Atlantis Corporation Pty Ltd v Schindler
[1997] FCA 1105
•24 OCTOBER 1997
FEDERAL COURT OF AUSTRALIA
PATENTS - validity - construction of claims - drainage cell - apparatus claims - impermissible to read down apparatus claims by reference to purpose of drainage - distinction between reading down apparatus claim by reference to purpose of drainage and a “limitation by result” which forms part of an integer of apparatus described - lack of fair basing of apparatus claims on body of complete specification - lack of fair basing of apparatus claims on provisional specification - priority date, date of lodgment of complete specification - lack of novelty as at that date - misrepresentation and false suggestion.
Patents Act 1990 (Cth) ss 15(1) (a); 40(2), (3); 138(3) (f)
Electric and Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 - applied
Ingersoll Sergeant Drill Co v Consolidated Pneumatic Tool Co Ltd (1908) 25 RPC 61 - applied
Poseidon Industri AB v Cerosa Ltd [1982] FSR 209 - applied
Ransburg Co v Aerostyle Ltd [1968] RPC 287 - applied
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 - applied
Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 - applied
Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 - applied
Decor Corporation Pty Ltd v Dart Industries (1988) 13 IPR 385 (FCA/FC) - applied
Coopers Animal Health Australia Pty Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 (FC) - applied
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) - applied
Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 (FCA/FC) - applied
ATLANTIS CORPORATION PTY LIMITED & ANOR v PETER SCHINDLER & ORS
NG 284 OF 1997
LOCKHART, WILCOX, LINDGREN JJ
24 OCTOBER 1997
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NG 284 OF 1997
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN:
ATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681)
FIRST APPELLANTHUMBERTO URRIOLA
SECOND APPELLANTAND:
PETER SCHINDLER
FIRST RESPONDENTINNOVATECH (AUSTRALIA) PTY LIMITED (ACN 002 287 023)
SECOND RESPONDENTDESINAN SERVICES PTY LIMITED (ACN 057 580 793)
THIRD RESPONDENTLUCY MARY SCHINDLER
FOURTH RESPONDENTBRUNO DESINAN
FIFTH RESPONDENTPETER SCHINDLER
CROSS-APPELLANTATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681)
FIRST CROSS-RESPONDENTHUMBERTO URRIOLA
SECOND CROSS-RESPONDENTJUDGES:
LOCKHART, WILCOX, LINDGREN JJ
DATE OF ORDER:
24 OCTOBER 1997
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
The appeal be dismissed.
The cross-appeal be allowed.
Order 1 made on 22 December 1995 in proceeding No 1327 of 1994 in the Equity Division of the Supreme Court of New South Wales (“the Supreme Court proceeding”) be set aside and in lieu thereof it be ordered as follows:
“1.The Court records, pursuant to Pt 31 r 5 of the Supreme Court Rules that the separate questions ordered on 30 June 1995 to be determined separately, are decided as follows:
Question 1yes;
Question 2 unnecessary to decide;
Question 3 yes;
Question 4 unnecessary to decide;
Question 5 yes;
Question 6 unnecessary to decide; and
Question 7 yes.”
Orders 2 and 3 made on 22 December 1995 in the Supreme Court proceeding be set aside.
Orders 1, 4 and 7 made on 27 March 1997 in the Supreme Court proceeding be set aside.
Australian Patent No 593085 be revoked.
The matter be remitted to the Supreme Court of New South Wales for the purpose of
(a)assessing whether any and, if so, what damages should be awarded to the respondents;
(b)dealing with any notices of motion that are outstanding or require reconsideration in the light of the decision of this Court, in which respect, in particular, order 9 below applies.
The appellants pay the costs of the respondents of the proceedings at first instance and of the appeal and cross-appeal.
Liberty to apply be reserved.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NG 284 of 1997
BETWEEN:
ATLANTIS CORPORATION PTY LIMITED
FIRST APPELLANTHUMBERTO URRIOLA
SECOND APPELLANTAND:
BETWEEN:
AND:
PETER SCHINDLER
FIRST RESPONDENTINNOVATECH (AUSTRALIA) PTY LIMITED
SECOND RESPONDENTDESINAN SERVICES PTY LIMITED
THIRD RESPONDENTLUCY MARY SCHINDLER
FOURTH RESPONDENTBRUNO DESINAN
FIFTH RESPONDENTPETER SCHINDLER
CROSS-APPELLANTATLANTIS CORPORATION PTY LIMITED
FIRST CROSS-RESPONDENTHUMBERTO URRIOLA
SECOND CROSS-RESPONDENT
JUDGE(S):
LOCKHART, WILCOX AND LINDGREN JJ
DATE:
24 OCTOBER 1997
PLACE:
SYDNEY
REASONS FOR JUDGMENT
LOCKHART J
This appeal from the judgment of the Supreme Court of New South Wales in its Equity Division (McClelland CJ) in Eq concerns the construction of a patent and the questions of whether the Claims of the patent are fairly based on the matter described in the specification or whether they sufficiently define the invention. Questions of the priority date of the Claims and novelty and whether the patent was obtained by false suggestion also arise.
The patent is Australian Patent No 593085 (“the Patent”) of which the second appellant, Humberto Urriola, is the registered proprietor and the first appellant, Atlantis Corporation Pty Limited, is an exclusive licensee. The Patent was sealed on 17 May 1990 under the Patents Act 1952 (“the 1952 Act”) pursuant to an application accompanied by a provisional specification lodged on 9 April 1986. The complete specification was lodged on 27 March 1987.
The invention is entitled in the complete specification “Drainage Cell” and “Relates to the provision of adequate drainage by artificial means and has particular application in the area of landscape gardening”.
The specification describes the invention in these terms:
“According to the present invention there is provided a rigid cell structure comprising a first and second substantially parallel perforate planar members maintained in a fixed spaced relationship from each other by means of a plurality of spacer members; the perforations in the planar members comprising at least 40% of their surface area and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre; the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means [sic - members] in any direction.
The present invention also teaches a method of providing drainage utilising the lastmentioned apparatus. In addition to roof-top garden applications it is envisaged that the invention may be of use to provide drainage under roadways, under embankments and elsewhere where surface erosion would otherwise be a problem.”
This is followed by a description of:
“[o]ne example of an article in accordance with the present invention ... with reference to the accompanying drawings wherein:
Figure 1 is a part perspective view of a cell in accordance with the present invention;
Figure 2 is a further part perspective view of the cell of figure 1.
Figure 3 is a side elevation of the cell depicted in figures 1 and 2.
Figure 1 depicts a drainage cell comprising a first planar perforate surface 1 and a second planar perforate surface 2 maintained in parallel spaced relationship to each other by a plurality of upright spacer members 3.
