ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46

ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46

The Court found that the Primary Judge erred in construing the claim language, specifically the ‘hold position’ and ‘release position’ integers, as functional rather than as binary and pre-defined positions attainable independently of the base. The Torq Lok prior art product did not have these binary positions and did not anticipate the claims. Further, the specification’s para 6 is not a composite promise requiring all six elements to be present in every claim, but is instead a collection of possible promises read disjunctively. The claims attained at least one promise as required for utility, and therefore are not inutile.

Jurisdiction
Australia
Judgment Date
28 March 2018
Procedural Posture
Appeal / Judgment After Rehearing, Post Leave to Appeal
Outcome
Appeal allowed
Legal Topics
['patent Construction' 'novelty' 'utility' 'opposition Proceedings' 'patent Application' 'statutory Interpretation']
['intellectual Property'] ['patent Construction' 'novelty' 'utility' 'opposition Proceedings' 'patent Application' 'statutory Interpretation']

Case Brief

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Procedural Posture

Appeal / Judgment After Rehearing, Post Leave to Appeal

Legal Issues

  1. 1 ['Whether the claims in ESCO’s Patent Application lack novelty under Patents Act 1990 (Cth) s 18(1)(b)' 'Whether the claims in ESCO’s Patent Application lack utility under Patents Act 1990 (Cth) s 18(1)(c)' 'Proper construction of claims, especially ‘hold position’ and ‘release position’ integers' 'Definition of patent promises in specification and whether failure to attain all elements renders a claim inutile' 'Nature of composite and disjunctive promises in patent law']

Ratio Decidendi

The Court found that the Primary Judge erred in construing the claim language, specifically the ‘hold position’ and ‘release position’ integers, as functional rather than as binary and pre-defined positions attainable independently of the base. The Torq Lok prior art product did not have these binary positions and did not anticipate the claims. Further, the specification’s para 6 is not a composite promise requiring all six elements to be present in every claim, but is instead a collection of possible promises read disjunctively. The claims attained at least one promise as required for utility, and therefore are not inutile.

Court Disposition

Appeal allowed

Orders

  • ['Leave to appeal granted' 'Appeal upheld' 'Appellant to submit final orders for Court’s consideration' 'Orders to include costs payable by respondent to appellant']