambers”.

326     BORA submits that claim 11 of the PCT Application does not limit the number of suction devices to two fans.

(a)    Claim 11 and paragraph [11.1] of the PCT Application describe an embodiment of the invention, which can encompass a fan housing for (i.e., “suitable for”) two or more radial fans. They do not say anything about the number of fans in the fan housing of the embodiment described, they say what the fan housing is suitable for. BORA submits that a fan housing that is suitable for two fans will also be suitable for one fan. Given that the hob of the invention (as described in paragraph [6.5] and as claimed in claim 1) includes “one or more devices for removing cooking vapours through suction”, the preferred embodiment of the invention described in paragraph [11.1] (and as claimed in claim 11) could have one fan in the fan housing, or it could have multiple fans in the fan housing.

(b)    The reference to “by means of the radial fans provided in the fan housing” does not necessitate multiple fans. This is apparent by reference to the fact that paragraph [11.1] refers to “one or more cooking vapour aspiration chambers”, and then paragraph [11.2] refers to “the floor of the cooking vapour aspiration chambers” (see also the references to “one or more devices” and “these devices”). That is, where a description of an embodiment of the invention includes a component which could be provided by either a single component or by multiples of the component (e.g., “one or more”), subsequent references to that component use the plural form. However, that plural form is not necessarily a reference to multiples of that component. The reference to the “floor of the cooking vapour aspiration chambers” is a reference to the floor of however many cooking vapour aspiration chambers are provided (whether one or more than one), and, by the same token, the reference to “the radial fans provided in the fan housing” is a reference to however many fans are provided in the fan housing (whether one or more than one).

327    Further, Figure 15 of the PCT Application (shown above at [35]) relates to the flow of vapours through the fan housing. It clearly describes the fan housing to be functionally a fan housing for a single fan. The fan housing is disclosed in [13.2] to have “a spiral structure with an upstream guiding chamber (66) followed downstream by a pressure chamber (67)”. Shown in Figure 15 are two “guiding chambers” and two “pressure chambers”, i.e. two such fan housings, one on the left and one on the right. The function of the fan housing is to separate the inlet from the outlet and define the flow path from the inlet to the outlet. Thus, functionally there are two fan housings in the assembly unit shown in Figures 12 to 16, one for each fan. As can be seen in Figure 15 as well as in Figure 16, the flow paths through the two fans are completely separate from each other. The cooking vapours are only brought together again in the adjoining “space (68)”, i.e. downstream of the pressure chambers of the fan housings.

328    This is consistent with the disclosure in paragraph [13.1], whereby the fan housing is described as being “provided above the respective aspiration chamber (39)”, i.e. the implication being that to each aspiration chamber belongs a fan housing. In case of one aspiration chamber there is one fan housing and in case of two aspiration chambers there are two fan housings.

329    BORA also relies on Figure 17 (shown above at [41]) which it submits is a disclosure of one radial fan. Paragraph [6.2] of the PCT Application says: “Fig. 17 is a schematic view of a hollow cylindrical grease filter (6), which is connected only with a single foul air vent (38)”. Mr Hunter and Mr McLindin both understand Figures 17 and 18 to be depicting radial fans in a fan housing of a hob forming an assembly unit.

330    BORA submits that the use of one fan is also disclosed in (at least) Figures 3, 4, 5, 6, 7, 10 and 11 of the PCT Application, which show suction of cooking vapour in one direction towards a single foul air line, in a similar manner to Figure 17. Figures 3 to 7, 10 and 11 are described in paragraphs [3.3]–[4.2], [4.5] and [5.1] of the PCT as “schematic cross-sections of the hob taken along the B–B line” of Figures 1 and 9. Looking at each of Figures 3 to 7, 10 and 11 the foul-air duct, identified by reference numeral (9), is running left to right on the page in the direction of the B–B line (i.e. in the north direction).

331    As such, claim 11 of the PCT Application claimed, and paragraphs [10.4] to [11.2] disclosed, a hob:

(a)    with “one or more devices (5) for removing cooking vapours through suction” (e.g., one or more fans);

(b)    which together with “a device (36)” forms an assembly unit;

(c)    which has a fan housing “for” (i.e., suitable for) two or more radial fans, which is also necessarily a fan housing “for” (i.e., suitable for) one radial fan; and

(d)    which has “one or more cooking vapour aspiration chambers for … preparing the cooking vapour stream to be vertically aspirated toward the top by means of the radial fans provided in the fan housing”.

Miele

332    In contrast, Miele submits that the PCT does not clearly and unambiguously disclose a hob assembly with only one radial fan, in a manner clear enough and complete enough to be performed by the person skilled in the art.

333    First, Miele disagrees that the person skilled in the art understands the word “device” to be interchangeable with “fan” in the PCT Application. Even if that were so, it submits that there is no discussion in the PCT Application as to what kind of fan that might be, whether that would be an axial or radial fan. The discussion of the hob from [2.5] to [10.3] (with reference to Figures 1 to 11) does not show or describe any fans. Figures 2 to 7 deal with different options for the configuration of the grease filter insert in the central recess and for the configuration of the floor for collection of grease and oil. Miele submits that the PCT Application is not deploying those figures to tell the reader about the fan configuration.

334    Miele rejects BORA’s contention that Figures 3 to 7 and 10 and 11— which show the suction of cooking vapour in one direction towards a single foul air line (in a similar manner to Figure 17) — by implication disclose a hob assembly with one radial fan. According to Miele, Figures 2 to 7 are deployed to provide information as to configurations of the grease filter insert and the floor. Mr McLindin agreed that Figures 3 to 7 were not deployed in the PCT to tell the reader about fan configuration, and that the fact that there is a singular foul-air duct enveloping the grease filter insert says nothing about the fan configuration. The reason for the bilateral airflow in Figure 2, and the unilateral airflow in Figures 3 to 7 is explicable by the different cross-sections depicted in the two sets of Figures. Figures 3 to 7 are cross-sections of the same hob assembly (as depicted in Figure 1) but on the perpendicular perspective to that depicted in Figure 2 which, as Mr McLindin agreed, shows two fans.

335    Miele submits that similarly, Figures 14 and 16 are referring to the same hob, being a two fan hob, and that there is no dispute that, when Figure 16 shows a unilateral airflow, it is depicting a cross-section of a two-fan configuration.

336    Miele observed that in the joint session, Mr McLindin suggested for the first time that Figure 2 was “quite possibly” incorrectly described, as it “didn’t make sense” being along the A–A line, that it must be a “typo”, and should be described as a cross-section on the B–B line. Miele submits that this suggestion should be disregarded. Not only was there no mention of it in either of Mr McLindin’s affidavits, but it was also not mentioned in the JER, where he expressly noted that the cross-sections other than Figure 2 show vapours moving in one direction. Nor was any mention made of an erroneous labelling of Figure 2 in Mr McLindin’s JER Clarifications.

337    Miele submits that where the specification describes the cooking vapour removal device of the hob assembly unit, it does so only by reference to a two or more fan configuration. That is the only configuration of the hob assembly unit described in the PCT Application.

338    The ‘two or more fan’ assembly unit configuration disclosed in the PCT Application is relevant and important to many of the advantages referred to in the PCT Application. For example, the PCT discusses at [17.2] how providing two or more opposing radial fans downstream from the cylindrical grease filter markedly enlarges the working surface of the grease filter and elevates the throughput volume, while at the same time improving the level of grease separation. The advantage of that set up is that the fan motors of the radial fans can exhibit an especially small, energy saving, energy efficient and quiet design.

339    After introducing the general features of the hob, the PCT from [10.4] onwards moves to describe the device for downwardly removing cooking vapours by suction, as well as operating the hob. Each embodiment of the hob assembly unit from that point on encompasses two radial fans, with Miele noting the following examples from the PCT Application: Figure 15, [12.2], [12.3], [13.1], [13.2], [13.3] and [14.2].

340    The preferred positioning of the at least two radial fans “used according to the invention” ([17.2]) is described in the PCT Application at [12.3], [13.1], [14.2], [17.2], [17.3]. The preferred spinning rotation of the fans is described at [14.2], which is preferably opposite to each other: [14.2]. The advantage to “oppositely aligning” the rotation direction of the two radial fans is that the two cooking vapour exhaust flows stream toward the odour filter.

341    The summary at [15.2] arises after the description of Figures 1–16 in the specification. By way of a summary, it characterises the invention that has been described in the preceding paragraphs. As Mr McLindin agreed, the first sentence picks up the language of claim 1 of the PCT Application and the second sentence picks up the assembly unit aspects of the invention. The skilled reader understands “the cooking vapour removal device” in the second sentence to be “the device for removing cooking vapours” in the first sentence.

342    To the extent that Mr McLindin said that claim 1 of the PCT Application could “encompass” a one fan configuration, Miele submits that such evidence is not evidence of a clear and unambiguous disclosure of an assembly unit with one radial fan. Mr McLindin accepted that the claim does not say anything about fan type and whenever the specification describes a vapour removal device as part of an assembly unit, it only ever discloses a two fan configuration. Further, such evidence relying on the language of claim 1 fails to consider the disclosure of the PCT Application as a whole and the context in which that language appears.

343    Miele submits that reading the specification as a whole, the disclosure in the PCT does not amount to a clear and unambiguous disclosure of a hob assembly unit with one radial fan for the following reasons.

(a)    First, while the reference to “one or more devices” for removing cooking vapours through suction downwardly” (see, e.g., [6.5], claim 1) may not preclude a “one fan set up” (when considered in isolation and putting aside the rest of the specification), it does not clearly and unambiguously disclose a hob assembly unit with one radial fan. In the PCT, when the number of fans in the hob assembly unit is addressed, it is by disclosure of two or more fans.

(b)    Secondly, and relatedly, a disclosure of “one or more devices” for removing cooking vapours through suction downwardly does not disclose the particular features, function, orientation and configuration of the radial fan; i.e., a fan housing for one radial fan; wherein the cooking vapour stream is prepared to be vertically aspirated upwardly by means of the radial fan provided in the fan housing.

(c)    Thirdly, to treat a disclosure of a generic “hob”, which is silent as to the number of fans, as an alleged “implicit” disclosure of a “hob assembly unit” with one radial fan when that hob assembly unit is only embodied with two radial fans, would be an impermissible intermediate generalisation, which goes against Beach J’s comments in CSIRO at [205]–[213] and [218]–[219].

