SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Ltd. [2012] FCAFC 95

by FPA Patent Attorneys
Contact

[authors: Rory Anderson & Carl Harrap]

Implications

This case related to the way in which the Australian courts construe qualitative terms in patent claims. In this case, the contentious term was not considered to be a term of art, so while extensive expert evidence was considered, it was the role of the Court to construe this term. Therefore, expert evidence was only relevant so as to assist the Judge in coming to a conclusion regarding the meaning of the contentious term within the context of the specification and claims.

The patentee, in having resorted to the qualitative claim term to distinguish the claims from the prior art, was assisted both at first instance and on appeal because it had described prior art in the specification. The patentee was also assisted by its characterisation of the qualitative term as providing an improvement. Under this approach to claim construction, patent drafters using qualitative terms in claims should consider describing prior art in the specification and consider incorporating comparative language in the claims in relation to the qualitative terms. Patent drafters and those prosecuting patent applications will of course need to be careful in making comparisons, so as to avoid making a false suggestion or misrepresentation about the claimed invention.1

Although ultimately successful, the patentee was not assisted by the use in the specification of the same qualitative claim term when describing the prior art. The case also reminds drafters that they should carefully consider the context in which they use terms that appear in the claims.

Background

Ciba is the owner of five innovation patents relating to treatment of tailings from mineral processing operations. The technology broadly related to dewatering and compaction of tailings from a mineral processing operation by the addition of a polymer which caused particulate tailings to form floccs, resulting in improved compaction and dewatering.

Although there were five patents, it was agreed by both parties that the differences between the claims of each the innovation patents was immaterial to the case and that patent 2006100944 would serve as an exemplar.2

SNF brought proceedings against Ciba seeking revocation of the patents and relief from unjustified threats. Ciba brought a cross-claim for infringement of certain patents by SNF. Central to this decision was the construction of the term “rigidification” as recited in claim 1 (claim 1 is for a “process of improving rigidification”).

Ultimately, the trial judge (Kenny J) ruled in favour of Ciba, that the claims of the patent were valid and that SNF had infringed the claims. SNF appealed the decision on the basis that Kenny J had inappropriately construed the term “rigidification”.

How the term was construed by the trial judge

Kenny J determined based on the evidence provided that the term “rigidification” was not a term of art and her first recourse was to a dictionary definition of ‘rigidify’.3 Kenny J postulated that the question to be asked is “what does the word ‘rigidification’ signify in the specification and claims”.4 Furthermore, while “rigidification” may have a standard meaning, the patent was directed to a process of “improving rigidification” which must provide something more than the normal process of “rigidification” that is expected in natural settling and sedimentation processes.5

Kenny J considered the competing evidence provided by expert witnesses from each side noting that the evidence provided by the experts was “as to the scientific and industrial context in which the claimed processes would operate and in which ‘rigidification’ was to be understood”.6

There were two primary experts, Dr Farrow (for Ciba) and Prof. Slatter (for SNF). Both experts said that rigidification involved an increase in yield strength. Dr Farrow said that the rigidification process of the patent produced different characteristics, had different dewatering potential and acted on a different timescale to natural settling and sedimentation and that this resulted due to networking of the entire solid mass rather than entanglement of individual aggregates.7 Prof Slatter said that rigidification occurred as the last part of natural settling and sedimentation.8 Kenny J favoured the interpretation provided by Dr Farrow, commenting that that meaning provided by Dr Farrow accorded with the natural meaning of the word, considered in the context of the specification as a whole.9 Kenny J further commented that Prof Slatter’s interpretation of “rigidification” was “without having regard to what was evidently being taught [in the patent]”.10 Relevantly, Kenny J also took into consideration statements made by other relevant people working in the field, wherein these people had no difficulty in distinguishing between the process leading to improved rigidification in accordance with the process of the patent, and the standard process of sedimentation.11

Kenny J ruled in favour of Ciba.

The appeal

SNF appealed the decision on the basis that while it was for the Court to construe the claims, Kenny J had inappropriately construed the term “rigidification” by importing the definition proposed by Dr Farrow. Specifically, SNF contended that Dr Farrow’s evidence was not in keeping with that of the skilled addressee and that it was at odds with the language of the claims and the specification of the patent.12

One of the main areas of contention was that Dr Farrow had provided (and Kenny J had accepted) a definition for the term “rigidification” that included the formation of a network structure between floccs, and that this network structure resulted in a compacted sludge having a different structure to other processes. This feature of the compacted sludge having a networked flocc structure was not disclosed in any of the patents and it was not shown that this feature would have been apparent to the skilled addressee of the specification. Therefore, while SNF generally agreed in principle with the approach taken by Kenny J, they argued that there was no proper basis in the patent specification to import the “networking” feature into the term “rigidification” in the manner proposed by Dr Farrow (and adopted by Kenny J).13

All judges agreed that the networking of the solid mass was irrelevant to the construction of the claims.14 The majority Judges stated that Kenny J had adopted the correct approach, in that the question to ask was what the word “rigidification” signified in the specification and claims of the patent.15 In this regard, the majority Judges said it was important to take into account that the context was a process of improving rigidification and referred to the discussion in the patent specification of the prior art.16 On this basis, natural rigidification by settling and sedimentation were excluded from the claims.17 In regards to SNF’s argument against the improper importation of the “networking” feature into the term “rigidification”, the majority Judges stated that:

Dr Farrow’s explanation of a networked structure formed the basis of Ciba’s approach to the effect of improved rigidification, in part to explain its meaning, in that he explained the way in which the process worked. However, there is no requirement for the patentee to provide an explanation of how the invention works… The construction of the claim in the context of the specification does not depend on, or take account of, the concept of a networked structure or the evidence in relation to it”.18

Dowsett J wrote a strong dissenting judgement. He had difficulty identifying from the specification the distinction between rigidification on the one hand and settling and sedimentation on the other.19 As to the qualitative improvements referred to by Dr Farrow, Dowsett J found that these appeared only in dependent claims, not in the claim in dispute. He further found that Dr Farrow’s evidence was irrelevant, because it was based on the alleged infringing process and was providing a view of the knowledge and understanding of the skilled addressee.20

The approach of Dowsett J to construction therefore did not involve reliance upon the evidence of the experts. Instead, he referred to the ordinary meaning of rigidify and to the way in which the term was used in the specification, including in relation to the processes of settling and sedimentation.21 He described the approach adopted by the primary judge of defining the qualitative words “improving rigidification” as requiring a comparison with other processes as unsatisfactory. In particular, he said ‘there is a risk of circuitousness in using a known word to describe a new process, and then seeking to redefine the word by reference to that process.’22

SNF’s appeal was dismissed.

1. Ranbaxy  Australia Pty Ltd v Warner-Lambert Company LLC [2008] FCAFC 82
2. SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2011] FCA 452 at 26
3. Ibid at 47
4. Ibid
5. SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2011] FCA 452 at 46 and 62
6. Ibid at 49
7. Ibid at 62 and 64
8. Ibid at 51
9. Ibid at 69
10. Ibid at 70
11. SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2012] FCAFC 95 at 278
12. Ibid at 271
13. Ibid
14. Ibid at 24 and 263
15. Ibid at 263
16. Ibid at 262 and 272-274
17. Ibid at 275
18. Ibid at 276
19. Ibid at 31
20. Ibid at 80
21. Ibid at 86
22. Ibid at 111

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© FPA Patent Attorneys | Attorney Advertising

Written by:

FPA Patent Attorneys
Contact
more
less

FPA Patent Attorneys on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.