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

FEDERAL COURT OF AUSTRALIA
Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877
PATENTS – claimed invention relating to locks – whether applicant’s locks infringe claims– whether respondent’s alleged invention is novel with respect to prior art information – whether prior art locks give rise to the problem the patent addressed – whether the patent includes an assumption which excludes alleged anticipating locks - obviousness – uninventive skilled worker - extent of common general knowledge – obviousness a question of fact - fair basis – whether claim travels beyond the specification – whether there is a real and reasonably clear disclosure of the matter claimed - sufficiency – utility – uncertainty
Patents Act 1990 (Cth) s 18(1)(b), 7(2), 7(3), 40(2), 40(3), 138(3)(f)
Trade Practices Act 1974 (Cth) s 52
U and I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 60 FCR 26 cited
Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd [2001] FCA 1350 cited
Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 cited
Kimberly-Clark Australia Pty Ltd v Arico TradingInternational Pty Ltd (2001) 177 ALR 460 applied
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 cited
Bartlem Pty Ltd v CMMC Pty Ltd [2001] FCA 1218 referred to
Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2001] FCA 1359 referred to
Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 referred to
Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327 referred to
Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29 applied
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 applied
Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 applied
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 referred to
Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 applied
R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 cited
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 cited
Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 referred to
British Liquid Air Company v British Oxygen Company Ltd [1909] 26 RPC 509 referred to
Wellcome Foundation Ltd v V R Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 cited
Abbott Laboratories v Corbridge Group Pty Ltd (No 2) [2001] FCA 810 cited
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) 25 IPR 173 referred to
Re Raychem Corp’s Patents [1998] RPC 31 applied
Winner v Ammar Holdings Pty Limited (1993) 41 FCR 205 distinguished
Winner v Ammar Holdings Pty Ltd (1982) 24 IPR 137 distinguished
Acme Bedstead Co Ltd v Newlands Bros Ltd (1937) 58 CLR 689 referred to
Intalite International NV v Cellular Ceilings Ltd (No 2) [1987] RPC 537 applied
Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 97 FCR 524 applied
Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 cited
Firebelt Pty Ltd v Brambles Australia Ltd (2000) 51 IPR 531 referred to
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 applied
ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (2000) 106 FCR 214 referred to
Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 referred to
Biogen Inc v Medeva PLC (1996) 36 IPR 438 applied
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 distinguished
Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156 referred to
Blanco White, Patents for Inventions 5^th ed 1983
Bannon, Australian Patent Law (1984)
CIPA Guide to the Patents Act 5^th ed 2001
DORIC PRODUCTS PTY LTD v LOCKWOOD SECURITY PRODUCTS PTY LTD
N 1089 OF 2000
HELY J
21 DECEMBER 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1089 OF 2000

BETWEEN:

DORIC PRODUCTS PTY LTD
(ACN 000 577 195)
APPLICANT

AND:

LOCKWOOD SECURITY PRODUCTS PTY LTD
(ACN 086 451 907)
RESPONDENT

JUDGE:

HELY J

DATE OF ORDER:

21 DECEMBER 2001

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The parties should bring in short minutes of order to give effect to this decision.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1089 OF 2000

BETWEEN:

DORIC PRODUCTS PTY LTD
(ACN 000 577 195)
APPLICANT

AND:

LOCKWOOD SECURITY PRODUCTS PTY LTD
(ACN 086 451 907)
RESPONDENT

JUDGE:

HELY J

DATE:

21 DECEMBER 2001

PLACE:

