Lantech Inc v First Green Park Pty Ltd & Ors [1995] FCA 188

CATCHWORDS PATENTS - infringement - claim not to be construed by reference to alleged infringement - meaning of claim clear and unambiguous - no resort to body of specification as aid to construction of claim. Patents Act 1990, s. 230. Nobel's Explosives Company Ltd v Anderson (1894) 11 RPC 519 Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 LANTECH, INC. v FIRST GREEN PARK PTY LTD & ORS No. VG 361 of 1994 BEFORE: LOCKHART, GUMMOW, HEEREY JJ. PLACE: MELBOURNE. DATE: 31 MARCH 1995.

IN THE FEDERAL COURT OF AUSTRALIA) VICTORIA DISTRICT REGISTRY ) No. VG361 of 1994 GENERAL DIVISION ) On appeal from a Judge of the Federal Court of Australia. BETWEEN: LANTECH, INC. Appellant AND: FIRST GREEN PARK PTY LTD EIGHTH MILIEU NOMINEES PTY LTD KALAN TWENTY THREE PTY LTD KERRY NEIL GOOD PETER JOHNSTONE SILAWRAP INTERNATIONAL PTY LTD Respondents BEFORE: LOCKHART, GUMMOW, HEEREY JJ. PLACE: MELBOURNE. DATE: 31 MARCH 1995. MINUTE OF ORDERS THE COURT ORDERS THAT: (1) The appeal be dismissed. (2) The appellant pay the costs of the respondents. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA) VICTORIA DISTRICT REGISTRY ) No. VG361 of 1994 GENERAL DIVISION ) On appeal from a Judge of the Federal Court of Australia. BETWEEN: LANTECH, INC. Appellant AND: FIRST GREEN PARK PTY LTD EIGHTH MILIEU NOMINEES PTY LTD KALAN TWENTY THREE PTY LTD KERRY NEIL GOOD PETER JOHNSTONE SILAWRAP INTERNATIONAL PTY LTD Respondents BEFORE: LOCKHART, GUMMOW, HEEREY JJ. PLACE: MELBOURNE. DATE: 31 MARCH 1995. REASONS FOR JUDGMENT THE COURT: The principal issue on this appeal is whether the learned primary Judge (Sweeney J) was correct in rejecting the appellant's submission that the respondents have infringed claim 24 of the appellant's standard patent No. 536099 ("the Patent"). In addition to patent infringement, the appellant also had complained of trade mark infringement, passing-off and contravention of ss. 52 and 53 of the Trade Practices Act 1974. These claims were disposed of and only the patent issues went to trial before the primary Judge. His Honour found that there was no infringement and so dismissed the application. His Honour also dismissed a cross-claim of the respondents in which a declaration had been sought that the claims allegedly infringed were invalid. The trial was conducted on the footing that if there was no finding of infringement against the respondents, they would not press their cross-claim asserting invalidity. The cross-claim had asserted invalidity on grounds arising under s. 40 of the legislation, and also for inutility. Pursuant to a Notice of Contention, the respondents submitted on the appeal that, if the finding in their favour as to non-infringement otherwise were to be reversed, they would seek to press their arguments upon invalidity. However, there is no cross-appeal against the dismissal of the respondents' cross-claim. Invalidity is raised only by way of defence to the case on infringement. The appellant is incorporated under the laws of the State of Kentucky in the United States of America and since 12 August 1991 has been proprietor of the Patent. The Patent was granted under the Patents Act 1952 ("the 1952 Act") and has a priority date of 21 November 1979. The 1952 Act was repealed by s. 230 of the Patents Act 1990 ("the 1990 Act"). It was agreed before the primary Judge that the transitional and saving provisions of Chapter 23 of the 1990 Act mean that the 1990 Act applies as if the Patent had been granted under it rather than the 1952 Act, subject to the qualification that objection cannot be taken to any claim on a ground that would not have been available under the 1952 Act. The Patent is for an invention entitled "Film Web Drive Stretch Wrapping Apparatus and Process". The complete specification commences with a section headed "Background of the Invention" and continues with a "Summary of the Invention" followed by descriptions of the drawings. There is no consistory clause, in the modern form, with repetition of the text of the widest claim. In describing the background of the invention, the complete specification describes the shipping of multiple unit products after placing a sleeve or covering of heat shrinkable film around the products and shrinking the sleeve to form a unitised package. Reference also is made to spiral wrapping machinery in which film is guided from a roll and wrapped around a cylindrical load in spiral configuration, and to the dispensing of stretched plastic film to provide a horizontal spiral wrap of a load. The elasticity of the stretched plastic film is said to hold the load under more tension than the shrink wrap. The complete specification continues: "The effectiveness of stretched plastic film in holding a load together is a function of the containment or stretch force being placed on the load and the ultimate strength of the total layered film wrap. These two functions are determined by the modulus or hardness of the film after stretch has occurred and the ultimate strength of the film after application. Containment force is currently achieved by maximising elongation until just below a critical point where [breaking] of the film occurs. Virtually all stretch films on the market today ... are consistently stretched less than 30% in applications because of irregularities in film braking systems. These systems depend upon friction induced drag either directly on the film through a bar assembly ... or indirectly ..." It is then said that all the prior art apparatus suffers from a severe limitation in cost effectiveness. The complete specification expounds as follows upon this limitation: "Friction brake devices do not maintain a consistent force. These brake devices are subject to variation due to their physical construction