 By Magda Khalil
|
The applicants, Termite Tite (NZ) No 2 Limited (“Termite Tite”), were the proprietors of a patent entitled “Membranous Termite Barrier”.
This patent was for a termite barrier system involving a matting impregnated with liquid termite resisting product and used to protect the cavity between a masonry wall and concrete slab, thereby forming a physical and chemical barrier to the entry of termites.
Termite Tite brought proceedings in the Federal Court alleging that a termite barrier system sold by the respondent, Term-Seal (Aust) Limited (“Term-Seal”), infringed certain claims of their patent. Term-Seal counter-claimed seeking revocation of those claims.
|
Infringement
|
Claims 1 and 2 of the patent required a membranous barrier comprising:
“a matting impregnated with a termite resisting product, said matting being sufficiently absorbent to facilitate its impregnation with the liquid termite resistant product”
Claim 4, which was dependent upon either of claims 1 or 2 required that:
“an edge of the matting has an associated inspection band welded or adhered thereto which … prevents the edge of the matting acting as a passageway through which the impregnated termite resisting product could escape by evaporation or leakage, or be diluted by moisture adsorption from the air”
Term-Seal sought to show that claims 1 and 2 of the patent envisaged that the termite resisting product would be applied as a liquid and remain a liquid by reference to claim 4 which referred to the termite resisting product escaping by “evaporation” or “leakage”. Based on this construction, Term-Seal submitted that their product did not infringe claims 1 or 2, as when it was applied to a fibre reinforced membrane, it settled and cured and did not remain a liquid.
This raised the question of the extent to which it is permissible to construe independent claims in a patent by referring to subsequent dependent claims. Besanko J found that (leaving claim 4 aside) there was nothing in claims 1 or 2 which meant that they did not cover a termite resisting product which is a liquid on impregnation but thereafter becomes a solid, and stated “[i]t cannot be contended that if claim 4 is based on the assumption that the termite resisting product is a liquid which remains liquid therefore claims 1 and 2 only cover the same type of product. Claims 1 and 2 are earlier, broader and independent claims. Claim 4 is a later dependent claim.”
Besanko J found that Term-Seal’s termite barrier system contained all the integers of the claims in question, and thus was infringing.
|
Validity of the Claims
|
Term-Seal alleged that the claims lacked novelty, were obvious and lacked utility. They referred to what they said were seven pieces of relevant prior art and one form of common procedure by persons skilled in the art.
Each claim of the patent was a claim for a combination, which consisted of a number of integers all of which were known at the priority date. Besanko J cited the case of Necaro Holdings v Martin Engineering (1990) 16 IPR 545 at 549 for the principle that in the case of a combination, it is the combination which must be disclosed in the prior specification in order to defeat novelty. Besanko J did not accept the approach of Mr Thorpe (who gave evidence for Term-Seal) in determining novelty, stating that he seemed to have concluded that the invention was not novel because the integers of the various claims were found in patents or patent applications he identified even when not all of the integers are found in the one patent or patent application. Besanko J found that in each of the prior patents or patent applications there were differences when compared to the applicants’ patent and as such those documents were not novelty defeating.
In relation to Term-Seal’s submission that the invention was obvious, Besanko J found that there was no evidence that any of the prior disclosures identified for the purposes of novelty were part of the common general knowledge before the priority date or that they could be considered under section 7(3). Thus, there was no evidence sufficient to establish that the invention would have been obvious to a person skilled in the relevant art.
Lastly, Term-Seal alleged that the invention was not useful as the claims could not be made to work as described in the patent specification. The basic contention was that (in light of claim 4) the termite resisting product was to be in liquid form on impregnation into the matting and was to remain in liquid form thereafter. This meant that the termite resisting product was subject to evaporation, leakage and dilution by moisture and would therefore lose its effectiveness as a termite barrier. Besanko J considered the relationship between claims 1 and 2 on the one hand and claim 4 on the other as above, and decided that the argument that the invention was not useful must fail. Besanko J also referred to the case of Welch Perrin Co Pty Ltd v Worrel (1961) 106 CLR 588 at 602, where such resulting inutility would be a reason not to construe claims 1 and 2 in that fashion, when a construction not resulting in inutility was open.
|
Evidence
|
The third respondent, Dr Franklin gave evidence in relation to novelty and utility. Termite Tite submitted that the Court should not receive Dr Franklin’s affidavit as he had not complied with the practice note for expert witness reports and was giving expert evidence in a case in which he was a party. Bensako J waived compliance with the practice note, stating that Termite Tite had an adequate opportunity to respond to Dr Franklin’s affidavit. He also stated that unless there was a particularly serious case of bias which might enliven the discretion to exclude, the fact that Dr Franklin was a party went to the weight to be accorded to his evidence, and not to the admissibility of the evidence. Besanko J also accepted evidence for Termite Tite given by Mr Michael Angliss, a registered patent attorney, on the construction of the alleged prior art.
|
Outcome
|
The court upheld the claims of Termite Tite that their patent had been infringed and dismissed the counter claims.
|
The Federal Court judgement
|
