Centor Australia Pty Ltd v RMD Industries Pty Ltd
[2012] FCA 1135
•19 October 2012
FEDERAL COURT OF AUSTRALIA
Centor Australia Pty Ltd v RMD Industries Pty Ltd [2012] FCA 1135
Citation: Centor Australia Pty Ltd v RMD Industries Pty Ltd [2012] FCA 1135 Parties: CENTOR AUSTRALIA PTY LTD ACN 009 716 189 v RMD INDUSTRIES PTY LTD ACN 004 313 937 File number: QUD 374 of 2010 Judge: DOWSETT J Date of judgment: 19 October 2012 Catchwords: PATENTS – invention– “floating pivot mount for a folding panel” – compensates for changes in the physical relationship between a panel and the frame in which it is fitted
PATENTS – infringement – construction – s 117 Patents Act 1990 (Cth) – whether principles of construction permit a finding that the claims are infringed
Legislation: Patents Act 1990 (Cth) s 117 Cases cited: Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 considered
New Shorter Oxford English Dictionary (Clarendon Press, 1993)
Macquarie Dictionary (5th ed, Macquarie Dictionary Publishers Pty Ltd, 2009)
Dates of hearing: 25 and 26 July 2011 Place: Brisbane Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 64 Counsel for the Applicant: Mr A Crowe SC Solicitor for the Applicant: Mallesons Stephen Jaques Counsel for the Respondent: Mr S Burley SC with Ms D Grigg Solicitor for the Respondent: Davies Collison Cave
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 374 of 2010
BETWEEN: CENTOR AUSTRALIA PTY LTD ACN 009 716 189
ApplicantAND: RMD INDUSTRIES PTY LTD ACN 004 313 937
Respondent
JUDGE:
DOWSETT J
DATE OF ORDER:
19 OCTOBER 2012
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.The application be dismissed.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 374 of 2010
BETWEEN: CENTOR AUSTRALIA PTY LTD ACN 009 716 189
ApplicantAND: RMD INDUSTRIES PTY LTD ACN 004 313 937
Respondent
JUDGE:
DOWSETT J
DATE:
19 OCTOBER 2012
PLACE:
BRISBANE
REASONS FOR JUDGMENT
THE APPLICANT
Pursuant to the Patents Act 1990 (Cth) (the “Patents Act”), the applicant (“Centor”) holds Australian Patent No 2003204186 for an invention entitled “Floating Pivot Mount for a Folding Panel” (the “Patent”). The Patent has a priority date of 14 May 2002 and will expire on 14 May 2023. There is no challenge to its validity.
THE PATENT
The Patent addresses the mounting of folding doors, windows and other panels used to close spaces in buildings. In particular, it addresses the need to compensate for changes in the physical relationship between a panel and the frame in which it is fitted. Such changes may be caused by building movement “or other loss of adjustment … or [as] a result of repeated opening and closing of the folding window”. Folding panels are comprised of two or more panels. Usually, adjacent panels are hinged so that they pivot about a vertical axis situated between them. Each panel is suspended from a “carriage” which travels along a track fitted into the top of the opening. The first panel nearest the jamb is usually suspended at the top of the horizontal edge which is nearest to the jamb. Commonly, the bottom end of the panel has a pivot pin which rotates in a socket formed in the window sill, or the bottom end is supported on a fixed pivot. The specification asserts at p 3 ll 2-7 that:
Although it is known to use an adjustable bottom pivot mount … to adjust the end panel, the adjustable pivot mount must be adjusted at regular intervals to compensate for subsequent out-of-level movements between the end hanger and the next carrier. Many property owners neglect to make such adjustments.
At ll 16-19 the specification continues:
It is an object of this invention to provide an improved pivot mount for a panel which overcomes or ameliorates one or more of the above described disadvantages, or which at least provides the consumer with a useful choice.
The “above described disadvantages” appear to be the fact that the panel may get “out of square” and the apparent inconvenience involved in having, from time to time, to adjust an adjustable bottom mounting.
The specification also notes that tall folding panels may have intermediate pivots or hinges located between the top and bottom hinges. If the intermediate hinge is not fixed precisely in alignment with the top and bottom hinges it may cause sticking or warping. The fixed mounting of the intermediate hinge to the jamb does not accommodate any subsequent “out of square” movements of the panel. Again, although adjustable hinge mounts are known, they must be adjusted regularly to compensate for “dynamic variations in the panel alignment”.
In one embodiment of the invention a hinge leaf having a “knuckle portion” is affixed near to the bottom of the vertical edge of the panel nearest the jamb. The hinged leaf is a flat, usually rectangular piece of metal, designed to be screwed to the edge of the panel. Such a member is commonly seen in heavier duty hinges. The “knuckle” is a tubular extension of the leaf on one of its longer sides. Through the knuckle there is a bore. In other words the knuckle is a tube, capable of taking a suitably sized pin, in this case described as a “pivot pin”. The pivot pin member has a base portion with a pivot pin extending from it. When fitted the pivot pin passes up through the bore in the knuckle. There is also a bore through the base portion at right-angles to the pivot pin. One end of an arm is located in this horizontal bore. A mounting member is fixed to the jamb. It contains a socket into which the other end of the arm is inserted. The arm is said to be “slidingly received in the bore of the socket member”, so that the hinge is moveable relative to the pivot pin, or the mounting member, or both.