and their sensitivity to speed change caused by passage of corners of the load, and the resultant sudden speed up and slow down of film unwind. ... Additional limitations on maximum elongation are caused by film roll imperfections and gauge variations which accentuate the force variations described above to produce film ruptures. Even though all of the films previously described carry manufacturer's specified elongation rates above 300%, these rates cannot be approached because of limitations imposed by friction-type brake devices." The application of the existing art is said to lead to the disruption of the stacking pattern of units or the pulling of the load off the turntable. (Commonly the object or objects to be wrapped are placed on a turntable, which provides the motive force for the operation.) The specification continues: "In addition, non-vertical sides and corners on an irregular load place extreme forces on a small area of film during stretching, thereby causing a partial rupture at a point well below the force achievable on a flat side. This partial rupture causes a transfer of force to the remaining portion of the web. This force is frequently sufficient to produce a 'zippering' of the entire film web." The appellant pointed in particular to two passages under the heading "Summary of the Invention". The first is as follows: "A process and apparatus for applying stretchable plastic film to pallet loads for containment of the loads using a pre-stretching mechanism in the form of two connected sets of rollers driven by the film web at different speeds to elongate the plastic film between the connected rollers as the film is wrapped around a rotating pallet." The second passage is at the beginning of the last paragraph under the section headed "Summary of the Invention". It states: "It can thus be seen that the present invention provides a unique apparatus and process in that two rollers interconnected for speed differential are driven by film from the rotating load resulting in a pulling action on the film causing it to be stretched before it is applied to the load." The invention is said to have a number of advantages. One is that it allows at least double the practical level of elongation currently provided by the existing "brake" systems. This is said to give lower film costs to the end user. In particular, for the purpose of the infringement issue raised by the present case, counsel for the respondents stressed the advantages described in the following passage: "The novel construction in the invention provides for isolation of the film roll from stretch forces which eliminates premature film failure from roll end damage or roll down of edges under force. The use of this simplified function eliminates the use of friction brakes and freedom from the problems of those brakes such as speed variation, break away from stop position, temperature variation, wear and operator control meddling." Counsel for the respondents referred to the emphasis in this passage upon the "isolation" of the "film roll from stretch forces" and to the distinction drawn between the film itself and the film roll. The complete specification concludes with no less than 40 claims. Claims 2 - 23 are process claims dependent upon claim 1. Claims 24 - 40 each claim an apparatus for making a unitary package using a single "web" of stretchable plastic material to form the overwrap. The term "web" is used in the Patent in the sense of a sheet of plastic film. The central question is whether the apparatus referred to in the evidence as "Apparatus C" and "the Underhaug device" (the respondents' apparatus) infringes claim 24 or claim 25. Both at the trial and on appeal, the matter was fought on the basis that the issue for decision on both claims was the same, at least to the extent that if the Underhaug device did not infringe claim 24 it escaped infringement of claim 25. Accordingly, we turn to consider claim 24. Claim 24 must be set out in full. It states: "24.An apparatus for making a unitary package using a single web of stretchable plastic material to form the overwrap comprising a frame, a dispenser means, said dispenser means being adapted to hold and dispense a roll of stretchable material, a means for providing relative rotation between the load and dispenser means to pull said material off of said dispenser means, elongation means connected to said dispenser means adapted to receive stretchable material pulled from said dispenser means, said elongation means comprising at least a downstream and an upstream roller closely spaced apart and interconnected by speed control means and driven by engagement of the moving material pulled from the dispenser means by relative rotation of the load and dispenser means, said rollers being acted upon by said speed control means so that said downstream roller transports the material faster than said upstream roller to cause the material to elongate before it passes the downstream roller whereby in use to generate a stretching force applied to the stretchable material between the rollers, which force is maintained greater than the pulling force present in the material between the overwrap and said downstream roller." The appellant summarised claim 24 as requiring that the apparatus for making a unitary package using a single web of stretchable plastic material to form the overwrap, should comprise the following components: (a) a frame; (b) a dispenser means adapted to hold and dispense a roll of stretchable material; (c) a means for providing relative rotation between the load and the dispenser means; and (d) elongation means, comprising at least a downstream and an upstream roller and speed control means. The respondents said that the above identification of the "elongation means" was an oversimplification