Comparative Guides
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Results: 4 Answers
Claim construction
When during a patent infringement action are claim terms defined by the tribunal?
Typically, all issues raised in patent infringement proceedings, including claim construction, are dealt with together at the final hearing. In that sense, ‘Markman’ type hearings are not usually conducted in Australia.

However, the Federal Court does have the ability to hear a preliminary issue in a proceeding and there is some precedent for the use of this power to conduct a claim construction hearing. This occurred, for example, in Konami Gaming Inc v Aristocrat Technologies Australia Pty Ltd [2015] FCA 92, where the parties jointly requested the court to consider and determine the construction of certain terms in the claims in advance of the hearing on infringement and revocation of the relevant patent.

For more information about this answer please contact: Charles Tansey from Shelston IP
What is the legal standard used to define claim terms?
The key principles of claim construction applicable in Australia were well summarised by the Full Federal Court in Jupiters Ltd v Neurizon Pty Ltd ([2005] FCAFC 90; (2005) 65 IPR 86 at [67], omitting citations):

  • The proper construction of a specification is a matter of law for the court.
  • A patent specification should be given a purposive, not a purely literal, construction; and is not to be read in the abstract, but is to be construed in the light of the common general knowledge and the art before the priority date.
  • The words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification.
  • While the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification.
  • Experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning.
For more information about this answer please contact: Charles Tansey from Shelston IP
What evidence does the tribunal consider in defining claim terms?
Claim construction is ultimately a matter for the court. In Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [2012] FCA 467 at [225] Justice Middleton stated: “A court may be in the position to construe a patent without the aid of any expert evidence, if it is clear that the patent is to be read according to its ordinary meaning and no special meaning is to be given to any word or phrase, and the court does not need assistance in understanding the context of the patent in suit.”

However, terms of art often feature in patent claims and consequently courts will often rely on expert evidence when determining the meaning and scope of claims. This evidence will be provided in the form of expert witness affidavits and/or joint reports of experts, and oral evidence from experts at trial.

For more information about this answer please contact: Charles Tansey from Shelston IP