Dematic Pty Ltd v Ginco Industries Pty Ltd - [2024] APO 28

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dematic Pty Ltd v Ginco Industries Pty Ltd [2024] APO 28
Patent:2020101007

Title:Racking bay tower construction method

Patentee:Ginco Industries Pty Ltd
Opponent:Dematic Pty Ltd

Delegate:Dr David Carberry

Decision Date: 28 June 2024

Hearing Date: 30 April 2024, by Video Conference

Catchwords: PATENTS – s101M – entitlement – determination of the inventive concept – inventive concept developed solely by patentee – whether a collaboration existed which gives rise to joint entitlement – no contractual or fiduciary evidence – opponent not entitled to sole or joint inventorship – costs awarded against opponent

Representation: Counsel for the patentee: Ben Fitzpatrick
Patent attorney for the patentee: Greg Bartlett of Phillips Ormonde Fitzpatrick
Counsel for the opponent: Ian Horak KC
Solicitor for the opponent: Helen Kavadias of HWL Ebsworth Lawyers

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2020101007

Title:Racking bay tower construction method

Patentee:Ginco Industries Pty Ltd
Date of Decision: 28 June 2024
DECISION

The Opposition is unsuccessful. The Opponent has not established that they contributed to the development of the inventive concept, or that they should derive sole or joint entitlement via contractual or fiduciary means.
Costs according to Schedule 8 are awarded against the Opponent, Dematic Pty Ltd.

