Advanced Building Systems P/L and Anor. v Ramset Fasteners (Aust) P/L

Re: ADVANCED BUILDING SYSTEMS PTY LTD
And: RAMSET FASTENERS (AUST) PTY LTD; A AND V MAMONE CONSTRUCTIONS PTY LTD and
BRAMBLES AUSTRALIA LIMITED
No. NG717 of 1990
FED No. 236
Number of pages - 30
Intellectual Property
(1993) AIPC 91-017

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Hill J (1)

CATCHWORDS

Intellectual Property - patents - validity - anticipation and novelty - whether entitled to "make a mosaic" from series of publications; whether cable at end of lever arm is an "essential integer" of the invention - whether cable at end of lever arm is disclosed in prior publications circulated in Australia.

Intellectual Property - patents - validity - obviousness - whether longer lever arm blocking shackle operation, rope attached to lever arm effecting remote release and use of cable in face-lift tilt-up operations are "inventive steps" beyond the prior limits of the art.

Intellectual Property - patents - validity - "actual inventor" - whether improvements constituted inventive steps sufficient to make invention more than a mere copy of the US patent.

Patents Act 1952: ss:100(1)(a), (d), (e), (g), (k).

Statutes of Monopolies 1624: s.6.

Minnesota Mining and Manufacturing Co v. Beierdsdorf (Aust) Ltd (1980) 144 CLR 253; applied.

R D Werner and Co Inc v. Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679; discussed.

Nicaro Holdings Pty Ltd v. Martin Engineering Co (1990) 91 ALR 513; discussed.

Catnic Components Ltd v. Hill and Smith Ltd (1981) 7 FSR 60; discussed.

National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252; discussed.

HEARING

SYDNEY, 1-5 March 1993

#DATE 23:4:1993

Counsel and Solicitors A J L Bannon instructed by
for Applicant: Astridge and Murray

Counsel and Solicitors D Yates and J Baird instructed
for Respondent: by Davies Ryan De Boos

ORDER

The Court orders that:

(1) Matter proceed for trial on the issue of infringement and for that purpose the matter be listed for directions on a date to be fixed with counsel.

(2) Cross-claimant to pay cross-respondent's costs of the cross-claim.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

HILL J The first applicant, Advanced Building Systems Pty Ltd ("Advanced") is the registered proprietor of Australian Letters Patent Number 544832 for an invention entitled "Lift Systems for Tilt-Up Walls" ("the Australian patent") pursuant to an assignment dated 22 November 1990 from the second applicant, The Burke Company ("Burke"). Advanced claims, inter alia, that the first respondent, Ramset Fasteners (Aust) Pty Ltd ("Ramset") has infringed the Australian patent by the sale or supply by way of hire of a tilt-up wall lift system or components under the names "Ramset Frimeda Rapid Lift System" or "Ramset Face-Lift Tilt System".

Ramset cross-claimed, claiming the Australian patent to be invalid and seeking revocation of it and each and all of the claims of the complete specification thereof. Beaumont J ordered the cross-claim to be heard separately from the issues of infringement and damage and accordingly the present hearing has been concerned only with the validity of the patent. The parties are in agreement that that question is to be determined by reference to the Patents Act 1952 ("the Act").
Before detailing the terms of the patent and the objections to validity advanced by Ramset, it is necessary to set out some background to the dispute between the parties.
Among the advantages claimed for use of concrete in building construction is that concrete walls or panels, for example, may be prefabricated, that is to say, poured off site and transported to the building site and erected, or poured on site and then lifted into position. Each of these methods require the wall, panel or other concrete item to be lifted by crane into position at the building site.
There are two methods of bringing the concrete wall or panel etc into position. The first is referred to as an "edge-lift" system and sometimes as "edge-lift tilt-up". In an edge-lift tilt-up, the crane is linked to lifting inserts or anchors embedded in the edge of the item to be lifted and the item is then lifted into position. The second method, referred to as "face-lift tilt-up", on the other hand, is said to offer considerable advantages over edge-lift systems. In a face-lift tilt-up, the concrete element, usually a wall panel, is cast on site horizontally. Lifting inserts or anchors are cast into the panel symmetrically about a point, called "the centre of lift", which lies between the centre of gravity of the panel and the top edge of the panel. The crane rigging is attached to these anchors in the face of the panel so that when the crane commences to lift the load of the panel, the panel lifts clear of the casting bed except along its bottom edge. As the crane continues to lift, the panel continues to rotate from the horizontal position to a position typically 10 degrees to 20 degrees vertical. At this point the line of the crane will, by virtue of the panel rotation, be directly above the centre of gravity of the panel and the bottom edge of the panel can be lifted clear of the casting bed so that the panel can then be lifted to its final position. Once the panel is in that position and braced, there will be virtually no load left on the crane.
Lifting clutches are used for linking the anchor to the crane rigging, both where edge-lift and face-lift tilt-up operations occur. Whether the lifting is an edge-lift or face-lift tilt-up, there will be one lifting clutch for each anchor.
On 13 May 1975, United States Patent Number 3,883,170 was granted to Siegfried Fricker of Germany with a priority date of 16 August 1972. The subject matter of that patent is described as "hoisting shackle with quick release attachment means". The inventors shown are a Mr Fricker and a Mr Reinkensmeier of Germany. It would seem that the apparatus was designed by or on behalf of Siegfried Fricker GmbH of Germany. This patent is, for convenience, referred to as "the US patent". The concrete lifting system initially marketed by Ramset was manufactured by Siegfried Fricker GmbH. Subsequently, Ramset developed its own components, which it now markets or hires. Ramset's right so to do emanated from a licence and know-how agreement entered into between Ramset and Siegfried Fricker GmbH in March 1988. That agreement relates to what is referred to as "the Frimeda Rapid Lift System".
On 6 February 1980, an agreement was entered into between Frimeda Siegfried Fricker GmbH (apparently the same company as Siegfried Fricker GmbH) and Burke, whereby Burke was granted an exclusive licence of the patent and trademark rights of Frimeda Siegfried Fricker GmbH, inter alia, in respect of the US patent. Pursuant to that licence agreement, Burke received from the German company a document, which may be referred to as both a manual and a catalogue, relating to the Frimeda Rapid Lift System for the lifting and transportation of pre-cast concrete units for manual operation and remote control. I shall return to the contents of this document, which I will refer to as "the Frimeda manual", later, under the heading "Whether the applicant for the patent was entitled to apply for it".
In 1980, a Mr Holt, an employee of Burke in the United States, carried out some experiments with respect to the Frimeda Rapid Lift Clutch in a face-lift tilt-up wall lift, attaching an extension to the lever of the Frimeda clutch and attaching a rope to that lever. Mr Holt is claimed to be the inventor of the apparatus the subject of the Australian patent.
It must be said here that one of the difficulties with tilt-up lift operations is the problem of disconnecting the clutch from the anchor embedded in the concrete. When tilt-up construction was first employed, workmen would have to climb to the top of the concrete structure erected and manually disconnect the clutch from the anchor embedded in the concrete. Remote release of the clutch from the anchor was clearly desirable, both in the interests of efficiency and the interests of safety. Remote release under the Australian patent is, as will be seen, effected by a cable (in practice a rope) attached to the extended lever arm which when pulled down by a person standing on the ground operates to release the clutch from the anchor. As will be seen, the US patent also referred to remote release.