The nature of perforations in the embodiment of figures 1 and 2 may best be observed from figure 2 which clearly depicts substantially square perforate areas 4 in the first planar surface 1. It will be noted that the square perforate areas are interposed with substantially square load bearing sections 5 such that the resulting configuration of the first planar surface 1 is checkered. In this embodiment the second perforate planar surface is of the same configuration as the first perforate planar surface except that the square perforate sections are out of register with each other such that directly beneath each square perforate section of the first perforate planar surface lies a square load bearing section of the second planar perforate surface.”
The Claims made in the Patent are in the following terms:
“1 A rigid cell structure comprising a first and second substantially parallel perforate planar members maintained in a fixed spaced relationship from each other by means of a plurality of spacer members; the perforations in the planar members comprising at least 40% of their surface area and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre; the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means [sic - members] in any direction.
2 A structure in accordance with claim 1 wherein each spacer member adjoins at each end wall members in turn adjoining the ends of adjacent spacer members; the orientation of the walls being perpendicular to the plane of the parallel perforate planar members; the walls thereby serving to brace the entire structure and assist in transferring local stresses throughout the structure.
3 A structure in accordance with any one of the preceding claims wherein at least twenty per cent of the total surface area of the planar surfaces is adapted to support a load.
4 A structure in accordance with claim 1 wherein the spacer members are columnar in configuration and disposed substantially normally to the two parallel perforate surfaces.
5 A structure in accordance with any one of the preceding claims wherein the perforate areas are formed as parallelograms interposed with load bearing sections of like configuration and dimensions in a checkered configuration; the spacer members being joined to the perforate planar members adjacent the corners of such parallelogram shaped load bearing sections and perforate areas.
6 A structure in accordance with any one of the preceding claims wherein the perforate areas are of a substantially square configuration interposed with substantially square load bearing sections of similar dimensions in a checkered configuration; the spacer members being joined to the perforate planar members adjacent the corners of such square sections.
7 A structure in accordance with any one of the preceding claims wherein all perforate areas of one perforate surface are out of register with the perforate areas of the opposing perforate surface.
8 A structure in accordance with any one of the preceding claims where at least one of the planar perforate surfaces includes upon its internally facing side a plurality of low upstanding walls extending between adjacent spacer members defining shallow areas adapted to trap small quantities of liquid.
9 A structure in accordance with any one of the preceding claims wherein the cell structure is of adequate strength to ensure that either one of the perforate planar surfaces has a load bearing capacity of at least twenty kilograms per square metre when the opposing perforate planar surface is supported by a rigid planar surface.”
10 A structure in accordance with any one of the preceding claims wherein the cell structure is of adequate strength to ensure that eigher [sic - either] one of the perforate planar surfaces has a load bearing capability of between 15,000 andk [sic - and] 90,000 kilograms per square metre when the opposing perforate planar surface is supported by a rigid planar surface.
11 A rigid cell structure in accordance with any one of the preceding claims wherein there is a regular pattern of shallow tongues and grooves along the peripheral edges of the structure to allow the structure to be interlocked when assembled into a mat.
12 A structure substantially as hereinbefore described with reference to the accompanying drawings.
The appellants sued the respondents for infringement of the Patent. The respondent, Peter Schindler, filed a cross-claim seeking revocation of the Patent. The Supreme Court ordered that seven questions be determined separately from and before any further trial of the proceeding. Six of those questions concerned the validity of the Patent; and the seventh question was whether, in consequence of the determination of the earlier questions, an order should be made revoking the Patent and discharging or varying certain interlocutory orders made by another judge of the Supreme Court.
Question 1 asked in substance whether the specification which defined the invention was clear and succinct or was fairly based on the matter described in the specification: s 40(2) and (3) of the Patents Act 1900 (“the 1990 Act”). The Supreme Court held that the Claims did define the invention, were clear and succinct and were fairly based on the matter described in the specification. Question 1 was cast in the following form:
“Whether the specification in the Patent does not comply with s 40(2) and (3) of the 1990 Act, in that the claims or any (and if so which) of them:
(a) do not define the invention;
(b) are not clear and succinct; or
(c) are not fairly based on the matter described in the specification;by reason of the following matters particularised in the cross-claim:
[i] the published monopoly is for a product only and not for a drainage system as represented by the plaintiffs in the preliminary text of the specification and as represented in the title and intended to be so interpreted
[ii] all 12 claims of the patent are devoid of reference to drainage, sub soil drainage or drainage system
[iii] claim 1 commenced with the words ‘A rigid call structure ...’ claim 2, 3, 4, 5, 6, 7, 8, 9, and 100 commence with the words ‘A structure ...’ such claims being dependent on claim 1 claim 11 states ‘A rigid cell structure ...’ which claim reverts to claim 1 claim 12 states ‘A structure ...” and is a consequence of claim 1
[iv] all 12 claims are devoid of any specific or preferred end usage of the product
[v] all 12 claims are devoid of any specific or preferred method of manufacture
[vi] claims 2, 4, 5, 7, 11 and 12 are the specific consequence of the injection moulding process which is not novel and is commonplace in industry and cannot be the subject of any exclusive monopoly.
[vii] Claim 1 of the Patent is broadly based and the structure as disclosed in claim 1 can be readily applied to the common place structure used throughout industry commonly referred to as a pallet used to carry or store cargo.”
The Supreme Court found it unnecessary to decide questions 2, 4 and 6, so I shall not recite them.
Question 3 was whether the invention lacked novelty or an inventive step. His Honour answered that question in the negative.
Question 5 was whether the Patent was obtained by fraud, false suggestion or misrepresentation within the meaning of s 138 of the 1990 Act, and the Supreme Court answered that question in the negative.
Question 7 was whether, in consequence of the determination of the earlier questions, an order should be made revoking the Patent and discharging or varying the interlocutory orders. That question was answered by the Court in the negative.
The Supreme Court made orders for costs in favour of the appellants (order 2) and ordered that a notice of motion filed by the appellants on 25 August 1995 seeking orders for security for the costs of the appellants of their cross-claim be dismissed with costs (order 3).
The first respondent (cross-appellant) cross-appealed from the Supreme Court’s judgment of 22 December 1995.
A second judgment was delivered by McClelland CJ in Eq on 27 March 1997 which dealt primarily with the question whether the subject of the patent in suit, when compared with the prior art base as it existed before the priority date of the Claims in the Patent, lacked novelty and was therefore not a patentable invention. His Honour had found in the earlier judgment that the priority date of all Claims in the patent in suit was 9 April 1986 (the date of lodgment of the provisional specification).