In a second embodiment of the invention both lower and intermediate hinge leaves are fixed to the edge of the panel, each having a knuckle through which there is a bore. The bores must be aligned so that a hinge pin may be passed through both of them. Once again the arm is mounted in the base of the pivot pin and in the mounting member in the jamb, so that lateral movement between the jamb and the panel will be accommodated by lateral movement in and out of the socket in the mounting member.
In the specification at p 4 ll 24-27, it is said that:
Biasing means may be provided within the bore for biasing the arm axially to a rest position. The biasing means may comprise coil springs located around the arm in the bore, on opposite sides of a collar, to bias the arm axially to the rest position.
The purpose of this feature is unclear. It may be designed to accommodate the situation in which changes in the jamb or the panel reverse over time, perhaps as a result of temporary swelling and/or shrinkage of the material used in the jamb, panel or elsewhere in the structure. Alternatively, as was suggested by RMD in the cross-examination of Dr Gilmore, an engineer called by Centor, it may be designed to accommodate knocks or jolts.
THE CLAIMS
The claims in the Patent are as follows:
1. A folding panel assembly having a plurality of hinged panels suspended in an opening within a frame including a jamb, and a pivot mount for adjustably mounting an end panel of the hinged panels to the jamb, the pivot mount including
a pivot pin member to which an edge portion of the end panel is pivotally mounted, the pivot pin member defining a pivot axis of the end panel,
a mounting member fixed to the jamb, the mounting member being a socket member having a bore therein and
an arm extending between the pivot pin member and the mounting member, transversely to the pivot axis, the arm having one end received in the bore of the mounting member and moveable axially therein, and its other end connected to the pivot pin member,
wherein the arm is movable along its axis relative to at least one of the pivot pin member and the mounting member to accommodate transverse movement of the pivot axis parallel to the opening, but constrained against movement relative to the pivot pin member and the mounting member in a direction transverse to the arm to thereby prevent transverse movement of the pivot axis perpendicularly to the opening.
2. A folding panel assembly as claimed in claim 1, further comprising biasing means within the bore for biasing the arm axially to a rest position.
3. A folding panel assembly as claimed in claim 2, further comprising a collar fitted to the arm, and wherein the biasing means comprises coil springs located around the arm in the bore, on opposite sides of the collar, to bias the arm axially to the rest position.
4. A folding panel assembly as claimed in claim 1, further comprising a hinge leaf fixed to an edge portion of the panel near the bottom of the panel, the hinge leaf having a knuckle portion with an axial bore therein, and wherein the pivot pin member has a base portion and a pivot pin extending upwardly from the base portion and received in the axial bore, the base portion having a bore extending transversely to the pivot axis, the arm having its other end located in the bore in the base portion.
5. A folding panel assembly as claimed in claim 1, wherein the pivot pin member comprises a first hinge leaf having a knuckle portion with a first axial bore therein, the assembly further comprising a second hinge leaf fixed to an edge portion of the panel at an intermediate height, the second hinge leaf having a knuckle portion with a second axial bore therein aligned with the first axial bore, a hinge pin being located in the aligned axial bores to form a hinge for the end panel.
6. A pivot mount for adjustably mounting a panel to a jamb, the pivot mount comprising
a pivot pin member to which an edge portion of the end panel is pivotally mounted in use, the pivot pin member defining a pivot axis about which the end panel can pivot,
a mounting member adapted to be fixed to the jamb, the mounting member being a socket member having a bore therein and
an arm extending between the pivot pin member and the mounting member, transversely to the pivot axis, the arm having one end received in the bore of the mounting member and moveable axially therein, and its other end connected to the pivot pin member,
wherein the arm is movable along its axis relative to at least one of the pivot pin member and the mounting member to accommodate transverse movement of the pivot axis, but constrained against movement relative to the pivot pin member and the mounting member in a direction transverse to the arm.
7. A pivot mount as claimed in claim 6, further comprising biasing means for biasing the arm axially to a rest position within the bore.
8. A pivot mount as claimed in claim 7, wherein said one end of the arm is captively received in the bore of the socket member, the pivot mount further comprising a collar fitted adjacent to said one end of the arm, and wherein the biasing means comprises coil springs located around the arm in the bore, on opposite sides of the collar, to bias the arm axially to the rest position.
9. A pivot mount as claimed in claim 6, further comprising a hinge leaf adapted to be fixed to an edge portion of the panel, the hinge leaf having a knuckle portion with an axial bore therein, and wherein the pivot pin member has a base portion and a pivot pin extending upwardly from the base portion and received in the axial bore, the base portion having a bore extending transversely to the pivot axis, the arm having its other end located in the bore in the base portion.