The US patent
11. The US patent points out the need in modern construction technology for the transportation and hoisting of increasingly heavier prefabricated building components. It notes that it is no longer adequate to use ropes or cables for the attachment of these prefabricated building components to a hoisting crane, because it is often difficult and risky to remove the ropes or cables. Reference is made to the need to provide recessed anchors in the prefabricated building components. By way of summary, it is said:

"It is a primary objective of the present invention to overcome the above shortcomings by suggesting a novel hoisting shackle with a quick release attachment which is capable of cooperating with special, recessed anchoring elements which require a minimal recess space in the prefab components."

The device is described as comprising a hoisting shackle to which is attached an arcuate attachment bolt which is received in the annular cavity of the shackle body. In the description of the preferred embodiment, the arcuate locking bolt has a semi-annular outline and the annular cavity of the shackle body is likewise circular in cross-section. At its lowest point, the shackle body has a transverse slot into which the eye portion of a cooperating anchoring element can be inserted, to be retained therein by the locking bolt which traverses the slot. The semi-annular locking bolt, when not clamped in place by the forces acting on the anchoring element, tends to assume a position in the lower portion of the shackle body under the influence of gravity, thereby normally locking the shackle. The patent continues:

"The preferred embodiment of the invention also offers an advantageous feature in regard to the release operation on the shackle, which merely requires a comparatively simple angular displacement of the locking bolt inside the annular cavity of the shackle. This release operation is very safe and positive, because the shackle body itself is positioned against the eye portion of the anchoring element while the locking bolt is retracted inside the shackle body. A still further advantageous feature of the present invention relates to the possibility of remotely actuating the release movement of the locking bolt. This result is obtained in a very simple way by adding to the hoisting shackle of the invention a cable pull, for example a Bowden cable, which permits the release of the hoisting shackle from its anchoring element from a distance, for instance from the ground or from a safe place on the construction site. Accidental or premature release of the locking bolt is practically impossible, because the load acting on the anchoring element creates a clamping action between the locking bolt and the cavity wall of the shackle body."

The above description can perhaps be best understood by reference to two diagrams, being Figures 1 and 2 respectively, taken from the patent.
"12" in these figures represents the lever, "1" is the shackle body, "10" is the annular cavity, "11" the arcuate locking bolt and "17" is the eye portion of the anchoring element embodied in the concrete. In Figure 2, the cable attached to the lever "12" appears to be a Bowden cable, which operates apparently something like a breaking cable in a bicycle. Of the remote-release feature, the US patent says:

"The safety advantages of the remote release feature are particularly advantageous in the case where large and heavy prefabricated wall panels are to be installed, and where it would be difficult for a worker to reach the hoisting attachments on the upper end of the installed panel with his hand. The hoisting shackle of the invention is suitable for application with the heaviest building components... It should be understood that the remote-controlled release mechanism may include means other than the Bowden cable, such as, for example, release means which are operable through the movement of the hoisting harness itself, or which are operable by means of a long rod or the like. The latter may include a cocked release spring arranged inside the annular cavity 10 of shackle body 1 and a trigger mechanism which when actuated, allows the release spring to retract the locking bolt 11.

It should be understood, of course, that the foregoing disclosure describes only preferred embodiments of the invention and that it is intended to cover all changes and modifications of these examples of the invention which fall within the scope of the appended claims." The main claim is for:

"A hoisting shackle system with a quick release attachment device for attaching a hoisting harness to a load at one or more attachment points, comprising in combination: a ring-shaped closed shackle body having an annular cavity giving it a shape similar to that of an upright hollow torus and being thus adapted to form an articulated, chain-link-type end member of a hoisting harness or the like of which a hook or end loop can reach through the central aperture of the torus, the shackle body having an upper arcuate portion in which the outer peripheral wall of the hollow torus structure is removed so as to leave a radially open, U-shaped cross-sectional wall profile around its annular cavity; an arcuate locking bolt received in the annular cavity of the shackle body so as to be guided therein for movement along the curvature of said annular cavity; a transverse radial slot in the lowermost portion of the shackle body which reaches upwardly a distance beyond the cross-sectional space occupied by the locking bolt inside the annular cavity; an anchoring element capable of being fixedly attached to a load and having an upstanding eye portion with a transverse opening, the eye portion fitting into the radial slot of the shackle body in such a way that the locking bolt can be inserted through its opening, thereby attaching the anchoring element to the shackle body; and means for releasing the anchoring element from the shackle body, by retracting the locking bolt from its locked position in which it traverses said radial slot to a position outside the slot region."

Claims 8 and 9 are as follows:

"8. A hoisting shackle system as defined in Claim 1 wherein:

the releasing means includes means for remotely actuating the reaction of the locking bolt from its locked position.

9. A hoisting shackle system as defined in Claim 8, wherein:

the remote actuating means includes a Bowden-type pull cable, a sheath bracket on the shackle body for the abutment and positioning of the near end of the cable sheath, and a cable attachment between the corresponding end of the cable and one end of the locking bolt, the sheath bracket being so positioned in relation to the cable attachment that a pulling action on the Bowden cable causes the locking bolt to be retracted from its locked position."

The Australian patent
16. The Australian patent expresses itself to be concerned with hoisting attachments and tilt-up methods for erecting concrete walls. It is agreed by the parties that the Australian patent is concerned with face-lift tilt-up erection. It expresses itself to be specifically concerned with hoisting attachments "which are very safe to use and are quickly releasable". Under the heading "Description of the Prior Art", the patent states:

"The type of hoisting attachment with which the present invention is concerned is shown in US patent 3,883,170. The hoisting attachment and hoisting method aspects of the present invention are concerned with improving the hoisting attachment and method of said patent for safe and efficient use with tilt-up walls."