REASONS FOR DECISION
Background

Innovation patent 2020101007 (the patent) was filed by Ginco Industries Pty Ltd (the Patentee) on 15 June 2020. It is a divisional of patent application 2017308025, and ultimately derives its priority date of 04 October 2016 via provisional application 2016904015. The patent was granted on 01 July 2020 and certified on 25 August 2020.
A notice of opposition was filed by Dematic Pty Ltd (the Opponent) on 06 November 2020. Also filed on the same date were the Statement of Grounds and Particulars (SGP) and Evidence in Support (EIS). The Patentee provided Evidence in Answer (EIA) on 12 May 2021.
The Opponent filed Evidence in Reply (EIR) on 19 July 2021. The Patentee challenged the entirety of the EIR, noting that additional evidence which was not properly in reply was provided. A delegate of the Commissioner agreed that paragraphs [15]-[17] of the EIR were not properly in reply and directed that they be excluded from the opposition on 17 August 2021. Consequently I will not consult those paragraphs in this decision, and will only consult paragraphs [1]-[14].
A direction for further and better particulars was made on 3 November 2022, which were duly submitted on 28 November 2022 and allowed on 19 December 2022. The Opponent supplied written submissions (OWS) for the hearing on 15 April 2024, and the Patentee supplied written submissions (PWS) on 22 April 2024. In the OWS the Opponent narrowed its opposition to only the ground of entitlement.[1] This was confirmed at the hearing. Both parties filed additional evidence alongside their written submissions, each requesting that these be considered under regulation 5.23.
[1] OS at [6]
The Evidence
The EIS comprises:
·A first declaration from Dr Murray Clarke, (Clarke1) and exhibits MC-1 to MC-10; and
·A declaration from Mr Michael Blackwell, including exhibits MB-1 and MB-2.
The EIA comprises:
·A declaration from Mr Gino Imbrogno (Imbrogno1), and exhibits GI-1 to GI-5; and
·A declaration from Mr Gregory James Bartlett, patent attorney for Mr Imbrogno, and exhibit GJB-1.
The EIR comprises:
·A second declaration from Dr Murray Clarke (Clarke2). As noted above, parts of this evidence were determined to be not be properly in reply and I will only refer to paragraphs [1]-[14] of this declaration.
As a result of the Opponent only pursuing the ground of entitlement, the declarations and exhibits from Mr Blackwell are no longer relevant as they do not address any aspects of entitlement. There is no need to consult them further. The declaration from Mr Bartlett is also mostly redundant, with only two paragraphs of minor relevance to entitlement. These two paragraphs are covered in much greater detail by Mr Imbrogno and I will therefore refer to Mr Imbrogno’s evidence on these matters.
For the reasons I detail in the appropriate section below, I do not admit the additional evidence supplied by either party under regulation 5.23.
The Declarants
Dr Clarke
Dr Clarke is a director of structural engineering and is employed by the Opponent. He has been employed there since 1999 and has over 20 years of experience in engineering and logistics industries. He has a Bachelor’s degree in Science and a Bachelor’s degree in Civil Engineering from the University of Sydney. He also holds a PhD in structural engineering. Further, Dr Clarke holds many professional affiliations and licences.[2]
[2] Clarke 1 at [1]-[5]
The Patentee has argued that Dr Clarke had only limited knowledge of the matters concerning entitlement, particularly noting that Dr Clarke states he has never been to the Smiths installation site.[3] The Patentee also notes that Dr Clarke takes no issue with any of Mr Imbrogno’s evidence in relation to the conception of the invention or its reduction to practice.[4]
Mr Imbrogno
[3] Clarke2 at [12]-[13]
[4] PWS at [56]-[57]
Mr Imbrogno is the owner and director of Ginco Industries Pty Ltd, the Patentee. He has owned and directed several other businesses, including Adelaide Rigging & Cranes Pty Ltd, Australian High Bay Installations Pty Ltd, and Ginco Carpentry. Mr Imbrogno has a Diploma in Civil Engineering from the University of South Australia. He has over 15 years of experience erecting structural steel.
The majority of the evidence provided by the declarants from both parties is uncontested. As is usual for a delegate, I will weigh the evidence and supply reasoning for any areas where I prefer one declarant over the other.
Timeline of events
It is useful to outline the working history of the parties insofar as it relates to this opposition.
Dr Clarke’s evidence is that, in early 2014, the Opponent was engaged to install a high bay storage rack at the Smiths Distribution Centre in Adelaide, and that the Opponent performed the necessary engineering preparation, such as preparing schematics and installation manuals.[5]
[5] Clarke1 at [14]-[18]
Dr Clarke states that in October 2014 one of Mr Imbrogno’s companies, Adelaide Rigging and Cranes Pty Ltd, was engaged by the Opponent as a subcontractor and was provided with copies of the formal drawings and installation manual.[6] This is corroborated by the evidence of Mr Imbrogno.[7] Dr Clarke further states that the Opponent provided a site supervisor and a project manager[8], while the Patentee supplied their own staff to install the racking towers. In the evidence the Opponent refers to this as the “Adelaide Project” and the Patentee refers to this as the “Smiths job”. I will also refer to this as the Smiths job.
[6] Clarke1 at [19]-[20]; Imbrogno1 at [11]
[7] Imbrogno1 at [11], [16]
[8] OWS at [40]
Mr Imbrogno’s evidence states that work commenced at the Smiths site in January 2015.[9] He also states that significant delays occurred early in the project.[10] Mr Imbrogno’s evidence describes several interactions at the Smiths site between himself and employees of the Opponent during the installation of the racking bay tower. These all appear to reflect a friendly and collegial environment despite the challenges Mr Imbrogno (and therefore also the Opponent who had engaged his services) were experiencing. The Smiths job was completed on time in April 2015.[11]
[9] Imbrogno1 at [14]
[10] Imbrogno1 at [17]-[20]
[11] Imbrogno1 at [19]-[20], [29]-[30], [32]
Mr Imbrogno also supplies evidence that, following the completion of the Smiths job, he further developed the installation method used on the Smiths site.[12] This further development led to the filing of the provisional application.
[12] Imbrogno1 at [33]-[48]
Dr Clarke’s evidence also shows that Mr Imbrogno was involved in discussions about a future project about 17 months after the completion of the Smiths job.[13] In an email dated 23 October 2016 Mr Imbrogno let the Opponent know that he had filed a (provisional) patent on new ways to install racking bay shelves.[14] This is the provisional patent from which this innovation patent ultimately derives its priority date.
Entitlement
[13] MC-9
[14] MC-9
Applicable Law
The Application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Thus, the standard of proof that applies in the present case is the balance of probabilities.
The Opponent is pursuing a case under s101M(a) of the Act and lists the remedies available under s33(3) and s33(4) of the Act. The relevant portion of s101M(a) of the Act states:
“The Minister, or any other person, may, in accordance with the regulations, oppose an innovation patent that has been certified and seek the revocation of it, on one or more of the following grounds of invalidity, but on no other:
(a) that the patentee is either:
(i) not entitled to the patent; or
(ii) entitled to the patent but only in conjunction with some other person;
… ”
According to s101N(4) of the Act, the Opponent has the onus to satisfy me, on the balance of probabilities, that either the Patentee is not entitled to the patent and the Opponent is, or that the Opponent is jointly entitled to the patent.
Legal Principles
Both the Opponent and Patentee relied on the law on entitlement as articulated in University of Western Australia v Gray [2009] FCAFC 116 (“UWA”) and in Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 (“Polwood”). The general steps for determining who is an eligible person appear in [253] of UWA and, for the present purposes, these steps may be rewritten as: [15]
