Damorgold Pty Ltd v Blindware Pty Ltd
[2017] FCA 1552
•22 December 2017
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 v Australian Mobile Mining Equipment Systems and Accessories Pty Limited [2016] FCA 614
Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 2) [2016] FCAFC 111
Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCAFC 195
Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481
Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11
Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588
Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138
Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 316 ALR 590
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848
Date of hearing: 19-21 September 2016 and 1-2 February 2017 Registry: Victoria Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 426 Counsel for the Applicants and Cross-Respondents: Mr B N Caine QC with Dr W A Rothnie Solicitor for the Applicants and Cross-Respondents: Phillips Ormonde Fitzpatrick Lawyers Counsel for the Respondent and Cross-Claimant: Mr T D Cordiner QC Solicitor for the Respondent and Cross-Claimant: Herbert Smith Freehills ORDERS
VID 403 of 2015 BETWEEN: DAMORGOLD PTY LTD (ACN 051 905 705)
First Applicant
VERTILUX CORPORATION PTY LTD (ACN 85 074 643 182)
Second Applicant
AND: BLINDWARE PTY LTD (ACN 122 203 061)
Respondent
AND BETWEEN: BLINDWARE PTY LTD
Cross-Claimant
AND: DAMORGOLD PTY LTD (and another named in the Schedule)
First Cross-Respondent
JUDGE:
MIDDLETON J
DATE OF ORDER:
22 December 2017
THE COURT ORDERS THAT:
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.
REASONS FOR JUDGMENT
MIDDLETON J:
1. INTRODUCTION
This proceeding concerns competing claims of infringement and invalidity in relation to Patent No. 760547 (the ‘Patent’) which is a patent for a spring-assisted blind control mechanism used for raising or lowering blinds.
The first and second applicants are, respectively, the patentee and exclusive licensee of the Patent. For convenience, I will refer to the applicants as ‘Damorgold’, unless the context otherwise requires specific mention of either applicant.
Damorgold contend that the respondent infringed various claims of the Patent contrary to the Patents Act 1990 (Cth) (the ‘Patents Act’), and also engaged in misleading or deceptive conduct contrary to Sch 2 of the Competition and Consumer Act 2010 (Cth) (the Australian Consumer Law or ‘ACL’) and the Trade Practices Act 1974 (Cth) (the ‘TPA’). Damorgold seek declarations, injunctions, damages, delivery up or destruction and costs against the respondent.
The respondent (‘Blindware’) counterclaims, alleging that the Patent is invalid. Blindware further alleges that Damorgold engaged in misleading and deceptive conduct and made unjustified threats. Blindware seeks an order revoking the Patent, and additionally seeks declarations, injunctions, damages and costs against Damorgold. Blindware also initially pressed claims of delay, acquiescence or laches, but now no longer does so.
These Reasons will separately consider the issues of infringement and validity. Based upon my findings in those respects, I will then consider the associated claims made by each party in relation to misleading and deceptive conduct and unjustified threats. The issues relating to relief were to be left to a later hearing. Now I turn to a consideration of the Patent itself.
2. THE PATENT
2.1 Background
The Patent is entitled ‘A blind control mechanism’. The inventor was Vito Fortunato.
The complete application for the Patent was filed on 25 August 2000, claiming priority from provisional application No. PQ2410 made on 25 August 1999.
The Patent was published and became open to public inspection on 22 March 2001, and was granted on 28 August 2003.
At all relevant times the second applicant has been the exclusive licensee of the Patent, pursuant to a written Licence Agreement entered into by the first and second applicants on 9 July 2010.
2.2 The specification
According to the specification, the Patent is concerned with blinds and similar arrangements that are selectively operable between open and closed conditions, especially roller blinds.
The specification broadly summarises roller blinds:
Roller blinds generally include a length of flexible material wound onto a cylinder with the roller blind operating between its open and closed conditions by rotation of the cylinder causing extension and retraction of the flexible material. Roller blinds generally include a mechanism for facilitating such operation.
According to the specification, one type of such mechanisms is a “spring roller”. This type of mechanism uses a biasing spring to counterbalance the weight of the extended flexible material and a latch to stop unauthorised retraction of the material. The material can be retracted by rotating the cylinder, in an extending direction, to a position that disengages the latch, and rotating the cylinder, in a retracting direction, at a speed that will not permit the latch to re-engage. This speed may be dictated by the release of the energy stored in the spring alone or as altered by manual intervention.
A problem with this mechanism is that it can be difficult to operate, as the specification observes:
This type of mechanism can be difficult to operate as the latch is controlled by rotation of the blind cylinder and what is a suitable speed to avoid re-engagement of the latch is variable. Furthermore the spring may retract the material at such a speed that the blind over rotates past its retracted position, which will affect the tension of the spring.
Another type of roller mechanism identified in the specification is the “clutch roller”:
The clutch roller includes a drive member which is operable to cause rotation of a driven member. The driven member cannot rotate unless it is rotated by the drive member. This is achieved by the driven member engaging a helical spring which grips a fixed shaft when a rotating force is applied directly to the driven member. The drive member is operable to release the grip of the helical spring and thereby cause rotation of the driven member, which is connected to the blind cylinder.
The specification identifies issues with the clutch roller system:
Operation of the blind therefore requires the user to overcome the frictional resistance of the helical spring. Furthermore, the clutch roller does not include any means to counter balance the weight of the extended material. However, operation of the blind using the clutch roller mechanism is relatively accurate.
Accordingly, the specification identifies the objects of the invention as:
It is an object of this invention to provide a mechanism that is relatively easy to operate. It is a further object of this invention to provide such a mechanism that accommodates, at least to some extent, the weight of the extended material.
A preferred embodiment is described on pages 7-12 of the specification by reference to figures 1 and 2 therein.
Apart from the drawings in figures 1 and 2, the Patent ends with 30 claims for a mechanism, with claims 1 and 3 being independent claims and claim 30 being an “omnibus claim”.
2.3 The claims
It is convenient to reproduce the claim integer table set out in Annexure B of Damorgold’s Outline of Submissions on Infringement, with which Blindware has not taken issue despite some very minor differences between it and the wording of the Patent.
Claim 1 identifies a mechanism which is a combination of 27 integers:
Integer
Integer Description
1.1
Mechanism for controlling extension and retraction of a blind or the like
1.2
said mechanism having a longitudinal axis and including
1.3
a fixed shaft located at one extreme end of said axis
1.4
and being connectable to a support for said mechanism so as to be thereby fixed against relative movement
1.5
the longitudinal axis of said fixed shaft being substantially coincident with the longitudinal axis of said mechanism
1.6
a cylinder for carrying a blind
1.7
and being connected to said fixed shaft for rotation relative thereto about an axis substantially coincident with the longitudinal axis of the mechanism
1.8
biasing means [spring assist] connected to said [blind] cylinder
1.9
and being responsive to rotation of said [blind] cylinder in a blind extending direction to store energy
1.10
and being responsive to rotation of said [blind] cylinder in a blind retracting direction to release said stored energy
1.11
and thereby apply a turning force to said [blind] cylinder tending to rotate the [blind] cylinder in said blind retracting direction
1.12
manually operable drive means including
1.13
a drive member
1.14
and a driven member
1.15
each of said members being carried by said fixed shaft
1.16
said drive member being capable of rotation relative to said fixed shaft
1.17
and thereby cause rotation of said [blind] cylinder in either said blind extending direction or said blind retracting direction
1.18
said driven member being connected to said drive member for limited rotation relative thereto
1.19
and being connected to said [blind] cylinder for rotation therewith
1.20
clutch means acting between said fixed shaft and said [blind] cylinder
1.21
and being operative in an engaged condition to at least resist rotation of said [blind] cylinder under the influence of said stored energy alone
1.22
and permitting such rotation when said clutch means is in a disengaged condition
1.23
and wherein said clutch means extends around a fixed cylindrical surface so as to be capable of engaging that surface
1.24
and said cylindrical surface is substantially coaxial with said longitudinal axis
1.25
whereby when in use, rotation of said drive member in either direction causes said clutch means to adopt said disengaged condition
1.26
and continued rotation of the drive member in the same direction results in corresponding rotation of both the driven member and the [blind] cylinder
1.27
whereas cessation of said rotation of the drive member results in said clutch means adopting said engaged condition
Claim 2 adds to claim one the feature:
2.2
said drive member is positioned between the ends of said fixed shaft
Claim 3 is an independent claim for a mechanism which may be broken down into a combination of 26 features. It differs from claim 1 in that:
(1)it does not include integers 1.23 and 1.24, and
(2)includes integer 2.2.
Claim 4 adds to claim 3 integers 1.23 and 1.24.
