Australia: Purposive Construction And Cinderella's Glass Slipper

Last Updated: 15 January 2020
Article by Justin Negler and Sanjan Srivelan

CASE NOTE: Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180

"Purposive construction" is now well entrenched in Australian judicial authority as a cornerstone to claim construction. However, as Lord Hoffman mused, there appears to exist "a tendency to regard [purposive construction] as a vague description of some kind of divination which mysteriously penetrates beneath the language of the specification".1

In this vein we reflect on Liberation Developments v Lomax and the likely success a patentee may have in stretching the scope of their monopoly through purposive construction.

We also consider the risks of asserting to customers that the actions of a competitor constitute infringing behaviour.

The patent

Australian Patent no. 2013100057 (the Patent) relates to a "weighted support assembly" developed by Liberation Developments, which may be used for supporting hoarding systems. Hoardings are used around construction sites to fence or screen the public from restricted areas. In developing this assembly the inventor identified that prior art systems may "become unstable and prone to being knocked over if weights are removed from the base or even knocked off the base".2 Principally, the assembly claimed in the Patent comprises weights, a base and an elongate support member.

Of significance in relation to the issue of purposive construction are the following two features of claim 1:

  1. "a number of weights that can be placed on the base"; and
  2. "an elongate support member fixed to the base for supporting a post of a hoarding in an upright orientation".

The alleged infringement

Lomax distributed an alternative hoarding system, which is pictured in the decision.

Two key aspects of the Lomax system to note are:

  • the weights of the Lomax system rest directly on the ground, such that there is no discrete or separate base, as is the case in the embodiments illustrated in the patent; and
  • the post and support member of the Lomax system slot into recesses and holes in the weights, respectively. It was in dispute whether this arrangement resulted in the support member and/or post being restrained in all degrees of freedom, such that the elongate support member is "fixed" to the base.

Construction of the claims

In enunciating the principles of claim construction Greenwood J made the following points (paraphrased for brevity):3

  • the starting point for construction is the wording of the claim;
  • recourse to the specification is not conditioned upon first finding ambiguity in claim language; and
  • a patent specification (including, of course, the claims) should be given a "purposive construction" rather than a purely literal one.

However, Greenwood J tempered these statements by adding that "'purposive construction' is not a mechanism for demonstrating that the glass slipper actually does fit on Cinderella's sister's oversized foot and thus Cinderella's sister is Cinderella, when it does not and she is not."4

To establish infringement, Liberty Developments needed to show that the Lomax system comprised a "base". They argued that, given the nature of the disclosure and specifically that the specification does not express a limitation that the base cannot be a weight,5 purposive construction of the claims would indicate that the word "base" should encompass a weight that was a "lowermost or supporting part"6 of the assembly.

However, Greenwood J found that the context of the specification could not displace the wording of the claim, which according to him "suggests a conscious distinction and separation between a base on the one hand and a weight on the other".7 Clearly, in Greenwood J's view, the glass slipper would not fit from this angle.

Notwithstanding the foregoing, assuming there existed a "base" in the Lomax system, feature 2 of the claim required that the "elongate support member" be "fixed" to the base. Liberation Developments argued that in light of the problem that the invention sought to solve, the word "fixed" should be limited to mean that only lateral movement is inhibited in the sense, at least, that the weights are inhibited from "being knocked off".8

Again, Greenwood J was unable to read the context of the specification into the claim and instead adopted a more literal approach. Specifically, he was unable to accept that if the "member can simply be lifted out of the assembly", that it could also be considered "fixed" to the base, as described in the claim.9 It appears Greenwood J does not take kindly to stretching glass slippers.

Unjustified threats against 3rd parties

The court also heard Lomax's cross-claim that an entity associated with Liberation Developments made a representation to a third party constituting an unjustified threat.

