Bluescope Steel Limited v Fielders Australia Pty Ltd
[2013] APO 64
•3 December 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Bluescope Steel Limited v Fielders Australia Pty Ltd [2013] APO 64
Patent Application: 2004203534
Title:An apparatus and method for the manufacture of roof cladding elements
Patent Applicant: Fielders Australia Pty Ltd
Opponent: Bluescope Steel Limited
Delegate: O L Haggar
Decision Date: 3 December 2013
Hearing Date: 14 November 2012, in Canberra
Catchwords: PATENTS – section 59 - opposition to the grant of a patent – further evidence filed subsequent to the hearing – request for leave to amend the specification filed in response to the further evidence – whether the opposition can proceed on the basis of the specification as it would exist if amended as requested – construction of claims – whether the phrase “a predetermined angle” included zero degrees – whether the claimed invention is novel - whether information about the claimed invention had been made publicly available – whether the prior public use had disclosed all essential features of the claimed invention – anticipatory use not established – whether the claimed invention involves an inventive step – obviousness not established – opposition unsuccessful – no award of costs in the circumstances
Representation: Patent applicant: Ben Fitzpatrick of counsel, instructed by Drazen Lesicar, patent attorney of Lesicar Murray Trento, Adelaide
Opponent:Helen Rofe of counsel, instructed by Greg Munt, patent attorney of Griffith Hack, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004203534
Title:An apparatus and method for the manufacture of roof cladding elements
Patent Applicant: Fielders Australia Pty Ltd
Date of Decision: 3 December 2013
DECISION
The opposition does not succeed on either of the grounds relied on. There is no award of costs.
REASONS FOR DECISION
Background
Patent application 2004203534 (the present application) was filed by Fielders Australia Pty Ltd (Fielders) on 3 August 2004 with no claim to earlier priority. The present application was advertised accepted on 8 November 2007 but subsequently lapsed due to the failure to pay the acceptance fee within the time allowed. On 21 February 2008 Fielders applied for an extension of time under section 223 in which to pay the overdue acceptance fee. The present application was revived consequent upon grant of the extension application.
Bluescope Steel Limited (Bluescope) filed a notice of opposition to the present application on 7 February 2008 and a statement of grounds and particulars on 7 May 2008. The service of evidence in support, evidence in answer and evidence in reply was eventually completed on 18 May 2012 after both parties had been granted numerous extensions of time without objection.
The Specification
The specification indicates that the present invention relates to the production of roof cladding elements of sheet metal, and more particularly to an apparatus including a variable-angle cutting assembly which is adapted to cut roof cladding elements profiled in their longitudinal direction at a predetermined angle, and a method for using such an apparatus.
By way of background information, the specification explains that profiled roofing, such as corrugated roof panels, is typically formed by rolling sheet metal into the form of a required roof profile. An automated cutting assembly serves to cut the corrugated roofing panels into different lengths to suit different roofing sections. The panels are then stacked for subsequent storage or transport.
In the case of a pitched roof requiring rectangular roofing panels, the panels need only be cut perpendicularly to the direction of the production line, which the specification defines as a zero degree angle cut. While adequately fulfilling this purpose, known cutting assemblies are not suitable for use with pitched roofs that require angled cuts such as gabled roofs. Roofing panels that require angled edges are instead generally cut to shape by roof installers on-site using hand tools. Current techniques of cutting angled corrugated roofing panels on-site are cumbersome, time consuming and prone to error.
The specification refers to the consequential need in the industry for all roof panels, including angled panels, to be pre-fabricated off-site so that an installer need only be concerned with mounting the panels on the roof as quickly and efficiently as possible. An object of the present invention is to address this need.
In broad terms, the present invention is said to meet this objective by providing a cutting assembly which includes a cutting means rotatable about a vertical axis to enable transverse angled cutting of a strip of material profiled in the longitudinal direction. To facilitate this cutting operation, the cutting means includes at least one blade that is contoured correspondingly with the profile of the strip of material along a predetermined angle. The cutting means is preferably in the form of a blade assembly having contoured upper and lower blades. When used for cutting corrugated roofing panels, the blades are corrugated such that the peak to peak distance between their corrugations correspond substantially with the peak to peak distance between the corrugations of the roofing panel when taken along the predetermined angle. More preferably, the cutting means comprises a pair of blade assemblies wherein the peak to peak distance between the corrugations of the blades of the first assembly corresponds to a first predetermined range of cutting angles, and the peak to peak distance between the corrugations of the blades of the second assembly corresponds to a second predetermined range of cutting angles.