and that it involved five elements, (i) adaptation to receive stretchable material pulled from the dispenser means, (ii) a downstream and an upstream roller, (iii) which are closely spaced apart and interconnected by speed control means, and which (iv) are driven by engagement of the moving material pulled from the dispenser means by relative rotation of the load and the dispenser means, and (v) transportation of the material by the downstream roller faster than transportation by the upstream roller, so as to cause elongation before the material passes the downstream roller. The central dispute concerns the construction of claim 24 (and claim 25), in particular the expression "elongation means". The question is whether the Underhaug device has all of the essential components of claim 24 and, in particular, whether the roll of stretchable material in the Underhaug device ("the film roll") may properly be characterised, within the terms of claim 24, as the upstream roller which is a component of the elongation means. We were shown a video (Ex. C) of the Underhaug device. Also before us was a diagram identified as "Diagram 6" of the film stretching mechanism of the alleged infringement. A copy of Diagram 6 is attached as a schedule to these reasons. The elongation of the plastic film occurred between points s and t of Diagram 6. The component described as "intermediate roller" contacted the roll of plastic film at point q. The intermediate roller served as the "speed control means" which interconnected the upstream roller (according to the appellant's argument, being the roll of plastic film) and the downstream roller, at point q, and at the pivot point on the downstream roller, respectively. The spindle, pin or mandrel marked with a cross at the centre of the roll of plastic film was the dispenser means adapted to hold and dispense the roll of stretchable material, within the meaning of the claim. The primary Judge referred to the phrase in claim 24 "elongation means ... adapted to receive a stretchable material pulled from said dispenser means" and continued: "The only stretchable material capable of being 'pulled from said dispenser means' is that which is dispensed by it from 'a roll of stretchable material' held by the dispenser means. It is that stretchable material 'pulled from said dispenser means' which the elongation means is 'adapted to receive'. These words do not seem to me to describe or include a situation where the roll of stretchable material is itself to be regarded as a roller and part of the elongation means. The roll is not adapted to receive 'a stretchable material pulled from the said dispenser means'. The roll is adapted to hold the requisite quantity of stretchable material in a form which will enable the roll to be held and the material to be dispensed from it. It is not surprising, having regard to its description as a roll, and its function, to find that it is cylindrical in form." [Emphasis added] Counsel for the appellant criticised the use of the words "The roll" in the above passage rather than the phrase "elongation means", the language of the claim. However, what is said in that paragraph has to be read with what immediately precedes it including the quotation of the relevant phrase from the claim. The appellant also referred, as did the respondents, to the well known caution in Nobel's Explosives Company Ltd v Anderson (1894) 11 RPC 519 at 523, against construing a claim by reference to the alleged infringement. Having read the critical passages in the judgment of the primary Judge, we find no error in this respect. His Honour said that the elongation means was described in claim 24 as "comprising at least an upstream roller and a downstream roller closely spaced apart", and continued: "The rollers are said to be 'driven by engagement of the moving material pulled from the dispenser means'. They are both said to transport the material. The language of the claim describes a situation where there is a roll of stretchable material, which material, having been pulled from the dispenser means, sets off on its journey to the load, in the course of which it is received by the upstream roller and thereafter by the downstream roller, each roller being driven by engagement of the moving material. The engagement between the moving material and each of the rollers is vital to the successful functioning of the invention. The rollers are acted upon by speed control means so that the 'downstream roller transports the material faster than the upstream roller to cause the material to elongate before it passes the downstream roller, whereby in use to generate a stretching force applied to the stretchable material between the rollers'. Without the engagement of the material with each of the rollers that elongation would not occur. The claim uses the word 'engagement' to describe a common relationship between the moving material and each roller. It is not to be understood in one sense in relation to a roller and in another sense in relation to the roll of material construed as a roller. A roll consists of stretchable material wrapped around a core. As it is being made, one can see that there is engagement between the first layer of the material and the core and between each succeeding layer with the preceding layer. When the material is pulled from the roll, it cannot, in my opinion, be said that the roll is 'driven by engagement of the moving material'. On the contrary, there is disengagement of the material from the roll. In my opinion the claim uses separate words to describe distinct things. It does not use the word 'roller' so as to comprehend both the downstream roller and the roll of stretchable material. That roll is not both a roll and a roller. The claim applies the latter term to members of a class. Each