Fisher Adams Kelly Client Successful in the Full Federal Court
Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83
Innovation patents drafted by Fisher Adams Kelly partner Mr. Paul Davis have been found valid and infringed in a decision handed down by the Full Federal Court of Australia today. More details of the case are provided below.
Background
Innovation Patent No. 1
The innovation relates to a fish stunning device. The patent provides claims that include various features: a stunning device including a striker; a fish guide; and a trigger.
Importantly, the fish guide is defined as including “a floor being pivotally movable between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit” (emphasis added).
The respondent’s device included all of the claimed features, but also included cheek (side) plates and a top plate in addition to a chin plate (corresponding to the “floor” defined in the claims of the innovation patent). While the fish could not pass through the device without downward movement of the chin plate, movement of the cheek plates and top plate were also required to enable passage of the fish through the device.
In the first instance, it was successfully argued by the respondent that the lowering of the chin plate did not “allow a fish to pass”. That is, if only the chin plate is lowered, the fish does not pass through the device. Therefore, no infringement was found.
This interpretation has been dismissed in the present appeal.
In arriving at her decision, in § 22 Bennett J clarifies that:
“A construction that imports a requirement that the floor must be the only means by which the fish are permitted to pass introduces an impermissible gloss on the claim”.
And in § 24:
“In this case, the fact that the Bass devices utilise additional integers to create the means whereby the fish can pass does not avoid infringement. The claim requires the floor to move in order for that to happen. That is what happens in the Bass devices”.
In support of this, in § 83 Greenwood J states:
“It seems to me that “to allow” is used in the permissive sense of not preventing the transitional movement of the stunned fish to the exit point.
The reference to “allow”….does not suggest a foreclosure of the scope of the invention to one where the sole mechanism or means by which a fish is allowed to pass unidirectionally from the entrance to the exit is the downward movement of the floor plate….The claim is not to be construed as introducing such a limitation.”
Validity of the patent was not in question and infringement of the patent was confirmed.
Innovation Patent No. 2
At the outset, both parties agreed that this innovation patent was infringed by the respondent’s devices. The Appeal related to the primary judge’s decision that the claims of the innovation patent did not define the invention.
In short, the claims are similar to those for the first innovation patent, but claim 1 at least excludes the feature of the fish guide including “a floor being pivotally movable between a first position and a second position, the floor moving from the first position to the second position to allow a fish to pass unidirectionally from the entrance to the exit”.
Rather, the claim states that “a fish moves unidirectionally from the front entrance through the guide to the rear exit and the height of the striker is adjustable with respect to the fish guide”.
The substance of the attack on claim 1 was that claim 1 did not include a limitation that the fish guide comprises a pivotally moveable floor and that this feature is essential to the invention.
On discussing the decision of the primary judge, in § 33 Bennett J states:
“The primary judge seems to have considered the claims of the second innovation patent by reference to the claims of the first innovation patent. This is not relevant either to the ground of failure to define the claim or to an alleged lack of fair basis”.
Her Honour confirmed that the broadest description of the apparatus provided in the innovation patent comprises: a fish stunning device; a fish guide having an entrance and an exit; and a trigger; in which the apparatus enables the fish to move unidirectionally from the entrance to the apparatus, through the fish guide, to the exit.
In arriving at this broad concept of the invention, which is consistent with the disclosure in the specification of the solution to the difficulty identified in the background to the invention, in § 39 her Honour states:
“While it is the case that an innovation patent can only describe a single invention, which in the second innovation patent is an apparatus whereby fish are moved unidirectionally through the apparatus, this does not mean that variations within the apparatus are impermissible.
A claimed invention within the scope of the broadest description of the invention in the specification is fairly based”.
And finally, in § 45:
“The monopoly is set out in the claims. The fact that the claims (in contrast to the specification) do not give instructions for use of the apparatus is not a basis for invalidity for failure to define the invention…”
Infringement of the patent was not in question and validity of the patent was affirmed.
Conclusion
The outcome of the Full Federal Court case confirms the belief of Fisher Adams Kelly that Innovations Patents are extremely valuable intellectual property. They have been confirmed as strong from an infringement perspective, having the same effect as a standard patent. They have also been confirmed as strong from a validity perspective being more difficult to revoke than standard patents. Clients should consider the value of obtaining protection with innovation patents to compliment the protection they may obtain with a standard patent.
We congratulate Seafood Innovations on their win today and applaud the efforts of Solicitor for Seafood Innovations, Bennett & Philp, and Counsel, Mr. S. Burley SC and Mr. A.. Fox.
Summary provided by Andrew Dark, Fisher Adams Kelly, Patent and Trade Marks Attorney.