344    Insofar as Mr McLindin suggests that the PCT Application discloses a hob with one radial fan, Miele submits that, due to the order in which Mr McLindin was asked to prepare his evidence it is possible that Mr McLindin was subconsciously influenced by his knowledge of the Patent by the time he came to consider the disclosure in the PCT Application. Mr McLindin accepted the possibility that his opinions on what was disclosed by the PCT Application were influenced by the contents of the Patent, including its express reference to a one fan configuration.

345    Contrary to BORA’s contention, Miele contends that Figures 17 and 18 are used in the PCT to illustrate certain advantages of the two or more fans according to the invention, and that they do not provide disclosure of a hob with one radial fan. Figure 17 provides a counter-example to illustrate the benefits of the two-fan configuration.

346    Miele contends that the disclosure in the PCT does not support BORA’s submission that the references in the specification to “device (5)” and the “device (36)” are to different things and “device (5)” is the device as used in claim 1 (which may be just one fan) and the first part of the specification, and “device (36)” picks up the assembly unit aspects of the invention. Miele submits that a consideration of claim 11 of the PCT makes this clear.

347    Claim 11 expressly claims two or more radial fans in the assembly unit device (36). A one-fan configuration is not disclosed by reason of the dependency on claim 1. The contrary conclusion would suggest a configuration of two or more radial fans in the device (36) described in the assembly unit of claim 11, combined with the hob from claim 1, which has an additional single fan, being the device (5). No witness suggested such a reading of the specification.

Consideration of PCT disclosure

348    The first step is to consider the scope of the claims of the Patent. I will start with claim 1. What the invention is depends on the proper construction of the claim. Once the claim is construed, it is then necessary to consider the disclosure in the PCT to determine whether the invention claimed in claim 1 of the Patent is disclosed in the PCT Application.

349    Following the 2015 Amendments, the Patent expressly claimed a hob assembly unit with a fan housing for one, two or more radial fans. The question is whether the Patent, as a result of that amendment, claimed or disclosed matter that extended beyond that disclosed in the PCT Application. In other words, were the 2015 Amendments allowable under s 102 of the Act?

350    Does the PCT clearly and unambiguously disclose a hob assembly unit with one radial fan, and if so, is that disclosure clear enough and complete enough for it to be performed by the person skilled in the art?

351    If not, does the Patent clearly and unambiguously disclose a hob assembly unit with one radial fan, and is that disclosure clear enough and complete enough for it to be performed by the person skilled in the art? If so, is it “as a result of” the 2015 Amendments that the Patent discloses the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art (s 114)? I note that the anterior question overlaps with the internal sufficiency enquiry required under s 40(2)(a) of the Act.

352    Claim 1 of the Patent claims a hob assembly unit with one, two or more radial fans. As it is not in dispute that the PCT discloses a hob assembly unit with two or more fans, the relevant aspect of that claimed invention in the Patent is a hob assembly unit with one radial fan.

353    The final step is to consider whether performance of the invention by the person skilled in the relevant art is sufficiently enabled by the PCT Application: Glass Hardware at [81].

354    For the reasons which follow, I do not consider that the PCT discloses a hob assembly with one radial fan.

355    The experts agreed that the PCT Application does not in terms describe how to make a hob assembly unit with one radial fan. BORA is unable to point to any express disclosure of a hob assembly with one radial fan. BORA’s disclosure case is based on the implied disclosure of a hob assembly with one radial fan.

356    BORA starts by construing the “device (5)” for downwardly removing cooking vapours through suction, as being a fan, and thus the reference to “one or more devices” as implicitly disclosing a hob with one or more fans. BORA ascribes a construction to “device”, the first time that word is encountered, without any context gleaned from reading the whole of the PCT. BORA also sought impermissibly to gain support for its construction from the amendments to the PCT Application.

357    In contrast, Mr McLindin understood in the context of the PCT Application as a whole that when the PCT said at [2.4] “the object of the present invention is to provide a hob with a device” it was not using the word “device” as interchangeable with “fan”, rather the whole assembly was being referred to.

358    I consider that the better view is that the singular “device” of [2.4] encompasses an assembly of components. A two-fan configuration of the “device” as part of the hob assembly unit is described later in the specification. It follows from the evidence of the experts that, in the context of the PCT read as a whole, “device” cannot be read as simply “a fan”. Otherwise, it would be inconsistent with the two-fan configuration later described in detail. The same may be said of the reference to “generic device” in [2.5].

359    “Device (5)” is never given content other than its function for removing cooking vapour by suction. The discussion of the hob from [2.5] to [10.3] (including Figures 1 to 11) does not show or describe any fans or fan configuration. Figures 2 to 7 show different options for the configuration of the grease filter insert in the central recess and of the floor for collection of grease and oil, they do not provide any information as to fan configuration or the number of fans.

360    BORA’s suggestion that Figures 3 to 7 demonstrate by implication a one fan version of the invention through the discussion of only one foul-air duct does not assist it. The “foul-air duct” is described in the PCT Application at [7.1] as the duct that envelops the grease filter insert. The presence of a single foul-air duct tells the reader nothing about the fan configuration. The unilateral airflow depicted in those figures arises as a result of the cross-section depicted in those figures (as with Figure 16). Figure 2 is a schematic cross-section of a hob along the A–A line depicted on Figure 1. Figures 2 to 7 all disclose the same hob, being the hob depicted in Figure 1. Figure 2 depicts bilateral air flow, whereas Figures 3 to 7 and Figures 10 and 11 show unilateral airflow. This is because those figures are cross-sections on the perpendicular B–B line of Figure 1, not because only one fan is present.

361    The late-stage suggestion by Mr McLindin that Figure 2 is wrongly labelled as an A–A cross-section does not withstand scrutiny. Despite considering Figure 2 in his two affidavits, the JER, and preparing the extensive JER Clarifications document after the JER, Mr McLindin did not raise any concerns with the description of Figure 2 until the joint session. Mr Hunter did not agree that there was any wrong description of the cross-section depicted in Figure 2. Finally, the Patentee does not appear to consider Figure 2 to be described wrongly. Figure 2 retains its description as an A–A cross-section in the Patent. BORA has applied to amend the Patent to correct typographical errors, it did not include an amendment to the description of Figure 2 in the amendments sought.

362    Figures 10 and 11, which relate to means by which the central recess in the hob may be reversibly closed, depict a schematic cross-section of the hob in Figure 9, along the B–B line.

363    Ultimately, Mr McLindin accepted that Figures 1 to 11 and the PCT Application prior to [10.4] do not show or describe any fans.

364    Figures 12 to 16 depict the invention in the form of an “assembly unit”. Figure 16 shows only one fan as it is a schematic longitudinal section along the B–B line of Figure 15, whereas Figure 14, which is a schematic longitudinal section along the perpendicular A–A line of Figure 15, shows two fans. This is consistent with the representation of the hob in Figure 1, in Figures 2 to 7, and Figures 3–7 not impliedly disclosing a one fan device.

365    The hob in the form of an “assembly unit” with a device (36) is described from [10.4] of the PCT Application. Throughout the PCT whenever the Patentee is describing the hob assembly unit with a device (36), the Patentee expressly refers to plural fans: “two or more radial fans” or “the radial fans (38)”, “radial fan motors (56)”, “two fan wheels (65)”. Each time the Patentee has specifically chosen to expressly refer to two or more fans. There is no express description of the use of one radial fan in the PCT.

366    Where the specification describes the hob assembly unit’s cooking vapour removal device, it only ever describes it in a two radial fan configuration. Each embodiment of the hob assembly unit described in the PCT encompasses two radial fans: e.g., PCT Application at Figure 15, [12.2], [12.3], [13.1], [13.2], [13.3] and [14.2].

367    The two or more radial fan assembly unit configuration is said to be relevant and important to many of the advantages described for hob assembly unit invention described in the PCT. The preferred positioning of the at least two radial fans “used according to the invention” ([17.2]) is described in the PCT Application at [12.3], [13.1], [14.2], [17.2], [17.3]. The preferred spinning rotation of the fans is described at [14.2], which is preferably opposite to each other: [14.2]. The advantage given at [14.3] to “oppositely aligning” the rotation directions of the two radial fans according to Figure 15, is that the two cooking vapour exhaust flows stream toward the odour filter provided downstream from the space for dividing and aligning the exhaust flows.

368    A further benefit (outlined in the PCT Application at [17.2]) of providing two or more opposing radial fans downstream from the hollow cylindrical grease filter is that configuration markedly enlarges the working surface of the grease filter and elevates the throughput volume whilst at the same time improving the level of grease separation and generating an especially low-pressure loss on the larger, effectively active grease filter surface. The advantage of the two-fan configuration is illustrated by way of the comparative Figures 17 and 18. Mr McLindin considered that the single fan of Figure 17 was providing a comparison against the prior art. The depiction of a one fan configuration in the context of a discussion of the advantages of a two-fan configuration in order to illustrate those advantages does not constitute a disclosure of a one fan hob assembly.

369    Mr McLindin agreed that the only configuration of the assembly unit described in the PCT specification is a configuration having two fans. Mr McLindin also agreed that “there is no Figure explicitly depicting a hob with one radial fan”. Mr McLindin accepted that claim 1 of the PCT does not say anything about fan type and whenever the specification describes a vapour removal device as part of an assembly unit, it only ever discloses a two-fan configuration.

370    The cooking vapour removal device has been disclosed as comprising a fan housing for two fans with two fans, and not disclosed as a fan housing for two fans with one fan.

371    BORA’s “suitable for” submission in relation to the “fan housing (48) for two or more radial fans” integer of claim 11 of the PCT Application being suitable for one fan, does not support a clear and unambiguous disclosure of one fan. That submission places too much weight and emphasis on the word “for” in circumstances where the experts agreed that the PCT Application does not in terms describe how to make a hob assembly unit with one radial fan, the implication, if it can be drawn, that a fan housing for two or more fans is suitable for only one fan, does not constitute an enabling disclosure. There is no express disclosure that the fan housing for two or more fans is suitable for one fan.

