Intellectual Property

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Client Update: Seafood v Bass – a commonsense approach

5 July 2011

In brief: The Full Federal Court has unanimously overturned a controversial decision concerning patent infringement, holding that commonsense should prevail when approaching the construction of patent claims. Ordinary words in claims should be given their plain and ordinary meaning, as a person skilled in the art would understand them. Partner Chris Bird and Senior Associate Lester Miller report on a case that will be welcome news to patentees.


Seafood Innovations Pty Ltd (Seafood) appealed to the Full Federal Court against a decision by a single judge that there was no infringement of Seafood's Innovation Patent to its fish stunning apparatus by a competing machine made by the aptly named Richard Bass. We reported on the original decision in our October 2010 IP Bulletin.

The two machines were identical but for additional pivoting wall and roof plates in the Bass model, which, arguably, improved fish stunning operations and had been patented in its own right.

The Seafood patent claim included a pivoting floor plate, defined as configured 'to allow' the fish to move from a stunning station towards an exit section of the machine for further processing. The judge at first instance had accepted Mr Bass's contention that the word 'allow' should be construed exhaustively, which would have meant that, in operation, the Seafood floor element was the only means by which fish were permitted to pass. In addition to a moving floor plate, the Bass machine employed further elements that retracted to allow the fish to move, and so the Bass model was considered to be a completely different machine from the Seafood invention.

The Full Court found that this was not a commonsense approach, but an incorrectly limited interpretation that introduced an impermissible gloss on the claim. It emphasised that proper regard must be had for the meaning that a person skilled in the art would assign to words in their context, and where this meaning correlates with dictionary definitions of those words, construction is straightforward.

On this reasoning, the Full Court found that the Bass machine functioned in exactly the same way as the apparatus defined in the Seafood claim, in that it had a floor plate that pivoted to allow the fish to proceed. The additional features in the Bass machine did not avoid infringement, as there was no requirement in the Seafood claim (implicit or explicit) that passage of the fish is allowed only by movement of the floor.

Bass also asserted that the Seafood patent was invalid on the basis that the claims were not fairly based on the specification and did not clearly define the invention. The Full Court took time to distinguish the roles of each of the various parts of patent specifications, finding that the main role of claims is to define an invention, not to give instructions for use of an apparatus, and that this ground failed because the claims were clear. The Full Court determined that, in order to provide a fair basis for patent claims, a specification need only give a real and reasonably clear disclosure of the claimed invention, which was found to be present in Seafood's patent.

What it means for you

The first instance decision was a major surprise for patent practitioners and patentees. Fortunately, this appeal decision should re-establish the confidence of patent owners in their rights, as it confirms that a commonsense approach to the construction of terms in patent claims should always be adopted, and care should be taken to avoid the 'impermissible gloss' approach. Stray claim constructions not supporting the context or purpose of the invention (as it would be understood by a person skilled in the art) should be disregarded.

Further confidence should be engendered by the Full Court's emphasis that patent specifications should be read as a whole, and that stray or minor phrases in a specification cannot be used to attack claims that serve to clearly define an invention and are fairly based on the specification.

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