Claim 5 adds to the claims 1, 2 and 4 the feature that:
5.2
wherein said cylindrical surface is a surface (1.23 and 1.24) of said fixed shaft (1.3)
Claim 6 adds to claims 1, 2, 4 and 5 the feature that:
6.2
said clutch means engages directly with said cylindrical surface when in said engaged condition
Claim 7 adds to the preceding claims the feature that:
7.2
said driven member extends over a substantial part of the axial length of said fixed shaft
Claim 8 adds to the preceding claims the feature that:
8.2
said clutch means engages direct with both said drive member and said driven member, at least during transition from said engaged condition to said disengaged condition
Claim 9 adds to the preceding claims the features that:
9.2
said drive member is mounted on said fixed shaft; and
9.3
said driven member is mounted on said drive member
Claim 10 adds to the preceding claims the feature that:
10.2
said drive member includes a wheel section to which a turning force can be applied
Claim 11 adds to the preceding claims the feature that:
11.2
a tubular barrel section extends from one side of said wheel section in a direction away from said one extreme end of the longitudinal axis of said mechanism
Claim 12 adds to the preceding claims the feature that:
12.2
a slot is formed through the wall of said tubular barrel section and extends longitudinally along said barrel section
Claim 13 adds to the preceding claims the features that:
13.2
said clutch means includes at least one helical spring surrounding said fixed shaft in substantially coaxial relationship
13.3
and a laterally outwardly extending finger at each end of said helical spring
13.4
each said finger being located between the longitudinal edges of said slot and engageable with a respective one of said edges
Claim 14 adds to the preceding claims the features that:
14.2
said driven member includes a tubular barrel portion located over the tubular barrel section of the drive member
14.3
and an inwardly projecting rib formed on said barrel portion extends longitudinally thereof and is located within said slot of the drive member
Claim 15 adds to the preceding claims the features that:
15.2
said rib is located between said fingers
15.3
and each longitudinal side of the rib is engageable with a respective one of said fingers
Claim 16 adds to the preceding claims the features that:
16.2
wherein a direct connection exists between said driven member and said [blind] cylinder
16.3
said direct connection being such as to cause said driven member and said [blind] cylinder to rotate in unison
16.4
and said spring fingers engage directly with both said drive and driven members when the drive member is rotated relative to the fixed shaft
Claim 17 adds to the claims 1 to 12 the features that:
17.2
said clutch means includes at least one helical spring surrounding said fixed shaft in a substantially coaxial relationship
17.3
each end of said helical spring including a laterally outwardly extending finger forming at least part of a drive connection between said drive and driven members
Claim 18 adds to the preceding claims (except claim 14) the feature that:
18.2
said at least one helical spring includes at least three said helical springs arranged end to end
Claim 19 adds to the preceding claims (except claim 14) the feature that:
19.2
said at least one helical spring constitutes the clutch means in said mechanism influencing rotation of said [blind] cylinder
Claim 20 adds to the preceding claims the feature that:
20.2
said clutch means is the sole clutch means in said mechanism influencing rotation of said [blind] cylinder
Claim 21 adds to the preceding claims the feature that:
21.2
said drive and driven members together with said clutch means constitute the entire assembly of parts through which manually induced drive is transmitted to said [blind] cylinder
Claim 22 adds to the preceding claims the feature that:
22.2
said drive member is of unitary construction
Claim 23 adds to the preceding claims the feature that:
23.2
said driven member is of unitary construction
Claim 24 adds to the preceding claims the features that:
24.2
said biasing means [spring assist] includes an elongated cylindrical spring
24.3
one end of said cylindrical spring being connected to said [blind] cylinder so as to be held against relative rotation
24.4
and the other end of said cylindrical spring being connected to said fixed shaft so as to be held against rotation relative thereto
Claim 25 adds to the preceding claims the features that:
25.2
interconnecting means provides a connection between said biasing means [spring assist] and said fixed shaft
25.3
opposite ends of said interconnecting means are connected to said biasing means [spring assist] and said fixed shaft respectively
25.4
and the connection at each said end being such as to prevent relative rotation
Claim 26 to claim 29 are not alleged to be infringed.
Claim 30 is in terms:
Mechanism for controlling extension and retraction of a blind or the like, substantially as herein described with reference to the accompanying drawings.
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.”
This definition of “exploit” is inclusive, and not exhaustive.
In the case of the supply of a patented product, s 117 specifically addresses when such a supplier will be taken to have infringed that patent:
117 Infringement by supply of products
(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.
4.2 Scope and nature of the products and questions at issue
I understand the parties to have converged in three important respects regarding the scope and nature of the products and questions at issue in Damorgold’s infringement claim. These include: (i) the reference to SL20 spring assist units as the primary product to be evaluated; (ii) Blindware’s admissions concerning the supply, design and use of the products at issue; and (iii) the understanding shared by the parties concerning the operation of the products at issue. Based on these areas of convergence, the parties agreed that the main issue to be resolved in respect of Damorgold’s infringement claim concerned the construction of the term “responsive to” in claim integers 1.9 and 1.10 as set out above (although I also note Blindware’s additional argument concerning integer 1.19). I briefly give an overview of these areas of convergence, before turning to my consideration of the main question at issue.
4.2.1The products at issue
The alleged infringing conduct pertained to the supply of following products of Blindware (collectively, the ‘Blindware Spring Assists’):
·SL20 spring assist units (‘SL20’);
·Galaxy G300 spring-assisted clutch mechanisms (‘G300’);
·Galaxy G400 spring-assisted clutch mechanisms (‘G400’).
Also relevant to the alleged infringing conduct were various individual components that, together with the aforementioned Blindware Spring Assists, comprised the RollEase Skyline and Galaxy spring-assisted roller blind systems (these individual components will be referred to as ‘Blindware Associated Components’).
Together, the Blindware Spring Assists and Blindware Associated Components will be referred to as the ‘Blindware Products’.
The parties were able to structure their analysis in this proceeding almost exclusively by reference to the SL20 product. This was because they agreed that the G300 and G400 mechanisms operated in the same way as the SL20 mechanism, save that they did not have the features of claim 22 of the Patent. Damorgold does not contend that claim 22 is infringed in respect of G300 and G400.
4.2.2Blindware’s admissions concerning the supply, design and use of the products at issue
Blindware admitted to supplying in the patent area the Blindware Spring Assists from about October 2009, and the Blindware Associated Components from about June 2008.
Blindware further admitted that:
·the Blindware Spring Assists were designed for and sometimes supplied with Blindware Associated Components to form a mechanism for controlling extension and retraction of a blind, although there were indeed instances where the Blindware Spring Assists were supplied individually;
·the Blindware Spring Assists were capable of only one reasonable use, namely use with Blindware Associated Components to form a spring-assisted mechanism for controlling extension and retraction of a blind;
·the Blindware Spring Assists were not staple commercial products;
·in supplying the Blindware Products, Blindware had reason to believe that end users in the patent area would use those products to form spring-assisted mechanisms for controlling extension and retraction of a blind or the like; and
·it instructed or induced end users to use the Blindware Products to form spring-assisted mechanisms for controlling extension and retraction of a blind or the like.
These admissions served to narrow the focus of the dispute to whether, in relation to claims 1 to 25, use of the Blindware Products by a person would infringe the Patent under the Patents Act s 117(1).
4.2.3The operation of the products at issue
As mentioned, the SL20 product was considered by the parties to be representative of the Blindware Spring Assists. Subject to its qualification regarding adaptors, Blindware accepted Damorgold’s description of the operation of the drive unit and biasing spring sub-assembly of SL20, which in turn relied on certain evidence of Mr Hunter. Mr Hunter’s evidence in this regard included, inter alia, the following:
57.When assembled, the proximal hub of the biasing spring sub-assembly fits into the distal end of the drive unit. The interconnecting member M which projects through the proximal hub fits into the end of the fixed shaft, and is secured by a screw. The pair of flanges on the proximal end of the interconnecting member fit into a slot in the end of the fixed shaft. This connection holds the interconnecting member against rotation relative to the fixed shaft. The interconnecting member is fixed to the end of the metal rod and the connection between the interconnecting member and the fixed shaft therefore holds the metal rod and the distal hub against rotation. The proximal hub, however, can rotate around the interconnecting member.
58.As noted above the proximal end of the biasing spring is attached to the proximal hub. …The external profile of the proximal hub matches the internal profile of the driven member allowing he proximal hub to slide into the end of the drive unit and be held against relative rotational movement.
59.The blind cylinder is also connected to the driven member as described above via the sleeve (cylinder adaptor) which has an inner profile which matches the outer profile of the driven member.
60.Pulling of the pull chain causes the rotation of the driven member of the drive unit, which in turn causes the rotation of the blind cylinder and the proximal end of the biasing spring. As noted above the distal end of the spring is held against rotation. Consequently, depending on the direction of rotation, the rotation of the driven member either winds up the biasing spring or unwinds the biasing spring.
61.In the case of Mechanism 1 [SL20], I noted that rotation of the drive wheel by pulling on the pull chain directly caused the driven member to rotate. As the blind cylinder is connected directly to the driven member, rotation of the drive wheel causes the blind cylinder to rotate. …
Additionally, Mr Hunter accepted during cross-examination that the blind cylinder is not requisite to the tensioning of, or releasing of energy by, the biasing spring in SL20. This is reflected in the following exchange:
COUNSEL: …if we take away the cylinder, as you have done, from the drive end there, as you did with the Damorgold or the Vertilux product we just looked at before, which is RL4, if you were to spin the cylinder, does that put any tension into the spring?
MR HUNTER: No.
COUNSEL: No. Now, if you hold the end of the drive end and pull the cord… as you did with the Vertilux product, does that impart tension into the spring?
MR HUNTER: Yes.
COUNSEL: And so the cylinder does not need to be connected to the system to hold the tension there, does it?
MR HUNTER: No, it doesn’t.
It is evident from the above evidence of Mr Hunter that the tensioning of, or releasing of energy by, the biasing spring is caused by the driven member (not the blind cylinder). I do not understand this to be contested between the parties. It is likewise evident that, not only does the turning of the driven member wind or unwind the biasing spring, but it also turns the blind cylinder (ignoring for now the concerns raised by Blindware in respect of adaptors – I deal with this aspect of their case in my Reasons below). Thus, the tensioning of the biasing spring (or its releasing of energy) occurs simultaneously with, or corresponds to, the turning of the blind cylinder. Again, I do not understand this to be contested between the parties.
The fact that the tensioning of, or release of energy by, the biasing means in the Blindware Spring Assists merely corresponds to the turning of the blind cylinder (and is not caused by it) is critical to this question of infringement. This is because, as stated above, integers 1.9 and 1.10 of the Patent require that the storing or release of energy in the biasing means must be “responsive to rotation of” the blind cylinder.
Thus, in their Closing Submissions on Infringement, Damorgold stated that “the central area of dispute between the parties is the proper construction of the expression ‘responsive to’ in claims 1 and 3 (integers 1.9 / 3.9 and 1.10 / 3.10)”. Likewise, Blindware stated that “[t]he key issue in dispute on infringement concerns the construction of the words ‘respective to’ as used in claim 1 in relation to the biasing means”.