A principal object of the invention is said to be:

"...to provide a method for using a quick release hoisting attachment of the type described for tilt-up walls characterized by the fact that release of the attachment is not possible until the hoisting shackle part of the attachment is lowered out of its normal upright position."

Figures 1, 3 and 4, hereafter reproduced, are taken from the diagrams published in the patent.
In describing the preferred embodiment with reference to these drawings, the patents says, relevantly:

"The hoisting attachment 64 comprises a plate-like shackle 66 and a ring clutch 68, the latter comprising a spool-like annular member 70 having the spool opening closed off at the underside by an arcuate bottom wall 72, a slot 74 for anchor 14, a locking bolt 76 rotatable in the ring through approximately 180 degrees between locking and unlocking positions, an elongated lever arm 80 attached to locking bolt 76, an aperture 82 in the end of lever arm 80, a pull rope 84 connected through aperture 82 to lever 80 and a generally central opening 86 in the ring clutch whereby the shackle 66 may have a universal pivot action relative to ring clutch 68. The ring clutch 68 is essentially identical with the one shown and described in US patent 3,883,170, differing therefrom in that the lever arm 80 is made many times longer than the one in the reference and in that the aperture 82 and pull rope 84 are provided." (emphasis added)

Figures 3 and 4 are then described as follows:

"Fig.3 shows the hoisting attachment in locked relation to the wall slab 10 prior to applying a lifting force to shackle 66 through lifting cable 88. The lever arm 80 is pre-positioned to extend in the direction of the ultimate top end of the wall slab. Once the lifting action begins, the binding force applied by the anchor 14 through the locking bolt to the body of the ring clutch prevents any relative movement taking place between the lever arm 80 and the ring clutch during the tilt-up movement of the slab.

Fig.4 illustrates the slab in vertical condition at the end of the tilt-up operation. A pulling force is no longer being applied by cable 88 to shackle 66. The shackle nevertheless remains in blocking relation to the lever arm 80. Thus, premature release of the locking means, with possible damaging consequences, is prevented until such time as the hoist operator lowers the cable 88 to drop the shackle 66 to a non-blocking position relative to lever 80. This safety feature of the release mechanism is made possible by making the lever arm 80 long enough so that its unlocking movement can be blocked by shackle 66 and the preorientation of lever 80 in the direction of the upper end of the wall slab."

The claims defining the invention are stated in the patent as follows:

"1. Apparatus for putting up a tilt-up wall section comprising a hoisting cable, a shackle connected to the cable, a ring clutch interconnecting the shackle with an anchor emplaced in the wall section, the ring clutch comprising a ring having a split therein and an arcuate locking bolt rotatable relative to said ring between a locked condition extending across the split and a released condition removed from the split, said bolt having an elongated lever arm extending generally parallel to the wall section during lifting and in the direction of the upper end thereof, a release cable attached to the distal end of the lever arm to remotely operate the lever arm by rotating it outwardly and downwardly to a predetermined degree relative to the wall section to rotate the bolt to the released condition and disconnect the ring clutch from the anchor, and hoisting cable-controlled means to selectively block or allow rotation of the lever arm to said predetermined degree, said means being operated responsive to the application of lifting force to the hoisting cable to block rotation of the lever arm upon the application of lifting force to the hoisting cable and release the arm for rotation upon slacking off of the hoisting cable.

2. The apparatus of claim 1 wherein the shackle is pivotally secured to the ring clutch for movement to and from a position blocking rotation of the lever arm, the hoisting cable-controlled means comprising the shackle which is disposed in blocking relation to the lever arm when the shackle is supported in an upwardly directed position by the hoisting cable and which is disposed in non-blocking relation to the lever arm when it moves to a downwardly directed position in response to the slacking off of said hoisting cable."

The objections to validity
22. The objections to validity, as ultimately argued by Ramset, were as follows:-

1. Anticipation: s.100(1)(g) of the Act. Under this heading, it was said that the alleged invention was not novel in Australia on the priority date having regard to the common general knowledge at that time and also to the fact that the alleged invention had been known and published in Australia before the priority date by virtue of the following publications circulated in Australia: * Advertisements by Burke in the United States publication "Concrete Construction", published in 1977.

* Frimeda advertisements, published in 1977, in the German publication "Betonwerk+ Fertigteil-Technik". * Frimeda advertisements in the 1980 edition of the English "Concrete Year Book". * An alleged publication by a Mr Pritchett giving Mr Bowditch an RFA Systems catalogue and an RFA Systems brochure.

* An oral disclosure by Mr Pritchett to Mr Bowditch, prior to the priority date, of the Frimeda Rapid Lift System and the way in which it operated.

2. That the invention as claimed is not an invention within the meaning of the Act, s.100(1)(d) of the Act. In particularising this objection, Ramset says: "The alleged invention relates merely to a discovery regarding the operation of known apparatus in a situation for which the known apparatus was originally intended. It is no more than the discovery that an extended lever arm of the kind known by the applicant to have been employed before the priority date in the Frimeda Rapid Lift product (the subject of the advertisements)... would be blocked by the shackle until it was lowered upon slacking off of the hoisting cable."

3. That the Letters Patent were obtained upon false suggestions and representations: s.100(1)(k) of the Act. This ground was particularised by Ramset as follows: "(a) The inventor named in the declaration in support of the applications is not the actual inventor and the applicant named in the declaration in support of the application was not entitled to apply. The apparatus of the alleged invention was designed by or on behalf of Siegfried Fricker GmbH.

(b) The specification expressly or implied

(sic) represents that the provision of an elongated lever arm provides extra safety over the clutch described in US patent 3883170. That representation is false because so long as any lifting force is applied to the cable, as it invariably is in practice until the wall panel has been braced, rotation of the lever arm will not occur."

4. That Burke was not a person entitled to apply for the patent: s.100(1)(a) of the Act. Finally, Ramset relies upon s.100(1)(a) of the Act and says that Burke was not a person entitled to apply for the patent. They allege the person named in the application for the Australian patent as the actual inventor, Mr Holt, was not the actual inventor and thus Mr Holt's assignee, Burke, was not the assignee of the actual inventor. Ramset argued the apparatus was designed by or on behalf of Siegfried Fricker GmbH.

With respect to the ingenuity of counsel for Ramset in formulating objections, it may be thought that in truth there is but one objection here capable of being argued, namely, that arising under s.100(1)(g) of the Act. The remaining grounds, however, raise difficult questions of construction of the Act. This was virtually conceded by counsel for Ramset.