SYDNEY

REASONS FOR JUDGMENT

Lockwood Australia Pty Ltd was entered on the Register of Patents as the proprietor of Australian Patent No 702534 (“the Patent”) for a “key controlled latch”. Since 2 November 2000 the respondent has been entered on the Register as the proprietor of the Patent, Lockwood Australia Pty Ltd having assigned its interest in the Patent to the respondent in March 1999. Except where it is necessary to distinguish between the two companies, either or both is referred to in these reasons as “Lockwood”.
The applicant (“Doric”) manufactures and sells door locks known variously by the identifiers “DS 1180”, “Ilco True Guard 5000 series deadlatch” and “Lane Deadlatch” (“the Doric products”). Each of the Doric products has the same internal lock mechanism, and for the purpose of these proceedings, it is not necessary to distinguish between them.
On 5 October 2000 letters of demand were sent to Ilco Unican Australia Pty Ltd, and to Siddons Proline, (a division of SPL Group Ltd) by patent attorneys acting on behalf of the respondent. On 10 October 2000 the respondent forwarded a letter of demand to the applicant. In each case the letters asserted that one or more of the Doric products fell within the scope of the claims of the patent and that unauthorised manufacture, sale or use of the Doric products referred to in the letter constituted an infringement of the Patent.
These proceedings began as a claim by Doric pursuant to s 128 of the Patents Act 1990 (Cth) (“the Act”) for relief against the respondent on the ground that, by the letters to which I have referred, the respondent unjustifiably threatened Doric and its two distributors with infringement proceedings. It is also alleged that the sending of the letters resulted in a contravention of s 52 of the Trade Practices Act1974 (Cth) (“TPA”). The onus of proving justification is upon Lockwood; the onus of establishing invalidity of the Patent, if such is alleged, lies upon Doric: U and I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 60 FCR 26; Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd [2001] FCA 1350 at par [35].
By its amended cross-claim, the respondent alleges that the manufacture and sale of the Doric products infringes claims 1-8, 12-20, 22, 23 and 30-32 of the Patent. During the course of final submissions, counsel for Lockwood, Mr Bannon SC, abandoned the allegation of infringement of claims 16, 18 and 19.
By its second cross-claim, Doric seeks a declaration of invalidity of the Patent, and an order for its revocation.
Claim 1, and all subsequent claims are in relation to a latch assembly having a number of specified features. Claim 1 is with respect to a latch assembly having the following features:
(i)a casing;
(ii)a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position;
(iii)a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to the release position;
(iv)a locking means operable from the inner side of the assembly to adopt an active condition and thereby render the first actuator inoperable;
(v)a second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position;
(vi)lock release means which is responsive to the operation of the second actuator so as to thereby render the locking means inactive.
An “actuator” is something which causes an operation to occur, for example, a handle or knob of a lock assembly.
A typical latch assembly
The specification (p 1, ll 21-28) describes a “typical latch assembly”, ie a latch assembly of a type which was well known before the priority date (14 February 1996). A “typical latch assembly” as there described is one which has features (i) to (v) of claim 1. One example of a deadlatch having those features is a Lockwood product known as the 001 deadlatch, which is the precursor of the preferred embodiment of the invention claimed. The 001 deadlatch was first released for sale in Australia in the 1980s, and enjoyed widespread success until manufacture was discontinued after the new 001 deadlatch with safety lock release was launched in early 1997.
Feature (iv) is an important element of the security provided by a door (it is convenient to describe the invention with particular reference to doors, even though it has wider application – see specification p 1, ll 4-6). If the door has glass panels, or if glass panels are adjacent to the door, the panels can be breached with relative ease so as to provide an opening through which an intruder could reach and open the door by means of an inside knob or handle if it was not locked. Similarly, if an intruder gained access to the premises through a small opening, eg a window, the intruder could leave via the door if the inside knob or handle was unlocked, and take larger objects than he might otherwise be able to remove from the premises.
The problem with a typical latch assembly