The three pieces of prior art which were relied upon as depriving the invention described in the Patent of novelty were: (a) the Rosemeir patent, a German patent specification; (b) the Smarook patent, being a United States patent specification; and (c) information made publicly available by the marketing in Australia of a product known as “Norcore” manufactured according to the Smarook patent.
The learned primary Judge found that the Rosemeir patent deprived Claims 1, 3, 4, 5, 6, 7 and 9 of novelty. His Honour also found, in relation to Claims 2, 10 and 12, that he was not persuaded that there was no inventive step. As to Claim 11, he found that this was a workshop improvement which did not involve an inventive step.
His Honour turned to the Smarook patent and found that none of the Claims in the Patent were deprived of novelty by that patent.
His Honour considered the arguments with respect to the marketing of Norcore in Australia and found that marketing of that product did not deprive the invention described in the Patent of novelty.
The primary Judge dealt with the question of infringement, limited to Claims 2, 8, 10 and 12, which he had found to be valid, and found that no infringement of those Claims had been established.
His Honour ordered that the Patent be revoked so far as it related to Claims 1, 3, 4, 5, 6, 7, 9 and 11; and made other orders which it is not necessary to recite.
The appellants appealed from the part of his Honour’s judgment given on 27 March 1997 whereby it was held that the invention, so far as claimed in Claims 1, 3, 4, 5, and 6 of the Patent, was not novel; that the invention, so far as claimed in Claim 11, did not involve an inventive step; and that there was no infringement of Claims 2, 8 and 10 of the Patent.
The case turns primarily on the construction of the Claims. The primary Judge construed Claim 1 as being limited to use of the structure there defined for the purpose of drainage. He reached this conclusion by the following path. His Honour referred to the concluding words of the Claim 1, namely, “the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means [sic - members] in any direction”; and said that they gave rise to ambiguity. His Honour said:
“The purpose of gas or liquids being able to freely pass through the composite structure and the spacer means [sic -members] in any direction is left unclear, and in my opinion this lack of clarity may legitimately be resolved by reference to the specification as a whole from which it is abundantly clear that the purpose is drainage.”
Thus, his Honour turned to the body of the specification to resolve the perceived ambiguity. His Honour found that, if on the true construction of the specification, any Claim expressly or by necessary implication purported to define an invention not limited to use for the purpose of drainage then that claim was invalid.
It was argued on behalf of the respondents that the primary Judge erred in his construction of the Claims by importing a limitation into them, derived from the body of the specification, which had the effect of reading down what was said to be the clear language of the Claims, so that they conformed to the matter described in the body of the specification, thus avoiding the objection that the Claims were not fairly based on the specification.
At the hearing before us counsel for the appellants conceded that his Honour had erred in holding that Claim 1 was ambiguous and that it should be construed as being “limited to use for the purpose of drainage”.
The principles concerning ambiguity in the words of the Claims of a patent are clear. It is well established that if the words of a Claim are clear and unambiguous one does not resort to the body of the specification to interpret the Claim. If the Claim is ambiguous then one may do so.
In my opinion the words of Claim 1 are clear and unambiguous. I discern no obscurity in language concerning the defined features of the claimed structure which, if there had been ambiguity, may have justified resort to the body of the specification for clarification. The relevant principles are summarized in the oft cited passage from the speech of Lord Russell of Killowen in Electric & Musical Industries Limited v Lissen Limited (1939) 56 RPC 23 at 39, namely:
“The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document, and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere. It is not permissible, in my opinion, by reference to some language used in the earlier part of the specification to change a claim which by its own language is a claim for one subject-matter into a claim for another and a different subject-matter, which is what you do when you alter the boundaries of the forbidden territory. A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims.”
The language of the Claims themselves marks out the ambit of the monopoly of the Claims. In ascertaining the width of a particular claim it is impermissible to qualify the plain and unambiguous meaning of a Claim by reference to the body of the specification: Welch Perrin & Co Pty Limited v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Limited (1973) 130 CLR 461 per Barwick CJ and Mason J at 478. In the case of ambiguity of an expression used in a Claim, resort to the body of the specification is permissible to define or clarify the meaning of the words used in the claim: Electric & Music Industries Limited v Lissen Limited; Rosedale Associated Manufacturers Limited v Carlton Tyre Saving Co Limited [1960] RPC 59 at 69; Interlego at 479.
It was central to his Honour’s reasoning that Claim 1 did not state the purpose of the specific feature last mentioned in Claim 1 and he resorted to the body of the specification to reach the conclusion that Claim 1 was limited to the use of the structure there defined for the purpose of drainage. In my opinion, it was not permissible to do this since there is no ambiguity to be resolved. The concluding words of Claim 1 which I recited earlier are limitations by reference to result of the perforate nature of both surfaces and the disposition of spacer members, with the result that gases or liquids may freely pass through the composite structure around the spacer members in any direction.
I have referred to Claim 1 and not the succeeding Claims; but it is clear from the language of those Claims that what I have said applies equally to them in view of the introductory words which incorporate by reference the language of Claim 1 and are thus dependent on Claim 1.
Construction of the Claims is critical to the issues raised by s 40(2) and (3) of the 1990 Act, namely, whether the Claims are fairly based on the specification (s 40(3)) and whether the Claims define the invention fully (s 40(2)(a) and (b)). The principle concerning fair basing and defining the invention were discussed by Full Courts of this Court in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 275-282 and Leonardis v Sartas (No 1) Pty Ltd (1996) 35 IPR 23 at 37-42.
By construing the Claims as the primary Judge did, that is by reading into Claim 1 the qualification that the structure is limited to use for the purpose of drainage, the conclusion can more readily be reached that the Claims are fairly based on the specification and sufficiently define the invention than if the construction were exclusive of the limitation for use of the structure for the purpose of drainage.
In my opinion, a perusal of the body of the specification leads plainly to the conclusion that the invention concerns the provision of adequate drainage by artificial means with particular application in the area of landscape gardening. The invention is of a particular kind of drainage cell and no other structure, with application in the field of drainage and no other field.
What the Claims assert is not a particular kind of drainage cell, but a structure which has certain defined features which may or may not be adapted for the purpose of drainage. The invention covers any article which incorporates the claimed structure.
It is clear that the Claims are for a wider monopoly than the invention which is described in the specification. In my opinion, the Claims are not fairly based on the matter described in the specification and therefore do not conform to the requirements of s 40(3) of the Act.
The primary Judge correctly concluded that, if the Claims purported to define an invention not limited to use for the purpose of drainage, the Claims would be invalid. If it were not for the construction of the Claims which appealed to his Honour, he would have held that the Claims did not comply with s 40(3) and were invalid. In view of the construction, which in my opinion is correct, the Claims must be invalid.
