Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd

HIGH COURT OF AUSTRALIA

BRENNAN CJ,
GAUDRON, McHUGH, GUMMOW AND KIRBY JJ

ADVANCED BUILDING SYSTEMS
PTY LIMITED & ANOR  APPELLANTS

AND

RAMSET FASTENERS (AUST) PTY LIMITED     RESPONDENT

Advanced Building Systems Pty Limited v Ramset Fasteners(Aust) Pty Limited (S19-1997) [1998] HCA 19

26 March 1998

ORDER

1. Appeal allowed with costs.

1. Orders of the Full Court of the Federal Court set aside.

1. Matter remitted to the Full Court for determination of the remaining grounds of appeal to that Court and, if necessary, the redetermination of the cross-appeal to that Court.

On appeal from the Federal Court of Australia

Representation:

A J L Bannon SC with H R Sorensen for the appellants (instructed by Astridge & Murray)

R C Macaw QC with D M Yates for the respondent (instructed by
Davies Ryan De Boos)

Notice:  This copy of the Court’s Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS

Advanced Building Systems Pty Limited & Anor

v Ramset Fasteners (Aust) Pty Limited

Patents - Revocation - Whether an "invention" within meaning of Act - Relationship between obviousness and lack of novelty - Meaning of "inventive merit".

Patents Act 1952 (Cth), s 100.

BRENNAN CJ, GAUDRON, McHUGH AND GUMMOW JJ.

Introduction

1. Standard Patent No 544832 ("the Patent") was issued under the Patents Act 1952 (Cth) ("the Act") to a United States corporation, The Burke Company ("the second appellant"), and was sealed on 28 October 1985. The term of the Patent was 16 years commencing on 27 August 1981. The basic application had been filed on 23 October 1980 and it is that date which provides the priority date by which questions of novelty and obviousness of the claims are to be assessed. By registered assignment dated 22 November 1990, the second appellant assigned the Patent to Advanced Building Systems Pty Limited ("the first appellant").

2. The invention claimed in the Patent relates to hoisting attachments and methods for erecting prefabricated concrete walls on building sites.  There are two claims defining the invention.  The second is narrower than the first.  It is unnecessary for the issues which arise on this appeal to set out their text.

3. In proceedings instituted in the Federal Court of Australia, the appellants alleged that Ramset Fasteners (Aust) Pty Limited ("the respondent") had infringed the claims of the Patent by the selling or supplying by way of hire of two lift systems for tilt‑up walls.  The components of these systems were described as the "Ramset Frimeda Rapid Lift System" and the "Ramset Face Lift Tilt Up System" ("the Ramset systems").

4. The appellants also alleged that the respondent had failed to inform its customers that the use of components of the Ramset systems might infringe the Patent. This failure was alleged to constitute misleading or deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 (Cth) ("the Trade Practices Act"). By its defence, the respondent denied infringement and contravention of s 52 of the Trade Practices Act. The respondent…