Australia – Appeal Gets Stuck In The Mud.

 

What you need to know

 

• The Full Federal Court has upheld a November 2018 decision that Globaltech infringed AMC's patent for a method of orienting a rock sample. 
• This case is one of a growing number of patent disputes in the mining sector.
• The question of infringement turned on the Full Court's construction of the claims of AMC's patent.

 

What you need to do

 

• When claim construction is an issue, consider and plan ahead for the implications of your products or methods ultimately being held to infringe the patent.

 

Australian Mud Company Pty Ltd (AMC), a subsidiary of Imdex Limited, is the owner of a patent titled "Core Sample Orientation".  The patented invention relates to mineral exploration, in particular drilling and extracting a cylindrical "core sample" from a rock underground, then orienting the core sample relative to the rock from which it was taken, so that trends in rock strata can be predicted. 

 

AMC's infringement claim

 

AMC alleged that Globaltech Corporation Pty Ltd (Globaltech) infringed a number of claims of the patent. 

 

Claim 1 of the patent is to a method comprising certain steps, including:

 

• using a timer below-ground to set an initial reference time, and recording the orientation of the drill at predetermined time intervals after the initial reference time;  
• using a timer above-ground to record how long after the initial reference time the core sample was taken; and 
• relating the time that the core sample was taken (ie point 2 above) to the times when the drill orientation was recorded (ie. point 1 above), in order to orient the core sample.   

 

Globaltech's allegedly infringing tools are called "Orifinder" tools and consist of: 

 

• a below-ground "Oritool", which uses a real-time clock to record the orientation of the drill at predetermined time intervals; and  
• an above-ground "Oripad", which uses a real-time clock to record the time that the core sample is taken and the subsequent elapsed time.   

 

When the Oritool returns to the surface, the Oripad sends to the Oritool the elapsed time since the core sample was taken. The Oritool subtracts that time from its real-time clock, to establish when the core break happened and determine the core sample orientation at that time.

 

The first instance decision

 

Globaltech argued that claim 1 of the patent was not infringed because it requires the timers above and below ground to be synchronised.  Either the timers must be started at the same time, or there must be a common initial reference time from which both timers count forward.

 

At first instance, the primary judge disagreed with Globaltech's construction and held that Globaltech infringed the claims in suit.

 

The appeal 

 

On appeal, Globaltech contended that the primary judge made a number of errors in his construction, including that his Honour: 

 

• did not construe the claims in the context of the specification; 
• did not construe the claims in view of the state of the art; and
• construed the claims having regard to Globaltech's allegedly infringing products.

 

The Full Court rejected all of Globaltech's arguments and dismissed the appeal.  

 

In relation to Globaltech's first argument, the patent specification described only one example or embodiment of the claimed invention, and that example involved the use of two timers that were started contemporaneously.  However, the Full Court agreed with the primary judge that claim 1 was not limited by the example provided.

 

In relation to Globaltech's second argument, the Full Court held that the primary judge had made detailed findings about the common general knowledge and correctly construed the claims in light of those findings. 

 

In relation to Globaltech's third argument, the Full Court held that the primary judge appropriately considered Globaltech's products in order to frame the construction issues, but did not impermissibly construe the claim with reference to the alleged infringement. 

 

The Full Court concluded that claim 1 does not contain any express reference to the two timers being started at the same time, or to a common initial reference time from which both timers count forward.  There was no basis to import these requirements into the claim.  Instead, the claim language left the precise implementation of the method open to the skilled addressee.  

 

Invalidity

 

Globaltech also asserted that the claims in suit were invalid for lack of clarity and lack of fair basis.  These arguments were dismissed by the Full Court.  The lack of clarity allegation could not be sustained in light of the Full Court's claim construction.  The lack of fair basis allegation was rejected because the claims followed the terms of the "Disclosure of the Invention" section, and nothing else in the patent suggested the invention was narrower.  

 

Relief

 

Globaltech has been restrained from selling its Orifinder tools and the case is now proceeding through the damages assessment phase.