372    BORA submits that Figure 15, which depicts a hob assembly with two radial fans, shows the fan housing to be functionally a fan housing for a single fan. Functionally there are two fan housings shown in Figures 12 to 16, one for each fan. By implication there is a disclosure of one fan housing and one fan. The description at [14.2] does not support there being two separate fan housings: “two radial fans (38) as viewed from above can be positioned in the fan housing (48) on either side of the tubular foul air line (50)”.

373    I do not consider that in the PCT Application there is an express disclosure of the hob assembly with one radial fan as claimed in claim 1 of the Patent.

374    Mr McLindin suggested that the PCT Application implicitly encompassed a one fan configuration. At the time he gave his evidence as to what was disclosed in the PCT, Mr McLindin was aware of the issue as to whether a hob assembly with one radial fan was disclosed. He accepted in the joint session that that knowledge may have subconsciously affected his reading of the PCT Application.

375    At best, on BORA’s case, there is an implied disclosure of one radial fan, by reason of the PCT Application’s silence as to the use of one fan, and the absence of an express rejection of one fan. BORA seeks to rely on disclosures in one context, such as the single fan in Figure 17 (used to contrast the advantage of two fans), and assemble those disclosures, devoid of context, to support its case for implied disclosure.

376    I disagree that an implied disclosure of a one fan hob assembly can be drawn from the PCT Application. But even if it could, I do not consider that it would constitute a sufficient disclosure of the subject of claim 1 of the Patent: a hob assembly unit with one radial fan.

377    The relevant question is what is disclosed to the person skilled in the art, not what might be made obvious to them by the priority document in light of the common general knowledge. Even if the skilled person might readily appreciate that a one fan configuration might be possible, there is no express or implicit disclosure in the priority document of a hob assembly with one radial fan, and it is impermissible to use the common general knowledge to supplement the disclosure in the specification, or to add a further feature: Icescape at [42].

378    An implied disclosure of a one fan assembly unit achieved via a reverse-engineered close reading of the specification: by patching together stray phrases, particular cross-sections depicting unilateral vapour flow, and a counter example showing the advantage of two fans, in the absence of an express limitation, does not constitute a clear and unambiguous disclosure or a disclosure of the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

379    As such, I consider that the PCT Application discloses a different invention to the Patent.

Section 102(1)

380    BORA contends that a fan housing “for two or more radial fans” was necessarily also a fan housing for one radial fan, so the amendment to describe it explicitly as a “fan housing for one, two or more radial fans” did not result in any added matter. The amendment did not result in any change to the characteristics of the fan housing in the hob claimed — the fan housing is suitable for one, two or more radial fans on either description. For the reasons just discussed, I reject that contention.

381    As a result of the 2015 Amendments, the Patent expressly claims “a fan housing for one, two or more radial fans”. I have found that there was no clear and unambiguous disclosure (either express or implied) of a hob assembly unit with one radial fan in the PCT when considered as a whole.

382    As I noted above, BORA seeks to pull together disparate strands devoid of context in order to suggest that the PCT Application disclosed a hob assembly with one radial fan.

383    As Beach J observed in CSIRO at [215], a patentee is not permitted to add by amendment matter simply because it would have been obvious to the person skilled in the relevant art.

384    I consider that as a result of the 2015 Amendments, the Patent claims matter that extends beyond that disclosed in the PCT Application. Accordingly, the 2015 Amendments were not allowable pursuant to s 102 of the Act.

Section 114(1)(c)

385    Section 102 is concerned with the allowability of proposed amendments. Section 114 is concerned only with amended claims and their priority date.

386    If, as I have found, the 2015 Amendments were not allowable under s 102(1), that will affect the priority date of the claims. If the relevant claims are sufficiently described in the Patent only as a result of the 2015 Amendments, Miele contends that s 114(1) is satisfied and s 114(2) is engaged such that the priority date of the relevant claims as amended is the date of filing of the amendments: 11 November 2015.

387    I consider that the requirements of s 114(1)(a) and (b) are satisfied.

388    Miele contends that if, as here, a claim is amended to add new matter, then s 114(1) will be satisfied because the amended claim will claim an invention that was not disclosed at all in the complete specification as filed, which means it cannot be disclosed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

389    The amendments expressly add a claim to a one radial fan hob assembly unit, and a corresponding consistory clause, to the disclosure in the Patent. As I found above, prior to the amendment there was no disclosure of a hob assembly unit with one radial fan. The amended claims are not claiming matter that was already disclosed in the specification.

390    The disclosure requirement in s 114(1)(c)(i)–(ii) is in the same terms as the internal sufficiency disclosure requirement in s 40(2)(a) and the external sufficiency disclosure requirement in s 43(2A)(b): (i) disclosed by the complete specification as filed in a manner that was clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; but (ii) is disclosed in that manner by the amended specification. The external sufficiency requirement largely overlaps with the wording of the internal sufficiency requirement as contained in s 40(2)(a) following the Raising the Bar Act reforms.

391    Although s 40(2)(a) does not expressly refer to the invention as the invention defined by the claim, or the invention in the claim (c.f. s 43(2A)(b) of the Act), Nicholas J considered in ToolGen at [175] that there was no reason to doubt that the sufficiency of the disclosure for the purposes of s 40(2)(a) was to be assessed against the invention as claimed: Glass Hardware at [79]. There is no reason to doubt that the consideration of the sufficiency of disclosure in each of ss 42(2)(a), 43(2A)(b) and 114(1)(c) would be consistent. That result would also be consistent with the intention expressed in items 8, 10 and 33 of the Explanatory Memorandum.

392    I agree with the comments of Nicholas J in ToolGen at [193] where his Honour stated that disclosure requirement of s 43(2A)(b) requires that the invention must be disclosed in the priority document for priority to be maintained. I consider that Nicholas J’s comments apply equally to the disclosure requirement in s 114(1)(c). It is not sufficient for the priority document to provide a starting point from which the person skilled in the art may transition from one invention to another by the use of the common general knowledge. The mere fact that it would be obvious to the person skilled in the art to use the disclosure in the priority document to produce what is claimed is not enough to obtain priority if, properly characterised, the priority document and the claim are for different inventions. If there is disclosure of the claimed invention in the priority document, that disclosure must be clear and complete enough for it to be performed by the person skilled in the art: ToolGen at [181].

393    For the reasons I discuss below under the heading “Sufficiency”, I do not consider that a hob assembly unit with one radial fan is disclosed in the Patent after the 2015 Amendments. I do not consider that s 114(1)(c)(ii) applies.

Section 43(3) — is there more than one form of the invention?

394    In the event that I find that the PCT Application does not describe a hob assembly with one radial fan, BORA, relies on s 43(3) of the Act to submit that the relevant claims as amended define “more than one form of an invention”, such that only the “form of the invention” relating to a hob assembly unit with one radial fan has the Deferred Priority Date.

395    Section 43(3) of the Act provides that where a claim defines more than one invention, then, for the purpose of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.

396    The plurality in AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324 at [250]–[253] (per Besanko, Foster, Nicholas and Yates JJ) briefly discussed the history of s 43(3) of the Act and its predecessor provision in the Patents Act 1952 (Cth), noting that these provisions were included to overcome the ruling in Thornhill’s Application [1962] RPC 199.

397    In Thornhill’s Application, the claim in suit contained an “either” and “or” which meant that it embodied two alternatives, i.e., claims 1A and 1B. Only one of the alternatives was fairly based on the provisional specification relied upon to establish the priority date of the claim. On appeal, Lloyd-Jacob J concluded (at 207) that there was no provision in the Patents Act 1949 (UK) that would warrant the attribution of two different priority dates to different parts of the one claim.

398    In AstraZeneca, the Full Court emphasised the terms in which the claim is drafted and directed attention to whether the claim, according to its terms, allows for alternatives. The relevant claim was:

1. A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that:

(i)    the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and

(ii)    the counter anion to the inorganic salt is not a phosphate.

399    The patentee argued that pharmaceutical compositions, where the counter anion to the inorganic salt were different non phosphates, would constitute different forms of the invention. The plurality observed that there would be any number of potential variants that were within the scope of the claim in suit, but distinguished such a situation from that which arose in Thornhill’s Application, stating at [251]:

In our view, claim 1 of the 842 or cation patent does not define more than one form of the invention. Unlike the claim in issue in Thornhill’s Application, claim 1 of the 842 or cation patent does not by its terms allow for any alternatives or, adopting the language of s 43(3), different forms of the same invention. Claim 1 defines only one form of the invention even though there will be any number of potential variants that are within its scope. We do not think s 43(3) is intended to treat every potential variant of the defined invention as if it was a form of the invention that must be treated as a separate claim which is to be given its own priority date. Rather, it is intended to deal with very different situations such as that which arose in Thornhill’s Application or where, to take a slightly different example, a claim is dependent on one or more independent claims (claim 3 of the 842 or cation patent takes this form) each of which has a different priority date.

400    In Nichia Corp v Arrow Electronics Australia Pty Ltd [2015] FCA 699, Yates J observed at [84] that the Full Court in AstraZeneca emphasised the terms in which the claim is drafted and directed attention to whether the claim, according to its terms, allows for alternatives. Yates J noted at [85] that the claims in suit in Nichia were cast in terms that were different to the claim considered in AstraZeneca. Claim 1 included two discrete and express selection steps — one referable to the selection of “large” metal ions, and the other to the selection of “small” metal ions. At [87], Yates J was satisfied that, by their terms, each of claims 1 and 3 of the specification envisage and provide for different forms of the invention, as understood by s 43(3) of the Act. In each case, these forms are represented by the individual phosphors obtained after the selection steps have been undertaken.

401    As a result of the amendment, the Patent claims a hob assembly with one radial fan in addition to an assembly with two or more fans. I consider that the one radial fan hob assembly is a different form of the invention to the two or more fan hob.

402    For the reasons discussed below in relation to the sufficiency and support requirements, it is not a simple straightforward task to move from a two-fan hob assembly unit to a one fan hob assembly unit. It is not simply a variety of the existing hob assembly described in the PCT Application.

403    Section 43(3) applies in this case, such that the claim to the invention which is a hob assembly with one radial fan has a different, later priority date, than the claimed invention with two or more radial fans.

Conclusion — Priority date

404    I have found that the invention in the amended claims does not satisfy either ss 114(1)(c)(i) or 114(1)(c)(ii) of the Act, and that s 43(3) does apply.