It also must follow that the patentee has not defined his invention; but has simply defined a structure of general and unlimited application. Hence the Claims are not in accordance with s 40(2)(b) of the Act.
It follows that the Claims are invalid and the appeal must be dismissed and the cross-appeal allowed.
It is not necessary for the Court to consider the other issues which arise in the case, in particular the question whether the invention lacks novelty, which turns in part on the question whether the priority date of the Claims of the Patent was 27 March 1987 (being the date of lodgment of the complete specification) or 9 April 1986 (being the date of lodgment of the provisional specification). It is also unnecessary for the Court to deal with the issue whether the Patent was obtained by fraud, false suggestion or misrepresentation, an issue raised by s 15(1) of the 1990 Act.
I would order that:
The appeal be dismissed.
The cross-appeal be allowed.
Order 1 made by the Supreme Court of New South Wales on 22 December 1995 in proceeding No 1327 of 1994 be set aside and in lieu thereof it be ordered as follows:-
Question 1 Yes
Question 2 Unnecessary to decide
Question 3 Unnecessary to decide
Question 4 Unnecessary to decide
Question 5 Unnecessary to decide
Question 6 Unnecessary to decide
Question 7 Yes
Orders 2 and 3 made by the Supreme Court of New South Wales on 22 December 1995 be set aside.
Orders 1, 4 and 7 made by the Supreme Court of New South Wales on 27 March 1997 be set aside.
Australian Patent No 593085 be revoked.
The matter be remitted to the Supreme Court of New South Wales for the purpose of:
(a)assessing whether any and, if so, what damages should be awarded to the respondents;
(b)dealing with any notices of motion that are outstanding or require reconsideration in the light of the decision of this Court, in which respect, in particular, order 9 below applies.
The appellants pay the costs of the respondents of the proceedings at first instance and of the appeal and cross-appeal.
Liberty to apply be reserved.
I certify that this and the preceding eleven (11) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Lockhart
Associate:
Dated: 24 October 1997
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NG 284 OF 1997
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN:
ATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681)
FIRST APPELLANTHUMBERTO URRIOLA
SECOND APPELLANTAND:
PETER SCHINDLER
FIRST RESPONDENTINNOVATECH (AUSTRALIA) PTY LIMITED (ACN 002 287 023)
SECOND RESPONDENTDESINAN SERVICES PTY LIMITED (ACN 057 580 793)
THIRD RESPONDENTLUCY MARY SCHINDLER
FOURTH RESPONDENTBRUNO DESINAN
FIFTH RESPONDENTPETER SCHINDLER
CROSS-APPELLANTATLANTIS CORPORATION PTY LIMITED (ACN 003 233 681)
FIRST CROSS-RESPONDENTHUMBERTO URRIOLA
SECOND CROSS-RESPONDENT
JUDGES:
LOCKHART, WILCOX, LINDGREN JJ
DATE:
24 OCTOBER 1997
PLACE:
SYDNEY
REASONS FOR JUDGMENT
WILCOX AND LINDGREN JJ:
INTRODUCTION
The second appellant, Humberto Urriola, is the registered proprietor of Australian Patent No 593085 (“the Patent”). The first appellant, Atlantis Corporation Pty Limited (“Atlantis”), of which Mr Urriola is the managing director, is an exclusive licensee under the Patent. We will generally refer to both appellants as “Atlantis-Urriola”. The Patent specification gives the title of the subject invention (“the Invention”) as “Drainage Cell”. We will refer to it as the “Atlantis Drainage Cell”.
Atlantis and Mr Urriola, as first and second plaintiffs respectively, brought proceeding No 1327 of 1994 in the Equity Division of the Supreme Court of New South Wales against, inter alia, the present respondents as defendants, for infringement of the Patent. The first respondent, Peter Schindler, cross-claimed for revocation of the Patent.
On 30 June 1995, the Supreme Court ordered that certain questions raising issues as to the validity of the Patent should be separately determined. Answers favourable to Mr Schindler would have led to revocation of the Patent. But on 22 December 1995, McLelland CJ in Eq answered the questions in a manner adverse to Mr Schindler (his Honour’s judgment is now reported at (1995) 33 IPR 91). In the result, the substantive proceeding went to hearing. On 27 March 1997, his Honour ordered that the Patent be revoked so far as it related to claims 1, 3, 4, 5, 6, 7, 9 and 11 (this judgment is not yet reported).
Atlantis-Urriola appeal from that order. They press challenges to holdings by his Honour of lack of novelty and lack of inventive step. Mr Schindler cross-appeals from his Honour’s answers to the preliminary questions.
Two notices of contention have been filed. On 6 May 1997, Mr Schindler filed a notice of contention directed to supporting his Honour’s dismissal of the application for reasons not supported by his Honour. On the hearing of the appeal, Atlantis-Urriola filed in Court a notice of contention relating to both judgments. More will need to be said of this notice of contention. However, it is useful to observe at this stage that Mr Schindler agrees with Atlantis-Urriola’s contention, which may be more appropriately referred to as a “concession”, that his Honour erred in reading down the claims in the Patent by reference to the purpose of drainage which was disclosed in the body of the specification but not in the claims. Apparently Atlantis-Urriola’s case before the trial Judge, which his Honour accepted, had been to the contrary. On the appeal, but not before his Honour, it was common ground that the claims were properly construed as being simply for an article or object without reference to the purpose of drainage.
THE PATENT
The provisional specification was lodged on 9 April 1986. The complete specification was lodged on 27 March 1987. The Patent was sealed on 17 May 1990. Atlantis-Urriola contend that the priority date is 9 April 1986 but Mr Schindler contends that it is 27 March 1987 because, so he says, the claims in the specification are not fairly based on the provisional specification. It is not in dispute that between those two dates, Mr Urriola published the Invention in various ways with the consequence that it had ceased to be novel by 27 March 1987.
The specification states that the Invention “relates to the provision of adequate drainage by artificial means and has particular application in the area of landscape gardening.” It continues:
“Known methods of draining relatively large surface areas where the funnelling of water directly into narrow diameter pipes is impractical or impossible involve the use of a layer of stone or gravel capable of supporting the surface to be drained. Water from this ‘gravel’ layer may then be allowed to percolate into the ground below, follow the lie fo [sic - of] the land through said gravel to further conventional drainage channels or pipes or otherwise evacuated. In the case of a roof-top garden for example a concrete roof-top may be provided with a water impervious membrane opening into conventional channels, gutters or drains; a layer of pebbles may the [sic - then] be provided over such membrane followed by a filter membrane over such layer of pebbles over which filter membrane a layer of soil is laid in which vegetation may be grown.
