The infringement case in Nichia Corporation v Arrow Electronics Australia Pty Ltd (No. 4) [2017] FCA 864 turned on the meaning of ‘contains’ and illustrates the importance of such terms in claim construction under Australian practice.

Background

Nichia is the patentee of Patent No. 720234 filed on 29 July 1997 in relation to a light emitting device (Patent). Nichia sued Arrow for infringement of claim 3 (dependent on claim 1) with regards to LED products manufactured in Taiwan, and imported/sold by Arrow in Australia. Arrow counterclaimed seeking revocation of the Patent on various grounds including obviousness. The specification describes a light emitting diode comprising a phosphor which converts the wavelength of light emitted by a light emitting component, and emits white light.

Earlier proceedings

In 2014, Nichia sought an injunction to restrain Arrow from infringement of its Patent.1 It was found that as the selection of Lu, Sc and In (recited in claim 1) was not disclosed in the priority documents, claim 1 defined multiple forms of the invention and was attributed multiple priority dates. Claim 3 defined a specific fluorescent material that did not include Lu, Sc and In, and was entitled to the earliest priority date of 29 July 1996.

Infringement and the meaning of ‘contains’

The Court interpreted ‘contains’ in an exhaustive sense such that the phosphor as claimed was a single fluorescent material represented by the general formula of claim 3, and not that fluorescent material with one or more other fluorescent materials. Yates J considered the problems described in the specification regarding the deterioration of the fluorescent materials used in conventional LEDs, and concluded that the fluorescent material characteristics were important.

His Honour referred to the specification which listed requirements including high luminescence, low light intensity deterioration, and light emission efficiency in order to achieve an ‘object’ of the invention. Although these requirements were described as preferred, his Honour concluded that they should be considered essential features. Interestingly, it was noted that:

  • the specification described that aspects of the invention included a phosphor containing two or more garnet fluorescent materials
  • Claim 6 is dependent on claim 3, and defines that the phosphor contains two or more fluorescent materials
  • the specification describes ‘Embodiment 2’ in which two or more kinds of phosphors could be used.

Nevertheless, Yates J found that whilst some embodiments containing more than one fluorescent material were described, the specification did not describe that the YAG phosphor (i.e. a fluorescent material of the general formula in claim 3) could be used together with a different fluorescent material. His Honour found that the specification makes clear that Embodiment 2 uses two YAG phosphors rather than a YAG phosphor with another fluorescent material.

As Arrow’s products included a fluorescent material which is within the general formula of claim 3 with other fluorescent material that is not within the general formula, no infringement was established.

Obviousness

Yates J referred to the ‘Cripps question’ – that the skilled addressee must be led to try the posited solution ‘in the expectation that it might well produce’ the outcome that is sought. Interestingly, his Honour was satisfied that YAG:Ce (which falls within the scope of claims 1 and 3) was an option that the skilled addressee would have been directly led to try. But this was not enough. It was required that the skilled addressee try YAG:Ce with the requisite expectation of success – which was not proven. Consequently, obviousness was not established.

Conclusion

When adapting foreign specifications to Australian practice, it is common to include express definitions or terms like ‘comprising’ to reduce the risk of the claimed integers being interpreted in an exhaustive sense. However, as this case illustrates, the construction of a claim will ultimately be considered in light of the specification as a whole. It can therefore be useful to describe alternative embodiments of the invention, which may not necessarily embody the commercial product, to support a broader scope of protection. A Notice of Appeal was filed on 19 September 2017.