Infringement, Construction and the Numerical Boundary

Construction. Under Catnic / Improver as adopted in Australia (Nicaro Holdings v Martin Engineering; Jupiters v Pioneer; Kinabalu), the claim is construed purposively: what would the skilled addressee understand the patentee to mean by '10 to 50 micrometres'? The starting point and ending point are the claim language, read in context of the specification.

The integer is a numerical limit. A numerical boundary is generally given its ordinary meaning unless the specification clearly signals a different construction. Here the specification says thicknesses below 10 micrometres give unacceptable flux loss. That statement:

• explains why the lower limit is there (a functional purpose: adequate flux), and
• does not say that 7 micrometres is included.

On the Improver questions: (1) does the variant have a material effect on the way the invention works? Yes - 7 micrometres is outside the stated range and, on the patentee's own statement, has different flux behaviour. (2) Would that have been obvious to the skilled reader? Yes. (3) Would the skilled reader have understood the patentee to intend strict compliance with the limit? The express statement about sub-10 micrometre performance points to yes - the patentee intended the boundary to be strict.

Conclusion. Gascowne's 7-micrometre product is outside the claim and does not infringe. Its 25-degree contact angle satisfies the second integer, but infringement requires all integers. The 'maximum flux' marketing is consistent with, not contrary to, this result.

Caveat. If the specification had been silent on sub-10 micrometre performance, the position would be less clear and a 'substantially the same' argument might have been available. The express statement closes that door.

Invalidity counterclaim.

• Support / fair basing (s 40(2)(a), s 40(3)). The claim requires a 10-50 micrometre range, but the specification exemplifies only 25 micrometres and states that below 10 micrometres is unacceptable. A claim to a range is fairly based if the range is disclosed or readily derivable and the claim is not broader than the description. The 10-50 range is consistent with the example and the statement, and the upper bound of 50 is not exemplified but is a routine extension. The support attack is weak; the specification does describe the range.
• Utility (s 18(1)(c)). Utility requires the claimed invention to achieve the promised result across the claim. The claim promises a hydrophilic coating with contact angle <30 degrees; the example shows this at 25 micrometres. There is no promise about flux in the claims. Gascowne would need to show that some claimed embodiments do not work. The specification's own statement that sub-10 micrometres fails is outside the claim, so it does not undermine utility. The utility attack is weak.
• Best realistic attack: lack of inventive step or added matter, if any, but on the facts given the counterclaim is unlikely to succeed. Gascowne's best commercial route is a design-around (which it already has) rather than invalidity.

Onslow sales. Onslow is a licensee, so its sales are licensed acts and do not infringe - but they breach the royalty obligation. Pilbara's remedies are contractual (debt, account of royalties, termination), not infringement. Two further points:

1. Exhaustion / implied licence: goods sold by a licensee are put on the market with the patentee's authority, so Pilbara cannot sue downstream purchasers for infringement.
2. Termination and re-entry: if the licence is terminated, continued sales become infringement, and Pilbara can then seek an injunction and damages. Pilbara should audit the licence terms for termination and audit rights before suing.