Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Tuesday, July 21, 2015

Federal Court sheds (white) light on Section 43(3) of the Patents Act

By Joel Barrett, Senior Associate

A priority date, as the date at which novelty and inventive step are assessed, is valuable for a patentee. Section 43 of the Patents Act 1990 (Cth) provides that each claim within the same patent may have a different priority date, and that there can even be different priority dates within the same claim:
'Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.'

Until recently, the only Australian judicial guidance on s43(3) was from the Full Court of the Federal Court in AstraZeneca AB v Apotex Pty Ltd, in which the majority of four judges considered whether the following claim 'define[d] more than one form of an invention':
A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that: (i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and (ii) the counter anion to the inorganic salt is not a phosphate. [Emphasis added]
The patentee in that case argued that multiple different 'counter anions' could be used, such as titanium oxide or ferric oxide, and so the claim defined more than one form of the pharmaceutical composition. However, the court disagreed, finding that the claim 'defines only one form of the invention even though there will be any number of potential variants that are within its scope' depending on the counter anion used.

So, what is the difference between a 'form', which will attract the operation of s43(3), and a 'variant', which will not? The Federal Court clarified the answer in a judgment on 10 July 2015.
That case concerns a patent that covers certain light sources capable of emitting white light. In June 2014, the patentee Nichia Corporation sued Arrow Electronics Australia Pty Ltd for infringing claim 3 of its patent, particularly a form of the claimed invention that contains an yttrium-aluminium-garnet fluorescent material (YAG), and Arrow cross-claimed for invalidity. Nichia argued that claim 3 is entitled to a priority date of 29 July 1996, the date of a Japanese patent application serving as the earliest priority document (JP585). In February 2015, Justice Yates ordered that the priority dates of claims 3 and 1 (on which claim 3 is dependent) be determined as a separate question.

The claims read as follows:
1. A light emitting device, including a light emitting component and a phosphor capable of absorbing a part of light emitted by the light emitting component and emitting light of wavelength different from that of the absorbed light; wherein said light emitting component comprises a nitride compound semiconductor and said phosphor contains a garnet fluorescent material including at least one element selected from the group consisting of Y, Lu, Sc, La, Gd and Sm, and at least one element selected from the group consisting of Al, Ga and In, and being activated with cerium.

3. A light emitting device according to claim 1, wherein the phosphor contains fluorescent material represented by a general formula (Re1-rSmr)3(Al1-sGas)5O12:Ce, where 0≤r<1 and 0≤s≤1 and Re is at least one selected from Y and Gd.
[Emphasis added]
Arrow argued that claim 3 is not entitled to the earliest priority date of 29 July 1996, as its formula is not actually disclosed in JP585. Furthermore, the italicised elements in claim 1, namely Lu (lutetium), Sc (scandium), La (lanthanum) and In (indium), must be read into claim 3 due to the words 'A light emitting device according to claim 1', and none of those elements are disclosed in JP585 either. Therefore, claims 1 and 3 are wholly invalid due to novelty-destroying prior art published after 29 July 1996, and the infringement proceeding falls over.

Nichia maintained that the formula in claim 3 is disclosed in JP585 (albeit as part of a broader formula with different nomenclature), and that claim 3 should not be construed to include any element listed in claim 1 that the formula in claim 3 does not expressly contemplate. Even if the court construes claim 3 in that way, claim 1 defines 441 different forms of the invention within the meaning of s43(3), and so claims 1 and 3 are entitled to the earliest priority date, at the very least to the extent that they define forms containing YAG.

Justice Yates found in favour of Nichia on each of these arguments. In relation to s43(3), Arrow contended that claim 1 might contain multiple 'variants' but only defines one 'form' of an invention, just like the claim in AstraZeneca AB v Apotex Pty Ltd. Therefore, the references to Lu, Sc, La and In are fatal. However, his Honour disagreed. In that case, 'counter anion' may have had several potential meanings, but they were undefined in the wording of the claim. In contrast, claim 1 in the present case 'includes two discrete and express selection steps … providing for differently constituted phosphors, depending on the selections made and the combinations arrived at'. Had it been necessary, s43(3) could have also applied to claim 3, given the discrete and express selection steps involved in deciding what the symbols 'r', 's' and 'Re' in the formula represent. The key is not in the difference between the words 'form' and 'variant', but in the word 'defines' (as in, expressly envisages or embodies).

The result is that, as the parties move forward with their infringement and invalidity cases, claim 3 has the earliest priority date (and claim 1 has multiple priority dates).

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