Although feature (iv) is an important element in the security provided by the door, it is also the source of a problem. A person might open the door, inadvertently leave the key in the outer lock and close the door behind him. Or the key might be misplaced after the person arrives at home, having shut the door behind him. In either case, the person is locked inside the house. This is a potentially dangerous situation if the person needs to exit the house quickly, as in the case of a fire.
Thus the specification says of locks having features (i)-(v) (p 1, ll 11-17):
“Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible.”
Mr Wilson, an expert called by Lockwood, had been aware for many years of the problem of people locking themselves in their houses because the key to unlock the inside handle was not accessible. The problems described on page 1 of the Patent had been known to Mr Freestone, another expert called by Lockwood, since deadlatch locks were first used in Australia.
The solution to the problem: lock release means (“LRM”)
The specification describes an object of the invention:
“It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used.”
(p 1, ll 18-20)
The specification further states:
“According to the present invention, a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.”
(p 2, ll 10-12)
Thus it is the incorporation of feature (vi) into the lock assembly, in addition to features (i)-(v), which distinguishes the present invention from a typical latch assembly.
What is “lock release means”?
The specification states:
“It is also preferred that the lock release means is operable to influence the detent cam in a manner such that operation of the second or outer actuator causes the detent cam to move to a position corresponding to the actuator release position of the detent. The cam may be spring biased towards that corresponding position, and retaining means may be operable to allow or prevent such movement according to whether or not, respectively, the second actuator is operated.”
(p 2, ll 18-24)
The “actuator release position of the detent” is equivalent to the unlocked position. Lock release means in the preferred embodiment is described on p 7, l 28 – p 8, l 2.
There is no other statement in the specification as to the nature of the “lock release means” which characterises the latch assembly the subject of the invention, and which serves to distinguish it from a typical latch assembly.
Embodiments
Embodiments of the invention are described in detail in the later part of the specification and in the drawings. The drawings are “merely illustrative of how the invention might be put into effect”. The specification makes it clear that the preferred embodiment is but one example of a suitable lock release means. Figure 1 is a diagrammatic view of an installation including a latch assembly according to one embodiment of the invention. It is as follows.
The specification states, in relation to this assembly:
“It is a feature of assembly 1 that it includes lock release means 17 which responds to operation of the lock 10 so as to automatically deactivate the locking means 13. The release means may take any suitable form, and one particular form will be hereinafter described.”
(p 4, ll 26-29)
(emphasis added)
The diagram shows the lock release means 17 as being something distinct from the second actuator although connected to it. The words which I have emphasised convey that a person skilled in the art would have no difficulty in constructing this integer without the necessity for any instruction from the patentee. The Patent does not have to teach how release means may be constructed as that is a matter within the knowledge of a skilled addressee: cf Kimberly-Clark Australia Pty Ltd v Arico Trading International (2001) 177 ALR 460. Mr Catterns QC made it plain that there is no allegation of insufficiency in this regard, an allegation which, if made, would have been antithetical to Doric’s case on obviousness.
On pages 7-8 of the specification more information is given as to the lock release means employed in the preferred embodiment. The specification there states:
“Lock release means is provided to enable the lever 31 to be moved out of blocking engagement with the cam projection 40. In the particular arrangement shown, the lock release means 17 is arranged to have direct influence on the cam retainer means, and it is preferred that such influence is achieved through a rotatable camming member 42 which forms part of the release means 17 and is connected to the outside lock 10 so as to rotate in response to rotation of the lock barrel 12. As shown by Figure 11, that connection may include a drive bar 43 of non-circular cross-sectional shape which engages at one end within a slot 44 in an end of the barrel 10, and engages at its other end in a rectangular aperture 45 formed through the camming member 42.