405    I have also found that the 2015 Amendments were not allowable under s 102(1) of the
Act.

406    As such, the priority date of the amended claims of the Patent is the Deferred Priority Date, 11 November 2025.

Support

407    Section 40(3) of the Act requires that the claim or claims must be “supported by matter disclosed in the specification”. The support condition requires that the claims defining the Patent should themselves be supported by what appears in the specification.

408    The Explanatory Memorandum noted that ‘support’ requirement replaced the old fair basis requirement. The Explanatory Memorandum noted that overseas law generally requires that there be a relationship between the claims and the description. Broadly speaking, the term ‘support’ picks up two concepts:

    There must be a basis in the description for each claim; and

    The scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.

409    Both Burley J in Merck Sharp & Dohme Corp v Wyeth LLC (No 3) (2020) 155 IPR 1 at [546] and Nicholas J in both ToolGen at [394]–[395] and Calix Ltd v Grenof Pty Ltd (2023) 171 IPR 582 at [126] agreed that the approach articulated by Aldous J in Schering Biotech Corp’s Application [1993] RPC 249 at 252–3, broadly encapsulated the support obligation under s 40(3) of the Act:

Thus to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed. This approach is I believe consistent with the decision of the European Patent Office’s Technical Board of Appeals in the Biogen case T301/87 of 16 February 1989*. They said: “The scope of protection in the claims must be fair having regard to the way in which the invention is described and having regard to the information which the skilled person has been given in the description as to how the invention can be carried out”.

(Citations omitted.)

410    The question whether a disclosure in a patent application fairly entitles the patentee to a monopoly of the width claimed calls for an assessment of the patentee’s contribution to the art, which must be weighed against the scope of the patentee’s monopoly as defined by the claims. The monopoly, according to UK and European authorities, must be justified by the technical contribution to the art that arises from the disclosure of the specification: ToolGen at [396].

411    Although discussion of s 40(3) is often focussed on the breadth of the claim, some claims may also lack support because the claim includes a feature not disclosed in the specification, or omits a feature that is disclosed, resulting in a lack of support because the invention claimed is materially different from the invention disclosed: Calix at [128].

412    Miele submits that, for the same reasons that it submitted that the PCT Application did not disclose a hob assembly with one radial fan, the claims of the Patent which claim a hob assembly with one radial fan are not supported by the disclosure in the Patent. Miele contends that, notwithstanding the consistory clause, the body of the specification read as a whole does not disclose a hob assembly unit with one radial fan. Each of the claims, in so far as they extend to a one fan configuration exceed the technical contribution to the art.

413    As the Full Court said at [222] in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (2023) 176 IPR 336, in many cases, the inquiries into support (s 40(3)) and sufficiency (s 40(2)(a)) are “two sides of the same coin”. BORA contends that is so in the present case and dealt with both requirements in the same section of its closing submissions.

Consideration

414    Properly construed, claim 1 of the Patent claims a hob assembly unit with one, two or more radial fans.

415    The extent of the monopoly conferred by the Patent must correspond with the extent of the patentee’s contribution to the art. In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, (i.e., the product is enabled by the disclosure) rather than (if different) the invention: see the principles articulated by the Supreme Court of the UK in Regeneron Pharmaceuticals Inc v Kymab Ltd [2021] 1 All ER 475 at [56] (per Lord Briggs, Lord Reed P, Lord Hodge DP and Lord Sales agreeing).

416    I consider that the technical contribution to the art as described in the specification lies in a hob assembly unit with two or more radial fans.

417    As I discussed above, I consider that the PCT disclosed a hob assembly with two radial fans and did not disclose a hob assembly with one radial fan. Notwithstanding the addition of the consistory clause inserted at [2.5], I do not consider that the Patent as a whole describes a hob assembly unit with one radial fan. The mere mention in the specification of features appearing in the claim is not sufficient to provide support. In the words of Aldous J in Schering Biotech, the word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed. Accordingly, I consider that a claim to an invention which is a hob assembly unit with one radial fan exceeds the Patentee’s technical contribution to the art.

418    To support the breadth of the claimed monopoly, the requisite disclosure needs to be more than a passing reference. The important thing is not the consistory clause but whether the disclosure as a whole supports the breadth of the claims. Support requires more than loose or stray remarks, as these references do not support the technical contribution of the claimed invention.

419    As I have explained above I consider that, at best on BORA’s case, there is an implied disclosure of one fan, by reason of silence, or no express rejection of one fan. An implied disclosure of a one fan assembly unit achieved via a reverse-engineered close reading of the specification: by patching together stray phrases, particular cross-sections depicting unilateral vapour flow, and a counter-example showing the advantage of two fans, in the absence of an express limitation, does not constitute a clear and unambiguous disclosure or disclosure of the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

420    I consider that this disclosure does not satisfy the support requirement.

Sufficiency

421    Section 40(2)(a) of the Act requires that the complete specification disclose the invention (as claimed) in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. Since the claims form part of the specification, they may contribute to the disclosure (c.f. s 43(2A)(b)); see ToolGen at [166] and [175].

422    The invention claimed must be disclosed in the priority document if priority is to be obtained. It is not sufficient for the priority document to provide a starting point from which the person skilled in the art may transition from one invention to another by the use of the common general knowledge. The mere fact that it would be obvious to the person skilled in the art to use the disclosure in the priority document to produce what is claimed is not enough to obtain priority if, properly characterised, the priority document and the claim are for different inventions. The question is not what is made obvious to the person skilled in the art from the disclosure of the priority document, but what it explicitly or implicitly discloses to that person: ToolGen at [193].

423    The question is whether there is enough in the priority document to give the skilled person essentially the same information as forms the subject of the claim and enables them to work the invention in accordance with that claim: Unilin Beheer BV v Berry Floor NV [2004] EWCA Civ 1021 at [48] (per Jacob LJ, Ward LJ and Sir Martin Nourse agreeing).

424    The skilled person must be able to derive the subject matter of the claim directly and unambiguously from the disclosure in the priority document. The priority document is to be read through the eyes of the skilled person equipped with the common general knowledge. But that knowledge is used for the purpose of interpreting the disclosure and placing it in context, not for the purpose of supplementing the disclosure or adding to it what may seem an obvious further feature: Icescape at [42]. As Floyd LJ (with whom Vos and Laws LJJ agreed) said in HTC at [65]:

The question of what a document discloses to a skilled person takes account of the knowledge and background of that person. A document may mean one thing to an equity lawyer and another to a computer engineer, because each has a different background. The document still only has one meaning because it is only the relevant skilled person’s understanding which is relevant. What is not permissible is to go further than eliciting the explicit or implicit disclosure and take account of what a document might lead a skilled person to do or try, or what it might prompt him to think of.

425    In Icescape, a case concerning the priority of an invention for the use of joint elements in constructing mobile ice rinks, the patentee accepted that there was no express disclosure in the priority document of multiple elements or they were connected together. At trial the patentee contended that the priority document would be read through the eyes of the skilled addressee and that when reading it such a person would have had in mind mobile ice rinks which formed part of the common general knowledge and would have realised that the priority document was talking about the use of flexible coupling elements in such a mobile ice rink system. On appeal, Kitchin LJ (Floyd and Longmore LJJ agreeing) held at [43] that although he was prepared to accept that the skilled person would readily appreciate that one element could be joined with another to increase the width of the ice rink, that did not alter the fact that there was no express or implicit disclosure in the priority document of two elements joined together. The claim to priority depends upon the express or implicit disclosure of those features in the priority document and, since there was no such disclosure, the claim to priority in Icescape failed.

426    The sufficiency requirement as explained by the Explanatory Memorandum requires that the patentee should make the nature of the invention plain to the skilled addressee and sufficiently disclose in the specification how to perform the invention, i.e., provide an enabling disclosure. The question is whether the person skilled in the art can readily perform the invention over the whole area claimed without inventive skill or undue burden: Jusand at [157(a)] (per Perram J, Nicholas J and McElwaine J agreeing). In other words, does the specification disclose the invention claimed, and provide an enabling disclosure of the invention claimed?

427    Whether an invention is disclosed in a manner which is clear enough and complete enough depends on whether, given what is contained in the specification, the skilled person can readily perform the invention without undue burden or the need for further invention: Calix at [118].

428    The nature of the enabling disclosure has been the subject of extensive discussion and consideration by this Court in Merck and ToolGen, as well as by the Full Court in Jusand and Glass Hardware.

429    The five steps for determining compliance with s 40(2)(a) are:

(a)    Construe the claims to determine the scope of the invention claimed;

(b)    Construe the description to determine what it discloses to the person skilled in the art;

(c)    Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims;

(d)    Consider whether is it plausible that the invention can be worked across the full scope of the claims; and

(e)    Consider if the invention can be performed by the person skilled in the art across the full scope of the claims without undue experimentation.

430    At [524] in Merck, Burley J quoted from Aldous J at first instance wherein he discussed the extent of the disclosure obligation in Mentor Corp v Hollister Inc [1991] FSR 557 at 562. The passage was endorsed by the Court of Appeal in Mentor Corp v Hollister Inc [1993] RPC 7 at 14:

The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the time and energy that the skilled man must spend seeking to perform the invention before it is insufficient. Clearly there must be a limit. The sub-section, by using the words, clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result.

431    It is not necessary that the disclosure be such as to enable the person skilled in the art to make a successful commercial product.

432    In Icescape, the claimed invention covered multiple elements. The patentee accepted that there was no express disclosure of multiple “elements” or the way they were connected together in the priority document. On appeal the patentee submitted that the priority document gave the skilled person essentially the same information about the invention which formed the subject of the claim as the patent, and that “all that has been done in the patent is to include an additional diagram showing the invention in use in one kind of common general knowledge set-up, that is to say one in which two elements, placed side-by-side, are connected together in an entirely conventional way”: Icescape at [28].

433    In Icescape at [42], Kitchin LJ rejected the contention that it is a sufficient disclosure if, as a matter of substance not form, the skilled person can derive the subject matter of the claim in issue directly and unambiguously, using common general knowledge, from the disclosure of the priority document. The role of the common general knowledge is limited to the purpose of interpreting the disclosure of the priority document and placing it in a context. It is not to be used for the purposes of supplementing the disclosure or adding to the disclosure what may seem to be an obvious further feature. It is not permissible to go further and take account of what a document might lead a skilled person to do or try, or what it might prompt them to think of: HTC at [65].

