Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699

Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699

Claims 1 and 3, by their terms, contain discrete and express selection steps that provide for differently constituted phosphors, and therefore each defines more than one form of the invention for the purposes of s 43(3) of the Patents Act 1990 (Cth). JP585, read in its own context, discloses the forms of phosphor represented by the general formula in claim 3 of the 355 specification. In particular, the notation (Al,Ga)5 in claim 1 of JP585 denotes any mixing of Al and Ga from 0% up to 100% of either, provided the total number of atoms is conserved to make five atoms. There is therefore a real and reasonably clear disclosure in JP585 of the forms of the invention in claim 3, so claim 3 is...

Jurisdiction
Australia
Judgment Date
10 July 2015
Procedural Posture
Patent Infringement Proceeding With Cross Claim for Revocation / Determination of Separate Question Concerning Priority Dates of Claims 1 and 3
Outcome
The separate question was determined in favour of the applicant on the priority issues: claims 1 and 3 define more than one form of the invention, and claim 3 has a priority date of 29 July 1996 based on JP585.
Legal Topics
['priority Date of Patent Claims' 'fair Basis on Priority Documents' 'claims Defining More Than One Form of an Invention' 'separate Question' 'construction of Patent Claims and Priority Documents']
['patents' 'practice and Procedure'] ['priority Date of Patent Claims' 'fair Basis on Priority Documents' 'claims Defining More Than One Form of an Invention' 'separate Question' 'construction of Patent Claims and Priority Documents']

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Procedural Posture

Patent Infringement Proceeding With Cross Claim for Revocation / Determination of Separate Question Concerning Priority Dates of Claims 1 and 3

Legal Issues

  1. 1 ['Whether claims 1 and 3 of Patent No. 720234 define more than one form of the invention for the purposes of s 43(3) of the Patents Act 1990 (Cth).' 'Whether claim 3 is fairly based on matter disclosed in Japanese patent application JP8-198585 (JP585).' 'Whether the notation (Al,Ga)5 in JP585 denotes any mixing of Al and Ga from 0% up to 100% of either, provided the total number of atoms is conserved to make five atoms.' 'What priority dates should be assigned to claims 1 and 3 of the 355 specification.']

Ratio Decidendi

Claims 1 and 3, by their terms, contain discrete and express selection steps that provide for differently constituted phosphors, and therefore each defines more than one form of the invention for the purposes of s 43(3) of the Patents Act 1990 (Cth). JP585, read in its own context, discloses the forms of phosphor represented by the general formula in claim 3 of the 355 specification. In particular, the notation (Al,Ga)5 in claim 1 of JP585 denotes any mixing of Al and Ga from 0% up to 100% of either, provided the total number of atoms is conserved to make five atoms. There is therefore a real and reasonably clear disclosure in JP585 of the forms of the invention in claim 3, so claim 3 is...

Court Disposition

The separate question was determined in favour of the applicant on the priority issues: claims 1 and 3 define more than one form of the invention, and claim 3 has a priority date of 29 July 1996 based on JP585.

Orders

  • ['The parties are to bring in draft orders giving effect to these reasons by 4.00 pm on 17 July 2015.' 'If the parties cannot agree on the question of costs, the respondent is to provide a draft of the order it seeks in that regard, supported by written submissions not exceeding three pages.' 'Any question of costs...