Davies v Lazer Safe Pty Ltd

Link copied
Case Copied 81 min read

FEDERAL COURT OF AUSTRALIA

Davies v Lazer Safe Pty Ltd [2018] FCA 702

File number: WAD 670 of 2015
Judge: MCKERRACHER J
Date of judgment: 18 May2018
Date of publication of reasons: 25 May 2018
Catchwords:

PATENTS – patent for safety system used for the detection of obstructions in the path of a moving part of machinery, such as press brakes – claim for infringement – issues as to validity

PATENTS – infringement – whether infringement established – construction of the claims of the patent – failure to establish that respondent’s systems infringe the claims asserted

PATENTS – validity – cross-claim for invalidity – whether patent is invalid – priority date – whether the claims are disclosed in earlier priority documents ‑ disclosure in provisional applications considered – novelty – whether lack of novelty established – prior art base – consideration of prior art systems – obviousness – identification of the person skilled in the relevant art – matters and particulars of common general knowledge – fair basis – failure to establish grounds of invalidity

Legislation:

Federal Court Rules 2011 (Cth) r 34.46

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), Sch 1, s 55(1)

Patents Act 1990 (Cth) ss 7, 7(1), 7(2), 7(3), 18(1)(b)(i), 18(1)(b)(ii), 40, 40(3), 43

Patents Amendment Act 2001 (Cth) Ch 1, Pt 1, item 13

Patent Regulations 1991 (Cth) regs 3.12, 3.12(1)(b)

Cases cited:

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

Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485

Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd (2016) 117 IPR 210

Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52

Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4) [2015] FCA 1372

Bristol-Myers Squibb Company v F H Faulding & Co Limited (2000) 97 FCR 524

British Dynamite Co v Krebs (1896) 13 RPC 190

Canadian General Electric Co Ltd v Fada Radio Ltd (1930) 47 RPC 69

CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260

Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386

Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385

Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 192 ALR 306

Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (1999) 99 FCR 151

Electric & Musical Industries Ltd v Lissen Ltd (1938) 56 RPC 23

Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214

F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents (1971) 123 CLR 529

Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428

Freeman v TJ & FL Pohlner Pty Ltd (1994) 30 IPR 377

Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 224 ALR 168

General Tire & Rubber Co v The Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121

Glaverbel SA v British Coal Corp [1994] RPC 443

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Apotex…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Davies v Lazer Safe Pty Ltd and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2018] FCA 702
Decision Date

CaseChat Overview and Summary

In the Federal Court of Australia, Davies sued Lazer Safe Pty Ltd for patent infringement concerning a safety system designed to detect obstructions in the path of moving machinery parts, such as press brakes. Davies claimed that Lazer Safe's systems infringed on their patented technology, while Lazer Safe argued that the patent was invalid. The court was tasked with determining whether Davies' patent was valid and if Lazer Safe's systems infringed upon it.

The primary legal issues revolved around the construction of the patent claims, the infringement of those claims by Lazer Safe's systems, and the validity of the patent itself. The court needed to establish whether Lazer Safe's systems met the criteria for infringement as defined in the patent claims and whether the patent was valid based on factors such as novelty and obviousness. The court also considered the priority date of the patent claims and whether they were adequately disclosed in earlier priority documents.

The court found that Davies failed to establish that Lazer Safe's systems infringed the patent claims. The claims were construed based on the respondent's expert evidence, which was deemed more plausible despite the applicant's expert having superior general qualifications. The court preferred the respondent's expert, Mr Appleyard, who had significant experience in the specific field of press brake safety systems. The court also found that none of the grounds for invalidity raised by Lazer Safe had been established, including issues related to the priority date, disclosure in earlier priority documents, novelty, and obviousness. Therefore, the patent was deemed valid.

As a result, the court dismissed both the claim and the cross-claim. The reasons for judgment were to remain confidential except for the parties and their legal representatives until noon on 25 May 2018. Any party seeking an extension or variation of this order had to file and serve any interlocutory application together with any affidavit evidence by the same date. The applicants and respondents were also required to file any materials in relation to costs or other orders within specified timeframes. Unless the court otherwise ordered, costs and/or any other orders were to be determined on the papers.

Orders

Orders of the court

1. The claim and cross-claim each be dismissed.

2. Subject to any further order the reasons for judgment are not to be published except to the parties and their legal representatives before 12.00 noon, 25 May 2018.