434    Despite accepting that that the skilled person would readily appreciate that one element of the kind depicted in the priority document could be joined to another to increase the width of the ice rink, Kitchin LJ held that it did not alter the fact that there is no express or implicit disclosure in the priority document of two such elements joined together or of features A, D or E of claim 1 of the patent. Nor was it possible to derive these features directly and unambiguously, using common general knowledge, from the priority document as a whole. Accordingly, the claim to priority failed.

435    Miele submits that the claimed invention is not disclosed in the Patent. Miele contends that the person skilled in the art could not make the hob assembly unit (claimed in claim 1) with one radial fan based on the teaching of the Patent without undue burden or the exercise of inventive skill. Miele submits that the Patent does not describe how to make a hob assembly with one radial fan at all.

Evidence

436    In his second affidavit, Mr McLindin said that it would be “relatively straightforward” at the priority date to make a hob assembly as described in claim 1 with housing for one radial fan, either by making modifications to the design depicted in Figures 12 to 16, or by coming up with a “clean sheet” design. Mr McLindin addressed each element of the hob assembly unit separately.

437    According to Mr McLindin, at the priority date, houses for heating and/or control electronics were common, and were commonly situated in the position described in the Patent, and would not have been difficult to address in the design of the single fan hob. It was also common for rangehoods to have single or multiple fans, so he could use an “off the shelf” fan and housing.

438    Mr McLindin considered that designing a structure containing a cooking vapour aspiration chamber to work with an “off the shelf” fan housing would have been routine and not dissimilar from designing ducting inside a traditional rangehood or in ovens which also include ducting.

439    Mr McLindin’s alternative process started with the two-fan hob assembly depicted in the Figures in the Patent and removing a fan housing.

440    Mr McLindin referred to the existence of single-fan downdraft extraction products on the market by the priority date which were capable of effectively extracting cooking vapours. He accepted that he had no experience of working with these extraction products. In the joint session, Mr McLindin agreed that of the two example Gaggenau products pictured in his affidavit, one had a remote fan probably located outside the house, and there was no detail as to the fan configuration in the other. Mr McLindin agreed that one of the benefits of a remote fan location was that the fan could be much larger and more powerful because noise attenuation was taken care of by reason of the remoteness.

441    Mr McLindin said that he considered both the “clean sheet” design process and the modification design process that he described to be routine, and similar to work that he and his colleagues did at Electrolux. He agreed that both his approaches involved the design of a new product, not manufacturing a product that already existed, and that the design process would involve making a prototype, testing it and modifying it as necessary. Mr McLindin agreed that in making a hob assembly with one radial fan with all the integers of claim 1, the task was not merely to install a single fan with enough suction to remove the cooking vapour, but to combine it with all the other elements specified in claim 1, so as to create a single hob assembly unit that works.

442    In the JER, Mr Hunter considered that the central recess, the grease filter, the aspiration chamber and the odour filter all must function collectively. A central recess would also require a redesign of the hob heating and control electronics PCB and housing underneath the hob. According to Mr Hunter, trying to predict air flow (or smoke vapour flow) from a fan or multiple fans is notoriously difficult to do.

443    In the joint session, Mr McLindin agreed that the performance of the single fan hob assembly unit will depend on a number of interrelated factors, including:

(a)    The size and shape of the recess in the hob;

(b)    The configuration of the grease filter;

(c)    The position of the fan and the fan housing;

(d)    The size and power of the fan; and

(e)    The configuration of the aspiration chamber/s.

444    Mr McLindin agreed that in designing the new product, the aim was to avoid or reduce maintenance costs, minimise energy expenditure, and reduce noise. He agreed that the process of designing a new product was a process of research and development. Mr Hunter considered that the result could not be predicted in advance.

445    In the joint session, Mr McLindin backed away from starting with the two-fan hob assembly and deleting one fan housing. He also agreed that it may well not be possible to just adopt an “off the shelf” fan housing, and that he might have to work with the supplier to modify the fan housing, and potentially the fan wheel and fan motor.

446    In the joint session Mr McLindin agreed that:

(a)    the preferred embodiment of the invention in the Patent was a two-fan configuration;

(b)    the Patent specification did not refer to the benefits of a one-fan configuration; and

(c)    there was no clear and unambiguous disclosure of a one-fan configuration in the Patent.

447    Mr McLindin agreed that putting aside the claims, the Patent described an invention where there are two fans in the assembly unit, and that it did not describe a one fan assembly unit in the illustrations or preferred embodiments. The only reference to one fan was in [2.5] (which refers back to the consistory clause of claim 1).

448    A one-fan configuration was not as simple as just removing one fan from the hob assembly unit. To maintain the performance level achieved with the two radial fans, the speed of the remaining fan would need to be increased. That would lead to an additional power requirement to power the fan.

449    Mr McLindin agreed that he was not familiar with the relationship between volumetric flow rate and the rotational speed of a radial fan, although he understood one to be proportional to the other. He was also aware that there was a relationship between the power requirement for fans and fan speed, but was not aware of the precise detail or mathematical formula of that relationship. Mr Hunter’s evidence was that the power requirement increased as a cube of the fan speed: double the fan speed would require eight times the power.

450    Any inefficiency in the operation of the grease filter in a single fan configuration would add to the demands on the fan. Mr McLindin said that it was possible to trade off between the size of the mesh and the number of mesh layers to increase the efficiency of the grease filter.

451    In the JER, Mr McLindin and Mr Hunter disagreed as to the utility of Computational Fluid Dynamic software (CFD) in the design process to develop a hob assembly unit with one radial fan. Mr McLindin considered CFD to be complex and expensive and not something that he had utilised or would use, noting that CFD must always be validated with a physical model. Whereas Mr Hunter’s evidence was that he would outsource CFD modelling to a specialist. Mr Hunter considered that, although CFD modelling was time consuming and expensive, it was cheaper and faster than building and testing multiple prototypes. The CFD debate did not add much as ultimately it seemed the effect of CFD modelling was to potentially cut down the routine trial and experimentation involved in the design process by reducing the number of physical models that needed to be built and tested. The use of CFD modelling to shorten the routine trial and error process would not change the undue burden analysis.

452    Mr Hunter referred to the example of Dyson’s 5127 prototypes and the five years it took to develop the bagless vacuum cleaner using cyclonic dust separation (an airflow driven process) to demonstrate the complexity of development where airflow is involved.

Consideration

453    Mr McLindin’s confidence that a hob assembly unit with one radial fan with all of the integers of the asserted claims could be designed and developed without undue burden or invention is unfounded and unwarranted.

454    The performance of a one radial fan unit to achieve sufficient suction would depend on a number of factors including, but not limited to, the power of the fan, relevant airflow directionality and positioning of the fan.

455    As noted above in respect of the support requirement, I do not consider that the patent expressly or impliedly discloses a one fan configuration as claimed by BORA.

456    A person skilled in the art, reading the PCT Application and starting at claim 1 and its consistory clause, would need to undergo research and development to produce the one fan configuration. Miele relied on observations made by Aldous LJ in the UK Court of Appeal in American Home Products Corp v Novartis Pharmaceuticals UK Ltd [2001] RPC 8:

The duty upon the patentee is to provide a description which enables the skilled person to perform the invention, in this case across the breadth of the claim; not to supply a starting point for a research program.

457    In Jusand, the Full Court considered a case where the invention claimed was able to be constructed from a range of materials, but the specification showed only how to make it from steel. As such, the relevant claims of the patent in suit were found to lack sufficient disclosure under s 40(2)(a), as the development of the invention in question across the claimed full range of materials would have required inventive skill or undue burden.

458    Based on the evidence in this case, more than routine trial and error would be required to develop a one fan configuration which would enable the invention to generate sufficient suction to downwardly remove cooking vapours as required by claim 1. I consider that this disclosure does not satisfy the sufficiency requirement.

Novelty

459    For completeness, I will consider whether the hob assembly unit with one radial fan as expressed in the Patent following the 2015 Amendments was novel at the Deferred Priority Date.

460    Section 7(1)(a) of the Act provides that an invention will be taken to be novel unless it is not novel in light of prior art information made publicly available in a single document.

461    BORA admits that a hob assembly unit encompassing a fan housing for two or more radial fans was not novel at the Deferred Priority Date, being 11 November 2015.

462    The only dispute on novelty relates to a hob assembly unit with one radial fan. The following matters were not in dispute.

(a)    On 26 March 2014, BORA’s Chinese Patent Application No 103688111, (equivalent to the PCT Application) had been published but was not granted. The Chinese Patent Application was granted on 23 November 2016.

(b)    Prior to the Deferred Priority Date, on 16 October 2015, BORA submitted amended claims to the CNIPA in relation to the Chinese Patent Application equivalent to the PCT Application (as discussed above, I refer to these as the Chinese Amendments), which had been published on 26 March 2014.

463    Mr Hunter’s evidence was that the claims in the Chinese Amendments disclosed each of the integers of the relevant claims as amended (i.e., the hob assembly unit with one radial fan). Mr McLindin did not opine on the issue.

464    However, BORA contends that the Chinese Amendments do not anticipate the claimed invention of the Patent as they contain ambiguities which the person skilled in the art may or may not resolve in a manner that anticipates the claimed invention. Consequently, the Chinese Amendments do not give clear and unmistakeable directions to do what is claimed in the claims of the Patent. It is only because Mr Hunter was aware of the claims of the Patent that BORA says he was able to resolve the ambiguities in the Chinese Amendments in accordance with the claimed invention.

465    The first issue is whether the Chinese Amendments were “publicly available” at the Deferred Priority Date so that they were part of the prior art base. Information in a document is “publicly available” if it has 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: Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 239 FCR 117 at [124] (per Lindgren, Bennett and Logan JJ). The second issue is whether, if the claims of the Chinese Amendments are part of the prior art base, they anticipate the claimed invention. Miele bears the onus of proof on both issues.

Principles

466    It is immaterial whether or not the anticipating document has become known to many people or a few people: Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 at 111 (per Windeyer J). The question is not whether the document was actually accessed, but whether it was available to be accessed without restraint.

467    As the Full Court observed in Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31 at [103], that an Australian patent may “be defeated by reason of some publication which in reality nobody in Australia had the remotest possibility of being aware of before the priority date”.

