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Patent construction:
Jurox successfully defends patent infringement proceedings in Federal Court Appeal
The recent Full Federal Court decision of Nufarm Ltd & Anor v Jurox Pty Ltd [2008] FCAFC 180 provides useful guidance where ambiguous technical terms are used in the claims of a Patent. It is appropriate to have recourse to the wording of the body of the specification, including any "examples", for the purpose of interpreting the claims and their scope, in the context of the Patent.
Jurox, an Australian family-owned veterinary pharmaceuticals manufacturer based in the Hunter Valley, New South Wales, was successful in defending patent infringement proceedings brought by Nufarm Limited both at first instance and on appeal. The proceedings related to an innovation patent infringement claim brought by Nufarm in relation to Jurox's manufacture and sale of an oral sheep-drench formulation, Q-Drench.
The hearing at first instance in Nufarm Ltd & Anor v Jurox Pty Ltd [2008] FCA 178 involved substantial expert evidence led by both parties concerning the meaning of the scientific terms "emulsion", "phase" and "organic liquid phase" as used in the claims. To fall within the claims, the Court had to find that the Q-Drench formulation was an "emulsion" or capable of being "shaken or agitated into the form of an emulsion" with an "organic liquid phase".
Jurox's claim was that the Q-Drench product was not an emulsion, but a micellar solution of a single aqueous phase. According to Jurox, the term 'emulsion' was used in the claims to cover only macroemulsions (ie large-droplet size) and did not include micellar solutions (ie small-droplet size) such as Q-Drench.
At the trial the trial judge, Justice Middleton, found there was a difference of opinion among scientists as to the proper meaning of the words 'emulsion' and 'phase' along with some other chemical principles and concepts. None of the relevant terms were defined in the specification and despite their differences of opinion, the experts agreed that in the context of the claims, the definitions lacked clarity and were capable of more than one meaning.
The trial judge construed the patent 'having been assisted by the expert evidence, but not dictated by it', and referring to the body of the specification to clarify the meaning of words used in the claims.
The patent provided 18 examples and stated that the invention was illustrated in greater detail with reference to those examples. Nufarm claimed that each of the examples were examples of the claimed formulations. The trial judge and the Full Court did not accept Nufarm's submission.
The Full Court found that the terminology of the patent and the explanation of the examples were drafted such that the skilled reader (in this case a person skilled in chemistry, particularly physical chemistry) would understand that examples 1 to 4 were failed attempts to arrive at the invention, and that a different approach was adopted by the patentee after example 4. The Full Court held that although the claims did not expressly exclude examples 1 to 4, the wording of the examples showed that the patentee had only used those examples to show the steps that had been taken to reject, alter or qualify the actual claimed formulations. In particular, the specification made it clear that those examples did not give the sought result for the purposes of the invention.
The Full Court noted it is quite common for patentees to include examples to describe a range of formulations of varying degrees of activity. However in the case of Nufarm's innovation patent, the Court held the early examples had not been included to reflect a less optimal working of the claimed invention but rather to describe formulations that did not come within it. Because Q-Drench fell within the formulations in the earlier examples 1 to 4, it therefore fell outside the scope of the claims.
The case demonstrates the care which must be taken when drafting patents. A lack of clarity and failure to define technical terms when drafting a patent can lead to expensive and protracted litigation in the event of a later dispute.
For more information please contact:
Susan Bennett, Partner
Sparke Helmore Lawyers | Sydney
e susan.bennett@sparke.com.au