i.identify the “inventive concept” of the invention as defined in the claims;
ii.determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
iii.determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
[15] UWA at [253]-[256]
Polwood provides guidance in how to determine the inventive concept:[16]
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
[16] Polwood at [60]
In University of Western Australia v Gray (No 20) [2008] FCA 498 (“Gray”) at [1426], French J relevantly states that:
“The inventive concept marks a boundary between invention and verification. An example arose in 1994 and 2002 in decisions reported in both the United States and Canada in relation to the use of the drug AZT to treat AIDS. Glaxo/Wellcome had identified a new use for an old compound in conceiving the idea that AZT would work in humans against the HIV retro virus. It used external scientists employed by the National Institutes of Health (NIH) to perform critical blind testing on the AZT and on other compounds (none of which were identified). The NIH scientists found that the AZT did inhibit HIV replication and so advised. The Glaxo/Wellcome patent was considered in the US Court of Appeals in Burroughs Wellcome Co v Barr Laboratories Inc [1994] USCAFED 1225; (1994) 40 F 3d 1223. The argument had been raised there that the patent was invalid because of the wrongful exclusion as inventors of the NIH scientists. The argument focussed on when the inventors conceived the invention. Burroughs Wellcome said it was before they learnt the results of the NIH tests. The respondents argued that the NIH confirmation of the inventions operability from the NIH tests was an essential part of the inventive process. The Court of Appeals held that the NIH scientists were not joint inventors. It set out the following principles as established by US appellate courts:
1. Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2. Conception is the ‘formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice’. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
3. An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
4. It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
The propositions set out in Burroughs Wellcome (1994) 40 F 3 1223 define ‘invention’ by reference to completion in concept which distinguishes the invention from its verification and reduction to practice.”
As the present invention is an innovation patent the term “inventive concept” as used in Gray and UWA appears to be not quite apt. The term might be better described as the “innovative concept” or simply as the “concept”. For example, in David Leigh Wake v Soniclean Pty Ltd [2010] APO 12 (Soniclean), relating to an innovation patent, the delegate considered the contributions of each party to the development of the concept and elected not to label the concept further. I agree with the delegate in Soniclean that it is the identification of and contributions to the concept which needs to be assessed. Though it has no bearing, for the rest of this decision I will use the term “inventive concept” rather than innovative concept in order to better align with the established authorities and to better indicate the desired legal use of the word.
Following the principles outlined in UWA, I first need to identify the inventive concept for the opposed patent. Then I need to determine inventorship with regard to the inventive concept. Thirdly, I need to determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention. Following this I will determine whether the Opponent is entitled jointly or solely to the patent. It is useful to present an overview of the innovation patent before identifying the inventive concept.
The innovation patent
As described in the specification, the innovation patent is related to a method of lifting components for the construction of racking bay towers.[17] These racking bay towers are essentially tall structures (10m or higher) which contain racks on which to place goods.
[17] Specification at [0001]
The background of the invention[18] describes that lifting and transporting components by crane is inherently dangerous. Several procedures are currently used to prevent loads swinging or striking adjacent structures, such as the use of a “dogger” who holds a line attached to the load and uses the line to assist in controlling the swing of the load. But, when lifting is required within confined environments, such as when working inside a factory or a warehouse, the optimal position of the dogger would often be beneath the load. This presents an unacceptable safety risk, and alternate locations need to be used for the dogger. This adds to construction time and costs.
[18] Specification at [0002]-[0005]
The specification does not explicitly define a problem to solve. However, based on the background of the specification it becomes apparent that the problem can be considered how to construct racking bay towers more efficiently, and without necessarily using a dogger. The solution presented in the specification varies the method of constructing the racking bay tower. Figure 2 illustrates many integers of this method and is presented below.
A starting, or initial, tower needs to be erected before the method can be implemented. In Figure 2 this is depicted as the combination of the vertical risers 20 which form two rows of risers, depicted as A and B, as well as all of the horizontal members 22 and 24 that lie within and between rows A and B. A third row of vertical risers C are installed and connected only at the top to row B (not shown). All of these steps can be performed according to known methods in the art.[19]
[19] Specification at [0046]-[0048]
The method of the patent relates to installing preassembled shelf frames 30, comprising a series of assembled horizontal members 22 and 24, between row B and row C. In Figure 2 the shelf frame components are depicted as elongate members 32, 34 and cross members 36. Additional elongate members may be included on the shelf frame, such as 38a and 38b. In the method, firstly, the desired shelf frame is assembled and attached to moveable jig table 40 at a remote location. By remote, it is meant any location apart from the immediate area where the racks are being constructed. Figure 2 shows that the jig table, and therefore the attached pre-assembled shelf frame, is oriented at an angle relative to the ground. The preassembled shelf frame, mounted on the moveable jig table is wheeled into position between row B and row C. The preassembled shelf frame is then lifted to the uppermost desired location while maintaining its angled orientation, following which it is rotated back to horizontal and securely attached to the vertical risers. This method is repeated until each shelf is installed, proceeding in a top-down manner. Once the entire rack is complete in this manner, the entire process repeats on the next set of vertical risers until the desired number of rack towers and all shelves are installed.[20]
[20] Specification at [0049]-[0055], [0072]-[0082]
The specification also provides significant amounts of information on how the orientation of the shelf frame is maintained during movement and lifting.[21]
[21] Specification at [0056]-[0071]
The inventive concept
Opponent’s Submissions
The Opponent submits that the inventive concept is:[22]
[The] “Inventive concept which underpins each aspect of the Patent is a racking bay tower construction method using a preassembled shelf frame (whether that be a partial or whole shelf) which is assembled on the ground and moved up between the columns and then fixed into place.
The highest shelf is assembled first, and then progressively lower shelves are assembled in the same manner until the construction of the bay is completed. This provides significant advantages in build time.”
[22] OWS at 68-69
The Opponent contends that the use of the angled jig table is merely a preferred embodiment, and is not part of the inventive concept.[23] They also contend that the maintenance of the angular position during lifting does not form part of the inventive concept.[24] The Opponent justifies this by submitting that the embodiment detailed in [0024]-[0029] does not contain either of these features, and therefore it is not part of the overall concept.
[23] OWS at 75-76, 82-84
[24] OWS at 77-79