468    Whether the Chinese Amendments were publicly available depends upon whether, on the balance of probabilities, they were available to be accessed without restraint through the CNIPA website.

CNIPA website and 2010 Guidelines

469    The CNIPA website launched in May 2015 was the successor to the State Intellectual Property Office (SIPO) website which operated since 2012.

470    CNIPA provides an online service called the China and Multi-country Patent Examination Information Inquiry, which allows members of the public to view some categories of documents generated in relation to published patent applications filed with the CNIPA. As at November 2015, access to information and documents from CNIPA regarding patent applications was regulated by Part V, Chapter 4, Rule 5 of the 2010 Guidelines. The 2010 Guidelines came into force on 1 February 2010. The 2010 Guidelines state that amendments for patent applications which were not granted were not available. As at 11 November 2015, Part V, Chapter 4, Rule 5 of the 2010 Guidelines provided:

5.2 Contents Allowed for Consultation and Photocopying

(1) For a patent application for invention before publication and a patent application for utility model or design before the announcement of the grant of patent right, the applicant or agent thereof may consult or photocopy the relevant contents in the said patent application files, including the application documents, the formality documents directly relating to the application, notifications and decisions sent to the applicant in the preliminary examination procedure, and the text of the observations submitted to the applicant in response to the notifications;

(2) for the file of a patent application for invention which has been published and whose grant of patent right has not been announced, the contents in the file which may be consulted and copied relate to those before the date of the publication, including the application documents, formality documents directly relating to the application, publication documents, notifications and decisions sent to the applicant in the preliminary examination procedure and the text of the observations submitted by the applicant in response to the notifications;

(3) for the file of a patent application for which grant of patent right has been announced, the contents in the file which may be consulted and copied include the application documents, the formality documents directly relating to the application, pamphlet of patent application for invention, pamphlet of patent for invention, pamphlet of patent for utility model or pamphlet of patent for design, Patent Register, and evaluation report of patent, and the various notifications and decisions issued by the Patent Office or the Patent Reexamination Board to the applicant or parties concerned, and the text of the observations submitted by the applicant or parties concerned in response to the notifications in the examination proceedings which have been closed (including procedures of preliminary examination, substantive examination, reexamination and invalidation, etc.);

…

(5) except for the above-mentioned contents mentioned above, consultation or photocopying of other documents shall not be allowed.

(Emphasis added.)

471    BORA contends that rule 5.2(2) applied to BORA’s Chinese patent application at the relevant date, given that it had been published but not granted. The Chinese Amendments filed by BORA on 16 October 2015 is submitted to have not been “on the file” before the Chinese Patent application was published. Therefore, consultation of the document was not permitted by rule 5.2(2), and it was in fact expressly prevented by rule 5.2(5).

472    As BORA notes, there does not appear to be any disagreement between the Chinese Witnesses as to the fact that the 2010 Guidelines applied to the Chinese Amendments in October and November 2015.

473    Miele submits that rule 5.2(2) of the 2010 Guidelines do not apply to electronic copies of filed documents.

474    The Chinese Witnesses gave evidence regarding the 2010 Guidelines and the CNIPA website, this is discussed below.

475    Critically, evidence was provided which indicated that amendments to other non-granted patent applications were able to be accessed on the CNIPA website. This would contradict the purported practice suggested under the 2010 Guidelines.

Were the Chinese Amendments publicly available?

Submissions

476    According to Miele, rule 5.2(2) governs requests to photocopy and inspect hard copy documents filed in relation to patent applications that are published but not granted. The 2010 Guidelines were drafted prior to the updated functionality of the CNIPA website being released. According to Miele, the evidence indicates that, in practice the 2010 Guidelines were not applied to claim amendment documents available on the CNIPA website.

477    Miele also submitted that the Chinese Amendments are not marked confidential. Miele submitted that there is no evidence that BORA claimed confidentiality over its Chinese Amendments, or that BORA believed that the Chinese Amendments would be kept confidential.

478    BORA submits that Miele’s evidence is not sufficient to discharge its onus of proving on the balance of probabilities that the Chinese Amendments were publicly available before 11 November 2015. Given the potential significance of a finding that the Chinese Amendments were publicly available before 11 November 2015, BORA contends that it is important to bear in mind Dixon J’s observations in Briginshaw v Briginshaw (1938) 60 CLR 336:

But reasonable satisfaction is not a state of mind that is attained or established independently of the nature and consequence of the fact or facts to be proved. The seriousness of an allegation made, the inherent unlikelihood of an occurrence of a given description, or the gravity of the consequences flowing from a particular finding are considerations which must affect the answer to the question whether the issue has been proved to the reasonable satisfaction of the tribunal. In such matters “reasonable satisfaction” should not be produced by inexact proofs, indefinite testimony, or indirect inferences.

479    In this respect, BORA submits that both factors below ought to weigh heavily against any inference, asserted by Miele, that the Chinese Amendments were publicly available.

(a)    The inherent unlikelihood that CNIPA had made an unannounced decision to make publicly available a class of documents contrary to its own 2010 Guidelines, and that experienced practitioners, such as Ms Nan and Mr Wang, were not aware of any such decision.

(b)    The gravity of the consequences flowing for the finding which Miele seeks.

Evidence

480    I note from the outset that the relevant evidence regarding the CNIPA website and 2010 Guidelines was proffered by five Chinese patent attorneys. All the affidavits of the Chinese patent attorneys were made in English, with no translation from Chinese.

481    Despite assurances that the Chinese patent attorneys were proficient at reading and speaking English, the cross-examination for all proceeded with an interpreter. The relevant documents discussed below were in Chinese and were translated into English.

482    I will begin by outlining some of the key documentary evidence tendered in respect of this issue, and then move to the evidence of the witnesses themselves.

JunHe Website — Min Article

483    Mr Min is one of the three authors of an article entitled “Analysis of the Public Comment Procedure in Patent Applications” which was published on JunHe’s website on 12 November 2015, the day after the Deferred Priority Date (the Min Article).

484    As part of drafting the article, Mr Min searched and reviewed the CNIPA website to confirm its functionality and noted the availability of amendments made to published, but not yet granted Chinese patent applications.

485    The Min Article describes the third-party observation process in China, including the updated functionality of the CNIPA website that permits access to claim amendments filed post publication of a patent application, allowing submissions to be made on the latest version of the claims.

486    A certified translation of the relevant part of the article states:

Since 26 April 2012, the National Intellectual Property Office has launched the Patent Inquiry Service System (available at http://cpquery.sipo.gov.cn/). This system has undergone multiple updates and is highly effective for determining the current examination status of invention patent applications.

The system provides graphic documents of patent application files with application dates after 10 February 2010 and offers a ‘Public Search’ section. This allows the general public to query published invention patent applications or announced invention, utility model, and design patent applications by entering the application number, invention name, applicant, and other details. The data is updated weekly. Specifically, through this system, ordinary users (without needing to register) can not only access basic information such as the application number, invention name, and application date but also view specific examination documents.

According to the service introduction of this system, for published but not yet announced invention patent applications, one can view graphic documents of the application and notification documents. In searches conducted before 2015, the examination information section only included two items: ‘Application Documents’ and ‘Notifications.’ Therefore, although it was possible to access the examination opinion notices issued by examiners, it was not possible to access the applicant’s responses to these notices.

However, my recent searches reveal that the examination information section of the system has now added an ‘Intermediate Documents’ item. Therefore, for published but not yet announced invention patent applications, it is currently possible not only to access the full text of the examination opinion notices but also to view the claims submitted by the applicant and the submission dates in the ‘Intermediate Documents’ section.

Thus, through the China Patent Inquiry Service System, it is now possible to determine whether an examination opinion notice has been received for a published invention patent application, when it was received, the full text of the examination opinion notice (including specific examination opinions and comparative document information cited by the examiner), whether the applicant has responded to the examination opinion notice, the claims submitted in response, and the response dates. This information is highly beneficial for effectively submitting public opinions.

Therefore, given that the current examination status of published invention patent applications can be ascertained through the China Patent Inquiry Service System, it is advisable to periodically (e.g., monthly) monitor the relevant patent applications to determine their latest examination status if one wishes to submit a public opinion.

487    Miele submits that the following matters can be drawn from the Min Article. The Min Article:

(a)    addresses and illustrates the availability of amendments filed in response to examination opinion notices after a patent application had been published (but prior to grant);

(b)    explains that since April 2012, SIPO had launched the Patent Inquiry Service System, which had undergone multiple updates and was “highly effective for determining the current examination status of invention patent applications”;

(c)    states that the data on the above system was “updated weekly” and that through the Patent Inquiry Service System “ordinary users (without needing to register) can not only access basic information…but also view specific examination documents”;

(d)    explains that “recent searches” conducted before 12 November 2015 revealed that the examination information section of the system had added an “Intermediate Documents” item; and

(e)    explains that for published but not yet granted invention patent applications, it was possible to view the claims submitted by the applicant in response to substantive examination reports (issued after publication of the application), which was “highly beneficial for effectively submitting public opinions”.

Cheng Article

488    Additionally, Miele further relied on an article authored by Dr Yong Cheng of the China Council for the Promotion of International Trade (the Cheng Article).

489    The Cheng Article was published on 15 May 2016 in the Chinese journal, Patent Agency. Patent Agency is a quarterly journal published by the All-China Patent Attorneys Association (ACPAA), which is an official industry association for Chinese patent attorneys established in 1988 with the approval of the Chinese Ministry of Civil Affairs and supervised by the CNIPA.

490    The translated title of the article is ‘Reflections on the Online Disclosure of Examination Information for Pre-Grant Invention Patent Applications’. The Cheng Article relevantly states the following:

It has been observed that SIPO’s approach of making patent examination information publicly available—specifically for invention patent applications still in the substantive examination stage and filed after February 2010—is inconsistent with the provisions of the Patent Examination Guidelines (2010).

According to Sections 5.1 and 5.2 of Chapter 4, Part 5 of the Patent Examination Guidelines (2010), any person may request SIPO to review and copy the files of published patent applications. For patent applications that have been published but not yet granted, the contents available for review and copying are limited to those up to the publication date. This includes: application documents, procedural documents directly related to the application, published documents, notifications and decisions issued to the applicant during the preliminary examination process, and the applicant’s responses to such notifications. For patent applications that have been granted, the scope of review and copying is extended to include notifications and decisions issued to the applicant or relevant parties during all concluded examination processes (including preliminary examination, substantive examination, re-examination, and invalidation procedures) by SIPO or the Patent Re-examination Board, as well as responses to such notifications.