Anticipation
24. In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253, Aickin J discussed in some detail (at 289 ff) the history of the English and Australian patents legislation. As his Honour points out, s.86(3) of the Patents Act 1903 (Cth) provided for revocation of a patent on the same grounds as those upon which a patent might at common law be repealed by scire facias. The 1952 Act, for the first time in Australia, set out in statutory form the grounds upon which a patent might be revoked. It seems clear that s.100(1)(g) merely reproduced in statutory form the ground of novelty upon which a writ of scire facias might be granted.

By 1862 at the latest, in the judgment of the Lord Chancellor, Lord Westbury, in Hill v Evans (1862) 4 DE GF and J 288, 45 ER 1195, it was established that where it was alleged that the invention had been anticipated by antecedently published works, it had to be shown that the information as to the alleged invention given by the prior publication was, for the purposes of practical utility, equal to that given by the subsequent patent. As his Lordship said (at 301) (45 ER 1200):

"The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication."

To put it in another way, the subsequent invention must be found within the four corners of the prior publication relied upon as anticipation. Thus, the cases make clear that it is not permissible, where want of novelty is asserted, to find a number of independent disclosures and make a mosaic from those disclosures purporting to show that the claimed new invention was earlier known. The expression "the making of a mosaic" was explained by Aickin J in Minnesota Mining (at 292-293) as being:

"...the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process."

So in 1971 the Court of Appeal, comprising Sachs, Buckley and Orr LJJ, writing of anticipation in the context of s.32(1)(e) of the Patents Act 1949 (UK), said in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at 485:

"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events. The patentee's claim must similarly be construed as at its own date of publication having regard to the relevant surrounding circumstances then existing. If the earlier publication, so construed, discloses the same device as the device which the patentee by his claim, so construed, asserts that he has invented, the patentee's claim has been anticipated, but not otherwise. In such circumstances the patentee is not the true and first inventor of the device and his claimed invention is not new within the terms of s.32(1)(e)."

As the judgment thereafter points out, the question of construction is to be determined having regard to what a reader skilled in the art to which the invention relates would understand and having regard to the relevant state of knowledge at the relevant date. The Court is put in the position of a person of the kind to whom the document is addressed by relevant expert testimony. In the present case, that clearly includes construction engineers and, although I do not think anything turns upon it, extends to include those who use the method of tilt-up operation such as builders and others engaged in the construction industry involved in or with on-site concrete construction.
Anticipation will be shown where carrying out the directions contained in the prior publication inevitably results in something which would infringe the subsequent patent. By way of contrast, as their Lordships said (at 486):

"If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented... A signpost, however clear upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

Later in the page, their Lordships deal with the impermissibility of the making of a mosaic in the following terms:

"Each of the documents (ie those that were alleged to involve an anticipation) must be considered separately. For this purpose it is not permissible to combine earlier unconnected publications to show anticipation, for, if combination of earlier unconnected publications is necessary to assemble all the elements of the invention said to have been anticipated, it follows that no one man has previously made that invention and that the combination is novel."

In R D Werner and Co Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679, a question arose as to whether, where an invention represented an improvement on that which was disclosed in a prior publication, lack of novelty, so far as concerns that improvement, was a relevant matter. In the course of his judgment in that case, Lockhart J traced the history of the grounds of objection to validity of a patent and in particular the grounds now encompassed by "obviousness" or "invention" and "novelty". His Honour pointed out that the courts have not been consistent in distinguishing between novelty and obviousness, and that while the concepts are distinct, they do interact or overlap. Both, in one sense, are to be found in the general concept that for there to be an invention there must be some manner of "new" manufacture. From the historical analysis and review of the case law, his Honour extracted the principle that although the claimed new invention was not totally disclosed by a prior publication, yet if that which was not disclosed represented merely a "workshop improvement", there would be an absence of invention sufficient to support an objection on the ground of want of novelty. A ground of obviousness would, in such a case, also be made out. As his Honour said (at 698):

"'Workshop improvement' is a convenient expression to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity."

Put in another way, while it is clear that lack of inventiveness could not ordinarily be raised where the issue was novelty, it could be where the case was a clear one where the invention claimed obviously possessed no inventive merit whatever.
A slightly different approach (I doubt if much turns upon the difference) was taken by Gummow J, with whom Jenkinson J agreed. All judges were, in the result, of the view that the appeal before them should be dismissed. Gummow J, in his judgment, referred to the comment of Windeyer J in Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 35 ALJR 212 at 217-8, that the separate grounds of attack of novelty and obviousness were "logically precise". In that passage, his Honour had said:

"When want of novelty was asserted, the thing or process claimed as an invention was assumed to be an invention that is the product of the inventive faculties; but it was said that it was not now at the date of the patent, having been earlier invented and disclosed to the public. When want of subject matter, or lack of inventiveness, was asserted the thing or process claimed as an invention was assumed to be a new thing or process not previously disclosed to the public; but it was said that it was not really an invention and thus not a proper subject matter for the grant of a patent."

While Gummow J was of the view that obviousness had no part to play when the issue was novelty, his Honour said that a workshop improvement coming about by ordinary methods of trial and error would not bring about the result that the earlier anticipation ceased to be an anticipation; so too, where there was a substitution of a mechanical equivalent for an inessential integer. His Honour's conclusion is expressed at 716 of the report as follows:

"In my view, in construing the grounds of opposition under the present Act it is not an element in the objection on the ground of lack of novelty that whilst there was no anticipation in the necessary sense, nevertheless the difference in the two is to be disregarded because to come from the alleged anticipation to the alleged invention would not have involved the exercise of inventive ingenuity in the light of common general knowledge."

The same Court heard the appeal in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513.
Again in this case a submission was made that where the difference in the prior art consisted in matters which made no substantial contribution to the working of the thing claimed, or involved no ingenuity or inventive step so that those variations amounted to mere workshop improvements, the patent was invalid for want of novelty. Again, the majority judgment is that of Gummow J, with whom Jenkinson J agreed. Again, I do not think that there is much practical difference between the views expressed by Gummow J and those of Lockhart J.
Gummow J took as a starting point a proposition from the judgment of Aickin J in Minnesota Mining that a prior publication will not amount to an anticipation of an invention claimed as a combination if it discloses some but not all of the integers of that combination. Thus, as his Honour said, it is important to determine what are the essential integers in a combination and to distinguish them from those integers which are not essential. His Honour said (at 527-8):

"Further, where what is in question is an inessential integer, a device which contains the essential integers will fall within the claim, whether or not an inessential integer is replaced by an obviously equivalent device or omitted altogether; hence the expression 'mechanical equivalent'."

