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Beware the rogue example

Date: 18 June 2009
Author: Paul Whenman
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Nufarm Limited v Jurox Pty Limited [2008] FCAFC 180 (11 November 2008)

Key Points

 
This case highlights the critical importance of ensuring that examples given in a specification are fully and correctly described. That is language ought not to be used in describing examples that may impact on a Court’s interpretation of the claims. Although the case was concerned with chemical compositions, the principles are applicable to all technologies. If an example is found to be outside the scope of the claims then the example should be deleted or its relevance carefully explained in the specification. Such amendments may be made at any time provided that if more then 3 months has elapsed after acceptance, then the amendment must not, inter alia, result in claim broadening.
 

Facts

 
At issue in this Appeal was the question of infringement, by an animal drench formulation marketed by Jurox Pty Ltd and known as Q-Drench, of the Nufarm Limited patent no.2003101020. For the purposes of the Appeal, the patent was assumed to be valid.
 
Jurox had admitted that Q-Drench fell within the scope of examples 1-4.  The major determination to be made by the Court was whether or not these examples fell within the scope of the claims. A finding that the examples were within the claims would immediately confirm infringement.
 
Claim 1 relevantly required that the composition be stable and in the form of an emulsion or capable of being formed into an emulsion.
 
By contrast in example 1 the formulation was said to be physically stable but considered too thin. No reference was made to chemical stability. The patent stated that to correct the thinness, the following examples 2-4 were thickened.
 
In examples 2 to 4, the patent went on to state “The low pH of these formulations 2, 3 and 4 (pH<4) was identified as unsuitable for long [sic] the long-term stability of Abamectin.  These completely aqueous formulation approaches were then stopped and it was decided to use a vegetable oil to attempt to encapsulate the Abamectin and possibly protect if [sic] from the low pH of the water phase. An additional active, albendazole, a benzimidazole anthelmintic, was added to the formulation”.
 

The Court concluded based on these passages

 
“...the specification gives the examples not to show what is covered by the patent, but to show how the final Nufarm formula was arrived at and to illustrate the inventive step or steps undertaken. From the language used in the specification, it is clear that the addition of a vegetable oil, in an attempt to encapsulate the abamectin, represented a departure from examples 1-4 towards a mixture with larger organic regions”.
 
Therefore the success of the formulation depended upon the success, as judged by stability, of separating the abamectin from the water.
 
According to the Court, not only was the work on micellar formulations like examples 1 to 4 stopped but the use of the phrase “completely aqueous formulation” to describe examples 1 to 4, indicated that the attempt to include a micellar solution or a microemulsion was abandoned or disclaimed.
 
Critically, this resulted in the Court concluding that the “claimed invention was not the concept of partitioning the two chemical environments.  It was in the ability to achieve it to the requisite standard. Examples 1 to 4 failed to do so.”
 
Therefore examples 1-4 were found to be outside of the claimed invention and the Jurox product was not an infringement.
 
Under Australian law it is permissible to amend a specification either during prosecution or post grant provided that if more then 3 months has elapsed after acceptance, then the amendment must not, inter alia, result in claim broadening. Such an amendment may include the deletion of examples.
 
In the present case, examples 1-4 could have been deleted prior to the commencement of infringement proceedings. Had that occurred then infringement may have been resolved in favour of the patentee. In particular, it may not have been open to the Court to find that the so-called “completely aqueous formulation approaches” being micellar solutions or microemulsions had been abandoned or disclaimed. Following the logic adopted by the Court, the Court may well have found that the invention resided in the concept of partitioning the two chemical environments to a requisite standard of stability.
 
Presumably the Jurox product Q-Drench satisfied the stability criteria or otherwise it would not have received regulatory approval. Furthermore Q-Drench included abamectin. It follows that the patentee would have only needed to demonstrate the Q-Drench was stable by virtue of partitioning in order to satisfy the Court that it fell within the inventive concept.
Tags:  Rogue Examples
 
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