In the previous infringement proceedings, the primary judge rejected the infringement claim, finding that the claims of the 627 and 121 Patents lacked inventive step, and the claims of the 388 Patent failed to describe the claimed invention in a manner that was sufficient in accordance with s40(2)(a) of the Patents Act 1990 (Cth). The meaning of the term “embossings” was considered, and both sides presented expert opinion as to the correct interpretation of the term, although ultimately the primary judge adopted neither construction. The primary judge looked towards the specification, drawings and the dictionary definition of the term to conclude that the claims of the 627 Patent lacked an inventive step.  The expert evidence included an expert’s approach to a hypothetical design task, and the primary judge concluded that not all features of the claimed invention were present in the expert’s design. However, the missing feature was not considered to be of importance and the primary judge concluded that the invention would have been arrived at by well-known manufacturing techniques.

The Full Court found that it was not required to accept, uncritically, the views of the experts regarding the meaning of the term “embossings”. In this regard, the Full Court found that the primary judge erred in his analysis of inventive step of the 627 Patent on the basis that the expert’s response to the hypothetical design task did not arrive at the claimed invention since it was missing the “fluid director member” feature. This feature was considered by the Full Court to be missing from the expert’s hypothetical design and nothing in the design could be viewed as an alternative to a fluid director member. This case was distinguished from other cases in which the differences between the expert’s design and the claimed invention were mere design variants on the basis that in the present case the feature of the fluid director member was missing entirely.

The Full Court decision confirms that it must be shown that the person skilled in the art would have been directly led, from common general knowledge / prior art, to all the features in order to substantiate a lack of inventive step.

Further, the Full Court affirmed that constructions proffered by experts can be rejected and that the construction is indeed the role of the judge who may find an alternative construction (e.g. based on the specification). This decision highlights the importance of patent drafting to ensure that the boundaries of claim terms are defined in the body of the specification.

_____________________________________________________________

¹ Caffitaly System S.P.A. v One Collective Group Pty Ltd [2021] FCAFC 118