As both Lockhart and Gummow JJ observed, the expressions "workshop adjustments" or "workshop improvements" are expressions used in relation to obviousness rather than novelty.
In summarising the law in Australia, Gummow J said (at 531):

"It follows from the English authorities as they have been applied in Australia that, whilst Hill v Evans does not require a literal disclosure and something less may suffice, and whilst an alleged paper anticipation is to be treated as read by a skilled addressee, a disclosure will fall short of an anticipation by description of an effective means by which the combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity and the taking of any inventive step. Any references in this context to workshop improvements or variations should not be understood as importing into this field of novelty concepts of obviousness. There may be room for disagreement upon the English authorities as to what degree of activity by the skilled addressee may be called for in respect of an alleged anticipation for it still to suffice to destroy novelty."

It seems clear, from his Honour's judgment, that the task is to be approached by determining what are the essential integers of the prior publication and what are the essential integers of the alleged invention. If the difference between the two arises from an inessential integer, then there will have been anticipation. The mere replacement of an inessential integer by something which is a mechanical equivalent will not result in the claimed new invention being treated as novel. To that extent, the question whether the difference between the two is merely one involving a mechanical equivalent may have some bearing on the question of whether the integer in question, which is replaced by a mechanical equivalent, is inessential. The emphasis on what is an essential or inessential integer ultimately derives from the generally accepted test for anticipation or want of novelty, enunciated, for example, by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235, namely:

"...whether the alleged anticipation would, if the patent were valid, constitute an infringement".

The determination of what is an essential or inessential integer in an invention will involve, where the question arises in relation to a patent specification, the interpretation of the patent itself. The rules for interpretation of patents are conveniently set out by Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400 and need not be repeated. See too, Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 at 476 and Acme Bedstead Co Ltd v Newlands Brothers Ltd (1937) 58 CLR 689 at 700.
The question that must therefore be addressed in the present case is what are the essential features of the invention the subject of the patent? In answering that question, the specification must be read and interpreted in light of what was generally known at the date of the patent: Marconi v British Radio Telegraph and Telephone Co Ltd (1911) 28 RPC 181 at 218. That case is instructive because the question whether a transformer, on the one hand, or an auto-transformer, on the other, was used for the purpose of securing the linkage between two circuits so that the cumulative effect of resonance might come into play between them, was held to be, in all the circumstances, a matter of indifference, it being said to be a well-known rule of patent law that no-one who borrows the substance of a patented invention can escape the consequences of infringement by making immaterial variations. The test to determine what is an inessential integer can thus be formulated in the language of Lord Diplock in Catnic Components Ltd v Hill and Smith Ltd (1981) 7 FSR 60 at 66 as being:

"...whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."

For Ramset, it was submitted that the provision of a cable to the distal end of the lever to facilitate release of the locking bolt was not an essential feature or integer of the invention the subject of the Australian patent. Emphasis was given to the fact that the essential feature of the invention was the length of the lever arm, it being a requirement that the lever arm be many times longer than that shown in the US patent. When the safety feature emphasised in the Australian patent was considered, it was submitted, the invention should be seen as one designed to prevent premature release of the clutch, not to facilitate release once the concrete had been lifted into position and, accordingly, the provision of the cable was an inessential feature.
For the cross-respondents, on the other hand, it was submitted that the essential ingredients of the patent comprised a combination of a hoisting cable, a shackle, an anchor emplaced in the wall section, a ring clutch, essentially the same as that in the US patent save that it had an elongated lever arm extending generally parallel to the wall section during lifting and in the direction of the upper end, and significantly, for the present case, a release cable attached to the distal end of the lever arm to remotely operate the lever arm by rotating it outwardly and downwardly to a predetermined degree.

With respect, I agree with the cross-respondents. At the very outset of the specifications, emphasis is placed not merely on the issue of safety of use but also on the fact that the invention is "quickly releasable". That this is so is reinforced by the fact that the claims defining the invention themselves stipulate that the invention is to have a release cable attached to the distal end of the lever arm. It seems to me impossible to say that the provision of a release cable is not an essential integer of the invention the subject of the patent.
It is now necessary to turn to the various documents relied upon as anticipations to determine whether any of the apparatus described in them would have infringed the patent. Except as otherwise stated, no question arises between the parties as to the publication of the documents relied upon by the cross-claimants. As the US patent had not been published in Australia at the relevant date, no reliance is placed upon it as being an anticipation.

The Burke advertisement
47. This advertisement, inserted by Burke in two journals, contained in the top quarter two photographs, each obscured by a circular depiction which extended half-way down the advertisement. The photograph on the left side of the page showed a concrete wall in the vertical position to which it had been lifted in what is clearly an edge-lift operation. The right-hand photograph showed an anchor and, although there was some suggestion to the contrary by one of the experts, Mr Finlay, I have no difficulty on the evidence in concluding that the anchor in question is one appropriate for edge-lift operation and not for face-lift operation. Within the circular part of the advertisement appears a depiction of the product advertised (being the Frimeda clutch, although perhaps then manufactured by Burke). It is shown against what may be thought to be a concrete column. Despite the suggestion to the contrary by Mr Finlay, a civil engineer employed by Ramset, I do not think that it can be said that the depiction in the circle is a photograph of the Frimeda clutch being used in a face-lift operation. Essentially, what is shown in the circle appears to me not really to be a photograph at all but merely a drawing of the Frimeda clutch against a background of concrete.

The text of the advertisement was as follows:

"New from Burke:

a lift system for job site precast that's quick, safe, all purpose. RAPID-LIFT meets every criteria for a practical system to improve the handling of all precast shapes, at the plant or on the job. Unique design of its ring clutch meets the simultaneous need for fast, positive hook-ups and releases... for 360 degrees rotation flexibility to allow erection from any direction... and for standard all-purpose hardware that permits continuous operations. Safety standards, too, are materially improved by the Rapid-Lift remote control mechanism - allowing positive anchor release from positions up to 48 feet distance.

Important advantages. But only part of the story of this unique new lift system discovered by Burke engineers in Europe, where it has been an industry standard for years. In stock now at 32 branches coast-to-coast... contact the one nearest you today, for better precasting tomorrow."

