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Aspirating IP Limited v Vision Systems Limited

Aspirating IP Limited v Vision Systems Limited

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FEDERAL COURT OF AUSTRALIA
Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061

Citation: Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061

Parties: ASPIRATING IP LIMITED v VISION SYSTEMS LIMITED

File numbers: VID 1042 of 2008
SAD 59 of 2005

Judge: BESANKO J

Date of judgment: 30 September 2010

Catchwords:
INTELLECTUAL PROPERTY — PATENTS — appeals under s 60 of the Patents Act 1990 (Cth) (‘the Act’)— opposition to grant of standard patent for smoke detection system using bypass arrangement — what was priority date of claim — whether claim fairly based on earlier patent application filed in United Kingdom pursuant to s 43 of the Act and Patents Regulations 1991 (Cth) r 3.12 — construction of claims — whether description of claim in specification ‘main duct means in the form of sampling duct means of a smoke detection system’ included air conditioning duct or only dedicated sampling pipe — whether alleged invention was novel pursuant to ss 7(1) and 18(1) of the Act — what was prior art base for purpose of Schedule 1 of the Act — whether prior use of relevant information had been ‘publicly available’ pursuant to Schedule 1 of the Act — whether information made publicly available where only disclosed between members of company — whether smoke detection system made publicly available on secured site where public access restricted — whether smoke detection system made publicly available via patent filed in 1965 — whether 1965 patent should be read at date of its issue or at priority date — whether alleged invention involved an inventive step pursuant to ss 7 and 18(1)(b)(ii) of the Act — what were attributes of person skilled in the relevant art — what was common general knowledge at the priority date — whether alleged inventive step was obvious — whether witnesses for respondent who knew of claims in specification before giving opinion on inventive step able to give evidence as to whether alleged inventive step was obvious — whether applicant entitled to grant of patent for the invention pursuant to ss 15 and 59 of the Act — whether applicant had derived title to the invention from the inventor

HELD: Priority date of claim was date of filing of patent application in United Kingdom because United Kingdom application contained real and reasonably clear disclosure of relevant bypass arrangement. Proper construction of ‘main duct means in the form of sampling duct means of a smoke detection system’ included air conditioning ducts, and therefore major claims in specification lacked novelty because smoke detection systems using air conditioning ducts to draw air were in common use before priority date. Claims 1-18 inclusive in specification did not involve an inventive step.

Legislation: Evidence Act 1995 (Cth) s 56, s 135
Federal Court Rules O 58 r 5A
Patents Act 1990 (Cth) ss 3 (Schedule 1), 7, 15, 18, 40, 43, 59, 60
Patents Amendment Act 2001 (Cth)

Cases cited:
Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411, considered

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2010] FCA 1061
Decision Date: 30 September 2010

CaseChat Overview and Summary

Aspirating IP Limited appealed against a decision of the Commissioner for Patents that their patent application was invalid. The dispute centred on the validity of a patent application for a smoke detection system using a bypass arrangement. The case was heard and determined in the Federal Court of Australia. The primary issue before the court was the priority date of the patent application, specifically whether the claims in the Australian patent application were fairly based on an earlier patent application filed in the United Kingdom. The court had to determine whether the claims in the Australian patent application were novel and involved an inventive step as required under the Patents Act 1990 (Cth). Additionally, the court examined the construction of certain terms in the claims and the prior art base for assessing novelty and inventive step.

The court found that the priority date of the claim was the date of filing of the patent application in the United Kingdom because that application contained a real and reasonably clear disclosure of the relevant bypass arrangement. The court also determined that the term 'main duct means in the form of sampling duct means of a smoke detection system' included air conditioning ducts, meaning that the major claims in the specification lacked novelty as smoke detection systems using air conditioning ducts to draw air were in common use before the priority date. Consequently, the claims 1-18 inclusive in the specification did not involve an inventive step. The court concluded that the applicant was not entitled to the grant of a patent for the invention.

