Austal Ships provides clarity on Section 40

Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 (3 July 2008)
http://www.austlii.edu.au/au/cases/cth/FCAFC/2008/121.html

In a recent decision, the Full Federal Court has provided further clarity regarding the application of s 40(2)(b) of the Patents Act finding in favour of the patentees of a hull design. Their Honours also upheld Tamberlin J’s findings on infringement.

Turning to the appellant’s claim alleging lack of clarity, the Full Court recited the principles stated in Kimberley-Clark and Flexible Steel at [12]-[13]. Blanco White was also cited with approval providing a standard upon which the ground is assessed at [14]:

“In the past, the standard of clarity required has indeed been put as high as this, that there must be “no serious difficulty” in construing the claims, and that the claims must be capable of construction by rival manufacturers without the assistance of experienced counsel. Claims have, however, habitually been held valid, by all courts, that could not pass such a stringent test. Certainly a claim is not invalid merely because it might have been better drafted, nor merely because the patentee puts forward a construction that the court is not prepared to adopt; nor merely because it is capable of more than one construction, even though it be difficult to decide which is the right one.”

In summary, their Honours placed emphasis on the proposition that clarity of a patent will depend on matters of degree as long as there is a “workable standard” at [81]. Two expressions that were examined in claim 1 were “substantial portion” and “narrow waisted” with respect to the hull of the vessel.

In finding that the expressions satisfied the section 40 requirement, an analogy was drawn with the facts in Martin at [23]. Reliance was then placed on Dixon CJ’s observations in that decision which are worth reciting at [25]:

“If an ambiguity is purposely introduced in order to produce a vagueness in the boundaries of a monopoly this purposeful introduction of an ambiguity destroys the patent, whether the ambiguity be great or small. Here there is no reason to suppose that there was any such design. The following passage, however, in the judgment of Lord Parker describes what is the duty of the court and provides the test of ambiguity:

Further, though it may be true that in construing an instrument inter partes the Court is bound to make up its mind as to the true meaning, this is far from being the case with a Specification. It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void. Once again, though the Court may consider that the meaning of the Specification is reasonably clear, yet if the Specification contain statements calculated to mislead the persons to whom it is addressed, and render it difficult for them without trial and experiment to comprehend in what manner the patentee intends his invention to be performed, these statements may avoid the Patent…”

The Full Court held that the there was nothing “misleading about the specification”, which has perhaps added a further consideration to the s 40 analysis that will be borne out in future decisions.

What is also interesting about the decision is that the claim was one directed toward multiple variables of the hull’s design that took into account design parameters, size, speed, draft and “many other matters” at [32]. The Court took into consideration these multiple variables and pointed to the fact that they provided the necessary context which made precise definitions an “arbitrary restriction on the inherent variability of the” design: see [35]. Dixon CJ’s observations in Martin were relied upon to support this conclusion.