As best seen in figures 4, 6 and 8, the camming member 42 is arranged to overlie the lever 31 at the side of that lever remote from the cam 22. A camming lug 46 provided on the member 42 has a sloping cam face 47 which is adapted to engage against an upstanding portion 48 of the lever 31 which projects above the plate 36, as shown in figures 4, 6 and 8, when the lever 31 is in the cam retaining position. Rotation of the member 42 caused through operation of the lock 10, results in coaction between the cam face 47 and the lever portion 48 such that the lever 31 is progressively forced downwards against the action of the spring 41 towards the position shown in Figure 8.”
The lock release means as there described is the subject of claims 28, 29 and 33 of the Patent. Lockwood does not allege that the Doric products infringe any of those claims. Nonetheless Lockwood alleges that the Doric products include “lock release means” which is responsive to the operation of the second actuator so as to thereby render the locking means inactive, thus infringing claims 1-6.
Infringement
Claims 1-6
The elements or features of claim 1 are summarised in par [7] above. Claims 2-6 are built upon claim 1, with successive claims incorporating an additional feature to those described in the preceding claim.
In Doric’s outline of submissions lodged prior to the hearing, the following appears:
“22Doric accepts that on its construction of claims 1-6, the Doric locks possess each of the integers of those claims. It submits that claims 1-6 are invalid for want of novelty and inventive step. If a construction of these claims is adopted by Lockwood on which these claims retain novelty, then the Doric product probably would not infringe on that construction.”
In opening, Doric’s counsel, Mr Catterns, gave notice of a “slight change in position” in relation to the alleged infringement of claims 1-6, inasmuch as Doric now contends that feature (vi) of claim 1 is not to be found in the Doric products. In order to infringe, each of the integers of the claim must be present: Populin v H B Nominees Pty Ltd (1982) 41 ALR 471, 475-476. If feature (vi) is not to be found in the Doric products, that is fatal to Lockwood’s case on infringement. On the other hand, it is common ground that if the Doric products include feature (vi) of claim 1, then the Doric products infringe claims 1-6 (assuming validity).
There was evidence from Mr Wilson on which he was neither cross-examined, nor contradicted by the experts called by Doric, that the Doric products have all of the elements of claim 1, and all of the elements of claims 2-6. Mr Wilson said that the exterior cylinder assembly was the second actuator described in feature (v). As to feature (vi) of claim 1 his evidence was:
“If the inner lever is locked using the key so that it cannot turn and then a key is inserted into the key hole of the exterior cylinder assembly and turned, this causes the cylinder tail to rotate and unlocks the inner lever. As a result the cylinder tail acts to release the lock mechanism in the inner lever and it is responsive to the operation of the exterior cylinder assembly. Accordingly, in my view feature (vi) is present.
Thus in Mr Wilson’s opinion, the LRM in the Doric products is the cylinder tail. In cross-examination, Mr Wilson was asked to identify the presence of LRM in a number of locks by operating the lock in question, and he did so. He was not asked to identify any particular component of the locks which constituted LRM. In cross-examination, Mr Freestone said that the LRM in the Doric products is the exterior cylinder assembly including the tail. Doric’s expert, Mr Garland, gave some evidence as to whether a product known as the DS60 anticipated certain of the claims in the Patent, to which it will be necessary to return in due course. It is sufficient for present purposes to note that Mr Garland regarded the exterior lock of the DS60 as the second actuator, and the cylinder tail as the LRM.
Figure 11 is described in the specification as “an exploded view of an outer actuator”. It is as follows:
According to the specification, in the preferred embodiment the rotatable camming member 42 forms part of the lock release means 17 and is connected to the outside lock 10 so as to rotate in response to the rotation of the lock barrel 12. As shown in Fig 11 that connection may include a drive bar 43 which engages at one end within a slot 44 in the end of the barrel 10 and engages at its other end in a rectangular aperture 45 formed through the camming member 22 [p 7, ll 32 – p 8 ll 6]. The drive bar 43 is the functional equivalent of the “cylinder tail” referred to by Messrs Wilson and Freestone, and it provides a connection between the lock barrel 12 and the camming member 42 [p 9, ll 14-16]. Such connections are well known in the relevant art [p 4, ll 10-11].
It is clear that in the case of the Doric products, a result of the operation of the outer (second) actuator is that the inside lock is released, or, using the language of the Patent, the locking means which renders the inner (first) actuator inoperative is rendered inactive.