The court ordered that each party has leave to make submissions as to the final orders to be made having regard to these reasons.

Orders

Orders of the court

Each party has leave to make submissions as to the final orders to be made having regard to these reasons.

Note:

Background

Background to the litigation

I turn now to address facts which are not in dispute.The facts I can start with facts which were not in dispute. In the early 1990s, Glaxo, a large pharmaceutical company, was planning to build a installation at Stevenage in the United Kingdom and the buildings which were to comprise the installation needed to have fire or smoke detection systems. The project was a very large one and there was evidence before me that from IEI (UK)’s point of view it was the biggest single-site project opportunity after the Channel Tunnel project. Glaxo engaged Ove Arrup and Partners to prepare engineering drawings and specifications for the project. Wormald Britannia were Glaxo’s preferred installer as far as the fire or smoke detection systems were concerned. At some stage, IEI (UK) was approached to tender for the supply of smoke detection systems for the project. As I understood the evidence, IEI (UK)’s usual products were not suitable for the project because they were too expensive for what was required. A smoke detection system with a lower sensitivity than normal would be adequate for the project. It was considered that a particular product would have to be developed for the project. In 1992, there were a number of meetings between representatives of IEI (UK) and Wormald Brittania. The representatives of IEI (UK) from time to time were Mr Fox, Mr Scully and Mr Frank Trubshaw and the representatives of Wormald Brittania were (principally) Mr Raymond Walsh and Mr Michael North. Mr Fox was very keen for a product he or Mr Girling had developed called the E7 AZ PYR to be offered to Wormald Brittania for use in the project. That product was really a composite of parts of other products that were then on the market. It included a detector chamber from Autronica A5 of Norway, being the same device which was used in the AutroSense BW 50 detector, and a control panel taken from the VESDA model E700D. Dr Cole did not support the idea of the E7 AZ PYR being offered to Wormald Brittania for use in the Glaxo project. The product to be offered to Wormald Brittania became a matter of serious dispute between Mr Fox and Dr Cole and correspondence in October and November 1992 recording that dispute was tendered in evidence. In October 1992, Dr Cole travelled from Australia to the United Kingdom and on 30 October 1992 he summarily dismissed Mr Fox from his employment by IEI (UK). On Saturday 1 November 1992, there was a meeting at the premises of IEI (UK) at Stevenage (“the Stevenage premises”) which was attended by Mr Fox, Dr Cole and others. The purpose of the meeting was to enable Mr Fox to put his case for reinstatement. Some time later, IEI (UK) secured a contract to supply smoke detection systems for the Glaxo project and the product supplied under the contract was called a VESDA Scanner. Mr Scully was employed by IEI (UK) from July 1989 to the end of 1996. For the last four years of his employment he was general manager of the company. In 1992 he was employed as the company’s technical manager.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