During the hearing the Opponent further submitted that it is only the lifting of the partially preassembled shelf frame which was common to each aspect of the invention. They submitted that this was therefore the inventive concept that unified the whole specification.
Patentee’s Submissions
The patentee submits in relation to the inventive concept that:[25]
“It is apparent from a fair reading of the specification that the inventive concept is to a method of mounting a pre-assembled shelf frame on an angle on a jig table and then moving the jig table between the uprights on the ground, so that the fully pre-assembled shelf frame can easily be raised in that same orientation up to its install position, and then repeating that with the next shelf frame.
Shelf frames mounted onto jig tables in this manner are able to be raised from that position in a stable orientation by lifting the shelf frames while maintaining the angular position during lifting, substantially avoiding swinging of the shelf frames.”
[25] PWS at [87]-[88]
In his evidence, and when discussing the inventive concept outlined by his attorney, Mr Bartlett, Mr Imbrogno states:[26]
“All of the features are important and all contribute to the invention working as well as it does, such as the use of a jig table that permits a preassembled shelf (fully preassembled, as a complete unit) to be mounted on it in an angular orientation.”
[26] Imbrogno1 at [64]
The Patentee emphasised that the broadest aspect of the invention explicitly included the angled jig table, and the translation of the angled jig table containing the preassembled shelf frame between the upright members.[27] They also submitted that paragraphs [0011]-[0012] contained references to the use of a jig, and that maintaining an angular position during lifting implied that the jig had to be angled else a change in orientation would occur.
[27] PWS at [17] discussing Specification at [0007]
In response to the Opponent’s submissions on [0024]-[0029], the Patentee stated that these relate to other aspects of the construction of the racking bay towers, and not to the claimed method.
The Patentee also submitted that the concept in the present patent was different to what was developed at the Smiths job and outlined why they considered them to be different. The first difference was that Smiths job lifted a partially assembled shelf frame as opposed to a fully preassembled shelf frame. The second difference lies in the types of rotation following lifting which were employed at the Smiths job. The evidence shows that the Smiths job rotated the shelves in a horizontal plane[28] post lifting, whereas the present patent rotates the shelves only from the angled position to the desired position (the horizontal plane) post lifting[29]. The third difference being the incorporation of the angled jig, the translation of the angled jig between the upright members, and the lifting of the angled shelf frame at a constant orientation.
Consideration
[28] GI-2
[29] As per claim 1
From the above submissions and evidence it appears that both parties agree that the inventive concept involves a combination of integers, but the parties do not agree on what those integers are or which are required in the combination. These integers are:
·Preassembling a shelf frame at ground level;
·Mounting the preassembled shelf frame on an angled jig;
·Moving the preassembled shelf frame between the upright members;
oBy moving the angled jig holding the preassembled shelf frame;
·Lifting the preassembled shelf frame to its installation position;
owhile maintaining its angular orientation; and
·Installing the shelves in a top-down fashion.
As above, both parties agree that the preassembly of a shelf frame on the ground is a key component of the inventive concept. The specification only discusses the use of preassembled shelf frames and describes no other method to assemble the shelf frame.[30] The feature is the key difference between the previous piece-by-piece installation method and is present in the first two embodiments described[31] and all others which relate to installing the shelf frame. I agree that this is an element which contributes to the inventive concept.
[30] Specification at [0007]-[0013]
[31] Specification at [0007]-[0009],
Both parties also agree that the movement of a preassembled shelf frame into position between the uprights is part of the inventive concept. This is covered in numerous embodiments in the specification. While assembly of the shelf frame could presumably be carried out in the area where the lifting occurs, it would introduce significant dangers to the workers while operating in that space and the specification clearly indicates people should not stand below an item being lifted.[32] As a consequence I consider that the movement of the shelf frame into position is also an element which contributes to the inventive concept.
[32] Specification at [0005]
Similarly both parties agree that the lifting of the preassembled shelf frame into position is a key part of the inventive concept. In describing Figure 2 the specification states that shelves of the first tower were to be constructed in a piece-by-piece manner.[33] All subsequent shelves are lifted as a whole and attached to the subsequent upright members. Each of the embodiments described also lift the preassembled shelf frame. I agree with both parties that this is part of the inventive concept.
[33] Specification at [0047]
In each of the embodiments describing lifting, the shelf frame is maintained at a constant angular position. Further, a large portion of the specification is directed towards methods of using cables and guides to ensure that the orientation is maintained.[34] Thus, contrary to the submissions of the Opponent, it is apparent that maintaining the angular position of the shelf frame is a key element of the inventive concept.
[34] Specification Figures 3-6, paragraphs [0011]-[0020], [0056]-[0071], [0079]-[0085], [0097]-[0100]
The specification also refers to a jig table in numerous locations.[35] In each paragraph where the jig table and shelf frame are discussed, the shelf frame is always configured to be at an angle. Further, Figures 2 and 7 only show jig frames which are angled with respect to the vertical. There is no mention in the specification of other configurations for the jig table. To ensure that the angular position is maintained during lifting, and particularly during the first stages of lift from the jig table, the angle of the shelf frame when attached to the jig table needs to substantially match the orientation during lifting. I agree with the Patentee that the use of an angled jig table is also an element of the inventive concept.