3. Any party seeking an extension or variation of order 2 is to file and serve any interlocutory application seeking such relief together with any affidavit evidence to be relied upon by 12 noon, 25 May 2018.

4. The applicants file any materials in relation to costs or other orders within 14 days.

5. The respondent file any materials in relation to costs or other orders within a further 14 days.

6. Unless the Court otherwise orders, costs and/or any other orders, if any, be determined on the papers.

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

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

I address the issue of infringement, and the issues arising in relation to invalidity, in turn. 2. THE EVIDENCE2.1 The key experts – an overview The infringement evidence relied on was:(a)for the applicants by affidavits of Mr John Acheson sworn on 27 April 2017 (Acheson # 2) and sworn on 5 June 2017 (Acheson # 3); and (b)for the respondent by affidavits of Mr Robert Appleyard sworn on 17 February 2017 (Appleyard # 2) and Mr Peter Berry sworn on 16 February 2017. As to invalidity, the evidence relied on was:(a)the respondent’s evidence in chief by:(i)affidavit of Mr Appleyard sworn on 17 October 2016 (Appleyard # 1);(ii)affidavit of Mr Mark Pullen sworn on 17 October 2016;(b)the applicants’ evidence in answer: affidavit of Mr Acheson sworn on 17 February 2017 (Acheson # 1);(c)the respondent’s evidence in reply: affidavit of Mr Appleyard sworn on 28 April 2017 (Appleyard # 3); and(d)the applicants’ evidence in answer: affidavit of Mr Acheson sworn on 14 June 2017 (Acheson # 4). In relation to claim construction and the issue of infringement, I preferred the respondent’s witnesses, principally, Mr Appleyard, despite the superior qualifications and perhaps more general expertise of Mr Acheson. While Mr Acheson was more qualified generally, he had very limited experience in the particular field of this technology. I am conscious in arriving at this preference that Mr Appleyard was not independent. Despite this, he had very considerable internationally relevant experience and skills and I found his infringement evidence plausible and realistic, despite his obvious interest in the matter. On that invalidity evidence of a more general nature, as distinct from infringement, I preferred the evidence of Mr Acheson. I considered that his evidence on invalidity in response to the respondent’s claims was realistic and objective and to be preferred. Mr Appleyard Mr Appleyard is a director and principal of the respondent. He has had extensive ‘hands-on’ experience with press brake safety systems since about 1995 when he started designing and building safety systems for press brakes. In 1998, he established the respondent’s business developing safety products for use with press brakes. He was the principal designer of the respondent’s safety system known as the Lazer Safe LZS-003 System, a precursor of the LZS-005. The respondent operates worldwide, in the design and manufacture of press brake safety and control devices. Mr Appleyard has also, since 2001, been involved in writing safety standards for press brakes for the European Union and, since 2009, for the United States. He and the respondent have won various Western Australian awards for engineering excellence, industry and export since 2003. The respondent has received State and Federal funding grants since 1998 for the development of its business. Mr Acheson Mr Acheson was initially giving evidence for the applicants only as to validity, principally in answer as to the novelty and obviousness of the Patent. He is an American systems engineer based in Iowa. Since 2004, he has worked in the United States principally as a systems designer in aerospace, communications, software and defence. Between about 2002 and 2004, he worked as an intern and then part-time for Accurpress America in Rapid City, South Dakota, whilst completing his studies at the South Dakota School of Mines and Technology. His work with press brake safety systems was undertaken as a project for his studies. Mr Acheson’s exposure to press brake safety systems is quite limited: in time, in nature, in scope and geographically. His involvement with these systems centred on his part-time student design project for his engineering studies, which began in about mid-2003 and after the latest priority date. His experience is American, rather than Australian or European. His evidence discloses no substantial personal awareness or knowledge of this field at an international or Australian level at any of the priority dates. It is notable that the relevant field or art is quite restricted and confined, especially in Australia. Safety systems for press brakes are a small but sophisticated market, centred on Europe (with considerably smaller markets in the United States and even more so in Australia at the relevant time in 2002/2003). Mr Acheson expressly accepted that the United States was a ‘backwater’ for press brake safety systems in 2002/2003.Mr Berry

Decision

Reasons for decision

None of the grounds raised has been established. 6. GENERAL CONCLUSION For the foregoing reasons, each of the claim and cross-claim will be dismissed.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.