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, (

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] APO 28
Decision Date: 28 June 2024

CaseChat Overview and Summary

The matter between Dematic Pty Ltd (the Opponent) and Ginco Industries Pty Ltd (the Patentee) involved an opposition to the grant of innovation patent 2020101007. The Opponent challenged the Patentee's entitlement to the patent under section 101M(a) of the Patents Act 1990. The dispute centred on whether the Opponent had contributed to the development of the inventive concept of the patent, or whether there were contractual or fiduciary relationships that would give rise to joint entitlement. The delegate of the Commissioner of Patents, Dr David Carberry, found that the Opponent had not established any contribution to the development of the inventive concept, nor any contractual or fiduciary basis for claiming joint entitlement. The inventive concept was identified as 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. The delegate concluded that the inventive concept was developed solely by the Patentee, and no evidence was provided to support the Opponent's claim of joint entitlement. As a result, the opposition was unsuccessful, and costs were awarded to the Patentee in accordance with Schedule 8 of the Patents Regulations 1991.

Orders