[35] Specification at [0007]-[0008], [0011], [0021]-[0023], [0052]-[0053], [0073]-[0075]
Regarding the top-down installation, the specification states that the invention relates to lifting components within confined environments[36] and that the specification notes that loads may strike adjacent structures during lifting.[37] This is a physical limitation of the racking bay towers being constructed. A second physical limitation exists in that it is not physically possible to move a shelf frame through a previously installed shelf, particularly while maintaining the angular position. The specification describes this as wanting to avoid interference, and only briefly mentions that the uppermost shelf frame must be installed first and each shelf frame is then installed below that.[38] While it has a practical effect, at the level of detail described in the specification it appears that the order of shelf frame installation, from the top downwards, is merely a physical limitation which does not contribute towards the inventive concept.
[36] Specification at [0001], [0004]-[0005], [0042], [0047], [0055]
[37] Specification at [0003]
[38] Specification at [0054], [0078]
There are also minimal details in the specification regarding how the preassembled shelf frame is attached to the angular jig table. This does not appear to be an inventive element, rather it is a necessary process in order to transport the shelf frame to the desired lifting location safely. It has the character of reduction to practice rather than being a concept.
From the above analysis I conclude that the inventive concept is the preassembly of a shelf frame at ground level, moving an angled jig containing the shelf frame between upright members, and lifting the preassembled shelf frame to its installation position while maintaining its angular position.
Contributions to the inventive concept
It is useful to consider the Patentee’s submissions first followed by the Opponent’s for determining the contributions to the inventive concept.
Patentee’s evidence and submissions
In his evidence Mr Imbrogno has supplied a lot of information regarding the Smiths job, the problems encountered there, the solution which was developed on site, and the further development of the inventive concept following completion of that project.
Regarding the Smiths job, Mr Imbrogno’s evidence states that he discussed the installation speed problems he was facing with the site manager (hired by the Opponent). The site supervisor recommended an experienced rigger join the team, and informed Mr Imbrogno of who that rigger was. The evidence also says that both the site manager and the rigger assured Mr Imbrogno that the piece-by-piece method which was being employed was the standard method used in the art for racking bay installation (at least after the first tower had been erected).[39] That is also the method detailed in the installation manual provided to Mr Imbrogno, and which was filed as MC-8.
[39] Imbrogno1 at [19]-[20]
Mr Imbrogno’s evidence then states that he conceived the idea of preassembling shelf frames on the ground, to the extent they could be, moving them to the desired lifting position, and lifting them into position.[40] Mr Imbrogno also discusses a site visit by members of the Opponent, stating:[41]
“On one occasion, I remember returning to the site after running an errand (I think in March 2015) and noticed a man wearing a Dematic [the Opponent] vest standing and looking at my work crew. I approached the gentleman, who I had never met, and asked him who he was. He replied, “I am Murray Clarke from Dematic Sydney.” He then commented ‘you must be Gino that I have heard so much about’. ‘All good things I hope’, I jovially commented. Murray and I stood and watched my crew erecting the part-shelves at a rate of about one every 5 minutes, and he said to me ‘I would never have thought a rack could be erected like that’. I quickly replied ‘Well don't look too hard as there is quite a bit of R&D in that IP’. … After another 10 minutes or so, Murray went on his way with the Project Manager.”
[40] Imbrogno1 at [21]-[22]
[41] Imbrogno1 at [30] (in part)
Mr Imbrogno also describes the difficulties encountered with the approach used on the Smiths job and which indicated to him that further development was required.[42] This further development occurred after the Smiths job and included aspects such as using a fully preassembled shelf frame rather than a partially-assembled shelf frame, designing and mounting the preassembled shelf frame on an angled jig, and moving the angled jig between the towers. He also describes how a newly-designed cable and roller system would maintain the orientation of the shelf frame during lifting, preventing swinging of the shelf frame or catching the shelf frame on other components, and some further contributions such as an outrigger and link arm system.[43]
Opponent’s evidence and submissions
[42] Imbrogno1 at [26]-[27]
[43] Imbrogno1 at [43]-[48]
The Opponent disputes only a few parts of Mr Imbrogno's evidence. Primarily, Dr Clarke disputes Mr Imbrogno’s assertion that he was the person from the Opponent who visited the Smiths job.[44] Dr Clarke does not say that the site visit did not occur, rather he says that he has never been to the site and that his business records do not include any travel to Adelaide during the installation time.[45] The Opponent also accepts the evidence where Mr Imbrogno says there is “quite a bit of R&D in that IP”[46] indicating that the Opponent accepts that a site visit occurred. I do not consider the detail of which representative of the Opponent to have visited the site to be important to the issue of entitlement at hand.
[44] Imbrogno1 at [30]
[45] Clarke2 at [11]-[14]
[46] OWS at [81] citing Imbrogno1 at [30]
Dr Clarke also states that the Opponent had developed a shelf frame installation system prior to the Smiths job:[47]
“I believe that Dematic developed and used a pre-assembled shelf in March 2014 ahead of its installation phase in October 2014 in relation to the 2014 Adelaide Project.”
[47] Clarke1 at [30]
On this point the Opponent relies on MC-3, a technical drawing supplied to Mr Imbrogno[48], and on the text that lies below a sectioned view of a shelf which states:
“Pre bolt 6 off cross aisle ties to one down aisle tie beam and temporary support beam

