Purpose v Purposive
The decision of the Full Court in Term-Seal (Aust) Pty Limited v Termite Tite (NZ) No 2 Limited [2008] FCAFC 95, provides a reminder that when taking a purposive approach to claim construction, it is the purpose for which the patentee has used a particular form of language to define an integer of the invention which is relevant, not the purpose of that integer in the patentee's invention.
The first instance decision of Besanko J, previously discussed here, was appealed on the issues of infrigenment and validity.
On the question of infringement, the appellant sought to overturn the trial judge’s finding that their product included, as required by claims 1 and 2 of the patent in suit, a “membranous termite barrier comprising a matting impregnated with a termite resisting product”.
The appellant argued that while their barrier included matting which was impregnated with disodium octaborate (accepted to be a termiticide), the purpose of that chemical within the matting was to act as a preservative or fungicide and not to resist termite attack. The Full Court considered the relevance of that argument to be “elusive” stating that “Purpose can hardly affect construction of the claims or infringement of them where purpose is not part of any claim”.
Secondly, the appellants argued that their barrier did not include this integer of the claims because its termite resistant properties were entirely mechanical, such that the disodium octaborate was not an “effective” termite resisting product. This contention was also rejected, the Full Court stating that it:
“involves an unexpressed limitation of the integer said to be akin to a limitation based upon result. In other words, there is no infringement unless the appellants’ product is effective. The appellants argued a variation on that theme in that the relevant claims should be construed as requiring an effective chemical barrier, whereas their product utilised a physical barrier. We can see no warrant for reading such limitations into any of the relevant claims.”
The appellant’s arguments seeking to overturn the trial judge’s finding that the patent was valid in light of certain alleged anticipations were also rejected.
The case can be found here.
The first instance decision of Besanko J, previously discussed here, was appealed on the issues of infrigenment and validity.
On the question of infringement, the appellant sought to overturn the trial judge’s finding that their product included, as required by claims 1 and 2 of the patent in suit, a “membranous termite barrier comprising a matting impregnated with a termite resisting product”.
The appellant argued that while their barrier included matting which was impregnated with disodium octaborate (accepted to be a termiticide), the purpose of that chemical within the matting was to act as a preservative or fungicide and not to resist termite attack. The Full Court considered the relevance of that argument to be “elusive” stating that “Purpose can hardly affect construction of the claims or infringement of them where purpose is not part of any claim”.
Secondly, the appellants argued that their barrier did not include this integer of the claims because its termite resistant properties were entirely mechanical, such that the disodium octaborate was not an “effective” termite resisting product. This contention was also rejected, the Full Court stating that it:
“involves an unexpressed limitation of the integer said to be akin to a limitation based upon result. In other words, there is no infringement unless the appellants’ product is effective. The appellants argued a variation on that theme in that the relevant claims should be construed as requiring an effective chemical barrier, whereas their product utilised a physical barrier. We can see no warrant for reading such limitations into any of the relevant claims.”
The appellant’s arguments seeking to overturn the trial judge’s finding that the patent was valid in light of certain alleged anticipations were also rejected.
The case can be found here.
Labels: australian patents
posted by Phillips Ormonde & Fitzpatrick at
10:20 AM
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