Accordingly, based on the foregoing areas of convergence between the parties (and again, putting to one side Blindware’s concerns regarding adaptors), I understand the issue before the Court in respect of Damorgold’s infringement case to be as follows. If, as Blindware contends, the phrase “responsive to” requires a causal connection between the blind cylinder and the biasing means, the Blindware Spring Assists would fall outside the scope of the Patent. If on the other hand, as Damorgold contend, the phrase “responsive to” is not limited to a causal connection, and it is sufficient that the operation of biasing means and blind cylinder correspond, the Blindware Spring Assists would infringe the Patent.
I now provide an overview of the parties’ arguments in this regard.
4.3 Arguments of Damorgold regarding “responsive to”
Damorgold contended that the words “responsive to” in integers 1.9 and 1.10 did not require a causal connection between the biasing means and the blind cylinder. They submitted that a broad construction was more appropriate (Damorgold Closing Submissions on Infringement, [44]):
Damorgold contends that, when understood in the context of the Patent as a whole, these integers simply require that, when the blind cylinder is turned in the relevant direction, the biasing means responds so as either to store energy (when the blind is being extended) or to release the stored energy (when the blind is being retracted) according to the direction of rotation of the blind cylinder. This feature requires only that, when something happens or is done to component A, the specified consequence occurs to or in component B. Thus, when the blind cylinder is rotated in either the blinding extending direction or the blind retracting direction, the biasing spring stores or releases energy, as the case may be.
Damorgold put forward the following main arguments in support of its position.
First, Damorgold argued that its construction of “responsive to” was more consistent with its dictionary meaning. “Responsive” is the adjectival form of which “respond” is the verb, and Damorgold pointed to the Macquarie Dictionary as offering a more extensive definition for “respond” as a verb:
1. to answer; give a reply in words …
2. to make a return by some action as if in answer …
3.(sometimes followed by to) to exhibit some action or effect as in answer; react …
4. to say in answer; reply …
Damorgold also noted that the Shorter Oxford English Dictionary provides the following definition of “respond” and “responsive”:
respond
1Answer, give a reply; (of a congregation) say or sing the response in reply to a priest etc.
2 Correspond to rare.
3Act or behave in an answering or corresponding manner; act in response or responsively (to); …
4 Answer or correspond to; reciprocate.
5 Say in response, reply. …
responsive
1 Answering, making answer or reply. Orig. spec., written in reply. …
2 Correspondent, corresponding. rare
3Responding readily to some stimulus or influence; sympathetic; impressionable. …
4 Characterized by the use of (liturgical) responses.
Therefore, Damorgold contended that the expression “responsive to” had a range of meanings. It could mean “be caused by”. However, it has wider meanings that encompass not only actions “in answer”, but also actions “as if in answer” and, in addition, something which behaves in a corresponding manner. Although the Shorter Oxford English Dictionary identifies its respective second definitions of “respond” and “responsive” as “rare”, Damorgold pointed out that such an identification does not attach to the third or fourth definitions.
Secondly, Damorgold submitted that the skilled addressee would understand that the expression “responsive to” is used in the wider sense. They relied on the evidence of Mr Hunter, who considered that this feature of the Patent would be satisfied if energy was stored in the biasing means simultaneously with the rotation of the cylinder. In cross-examination, Hunter summarised his understanding of integer 1.9 in claim 1 (transcript, pp 81-2):
HIS HONOUR: So what does that, perhaps in your own words, explain to you, looking at the biasing means being the subject matter?
MR HUNTER: It means that the – the biasing means is responding to the rotation of the said cylinder in the blind-extending direction. In other words, when the word [sic] is being extended and lowered, that there’s energy being stored in the biasing means.
…
COUNSEL: So, Mr Hunter, your proposition, or your contention here, sorry, your understanding here is that this integer of the claim is met as long as simultaneously with the rotation of the cylinder, energy is stored into the biasing means?
MR HUNTER: That’s right.
Mr Hunter focused on the role that pulling on the cord has in the operation of the mechanism:
MR HUNTER: In other words, there’s an action of pulling the cord, and there’s a response to that action, which is that the various members in the drive means are rotated and the cylinder rotates. So when you start introducing the term causative, which has obviously taken place in some – in the – the various affidavits, that, to me, is introducing a word that isn’t necessary when we’re talking about responsive to.
…
COUNSEL:Well – so if the biasing means stores and releases energy as a result of – using your language – the rotation of a cylinder ---?---
MR HUNTER: Yes.
COUNSEL:--- that means the rotation of the cylinder causes the release and storage of the energy in the biasing means?---
MR HUNTER: No. Well, that’s not what I’ve said there in paragraph 18. I’ve said that – and I’ve said it consistently throughout my affidavits that the storing of energy in the biasing spring is a response to the winding of the pull cord, the driving of the drive member. It’s one of several responses that take place as a result of that.
COUNSEL:But what I’m – so the words that I’m trying to focus on here is when you talk about “passive” here you mean that each of things occur as a result of an action?---
MR HUNTER: An action---
COUNSEL: Yes? ---
MR HUNTER: ---which is the action of pulling the pull cord.
Thus, for Damorgold, the simultaneous rotation of the blind cylinder and storage (or release) of energy in the biasing means – each as a result of pulling the cord – is sufficient to characterise the biasing means as “being responsive to rotation of said [blind] cylinder” in integers 1.9 and 1.10. In that regard, Damorgold also relied upon Mr Hunter’s assessment that SL20 satisfies integers 1.9 and 1.10 through “simultaneous” or “passive” responsiveness of the biasing means to the blind cylinder:
[Integer 1.9]: …Simultaneous rotation of the driven member, the connected cylinder at one end of the biasing spring occurs passively only as a result of the active rotation of the drive member (i.e by pulling the pull chain). Accordingly, as the cylinder is being (passively) rotated by the active rotation of the drive member in the blind extending direction, the biasing spring is also simultaneously being (passively) wound up to store energy in it.
[Integer 1.10]: In light of integer 1.9 above, opposed rotation of the cylinder allows the biasing spring to unwind, thereby releasing energy from it.
For Damorgold, this reflects the understanding that a skilled addressee would have concerning “responsive to” in integers 1.9 and 1.10.
Thirdly, Damorgold noted that in other places within the Patent, where the relationship of cause and effect needed to be specified precisely, it was. Damorgold therefore submitted that the expression “responsive to” had been carefully chosen, and could not be treated as if it was perfectly analogous to the expression “caused by”. When the patentee intended to specify in the claims that something “caused” some other thing, that was done so in express terms. Thus, in contrast to the use of “responsive to” in these integers, other integers expressly refer to “cause” or “results in” (see, eg, integers 1.17, 1.25, 1.26 and 1.27). Thus, it would be erroneous to consider the use of the term “responsive to” as a function of whether the subject of a sentence is acting on something or being acted on. Rather, if Damorgold had intended to convey that a direct causative relationship was required, the appropriate and more accurate expression would have been “is caused by”.
Damorgold also submitted that the Patent specification does not provide any technical or functional reason which furnishes a basis for a narrow interpretation of “responsive to” as contended for by Blindware.
4.4 Arguments of Blindware regarding “responsive to”
Blindware submitted that the words “responsive to” in integers 1.9 and 1.10 of the Patent require a causal connection between the biasing means and the blind cylinder. The absence of such a causal connection in relation to the Blindware Products meant that the Patent was not infringed. Blindware presented the following main arguments in this regard.
First, Blindware contended that the term “responsive to” is most naturally understood as indicating a causal relationship between two things. Blindware argued that the term immediately conveys a functional interrelationship between a subject and object, in which the subject causes the object to do something. Blindware pointed to the language used by opposing counsel in opening submissions as an example (transcript, p 17):
HIS HONOUR: All right. Being responsive – so the subject matter of being responsive to is the biasing means.
MR CAINE: Yes. The spring - - -
HIS HONOUR: Spring - - -
MR CAINE: - - - has to be responsive.
HIS HONOUR: - - - has to be responsive to rotation of the cylinder. So it’s the rotation of the cylinder that works on the spring.
MR CAINE: Yes.
HIS HONOUR: All right.
MR CAINE: That’s the interrelationship, your Honour, yes.
HIS HONOUR: That’s the interrelationship.
Blindware contended that the approach of Mr Hunter to the meaning of “responsive to” results in the express requirement that the storing of energy in the biasing means is “responsive to the rotation of the cylinder” being read out of claim 1, whereas the effects of pulling the cord is read in. It also involves words such as “passive” and “simultaneous” which were not used in the specification, nor used by Mr Hunter when he first construed the claims in another proceeding.
Secondly, Blindware pointed to the dictionary definition of “responsive” in editions of the Macquarie Dictionary, wherein “responsive” is defined as:
1.making answer or reply, especially responding readily to influences, appeals, efforts, etc.
2. Physiology acting in response, as to some stimulus. …
Blindware contended that the latter definition was particularly apt in the present case because the term “responsive to” in the claims literally requires that the biasing means responds to the rotational stimulus of the cylinder – that is, there must be a causative relationship between the rotation of the cylinder and the storage and release of energy in the biasing means. In respect of a number of other definitions referred to by Damorgold, Blindware submitted that these do not contradict its understanding, but rather reinforce its view that the plain English meaning of “responsive” requires that there must be a response to stimulus of another thing, or a causative relationship between one thing and another. In respect of the definition referring to the notion of something acting in a “corresponding” manner, Blindware contended that this definition is denoted as “rare” in the relevant dictionary.
Blindware also drew on definitions of the adjectival form of “responsive” and the noun form of “response” in the Shorter Oxford English Dictionary to argue that the plain meaning of such terms is to be understood in a causative sense.