Remove temporary support beam after installation of module and re-use on next installation”

[48] As evidenced by MC-7, Clarke1 at [20], Imbrogno1 at [54]
Primarily, the Opponent submits that there was a collaboration between the parties during the Smiths job. They rely on an email from the Patentee to the Opponent which includes the following relevant text:[49]
“The joint IP, that I believe both [the Opponent] and [the Patentee] own, involving the jigs and componentry involving the assembly of the shelves as a module, is not included in this patent.
I feel that although the concept of the ‘Panel Build’ was first adopted by us at Smiths, [the Opponent] have spent many resources in perfecting the system, and we are happy to share this IP.”
[49] MC-9
I consider this email in the contractual and fiduciary relationships section below. Further evidence of the collaboration is said to include:
·The provision of a site manager by the Opponent, and the supervision/direction provided by the site manager;[50]
·The installation manual and technical documents provided by the Opponent;[51] and
·The contractor-subcontractor relationship.[52]
Consideration
[50] OWS at [39], [45]
[51] OWS at [35]-[36], [42]
[52] OWS at [41]
In his evidence Mr Imbrogno states that he identified that a problem existed in how to install racking bay towers due to the delays he encountered while working on the Smiths job.[53] This is not disputed by the Opponent. I also note that Mr Imbrogno states that this was his first time installing racking bay towers.[54] I therefore accept that the problem the patent addresses was identified by Mr Imbrogno during the Smiths job.
[53] Imbrogno1 at [21]
[54] Imbrogno1 at [13]
It is the Opponent’s position that any IP developed during the Smiths job is joint IP, and that anything developed after the Smiths job stems from this initial contribution. It is not disputed that Mr Imbrogno made further developments to the invention after the Smiths job. To simplify the analysis which follows, I firstly determine which aspects of the inventive concept were developed during the Smiths job. I then determine which party has made contributions to those aspects.
The evidence and submissions of both parties regarding the Smiths job show that shelf frames were partially assembled on the ground, were moved into position between the uprights, and were lifted into position. Differences exist between what was employed during the Smiths job and the inventive concept of this patent. These differences are the extent to which the shelf frame is formed (full shelf frame vs a partial shelf frame), how the shelf frame was moved into position (forklift vs angled jig table), and during the lifting of the shelf frame (vertical lifting vs maintaining a constant angular position).
Significant time was spent by the parties debating the difference between a partially assembled shelf frame and a (completely) preassembled shelf frame. While I agree that there is a difference, it is not important when the evidence of Mr Imbrogno also shows that he considered using a fully preassembled shelf frame during the Smiths job.[55] Mr Imbrogno states that he encountered a physical limitation in installing a full shelf frame and he was led to developing the partial shelf frame. It is therefore clear that Mr Imbrogno considered using both fully preassembled and partial shelf frames during the Smiths job.
[55] Imbrogno1 at [21]-[22]
It is also clear that the concepts of moving a preassembled shelf frame into position and lifting it were used at the Smiths job. I acknowledge the Patentee’s submissions that significant further development occurred after the Smiths job, as outlined by Mr Imbrogno.[56] But additional development does not mean that the inventive concept was solely realised after the Smiths job concluded and that it should be considered separately.
[56] Imbrogno1 at [33]-[48]
The Opponent submitted that they came up with the concept of preassembling a shelf frame prior to the Smiths job. I accept that MC-7 shows that the schematics of MC-3 were sent to the Patentee. However, I do not think the evidence is sufficient to support the submission that MC-3 shows a preassembled shelf frame. Dr Clarke’s statement only refers to MC-3 – it does not refer to any external document, project, or other documentary evidence which would strengthen his initial statement. The wording quoted from MC-3 does not clearly state that shelves should be partially preassembled on the ground, noting that preassembly must occur prior to lifting into position as occurred during the Smiths job. The pre-bolting could equally well be part of an installation procedure done at height where the “pre bolt” refers to bolting the cross aisle ties to the temporary support beam, noting that the support beam is removed later.
The Patentee also submitted that the entire schematic of MC-3 refers to a fully-installed racking bay tower, and not to a partially installed structure or to the partial preassembly of shelves.[57] There is merit in the Patentees argument and I agree that the section B is derived from Section A, and that Section A refers to a portion through a schematic of the desired fully-installed racking bay tower.
[57] PWS at [123]-[126]
The Opponent’s oral and written submissions included passages from the installation manual provided to the Patentee. However, as argued by the Patentee, I agree that those passages refer to the construction of the initial tower and not to the installation of shelves per se. In relation to the shelves the installation manual also explicitly says that:[58]
“Most other assembly will be joining of components at height (e.g. frame splicing, down-aisle and cross-aisle ties, top rails, plan and spine bracing, etc).”
The down aisle and cross aisle ties being the individual components of the shelf. The installation manual does not describe using or lifting a pre-assembled shelf frame.
[58] MC-8 Appendix 3 “Installation Notes” item 10, (emphasis added)
Both parties agree that the Opponent provided a site manager, a project manager, and other personnel for the project. The Opponent submitted that the Patentee was required to work under the direction of the site manager, as indicated by the installation manual, and I agree that this is written in the installation manual. But it is also clear from Mr Imbrogno’s evidence that he consulted with the site manager when confronted with problems regarding installation speed. The evidence before me shows that the site manager recommended the hiring of an experienced rigger. It does not show that the site manager suggested a new method to install the shelves. Nor does it show any contribution towards moving the shelf frames or lifting the shelf frames.