The filter membrane prevents the soil clogging the layer of pebbles thereby preventing drainage; the layer of pebbles facilitates drainage of the soil and hence adequate oxygen for the roots of vegetation. The lower impervious membrane in turn prevents the ingress of moisture to the building or structure below.”
Drainage systems involving pebbles, gravel and stone are said to have been found to have shortcomings, particularly in roof-top applications. The specification contains the following passage which was the subject of submissions on the appeal:
“According to the present invention there is provided a rigid cell structure comprising a first and second substantially parallel perforate planar members [sic] maintained in a fixed spaced relationship from each other by means of a plurality of spacer members; the perforations in the planar members comprising at least 40% of their surface area and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre; the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means in any direction.” (emphasis supplied)
The specification states that the Invention also teaches a method of providing drainage, utilising the apparatus described in the passage set out above, and that in addition to roof-top garden applications, it may be of use to provide drainage under roadways, under embankments and elsewhere where surface drainage would otherwise be a problem. The reference to “embankment” makes it clear that the Invention has applications on both a horizontal and vertical, or almost vertical, plane (Mr Urriola gave evidence before the trial Judge that in its vertical application, the Atlantis Drainage Cell can provide drainage against the inside of retaining walls).
The specification proceeds to describe one example of an article in accordance with the Invention by reference to figures 1, 2 and 3 which appear below. Figure 1 is described as a “part perspective view of a cell in accordance with the present invention;” figure 2 is a further part perspective view of the cell of figure 1; and figure 3 is a side elevation of the cell depicted in figures 1 and 2. The three figures are as follows:
In the embodiment of figures 1 and 2, the two planar surfaces represent checkerboard patterns. However, according to the specification,
“ ... the square perforate sections are out of register with each other such that directly beneath each square perforate section of the first perforate planar surface lies a square load bearing section of the second planar perforate surface.”
The specification acknowledges that the configuration so described results in planar surfaces having approximately 50 per cent of their surface area devoted to perforations and the remaining 50 per cent to a solid surface which is capable of bearing load. The specification states that in particular applications it is important that the load bearing surface comprise a significant proportion of the planar surface in order that load may be distributed and the cell will not puncture adjacent membranes.
The specification concludes with twelve claims. They all begin with one or other of the expressions “A rigid cell structure” or “A structure.” Numbers 2-12 are, in various ways, dependent on claim 1 which is as follows:
“1.A rigid cell structure comprising a first and second substantially parallel perforate planar members [sic] maintained in a fixed spaced relationship from each other by means of a plurality of spacer members; the perforations in the planar members comprising at least 40% of their surface area and all areas between perforations being adapted for load bearing at a loading of at least 20 kilograms per square metre; the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means in any direction.”
We need not set out all the other claims. The additional integer of claim 3 is that at least 20 per cent of the surface area is “adapted to support a load.” That of claim 4 is that the spacer members are “columnar in configuration and disposed substantially normally to the two parallel perforate surfaces.” Claims 5 and 6 are as follows:
“5.A structure in accordance with any one of the preceding claims wherein the perforate areas are formed as parallelograms interposed with load bearing sections of like configuration and dimensions in a checkered configuration; the spacer members being joined to the perforate planar members adjacent the corners of such parallelogram shaped load bearing sections and perforate areas.
6.A structure in accordance with any one of the preceding claims wherein the perforate areas are of a substantially square configuration interposed with substantially square load bearing sections of similar dimensions in a checkered configuration; the spacer members being joined to the perforate planar members adjacent the corners of such square sections.”
Claim 7 introduces the integer that “all perforate areas of one perforate surface are out of register with the perforate areas of the opposing perforate surface”. Claim 10 requires that the cell structure be “of adequate strength to ensure that eigher [sic- either] one of the perforate planar surfaces has a load bearing capability of between 15,000 andk [sic - and] 90,000 kilograms per square metre when the opposing perforate planar surface is supported by a rigid planar surface.” Claim 11 adds the integer that there is a regular pattern of shallow tongues and grooves along the peripheral edges of the structure to allow it to be interlocked with other cell structures and assembled into a mat.
REASONING OF THE TRIAL JUDGE
Reasons dated 22 December 1995
The Patent was granted under the Patents Act 1952 (Cth) (“the 1952 Act”) which was repealed by the Patents Act 1990 (Cth) (“the 1990 Act”), the commencement day of which was 30 April 1991. By a course of reasoning which is not challenged, McLelland CJ in Eq concluded that it was unnecessary for him to give separate consideration to questions based on the 1952 Act and that it sufficed for him to answer only Questions 1, 3 and 5 based on the 1990 Act. Question 1 was, relevantly, as follows:
“Question 1:
Whether the specification in the Patent does not comply with s.40 (2) and (3) of the 1990 Act, in that the claims or any (and if so which) of them:
(a) do not define the invention;
(b) ........ ........ ........ ........ ........ .; or
(c) are not fairly based on the matter described in the specification;by reason of the following matters particularised in the cross-claim:
[i]the published monopoly is for a product only and not for a drainage system as represented by the plaintiffs in the preliminary text of the specification and as represented in the title and intended to be so interpreted
[ii]all 12 claims of the patent are devoid of reference to drainage, sub soil drainage or drainage system
[iii]claim 1 commenced with the words ‘A rigid call [sic - cell] structure ...’ claim 2, 3, 4, 5, 6, 7, 8, 9, and 10 commence with the words ‘A structure ...’ such claims being dependent on claim 1 claim 11 states ‘A rigid cell structure ...’ which claim reverts to claim 1 claim 12 states ‘A structure ...’ and is a consequence of claim 1
[iv]all 12 claims are devoid of any specific or preferred end usage of the product
[v]all 12 claims are devoid of any specific or preferred method of manufacture
[vi]claims 2, 4, 5, 7, 11 and 12 are the specific consequence of the injection moulding process which is not novel and is commonplace in industry and cannot be the subject of any exclusive monopoly.
[vii]Claim 1 of the Patent is broadly based and the structure as disclosed in claim 1 can be readily applied to the common place structure used throughout industry commonly referred to as a pallet used to carry or store cargo.”
Subsection 138(3) of the 1990 Act provides, relevantly, that the Court may, by order, revoke a patent, wholly or so far as it relates to a claim, on one or more of certain grounds specified in the subsection and no other grounds. The grounds relevant to the present case are:
“(a) that the patentee is not entitled to the patent;
(b) that the invention is not a patentable invention;
(c) ... ;(d)that the patent was obtained by ... false suggestion or misrepresentation;
(e) ... ;
(f) that the specification does not comply with subsection 40(2) or (3).”