Thirdly, Blindware referred to the structure of claim 1 of the Patent. According to Blindware, the claim defines not only the mechanical components, but also their functional interrelationship. In that regard, Blindware argued that the claim uses causative language to describe the relationship between two components where there is a causal connection between the operation of the two components (see eg claim 1, integers 1.16, 1.17, 1.25, 1.26 and 1.27). According to Blindware, the descriptions in claim 1 regarding the functional interrelationship between components are intended to enable the skilled addressee to understand how the components interact with one another and thus how the mechanism works. Against that background, the use of the adjective “responsive” merely occurs when the positions of the relevant subject and object in the sentence make it unsuitable to use a verb such as “causes” or “results in”. Blindware pointed to the fact that the adjective “responsive” is used where the subject of the statement in the claim is the component being acted on (eg the biasing spring) by the causative operator (eg the rotation of the cylinder). Where the subject of the statement is the causative operator (eg the drive member), a verb (eg ”causes” or “results in”) is used to describe the effect it has on another component (eg the rotation of the cylinder).
This was further explained by Mr Crick (Crick’s second affidavit, [9]):
the words as used in claim 1, when describing the biasing means and its relationship to the cylinder, require a specific chain of cause and response in the blind extending and the blind retracting directions: a downstream thing is responsive to an upstream thing or, conversely, an upstream thing causes a downstream thing.
(Emphasis in original).
Fourthly, Blindware contended that its construction of “responsive to” was consistent with how that term is used in the overall context of the specification of the Patent. In each case, the causative relationship between components of the mechanism is such that the effect on each component being described would not occur without the causative operator.
For Blindware, the specification is concerned to ensure that the reader knows how the components of the mechanism interact to achieve operation of the blind, not simply that all of these things happen at the same time. Thus, Blindware submits that its construction of “responsive to” is consistent with how that term is used in the specification in other contexts.
In addition, Blindware pointed to the fact that throughout the specification of the Patent, in both the general description of the invention and the description of the preferred embodiment, the language used to describe the relationship between the biasing means and the rotation of the cylinder consistently indicates a causative relationship. That is, the rotation of the cylinder has an effect on the biasing spring:
(1)in the summary of the invention (on page 3, lines 11-23), the biasing means is “responsive to” the rotation of the cylinder;
(2)in the consistory clauses for claims 1 and 3 on page 4, lines 8-12 and page 5, lines 21-25, the biasing means is “responsive to” the rotation of the cylinder;
(3)in the general description of the invention (on page 6, lines 23-24), where the biasing means is a biasing spring, the biasing spring stores and releases energy “resulting from” the rotation of the cylinder; and
(4)in the description of the preferred embodiment:
(a)“rotation of the cylinder 1 in the blind extending direction causes the spring 16 to be tightened or tensioned, and thereby energised” (page 10, lines 28-30);
(b)“Rotation of the cylinder 1 in the blind retracting direction unwinds the spring 16 and thereby permits the release of stored energy such that the spring 16 can apply a turning force to the cylinder 1 in the blind retracting direction of rotation” (page 10, line 31 to page 11, line 2).
Blindware contrasted this use of language such as “responsive to”, “causes”, and “results in” to the use of the term “when” in the following passage of the specification:
The arrangement is such that the cylinder 1 is turned in the blind extending direction when the section of cord at one side of the wheel section 8 is pulled, and the cylinder 1 is turned in a blind retracting direction when the section of cord at the other side of the wheel section 8 is pulled.
(Emphasis added).
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’).
The correct approach for a court to take in observing this principle was set out in the following two questions posed by Greenwood J in Artcraft at [81]-[82]:
First, having regard to the complete specification as a whole, comprising both the body of the document and the claims defining the invention, and then having considered the language of [the relevant claim in question], would the skilled addressee have understood, objectively viewed, the author of the patent, by using the [particular] language of the integer … to have conveyed a particular identified “plain and unambiguous” meaning?
Second, if the meaning of the integer is not plain and unambiguous, what assistance might then be gained in ascertaining the meaning of the integer by properly having regard to the body of the complete specification?
As stated by Barwick CJ and Mason J in Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479:
…If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification …
If the Court is to resort to the specification, it must bear in mind that the specification and claims are to be construed in light of the common general knowledge in the relevant art before the priority date: Rares J in Artcraft at [146]. The specification must be read as a whole and construed according to the ordinary rules for construction of written documents: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610.
Damorgold also drew attention to the consideration of Kenny and Beach JJ in Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85 at [103] as to whether there is “any practical or scientific reason” supporting one particular construction of a term over another.
4.5.2Evaluation of the construction of “responsive to” and application to SL20
I now evaluate the term “responsive to” based on the principles of construction surveyed above.
Beginning with an assessment of the plain language of integers 1.9 and 1.10, it is convenient to reproduce their text, together with integer 1.8 (which provides important context):
1.8 biasing means [spring assist] connected to said [blind] cylinder
1.9and being responsive to rotation of said [blind] cylinder in a blind extending direction to store energy
1.10and being responsive to rotation of said [blind] cylinder in a blind retracting direction to release said stored energy
I observe that it is the biasing means referred to in integer 1.8 which must be “responsive to” the rotation of the blind cylinder in integers 1.9 and 1.10. Thus, the term “responsive to” is the means of expressing the connection or relationship between two elements, namely, the biasing means and the rotation of the blind cylinder. The plain language of these integers also reveals an anticipated outcome. In particular, when rotation occurs in a blind extending direction, the biasing means is “responsive to” such rotation to store energy. Conversely, when rotation occurs in a blind retracting direction, the biasing means is “responsive to” such rotation to release stored energy. Therefore, the storage or release of energy is anticipated as the outcome of the connection or relationship between the biasing means and the rotation of the blind cylinder.
In my view, it would be anomalous to construe the connection between two elements and a resulting outcome in terms other than as some form of interaction between those two elements. This is because, if the elements cited in conjunction did not interact in some way, it would not make sense to refer to some outcome in respect of those elements. Accordingly, based on the plain language of integers 1.9 and 1.10, it seems clear to me that a process or action is described whereby two elements interact to produce an outcome. Again, those two elements are the biasing means and the rotation of the blind cylinder. The interaction between them is described as “responsive to”. The outcome of this interaction between the two elements is described as “to store energy” and “to release said stored energy”.
There is no language in integers 1.9 or 1.10 concerning an intermediate role for another element – such as a drive member or the pulling of a cord – in the arriving at an outcome whereby the biasing means stores or releases energy. Rather, the connection between the biasing means and the rotation of the blind is the term “responsive to”, with the outcome described as releasing or storing energy.
I recall the parties’ agreement that “responsive to” should not be construed as a term of art, but rather according to its ordinary meaning. In elucidating the ordinary meaning of “responsive to”, the parties drew on a series of dictionary definitions. I accept Damorgold’s point that dictionaries should be treated with caution, particularly where they reveal a variety of different meanings relied upon selectively by each party. A similar point was made in the context of statutory interpretation by Black CJ, Jacobson and Perram JJ in Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCAFC 195 at [24]-[25]. Nonetheless, though not dispositive, I accept that dictionaries are capable of playing a useful role in some cases by describing the range of possible meanings for a given term.
In respect of the term “responsive” (and, relatedly, “respond”), the parties pointed to dictionary definitions that ranged from notions of “corresponding” to notions of “acting in response to stimulus”. In my view, the dictionary definitions to be preferred are those that comport with the plain language of the aspects of the Patent at issue. In the present case, I considered above that the plain language of integers 1.9 and 1.10 connotes a process or action whereby two elements interact to produce an outcome. In my view, the cited definitions that are limited to events occurring in parallel or a coinciding manner – such as “corresponding” – would not be consonant with the notion of an interaction that produces an outcome. Therefore, while I agree with Damorgold in the abstract that the dictionary definitions of “responsive” could include “something which behaves in a corresponding manner”, I cannot conclude in the present case that such definitions assist in the construction of this term in view of the plain language of integers 1.9 and 1.10.
Rather, it is apparent that the dictionary definitions connoting “react” or “responding readily to some stimulus or influence” are more compatible with the plain language understanding of integers 1.9 and 1.10 as describing a process or action whereby two elements interact to produce an outcome.
I turn now to the evidence adduced by the parties relating to the understanding of a skilled addressee. In considering this evidence, I am cognisant of the principle in Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2011] FCAFC 86 cited by Damorgold that “ordinary words which are used in a patent claim should be given their ordinary meaning unless the skilled addressee would give them a different meaning” (per Greenwood and Nicholas JJ at [39]).
Damorgold relied principally on Mr Hunter’s understanding of “responsive to” to elucidate the meaning which the normal person skilled in the art, namely the skilled addressee, would attach to the term. In general terms, I agree with Mr Hunter that “responsive to” in integers 1.9 and 1.10 properly connotes a reaction that arises as a result of something, such as an action – which I describe above as an interaction. In particular, I note the following aspects of Mr Hunter’s evidence (transcript pp 78 and 80):
COUNSEL:Now, Mr Hunter, would you accept that the natural English meaning of responsive to is defining a causative relationship between one thing and another thing?
MR HUNTER: Not necessarily causative, no. I would say in terms of that definition, there, of respond, part 3: “Exhibit some action or effect as if in answer or react” – is quite accurate…
….
COUNSEL:…[T]hen you see definition 4: “An action or feeling caused by a stimulus or influence. A reaction.” Does that definition assist you in coming to the conclusion that a more natural meaning of responsive to, whether it be in the context of this claim or generally, is something caused by another – or caused by stimulus from another?
MR HUNTER: In the sense that that definition, there, means a reaction that arises as a result of something – an action, again, I think – or – or a reaction has been caused by an action, then, I think that that definition, there, is pertinent, again, to what I’ve said in 1.9. So something has happened – a reaction – as a response to an action. …
Mr Hunter’s understanding as a skilled addressee that “responsive to” connotes a reaction that arises as a result of something is consistent with the plain language understanding of “responsive to” that I have set out above, namely, a process or action whereby two elements interact to produce an outcome.