of the rollers is part of the elongation means, which is adapted to receive the stretchable material. The roll is not a member of that class. It is not part of the elongation means. It is not adapted to receive the material but to provide the source of it and to part with it." Counsel for the appellant stressed the undoubted proposition that there is no doctrinal reason why, in a given case, the one integer in an infringing device may in performing its functions answer the requirements of two or more steps in a claim. The primary Judge's reasoning was criticised as having proceeded from the contrary view. That is not how we understand his Honour's approach to the matter. Rather, we understand the primary Judge as having concluded that the claim was so cast that it was not possible to read the Underhaug device on to claim 24 by characterising the film roll not only as the "roll of stretchable material" specified in the claim, but also as the "upstream roller". We agree with the way in which the matter was put by the primary Judge, and would add the following. The claim is for an apparatus characterised in two ways. The first is the particular function to be performed. The second is the combination of integers by which the apparatus is formed. Some of these integers in turn are described by their functions in the operation of the combination. Counsel for the appellant stressed that the claim should be construed with an eye to the operation by which the plastic material was dispensed from the roll and stretched ("elongated") while being transported between the upstream and downstream rollers. That may be conceded. Counsel further submitted that the material had one character before it was pulled from the roll and another whilst it was transported through the stretching process. There was no reason why, it was said, the upstream roller might not be the roll from which the material was dispensed and stretched. However, to our minds, the claim is for an apparatus which will be apt for use in making a unitary package, subject to there being placed in the dispenser and held by it, a roll of stretchable material. As the apparatus is operated, the roll will diminish with the dispensing of the material and its stretching between the rollers. The claim does not embrace a roller of diminishing radius as the process proceeds, leading to the retention of no more than the inner core of the roll and the spindle, pin or mandrel to which it is attached. The apparatus then no longer would be suitable for making a unitary package, because there would not remain in place an upstream roller for use in the generation of force to stretch the plastic film. Claim 24 requires that the upstream roller is physically separate from the roll of film and it exists both before and after the stretching of the film has been completed. The upstream roller exists independently of the roll of film. Claim 24, on a fair reading, requires the transportation, in the sense of carrying, of the material by the upstream as well as the downstream roller, the latter being identified as transporting the material faster than the former. Earlier in the claim, the downstream and upstream roller are identified as interconnected by the speed control means and as driven by engagement of the moving material. The respondents submit, in our view correctly, that the consequence for the construction of the claim is that if the upstream roller carries the film, it can do so only by engagement of the roller with the moving material. The upstream roller, at the commencement of the elongation process, engages (meets or connects with) the film and then transports (carries) it. Thus, upstream of the upstream roller the elongation means must receive the film from the dispenser, something which cannot be so if the roll of film itself is the upstream roller. Both parties contended that their constructions were unambiguous and their primary cases were that resort to the body of the specification was unnecessary. However, each advanced an alternative claim, which, if ambiguity were found, sought to gain support from different passages in the specification. In our view, the meaning we have explained above is, in the sense of the authorities on this point, plain and unambiguous so that no resort to the body of specification is called for: Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478. For all these reasons, we reject the submission that the film roll properly may be characterised as the upstream roller. It follows that there has been no infringement.

The appellant put an alternative submission that the interposition of the elongation means between the roll of film and the load is an inessential integer in the combination forming the apparatus. It is then said that for this inessential integer the respondents have substituted a mechanical equivalent. The elongation means is, on a fair reading of claim 24, a most significant integer. Indeed, it is broken up, as counsel for the respondents pointed out, into a number of sub-elements, some of which themselves are quite complex. It no doubt would have been possible to have drawn claim 24 in such a fashion as to embrace the Underhaug device and to omit what is involved in the "elongation means". But that would have been to claim a different invention. The appeal should be dismissed with costs. I certify that this and the preceding fourteen (14) pages are a true copy of the reasons for judgment of the Court. Associate: Date: 31 March 1995. Counsel and solicitors Dr John Emmerson QC and for the appellant: Miss E.A. Strong instructed by Freehill Hollingdale & Page. Counsel and solicitors Mr David Shavin QC and for the respondents: Mr B. Caine instructed by Corrs Chambers Westgarth. Dates of hearing: 7, 8 March 1995. Date of judgment: 31 March 1995.