Aus Fence Hire Pty Ltd v Thomas

[2004] FCA 557

FEDERAL COURT OF AUSTRALIA

Aus Fence Hire Pty Ltd v Thomas [2004] FCA 557

INTELLECTUAL PROPERTY – patents – revocation – innovation patent – invention not a patentable invention – lack of novelty when compared with the prior art base as it existed before the priority date – application of reverse infringement test – whether the alleged anticipation in the prior art base would constitute an infringement if the patent were valid

PRACTICE AND PROCEDURE – judgments and orders – default judgment – judgment in default of defence – where failure to file a defence

Patents Act 1990 (Cth) ss 138(1), 138(1A), 138(3), 18(1A) 7(1), Schedule 1

Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 Applied

AUS FENCE HIRE PTY LTD and BOLDMONT PTY LTD v OWEN THOMAS AND BRETT THOMAS
Q 36 OF 2004

KIEFEL J
BRISBANE
5 MAY 2004

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q36 OF 2004

BETWEEN:

AUS FENCE HIRE PTY LTD (ACN 102 465 467)
FIRST APPLICANT

BOLDMONT PTY LTD (ACN 057 604 690)
SECOND APPLICANT

AND:

OWEN THOMAS
FIRST RESPONDENT

BRETT THOMAS
SECOND RESPONDENT

JUDGE:

KIEFEL J

DATE OF ORDER:

5 MAY 2004

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

1.Judgment be entered for the applicants against the respondents.

2.Pursuant to s138(1) of the Patents Act1990 (Cth) Australian Innovation Patent No. 2002101002 be revoked.

3.The respondents pay to the applicants their costs of the application, including reserved costs.

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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q36 OF 2004

BETWEEN:

AUS FENCE HIRE PTY LTD (ACN 102 465 467)
FIRST APPLICANT

BOLDMONT PTY LTD (ACN 057 604 690)
SECOND APPLICANT

AND:

OWEN THOMAS
FIRST RESPONDENT

BRETT THOMAS
SECOND RESPONDENT

JUDGE:	KIEFEL J
DATE:	5 MAY 2004
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. On 7 April 2004 I made orders that the applicants have judgment against the respondents and that Australian Innovation Patent No. 2002101002 be revoked pursuant to s 138(1) of the Patents Act 1990 (Cth). At that time I said that I would provide short reasons for those orders. Those reasons follow. They are drawn largely from the applicants’ submissions, which I have accepted.

2. The applicants’ statement of claim and affidavits containing the evidence upon which the applicant would rely were served on the first and second respondents on 27 February 2004 and 2 March 2004 respectively.  No appearance was filed by the respondents and they did not appear at the first directions hearing on 19 March 2004.  The motion for judgment was served on the respondents on 26 March 2004 and they did not appear on 7 April 2004.  Pursuant to that motion the applicants applied for judgment against the respondents pursuant to either O 10 r 7(1)(b) or O 11 r 23(1)(b) of the Federal Court Rules.  The latter seems more appropriate.  The former applies to non-compliance with an order of the Court directing a party to take a step in the proceeding.  No order was made.  Order 11 r 23(1)(b) provides that the Court may give judgment or make an order against a respondent if they have defaulted in filing and serving a pleading as required by the Order.  Order 11 r 20(1) requires a defence to be filed within seven days after the directions hearing.  The respondents were accordingly required to file their defence by 26 March 2004 and did not do so. 

3. The respondents are the registered owners of an innovation patent which is entitled ‘temporary barrier’. It was certified on 26 August 2003 and has a priority date of 19 December 2002. The applicants’ case is that the invention is not a patentable invention because it is not novel when compared with the prior art base as it existed before the priority date and is liable to be revoked. Section 138 of the Patents Act provides in relevant part:

   ‘(1)Subject to subsection (1A), the Minister or any other person may apply to a prescribed court for an order revoking a patent.

   (1A)A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.

   (3)After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, …:

   (b)that the invention is not a patentable invention … 

   …’

4. A patentable invention is defined in s 18 as follows:

   ‘Patentable inventions for the purposes of an innovation patent

   (1A)Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, 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;  …’

5. So far as concerns the concept of novelty s 7 provides:

   ‘Novelty

   (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 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.’

6. The terms ‘prior art base’ and ‘prior art information’ are defined in Schedule 1 of the Act as follows:

   ‘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 …

   prior art base means:

   (a)in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:

   (i)information in a document that is publicly available, whether in or out of the patent area;  and

   (ii)information made publicly available through doing an act, whether in or out of the patent area.

   (b)in relation to deciding whether an invention is or is not novel:

   (i)information of a kind mentioned in paragraph (a) …’

7. The applicants are each separately engaged in the business of supplying temporary fencing and lodged oppositions to the patent in question.  The prior art base relied upon by them is the provision of such fencing to pool builders by the first applicant for many years before the priority date and from, in or about 1994.  Evidence has been provided by the applicants of the fencing so provided.  The test which is then to be applied with respect to the allegation of lack of novelty is the reverse infringement test, namely whether the alleged anticipation in the prior art base would constitute an infringement if the patent were valid:  see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235.