However, I cannot accept Mr Hunter’s construction of how this understanding ought to be applied to SL20. According to Mr Hunter, the term “responsive to” requires nothing more than two events happening in parallel in respect of SL20:
…I consider that the term ‘responsive to’ used in Claim 1 simply means that when the cylinder is rotated, the biasing means “responds” either by storing energy when the cylinder is rotated in a blind extending direction or releasing energy when the cylinder is rotated in a blind retracting energy [sic]. That is, the words “responsive to” mean that when the first thing happens (the rotation of the cylinder), the other thing (the storing or releasing of energy) also happens. …
Mr Hunter characterises the rotation of the blind cylinder and the tensioning of, or release of energy by, the biasing means as two “passive responses” to a third action, namely, the rotation of the drive member via the pull cord. For Mr Hunter, this characterisation – ie these two elements responding simultaneously to a third element – is sufficient to come within the scope of the term “responsive to” in integers 1.9 and 1.10.
It is apparent, however, that such a characterisation does not comport with the plain language understanding of the term whereby the two explicitly-listed elements interact to produce an outcome. In particular, Mr Hunter’s characterisation lacks the features of some form of interaction which, in turn, anticipates an outcome. As I have stated, it is plain from the text of integers 1.9 and 1.10 that the two interacting elements pursuant to those integers are (i) the biasing means and (ii) the rotation of the blind cylinder. Contrary to Mr Hunter’s view, there is no role in the text of those integers for a drive member or pull cord as a third element that mediates the interaction between the other two elements. Further, a circumstance whereby two events occur simultaneously in parallel does not mean that there is an interaction between the two, regardless of whether the respective events are reacting in parallel to the same third stimulus.
Accordingly, I do not accept that two “passive responses” to a third action, as in the case of SL20, are sufficient to come within the scope of the term “responsive to” in integers 1.9 and 1.10. I also observe that the evidence of Mr Crick is broadly consistent with the plain language reading of “responsive to” that I have set out above, including as it applies to SL20:
…[M]y understanding of the plain meaning of the words ‘responsive to’ is that one thing (in this case, the biasing means) is responding to another thing (the rotation of the cylinder). That is, the words as used in claim 1, when describing the biasing means and its relationship to the cylinder, require a specific chain of cause and response in the blind extending and the blind retracting directions: a downstream thing is responsive to an upstream thing or, conversely, an upstream thing causes a downstream thing.
(Emphasis original)
I turn now to the parties’ arguments that drew on other aspects of the claim and specification. Though cognisant of the above-mentioned principle that the width of a claim expressed in clear and unambiguous language cannot be varied or qualified by reference to the body of the specification, I consider the parties’ arguments in this regard in order to ascertain whether they confirm or displace the plain language reading that I have set out above. I do not do so out of any sense of ambiguity or uncertainty in respect of that plain language reading.
Damorgold pointed to instances within the Patent beyond integers 1.9 and 1.10 where the relationship of cause and effect between elements was referenced explicitly through language such as “caused” or “results in”. When juxtaposed against “responsive to”, the usage of these other modes of expression could infer that “responsive to” should not be treated as if it were analogous to the expression “caused by” or requiring a causative relationship.
I do not find that the context afforded by this other language sheds light on the present issue. As I have indicated, I agree with Mr Hunter that “responsive to” means, in general terms, “something has happened – a reaction – as a response to an action”. Mr Crick gave similar evidence, albeit using the terminology of “cause” (with which Mr Hunter disagreed). As I have indicated, these understandings of “responsive to” accord with its ordinary meaning as it appears in integers 1.9 and 1.10. The possible inferences arising from the use elsewhere in the Patent of language like “caused” or “results in” is not sufficient to displace that ordinary meaning. Otherwise, “responsive to” would not connote an interaction between the two elements described, which would not be consonant with the plain language of integers 1.9 and 1.10 insofar as it anticipates an outcome as a result of an interaction. As Kenny and Beach JJ stated in Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85 at [37], “if a claim is clear and unambiguous, to say that it is to be read in the context of the specification as a whole does not justify it being varied or made obscure by statements found in other parts of the specification”.
Damorgold also submitted that the Patent specification does not provide any technical or functional reason which furnishes a basis for a narrow interpretation of “responsive to”. That may be the case. However, as I have indicated, the plain language reading of integers 1.9 and 1.10 nonetheless calls for an interpretation of “responsive to” that encompasses a process or action whereby two elements interact to produce an outcome.
Blindware pointed to the language in the description of the preferred embodiment suggesting that there must be a causal relationship between the rotation of the cylinder and the biasing spring. In particular, the preferred embodiment states that “rotation of the cylinder 1 in the blind extending direction causes the spring 16 to be tightened or tensioned, and thereby energised”. Damorgold responded that the preferred embodiment does not limit the scope of the claim. In my view, this language in the preferred embodiment does not displace the plain language reading of “responsive to” that I have set out above. If anything, it confirms the plain language reading.
In summary, the term “responsive to” in integers 1.9 and 1.10 connotes a process or action whereby two the elements described in those integers interact to produce an outcome. It is undisputed that the two relevant elements do not interact in SL20 to produce an outcome. Rather, as Mr Hunter accepted during cross-examination, the blind cylinder is not requisite to the tensioning of, or releasing of energy by, the biasing spring in SL20. I therefore conclude that SL20 does not infringe the Patent. The other impugned Blindware Spring Assists, which do not differ from SL20 in this regard, do not infringe the Patent for the same reasons.
4.5.3“Connected to the cylinder for rotation therewith” – integer 1.19
Blindware submitted that some of the versions of the Blindware Spring Assists do not connect the cylinder directly to the driven member. Rather, there is an intervening adaptor. According to Blindware, this meant that claim 1 is not infringed as the driven member is not “connected to the cylinder for rotation therewith” as stipulated in integer 1.19 of the Patent, and claims 16 and 24 are likewise not infringed for similar reasons. Damorgold’s response was the rotational movement between the adaptor and the driven means was “functionally insignificant”.
I do not need to delay in addressing these arguments. I have concluded in respect of SL20 that the biasing spring is not “responsive to” the rotation of the cylinder in the sense of integers 1.9 and 1.10, and thus does not infringe the Patent. It is therefore immaterial whether a subset of Blindware Spring Assists do not infringe the Patent for other reasons.
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
In an earlier decision of this Court, I set out the relevant legal principles in respect of novelty: Damorgold Pty Ltd v JAI Products Pty Ltd [2014] FCA 150 at [98]-[115]. In setting out these principles below, I adopt similar language. The subsequent decision of the Full Court in Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 229 FCR 68 did not, for the purposes of this proceeding, alter the applicability of those legal principles.
In this proceeding, the complete application was filed on 25 August 2000. Therefore, the Patents Act in the form unamended by the Patents Amendment Act 2001 (Cth) applies to determine the novelty of the patent.
For present purposes, s 7 of the Patents Act in the relevant form provided:
7. (1)For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
…
The term “prior art information” used in both s 7(1) and s 7(3) was defined in the Dictionary in Sch 1 of the Patents Act by reference to the “prior art base”:
“prior art base” means:
(a)in relation to deciding whether an invention does or does not involve an inventive step:
(i)information in a document, being a document publicly available anywhere in the patent area; and
(ii)information made publicly available through doing an act anywhere in the patent area; and
(iii)where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; and
(b) in relation to deciding whether an invention is or is not novel:
(i)information of a kind mentioned in paragraph (a); and
(ii)information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
(Note: For the meaning of “document” see section 25 of the Acts Interpretation Act 1901.)
It is sufficient for present purposes to treat the “patent area” as meaning Australia.
For the purposes of “novelty”, therefore, the prior art against which the novelty of the claimed invention is to be assessed includes any information made publicly available in a document anywhere in the world. In the case of information disclosed by doing an act, however, the act must have been done publicly in Australia.
The terms of s 7(1) require the prior art information to be in a single document or related documents or from doing a single act or related acts. They do not permit information in a document to be combined with information arising from doing an act, or vice versa: see, eg, Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848 at [129] (per Bennett J).
The invention (as claimed in a particular claim) is taken to be novel unless it is shown to lack novelty in light of the relevant prior art.
The comparison required is often described as the “reverse infringement” test. That test requires that the prior art information must disclose all the essential integers of the claimed invention. Thus, in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235, Aickin J explained:
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 …
In General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-6, the stringency of the test was explained as follows:
To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented … a signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
This passage has been approved in Australia: see AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [293].
Relevantly, the case law is clear that all features of a product are treated as being disclosed if that product is sold to another person who is free in law and equity to make use of it: see Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588. Similar considerations apply where there is evidence of samples of a product being provided to a customer without fetter of confidentiality: see Damorgold Pty Ltd v JAI Products Pty Ltd (2015) 229 FCR 68 at [49] per Bennett J.
I now turn to a consideration of the three events said by Blindware to anticipate the Patent: the supply of the Uniline Product, the publication of US 269, and the publication of JP 694.
5.1.2The supply of the Uniline Product
Blindware contends that claims 1 to 17 and 19 to 23 of the Patent are anticipated by the supply of the Uniline Product.
5.1.2.1The Uniline Product was prior art information that had been made publicly available
Damorgold admitted that before the priority date, Uniline had supplied the Uniline Product in Australia, such that all the materially relevant features of the Uniline Product and how those features interoperated was prior art information publicly available in Australia.
Therefore, the remaining question was whether the “reverse infringement” test would be satisfied having regard to the operation of the Uniline Product.
5.1.2.2The operation of the Uniline Product
The Uniline Product is a roller blind that incorporates the combination of a helper spring and a clutch to control the extension and retraction of the blind. Much of the following information about the mechanism is set out in the two affidavits of Mr Tommy Ruonala (affidavits ‘R1’ and ‘R2’).