The clutch depicted appears to be grasping the anchor and the lever is shown pointing at 90 degrees to the anchor. If the clutch really be attached to the anchor, this is consistent with the diagram depicting an edge-lift operation. It is not consistent with a face-lift operation if the clutch is, in fact, affixed to the anchor, for in a face-lift operation, the lever would be at an angle approaching 180 degrees against the shackle.
If, as I have held, the release cable is an essential integer of the patent, it is not to be found in this advertisement which, therefore, would not constitute an anticipation. If, on the other hand, the release cable is not an essential integer, than I would be of the view that the apparatus the subject of this advertisement would be a breach of the patent. Particularly, it shows a lever, the action of which, in a face-lift operation, would be blocked by the shackle plate against release when the lever is oriented towards the upper end of a wall section when a lifting force is applied to the hoisting cable.
Expert evidence was called on this question from each side. For Ramset, evidence was given by Mr Crisp, a partner in the consulting engineering firm of Mathieson Crisp Pty Ltd, and Mr Finlay, to whom I have already referred. For the cross-respondents, evidence was given by Mr Davis, a shareholder in Advanced, who had no formal qualification but had practical experience in erection of tilt-up buildings, Mr Hymas, a civil engineer practising in partnership in the firm Henry and Hymas, and a Mr Millington, an engineer and managing director of Milleen Constructions Pty Ltd, an engineering, design and construction company carrying on business near Newcastle. Evidence was also given by a Mr Wilson, who had formerly been a construction manager employed by M J Davis Constructions Pty Ltd and had subsequently retired.
I have no doubt that each of these gentlemen gave evidence to the best of his ability and honestly. I had the impression that Mr Wilson had some difficulty, perhaps because of age or hearing, in following the questions asked. To the extent that his evidence was in conflict with the evidence of other witnesses, I would not accept it. At the end of the day, however, there is little difference in the views of the various experts. Each, to some extent, (and this is perhaps inevitable in this kind of case) acted as an advocate for the party calling him, and much of the evidence was in the nature of submission. In a case such as the present, when the invention the subject of the dispute is relatively simple, the expert evidence seems to add little to that which can be simply observed by looking at the documents alleged to constitute anticipation. Nevertheless, I have taken their evidence into account and, in interpreting the material said to constitute an anticipation, I have been guided by it.
In summary, I would conclude that the Burke advertisements did not show a face-lift operation, although the language used was not necessarily inconsistent with the use of the apparatus for both edge-lift and face-lift purposes. The advertisements showed no release mechanism, although they did refer to the "Rapid-Lift Remote Control Mechanism" without indicating what such mechanism was or how it would work. The advertisements do show a lever sufficiently long so that its unlocking movement would in operation be blocked by the shackle. Having regard, however, to the absence of a release cable, the advertisements do not constitute an anticipation of the invention the subject of the patent.

Frimeda advertisement in publication Betonwerk+ Fertigteil-Technik
54. This advertisement contained nine photographs, one of which was obscured by words shown in a circle. At the top of the advertisement in German appeared the words "Transportieren Fernauslosen Aufstellen Abheben", which translated mean to transport, to release remotely, to erect and to lift. Three of the photographs at the bottom of the advertisement showed the Frimeda clutch without cable release, its release demonstrated by hand. These photographs clearly show the lever opening and closing the arcuate bolt of a Frimeda clutch attached to an anchor embedded in concrete. Again, the lever is sufficiently long that its unlocking movement would be blocked in operation by the shackle.

The remaining photographs reveal how the Frimeda clutch works. All but one of those photographs are clearly edge-lift operations. The remaining photograph is small and although there was some dispute among the witnesses as to whether a face-lift operation was depicted, I think it probably was. Certainly the fact that the clutch could be used for face-lift operation is suggested by the photograph. None of the photographs seem to indicate a remote release using a cable such as a rope. Only Mr Finlay, whose evidence on the matter I do not accept, suggested he thought a rope release was disclosed. It is possible that a pneumatic release apparatus is disclosed by that photograph, although the photograph is so small that I could not be certain of this. In my view, a remote release, constituted by a cable attached to the lever, can not be found in the advertisement and for this reason again, a necessary integer is missing.
But for the absence of the cable for remote release, I would be of the view that the disclosure of the invention in the photograph revealed an invention which would have infringed the patent in suit.
Another advertisement in the same publication showed the device with an anchor which I find to be an edge-lift anchor. This depiction contained again no cable attached to the lever. For the same reasons, I would not find this other advertisement to be an anticipation.

The RFA Systems advertisement
58. This advertisement, which appeared in the Concrete Year Book of 1980, contained a depiction of the Frimeda Rapid-Lift clutch. Little can be deduced from the depiction of the clutch. It appears to be attached to an edge-lift anchor. The lever is sufficiently long that, in use in a face-lift operation, premature release would be blocked by the shackle. Next to the depiction, which shows little as to how the arcuate bolt would operate, there is a depiction (rather like a cartoon drawing) of a crane lifting a concrete beam. A rigger is depicted holding a rope in his hand. I accept the submission of the cross-respondent, consistent with the evidence of some of the expert witnesses, that this appears not to be a remote release rope but rather a tag or guideline. Mr Crisp, in his evidence, expressed the view that the rope was for remote release, but did so based upon knowledge outside the scope of the advertisement itself. In my view, Mr Crisp's evidence on this matter should not be accepted. At the very best, from the point of view of the cross-claimant, the picture is ambiguous. In my view, it does not constitute anticipation.

The evidence of Mr Bowditch
59. Ramset relied also upon an oral disclosure said to have been made to Mr Bowditch, the Managing Director of SVC Precast Pty Ltd, a member of the SVC Group which manufactures a range of precast concrete products, by a Mr Pritchett of RFA Systems Ltd of the United Kingdom, and upon two documents said to have been left by Mr Pritchett with Mr Bowditch.

Mr Pritchett had visited Sydney in the first full working week of January 1980. He had with him and gave to Mr Bowditch, a colour brochure describing the Frimeda Rapid-Lift system and a catalogue containing a diagram of the Frimeda Rapid-Lift system. According to Mr Bowditch's evidence, Mr Pritchett, during the meeting in Australia with Mr Bowditch, described, by reference to the colour brochure, the individual components of the Frimeda Rapid-Lift system and the way in which it operated. He said that Mr Pritchett had described the clutch head (the ring in which there is a split), the bolt, which is rotatable in the ring clutch, and that Mr Pritchett had referred to the lever arm being of such length that it could not pass through the shackle plate on being rotated, as well as referring to the shackle plate itself. According to Mr Bowditch, Mr Pritchett discussed the safety aspects of the product, including the fact that the bolt could not be rotated whilst a lifting force was applied to the slings. According to Mr Bowditch's affidavit, Mr Pritchett also told Mr Bowditch that the system could be operated remotely. Mr Pritchett is further said to have commented that if the system was not being operated remotely, the clutch could be attached in such a way that the lever arm part of the bolt was on the inside of the sling. If this were done, the system could not be operated remotely.
With leave, Mr Bowditch supplemented his affidavit evidence by oral testimony. He was asked what Mr Pritchett had said to him on the subject of the remote operation of the apparatus. He said that Mr Pritchett had told him that the device could be operated remotely by attaching a rope to the lever arms on the circular bolts.
In preparation for the hearing, Mr Bowditch had personally prepared a draft affidavit, having been asked to write down everything that Mr Pritchett had told him. In the affidavit prepared from that draft, in a passage objected to but which was subsequently tendered by the cross-respondent, Mr Bowditch, after saying that Mr Pritchett had told him that the system could be operated remotely, added:

"...from my observation of the Frimeda Rapid-Lift system in use in Stuttgart to which I have referred above in paragraph 3, I understood this to refer to a remote release system in which a rope is attached to the lever arm for disengaging the ring clutch from the anchor from the ground."