I reject the respondent’s third submission. In my opinion, a detection module of the nature described in the claims is a development “along the same line of thought” as that which constitutes or underlies the invention identified in the UK Basic (see Re Stauffer at 54 per Buckley LJ) and therefore may be regarded as fairly based on the UK Basic.Conclusion In my opinion, the priority date for all the claims in the Specification is 30 July 1993. Before leaving the topic of priority date, in case I am wrong in rejecting the respondent’s submission that the priority date is 1 August 1994, I should indicate my view as to whether the claims in the specification had been anticipated by the article in the Fire Surveyor. I do not need to refer to the Stratos Technical manual because counsel for the respondent accepted that of the two, the article in the Fire Surveyor was the more comprehensive. The evidence before me establishes that the relevant volume of the Fire Surveyor was received by the University of New South Wales on 24 November 1993 and it was available to the public shortly after this date. Mr Fox was cross-examined about the article at some length. There is no need for me to go through the details. I am satisfied that the article disclosed all of the features of claims 1, 3, 4, 6, 9, 10, 12, 15, 16 and 18. There was a dispute between the parties as to whether the article also disclosed the features of claims 2, 5, 7 and 13 (and dependent claims) and, in particular, a detection module of the nature described in those claims. Having regard to the diagrams shown in the article, I think that it did do that. Those diagrams show a main duct entering a box and the words of the article refer to a bypass arrangement which means “only a relatively small, representative sample of the air sample entering Stratos is passed through the dust separator and thence into the detector chamber”.THE CONSTRUCTION OF THE CLAIMS IN THE SPECIFICATION Before considering novelty and inventive step it is necessary to construe certain words in the claims. The legal principles which are relevant to the task of construction are well established. In Welch Perrin and Company Proprietary Limited v Worrel (1961) 106 CLR 588 (“Welch Perrin”) at 610, Dixon CJ, Kitto and Windeyer JJ identified the following principles. First, a specification is not to be read in the abstract; it is to be construed in the light of the common knowledge in the art before the priority date (see also in this regard, Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1 (“Kimberly-Clark Australia”) at 16 [24]). Secondly, in construing claims in a specification a court is not construing a written instrument operating inter partes, but rather a public instrument the validity of which depends on the instrument defining a monopoly in a way not reasonably capable of being misunderstood (see also Kimberly-Clark Australia at 19 [34]). Thirdly, a specification is made up of several parts and those parts have different functions. It is not legitimate to narrow or expand the boundaries of a monopoly as fixed by the words of a claim by reference to other parts of the specification. Similarly, where the words of a claim are clear they are not to be made obscure by reference to statements in other parts of the specification.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Citation:		Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061
Parties:		ASPIRATING IP LIMITED v VISION SYSTEMS LIMITED
File numbers:		VID 1042 of 2008 SAD 59 of 2005
Judge:		BESANKO J
Date of judgment:		30 September 2010
Catchwords:		INTELLECTUAL PROPERTY — PATENTS — appeals under s 60 of the Patents Act 1990 (Cth) (‘the Act’)— opposition to grant of standard patent for smoke detection system using bypass arrangement — what was priority date of claim — whether claim fairly based on earlier patent application filed in United Kingdom pursuant to s 43 of the Act and Patents Regulations 1991 (Cth) r 3.12 — construction of claims — whether description of claim in specification ‘main duct means in the form of sampling duct means of a smoke detection system’ included air conditioning duct or only dedicated sampling pipe — whether alleged invention was novel pursuant to ss 7(1) and 18(1) of the Act — what was prior art base for purpose of Schedule 1 of the Act — whether prior use of relevant information had been ‘publicly available’ pursuant to Schedule 1 of the Act — whether information made publicly available where only disclosed between members of company — whether smoke detection system made publicly available on secured site where public access restricted — whether smoke detection system made publicly available via patent filed in 1965 — whether 1965 patent should be read at date of its issue or at priority date — whether alleged invention involved an inventive step pursuant to ss 7 and 18(1)(b)(ii) of the Act — what were attributes of person skilled in the relevant art — what was common general knowledge at the priority date — whether alleged inventive step was obvious — whether witnesses for respondent who knew of claims in specification before giving opinion on inventive step able to give evidence as to whether alleged inventive step was obvious — whether applicant entitled to grant of patent for the invention pursuant to ss 15 and 59 of the Act — whether applicant had derived title to the invention from the inventor HELD: Priority date of claim was date of filing of patent application in United Kingdom because United Kingdom application contained real and reasonably clear disclosure of relevant bypass arrangement. Proper construction of ‘main duct means in the form of sampling duct means of a smoke detection system’ included air conditioning ducts, and therefore major claims in specification lacked novelty because smoke detection systems using air conditioning ducts to draw air were in common use before priority date. Claims 1-18 inclusive in specification did not involve an inventive step.
Legislation:		Evidence Act 1995 (Cth) s 56, s 135 Federal Court Rules O 58 r 5A Patents Act 1990 (Cth) ss 3 (Schedule 1), 7, 15, 18, 40, 43, 59, 60 Patents Amendment Act 2001 (Cth)
Cases cited:		Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411, considered