Subsections 40(2) (a) and (b) and (3) of the 1990 Act provide:
“(2) A complete specification must:
(a)describe the invention fully, including the best method known to the applicant of performing the invention; and
(b)where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
(c)...
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
...” (emphasis supplied)
His Honour described Mr Schindler’s argument on Question 1 as follows:
“ ... the invention described in the specification is clearly and expressly limited to a particular use of the designated structure, namely for the purpose of drainage. However, the claims purporting to define the invention contain no such limitation. They refer only to the structure itself and make no reference to its use, thereby claiming a monopoly far wider than the invention described in the specification, from which it follows that the claims neither define the invention described in the specification nor are fairly based on the matter described in the specification.”
His Honour implicitly accepted that use for drainage was an essential part of the inventive idea as described in the body of the specification and expressed the opinion that if any claim, properly construed, purported to define an invention not limited by reference to that use, the claim would be invalid.
His Honour then noted the following element in claim 1:
“the perforate nature of both surfaces and the disposition of spacer members being such that gases or liquids may freely pass through the composite structure around the spacer means in any direction.”
He thought that the purpose of such free passage was left unclear and that the lack of clarity might legitimately be resolved by reference to the specification as a whole. He said that from the specification as a whole, “it is abundantly clear that the purpose is drainage” and that “[t]he mere title of the invention ‘Drainage Cell’ is sufficient to indicate this” (at 98). In the result, his Honour answered Question 1 “no”.
As noted earlier, on the appeal, Atlantis-Urriola, by a notice of contention, accepts that claim 1 defines without reference to purpose an article or object, namely, a rigid cell structure. They distinguish a limitation by reference to the purpose of an invention from a “limitation by reference to result” which they accept is found in the words in claim 1 “... such that gases or liquids may freely pass through the composite structure around the spacer means in any direction”. Mr Schindler is not at issue with Atlantis-Urriola on these matters. The parties are therefore agreed that, notwithstanding the way in which they had argued Question 1 before him, the learned trial Judge erred in reading down claim 1 by reference to the purpose of drainage. We will return to this matter under “REASONING ON THE APPEAL” below.
Question 3 before the trial Judge was, relevantly, as follows:
“Question 3:
Whether the invention the subject of the Patent is not a patentable invention in that, so far as claimed in any (and if so which) claim when compared with the prior art base as it existed before the priority date of that claim:
(a) it is not novel; or
(b) it does not involve an inventive step;
within the meaning of s.18 of the 1990 Act, by reason of the following matters particularised in the cross-claim:
B (i)At a date before 9 April 1986 the second plaintiff/cross-defendant obtained the alleged invention indirectly from one or more persons or parties at 10 Myall Avenue, Vaucluse.
(ii)At a date before 9 April 1986 one or more parties other than the second plaintiff/cross-defendant invented or contributed to the invention the subject of the Patent.
(iii)The second plaintiff/cross-defendant did not invent the invention the subject of the Patent but commissioned drawings and drafting of specifications for the Patent describing a piece of a plastic object found in the grounds of 10 Myall Avenue, Vaucluse shortly prior to 9 April 1986.
(iv)On or before 26 April 1986 the second plaintiff/cross-defendant instructed Ted Burton of Burton Plastics Pty Limited Brookvale to commission a metal mould for injection moulding purposes to enable production to take place of finished plastic product in accordance with the sample.
(v)Upon manufacture of the mould in or about July 1986 the company Burton Plastics Pty Limited went into commercial production of the product on behalf of the first and second plaintiff in the second half of 1986.
C (i)The provisional specification as filed by the second plaintiff/cross-defendant on 9 April 1986 is silent as to:
(a) area percentage of perforations in the planar members
(b) load capabilities of the cell structure.
(ii)These characteristics (a & b above) were first contemplated in the complete specification filed 27 March 1987.
(iii)The second plaintiff/cross-defendant had since 1986 and prior to 27 March 1987 exposed the product known as Drainage Cell in the public domain and had commercialised same.”
In order to understand Question 3 fully, it is necessary to have some background. Section 18 of the 1990 Act provides, relevantly:
“18.(1) ... a patentable invention is an invention that, so far as claimed in any claim:
...
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step;
...” (emphasis supplied)
The word “invention” is defined to mean “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.
Subsection 43 (2) of the 1990 Act provides:
“(2) The priority date of a claim is:
(a) the date of filing of the specification; or
(b)where the regulations provide for the determination of a different date as the priority date - the date determined under the regulations.”
Under Patents Regulation 23.18, the priority date of each claim of the Patent is to be determined under s 45 of the 1952 Act which, so far as relevant, provided as follows:
“45.(1) Subject to this Act, the priority date of a claim of a complete specification is the date of lodgment of that complete specification.
(2)... the priority date of a claim of a complete specification received after a provisional specification, being a claim fairly based on matter disclosed in the provisional specification, is the date of lodgment of that provisional specification.” (emphasis supplied)
Accordingly, the priority date of any claim of the Patent is 27 March 1987 (the date of lodgement of the specification) unless the claim is fairly based on matter disclosed in the provisional specification, in which event the priority date is 9 April 1986 (the date of lodgement of the provisional specification).
Mr Schindler contended unsuccessfully before the trial Judge, and has repeated the submission on the appeal, that claim 1 is not fairly based on the provisional specification because of the provisional specification’s silence as to two matters specifically required in that claim, namely, a minimum perforate area of the surface area of each planar member (40 per cent) and a minimum load-bearing capacity of “all areas between perforations” (20 kilograms per square metre).
Section 7 of the 1990 Act provides as follows:
“7.(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of ‘prior art base’ in Schedule 1.
(2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3)For the purposes of subsection (2), the kinds of information are:
(a)prior art information made publicly available in a single document or through doing a single act; and
(b)prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.” (emphasis supplied)
Schedule 1 of the 1990 Act includes the following definitions of “prior art base” and “prior art information”:
“‘prior art base’ means:
(a)in relation to deciding whether an invention does or does not involve an inventive step:
(i)information in a document, being a document publicly available anywhere in the patent area; and
(ii)information made publicly available through doing an act anywhere in the patent area; and
(iii)where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; and
(b)in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(ii)information contained in a published specification filed in respect of a complete application where:
(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B)the specification was published after the priority date of the claim under consideration; and
(C)the information was contained in the specification on its filing date and when it was published;
‘prior art information’ means:
(a)for the purposes of subsection 7(1) - information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and
(b)for the purposes of subsection 7(3) - information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step.”