It is also clear that Mr Imbrogno interacted with other members from the Opponent, and this evidence is adopted by the Opponent. But the evidence does not show that the site manager, project manager, or the site visitors contributed to the aspects of the inventive concept developed during the Smiths job.
Based on the evidence before me I cannot accept that information regarding preassembled shelves, partial or otherwise, was communicated to the Patentee by the Opponent. Therefore, this is not something which the Opponent could advance as being a contribution of theirs. There are no submissions or evidence from the Opponent related to movement of shelf frames between the upright members, or for the lifting of shelf frames. This is therefore not something the Opponent can advance either.
As I have no evidence that any part of the inventive concept formed at the Smiths job was formed by any persons acting on behalf of the Opponent, or that any such information was communicated to the Patentee in the event that such information did exist, the only outcome I can arrive at is the portions of the inventive concept developed during the Smiths job were conceived solely by the Patentee.
Similarly, there are no submissions or evidence regarding contributions made by the Opponent to any inventive concept after the completion of the Smiths job. I therefore find that the inventive concept in its entirety came from the Patentee.
Contractual or fiduciary relationships
During the installation at Smiths in 2015, and from the contractor – subcontractor relationship at that time, it is clear that contractual and financial arrangements existed between the parties. However, the details of this contract, or even relevant excerpts therefrom, have not been submitted as evidence. I do not have any information which I can use to indicate that there are contractual or fiduciary reasons why the Opponent is entitled in part or in full to the provisional patent or any patent derived therefrom.
The Commissioner has considered similar matters where contractors or consultants are contesting entitlement before. In Naturo[59] the delegate summarised two relevant decisions, where a contractor (or consultant) relationship existed between the parties, as follows:
“As to relationships determined by consultancy agreements, the Novogen Research Pty Ltd v G. J. Consultants Pty Ltd decision, [2008] APO 24, appears relevant in the present case. In the Novogen case at [19], the parties did not dispute that a certain individual was the sole inventor. The key point of dispute concerned whether the invention was conceived during the period of a formal consultancy agreement. The arrangements regarding the consultancy agreement were described at [15] – [18] of the Novogen decision. Principally the consultancy was initially limited to 130 hours for an initial term of one year. The consultant was required to advise on matters of either a general or specific nature as to research in areas such as steroids, phytoestrogens, their derivatives and metabolites, and to assist with the chemical recovery, isolation, identification and synthesis of these products, amongst other things. In that case the delegate noted at [19] that there was general agreement that the client company, not the consultant, had entitlement to any invention conceived prior to termination of the consultancy. The delegate found in favour of the client company in respect to the key inventive concept conceived during the period of the consultancy agreement, but not in respect to another separate inventive concept that was also part of the subject matter in that case.
The Infra Red Technologies Pty Ltd v Dirk Domenico Cortesi decision, [1997] APO 6, dealt with an agreement considered in evidence by Mr Cortesi to have always been a marketing and manufacturing association involving his design of micronizers. His evidence was that he was involved as a consultant for the marketing and manufacturing efforts of a group of companies and that he was never an employee of the companies. The delegate accepted the evidence of Mr Cortesi and on balance concluded that, despite a company’s statement of entitlement on a notice of entitlement for a corresponding patent application, the rights to the invention did not flow from Mr Cortesi to any of the companies by virtue of an employee/employer or other contractual relationship. This case may clearly be contrasted with the Novogen case where there was general agreement between the parties that the client had entitlement to any invention conceived prior to termination of the consultancy.”
[59] Naturo Pty Ltd v The Fruit Company Limited [2016] APO 89 at [22]-[23] (Naturo)
In the present case there is no evidence of any agreement that any generated IP would be transferred between the parties as a result of the contractor-subcontractor relationship, and the Opponent has not made such a submission. The present situation more closely aligns to what was present in Infra Red Technologies and rights to the invention do not flow merely due to the contractor-subcontractor relationship. While the Opponent has also submitted that the parties were working collaboratively[60], I have no evidence before me which shows a collaboration of the type where IP should move from one party to the other.
MC-9: The Joint-IP email
[60] OWS at [46]
The Patentee submits that the email sent from the Patentee to the Opponent, see paragraph 58 above, is not an assignment of rights for what was developed during the Smiths job.[61] The Patentee also submitted that the wording of the email also says that Mr Imbrogno developed the (partial) pre-assembly and lifting portion of the inventive concept at the Smiths job, and this has not been contested beyond what is presented above. Further, in Mr Imbrogno’s evidence he clarifies what is meant by the term “jig”, that being the flat non-moveable assembly jig used at the Smiths job and not the moveable angled jig in the present patent.[62]
[61] PWS at [142]
[62] Imbrogno1 at [56]; PWS at [145]
