Narrow Waisted Yes. Narrower Claim No.
In a further instalment of the long running dispute over multi-hulled vessels between Stena and Austal Ships, 3 July 2008 saw the Full Court of the Federal Court hand down its decision in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121.
At first instance, Tamberlin J held one of Austal’s vessels to be an infringement of Stena’s patent, while rejecting Austal’s cross-claim for revocation. On appeal, Austal sought to overturn the first instance finding that the patent was not bad for lack of clarity as well as the decision on infringement.
On the question of clarity, it was argued that the terms “substantial portion” and “narrow waisted”, appearing in claim 1, were sufficiently imprecise as to render the claims lacking in clarity. Having regard to the nature of the invention the claims sought to define, and the evidence of experts led by the parties the Court concluded that the claims were clear, concluding, with reference to Martin v Scribal Pty Ltd (1954) 92 CLR 17, that:
Austal’s argument fails to take account of the fact that, as in Martin, Stena’s invention involved an idea which “involves a matter of degree and for that reason any distinction that is precise must be but an arbitrary restriction on the inherent variability of the feature…”
On the question of infringement, the appeal was also dismissed. The Court held that the Austal 94 hull did not fall within the scope of claim 1 because that claim required that the width of the hull continually decrease in the forward direction, whereas the width of the Austal 94 hull actually increased slightly over the first 10% of its length. Curiously however the Court held that the Austal 94 hull did fall within the scope of claim 7, which was dependent on claim 1, but further required that the width of the hull be substantially constant in the sternward quarter of the vessel. Despite claim 1 being incorporated by reference into claim 7, the Court considered that the two requirements as to width were “true alternatives” stating that:
There is no requirement of patent law that subsequent claims narrow the scope of earlier claims, even though, as a matter of practice, this is often the case.
At first instance, Tamberlin J held one of Austal’s vessels to be an infringement of Stena’s patent, while rejecting Austal’s cross-claim for revocation. On appeal, Austal sought to overturn the first instance finding that the patent was not bad for lack of clarity as well as the decision on infringement.
On the question of clarity, it was argued that the terms “substantial portion” and “narrow waisted”, appearing in claim 1, were sufficiently imprecise as to render the claims lacking in clarity. Having regard to the nature of the invention the claims sought to define, and the evidence of experts led by the parties the Court concluded that the claims were clear, concluding, with reference to Martin v Scribal Pty Ltd (1954) 92 CLR 17, that:
Austal’s argument fails to take account of the fact that, as in Martin, Stena’s invention involved an idea which “involves a matter of degree and for that reason any distinction that is precise must be but an arbitrary restriction on the inherent variability of the feature…”
On the question of infringement, the appeal was also dismissed. The Court held that the Austal 94 hull did not fall within the scope of claim 1 because that claim required that the width of the hull continually decrease in the forward direction, whereas the width of the Austal 94 hull actually increased slightly over the first 10% of its length. Curiously however the Court held that the Austal 94 hull did fall within the scope of claim 7, which was dependent on claim 1, but further required that the width of the hull be substantially constant in the sternward quarter of the vessel. Despite claim 1 being incorporated by reference into claim 7, the Court considered that the two requirements as to width were “true alternatives” stating that:
There is no requirement of patent law that subsequent claims narrow the scope of earlier claims, even though, as a matter of practice, this is often the case.
Labels: australian patents
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9:20 AM
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