Mr Urriola caused copies of the Atlantis Drainage Cell to be manufactured between 9 April 1986 and 27 March 1987. Accordingly, if the latter were the relevant priority date, the Invention would not have been a patentable invention as at that date for lack of novelty.
After referring to authorities, the learned trial Judge concluded that it was clear from the nature of the system described in the provisional specification that the planar surfaces required some minimum area of perforations for effective drainage and that the structure required some minimum load bearing capacity in order to be able to bear soil and other material of considerable depth and weight. His Honour decided that the inclusion in claim 1 of a particular minimum area of perforations and a particular minimum load bearing capacity did not preclude the claim from being regarded as “fairly based” on the provisional specification. It followed, for his Honour, that all twelve claims had a priority date of 9 April 1986 and that the Invention was not prevented from qualifying as a patentable invention by reason of Mr Urriola’s acts done after that date.
Mr Schindler’s second submission on lack of novelty was based on uncontradicted evidence that there existed in the public domain prior to 9 April 1986 a manufactured article embodying a structure practically identical with that depicted in figures 6-10 accompanying the provisional specification and with that described and illustrated in the specification. The article was a plastic “paddle bat” used for playing games. The blade of the bat had a structure substantially similar to that of the Atlantis Drainage Cell, although its edges were, of course, “sealed off” or “walled off”, whereas there is no suggestion of this feature in either the provisional specification or the complete specification. In early 1986, Mr Urriola found a broken piece of such a bat in rubbish at 10 Myall Avenue, Vaucluse. He adapted its design to the drainage cell, on the design of which he had been working. Until he found the broken piece of bat, his projected design for the drainage cell had had the perforations in the two parallel planar surfaces opposite each other; likewise the “filled-in” or “solid” parts of those surfaces. Manufacture would have required that the two surfaces be joined by welding or otherwise. The finding of the broken piece of bat gave Mr Urriola the idea of having rectangular openings positioned so that each corresponded with a solid rectangular area on the opposing surface. The advantage of this was that the structure could be manufactured by a single injection moulding process without the necessity of joining two distinct surfaces. This method of manufacture was cheaper and would result in a stronger product. Mr Urriola added a description of this alternative “unitary” mode of construction and figures 6-11 to his existing draft of the proposed provisional specification, and lodged the provisional specification incorporating these additions on 9 April 1986, as noted earlier.
Mr Schindler submitted (and submits) that according to the true construction of claim 1, it was for a structure that was substantially identical to that of the broken piece of bat. His Honour concluded, however, that his construction of the claim as incorporating the purpose of drainage removed the foundation of Mr Schindler’s submission that the structure of the bat deprived the claim of novelty. The relevant part of his Honour’s judgment was as follows (see (1995) 33 IPR 91 at 103-4):
“The pre-existence of the bat is not inconsistent with novelty and an inventive step subsisting in the finding of a new adaptation of the structure so as to serve a new purpose, namely drainage, which was in no degree analogous to its use in a bat; cf National Research Corp v Commissioner of Patents (1959) 102 CLR 252 at 262-3. To apply the ‘reverse infringement’ test (see eg Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235; 13 ALR 605), it could not be said that the use of the structure in question in a bat would, if the patent were valid and limited to the purpose of drainage, constitute an infringement. Nor could it be said that the use of the structure in question in a bat would ‘enable the notional skilled addressee at once to perceive and understand and be able practically to apply’ the structure for drainage ‘without the necessity of making further experiments’; cf Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545; 91 ALR 513 at 517 per Lockhart J.”
In the result, his Honour held that this second of Mr Schindler’s arguments addressed to Question 3 also failed and he answered Question 3 “no”.
The fifth question for decision by the trial Judge was as follows:
“Question 5:
Whether the Patent was obtained by fraud, false suggestion or misrepresentation, within the meaning of s.138 of the 1990 Act by reason of the following matters particularised in the cross-claim:
B (i)At a date before 9 April 1986 the second plaintiff/cross-defendant obtained the alleged invention indirectly from one or more persons or parties at 10 Myall Avenue, Vaucluse.
(ii)At a date before 9 April 1986 one or more parties other than the second plaintiff/cross-defendant invented or contributed to the invention the subject of the Patent.
(iii)The second plaintiff/cross-defendant did not invent the invention the subject of the Patent but commissioned drawings and drafting of specifications for the Patent describing a piece of a plastic object found in the grounds of 10 Myall Avenue, Vaucluse shortly prior to 9 April 1986.
(iv)On or before 26 April 1986 the second plaintiff/cross-defendant instructed Ted Burton of Burton Plastics Pty Limited Brookvale to commission a metal mould for injection moulding purposes to enable production to take place of finished plastic product in accordance with the sample.
G(ii)application for Patent dated 7 April 1986 of Humberto Urriola which states inter alia ‘The actual inventor(s) of the said invention is/are ... Humberto Urriola’
(iii)Declaration in support of application for Patent entitled ‘Drainage Cell’ and dated 24 October 1989 which states: ‘3 I am the actual inventor of the invention’ signed by Humberto Urriola. The representation was made with specific knowledge of the existence of the prior art. Such misrepresentation was made fraudulently, and constituted a false suggestion and a misrepresentation to the Australian Patents Office.”
Section 138 of the 1990 Act was, so far as relevant, set out earlier. His Honour noted that the suggestion that the Patent was obtained by false suggestion or misrepresentation depended upon its being established that Mr Urriola was not the “inventor”. Mr Schindler relied on the same considerations as had been dealt with in respect of Questions 1 and 3. Consistently with his Honour’s reasons for answering those questions “no”, he answered Question 5 “no” also.
“In my opinion the inclusion in claim 1 (incorporated in claims 2-11) of the complete specification of minimum areas of perforations and minimum load bearing capacity cannot be said to preclude those claims from being regarded as fairly based on the provisional specification. Similar considerations apply to claim 12.” ((1996) 33 IPR 91 at 103)
We respectfully disagree with this passage. It is well accepted that some development, and in particular, “greater definition” is permitted in a complete specification beyond that to be found in the provisional: cf Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 (FC) at 389 (per Fox J, with whom Spender J agreed); CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) at 278. In the present case, greater definition fairly based on the provisional specification would remain limited to greater definition of the method of sub-soil drainage described in it. Moreover, Atlantis-Urriola, from whom such evidence was to be expected, did not adduce evidence suggesting that either the 40 per cent perforations or the 20 kg/m2 load requirement was arrived at as a result of a process of experimentation and refinement subsequent to the filing of the provisional specification or any other evidence as to the derivation of the two integers. So far as the evidence reveals, they represent an artificial “carving out” of part of the area of monopoly of the Rosemeier patent.