The Uniline Product is a modified version of an earlier product supplied by Uniline since at least mid-1996. The earlier product was a chain-operated blind with a clutch, which was marketed by Uniline under the name of ‘Sidewinder Set’.
The modification made to produce the Uniline Product was to add another component, marketed as a “helper spring”, to Uniline’s chain-operated blind: R1, [81]-[82].
The addition of the helper spring to Uniline’s chain-operated blind helped to counterbalance the weight of the blind fabric, which assisted with preventing the blind from creeping down and also reduced the force needed by the user to pull the chain in order to raise the blind: R1, [82].
Blindware thus contended that the Uniline Product was a roller blind mechanism that combined the prior art “clutch roller” mechanism with a biasing means/spring assist (or helper spring) to address the same problems and achieve precisely the same objects identified on pages 2 to 3 of the Patent in relation to the claimed invention. Blindware particularly pointed to the fact that the Uniline Product, like the claimed invention, is a mechanism claimed to be “relatively easy to operate” and which “accommodates, at least to some extent, the weight of the extended material” (see Patent at p 3).
5.1.2.3Does the Uniline Product anticipate any claims of the Patent?
As I have said, Blindware contends that claims 1 to 17 and 19 to 23 of the Patent are anticipated by the Uniline Product. Damorgold’s chief response is that it is impossible for the Uniline Product to encapsulate the claims of the Patent. This is said to be because the Uniline Product only meets integers 1.9 to 1.11 if it is mounted on a support or similar mechanism, but claims 1 and 3 of the Patent require the invention to be self-contained (ie it must be capable of operating by itself, without an external support).
In respect of integers 1.9 to 1.11, Damorgold pointed to Mr Hunter’s evidence that the spring in the Uniline Product is not “responsive to” rotation of the cylinder unless the product is mounted. This is because the non-drive end of the spring in the Uniline Product is not fixed (see Hunter’s second affidavit, annexure BH-11, p 20):
The bias spring cannot respond to the rotation of the cylinder unless the mechanism interacts with additional components (being the non drive end mounting bracket, and the wall to which that bracket is attached). The non drive end mount bracket and the wall are not part of the mechanism which is claimed.
I find Mr Crick’s evidence unsatisfactory as a basis upon which to conclude that the Patent lacks an inventive step over the Uniline Product. It was tainted by hindsight, and obviously influenced by much of what Mr Crick learnt during the course of this proceeding.
The evidence of Mr Crick stands in contrast to the evidence of Mr Ruonala (Uniline), Mr Mackie (Helioscreen) and Mr Kelleher (Campbell & Heeps), who were actively engaged in the blind industry.
For instance, Mr Mackie provided the following evidence:
COUNSEL: … And the only place that you can fix the spring against the relative movement is at either side of one of the brackets – one bracket or the other?---
MR MACKIE: Yes.
COUNSEL: … And if you were adding a Holland blind-like spring to a roller clutch system, the way to do that with no re-tooling of the clutch or anything like that is simply to add the spring to the idle end, so you’ve got the clutch at the drive end?
MR MACKIE: Yes.
COUNSEL: … But if you wanted to, you could retool the clutch, so that the spring could be attached to the fixed shaft of the clutch. That was the – that’s the other alternative place that the spring could be fixed?
MR MACKIE: Yes… But that – but that – to clarify that, that would need to be an engineered solution. It’s not just a – you know, stick it down the other end and hope for the best.
COUNSEL:You would have to retool?
MR MACKIE: Yes.
COUNSEL: Yes. Yes, you couldn’t just plunk it down the end and hope it worked. You would have to modify the clutch of a – say, a Rollease clutch?
MR MACKIE: Yes. Yes.
COUNSEL:Yes. And enable it to take a fixing or some kind of interconnection between the end of the spring you wanted to stop from moving and connect it to the fixed shaft?
MR MACKIE: Yes.
COUNSEL: And that would have been obvious to you at the time?
MR MACKIE: Yes.
COUNSEL:And the difficulty you identified is really the expense and time involved in retooling the clutch?
MR MACKIE: No, I don’t think that we’ve ever gone into any dollars and cents about re-costing and doing anything like that at Helioscreen.
….
COUNSEL:Could you just amplify for his Honour what you meant by engineered solution?
MR MACKIE: Well, the – the spring assembly would have to be fabricated in such a way that it formed part of the clutch, so that it became one piece, rather than a combination of pieces being put in there.
This evidence suggests that there was more involved in arriving at the mechanism described in the Patent than simply switching the end at which to join a spring with a clutch system. It suggests that a number of analytical steps would have been required to ascertain how such a switch could be implemented.
Then there is the evidence of Mr Ruonala. Mr Ruonala has a Bachelor of Engineering. He has worked at or been involved with Uniline since 1988. From 1994 to 1999, Mr Ruonala was Uniline’s Research and Development Manager. From 1999 until his retirement in 2009, he was Uniline’s Managing Director. He continues to be a director of Uniline. Uniline is, and around the priority date was, one of the leading suppliers of blind products and parts in Australia.
As Research and Development Manager, Mr Ruonala’s job was to develop new products and improve Uniline’s existing products. His job was to ensure that Uniline was constantly improving its products. He did so by keeping abreast of market developments, obtaining feedback from customers and consultations with his father and Uniline’s production staff. As Managing Director, Mr Ruonala remained responsible for overseeing new product development and production, and was responsible for developing the Uniline Product.
Mr Ruonala’s evidence is that the two major problems with Uniline’s chain-operated blind were the problems of blind creep and the weight of the blind.
Before developing the Uniline Product, Mr Ruonala with his father’s input had experimented on a range of different combinations of springs, plastics and lubricants to achieve the right balance between the weight of the blind and the strength of the biasing spring.
The project to develop the Uniline Product took place over the course of about a year. In the course of developing the Uniline Product, Mr Ruonala also consulted about technical matters with his father and Uniline’s production people.
So far as Mr Ruonala and Uniline were concerned, the Uniline Product successfully solved the two problems which had arisen with the chain-operated blinds:
COUNSEL: So, Mr Ruonala, may I take it that you had set out to develop the helper spring in order to overcome the two problems we discussed. That is blind creep and providing assistance to users in the force required to lift the blind?
MR RUONALA: That’s correct.
COUNSEL:May I take it that in your view the helper spring ultimately achieved the desired goal of overcoming those disadvantages?
MR RUONALA: Yes, I believe that – that our – our product solved those two problems.
COUNSEL: By August ‘99, so that’s about two years after you had started selling the product, is it fair to say that overall customers were happy with the benefits offered by the helper spring?
MR RUONALA: Yes, I believe – well, we were selling product, so that indicated to me that the customers were using it and were happy with the additional benefits they were providing.
Uniline continues to offer the Uniline Product as part of its range. Despite the imperative to continually improve and update Uniline’s product offering, Mr Ruonala did not do any work on a “spring assist” device before the priority date. No-one at Uniline had any motivation to move from the Uniline Product to a “spring assist” product like that claimed in the Patent.
Uniline resolved to its satisfaction the problem of idle end bracket failure (the major problem with idle end spring roller blinds identified by Mr Kelleher) by supplying a heavier bracket for use at the idle end of the Uniline Product.
Finally, Mr Kelleher’s evidence concerning the activities of Campbell & Heeps is consistent with Mr Ruonala. Mr Kelleher was an installer and retailer, not a component manufacturer. Kelleher was aware of the aforementioned problems that were associated with roller blinds at the relevant time. His evidence is that Campbell & Heeps continued supplying and installing its idle end spring roller blinds (i.e., chain-operated blinds with modified Holland springs at the idle end) right up until he left in 2003. Campbell & Heeps did not develop a “spring assist” roller blind over all the years following its introduction of the idle end spring roller blind.
Although Helioscreen itself was not engaged in research and development as mentioned above, Mr Mackie’s evidence is also instructive in this regard. Neither he nor Helioscreen came up with a solution to the problems of blind creep and lift assistance before he left Helioscreen at the end of 2000. Helioscreen was not aware of the helper spring solution nor, it appears, while he was aware of the Verisol product, neither he nor anyone at Helioscreen appreciated it could be used for this purpose.
The evidence of Mr Ruonala, Mr Kelleher, Mr Mackie and what Damorgold’s competitors did provides a reliable guide to what the skilled addressee would have been likely to do at the priority date. It is persuasive evidence that the claimed invention was not obvious at the priority date. The fact that none of Uniline, Campbell & Heeps, Helioscreen or any of the other blind suppliers implemented the claimed invention until many years after the priority date including, in the case of Uniline and Campbell & Heeps many years after they commenced supplying chain-operated blinds with helper springs, also indicates the claimed invention was not obvious at the priority date. The claimed invention was not a path that anyone else in the marketplace took until many years later.
I should indicate that there is a good basis for placing a great deal of reliance on the actions of the participants in the industry.
Justice Hely in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877 adopted a similar approach. In particular, I regard Mr Ruonala in the present case as being in the similar position as Mr Garland referred to by Hely J at [165]-[167]:
[165] The issue is whether the alleged invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date. The relevant field is that of manufacture and design of locks.
…
[166] In 1995 Mr Garland was set the specific task by Doric of designing a rim mounted deadlatch to compete with the old Lockwood 001. The solution to the problem referred to in the Patent did not occur to him at that time. If the idea had then occurred to him he would have mentioned it to Doric, even though he was working to a brief, and the resolution of the problem referred to in the Patent did not form part of that brief. He was then aware that the “locked in” problem was a serious problem but the solution to it did not come to his mind.