According to the Patent Examination Guidelines (2010), the provisions concerning patent application documents indicate that for patent applications that have been published but not yet granted, the public's access is limited to content available before the publication date. Specifically, this means that the OA and the response opinions should be restricted to those from the preliminary examination stage and do not include OAs issued by examiners during the substantive examination stage or claim amendment documents submitted by applicants during this stage.

…

If not handled carefully in practice, since February 2010, the public can promptly search online for all claim amendment documents and OAs of invention patent applications that are in the substantive examination stage but not yet granted. This examination information could inadvertently form prior art unfavourable to the applicant, causing the applicant to lose the opportunity to submit separate patent applications and seek protection for new technical solutions.

491    Miele submits that the Cheng Article confirms that claim amendment documents submitted during the substantive examination phase of a patent application were publicly accessible on the CNIPA website by at least 15 May 2016. In particular, the article:

(a)    explains that SIPO “has been advancing its public service for patent examination procedures”;

(b)    explains that the public can “promptly search online” and access the full text of amendments to claims for Chinese invention patent applications submitted after February 2010 that are still in the substantive examination stage;

(c)    explains that the disclosure of this information “through its official website aligns with the global trend towards international cooperation in patent examination”, with the “transparency not only allow[ing] the public to stay informed about the latest invention patents, particularly those still undergoing substantive examination”, but also affecting the practices of patent applicants, patent agents and examiners in China; and

(d)    recommends that in patent invalidation and litigation processes, the scope of prior art searches be expanded to make “full use” of prior art disclosed through these online channels and the “new changes” to the website.

492    BORA submits that this article tells against the “current” availability (in 2016) of amended claims for published but not granted patent applications was not a new functionality for the CNIPA website that had been deployed in May 2015 with the launch a new version of the website. Part II of the article notes the inconsistency between such information being publicly available and the provisions of the 2010 Guidelines. The article says that the provisions of the 2010 Guidelines mean that “the OA and the response opinions should be restricted to those from the preliminary examination stage and do not include OAs issued by examiners during the substantive examination stage or claim amendment documents submitted during this stage”. The article then goes on to discuss the availability of such documents through the CNIPA website in the context of “a person with a confidentiality obligation [violating] regulations, agreements, or understandings and [disclosing] the secret”.

CNIPA Update

493    An announcement published by the CNIPA on its website on 22 May 2015 entitled “The Releasing of Global Patent Examination Enquiry” (CNIPA Update).

494    An update published on the CNIPA website on 22 May 2015 relevantly stated that:

The State Intellectual Property Office (SIPO) has added the Global Patent Examination Information Inquiry into the China Patent Examination Inquiry, so as to meet the inquiry demand of public users and examiners in and abroad on patent examination information. The Global Patent Examination Information Inquiry is scheduled to be officially released on May 18th, 2015.

The Global Patent Examination Information Inquiry is used for retrieving examination information of Inventions filed in European Patent Office (EPO), Japan Paten [sic] Office (JPO), Korea Intellectual Property Office (KIPO), U.S. Patent and Trademark Office (USPTO) and State Intellectual Property Office of the P.R.C. (SIPO). By logging in the system and entering into the search interface of the system, a user can retrieve the patent family information (provided by European Patent Office) of the application, and can retrieve the application and examination information of the inventions filed in EPO, JPO, KIPO, USPTO and SIPO via inputting application number, publication number and priority number.

495    According to the CNIPA update, the CNIPA website would be updated to allow access to the prosecution history of the patent families of inventions from patent offices, including SIPO. Miele submitted that the availability of the claim amendments at the Deferred Priority Date is entirely consistent with these policy objectives and increased functionality of the CNIPA website described in the CNIPA Update, and the Cheng Article.

Miele — Patent attorney evidence

496    Mr Liu and Mr Min opine that based on their experience, the Chinese Amendments would have been publicly available through the CNIPA website at the Deferred Priority Date. Neither had personally accessed amended claims of published, but not granted, patent applications via the CNIPA website before the Deferred Priority Date.

497    Mr Liu’s evidence, based on one example of access by colleagues at his firm, was that he “understood” that the CNIPA website was used in 2015 to access those types of documents. In his second affidavit, Mr Liu referred to a third-party observation submitted by his firm in March 2016, as evidence that his colleagues had been able to access the amended claims of a patent (being a document filed after publication of the patent application but prior to grant) on the CNIPA website.

498    Mr Liu’s first affidavit, which was filed by Miele as evidence in chief in support of the publication of the Chinese Amendments, did not mention the 2010 Guidelines. Mr Liu’s evidence was that at the time the 2010 Guidelines were enacted, SIPO operated predominantly using paper forms and physical filing, and that rule 5.2 of the 2010 Guidelines regulated access to the paper files. As the 2010 Guidelines were enacted prior to the introduction of the electronic search system on the CNIPA website, Mr Liu did not consider that the 2010 Guidelines applied to the electronic system.

499    Mr Liu agreed that rule 5.2 of the 2010 Guidelines was the relevant provision that regulated access to CNIPA documents. However, Mr Liu said that the 2010 Guidelines did not reflect the functionality of the CNIPA website and were inconsistent with what could be accessed in practice when searching the CNIPA website in late 2015. The inconsistency applied to access to electronic copies of documents, not documents held physically at the CNIPA offices. According to Mr Liu, the inconsistency between the 2010 Guidelines and the functionality of the CNIPA website continues to this day.

500    Although Mr Liu said that it was his personal practice to access documents like the Chinese Amendments using the CNIPA website prior to the Deferred Priority Date, and that the example of his colleagues’ in March 2106 reflected his experience, Mr Liu gave no example of him accessing an amended claims document of a published but not granted patent application via the CNIPA website before or after the Deferred Priority Date.

501    It was Mr Min’s evidence that, in his experience, claim amendments for published but not yet granted Chinese patent applications were publicly available via the CNIPA website prior to the Deferred Priority Date. According to Mr Min, after the CNIPA website was upgraded in May 2015, users could access a broader range of documents for published but not yet granted Chinese patent applications, including claim amendments filed after publication but prior to grant.

502    Mr Min’s evidence establishes that attorneys at one firm in China were able to access amended claims for one Chinese patent application in late September 2015. Mr Min agreed that this was a surprising and unusual new development for Mr Min and his colleagues.

BORA — Patent attorney evidence

503    Ms Nan and Mr Wang opine that the Chinese Amendments would not have been publicly available via the CNIPA website as at the Deferred Priority Date.

504    Ms Nan’s evidence was that her experience of access to documents via the CNIPA website was consistent with the 2010 Guidelines. She had never accessed claim amendments filed in relation to a patent application (other than applications for which she was prosecuting) before the grant of the application had been announced. Mr Wang’s evidence was to similar effect.

505    Ms Nan considered that if there was an ability to access some amendments to non-granted patent applications, it was likely due to a technical glitch. During cross-examination, Ms Nan was resistant to the idea that such documents could be accessed, contrary to the 2010 Guidelines, and speculated that any such access was the result of a technical issue with the CNIPA website.

506    Mr Wang first used the CNIPA website in 2013. Since then, he has regularly used the CNIPA website. In Mr Wang’s opinion based on his experience, documents such as the Chinese Amendments could not be accessed through the CNIPA website before the Deferred Priority Date because rule 5.2(2) of the 2010 Guidelines expressly prevented access to such documents. The CNIPA website allowed third parties to see the titles or names and submission dates of documents that had been filed, but access to their contents was not possible. Once a patent was granted, third parties could obtain the “file wrapper” from CNIPA, including claim amendments filed in relation to the granted patent.

507    Mr Wang and Ms Nan both to various extents initially resisted the notion that documents like the Chinese Amendments were available via the CNIPA website as at the Deferred Priority Date. When confronted with the Min Article and the Cheng Article discussed above, both invoked the 2010 Guidelines and resorted to explaining any access as being due to a glitch.

Consideration

508    Miele bears the legal burden of establishing that the Chinese Amendments were made “publicly available” before the Deferred Priority Date. In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at [53]–[54], Crennan J explained that:

Prior art will only be relevant to the consideration of novelty or inventive step if it was “made publicly available” before the priority date of the claim in question. The respondent bears the onus of proof with respect to establishing that the prior art information was “publicly available” at the relevant priority date: s 7(1) Patents Act.

The requisite degree of publication will be met if the prior publication or act communicates the information to any one member of the public in a manner which left that person free, in law and in equity, to make use of the information: Humpherson v Syer [1887] 4 RPC 407; Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581.

509    First, I accept BORA’s contention that the gravity of the consequences which flow from a finding that the Chinese Amendments were publicly available affects the standard of proof required in this case. ‘Reasonable satisfaction’ that the document was publicly available is required in this case, and is not reached “by inexact proofs, indefinite testimony, or indirect inferences”: Briginshaw at 361 (per Dixon J).

510    As noted above, the relevant test is not whether the Chinese Amendments were actually accessed, but whether they were publicly available.

511    As at the Deferred Priority Date, BORA’s Chinese patent application had been published but no patent had yet been granted on the application. The following discussion relates to the public accessibility to the claim amendments filed electronically after publication of the patent, but before grant.

512    Rule 5.02 of the 2010 Guidelines regulated public access to documents filed in relation to applications published, but not yet granted.

513    According to the Miele witnesses, in practice, accessibility to documents filed electronically differed from the access regime prescribed by rule 5.02 of the 2010 Guidelines. The BORA witnesses disagreed, saying that accessibility was governed by the terms of the 2010 Guidelines.

514    I find it inherently unlikely that the 2010 Guidelines would only apply to paper documents, and that there was no equivalent rule of access for documents filed electronically, and that such a state of affairs would continue until the 2023 Guidelines.

515    If access to electronically filed documents was intended to be introduced by CNIPA on a different basis to access to paper files, I would expect there to be an official publication of some kind announcing that change. No such announcement was in evidence. Nor was there any evidence of an official launch of any new expanded functionality of the CNIPA website.

516    Some patent attorneys were able to access amendment documents on the CNIPA website shortly after the Deferred Priority Date. However, there was no evidence of anyone accessing such documents on the CNIPA website prior to the Deferred Priority Date.