The “normal” priority date prevails, that is to say, the date of lodgement of the complete specification, 27 March 1987.
Lack of novelty - publication by Mr Urriola down to 27 March 1987.
We gave an account above (under the heading “Lack of novelty - prior publication of the structure itself”) of the finding by Mr Urriola in the presence of Mr Fong of the broken piece of plastic paddle bat, of Mr Urriola’s amendment of his draft of the provisional specification with the drawing assistance of Mr Fong, and of the lodgement on 9 April 1986 of the provisional specification amended by the addition of words and figures based on the idea of injection moulding derived from that finding. According to uncontroverted evidence before the trial Judge, in “about April 1986”, Mr Urriola took the piece of plastic paddle bat to Mr Ted Burton of Burton Plastics Pty Ltd (“Burton Plastics”). He asked Mr Burton whether he could produce the same kind of thing in a larger size. They discussed cost. Mr Burton contacted Messrs Hoffman and Naber of Centre Tooling Pty Ltd (“Centre Tooling”), a company which manufactured metal dies. Later in April, Mr Burton took to Messrs Hoffman and Naber the broken piece of plastic bat which Mr Urriola had left with him, and asked them whether they could manufacture a metal die for use by his company in a plastic injection moulding machine. Centre Tooling quoted Mr Burton a price for making a die, and Burton Plastics, in turn, issued a quotation dated 22 April to Mr Urriola’s company, Delta Landscaping Pty Ltd, for Mr Urriola’s attention.
Some weeks later, Mr Burton met with Mr Urriola who introduced him to Mr Fong. Messrs Urriola and Fong handed to Mr Burton a schematic drawing which Mr Fong had drawn, under instructions from Mr Urriola, based on the broken piece of plastic paddle bat. Mr Burton agreed to re-quote a price based on the drawing, which he took away with him. On 23 May, he issued a fresh quotation which Mr Urriola accepted on 29 May. On 3 June, Mr Burton attended again upon Centre Tooling, delivered to Messrs Naber and Hoffman the same broken piece of plastic bat and the drawing, and issued a purchase order to Centre Tooling giving specifications for the die required. As well, he paid Centre Tooling a deposit of $6,000. The purchase order referred to a price of $21,500 and to a balance outstanding of $15,500. After about 10-12 weeks, the die was completed and delivered to Mr Burton together with the sample and drawing which Mr Burton returned to Mr Urriola shortly afterwards. Burton Plastics paid the balance of $15,500 to Centre Tooling.
Burton Plastics then commenced manufacturing injection moulded product from the die for Mr Urriola’s companies. The product was already being sold and used for drainage purposes by 27 March 1987.
Whether these events anticipated the Invention depends, in the first instance, on the priority date of the Patent claims. As noted earlier, in our view that date is 27 March 1987. The Invention was therefore anticipated, not only, as noted earlier, by the broken piece of plastic structure found by Mr Urriola in the presence of Mr Fong at Vaucluse a little before 9 April 1986, but also by the disclosure of the structure to Messrs Burton, Naber and Hoffman subsequently in 1986; by the manufacture by Burton Plastics of the Atlantis Drainage Cell; and by the sale and use of the Atlantis Drainage Cell for drainage purposes, all prior to 27 March 1987. The commercial manufacture and supply of the Atlantis Drainage Cell anticipated the Invention, whether it is understood as we suggest or in accordance with the trial Judge’s construction of the claims.
On this further alternative ground, the appeal should be dismissed and, at least in part, the cross-appeal allowed.
Lack of novelty - the Rosemeier and Smarook patents
Having regard to the conclusions already expressed, it is not necessary for us to consider the trial Judge’s finding in favour of Mr Schindler on lack of novelty based on the Rosemeier patent or his finding against Mr Schindler in respect of the Smarook patent.
False suggestion and misrepresentation
Subsection 15(1) of the 1990 Act provides, so far as relevant:
“15.(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; ...”
The word “inventor” is not defined. The word bears its ordinary English meaning. Mr Urriola may have “invented”, in the sense of having seen the potential application of a structure like the piece of plastic paddle bat to drainage purposes. But the inventor of the apparatus itself was not Mr Urriola. By representing, in his application for the Patent, that he was the inventor of the structure, Mr Urriola misrepresented to the Commissioner of Patents his status as a person entitled to apply for a patent in respect of the apparatus. It should be inferred that if he had disclosed the true position to the Commissioner, the Patent would not have issued: see Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 67-8 (Dixon CJ), 93 (Fullagar J).
On this further alternative ground, the appeal should be dismissed and, at least in part, the cross-appeal allowed.
CONCLUSION
For the foregoing reasons, we would make the following orders:
The appeal be dismissed.
The cross-appeal be allowed.
Order 1 made on 22 December 1995 in proceeding No 1327 of 1994 in the Equity Division of the Supreme Court of New South Wales (“the Supreme Court proceeding”) be set aside and in lieu thereof it be ordered as follows:
“1.The Court records, pursuant to Pt 31 r 5 of the Supreme Court Rules that the separate questions ordered on 30 June 1995 to be determined separately, are decided as follows:
Question 1yes;
Question 2 unnecessary to decide;
Question 3 yes;
Question 4 unnecessary to decide;
Question 5 yes;
Question 6 unnecessary to decide; and
Question 7 yes.”
Orders 2 and 3 made on 22 December 1995 in the Supreme Court proceeding be set aside.
Orders 1, 4 and 7 made on 27 March 1997 in the Supreme Court proceeding be set aside.
Australian Patent No 593085 be revoked.
The matter be remitted to the Supreme Court of New South Wales for the purpose of
(a)assessing whether any and, if so, what damages should be awarded to the respondents;
(b)dealing with any notices of motion that are outstanding or require reconsideration in the light of the decision of this Court, in which respect, in particular, order 9 below applies.
The appellants pay the costs of the respondents of the proceedings at first instance and of the appeal and cross-appeal.
Liberty to apply be reserved.
I certify that this and the preceding twenty-nine (29) pages are a true copy of the Reasons for Judgment herein of the Honourable Justices Wilcox and Lindgren
Associate:
Dated: 24 October 1997
Counsel for the Appellants and Cross-Respondents (Atlantis Corporation Pty Ltd and Humberto Urriola): Mr D K Catterns QC with Ms K J Howard Solicitor for the Appellants: Banki Palombi Haddock & Fiora Counsel for the Respondents and Cross-Appellant: Mr D M Yates with Ms A Silink Solicitor for the Respondents: Victor A Bizannes Date of Hearing: 11, 12 September 1997 Date of Judgment: 24 October 1997
16
0
0