[167] In cross-examination, Mr Garland said that faced with the problem referred to in the Patent, he “may well have” come up with one of the two solutions which he proffered. That evidence falls short of establishing that a non-inventive skilled worker would, as a matter of routine, have come up with either one of those solutions. It is not sufficient for a finding of obviousness that the skilled person “could” have done what has been claimed: CIPA Guide to the Patents Act 5th ed 2001 par 3.12.
The High Court referred to Mr Garland’s evidence and the fact that Mr Gardland did not come up with the solution despite being aware of the relevant “locked in” problem in that proceeding: see Lockwood at [77].
In the present case, Mr Ruonala was actively seeking a solution to the same problem addressed by the Patent. He did not arrive at the same solution as that reflected in the Patent.
In summary, I accept that the use of a “helper spring” formed part of the common general knowledge, including insofar as it was implemented in the Uniline Product. However, I do not accept that the particular approach and solution reflected in the Patent was “obvious”. Industry participants seeking to address the same problem did not arrive at this solution. Conceptually, the problem reflected in the Patent may have been relatively straightforward vis-à-vis the Uniline Product, insofar as it moves the spring to the other end. However, the evidence before me is that this solution would have required a number of analytical steps, or what was referred to as an “engineered solution”. Further, the evidence suggests that moving the spring to the other end could, as in the Patent, lead to a qualitative difference in vis-à-vis the Uniline Product in respect of the function of the support. This supports the view that a number of analytical steps were required to arrive at the solution reflected in the Patent. With that in mind, I recall that to demonstrate obviousness, it must be shown that the claim did not overcome some difficulty nor cross some barrier, and a mere “scintilla” of invention is sufficient to support the claim: Lockwood at [52].
I do not ignore the way it was put by Senior Counsel for Blindware (transcript, p 393):
COUNSEL: On this question of inventive step my friend has set up the proposition that we needed a problem to solve. Now, that may be the case in relation to assessing inventive step in Europe, but that’s not the case in Australia. It can be just as good to say what would be a useful alternative. The question here is the device which is the Uniline device and a number of other devices all existed, and they all had the helper spring at one end. We say it’s enough simply that one could say, well, what is the alternative to that, and is it simple, is it obvious? And in this case it plainly was because there’s only two places to put the fixing of the spring, one at the fix shaft, one at the distal end. Very simple case. And all of them said that was simple, that was obvious. The only concern was how much it was going to cost, and I say there’s no invention in the cost of doing something.
What must be shown to have been obvious is the combination of the features claimed in each claim as a self-contained mechanism. As already indicated, the claims set out specific requirements defining components with some precision and how those components interact with each other.
The Court does not look at the commercial motives or the cost inhibitors or advantages in determining whether or not it was obvious to take a particular step in developing a product. However, as Sedley LJ observed in Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 at [87]-[88], the skilled addressee is not to be expelled from the real world; nor is the Court in its appreciation of what a skilled addressee would do as potentially worthwhile when considering the issue of obviousness. The mindset of the skilled addressee must be affected by their awareness of a commercial or social need, and the commercial and social background known to the skilled addressee cannot be excluded from a consideration by the Court on the issue of obviousness.
For completeness, I also note the following contention of Blindware:
Damorgold has elected to not lead evidence from the named inventor, Vito Fortunato, despite Mr Fortunato being available and being the best person to explain the development of the alleged invention. Mr Lava’s speculation regarding Mr Fortunato’s ability to read and explain things in English does not provide a basis for Mr Fortunato not giving evidence and should be given no weight, even if admissible. Following the rule in Jones v Dunkel, it should be inferred that Mr Fortunato’s evidence would not have supported Damorgold’s case on inventive step.
(Footnotes omitted.)
Jones v Dunkel (1959) 101 CLR 298 (‘Jones v Dunkel’) provides for the prospect that inferences may be drawn where a party does not call a witness whose evidence may assist in the resolution of a factual dispute. In that case, Kitto J observed (at 308):
…any inference favourable to the plaintiff for which there was ground in the evidence might be more confidently drawn when a person presumably able to put the true complexion on the facts relied on as the ground for the inference has not been called as a witness by the defendant and the evidence provides no sufficient explanation of his absence.
In addition, the authorities establish that a court may infer that the evidence of the absence witness would not have assisted the party that failed to call that witness.
However, it is important to observe that the rule in Jones v Dunkel does not permit the filling of gaps in the evidence, or to convert conjecture into inference: see Jones v Dunkel at p 308 (per Kitto J) and 320-1 (per Windeyer J). In my view, the application of Jones v Dunkel advocated by Blindware in respect of Mr Fotunato is more akin to converting conjecture into inference rather than resolving a specific question of fact. The burden was on Blindware to prove obviousness, and in my view the evidence it relied upon failed to satisfy that burden of proof.
6. MISLEADING AND DECEPTIVE CONDUCT
Damorgold and Blindware each sought to make claims of misleading and deceptive conduct against the other. Damorgold contended that Blindware had engaged in misleading and deceptive conduct by failing to warn end users that use of the Blindware Products in spring-assisted roller blind systems without the consent of Damorgold would infringe the Patent. Blindware contended that Damorgold had engaged in misleading and deceptive conduct by publishing notices containing false representations about the scope of Damorgold’s patent rights. I will consider each claim separately.
6.1 Did Blindware engage in misleading and deceptive conduct?
Damorgold pleaded that Blindware had engaged in misleading or deceptive conduct per s 18 of the ACL and s 52 of the TPA by failing to warn end users that use of the Blindware Products in spring-assisted roller blind systems without the consent of Damorgold would infringe the Patent.
Damorgold submitted that the supply of Blindware Products, which can only reasonably be used to infringe the Patent, and the admitted provision of instructions (Blindware’s Defence at paragraph [16]) to use the Blindware Products in an infringing way encouraged, or was intended to encourage, end users to use them in spring-assisted roller blind systems in infringement of the Patent. Damorgold relied upon the decision in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481, where a failure to warn end users of their potential exposure to liability for patent infringement was considered to be misleading.
Blindware’s response was to simply rely on its case in respect of non-infringement.
As I have found no infringement, the case of Damorgold in relation to misleading and deceptive conduct cannot succeed.
6.2 Did Damorgold engage in misleading or deceptive conduct?
Blindware pleaded that the publication by Damorgold of a July 2015 notice and a September 2016 notice constituted misleading and deceptive conduct per s 18 of the ACL. Blindware also drew the Court’s attention at the hearing to a further notice published in January 2017. These notices are referred to collectively as the ‘Notices’. The Notices were published in Window Furnishings Australia, and Vertilux admitted that it caused the Notices to be published and that such conduct occurred in trade and commerce: Damorgold’s Further Amended Defence to Cross-Claim at [17], [20].
6.2.1The Notices
The July 2015 Notice was in the following terms:
Notice to the Blinds Industry
Spring Assist booster for roller blinds:
Damorgold’s Australian Patent 760547 entitled A Blind Control Mechanism
Damorgold Pty Ltd and Vertilux Pty Ltd are the owner and exclusive licensee respectively of Australian Patent no. 760547 (the Damorgold patent).
The Damorgold patent is entitled A Blind Control Mechanism and relates to a roller blind mechanism which incorporates a spring assist. As exclusive licensee Vertilux has the exclusive right to exploit the invention set out in the Damorgold patent within Australia until 25 August 2020.
Vertilux is aware that a number of companies have been and continue to offer for sale spring assisted roller blind mechanisms or components for such mechanisms in contravention of the Damorgold patent. Vertilux is committed to enforcing its rights as exclusive licensee and has recently taken action in the Federal Court against one such company J.A.I. Products Pty Ltd for patent infringement. In a decision of the Full Federal Court handed down on 13 March 2015, the court upheld the validity of the Damorgold patent. The court (at first instance) had previously found that J.A.I . Products had infringed the patent by supply of various spring assist components and other associated products.
However, further action will be taken by Vertilux against other infringers if necessary. Vertilux is willing to consider granting sub licences to the Damorgold patent.
If you are interested in discussing the possible licensing of the Damorgold patent with Vertilux, please contact Vertilux’s lawyers. …
(Emphasis in original).
The September 2016 Notice and January 2017 Notice were in similar terms, but include the following additional paragraph at the end:
The businesses list below are the only licensees of the Damorgold patent to date. The sale, use or any other act of exploitation in Australia of products obtained from an unauthorised source and which fall within the scope of the Damorgold patent constitutes an infringement of the patent and may lead to legal action.
ROLLEASE ACMEDA PTY LTD
HUNTER DOUGLAS LIMITED
(Emphasis in original).
The January 2017 Notice also listed Uniline Australia Ltd as a licensee. Blindware contended that in publishing the Notices, Vertilux represented to readers of Window Furnishings Australia, including customers and potential customers of Blindware, contrary to fact, that:
(1)the Patent protects all spring-assisted roller blind mechanisms and/or components for such mechanisms; and
(2)any company that supplied, sold or offered for sale any spring-assisted roller blind mechanisms and/or components for such mechanisms without license or authority from Damorgold would necessarily infringe the Patent.
(together, the ‘Representations’)
Blindware submitted that the Representations were false, and thus constituted misleading or deceptive conduct in contravention in s 18 of the ACL: see NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty Limited [2016] FCA 614.
Damorgold’s response was that the Representations as alleged are not contained within any of the Notices.
6.2.2Consideration
I agree with the submission of Damorgold. I read the Notices as merely warnings to participants in the “Blinds Industry” (the addressees to the Notices). The Notices do not contain the Representations alleged by Blindware, either expressly or impliedly. The Notices accurately refer to the Patent, and Damorgold’s ownership of the Patent.
More specifically, the Notices after referring to the Damorgold Patent, insert the phrase which “relates to a roller blind mechanism which incorporates a spring assist” (my emphasis) – a statement which is also accurate. The reference to the exclusive licensee is also correct. It is then states that Vertilux is aware that a number of companies have been offering for sale certain mechanisms in contravention of the Damorgold Patent. The ordinary meaning of this statement in context is not suggesting that all such mechanisms are included within the Damorgold Patent and that all therefore infringe the Patent. Rather, it is merely referring in general terms to mechanisms, which then by reference to the Patent, could amount to an infringement. The rest of the Notices merely record Vertilux’s intention, and the previous Court decision involving JAI Products Pty Ltd.
