By way of background, the Patent claimed a device for indicating the orientation of a sample obtained from a geological drilling survey. AMC alleged that Coretell Pty Ltd's (Coretell's) orientation device (which consisted of two components; a 'down hole' component wirelessly connected to a 'handset' component) infringed the Patent. The primary judge (Barker J) accepted that Coretell's device, by operation of its two components, performed the same function as the device claimed in the Patent. However, the issue of infringement turned on the meaning of the word 'device'. After hearing expert evidence, Barker J concluded that the 'two separate and separated parts' of Coretell's device were not within the scope of the term 'device' as used in the claims of the Patent. Accordingly, AMC's infringement claim failed.
The appeal centred solely on whether the primary judge had erred in that conclusion. AMC argued that the primary judge had disregarded the 'bedrock of claim construction in Australia'; namely, that 'it is not legitimate to narrow or expand the boundary of the monopoly fixed by the words of a claim by adding glosses drawn from other parts of the specification'. Based on this principle, AMC contended that the primary judge had 'read in' an integer that was not present in the claims (that the device must be a single piece), and therefore construed the claims by importing a gloss from the specification, not from the wording of the claims themselves.
AMC also argued that, even on a literal interpretation, the word 'device' could encompass orientation tools in two or more parts. To support this assertion, AMC referred to the dictionary definition of the word as meaning 'a particular function for the thing', as opposed to 'a single thing'. As such, the claims of the Patent would not be 'impermissibly stretched' if the word 'device' was construed as referring to all the components of a thing which performs a single function.
In response, Coretell argued that ‘the claims of the patent do not comprehend the assemblage of the accused apparatus, being an apparatus in two parts which… provided an improved form of orientation equipment’. In construing the Patent, the word 'device' should not be isolated, but instead considered as part of the 'phraseology of the claims' specifically chosen by AMC to define its monopoly. Coretell submitted that the correct construction of the claims involved looking at all the words appearing in each claim, which necessarily resulted in a finding that the claims covered only a unitary apparatus.
The Court upheld the decision of the primary judge, confirming that he applied the correct principles of patent construction. In particular, the Court re-iterated that the words of the claim define the invention and that they should not be stretched beyond their textual limits:
'there is no warrant for adopting a method of construction that gives aFurthermore, the Court held that 'a purposive construction of the claims did not result in a construction that was at variance with the plain text of the claims themselves'. Applying these principles, the Court rejected AMC's approach requiring the various meanings of the word 'device' as used throughout the claims to be considered in isolation. The Court even expressed a suspicion that this approach to construction was an attempt to capture the accused apparatus within the Patent. On the other hand, Coretell's construction of the claims provided a consistent meaning to the word 'device' throughout the claims and was the preferred approach. Accordingly, the Court dismissed AMC's appeal.
patentee what it might have wished or intended to claim, rather than what the
words of the relevant claim actually say. While the Court should read the claims
purposively and not with an eye for pedantry, even an appropriately liberal
approach to construction should not permit the words of the claims to be
stretched beyond their textual limits'.
The decision provides an important reminder that patentees should take extra care when drafting their patent claims to ensure that the specific words they use accurately reflect the monopoly they seek. The principle of purposive construction does not allow one to depart from the monopoly as defined by the words used in the claims and does not enable broader inventive ideas to be imported from the body of the specification. If AMC had intended their Patent to cover orientation tools comprising multiple components (which would have been a simple matter of drafting), then they should have provided for it in the words they chose for the patent claims.
Senior Associate: Dennis Schubauer
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