Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83

In a recent decision concerning the infringement and validity of two patents for fish-stunning apparatus, the Full Federal Court has provided guidance on the ambit of the expression "claims defining the invention", which is a requirement of a patent specification set out in Section 40(2) of the Australian Patents Act 1990. Furthermore, the decision applies and reinforces known claim construction principles, and also reinforces the approach identified by the High Court in determining whether or not a claim lacks fair basis.

At first instance, Seafood Innovations claimed that Bass had infringed both patents by their manufacture and sale of two fish killing apparatus. Bass denied infringement of the first patent, and admitted infringement of the second patent but claimed that it was invalid. The primary judge found that the first patent was not infringed, and that the second patent was invalid for failing to define the invention. In doing so, the primary judge considered the second patent failed to meet the requirements of Section 40(2)(c) of the Patents Act 1990.

The Full Federal Court unanimously held that the primary judge's restrictive construction of the first patent was incorrect, and found that Bass had infringed that patent. Placing such a restrictive interpretation on the claims as the primary judge had done, was considered by the Full Court to be importing an impermissible gloss on the claims.

In relation to the validity of the second patent, Justice Bennett followed the approach set out in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58. Justice Bennett concluded that the second patent satisfied the requirements of Sections 40(2)(c) and 40(3), and that the second patent was not invalidated on the grounds pursued by Bass. Both Justices Dowsett and Greenwood concurred with Justice Bennett's findings on these issues.

This decision applies and reinforces well-established principles in claim construction, and in the required approach for assessing lack of fair basis. In addition, Justice Bennett's comments put to rest the notion that the expression "defining the invention" in Section 40(2) requires that the claims specify all the components need to put the invention into practice. Thus, the claims only define the monopoly provided to the patentee.