10. A pivot mount as claimed in claim 6, wherein the pivot pin member comprises a first hinge leaf having a knuckle portion with a first axial bore therein, the mount further comprising a second hinge leaf adapted to be fixed to an edge portion of the panel, the second hinge leaf having a knuckle portion with a second axial bore therein aligned with the first axial bore, and a hinge pin located in the aligned axial bores to form a hinge.
11. A mount assembly for adjustably mounting a hinged panel to a jamb, the mount assembly comprising
a first hinge leaf adapted to be fixed to an edge portion of the panel, the first hinge leaf having a knuckle portion with a first bore therein,
a second hinge leaf having a knuckle portion with a second axial bore therein aligned with the first axial bore,
a hinge pin located in the aligned axial bores to form a hinge,
a socket member adapted to be fixed to the jamb, the socket member having a bore therein, and
an arm having one end connected to the second hinge leaf and projecting therefrom transversely to the hinge pin, and its other end slidingly received in the bore of the socket member, whereby the hinge is moveable relative to the socket member in the direction of the arm.
12. A mount assembly as claimed in claim 11, wherein the arm is constrained to be moveable relative to the socket member only along the axis of the bore of the socket member, to thereby prevent movement of the hinge in a direction transverse to the axis of the bore of the socket.
13. A mount assembly as claimed in claim 11, wherein the arm has a cross section which is shaped and dimensioned for a close sliding fit in the bore of the socket member.
Claims 1, 2, 3, 4 and 5 are for folding panel assemblies. Claims 6, 7, 8, 9 and 10 are for pivot mounts. Claims 11, 12 and 13 are for mount assemblies. The term “mount assembly” should not be confused with the term “mounting member”. The mounting member is affixed to the jamb. The mount assembly appears to include all of the members used where there is an intermediate hinge. Claims 2, 4 and 5 are dependent on claim 1. Claim 3 is dependent on claim 2. Claims 7, 9 and 10 are dependent on claim 6. Claim 8 is dependent on claim 7. Claims 12 and 13 are dependent on claim 11. For present purposes claims 1 and 2 are of primary relevance.
THE RESPONDENT AND THE ALLEGED INFRINGEMENT
Centor alleges that, throughout Australia, the respondent (“RMD”) uses a website to promote, manufacture, supply and sell door hardware. Centor further alleges that since 14 May 2003 RMD has, by itself or its agents, and without any licence or authority from Centor, supplied, sold and/or offered to supply or sell products (the “RMD Products”) described as:
·product code HEN1-20, described as an “end pivot set”; and
·product code 189MT, described as a “jamb pivot set”.
In the statement of claim, these products are referred to as the “pivot set” and the “jamb set” respectively. Each pivot set contains a top hinge and a bottom hinge (the “pivot bottom hinge”). The jamb set contains a top hinge and a bottom hinge (the “jamb bottom hinge”). Both products appear in photographs which form part of Dr Gilmore’s report. Photographs 1, 2 and 3 show the pivot set, apparently as sold under the brand name “Henderson”. Photographs 4, 5 and 6 show the jamb set as sold under the brand name “Brio”. The products are essentially the same. Each contains a flat, rectangular plate, capable of being screwed to a panel edge, and a smaller plate with a socket, capable of being affixed to a jamb. In each case the flat, rectangular plate has a tubular extension on one of the longer sides through which a pin is passed. The pin has a base situated outside of the tube. An arm is affixed to, or housed within the base at right angles to the pin. The other end of the arm is fitted into the socket on the other plate. A screw thread can be seen at the socket end. This is best seen in photograph 6.
Centor alleges that since the priority date RMD has, without the licence or authority of Centor, created, published, distributed and used instructions (the “instructions”) for the fitting of a:
·“Weatherfold Window 20” which is a top hung exterior folding window system; and
·“Weatherfold Servery 20”, also a top hung exterior folding window system.
Centor pleads that the instructions suggest or direct the use of the pivot set, including the pivot bottom hinge in the erection of such window systems. Centor pleads that the supply of the pivot set with the instructions constitutes infringement of the Patent pursuant to s 117 of the Patents Act. Supply of the jamb set is, by itself, said to constitute such infringement pursuant to that section. In the statement of claim Centor alleges infringement of many of the claims but, at trial, its case was limited to alleged infringement of claims 1 and 2.
THE DEFENCE
RMD denies infringement. In particular, at para 26.1.1 of the amended defence and amended cross-claim filed on 28 June 2011, it pleads that claim 1 is not infringed because:
[T]he supply of the Instructions, the Pivot Set and the Jamb Set does not enable and/or induce customers to take steps to make a folding panel assembly having the features of claim 1 and in particular a folding panel assembly having a plurality of hinged panels suspended in an opening within a frame including a jamb, and a pivot mount for adjustably mounting an end panel of the hinged panels to the jamb the pivot mount including an arm extending between the pivot pin member and the mounting member “wherein the arm is moveable along its axis relative to at least one of the pivot pin member and the mounting member to accommodate transverse movement of the pivot axis parallel to the opening, but constrained against movement relative to the pivot pin member and the mounting member in a direction transverse to the arm to thereby prevent transverse movement of the pivot axis perpendicularly to the opening” and accordingly does not provide for automatic adjustment of the panel as required by the claim.
As to claim 2, RMD pleads that it has not infringed that claim because any supply:
26.2.1does not enable and/or induce customers to make a folding panel containing the further integer of biasing means within the bore for biasing the arm axially to a rest position;
26.2.2further and alternatively, [RMD] repeats and relies on paragraph 26.1 of this Amended Defence … .
As I understand it, RMD submits that the RMD products do not infringe claim 1 because in the panel assembly, when it is in place, the arm does not move in the socket in the plate screwed to the jamb. Once assembled, it is fixed at a particular point in the socket. As to claim 2, RMD denies that the RMD products contain any biasing means.
AGREED FACTS
The parties agree that:
The parties
1The Applicant is a company duly incorporated by law and capable of suing and being sued.
2The Respondent is a company duly incorporated by law and capable of suing and being sued. The Respondent currently trades under the name Brio, and has previously been called Henderson.
3The Applicant and Respondent both supply and sell door and window hardware (amongst other items), and they are competitors in the folding door and window market in Australia.
The Patent
4The Applicant has always been, and is currently the owner of the Patent.
5The Claims have a priority date of 14 May 2002.
6Acceptance of the Patent was published on 10 December 2009, and the Patent was sealed on 8 April 2010.
7The Patent is due to expire on 14 May 2023 (subject to payment of maintenance fees).
8The Applicant has not granted the Respondent a licence or any other rights in respect of the Patent.
The Respondent’s products and documents
9The Respondent, supplies, sells and offers to sell:
(a)Produce Code HEN1-20, known as a [sic] End Pivot Set, which contains a top hinge and a bottom hinge, and has done so from 14 November 2005;
(b)Produce Code 189, known as Jamb Pivot Sets, which contain a top hinge and bottom hinge, and has done so since 23 November 2005.
10The Respondent produces, publishes and distributes the following promotional material, price guides and fitting instructions, which refer to one or more products referred to in paragraph 9:
(a)Weatherfold Window 20 top hung exterior folding window system (Data Sheet E100);
(b)Weatherfold Servery 20 for top hung exterior folding windows (Data Sheet E80);
(c)Weatherfold Servery 20 Fitting Instructions;
(d)Brio Weatherfold Window Systems brochure;
(e)Brio Weatherfold Coastal Elite 75 brochure;
(f)Price guide 2009 September Edition.
11The Respondent’s fitting instructions are available on its website, located at “ Instructions referred to in paragraph 10 set out how to install the End Pivot Set or Jamb Pivot Set for the folding window systems identified in paragraph 10 between 2 and 6 window panels, suspended within a frame.
End Pivot Sets (Part HEN1-20)
13According to the instructions identified in paragraph 10, the bottom hinge in the End Pivot Set is intended to:
(a)be used as part of a folding panel assembly having a plurality of hinged panels suspended in an opening within a frame including a jamb; and
(b)be placed at the bottom of the first window panel (that stays connected to the jamb when opened) and attaches that panel to the jamb.
14A reasonable use of the End Pivot Set is as part of a folding closure assembly, and the Respondent knew that the End Pivot Set would be used for this purpose.
15Fitting instructions which explain the installation of the End Pivot Set in a folding closure assembly are provided by the Respondent to customers together with the End Pivot Set.
Jamb Pivot Sets (Part 189)
16According to the Respondent’s instructions, the Jamb Pivot Sets are optional and, if used are intended to:
(a)be used in a folding door panel assembly having a plurality of hinged panels suspended in an opening within a frame including a jamb; and
(b)be placed in the middle of the first door panel (that stays connected to the jamb when opened) and attaches that panel to the jamb (together with a top and bottom hinge which also attach the panel to the jamb).
17A reasonable use of the Jamb Pivot Set is as part of a folding closure assembly, and the Respondent knew that the Jamb Pivot Set would be used for this purpose.
The Prior Art
18European Patent No. 1 270 858 was publicly available in the form of WO 2001/071137 from at least 27 September 2001.
19Japanese Patent Publication No. 6-173517 was publicly available from at least 21 June 1994.
THE EVIDENCE
I accept that Dr Gilmore is highly qualified and experienced in matters of mechanical design and engineering. For the purposes of obtaining Dr Gilmore’s expert evidence, the solicitors for Centor identified the following “elements” of claim 1:
(a)a folding panel assembly with a plurality of hinged panels suspended in an opening within a frame, including a jamb;
(b)a pivot mount for adjustably mounting an end panel of the hinged panels to the jamb;
(c)with the pivot mount including
(i)a pivot pin member to which an edge portion of the end panel is pivotally mounted, the pivot pin member defining a pivot axis of the end panel;
(ii)a mounting member fixed to the jamb, the mounting member being a socket member having a bore therein;
(iii)an arm extending between the pivot pin member and the mounting member, transversely to the pivot axis;
(iv)the arm having one end received in the bore of the mounting member and moveable axially therein, and its other end connected to the pivot pin member;
(v)where the arm is moveable along its axis relative to at least one of the pivot pin member and the mounting member to accommodate transverse movement of the pivot axis parallel to the opening, but constrained against movement relative to the pivot pin member and the mounting member in a direction transverse to the arm to thereby prevent transverse movement of the pivot axis perpendicularly to the opening;
Centor pleads that claim 2 further comprises:
… biasing means within the bore for biasing the arm axially to a rest position.
Dr Gilmore found that all elements are present in both of the RMD products. The only matters presently in contention are elements (iv) and (v) and the presence or absence of biasing means in those products.
Dr Gilmore said, concerning the claims in the Patent:
“Movable axially therein” means that the arm is able to move axially along inside the bore, ie the arm can move parallel to the bore axis whilst inserted in the bore. This axial movement would allow the pivot pin member to either move closer to the mounting member or further away from the mounting member.
“Transverse movement of the pivot axis parallel to the opening” is movement in a plane parallel to the plane of the window. This movement is the same movement referred to in Item (iv) above i.e. allowed by the movement of the arm into and out of the bore in the mounting member.
“Transverse movement of the pivot axis perpendicularly to the opening” is movement at right angles to the plane of the window i.e. at right angles to the movement referred to in Item (iv) above into and out of the board in the mounting member. Such transverse movement of the pivot axis perpendicularly to the opening is horizontal movement.
Concerning the end pivot set, he said:
When the Respondent’s product is installed as described in [the various instructions] it does constrain the same type of movement as described. Transverse movement of the pivot axis parallel to the opening is accommodated and permitted, whilst transverse movement of the pivot axis perpendicularly to the opening is constrained and prevented.
Photographs 2 and 3 attached in Appendix 2 show that the integral mounting plate does contain a socket which does possess a bore. The transverse arm is connected at one end to the pivot pin member, and on the other end is received in the bore and able to be moved axially therein via a screw thread.
The arm can therefore be biased axially within the bore (by rotation of the screw thread within the socket), causing the bottom hinge to possess a biasing means to a rest position.
In my opinion the [End Pivot Set] is as described in Claim 1, and does include the bottom hinge that has a biasing means within the bore for biasing the arm axially to a rest position, within claim 2 of Australian Patent No 2003204186B2.
Dr Gilmore expressed the same opinion concerning the jamb pivot set.
Dr Gilmore has also sworn an affidavit in which he deals with the construction of the Patent, largely in response to an affidavit by a Mr Brennan, which was not read by RMD, and to an affidavit by Mr Hancock which was read. Inevitably, Dr Gilmore’s affidavit is largely argumentative. However I shall keep it in mind when I come to consider the proper construction of the Patent.
RMD called Mr Michael John Hancock who is also a mechanical engineer. He has considerable experience with windows and doors as appears from paras 1-5 of his affidavit (exhibit 6). Concerning the Patent he said that he understood that the “pivot mount” allowed the panel to self-adjust its position relative to the jamb without any human intervention by way of manual adjustment. This view appears to have been based on the use of the word “floating” in the Patent title. He refers to numerous other passages in the specification which might be thought to suggest the notion of automatic adjustment. At paras 13-14, he interprets claim 1 as follows:
Claim 1 describes a folding panel assembly and a pivot mount which has particular characteristics when used in that folding panel assembly. The folding panel assembly needs to have at least two panels hinged together and suspended within a frame which includes a jamb. The pivot mount is then used in this folding panel assembly to “adjustably” mount the first panel to the jamb. Claim 1 recites components of the pivot mount being a “pivot and pin member”, a “mounting member” and an “arm” with particular characteristics and which interact in a particular way.
Claim 1 requires the arm to be moveable along its axis relative to at least one of the pivot pin member or the mounting member to “accommodate” the “transverse movement of the pivot axis parallel to the opening”. This means that the pivot axis moves horizontally, from side to side in line with the opening. The arm is however constrained against movement “in a direction transverse to the arm” to prevent “transverse movement of the pivot axis perpendicularly to the opening”. This means that the arm cannot move in a direction cutting across its axis to thereby prevent the pivot access moving inwards or outwards from the plane of the opening.
Mr Hancock rejected the proposition that the claim contemplated a manually adjustable pivot mount, saying that he considered that it described a pivot mount:
… as it operates in use with a folding panel assembly. Once the requisite components of the system had been assembled, I understand the arm in the pivot mount to be moveable of its own accord to “accommodate” movement of the pivot axis (and therefore the panel) parallel to the opening.
As to claim 2, Mr Hancock interprets the term “biasing means” (at para 44) as:
… something which actively applies a force to something else. That is, “biasing means” exert force by their own activity or energy. Examples of “biasing means” includes something tensioned such as a spring, or gravity applying forces to an object.
In a further affidavit Mr Hancock debates Dr Gilmore’s construction of the Patent. Little assistance emerges from that debate or from the cross-examination of the witnesses. In each case the cross-examination tended to be little more than semantic argument, no doubt designed to put each witness on notice of the competing view as to construction.
SUBMISSIONS
Centor submits that:
·the Patent relates to a “pivot mount”, used in a folding panel assembly;
·the pivot mount consists of an arm, one end of which is received into a bore of a mounting member fixed into the vertical jamb, while the other end of the arm is connected to a pivot pin member;
·the end panel is pivotally mounted to the pivot pin;
·the pivot mount is not attached to the sill, but to the jamb, and thus no bottom track is necessary;
·this design may also be used as an intermediate hinge (ie the middle hinge of a tall panel);
·“as most widely claimed”, the invention may be adjusted “as part of the installation process”;
·the pivot mount can be used for “adjustably mounting a pivoting panel to a jamb”;
·allowing adjustment at the time of installation ensures that the panel is properly aligned; and
·if it is incorrectly installed it can be easily adjusted.
The above summary is drawn from paras 8-10 of Centor’s written submissions. At paras 11-16 the principles applicable in construing claims are set out. At paras 17-19 Centor invites me to disregard Mr Hancock’s evidence. At paras 20 and 21 Centor submits that each element of claim 1 is to be found in the RMD products. At para 22 Centor submits that RMD seeks impermissibly to read words such as “slidingly”, “self-adjusting” and “floating” into claim 1. Further, Centor submits that RMD wrongly construes the phrase “to accommodate transverse movement” as requiring “movement without any intervention or manual adjustment”. It submits that such an approach imposes “an extraneous limitation” upon claim 1 and is inconsistent with the preamble to claim 1 which, it is said, makes it clear that adjustment can be done in the mounting process, this being the meaning of the term “adjustably mounting”.
As to claim 2, Centor submits that the screw mechanism in the RMD products satisfies the requirement for biasing means. This submission seems to assume that the term “biasing means” adds nothing to the requirements in claim 1 that the panel be “adjustably” mounted, and that the arm be moveable axially.
RMD submits that Centor’s submissions fail to recognize the fact that each of claims 1 and 2 claims a folding panel assembly with certain characteristics. Thus, claim 1 is for a folding panel assembly, having as a characteristic, a pivot mount for adjustably mounting an end panel to the jamb. In other words, the panel must be mounted adjustably. Similarly, in the folding panel assembly, the arm must be moveable axially (that is, along its axis) towards or away from the mounting member and the pivot pin member. Again, in claim 2, the folding panel assembly must comprise a biasing means within the bore in the mounting member for biasing the arm axially to a rest position. In support of this approach, RMD points to both the language of the claims and the distinctions drawn in the claims themselves between claims to a folding panel assembly (claims 1 to 5), claims to a pivot mount (claims 6 to 10) and claims to a mount assembly (claims 11 to 13). RMD submits that claims 1 and 2 must be construed, keeping in mind this context.
ISSUES IN DISPUTE
The parties have filed a document headed “Statement of Issues in Dispute”. However that document predated the resolution of many of the matters which were previously in dispute between them. As I understand it, those parts of the document which presently identify the outstanding issues are as follows:
1 Whether or not (claim) 1 … include(s)
(a)the requirement the transverse movement of the pivot axis must occur without the need for intervention; or
(b)transverse movement of the pivot axis may occur upon disassembly and manual adjustment of a panel assembly.
2Whether or not the RMD products include a biasing means (as required by (claim) 2 … ).
3…
4Whether principles of construction permit a finding that the claims are infringed.
Whilst paras 1 and 2 may describe the ultimate factual issues which fall for determination in the case, para 4 correctly identifies the fact that the case is one of construction. The construction exercise must focus on the claims, possibly having regard to the specification, and not upon the allegedly infringing product.
CONSTRUCTION
The proper approach to construction of a claim in a patent appears in the following passage from the judgment of the Full Court (Sundberg, Emmett and Greenwood JJ) in Kinabalu Investments Pty Ltd v Barron and Rawson Pty Ltd [2008] FCAFC 178 at [44] and [45] as follows:
44The principles of construction applicable were not in dispute. When determining the nature and extent of the monopoly claimed, the specification must be read as a whole. But as a whole it is made up of several parts which have different functions. The claims mark out the legal limits of the monopoly granted. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that. Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. It is legitimate, however, to refer to the rest of the specification to explain the background of the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. See Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [73]-[75] (Hely J).
45Other more specific principles of construction collected in Flexible Steel at [81] are:
•a specification should be given a purposive construction rather than a purely literal one;
•the hypothetical addressee of the specification is the non-inventive person skilled in the art before the priority date;
•the words used in a specification are to be given the meaning the hypothetical addressee would attach to them, both in the light of the addressee’s own general knowledge and in the light of what is disclosed in the body of the specification;
•as a general rule, the terms of the specification should be accorded their ordinary English meaning;
•evidence can be given by experts on the meaning those skilled in the art would give to technical or scientific terms and phrases, and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning;
•however, the construction of the specification is for the court, not for the expert. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
At para 14 of its written submissions, Centor submits:
The applicant submits that the claims of the Patent are clear without any ambiguity. A claim must be read in accordance with the precepts of English grammar. Words should be given their ordinary meaning unless it is clear that the inventor used a term differently. There is no assertion here that the words in claim 1 and 2 are used differently to their ordinary meaning.
RMD takes a somewhat different approach. At para 8 of its written submissions it submits that:
For the purpose of the Patent, RMD submits that the hypothetical skilled addressee is a person who has experience in the design and development of folding windows and door systems. In that context, for the reasons identified further below, it is submitted that, whilst the Court would receive the evidence of Dr Gilmore as of assistance as a mechanical engineer, his lack of knowledge in the field … is such that where they give conflicting opinions the evidence of Mr Hancock is to be preferred over that of Dr Gilmore.
RMD’s submission appears to accept that both Dr Gilmore and Mr Hancock may give admissible evidence as to the understanding of a skilled addressee. However RMD submits that Mr Hancock is more experienced in the field, and that his evidence should be accepted for that reason. It is true that Mr Hancock has very substantial experience in connection with the construction and installation of folding windows and doors. However Dr Gilmore is also a very experienced engineer and claims expertise relevant to the questions arising in this case. I am not inclined to the view that the evidence of either should, by reason of their past history, training and experience be preferred over the other.
Centor submits that Mr Hancock’s evidence should be discounted because, it is said, he was in effect led to particular positions by the way in which RMD’s solicitors instructed him. I see no reason to doubt the appropriateness of the ways in which the expert witnesses were instructed by their solicitors. I see no reason to believe that either expert was overborne by his instructions or was, in any way, misled or forced into a position which might be inconsistent with that which he would otherwise have adopted. In any event, the opinions expressed by the two experts are of little assistance. Each merely expresses an opinion about the meaning of plain English words. Their evidence does little more than explain the context in which the Patent should be read.
In my view the integers of claim 1 are:
(i)a folding panel assembly;
(ii)having a plurality of hinged panels;
(iii)suspended in an opening within a frame including a jamb;
(iv)and a pivot mount;
(v)for adjustably mounting an end panel of the hinged panels to the jamb; and
(vi)the pivot mount including a pivot pin member;
(vii)to which an edge portion of the end panel is pivotally mounted;
(viii)the pivot member defining a pivot axis of the end panel;
(ix)a mounting member fixed to the jamb;
(x)the mounting member being a socket member having a bore therein; and
(xi)an arm extending between the pivot pin member and the mounting member transversely to the pivot axis;
(xii)the arm having one end received in the bore of the mounting member; and
(xiii)moveable axially therein; and
(xiv)its other end connected to the pivot pin member;
(xv)wherein the arm is moveable along its axis relative to at least one of the pivot pin member and the mounting member;
(xvi)to accommodate transverse movement of the pivot axis parallel to the opening;
(xvii)but constrained against movement relative to the pivot pin member and the mounting member in a direction transverse to the arm;
(xviii)thereby to prevent transverse movement of the pivot axis perpendicularly to the opening.
As to claim 2, the integers are:
(xix) a folding panel assembly as claimed in claim 1;
(xx) further comprising biasing means within the bore;
(xxi) for biasing the arm axially to a rest position.
SECTION 117 OF THE PATENTS ACT
Centor bases its claim of infringement upon s 117 which provides:
(1)If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.
(2)A reference in subsection (1) to the use of a product by a person is a reference to:
(a)if the product is capable of only one reasonable use, having regard to its nature or design – that use; or
(b)if the product is not a staple commercial product – any use of the product, if the supplier had reason to believe that the person would put it to that use; or
(c)in any case – the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.
As I understand it Centor relies upon para 117(2)(c). Its case is that the instructions instructed or induced use of the end pivot set in mounting a multiple panel door or window assembly. Centor submits that such use would infringe its patent and that, by virtue of s 117(1), the supply of the RMD products for use in accordance with the instructions would be an infringement of the Patent. In the end I understand RMD to defend the claim solely upon the basis that the RMD products do not infringe either claim 1 or claim 2. Thus use of them in a multiple panel assembly would not infringe the patent. It is not necessary that I address the other aspects of s 117.
Centor submits that in RMD’s submissions, it departs from the allegedly agreed position that the operation of s 117 is not in dispute. This concern seems to have arisen out of the emphasis which RMD places upon the fact that claims 1 and 2 are for folding panel assemblies having a plurality of hinged panels. However I do not understand that emphasis to be related to the engagement of s 117. It is rather related to the difficulties (for Centor, according to RMD) arising out of the fact that the Patent speaks of the arm moving freely inside the socket in the mount assembly. The RMD products do not have that feature in the sense that when assembled, the end of the arm is screwed into the socket and so cannot move relative to the pivot mount or the socket, unless the arm is removed from the base of the pivot mount in order to allow adjustment of the screw.
As I understand it, the question with respect to claim 1 is whether the RMD products contain a pivot mount as described in that claim and, in particular:
·whether or not the arm is received in the bore of the mounting member and moveable axially therein for the purposes of integer (xii); and
·whether the arm is moveable along its axis relative to the pivot pin member and/or the mounting member to accommodate transverse movement of the pivot axis in accordance with integer (xiii).
In connection with claim 2, there is the further question as to whether the RMD products contain biasing means as described in that claim.
A pivot mount for adjustably mounting an end panel
The term “pivot mount” clearly indicates the whole of the mount, including the fitting to the jamb, the fitting to the edge of the panel and everything in between. The Shorter Oxford English Dictionary suggests that the verb “mount” means:
Fix in position for a particular purpose; bring into readiness for operation. … settle, place in or on or fixed to a support, esp. for the purpose of display … .
In claim 1 the word “mounting” may describe the act of attaching the end panel to the jamb. However, once the panel has been “mounted” it could well be described as being “mounted”.
In the phrase “adjustably mounting”, the word “adjustably” is used to modify the word “mounting”. The difference between the parties is as to whether it describes the way in which the mounting action is to be performed or the result to be achieved, that is, the way in which the end panel will be mounted after the exercise of mounting is completed. In my view, the former usage would be unusual. One would not usually say that one was adjustably mounting one thing to another in order to convey the idea that the mounting process might involve some adjustment. The possible need for adjustment is contained in the use of the word “mounting”. Thus such a construction would render the word “adjustably” otiose. Further, the words “adjustably mounting” seem to be a summary of the “moveable” characteristic referred to in the last paragraph of claim 1. In my view, the requirement is that the panel assembly be capable of adjustment whilst it is mounted.
The arm having one end received in the bore of the mounting member and moveable axially therein
It is important to note the context in which these words appear. Clearly, the arm is to be moveable whilst mounted in the bore, in other words whilst the end panel is in place.
Wherein the arm is moveable along its axis relative to at least one of the pivot pin member and the mounting member
I have said enough to demonstrate that the arm is to be moveable in the mounted folding panel assembly.
To accommodate transverse movement of the pivot axis parallel to the opening
Whilst the panel assembly is mounted, the RMD products cannot accommodate movement of the pivot axis parallel to the opening. However Centor submits that adjustment may be made by partially dismantling the panel assembly. The last paragraph of claim 1 demonstrates that the purpose of the capacity to move is to prevent movement of the pivot axis relative to the opening, not to enable adjustment of the fitting after movement of the axis. It follows that the RMD products do not contain all of the integers of claim 1.
This conclusion is reinforced by reference to the body of the specification, particularly at p 3 ll 2-7 where it is said that:
Although it is known to use an adjustable bottom pivot mount … to adjust the end panel, the adjustable pivot mount must be adjusted at regular intervals to compensate for subsequent out-of-level movements between the end hanger and the next carrier. Many property owners neglect to make such adjustments.
A similar comment is made in the next paragraph at ll 13-15 in connection with taller panels. It is then said at ll 16-19:
It is an object of this invention to provide an improved pivot mount for a panel which overcomes or ameliorates one or more of the above described disadvantages, or which at least provides the consumer with a useful choice.
On p 5 ll 9-13 it is said that:
The bore and arm may rely on friction to dampen or stiffen the movement of the plunger arm into and out of the bore, thereby eliminating any loose feel (although an undamped system would also serve the general function, though with a less desirable feel). The friction may be obtained in any number of ways including oil damping, friction washer or the like.
The existing state of the art is said to involve adjustment by some person. A purpose of the invention is said to be obviation of the need for such human intervention. Nothing in the claims or the specification suggests that the invention involves dismantling of the panel assembly in order to make the contemplated adjustment.
These passages support the ordinary meaning of the words used in claim 1. There is no infringement of claim 1.
Biasing means
As to claim 2, the primary question is the meaning of the expression “biasing means within the bore for biasing the arm axially to a rest position”. The word “bias” does not have a distinct meaning which is clearly applicable in the present case. The Shorter Oxford English Dictionary and the Macquarie Dictionary seem to contain virtually the same definition. As a noun, the word relevantly means “an inclination, a propensity, a predisposition”. As a verb it means “influence (usually unfairly), inspire with prejudice” or, in an intransitive sense, “inclined to one side, swerve from the right course”. In this case the function of the biasing means is to bias the arm axially to a rest position. The circumstances in which the biasing means might operate are unclear. Possibly it is intended to deal with the situation in which the relative displacement of jamb and panel is reversible, perhaps where it results from swelling or shrinkage of building material. An alternative purpose may be to compensate for knocks and jolts which occur in opening and closing the panel assembly.
Dr Gilmore suggests that a screw-threaded bore may comprise biasing means. In other words, the bias is the choice, by the person mounting the panel assembly, of the extent to which the end of the arm is screwed into the socket. In view of my conclusion that the arm must be moveable in the socket, this argument is untenable. The RMD products do not have biasing means.
It follows that there is no infringement of claim 2.
ORDERS
The application must be dismissed. I shall receive submissions as to costs.
At the outset of the hearing of this matter, an associated matter, QUD 375 of 2010, was dismissed by consent. However the costs of those proceedings were reserved. I shall consider that question when I consider the question of the costs of these proceedings.
I certify that the preceding sixty-four (64) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett. Associate:
Dated: 19 October 2012
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