No reference was made, in the affidavit filed, of Mr Pritchett having said in the conversation dealt with in the affidavit anything about the method of remote release.
I formed the view that Mr Bowditch, despite his protestations to the contrary, had no clear recollection of what Mr Pritchett had said and I reject his oral evidence as far as it concerned the cable for remote release. That leaves in evidence merely the comment by Mr Pritchett that the system could be operated remotely. Even if the oral disclosure were taken together with the documents which Mr Pritchett left with Mr Bowditch, there is no disclosure of a cable attached to the lever being used to unlock the clutch. The documents left with Mr Bowditch add nothing to the publications previously analysed. The catalogue contains the same depiction of the clutch and drawing of a crane lifting a concrete beam with a rigger holding a guide rope as has already been described. The brochure showed a photograph of the ring clutch and an edge-lift spread anchor with the words:

"LIFTING AND HANDLING PRECAST CONCRETE Frimeda Rapid Lift System

Designed to handle all types of precast concrete unit safely and economically with speed and simplicity. It can be manually operated or released by remote control

The Ring Clutch

Consisting of a Clutch Head, bolt and shackle it is free to move in any direction for oblique pulls and turning."

There is in this brochure a depiction of the clutch attached to an anchor with a hook from a crane attached to the shackle. The operation so depicted is clearly an edge-lift operation.
The bald reference to remote control release again does not depict the integer of a cable attached to the lever. In my view, the failure to depict or describe a cable attached to the lever prevents both these publications, taken together with the oral explanation made by reference to them, constituting anticipations of the Australian patent.

Ground 2: That the apparatus in the patent discloses no invention
67. This ground of objection derives from s.100(1)(d) of the Act which makes it a ground for revocation:

"(d) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, is not an invention within the meaning of this Act;".

"Invention" is defined in s.6 of the Act as meaning: "...any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention;".

Under this rubric, Ramset sought to argue that the apparatus the subject of the patent in suit involved no advance beyond the limits of the prior art, as shown in the US patent and advertisements to which reference has already been made.
It was submitted that the Frimeda ring clutch was capable, without modification, of being used for all lifting operations, including face-lift tilt-up operations. It was said that in a face-lift tilt-up operation the clutch could only be affixed to the anchor in one of two ways. One way was with the lever arm pointing towards the lower end of the wall when lifting was in progress. In this way, when a lifting force was no longer being applied and the slings were lowered, release of the clutch bolt, which would require an upwards and outwards rotation, would be impeded by the lever arm and consequently this would not be a practical way of using the clutch. The other way, however, was with the lever arm pointing towards the upper end of the wall when lifting was in progress. In this latter case, when the lifting force was applied to the shackle, it would inevitably block the rotation of the lever arm. So it was said that the observation of the inevitable consequence of the working of the known device accounted to no more than a mere discovery and involved no new product, no new result, no new process and no new combination for producing an old product or an old result.
The first difficulty facing Ramset involves a question of construction of s.100 and the extent to which s.100(1)(d) can be used to cover the same ground as is covered by s.100(1)(e) in a case where s.100(1)(e) ("obviousness") could not be made out.
As has already been explained, the grounds of revocation of a patent contained in s.100 of the Act are a statutory enactment of the grounds of revocation of a patent by a writ of scire facias at common law. In essence, all of these grounds might be said to be no more than a recognition of the need for a patent to comply with s.6 of the Statute of Monopolies 1624. Among the common law grounds were novelty and obviousness, both concepts inherent in the requirement that a patent disclose a new manner of manufacture. The statutory grounds must be read against the background of the considerable body of case law which had by 1952 been decided concerning novelty and obviousness. What may be thought to be two aspects of the idea of "new manner of manufacture" had become quite separate grounds with quite separate meanings, albeit that there could be some overlap between them (see per Lockhart J in R D Werner and Co Inc at 698). Section 100(1)(e) of the Act which set out the statutory ground of obviousness in the 1952 Act is in the following terms:

"that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim."

The emphasis in s.100(1)(e) is upon the prior art as known or used in Australia. No such qualification is explicit in s.100(1)(d). Section 100(1)(e) can not be relied upon in the present case because nothing was known in Australia as at the priority date about the Frimeda product, nor had it as at that date been used in Australia.
As a matter of construction, in its statutory context, s.100(1)(d) could not be construed to cover the whole field of operation of s.100(1)(e) for so to do would leave no room at all for the operation of s.100(1)(e). Section 6 of the Statute of Monopolies, enacted in 1624, is in the following terms:

"Provided also, and be it declared and enacted, that any declaration before mentioned shall not extend to any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this Realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, so as also they be not contrary to the law or mischievous to the State, by raising prices of commodities at home, or hurt of trade, or generally inconvenient."

There will be no invention if the subject matter of the patent claim is not a manner of manufacture. It is unnecessary here to consider the meaning of "manufacture" in this context. Suffice it to say that s.100(1)(d) would permit an applicant for revocation to argue that no manner of manufacture was involved. The more difficult question is whether the use of the word "new", incorporated by reference to s.100(1)(d), permits argument to be directed at questions of obviousness or non-inventiveness.