As discussed by the specification at page 10 with reference to the accompanying drawings:
“Ideally, the variable-angle cutting assembly would include a blade assembly to match each and every possible cutting angle so that for a particular angle, a particular blade assembly is selected. However, this would result in a somewhat bulky assembly and would not be practical. For this reason, the variable-angle cutting assembly disclosed herein includes two blade assemblies 74 and 76 whereby the distance between peaks 86 of blades 78 and 80 of blade assembly 74 has been selected to a range of cutting angles of approximately 38-41 degrees, whilst the distance between peaks 88 of blades 82 and 84 of blade assembly 76 has been selected to a range of cutting angles of approximately 41-44 degrees. For the purposes of general roofing requirements, these two blade types have been found to be sufficient in manufacturing angled roofing panels for roofs of a standard pitch.”
The specification ends with thirty-five claims of which the independent claims read as follows:
“1. A cutting assembly for cutting a longitudinal strip of material profiled in the longitudinal direction, said cutting assembly including:
a cutting means being rotatable about a vertical axis to enable transverse angled cutting of said strip of material; and
said cutting means including at least one blade that is contoured correspondingly with the profile of the strip of material along a predetermined angle, to thereby facilitate cutting of the material along said predetermined angle.11. A cutting assembly for forming longitudinally profiled panels, said cutting assembly including:
a supply means for feeding a longitudinal strip of material;
a roll-forming assembly for profiling the strip in the longitudinal direction;
a cutter adapted to cut the profiled strip, said cutter being rotatable about a vertical axis to enable transverse angled cutting;
said cutter including a cutting edge that is contoured correspondingly with the longitudinal profile of the strip of material along a predetermined angle, to thereby facilitate cutting of the material along said predetermined angle.27. A method of automatically producing a plurality of roll-formed cladding sheets for building a structure, such as a roof, the plurality of cladding sheets including cladding sheets having angled cuts at the ends of the sheets, which method involves the steps of:
(a) translating data relating to a design of the structure into a series of automatic cutting operations of a cutting assembly for a cutting strip [sic] into a plurality of separate cladding sheets that have the correct size and shape to be placed directly onto a support frame and assembled together to form the structure;
(b) roll-forming the strip to form a longitudinal profile on the strip and moving it through the cutting assembly a distance defining the length of the first cladding sheet along its central axis;
(c) rotating the cutting assembly in relation to the roll-formed strip and cutting the strip along a predetermined angle to form the correct shape of the first cladding sheet in accordance with said data, the cutting assembly including at least one blade that is contoured correspondingly with the longitudinal profile of the strip along said predetermined angle to thereby facilitate cutting of the material along said angle; and
(d) repeating steps (b) and (c) to produce a second and so on of said plurality of cladding sheets until all of the plurality of cladding sheets have been produced.”The Evidence
Nature of the evidence
The evidence in support consists of a statutory declaration made by Brian Seargeant on 11 November 2010 with exhibits BS-1 to BS-6 (Seargent #1).
The evidence in answer consists of:
- A statutory declaration made by William Samuel Hunter on 19 August 2011 with exhibits WSH-1 to WSH-6 (Hunter #1);
- A second statutory declaration made by Mr Hunter on the same day (Hunter #2); and
- A statutory declaration made by Jeffrey Pitt on 21 September 2011 with exhibits JP-1 to JP-3 (Pitt).
The evidence in reply consists of a second statutory declaration made by Mr Seargeant on 2 May 2012 (Seargent #2).
Overview of the evidence
Mr Seargeant is the General Manager of The Roofing Centre Tasmania Pty Ltd (The Roofing Centre), a position he has held since July 1987. He was at some time beforehand employed as Regional General Manager of Bluescope Tasmania for a period of six years.
Mr Seargeant’s evidence raises an allegation of anticipation by prior use. He says that enquiries were made by him in 1997 aimed at locating a manufacturer of a roll former that could make angle cuts on roll-formed steel strip which he had realised could be marketed as gable panels for the end walls of sheds. As a result of these enquiries, Mr Seargeant approached a manufacturer known as SWI Engineering (SWI) located at Warrnambool, Victoria (Seargent #1 [10] and BS-3) whose product range included the so-called “K panel” roll former (the SWI roll former) which included a combination square and angle cut guillotine cutter. The Roofing Centre ordered one of these products which Mr Seargeant deposes has been in operation since delivery in early 1998 to produce gable panels of a range of lengths and angled ends. He then discusses the extent to which the SWI roll former in his opinion anticipates the claimed invention.
Mr Hunter is the Managing Director of Moontide Pty Ltd, trading as Bill Hunter Design Services, which specialises in providing consulting services across a wide variety of market sectors. He has acquired over 25 years experience as a qualified mechanical design engineer which has exposed him to many types of products and machines including sheet metal products, process automation equipment and shearing tools.
Hunter #1 provides an outline of what is seen to be fundamental differences in design between the SWI roll former and the claimed invention. Mr Hunter acknowledges that he was unable to inspect the SWI roll former prior to giving evidence which in the result is derived from other sources of information the most significant being an electronic copy of a video handed to him by Leon Trento from Lesicar Perrin, the patent attorney firm representing Fielders in these proceedings, which shows the SWI roll former in operation (the video). Mr Hunter has not produced the video and I have therefore treated his evidence as to its alleged content with a considerable degree of caution. He does however exhibit two photographs taken from the video (Hunter #1 WSH-5).
Aside from noting that the SWI form roller does not appear to have been designed for the manufacture of corrugated roof cladding elements, Mr Hunter’s main point of contention is that as the SWI form roller uses the same pair of blades to make both square cuts and angle cuts in steel strip which is profiled in the longitudinal direction, the cutting blades are not contoured correspondingly with the longitudinal profile of the steel strip along a predetermined angle. A “square” cut in this context means a cut that is perpendicular to the longitudinal direction of the steel strip. As I have already said, the specification characterises this as a zero degree angle cut.
Mr Hunter reasons that in order to achieve an effective cutting action when used to square cut a strip having a corrugated profile, the blades must be correspondingly profiled such that the peak to peak distance between their corrugations matches the peak to peak distance between the corrugations of the strip when measured laterally of the strip. However, if rotated at an angle to the strip, the corrugated profile of the square cut blades would no longer match the corrugated profile of the strip since the peak to peak distance between the corrugations of the strip has effectively “stretched” when measured along the cutting angle. Mr Hunter says the increase in peak to peak distance does not vary linearly with increase in angle (Hunter #1 [21]). He next proceeds from this outline to challenge Mr Seargeant’s assessment of the relevance of the SWI form roller to the claimed invention.
Hunter #2 provides comment on a number of prior art documents which have been particularised under the ground of novelty. None of these documents have been received in evidence. However, as will become apparent, Bluescope have abandoned any reliance on them with the exception of Australian patent application 2004201410-A1.
Mr Pitt is a qualified toolmaker who in February 2000 became the Managing Director of Henstock Engineering Pty Ltd which is involved in the design and construction of special purpose machines for use in the material handling and packaging industries. It so happens that his company was contracted to design and build the sheet transfer system and stacker for an angle cut machine in accordance with the invention. Mr Pitt sets out his own analysis of the relevance of the SWI roll former to the claimed invention which most notably relies on an actual viewing by him of the video showing the SWI roll former when in operation. Mr Pitt exhibits a copy of the video as JP-3 as well as two photographs taken from it.
In Seargeant #2 Mr Seargeant explains why the evidence on which Fielders rely has not changed the views originally expressed by him as regards the extent to which the claimed invention is anticipated by the SWI form roller.
I have duly considered all of the evidence before me (including the video) and will return to it where appropriate later in this decision. However, I note at this juncture that although there was some debate between the parties as to the weight to be placed on the evidence adduced from the various declarants, I accept that in view of their particular expertise, background and experience each of them is in a position to provide evidence having some probative value.
Grounds of Opposition
The grounds for opposing the grant of a patent which have been pursued by Bluescope are that:
- The claimed invention is not novel; and
- The claimed invention does not involve an inventive step.
Onus of Proof
The onus of proof in these proceedings lies with Bluescope who must establish that it is clear that a valid patent cannot be granted (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319).
The primary facts are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty (Aspiring IP Limited v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52 at [35]).
Further Evidence
It transpired early in the hearing that the only particularised prior art document on which Bluescope rely to support the grounds of invalidity alleged is Australian patent application 2004201410-A1 (the 410 Application). However, it also emerged that the 410 Application had not been put in evidence due to an oversight on the part of Bluescope.
In these circumstances the case pressed by Bluescope clearly could not properly rely on the 410 Application, but I nevertheless indicated to Ms Rofe that it was open to Bluescope to seek to rectify their oversight by requesting that the 410 Application be formally introduced into the proceedings as further evidence. Following a short adjournment, the parties confirmed their mutual agreement to such a course of action and its proposed timing.
A request to serve further evidence was in the result filed on 13 December 2012. The request was accompanied by a statutory declaration made on the preceding day by Greg Munt, the patent attorney for Bluescope, who exhibited a copy of the 410 Application as GRM-1. Mr Munt’s declaration also included a copy of the as-filed specification of the present application as exhibit GRM-3.
Admissibility of the Further Evidence
Further evidence is governed by regulation 5.10. Most relevantly, regulation 5.10(5) provides that before granting an application to serve further evidence, I must be reasonably satisfied that the serving of further evidence is appropriate in all the circumstances. In exercising this discretion I am guided by the principles set out in Ferocem Pty Ltd v Commissioner of Patents [1994] FCA 981; 28 IPR 283, A Goninan & Co Ltd v Commissioner of Patents [1997] FCA 424; 38 IPR 213, and NationalStarch & Chemical Company v Commissioner of Patents [2001] FCA 33; 50 IPR 398. These principles do not demand an imperative compliance with particular requirements, but as said by Burchett J in Ferocem involve:
“… a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of costs, of efficiency, and of insistence upon the professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Company v Reynolds Metal Co [1969] HCA 7; (1969) 120 CLR at 143 "the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be”."
The reasons for the inadvertent failure by Bluescope to serve the 410 Application as evidence at the earliest available opportunity have been left unexplained. Nevertheless, as made clear by Ferocem, the absence of a satisfactory explanation of the resultant delay does not foreclose consideration of other relevant factors. In this regard it could be hardly said that Fielders were previously unaware of the existence of the 410 Application. Not only was it one of a relatively small number of prior art documents listed by the statement of grounds and particulars, each of which has been addressed in evidence by Mr Hunter on behalf of Fielders, but the 410 Application was in fact first drawn to their attention a little over 6 years before the hearing as a “whole-of-contents” novelty citation during examination of the present application. Clearly, then, Fielders would not be unduly prejudiced if I were to admit the 410 Application as further evidence. On the other hand, the interests of Bluescope would undoubtedly be compromised if they were denied the opportunity to pursue their case which as has become apparent is critically dependent on the 410 Application.
There is also the need to ensure that a serious opposition is dealt with on its merits. As stated by Sackville J in Goninan at 225-226, this requires me to:
“… consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings ... unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on its merits.”
The 410 Application clearly goes to questions that are fundamental to a correct determination of the opposition and, in my opinion, this factor in conjunction with the prevailing interests of Bluescope weighs heavily in favour of permitting the 410 Application into the proceedings.
Taking all relevant factors into consideration, I believe it is appropriate that the 410 Application be admitted as further evidence. As said earlier, no complaint on the part of Fielders arises from this.
Response to the Further Evidence
On 11 February 2013 Fielders applied for, and were subsequently granted, an extension of time in which to file evidence in response to the further evidence. In the event, Fielders did not rely on a response of an evidentiary nature but instead on 11 April 2013 filed a request for leave to amend the specification under section 104. The effect of the proposed amendments, if allowed, would be to withdraw claims 27 to 35 in their entirety. The claims sought to be withdrawn embrace the only claims which Bluescope assert are anticipated by the 410 Application. On this footing it was argued by correspondence from Fielders that “the further evidence of the opponent having, been directed to claims 27 to 35 only, as well as the submissions are no longer relevant for this opposition”.
On 19 April 2013 Bluescope advised that:
“The opponent has no objection to the amendment request to delete claims 27-35 lodged by the applicant. The opponent requests that the Delegate of the Commissioner of Patents decide the opposition on the basis that the application comprises claims 1-26 only.”
Basis of the Opposition
Both parties have effectively requested that the opposition proceed on the basis of the notionally amended claims as if they were part of the specification. While this approach is certainly inviting as a matter of convenience, I am conscious of the decision in Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996 at [63] and [73]-[74] (on appeal [2006] FCAFC 26 at [36]) which in the presently analogous situation would seem to place an obligation on me to proceed separately by considering and dealing with the request for leave to amend before, or at least the same time as, deciding the fate of the opposition.
However, unlike Emperor Sports, Fielders’ amendment request is uncontroversial in that it merely seeks to remove the very claims which Bluescope assert are invalidated by the 410 Application. It is difficult to imagine that an amendment of this kind could possibly be refused on any ground available under section 102.
I am therefore of the opinion that it is appropriate to proceed on the assumption that the specification has been amended as requested. This means that the decision on the opposition which follows is confined to the balance of the claims as they stand, namely, claims 1 to 26.
Construction of the Claims
There is an issue regarding the construction of the claims which I need to resolve before proceeding to consider Bluescope’s case based on lack of novelty.
The legal principles to be applied in claim construction are well established (see Flexible SteelLacing Company v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [70] – [81], Pfizer OverseasPharmaceuticals v Eli Lilly and Company [2005] FCAFC 224; 68 IPR 1 at [247] – [250], H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC at [52] – [54]).
Relevantly for present purposes, the words used in a claim are to be given the meaning a person skilled in the art would attach to them, having regard to his or her own personal knowledge and to contextual disclosures in the body of the specification which, together with the claims, must be read as a whole.
Ms Rofe submitted that the phrase “a predetermined angle” in the claims includes zero degrees and that, as a consequence, the claimed invention embraces the prior art cutting assemblies recited by the specification which cut profiled roofing panels perpendicularly to their longitudinal direction. Although not argued as such, I assume that the position for Bluescope is that the SWI form roller would also fall within the claims if their construction of the phrase “a predetermined angle” is correct. Whatever the case may be, I do not accept Ms Rofe’s submission.
If the specification is read as a whole, it seems to me that the skilled addressee would understand from the context in which the claims are set that the meaning to be placed on “a predetermined angle” is an angle other than zero degrees. Although referring to the formation of roofing panels (a limitation not reproduced in the independent claims), there are nevertheless a number of instances where the specification has used the term “angled” or variants thereof to denote angles not including zero degrees (see e.g. page 2 lines 29-31, page 3 line 1 and page 8 lines 18-19). This impression is reinforced by Mr Hunter and Mr Pitt who have both stated that when read in context, the phrase “a predetermined angle” excludes an angle of zero degrees (Hunter #1 [23i] and [23vi]; Pitt [12] – [13]). Mr Seargeant has not advanced a contrary view, and in fact it appears from the evidence given by him in relation to the SWI roll former that he has also construed a straight (or zero degree) cut as being distinct from a cut made at a predetermined angle.
Novelty
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [248]). It is well established that the general test for anticipation or want of novelty is the reverse infringement test. The classic formulation of this test is that given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co ([1990] FCA 40; 16 IPR 545 at [19]. To meet this requirement, the prior art must contain “clear and unmistakable directions” to produce the claimed invention (Pfizer v Eli Lilley FCAFC; IPR at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would at least as likely be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v FirestoneTyre & Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138). This approach was recently approved in Novozymes A/S v Danisco A/S [2013] FCAFC 6 at [177]:
“At the expense of repetition, it is here useful to remind ourselves of what the Court of Appeal said in that case:
… if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated. [Emphasis added]
This proposition is explicitly hypothetical. It is concerned not with what has happened or with what could have happened, but with what would have happened if the directions were carried out. As such, the proposition is in complete harmony with s 7(1), and with every other presently relevant aspect of the jurisprudence in this area. It is not the doing of it, nor even the ability to do it, that amounts to anticipation: it is the content of the information. If the information contains directions which, if carried out, would constitute an infringement of the patent in suit, the invention under the latter is not novel.” [Original emphasis]
The same level of disclosure is required of an alleged prior use of the invention as claimed (Old Digger Pty Ltd v Azuko Pty Ltd ([2000] FCA 676; 51 IPR 43 at [152]). Furthermore, a relatively high standard of proof is required to establish prior use. The level of proof required was discussed in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]-[200] as follows:
“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
Novelty - Prior Use
The allegation of prior use
Bluescope contend that the invention defined by claims 1 to 17 and 19 to 26 is anticipated by the sale of the SWI roll former to The Roofing Centre. For reasons I will give, I am satisfied that The Roofing Centre took delivery of the SWI roll former well before the claimed priority date of 3 August 2004. There is, however, a preliminary point I need to consider first.
Was the claimed invention made publicly available by reason of the alleged prior use?
Mr Fitzpatrick argued that the evidence for Bluescope does not establish that the claimed invention had been made publicly available by reason of use of the SWI roll former. The concept of information being made “publicly available” through the doing of an act was considered in Insta Image Pty Ltd v K DKanopy Australia Pty Ltd [2008] FCAFC 139; 78 IPR 20. The Full Court identified the relevant principles at [124], chiefly being that the information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it. In this respect it is immaterial whether or not the claimed invention has become known to many people or a few people: availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality. Furthermore, the information made publicly available must have constituted an enabling disclosure of all of the essential features of the claimed invention.
As I have said, Bluescope rely on the sale of the SWI roll former as an instance of public use and not, as implied by Mr Fitzpatrick, that once installed at The Roofing Centre the SWI roll former was freely available for public inspection without any obligation of confidence. Nevertheless, I consider the outcome to be the same regardless of which approach is adopted. Mr Seargeant has direct knowledge of the initial purchase and supply of the SWI roll former, and it is also noteworthy that as General Manager he held a position of authority with The Roofing Centre at that time. To that extent Fielders have not challenged the credibility of Mr Seargent’s evidence. In these circumstances I think it unlikely that if Mr Seargeant understood The Roofing Centre to be bound by a duty of confidence to SWI, he would have neglected to state as much. There is otherwise nothing in evidence from which it could be inferred that The Roofing Centre was not at liberty to utilise or impart information regarding the SWI roll former to others without the consent of its supplier.
The evidence in my opinion additionally omits any indication that, following installation, the SWI roll former was not accessible by members of the public without restraint at law or in equity. Coincidentally, I have relied on Fielders’ own evidence when forming this opinion. Both Mr Hunter and Mr Pitt have relied heavily on the video showing the SWI roll former when in operation. The evidence of at least Mr Hunter is that the video was personally handed to him by a member of Fielders’ legal representative in these proceedings. Consequently, if it was supposed that SWI had imposed a fetter of confidence on visitors to their premises, it is most surprising that no corroborating evidence of this has been produced by Fielders in their defence of the allegation of prior use. Given the absence of any evidence to this effect, I believe that it is reasonable to assume that the filming of the video as well as the subsequent use of the information made available by it was unaffected by any bar of confidentiality. This in turn again strongly suggests that the SWI roll former had been made publicly available in the relevant sense.
The sale of the SWI roll former
Turning now to the sale of the SWI roll former, Mr Seargent exhibits a copy of a letter dated 8 December 1997 confirming the intention of The Roofing Centre to place a purchase order with SWI (Seargent #1 BS-4). The letter sets out a number of technical requirements of the SWI roll former, including at point 4:
“Pivoting cut off guillotine to be adjustable and production programmable in batch controller to square cut (90o to sheet length) and right and left angle cuts. Angle cuts to be variable within the range 75o to 105o manually preset to suit required pitch.”
The date of actual delivery of the SWI roll former to The Roofing Centre is not entirely clear, but I am satisfied from the sales invoice of exhibit BS-6 that, consistent with Seargeant #1, this took place sometime during March 1998. However, although Mr Seargeant has proceeded to make a number of statements as to the alleged nature of the SWI form roller purchased by The Roofing Centre, these are unsupported by evidence to corroborate what features of the claimed invention were in fact embodied by the SWI roll former. This is not to say that I have found Mr Seargent’s evidence in this regard to be totally unreliable, and in this I am particularly mindful of his undoubted familiarity with the operation of the SWI roll former. It is simply the case that his evidence that the SWI roll former embodied the features to which he has deposed has not been substantiated to the level of certainty demanded by authority.
This evidentiary shortcoming would ordinarily lead to a finding that Bluescope have failed to discharge the burden they carry. However, in the present situation I have the video exhibited by Mr Pitt on behalf of Fielders before me and, in light of the good deal of opposing contentions set out in the evidence as to what it does (or does not) show, it is quite apparent that the video must be taken into consideration before Bluescope’s challenge on the ground of anticipation by prior use can be ultimately decided.
I turn now to consider whether or not the video establishes that all of the essential features of the claimed invention are present in the SWI roll former.
The video
The video was filmed at the premises of The Roofing Centre in Tasmania. The video is unfortunately brief and of less than ideal quality, but this is somewhat compensated for by the fact that the SWI roll former was operating at the time the video was taken. In any event, I do not think there is any dispute that the video shows that the SWI roll former is operable to cut a longitudinal strip of material which has been profiled in the longitudinal direction. The evidence confirms that the strip of material is roll formed such as to produce a number of transversely spaced, longitudinally extending ribs (Seargeant #1 [12]; Hunter #1 [34]).
It is also not in dispute that the video shows that the cutting operation is performed by a cutting assembly comprised of a pair of upper and lower cutting blades which are rotatable about a vertical axis for making either a square cut (i.e. perpendicular to the longitudinal direction of the profiled strip of material) or an angled cut. The exact range of cutting angles through which the cutting assembly can rotate is unable to be determined from the video. However, as observed by Mr Pitt (Pitt #1 [17]) from his viewing of the video:
“I can see that there are three major increments on either side of 0o with five divisions per increment making up a total of 15 divisions on either side. For this reason, I will assume for the present purposes that the machine has the ability to rotate and perform a cut at any angle between +/- 15o when required.”
Seargeant #2 [8] has proven this assumption to be correct. This brings me to the features of the SWI roll former which are in dispute. The first relates to the design of the SWI roll former which Mr Hunter surmises was for the specific purpose of making gable panels for the end walls of sheds. This much has been verified by Seargeant #1 [9]. Mr Hunter argues that the present invention is, on the other hand, limited to the manufacture of roofing panels (or roof cladding elements) for a house roof (Hunter #1 [27] - [28]). I do not agree that the claimed invention can be legitimately distinguished from the SWI roll former on this basis. There is no express reference in the independent claims to roofing panels or roof cladding and, in attempting to read down the claims in this way, Mr Hunter has impermissibly sought to import glosses drawn from other parts of the specification. For similar reasons, I reject Mr Hunter’s contention that the claimed invention is confined to the manufacture of panels which are “corrugated” in the sense of having a sinusoidal profile (Hunter #1 [29]).
The most critical issue in dispute is whether at least one of the pair of cutting blades shown by the video is “contoured correspondingly with the profile of the strip of material along a predetermined angle”. As I have previously found, a zero degree angle cut does not fall within the phrase “predetermined angle”.
I am unable to determine from the video itself whether either or both of the cutting blades are contoured so as to conform to the profile of the roll formed strip of material along a predetermined angle. Mr Pitt has expressed the same difficulty. He states that it is unclear to him whether the SWI roll former includes a cutting blade that is “intentionally contoured to make a transverse angled cut across the strip of material along a predetermined angle other than 0o” (Pitt #1 [15] and [19]). For his part, Mr Hunter has assumed that the cutting blades have been contoured to the profile of the strip for the square (0o) cut, but has not provided any reasoning on which to ground this assumption other than that the same pair of blades are utilised for making both a square cut and an angled cut, and that “the square cut is in the middle of the +/- 15 degree angle cut range” (Hunter #1 [32]). Further to this, Mr Hunter has exhibited as WSH-5 two photographs taken from the video. The photographs depict the SWI roll former cutting assembly. As best as can be ascertained from a visual inspection of the photographs, it seems that the upper and lower cutting blades are contoured to match the ribbed profile of the roll formed strip. However, Mr Hunter regrettably does not explain whether the photographs are representative of the cutting assembly when making a square cut and/or an angled cut. The same drawback has resurfaced in Pitt with respect to exhibit JP-3. As a consequence, the photographs tendered on behalf of Fielders are of little assistance to me.
By contrast, Mr Seargeant has claimed at Seargeant #2 [10] that:
“… the profile of the upper and lower blades of the cutting assembly was deliberately formed to conform to the profile of roll-formed strip at a cutting angle of 7.5o to accommodate the range of cuts from the square cut to the maximum of 15o angle cut. In other words, the profile of the upper and lower blades of the cutting assembly was selected to be the same as the profile of roll-formed strip at an angle of 7.5o to a square cut.”
This evidence roughly accords with exhibit BS-4 which I have briefly discussed earlier. Mr Seargeant concedes that the “mis-match” between the blade profile and the profiled sheet will increase as the cutting angle increases from 7.5 to 15o, or decreases from 7.5 to 0o, i.e., a square cut (Seargeant #2 [11] - [12]). However, he makes the point that in any given situation the blade profile can only conform perfectly to one selected cutting angle and that the selection of a cutting range is accordingly a matter of judgment. I note with interest here that the present specification also recognises that it is not practical to have a separate blade assembly for each and every possible cutting angle, with the consequence that in practice a single cutting assembly is used to cut a range of angles on either side of the “ideal” (page 10 lines 12-21).
However, while I again accept that Mr Seargeant’s evidence is informed by personal experience, it remains uncorroborated insofar as it relates to the contouring of the SWI roll former cutting assembly. In this respect it is perhaps surprising that Mr Seargeant has not led additional evidence of his own to demonstrate that one or both of the blades of the cutting assembly was contoured to the profile of the roll formed strip of material along an angled cut, or at least attempted to take advantage of the video and photographs produced from it to sustain the position for which he contends. Had I been satisfied (for example) that any of the photographs exhibited on behalf of Fielders showed that the SWI roll former embodied the feature at issue, I would have been inclined to the view that all of the essential features of the claimed invention had been made publicly available.
The evidence of Mr Hunter and Mr Pitt is also unhelpful. Mr Hunter’s evidence is coloured by limitations not found in the claims, and both declarants have essentially gone no further than assuming what is shown by the video with regard to the contour of the cutting blades. The reasons stated to underlie this assumption are unpersuasive. Furthermore, and as alluded to above, evidence as to what was shown by the photographs of either of exhibits WSH-5 or JP-3 may have proven decisive. However, I do not have the benefit of any evidence which relates to these exhibits. The photographs by themselves are not sufficiently clear as to what they actually show.
It therefore seems to me that there is simply too much uncertainty in the evidence as to whether the video shows that the SWI roll former includes at least one cutting blade which is contoured correspondingly with the ribbed profile of the strip of material along a predetermined angle. In these circumstances I cannot reach the conclusion that Bluescope have made out their case of anticipation by prior use.
Accordingly, I find that this ground of opposition fails.
Novelty – Prior Publication
Bluescope contend that the invention defined by claims 27 to 35 is anticipated by the 410 Application. They do not press for an adverse finding against any of the remaining claims (i.e. claims 1 to 26). As the offending claims have at the request of the parties been discounted for the purposes of this decision, the point is now moot.
Inventive Step
Section 7(2) provides that an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with information made publicly available anywhere in the world. Section 7(3) restricts the information to that which could be reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the relevant art.
Inventive step may be assessed having regard to the reformulated so-called “Cripps question” set out in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59; 212 CLR 411 at [53]:
“Would the notional research group at the relevant date in all the circumstances … directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?”
While inventiveness requires more than novelty, even a “scintilla of inventiveness” is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd [1993] FCA 93; 25 IPR 273; (1993) AIPC 90-971; 113 ALR 63 at [21] – [23]).
Common general knowledge
The notion of common general knowledge was described in Minnesota Mining &Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 292 as involving:
“… the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The common general knowledge will encompass not only material that is retained in the memory of the skilled person, but also material that the person knows of, and to which they might refer as a matter of course, or habitually consult. This material could include, for example, standard texts and handbooks (ICI Chemicals & Polymers Ltd vLubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]).
The state of the common general knowledge is a question of fact which must be determined on the basis of expert evidence. Unfortunately, the paucity of hard evidence produced in these proceedings has left me with little insight of what had entered the realm of common general knowledge.
The specification notes, and Mr Hunter and Mr Pitt agree, that automated cutting assemblies for cutting corrugated roofing panels perpendicular to their longitudinal direction (a “straight cut”) were known as part of the prior art, and that it was also known for such cutting assemblies to have blades contoured to the corrugations formed in the roofing panels (page 2 lines 24-28; Hunter #1 [9]; Pitt [13]). Mr Hunter has additionally stated that it was known to cut flat (i.e. unprofiled) sheet metal components at an angle other than perpendicular to the sheet.
Mr Fitzpatrick submitted that Bluescope have failed to establish that any of these matters formed part of the common general knowledge. I have some sympathy for this submission since Bluescope have not adduced any evidence from Mr Seargeant in this regard. However, Mr Fitzpatrick has overlooked the fact that there is a substantial degree of overlap between the evidence of Mr Hunter (Fielders’ own declarant who is allegedly skilled in the art) as to what could be regarded as “commonly known”, and the acknowledged prior art. Furthermore, acknowledgement of prior art in a specification is an admission which carries considerable weight. As stated in Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316; 170 ALR 439; 46 IPR 553 at [30]:
“If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court – or the Commissioner – would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the Act, part of “the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect.”
The wording “would ordinarily proceed” in the above passage means that the circumstances in any particular case must be assessed on their merits (Biessbarth GmbH v Snap-On TechnologiesInc [2001] APO 20). In the present case I have not been provided with any compelling reason to doubt whether the admitted prior art constituted common general knowledge.
Prior art information
Bluescope have relied on the 410 Application for the purposes of “whole of contents” novelty (subparagraph (b)(ii) of the definition of prior art base in Schedule 1 refers) with the consequence that the 410 Application does not fall within section 7(3). However, on my understanding, Bluescope alternatively rely on information made publicly available by the prior use of the SWI roll former. I say this with some hesitation since such an alternative approach is at odds with Bluescope’s assertion that the prior use of the SWI roll former is novelty defeating. Nevertheless, I will proceed on the assumption that my understanding is correct.
Is the claimed invention obvious?
The problem addressed by the claimed invention is to provide a cutting assembly that is able to cut a longitudinally profiled metal strip along a predetermined angle offsite and thereby avoid the difficulties encountered by the prior art. The invention achieves this aim by the inclusion of cutting means having at least one blade that is contoured correspondingly with the profile of the strip of material along the predetermined angle. It is instructive to again note that by “a predetermined angle” is meant an angle other than zero degrees.
As already discussed at considerable length, the SWI roll former includes a pair of cutting blades which as can best be determined are contoured to the profile of the metal strip for a square (or zero degree) cut only. Bluescope argue that it would be a matter of routine for the person skilled in the art to move from the contoured blades of the SWI roll former to blades contoured to cut longitudinally profiled strips at an angle. However, there is nothing in the established common general knowledge which even remotely suggests that the skilled person would be directly led in this manner. As explained by Mr Hunter, in order to achieve an effective cutting action when used to square cut profiled metal strip, the cutting blades must be correspondingly contoured so as to match the profile of the metal strip when measured transversely of the strip. However, if rotated at an angle to the metal strip, the contour of the square cut blades would no longer match the profile of the strip which has effectively “stretched” when measured along the cutting angle. The closest the common general knowledge comes to this is the use of cutting assemblies to cut flat sheet metal components at an angle other than perpendicular to the sheet. It is self-evident that as these components are not profiled, the need to correspondingly contour the cutting blades does not arise.
It follows from the above that this ground of opposition fails.
CONCLUSION
I have found on the basis of the specification as it would exist if amended as requested that the opposition does not succeed on either of the grounds pressed by Bluescope.
COSTS
In matters before the Commissioner, costs usually follow the event. Bluescope have been unsuccessful in their opposition to the present application as presently proposed to be amended. However, the amendment to the claims in response to Bluescope’s further evidence prima facie suggests that they may otherwise have been successful and therefore entitled to an award of costs (Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27 at [16]). On the other hand, Bluescope’s failure to file the evidence addressed by the amendment at an earlier stage has led to an avoidable protraction in proceedings. Taking all relevant considerations into account, I consider it appropriate that the parties bear their own costs.
I therefore make no award of costs.
O L Haggar
Delegate of the Commissioner of Patents
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