The specific comment that Lomax objected to was in a letter to Mirvac from Mr Bloom of Liberty Developments and Titan (exclusive licensee of Liberty Developments). In this letter Mr Bloom wrote, "currently the dispute is confined to Titan and Lomax. Titan sincerely does not want to involve any other persons in this dispute."10

The primary question before the court was whether this amounted to a threat. Greenwood J applied C & P Development Coy (London) Ltd v Sisabro Novelty Coy Ltd,11 which provided that it is not necessary to make a threat explicitly, but "it is enough if the language used is such as would convey to any reasonable man that the person using the language intended to bring proceedings for infringement against the person said to be threatened."12 Greenwood J found that what amounts to a threat is a question of fact,13 but it is not necessary to explicitly state as much, so long as the meaning would be conveyed to a reasonable person.14

Greenwood J also considered CQMS Pty Ltd v Bradken Resources Pty Limited.15 In this case, the applicant sent letters to the customers of the respondent containing the following:16

By selling certain components of the Penetrator Max products to its customers to be used as GET, BKN has infringed, and authorised the infringement of, the patents. However, CQMS' dispute is with BKN not with the customers who use the GET. [emphasis in original]

The judge distinguished the present case on the basis that the letter in CQMS was a general letter to the industry and not a "single bilateral communication".17 He also found that the wording of the letter, at most, contained an "observation that the applicants might need to consider their position according to changing circumstances but it does not contain a direct or indirect threat to Mirvac of infringement proceedings against Mirvac."18

Lessons from the decision

From this decision we can conclude that a purposive construction does not allow the meaning of a claim to be extended beyond the meaning of the words in the claim when read in conjunction with the specification more broadly.19 We return again to the words of Lord Hoffman and a perhaps more modest view of purposive construction being that it merely allows a "person to be taken to mean something different when he uses words for one purpose from that he would be taken to mean if he was using them for another."20 Although "purposive construction" has a role to play, the scope of the claimed invention is first and foremost demarcated by the words of the claims themselves.

In this decision it is also worth noting that there were no particularised definitions in the body of the specification for the words in contention. More particularly, the word "fixed" only appeared thrice and so the judge was left in a relative vacuum in which to interpret the claims. As a result, extensive use was made of the Oxford English21 and Macquarie Dictionaries22. It is, of course, always much easier with the benefit of hindsight to see where more flesh could have been added to the bone.

In relation to unjustified threats, it is apparent that there is a fine line between what is and is not a threat. It would, therefore, be prudent not to assert infringement in case it may give a party cause to wonder about their position.

To read more about the Federal Court's views in an earlier decision, please click here.

Footnotes

[1] Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180, [97] ("Liberation Developments v Lomax") quoting Hoffmann LJ in Kirin Amgen Inc v Hoechst Marion Roussel Ltd (2004) 64 IPR 444.

[2] Ibid [7].

[3] Ibid [97].

[4] Ibid.

[5] Ibid [72].

[6] Ibid.

[7] Ibid [108].

[8] Ibid [81].

[9] Ibid [115].

[10] Ibid [141].

[11] (1953) 70 RPC 277.

[12] Liberation Developments v Lomax, [148] quoting C & P Development v Sisabro Novelty, 282.

[13] Liberation Developments v Lomax, [150] citing Brian v Ingledew Brown Bennison & Garrett (a firm) [1996] FSR 341, 349; Occupational and Medical Innovations Ltd v Retractable Technologies Inc (2007) 73 IPR 312.

[14] Liberation Developments v Lomax, [148] quoting C & P Development Coy (London) Ltd v Sisabro Novelty Coy Ltd (1953) 70 RPC 277.

[15] (2016) 120 IPR 44.

[16] Liberation Developments v Lomax, [152].

[17] Ibid [170].

[18] Ibid.

[19] Ibid [97].

[20] Ibid.

[21] In the decision the following definition from the Oxford English Dictionary was recorded: "Adjective – placed or attached firmly; fastened securely; made firm or stable in position. In relation to a person or his or her countenance: made rigid or immobile. A further meaning is: definitively and permanently placed; stationary or unchanging in relative position. Two examples given include fixed star meaning a star which appears always to occupy the same position in the heavens and fixed property meaning that which consists in immovable as land and houses." (Emphasis in original).

[22] In the decision the following definition from the Macquarie Dictionary was recorded: "Adjective – made fast or firm; firmly implanted; rendered stable or permanent, as colour; set or intent upon something; steadily directed; set or rigid; definitely and permanently placed; permanently established; definite; not fluctuating or varying. Examples are given of the term in particular disciplines." (Emphasis in original).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions