Damorgold Pty Ltd v Blindware Pty Ltd

Case [2017] FCA 1552

FEDERAL COURT OF AUSTRALIA

Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552

File number: VID 403 of 2015
Judge: MIDDLETON J
Date of judgment: 22 December 2017
Catchwords:

PATENTS – infringement – construction of the claims of the patent – construction of “responsive to”

PATENTS – validity – novelty – application of reverse infringement test to the US269 Patent, the JP 694 Patent and the Uniline Product

PATENTS – validity – inventive step – common general knowledge – obviousness – whether the use of a helper spring was common general knowledge – whether the Uniline Product constitutes information under s 7(3) of the Patents Act 1990 – whether the claimed invention was obvious – where an inventive skilled addressee does not derive the same solution as claimed invention

PATENTS – unjustified threats of infringement of a patent – s 128 of Patents Act 1990 not aimed at deterring infringement proceedings

CONSUMER LAW – misleading or deceptive conduct – alleged failure to warn end users of their potential exposure to liability for patent infringement – alleged false or misleading representations regarding coverage of a patent –  a general warning against infringement 

Legislation:

Competition and Consumer Act 2010 (Cth)

Copyright Act1968 (Cth)

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Patents Act 1990 (Cth)

Patents Amendment Act 2001 (Cth)

Trade Practices Act 1974 (Cth)

Cases cited:

Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411

Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd (2016) 245 FCR 485

AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419

AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356

AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99

BLH Engineering & Construction Pty Ltd v Pro 3 Products Pty Ltd (2015) 114 IPR 105

CQMS Pty Ltd v Bradken Resources Pty Ltd (2016) 120 IPR 44

Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 229 FCR 68

Damorgold Pty Ltd v JAI Products Pty Ltd [2014] FCA 150

Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877

DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132

Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22

General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457

Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461

JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68

Jones v Dunkel (1959) 101 CLR 298

Jupiters v Neurizon Pty Ltd (2005) 222 ALR 155

Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2011] FCAFC 86

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173

Melbourne v Terry Fluid Controls Pty Ltd (1993) 26 IPR 292

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

Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 253

Nine Network Australia Pty Ltd v Ice TV Pty Ltd [2007] FCA 1172

NSL Engineering Pte Ltd…

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Details
AGLC
Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552
Case
[2017] FCA 1552
Decision Date

CaseChat Overview and Summary

Damorgold Pty Ltd initiated proceedings against Blindware Pty Ltd in the Federal Court of Australia, alleging infringement of several claims under a patent related to roller blinds. Damorgold asserted that Blindware’s products infringed on claims 1 to 25, 29, and 30 of the patent, but later withdrew claims concerning 26, 29, and 30. The court examined the interpretation of the term “responsive to” within the patent claims, with Damorgold arguing for a broad interpretation allowing parallel actions, while Blindware contended for a stricter interpretation requiring direct interaction. The court ultimately ruled in favour of Blindware, finding that the term “responsive to” required a form of interaction between the rotation of the blind cylinder and the tensioning of the biasing means, which was not present in Blindware’s products.

The court also considered the validity of the patent, with Blindware arguing that the invention lacked both novelty and an inventive step. In addressing novelty, the court assessed prior art, including a product by Uniline Australia Limited, a U.S. patent, and a Japanese utility model. The court found that the invention did not lack novelty due to these prior art references, and therefore the patent remained valid. Additionally, the court determined that the invention possessed an inventive step, as it did not derive from common general knowledge and was not obvious to a skilled person. The court further ruled that section 128 of the Patents Act 1990 was not intended to deter unjustified threats of patent infringement, and that Blindware’s actions did not constitute misleading or deceptive conduct under consumer law.

The court’s decision hinged on the interpretation of technical terms within the patent claims and a thorough examination of prior art to assess novelty and inventive step. Ultimately, the court rejected Damorgold’s claims of infringement and upheld the validity of the patent. The court ordered the parties to confer and submit written submissions on the orders to be made, including any costs associated with the proceedings.

Orders

Orders of the court

1. The parties confer, and by 4:00pm on 2 February 2018 file and serve any joint written submissions on the orders to be made (including costs), or failing agreement, separate written submissions.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

I note that Damorgold did not ultimately pursue a claim in respect of claim 30.3. EVIDENCE Damorgold relied upon the evidence of the following witnesses:(1)Mr William (Bill) Hunter, a mechanical engineer called as an expert witness in these proceedings.(2)Mr David Kelleher, a director and secretary of Blinds in Mind Pty Ltd, to whom the second applicant, Vertilux Corporation Pty Ltd (‘Vertilux’), is a supplier. (3)Mr Ross Lava, a director of both Damorgold companies.(4)Mr Bruce Mackie, a sales director at HMA Blinds and a previous employee of a company called Helioscreen Australia Pty Ltd (‘Helioscreen’).(5)Mr Malcolm Neil Bell, a partner of Phillips Ormonde Fitzpatrick Lawyers who has the care and conduct of this proceeding on behalf of Damorgold. Blindware relied upon the evidence of the following witnesses:(1)Mr Andrew Crick, an industrial designer called as an expert witness in these proceedings.(2)Mr Tommy Ruonala, a non-executive director of Uniline Australia Ltd (‘Uniline’).(3)Ms Kristine Francis Brown, a former national marketing and sales manager at Uniline. (4)Mr Ross Emms, the Managing Director of Ireland Blinds Pty Ltd, a company that had been a customer of Uniline.(5)Mr Matthew Michael Bowe, a production manager at Geneng Pty Ltd, which worked with Uniline on the development of various blind components.(6)Ms Rebekah Frances Gay, a partner of Herbert Smith Freehills who has the care and conduct of this matter on behalf of Blindware.4. INFRINGEMENT Damorgold’s pleaded case was that Blindware infringed claims 1 to 26, 29 and 30 of the Patent. However they later relinquished their claims of infringement in relation to claims 26, 29 and 30: see Damorgold’s Closing Submissions on Infringement, [34]. Before considering the impugned conduct now said to have infringed claims 1 to 25, I will first consider the relevant legal principles in relation to patent infringement. 4.1 The relevant legislative provisions The Patents Act does not provide a general definition of infringement. Rather, s 13 confers on the patentee the exclusive right to exploit the invention claimed in the relevant patent and to authorise others to exploit the invention:13 Exclusive rights given by patent(1)Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention.(2)The exclusive rights are personal property and are capable of assignment and of devolution by law.(3) A patent has effect throughout the patent area. The Dictionary in Sch 1 of the Patents Act provides a definition of the term “exploit”:exploit, in relation to an invention, includes:(a)where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or(b)where the invention is a method or process—use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.”

Decision

Reasons for decision

However, my own view is that the true meaning of “rotation therewith” in context is that propounded by Blindware – in essence, requiring a direct connection.4.6 Conclusion For the foregoing reasons, I reject Damorgold’s interpretation of “responsive to” in integers 1.9 and 1.10, and conclude that Blindware does not infringe the Patent. In my view, it is not sufficient for the purposes of “responsive to” that the rotation of the blind cylinder and the tensioning of (or release of energy by) the biasing means occur merely in parallel as two “passive responses” to a third action. Rather, there would need to be some form of interaction between those two elements that leads to the anticipated outcome of storing or releasing energy. Such an interaction is not present in the Blindware Spring Assists. On the basis of the parties’ submissions, this disposes of the claim of Damorgold on infringement. 5. VALIDITY Before considering the issue of validity in this proceeding, I observe that in a separate and unrelated proceeding involving Damorgold, the validity of claims 1 to 30 of the Patent was questioned unsuccessfully. This resulted in a certificate being issued to Damorgold to that effect pursuant to s 19 of the Patents Act: Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 229 FCR 68. I note that the outcome of that proceeding is not relevant to the determination of validity in this proceeding, but that the certificate may bear on the question of costs if Damorgold are again successful in defending the validity of the Patent: see Patents Act s 19(2) and AstraZeneca AB v Alphapharm Pty Ltd [2014] FCA 419. In this proceeding, Blindware’s pleaded case in respect of validity is that the invention as claimed in each of claims 1 to 25 of the Patent is not a patentable invention. This was said to be because the invention, when compared with the prior art base as it existed before the priority date of the claims:(1)lacked novelty; and(2)lacked an inventive step. I will consider each in turn.5.1 Novelty An invention is only a patentable invention if the invention, when compared with the prior art base as it existed before the priority date of that patent claim, is “novel”: Patents Act s 18(1)(b)(i). Broadly, Blindware contended that the invention specified in the Patent was not novel because of three particular events. These were:(1)the supply by Uniline Australia Limited to persons in Australia (prior to the priority date of the Patent) of a chain-operated blind with a helper spring, being a mechanism incorporating the combination of a spring and a clutch to control the extension and retraction of a roller blind (the ‘Uniline Product’);(2)the publication on 1 December 1992 of US Patent No. 5,167,269 titled “Roller mechanism for roller blinds” (‘US 269’); and(3)the publication on 30 April 1991 of Japanese Utility Model No. H3-46694 (‘JP 694’). Before turning to a detailed consideration of each event and its impact on novelty, it is prudent to cover the relevant legal principles in further detail.5.1.1Legal principles

Ratio Decidendi

Legal Principle Established

For Blindware, the use of “when” in this passage denotes the simultaneous occurrence of two events, namely the pulling of the cord and the rotation of the cylinder, as distinct to language used elsewhere in the specification denoting a direct causal relationship between components.4.5 Consideration As I have mentioned, the parties agree that the principal question before the Court in respect of infringement concerns the construction of the term “responsive to” in the Patent. I therefore begin with an overview of the principles of patent claim construction relevant to the present case, before turning to an evaluation of “responsive to”.4.5.1Principles of patent claim construction The parties agree that the term at issue in the present case is not a term of art, and it should therefore be given its ordinary meaning. The principles applicable to patent claim construction are uncontroversial and have been summarised in Jupiters v Neurizon Pty Ltd (2005) 222 ALR 155 at [67]:(i) the proper construction of a specification is a matter of law …(ii)a specification should be given a purposive, not a purely literal, construction … and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date …(iii)the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification …(iv)while the claims are to be 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, although terms in the claim which are unclear may be defined by reference to the body of the specification … the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter …(v)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning … the court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time …; and(vi)it is for the court, not for any witness however expert, to construe the specification … For a more recent articulation of these general principles, see Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85 at [34]-[42]; Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 2) [2016] FCAFC 111 at [93]-[97]; and Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138 at [190]-[193] (‘Sandvik’). I emphasise in particular the principle that clear and unambiguous words in a claim in a patent must be construed without resort to other parts of the complete specification. The width of a claim expressed in clear and unambiguous language cannot be varied or qualified by reference to the body of the specification: Rares J in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd (2016) 245 FCR 485 at [145] (‘Artcraft’).