The Opponent also submitted that the email indicated that the IP from the Smiths job was to be jointly owned.[63] But, exactly what the joint IP would comprise is not defined beyond it being related to jigs and componentry for assembling of the shelves as a module. The email does not state that the method to install the shelves developed during the Smiths job should be shared. While the email states that the Opponent has invested some resources after the development of the system used on the Smiths job, it is unclear what these developments are or how they expanded upon the method of the Smiths job.
[63] OWS at [51]
Further, the wording of the email from the Patentee appears more as an offer to engage with the Opponent on further IP discussions. One can quickly envisage a number of potential routes which Mr Imbrogno had contemplated, such as a joint patent application being submitted, a patent sale, exclusive licensing, or some other benefit that could have accrued between the parties. However, I am unable to conclude exactly what was intended in the absence of direct evidence from Mr Imbrogno.
It is clear to me that I cannot consider the email to be anything more than an invitation for further IP discussions. It is not sufficient to indicate that sole or joint ownership of the elements of the inventive concept developed during the Smiths job should occur.
Conclusions on Entitlement
Above I have found that Mr Imbrogno developed elements of the inventive concept during his time as a subcontractor on the Smiths job, and that he further refined this concept after he completed the Smiths job. I could not identify any contribution towards the inventive concept from any individual which represented the Opponent at any point in time. Nor could I find any contractual or financial reasons why the Opponent would be jointly or solely entitled to the patent. It follows that I cannot find that the Opponent is entitled solely or jointly with the Patentee. The opposition is not successful.
Regulation 5.23
Regulation 5.23 is a discretionary provision. In Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8 the delegate listed the following considerations which are relevant to whether this regulation should be invoked or not:
·     the circumstances leading up to the evidence not being filed earlier;
·     what the evidence shows and whether the information is likely to be crucial to the delegate’s decision (for example, if it is such that a ground is likely to succeed where it otherwise would not);
·     the public interest; and
·     the balance of convenience of the parties if the information is considered.
In the present case, both parties have sought to submit further evidence along with their written submission shortly before the hearing date. This follows the abandonment of several other grounds of opposition. The Patentee addressed the Opponent’s additional evidence in their written submissions and in the hearing. They did not object to the materials being admitted, but submitted that both the Opponent’s and the Patentee’s additional evidence should both be admitted, essentially as a matter of procedural fairness. The Opponent does not agree that the Patentee’s evidence should be admitted.
I do not believe a quid pro quo treatment should apply – the Opponent has not had the opportunity to prepare written submissions regarding the Patentee’s additional evidence and such an approach would be inconsistent with the regulation 5.23 discretion. I therefore detail the evidence of each party, and whether to admit it under regulation 5.23, separately.
Opponent’s additional evidence
The Opponent’s additional evidence corresponds to two separate documents which were attached to the email of MC-9 and a third declaration by Dr Clarke. They acknowledged that it was an oversight during the preparation of the evidence, and that it should have been admitted at the same time as Clarke1 and MC-1 to MC-10.
The first piece of the Opponent’s additional evidence is a document which contains the information Mr Imbrogno supplied to his patent attorney in order to obtain a provisional application. The second document is a copy of the provisional application which was filed by Mr Imbrogno and which was based upon the information given in the first document. The final piece of evidence is a statutory declaration from Dr Clarke which merely confirms that the first two documents are attachments to the email sent by Mr Imbrogno.
The Opponent has submitted that there are substantial differences between the accepted patent and what is present in the additional evidence.[64] Oral submissions emphasised differences in the claimed invention in the provisional, and associated consistory clauses, with the present patent. While this is true, there is nothing present in either document which shows a contribution towards the inventive concept from the Opponent. They are both documents prepared by the Patentee and his attorney. In this respect, there would be no change in the outcome should I elect to admit them.
[64] OWS [57]-[59]
While the Patentee addressed these documents in their written and oral submissions, and neither party objects to their inclusion, the admission of this extra evidence would not alter the outcome of this opposition. I therefore do not admit the Opponent’s additional evidence.
Patentee’s additional evidence
The Patentee’s additional evidence consists of a second declaration by Mr Imbrogno and a copy of a contract made on 21 November 2016 regarding a “NewCold” project that the Patentee made with the Opponent. The contract contains clauses which relate to the use of the information contained within the provisional application.
While the contract contains clauses that might have been relevant to this decision had I found in favour of the Opponent, I have already determined that the opposition is unsuccessful without recourse to it. Should I elect to consider admitting them, then unnecessary resources would be utilised by all parties in addressing whether to admit this evidence or not. No benefit would be had by doing so.
I do not admit Patentee’s additional evidence under regulation 5.23.
Conclusions
The opposition is not successful. The Opponent has not satisfied me that they are entitled to either joint inventorship or sole inventorship.
Costs
I see no reason to depart from the usual practice of costs following the event. I therefore award costs according to Schedule 8 against the Opponent.
Dr David Carberry
Delegate of the Commissioner of Patents