It may be noted that the word "alleged" in s.6 qualifies the adjective "new" in the expression "a manner of new manufacture", so that it might be said that it is sufficient if the patent were to allege that it was new, to satisfy the test of being a manner of new manufacture, if indeed it be manufacture at all, cf National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 at 261-2. However, as is pointed out in the joint judgment of Dixon CJ, Kitto and Windeyer JJ in that case (at 262), even if the process is within the concept of manufacture, the Commissioner of Patents is not bound to accept the allegation of the applicant that it is "new" if it is apparent, on the face of the specification when properly construed, that the allegation is unfounded.
The approach so suggested provides a construction of s.100(1)(d) and s.100(1)(e) that gives scope for each. Under s.100(1)(d), a patent may be revoked if it is not concerned with a manner of manufacture at all. It may also be revoked if, on its face, it is outside the whole scope of what is known as invention, because it is nothing but a claim for a new use of an old substance (see per Lord Buckmaster in Re Billet's Application (1915) 32 RPC 348). Beyond that, matters of obviousness fall to be considered under s.100(1)(e).
Translated into the present case, this means that it may be permissible in an application for revocation brought under s.100(1)(d) to consider whether, having regard to the US patent which is referred to expressly in the patent in suit, the patent in suit properly contains an element of inventiveness sufficient to say that there is an inventive step beyond the prior limits of the art shown in the US patent.
Accepting for the purposes of the present case that an argument such as is suggested above may properly be brought under s.100(1)(d), there are arguably three differences between the US patent and the patent in suit. The first is that the US patent depicts a lever which is extremely small and which would not lock in operation. The patent specification of the US patent contains no specification as to the size of the lever. By contrast, the patent in suit, while not wholly specific as to the size of the lever, at the least requires that the lever be sufficiently long that the unlocking movement is blocked in operation by the shackle. Second, the US patent does not directly refer to face-lift tilt-up applications and seems more appropriate for edge-lift applications. Third, the US patent does not refer to the use of a cable attached to the lever operating as a remote release. On the other hand, as has been seen, there is a reference to a rather more complicated remote release mechanism attached to the lever and, in my view, that reference is sufficient to include the simpler rope remote release.
It is true that subsequent literature of Frimeda, showed the lever longer than that shown in the US patent. But, if I am correct in restricting the ground in s.100(1)(d) to what is shown on the face of a patent itself, then no account under this ground can be taken of the subsequent literature. If I were not correct and regard could be had to material not shown in the specifications of the patent in suit, then I would be of the view that no inventive step was to be found in the patent in suit.
I should note an argument made in this connection that the elongation of the lever, to a point where it was at least long enough to be blocked by the shackle, was a self-evident step. In my view, this is not correct. It is true that it is a step which would be easy to follow once it was pointed out, but it does not follow from this that it is non-inventive in the sense used in the cases. In particular, I accept the expert evidence of the cross-respondents that the elongation of the lever produced efficiency in operation of the clutch by permitting greater force to be used when, on occasions, by virtue of friction or otherwise, the application of force is required to open the clutch bolt and remove it from the anchor embedded in the concrete.

Whether the applicant for the patent was entitled to apply for it.
81. Section 100(1)(a) makes it a ground of revocation that:

"...the applicant was not a person entitled to apply for the patent, so far as the invention is claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be;".

Under this head the cross-claimant submits that the patent should be revoked because Mr Holt, or for that matter Burke, was not a person entitled to apply for a patent under s.34. For present purposes, the only relevant persons to be considered under s.34 would be the actual inventor or the assignee of the actual inventor. If Mr Holt was not the actual inventor but in fact Mr Fricker was, then clearly neither Mr Holt nor Burke could have applied for a patent in Australia since neither was then either the actual inventor or the assignee of the actual inventor.
There is no definition of the expression "actual inventor" in s.6 of the Act which is of assistance in resolving the present question. All that section does is to exclude from the expression a person merely importing an invention from abroad. The question then becomes one of fact, namely, who actually invented the apparatus the subject of the patent claim? It will be observed that this ground for present purposes clearly overlaps the grounds in s.100(1)(d) and s.100(1)(e). For reasons already indicated, however, it could not be assumed that s.100(1)(a) was intended to cover the whole ground covered by either or both of sub-secs.(1)(d) and (1)(e) of s.100.
Reliance was placed upon the fact that Burke had obtained a licence from the German company of the subject matter of the US patent and had received from that company a document to which I have earlier referred, the Frimeda manual. This document contains technical instructions for what it describes as the Frimeda Rapid Lift System. Its front page contains a depiction of the clutch with an edge-lift anchor and the drawing of a rigger holding a rope attached to a concrete beam being lifted by an edge-lift lift, virtually identical to the cartoon appearing in the RFA Systems advertisement discussed above. Inside also is a reproduction of the Frimeda advertisement discussed earlier, save that the text appears in English.
There seems little doubt that most of the diagrams in the publication are concerned with edge-lift operations. I place little emphasis upon this because, in my view, edge-lift operations and face-lift operations were both well known overseas in 1980, so far as the evidence discloses. The clutch is clearly adapted for both operations. The ring clutch is described in some detail in the publication. It is depicted with a hole in the lever and with a bolt sufficiently long to block the clasp, but not with any cable attached directly to the lever. However, there is another item referred to as "Ring clutch with manual remote-control release". This depicts the ring clutch and a manual remote control release as one unit. The manual release is a Bowden cable and is not affixed to the lever. There is also an item "Ring clutch with pneumatic remote control release" depicted as one unit.
At p 45 of the publication there is announced the development of what is referred to as "...a very simple rope-operated remote-control release... for disengaging the ring clutch from the... anchor... at a safe distance." The depiction shows that a rope has been attached to the lever. However, the system, far from being simple, seems relatively complicated and uses rope pulleys, clips and counter-weights. Mr Hymas expressed doubt, clearly on rational grounds, as to whether the system would work at all. Certainly, it is difficult to see from the drawing how the depiction would operate in practise.
There has been no case where s.100(1)(a) has been used to cover the field otherwise covered by s.100(1)(d) or s.100(1)(e). It may well be that s.100(1)(a) could be invoked in a case where the subject matter of the patent was wholly a copy of an apparatus invented by someone else and contained nothing at all which could possibly be said to involve an improvement or inventive step. The present is not such a case. The inventiveness in the patent in suit arguably lies in the use of the apparatus in face-lift, rather than edge-lift, construction, but even if this were not sufficiently inventive, it lies in the use of a simple rope attached to the lever in a face-lift operation to operate as a remote release. That clearly involves, in my view, an inventive step, at least for the purposes of negating that the Australian patent is but a copy of the US patent, albeit that with the benefit of hindsight it can be seen to be self-evident. Likewise, the extension of the lever to ensure that the bolt could not unlock in operation is sufficiently inventive to ensure that the invention the subject of the patent in suit is more than a mere copy of the US patent.

Conclusion
88. It follows, in my view, that the cross-claimant has not made out a case that the patent in suit should be revoked. It has made out none of the grounds contended for. In these circumstances, the matter must now proceed for trial on the issue of infringement which, I understand, is to be heard separately from the issue of damages. I would order that the matter be listed on a date convenient to counsel when directions will be given for the further disposition of the matter. The cross-claimant should pay the cross-respondent's costs of the cross-claim.

[1993] FCA 236

23 APRIL 1993