ITW AFC Pty Ltd v Loi and Tran Pty Ltd [2008] FCA 552

ITW AFC Pty Ltd v Loi and Tran Pty Ltd [2008] FCA 552

The patent was not invalid for lack of novelty because the respondents did not identify prior art disclosing all integers of claim 1, and UK Patent GB957626 did not clearly disclose several integers of the Zips screw. The claimed screw also involved an inventive step because the combination of ASD and Type 17 features was not a routine step to which the skilled person would have been directly led at the priority date, and the contrary argument depended on hindsight. However, infringement was not established: construed purposively, the taper required by claim 1 is a narrowing that functions to draw the screw into timber. Any microscopic reduction in the respondents' screws did not perform...

Jurisdiction
Australia
Judgment Date
23 April 2008
Procedural Posture
Patent Infringement Action With Cross Claim for Revocation of Several Patent Claims / Final Judgment After Trial
Outcome
The application and the cross-claim were dismissed.
Legal Topics
['patent Infringement' 'validity of Patent Claims' 'construction of Claims' 'novelty' 'inventive Step' 'combination Patent' 'purposive Construction' 'functional Advantage' 'commercial Success as Secondary Consideration' 'improver Questions']
['intellectual Property' 'patents'] ['patent Infringement' 'validity of Patent Claims' 'construction of Claims' 'novelty' 'inventive Step' 'combination Patent' 'purposive Construction' 'functional Advantage' 'commercial Success as Secondary Consideration' 'improver Questions']

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Procedural Posture

Patent Infringement Action With Cross Claim for Revocation of Several Patent Claims / Final Judgment After Trial

Legal Issues

  1. 1 ['Whether claim 1 of Australian Patent No 719725 should be construed so that the drilling tip includes the chisel, cutting edges and at least part of the flutes, and where the taper is to be measured.' 'Whether the patent claims lacked novelty because prior art disclosed all integers of the claimed fastening screw.' 'Whether the claimed combination of ASD drill screw point features and Type 17 screw features lacked an inventive step.' "Whether the respondents' Clearfix and Bat'N'Fix screws possessed each essential feature of the asserted claims, especially a shank tapering to the drilling tip in the purposive sense required by the patent."]

Ratio Decidendi

The patent was not invalid for lack of novelty because the respondents did not identify prior art disclosing all integers of claim 1, and UK Patent GB957626 did not clearly disclose several integers of the Zips screw. The claimed screw also involved an inventive step because the combination of ASD and Type 17 features was not a routine step to which the skilled person would have been directly led at the priority date, and the contrary argument depended on hindsight. However, infringement was not established: construed purposively, the taper required by claim 1 is a narrowing that functions to draw the screw into timber. Any microscopic reduction in the respondents' screws did not perform...

Court Disposition

The application and the cross-claim were dismissed.

Orders

  • ['The application and the cross-claim be dismissed.' 'On or before 4.15pm on Wednesday 30 April 2008, the parties may file written submissions of no more than 3 pages on the question of costs.']