8. The patent contains five claims:

   ‘1.A temporary barrier that is suitable for use in conjunction with a swimming pool which itself may be under construction, said temporary barrier including:

   at least two panels arranged end to end so as to form a barrier, each of said panels including a pair of opposing post members that provide support for a wall located there between, said wall being adapted to provide an obstruction that in use will prevent or inhibit children from climbing over said obstruction, said wall including a pair of horizontally orientated rails and a plurality of vertically orientated bars and wherein each of the bars has an upper and a lower end portion that is attached to a respective one of said rails, and wherein there exists a gap between adjacent bars that is large enough that they allow persons situated on one side of said wall to see what is happening on the other side of said wall;

   a plurality of base members each being adapted to engage a respective lower portion of two adjacent post members in a manner that will support said post members in a generally upstanding attitude;

   at least one connector for connecting a respective upper portion of two adjacent post members together.

   2.A temporary barrier as claimed in claim 1, wherein said wall is rigid.

   3.A panel for use in the construction of a temporary barrier that is suitable for use in conjunction with a swimming pool which itself may be under construction, said panel:

   a pair of opposing post members each having a lower end portion that is adapted to engage a base member that is adapted to maintain said post member in an upstanding position, said opposing post members supporting a wall located there between, said wall being adapted to provide an obstruction that in use will prevent or inhibit children from climbing over said obstruction, ,[sic] said wall including a pair of horizontally orientated rails and a plurality of vertically orientated bars and wherein each of the bars has an upper and a lower end portion that is attached to a respective one of said rails, and wherein there exists a gap between adjacent bars that is large enough that they allow persons situated on one side of said wall to see what is happening on the other side of said wall.

   4.A temporary barrier substantially as herein before described with reference to the drawings.

   5.A panel for use in the construction of a temporary barrier substantially as herein before described with reference to the drawings.’

9. In relation to claim 1, the applicants’ fencing would clearly infringe claim 1 in that it is suitable for use around swimming pools which are under construction and the fencing barrier is temporary because it is not fixed to the ground and may be moved, erected or demounted simply and quickly.  The other integers identified by counsel for the applicants from claim 1 were as follows:

   (1)       More than two panels arranged end to end, forming a barrier; 

   (2)       A pair of opposing post members;

   (3)       A wall supported between the posts;

   (4)       Horizontally orientated rails;

   (5)A plurality of vertically orientated bars and wherein each of the said bars has an upper and lower end portion that is attached to a respective one of said rails, and wherein there exists a gap between adjacent bars that is large enough that they allow persons situated on one side of said wall to see what is happening on the other side of said wall.

10. The first applicant’s fencing contains each of the integers listed as 1 to 4.  It is also apparent that the first applicant’s fencing contains a plurality of base members and that the base members are adapted to engage a lower portion of the two adjacent post members.  The photographs of the fences show that the base members support the post members in a generally upstanding attitude.  The photographs also clearly show a connector used for connecting the upper portion of two adjacent post members together.  Claim 1 would therefore be infringed. 

11. Claim 2 is dependant upon claim 1 and also provides that the wall of the barrier is rigid.  The walls of the first applicant’s fencing is made of aluminium and is rigid. 

12. As to Claim 3, the first applicant’s fencing is suitable for use around swimming pools under construction.  The photographs show a pair of opposing post members and a wall supported between the posts and how the lower end portion of the opposing post members are adapted to engage a base member that is adapted to maintain the post members in an upstanding position.  The base members have vertical spigots which fit into the opposing post members which are hollow cylinders.  It may be observed that at page 4 of the specification for the patent one embodiment is described as being where post members include a lower end portion having a recess that is adapted to receive an upstanding spigot of the base and the post members may be of tubular construction.  The photographs also show that when the temporary fencing is erected an obstruction is created which would make it difficult for children to climb over or through but that it is possible to see through the barrier created by the temporary fencing.

13. Claims 4 and 5 refer to drawings.  The fences in the photographs produced by the applicants exhibit each of the features of the drawings appearing in the patent specification.

14. The first applicant’s fencing would have infringed each of the claims in the respondents’ innovation patent at the priority date.  Accordingly the subject of the patent is not novel and is not a patentable invention.  It should be revoked.

I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kiefel.

Associate:

Dated:  4 May 2004    

Counsel for the First and Second Applicants:	Ms D K Grigg
Solicitor for the First and Second Applicants:	Gadens Lawyers
Solicitor for the Respondents:	No Appearance
Date of Hearing:	7 April 2004
Date of Judgment:	5 May 2004