517    According to Mr Min, being able to access documents filed electronically, other than in accordance with the 2010 Guidelines was a surprising and unusual new development.

518    According to the BORA witnesses, any access to electronically filed documents otherwise than in accordance with the 2010 Guidelines must have been as a result of a technical glitch, not an unannounced CNIPA enhancement of the website.

519    The alleged fact of documents which were filed electronically being accessible on the CNIPA website was not stipulated in any webpages of the CNIPA website, or any books, magazines or flyers. As such, this update was not acknowledged by the CNIPA itself in a manner which would indicate that this feature was intentional.

520    Based on the evidence in this case, I consider that, at best, any public access of any electronically filed documents, before the grant of a patent, were an error or inadvertent defect in technology. Further, there is no evidence to indicate that each and every type of these documents for every relevant patent application could be accessed.

521    To find that the Chinese Amendments were accessible as at the Deferred Priority Date would require that I draw an inference for which there is insufficient basis on the evidence before me. This is particularly in light of the fact that no evidence was tendered of any such document being accessed prior to, or as at, the Deferred Priority Date.

522    As such, I am not satisfied that the Chinese Amendments were publicly available. Again, at its highest, similar documents were accessed soon after the Deferred Priority Date. But I have no reason to indicate that this technical error also applied to the Chinese Amendments such that they were publicly available. The evidence before me indicates that amended claims for at least one published, but not granted, Chinese patent application could have been accessible by the public in later September 2015 — this does not provide a sufficient basis to infer that the Chinese Amendments were available as at the Deferred Priority Date.

523    I accept that, if I was satisfied that the Chinese Amendments were accessible on the CNIPA website, there would not have been any obligations of confidence on the patent attorneys accessing the patent amendments, requiring them to keep the amendments confidential. The CNIPA website is an official website, and accessing documents through it would not involve acquiring documents through any unauthorised means. As such, members of the public would have been free, in law and in equity, to make use of the information accessed through the CNIPA website.

Disclosure in Chinese Amendments

524    BORA submits that the Chinese Amendments do not anticipate the claims of the Patent in any event, because the “directions” in the document are at least as likely to be carried out in a manner which would not infringe the Patent.

525    BORA contends that when a person skilled in the art without any familiarity with claim 1 of the Patent comes to consider the Chinese Amendments, it does not provide them with clear and unmistakable directions to do what is claimed in claim 1 of the Patent. According to BORA, there are four ambiguities present in the Chinese Amendments that mean that the person skilled is not given clear instructions to do something that falls within the claims of the Patent. Whilst the person skilled in the art might resolve one in accordance with the claimed invention, all four could only be resolved in accordance with the claims of the Patent with knowledge of those claims.

526    Claim 1 of the Chinese Amendments claims:

A stove (1) with one or multiple burners (2), which, when viewed from above, has one or more voids (4) solely within the area (25) surrounding its geometric centre of gravity (3). These voids are connected to one or more devices (5) for extracting cooking fumes, wherein the fume-extracting device(s) (5) are designed to remove the cooking fumes already produced above the one or more burners (2), drawing them downwards in a vertical directions towards the underside of the stove (1). It is characterised by the presence of a device (36) on the underside (35) of the stove (1) that utilises the stove (1) to form an assembly unit. This device is for operating the stove (1) and for extracting cooking fumes downwards. Within it, the device (36) located on the underside (35) of the stove (1) sequentially includes, in a vertical direction downwards, a casing (44) for heating electronic devices or stove heating electronic devices and control electronic devices. Additionally, there is a fan casing (48) for one, two, or multiple radial fans (38), and one or more fume extraction chambers (39). These components are designed to further guide the cooking fumes horizontally outwards and to facilitate the vertical upward extraction of fumes by the radial fans (38) positioned within the fan casing (48).

(Emphasis added.)

527    First, the sentence, “[w]ithin it, the device (36) located on the underside (35) of the stove (1) sequentially includes, in a vertical direction downwards, a casing (44) for heating electronic devices or stove heating electronic devices and control electronic devices”, describes a sequence.

528    The full stop before “[a]dditionally” has the effect that what follows, namely “a fan casing (48) for one, two, or multiple radial fans (38), and one or more fume extraction chambers (39)”, are not part of any previously described sequence.

529    Second, claim 1 of the Chinese Amendments does not include the words of claim 1 of the Patent, “wherein the fan housing is situated above the one or more cooking vapour aspiration chambers” which describes the physical location of the fan housing as being above the vapour aspiration chamber. Instead, the “fan casing” and “one or more chambers” of claim 1 of the Chinese Amendments are not in any sequence. Claim 1 only describes “and to facilitate the vertical upward extraction of fumes by the radial fans (38) positioned within the fan casing (48)” which does not exclude the fan housing being located to the side or below the “fume extraction chamber”, as long as the radial fans are oriented so as to “facilitate vertical upward extraction of fumes”.

530    The words, “[t]hese components are designed to further guide the cooking fumes horizontally outwards and to facilitate the vertical upward extraction of fumes by the radial fans (38) positioned within the fan casing (48)”, do not require upwards extraction into the “fan casing”. Further, there is no requirement (unlike the last line in claim 1 of the Patent) for the “fan casing” to be above the “fume extraction chambers”. For example, the product described in the Chinese Amendments could be configured so that the radial fans cause the vertical upwards extraction of fumes, but the “casing” housing is adjacent to the “fume extraction chambers”.

531    The words, “[t]hese components…”, also state that it is the “fan casing” and the “fume extraction chambers” that are “designed to further guide the cooking fumes [etc]”, whereas claim 1 of the Patent provides that it is only the cooking vapour aspiration chamber(s) that is “for horizontally relaying the cooking vapours toward the outside, as well as for preparing the cooking vapour stream to be vertically aspirated upwardly”.

532    BORA submits that, while one or more of these ambiguities in construction could potentially be resolved by someone who is familiar with claim 1 of the Patent (like Mr Hunter, who was familiar with claim 1 of the Patent when giving his evidence), that would be equivalent to conducting the “reverse infringement test” with an eye to the infringement, generally citing the General Tire case for this principle. Instead, BORA contends that when a person skilled in the art who is unfamiliar with claim 1 of the Patent comes to consider the Chinese Amendments, the Chinese Amendments do not provide them with clear and unmistakable directions to do what is claimed in claim 1 of the Patent.

533    Conversely, Miele notes that claim 1 of Chinese Amendments is substantially identical to the claim 1 of the Patent, save that it omits integer 1.6 of the Patent.

534    The “sequence” of the underside of the stove described in the Chinese Amendments does not stop with the electronics housing (including, because a sequence inherently requires more than one component). It “additionally” discloses, in sequence and in a vertical direction, the fan housing and the aspiration chambers.

535    The sequence as claimed in the asserted claims is further disclosed by claims 11 and 13 of the Chinese Amendments, which disclose that the aspiration chambers are located at the bottom of the assembly unit and, by claim 12, that the fan motors are installed onto the underside of the electronics housing.

536    In preparing his evidence, Mr Hunter was provided with a copy of the claims within the Chinese Amendments and asked to opine whether the features of claims 1, 3 and 11 of the Patent are disclosed within the Chinese Amendments. In Mr Hunter’s opinion, all features of the relevant claims of the Patent were disclosed in the Chinese Amendments.

537    Accordingly, Miele submits that the Chinese Amendments disclose each integer of the asserted claims, including an assembly unit comprising a fan housing for one radial fan.

Consideration

538    If, as a matter of interpretation, the document discloses that which is later claimed as an invention, that disclosure will anticipate the invention and deprive it of novelty, “nothing additional” is required: Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd (2020) 153 IPR 199 at [102], [104] (per Middleton, Jagot, Yates, Beach and Moshinsky JJ).

539    The Full Court in Mylan noted that a prior documentary disclosure will not be anticipatory if it “merely provides information at a level of generality which, while encompassing that which is claimed as the invention, nevertheless fails to identify the invention with sufficient specificity”: Mylan at [82]. In this way, the prior documentary disclosure must provide information that is equal to the specificity and completeness of the information to the invention that is claimed.

540    In Mylan at [104], the Full Court remarked:

We do not accept that a documentary disclosure containing an hypothesis cannot be an anticipatory disclosure that deprives an invention of novelty. In such a case the question, simply put, remains: what does the prior document disclose? The occasion on which, or the context in which, a particular documentary disclosure is made may well inform the interpretation of the document’s content. But if, as a matter of interpretation, the document nonetheless discloses that which is later claimed as an invention, that disclosure will anticipate the invention and deprive it of novelty.

541    I consider that the Chinese Amendments do disclose the invention claimed in claim 1 of the Patent.

542    While there are minor differences in the language of the Chinese Amendments as compared to claim 1 of the Patent, it is clear that the Chinese Amendments disclose with sufficient particularity the invention the subject of claim 1 of the Patent.

543    While Mr Hunter’s evidence is susceptible to the criticism raised by BORA, nevertheless in scrutinising the Chinese Amendments, it is clear that the skilled reader would ascertain the invention claimed in claim 1 from the Patent. The differences between claim 1 and the Chinese Amendments raised by BORA are immaterial when taking a functional view of the disclosure in the Chinese Amendments.

Conclusion — Validity

544    As noted, claims 2 to 13 and 15 are all dependent on claim 1. Therefore, by reasons of my findings on sufficiency and support, I consider that the relevant claims are invalid.

545    However, I have found that Miele has not made out its case with respect to novelty.

Conclusion

546    For the reasons above, I have found that the Miele Silence Products do not infringe the asserted claims (claims 1 and 11) of the Patent. However, the specification and relevant claims of the Patent do not meet the sufficiency or support requirements under ss 40(2)(a) and 40(3) of the Act.

547    I have also found that, by reason of the PCT Application failing to disclose the invention in the Patent in a manner that is clear enough and complete enough such that the invention can be performed by a person skilled in the art, the 2015 Amendments were not allowable under s 102 of the Act.

548    While I do not accept that that the relevant claims were valid, if I did, I would not have considered that the Chinese Amendments would have been novelty destroying for a one fan configuration with the Deferred Priority Date.

549    I will direct the parties to confer and either provide my chambers with an agreed form of order which reflects these reasons, or with their own version of a proposed order.

Associate:

Dated:    27 May 2025

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