In my view, there is nothing in the Notices which is misleading or which is likely to mislead the addressees of the Notices. Nor is there anything in the Notices that portrays any half-truth or failure to disclose more fully the position being advocated to the public by Damorgold.
7. UNJUSTIFIED THREATS
Blindware’s unjustified threats claim concerns certain threats to bring patent infringement proceedings made by Damorgold in the Notices and in correspondence to Blindware. Section 128(1) of the Patents Act provides:
(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a prescribed court, or to another court having jurisdiction to hear and determine the application, for:
(a) a declaration that the threats are unjustifiable; and
(b)an injunction against the continuance of the threats; and
(c)the recovery of any damages sustained by the applicant as a result of the threats.
Section 129 of the Patents Act provides that:
If an application under section 128 for relief relates to threats made in respect of a standard patent or an application for a standard patent, the court may grant the applicant the relief applied for unless the respondent satisfies the court that the acts about which the threats were made infringed, or would infringe:
(a) a claim that is not shown by the applicant to be invalid; or
(b)rights under section 57 in respect of a claim that is not shown by the applicant to be a claim that would be invalid if the patent had been granted.
Where a patentee makes a threat of patent infringement and the patentee fails to prove infringement or threatened infringement of any claim not shown to be invalid in subsequent proceedings, the threat may be unjustified and covered by s 128: CQMS Pty Ltd v Bradken Resources Pty Ltd (2016) 120 IPR 44; BLH Engineering & Construction Pty Ltd v Pro 3 Products Pty Ltd (2015) 114 IPR 105.
Blindware’s unjustified threat claims were made in respect of the Notices and further correspondence from Damorgold. It is useful now to consider each in turn.
7.1 Did the Notices contain unjustified threats?
The content of the Notices has been set out above.
Blindware’s case under s 128 of the Patents Act in relation to the threats in the Notices is aligned with its case under s 18 of the ACL in relation to the Notices. The Notices include the statement that “further action will be taken by Vertilux against other infringers if necessary”. Blindware contends that this is a clear threat to bring patent infringement proceedings of patent infringement against people selling spring assisted roller blind mechanisms.
Blindware submitted that if the Court accepts that the Representations (as set out above) are false (as is alleged by Blindware), then it follows that the above threat in the Notices is unjustified. This is said to be because the threat would extend to alleged “other infringers” for which Vertilux has no basis for asserting infringement, such as suppliers (including Blindware) of spring-assisted roller blind mechanisms which do not incorporate all of the features of any of the claims of the Patent.
Damorgold’s response was that:
(1)Blindware has not established standing as a “person aggrieved” having regard to the terms of the Notices; and
(2)in any event, the Notices do not identify any person or persons with sufficient particularity to constitute a threat instead of a general warning against infringement.
I have already concluded that the Notices are not misleading. Further, I characterise them as a general warning to the addressees against infringement. Without going into the question of standing, I do not regard the Notices as threats, or unjustified, as encapsulated by the operation of s 128 as explained in the authorities referred to later in my Reasons.
7.2 Did any of Damorgold’s correspondence contain unjustified threats?
Blindware’s claim in this respect is made specifically in relation to two letters sent from Phillips Ormonde Fitzpatrick Lawyers (‘POFL’), the solicitors for Damorgold. The letters were dated 18 December 2009 and 8 December 2014. Damorgold admitted that it caused the two letters to be sent: Further Amended Defence to Cross-Claim at [25]. I do not intend to reproduce the letters in their entirety in these Reasons, but merely the relevant extracts.
In the 18 December 2009 letter from POFL to Blindware, the following statements were made:
Our client is aware that you are currently offering for sale spring assisted blind control mechanisms. Specifically, we refer to the offering for sale of “Roller Blinds/Rollease” components listed on page 11 of your Price List, (“your Product”).
We have inspected a sample of your Product. It includes a clutch roller and a spring assist and meets all of the requirements of claim 1 and many other of the claims of the Patent. As such, the sale or offering for sale or other exploitation of your Product constitutes an infringement of the Patent.
This letter also included a demand for undertakings:
In the circumstances our client seeks an undertaking that you will:
Ÿwithdraw from sale your Product;
Ÿcease offering for sale, selling, or otherwise doing any act which exploits the Patent; and
Ÿagree to pay our client compensation for past infringements, the amount of which is to be agreed or failing agreement, is to be determined by the Federal Court.
This letter concluded with the following statement:
In the event that you are not prepared to comply with these demands we have instructions to institute proceedings against you for patent infringement.
In the letter of 8 December 2014, POFL stated on behalf of Damorgold:
We have again reviewed the spring assisted roller blind which you offer for sale. That product has all the features of at least claim 18 and claim 23 of the Damorgold patent.
As we explained in our 18 December 2009 letter, the supply of a product which has all of the features of at least one claim of a patent, and the supply of a component part or parts of such a product, will, in the circumstances set out in that letter, infringe the patent.
This letter also demanded that Blindware agree immediately to withdraw its spring assist components from sale, deliver up all spring assist products to Damorgold, provide written undertakings and pay full compensation for past infringements. The letter concluded by stating that that “[i]n the meantime our clients fully reserve their rights” (which Blindware characterised as a threat to bring patent infringement proceedings).
Blindware contended that the Blindware Products do not infringe any valid claim of the Patent. If the Court accepts Blindware’s case on non-infringement or invalidity, then Blindware contends that it follows that the above threats in the two letters are unjustified, relying on the principles applied in similar cases: see CQMS Pty Ltd v Bradken Resources Pty Ltd (2016) 120 IPR 44 at [158]-[159] and [174]; BLH Engineering & Construction Pty Ltd v Pro 3 Products Pty Ltd (2015) 114 IPR 105 at [84]-[98].
Blindware alleged that the “Sword of Damocles” in this case, being the threat of infringement proceedings, had been held over Blindware’s head for a number of years. Blindware further asserted that this was not a case where the Patent and all the claims which were originally asserted against Blindware will be found invalid; whatever the outcome, claims 26 to 30 of the Patent will remain and they were asserted up to the time of trial: Blindware’s Closing Submissions on Validity at [6.16]. In such circumstances, Blindware submitted it would be appropriate that the entire relief sought by Blindware on the grounds of unjustified threats be granted (with the question of damages left to be determined at a later date), although the form of injunctive and declaratory relief could be addressed after reasons on liability were delivered.
Damorgold’s response was that the letters would not constitute unjustifiable threats if the Court found that Blindware had infringed a valid claim of the Patent: Patents Act s 129.
Furthermore, Damorgold contended that even if Blindware was found not to have infringed a valid claim of the Patent, the threats made in the letters would not necessarily have been unjustified. This was said to be because:
(1)Damorgold had good legal grounds for asserting the rights that it did: see Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 316 ALR 590 at [672], [681]; and
(2)this Court had previously considered and confirmed the validity of the Patent in contested proceedings, at first instance in respect of some claims of the Patent and on appeal in respect of all claims, and that those proceedings vindicated the patentee’s view of the validity of the Patent as at the time the first letter was written and before the second letter was written (which was after the decision at first instance had been handed down). Such circumstances were said to be highly relevant in any analysis of the justifiability of purported threats: see JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at [212]-[213] (‘JMVB’).
I do not consider that s 128 applies in respect of the position taken by Damorgold by reference to their conduct and the correspondence before me. As Bennett J said in relation to s 202 of the Copyright Act1968 (Cth) (an analogous provision) in Nine Network Australia Pty Ltd v Ice TV Pty Ltd [2007] FCA 1172 at [232]:
[232]The history of the section suggests that it was concerned to deter unjustified threats themselves, threats that did not result in infringement proceedings or could not be justified by actual infringement; threats made to ‘frighten away competitors or to damage such persons less directly, by threatening to sue their customers or suppliers as joint tortfeasors’ (Ricketson S and Creswell C, The Law of Intellectual Property: Copyright, Designs & Confidential Information (Lawbook Co., subscription service) at [2.195]; Avel Pty Ltd v Intercontinental Grain Importers Pty Ltd (1996) 65 FCR 154 at 159)). It is a right extended to the threatened person not generally available to those threatened with an action for a civil wrong.
(Emphasis in original)
I appreciate that the onus is on Damorgold to prove the threat was justified (see JMVB at [210]).
Just because proceedings for infringement are not sustained does not necessarily mean the threats are unjustified in terms of s 128. I do not regard the threats as objectively groundless or unjustifiable in light of the matters raised by Damorgold, which I accept. Section 128 is not aimed at deterring infringement proceedings, and the conduct of Damorgold and the sending of the correspondence was not the type of conduct that s 128 was aimed at covering in its operation.
The question of relief on these issues (if it became relevant) was to be dealt with after the delivery of my Reasons. As it eventuates, having not accepted the claims of any party in relation to the contentions of misleading conduct and unjustified threats, no question of relief arises.
8. CONCLUSION
Whilst I did indicate to the parties that I would consider further submissions if I considered it necessary on the misleading conduct and unjustified threats contentions, I do not consider such submissions are necessary or needed to accord the parties any further opportunity to respond.
For the foregoing reasons, having also rejected the allegations of infringement and invalidity, the application and cross-claim should be dismissed.
At this stage, I will only order that 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.
I certify that the preceding four hundred and twenty-six (426) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton. Associate:
Dated: 22 December 2017
SCHEDULE OF PARTIES
VID 403 of 2015 Cross-Respondents
Second Cross-Respondent
VERTILUX CORPORATION PTY LTD
ATTACHMENT ‘A’
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