The way in which this occurs in the case of the Doric products involves the following steps. (An illustrative diagram is reproduced in par 43 below; (m), (n), (o), (p), (q) and (r) are as shown on that diagram.)
-a key is turned in the outside lock cylinder;
-this causes the cylinder tail (connector) to turn;
-the cylinder tail (which fits into the top of the cam) turns the cam;
-as the cam is turned, the nose of the cam (n) is moved out of the recess (p) in the cross-bar of the T-member (m);
-the spring (q) pushes the detent part of the T-member (r) out of the casing (o);
-the spring (q) has an urging effect on the cam, pushing it towards the unlocked position inasmuch as once the nose of the cam(n) is moved out of the recess (p) the spring (q) urges the cam to a position at which the lock is unlocked (see Diagram B in par 47 below). However, although the force of the spring is sufficient to cause the cam to travel through approximately 60^o to an unlocked position, that force is insufficient to cause the cam to travel through 90^o to its final resting position. The turning of the key causes the cam to move through that last 30^o to its final resting position;
-in order to open the door, the key must continue to be turned in order to withdraw the latch.
In Doric’s submission, feature (vi) of claim 1 should be construed as requiring LRM which is distinct from and responsive to the operation of the second actuator, and which is distinct from and operates on the locking means. If feature (vi) of claim 1 is construed in that way, then in Doric’s submission that feature is not to be found in the Doric products.
In support of that construction, Doric points to the following:
-the specification states that LRM is responsive to the operation of the second actuator (p 2, ll 11-12). In the preferred embodiment, LRM 17 “responds to” the operation of the lock 10 so as to automatically deactivate locking means 13 (p 4, ll 26-29);
-in fig 1 (reproduced in par 17 above), LRM 17 is shown as something distinct from the outer actuator 8 and the locking means 13;
-in the preferred embodiment, LRM 17 is described as distinct from the drive bar 43 by which LRM is connected to the outside lock 10 (p 7, ll 30 – p 8, ll 6: (see par [26] above). To treat the cylinder tail itself as constituting the LRM is said to be contrary to this passage in the specification.
LRM is the most important element in claim 1, inasmuch as LRM is said to characterise the invention, and to distinguish it from the prior art. In Doric’s submission the inclusion in the claim of LRM requires that in any infringing product there be an integer identifiable as such which is distinct from the other integers referred to in the claims.
Feature (vi) of claim 1 is not described in the Patent with any greater particularity than:
-LRM which may take any suitable form;
-which is responsive to the operation of the second actuator so as to thereby deactivate the lock on the inside handle.
The improvement over typical latch assemblies which is described in claim 1, is any means of unlocking the lock on the inner handle from the outside of the door by operation of the second actuator.
The preferred embodiment describes “one particular form” of LRM which is “not to be understood as limiting the invention”. It is not legitimate, in the absence of an express reference in the claim itself, to import into a claim features of the preferred embodiment. The preferred embodiment cannot properly be used to introduce into the definite words of a claim an additional definition or qualification of the patentee’s invention: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 89; Bartlem Pty Ltd v CMMC Pty Ltd [2001] FCA 1218 at par [16].
The plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification. However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (supra) at 466. The principles applicable to the construction of a patent in order to determine the precise nature and extent of the rights claimed by the patentee were considered by Cooper J in Bartlem Pty Ltd v CMMC Pty Ltd (supra) at [12-17], by Sackville J in Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2001] FCA 1359 at [89-93] and by me in Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 at [70-81]. See also Welcome Real-Time SA v Catuity Inc [2001] IPR 327 at [19], per Heerey J. No difference of opinion emerges from that discussion of applicable principles, and no purpose would be served by my repeating that discussion.
In the language of the Patent, there is a distinction between “means” and “member”. For example, in claim 28, LRM includes a camming member. “Means” is a method for achieving an end, whereas a “member” is a constituent part of a whole. Thus LRM describes the method or mechanism by which the lock on the inner handle is deactivated by the operation of the second actuator, rather than necessarily referring to a particular member which itself produces that result. A member may be a means, but it does not follow that a means must be comprised of a single member.
Claim 1 stipulates that LRM must be responsive to the operation of the second actuator. It follows that LRM and the second actuator are not the same thing, although there is no reason to assume that the second actuator may not be part of the mechanism which constitutes LRM. Thus Lockwood submits that LRM consists of all of the parts which combine to produce the result that the operation of the key in the outer lock renders the locking means on the inside handle inoperative. The operation of the second actuator is the first step in that process. I agree with that submission.
The Doric products do incorporate a mechanism by which the lock on the inner handle is released in the response to the operation of the second (outer) actuator. The mechanism is described in par [28] above. The argument that LRM must be distinct from components which are part of the “means” for achieving other ends is a gloss on the clear words of the claim, and is grounded, impermissibly, on the description of the preferred embodiment. Further, even in the case of the preferred embodiment, “locking means”, “retainer means” and LRM are described. The lever 31 is both part of the locking means and the retainer means and the LRM inasmuch as it plays a role in the achievement of both locking and unlocking. That is inconsistent with Doric’s argument. Mr Garland accepted that in the preferred embodiment, the retaining member (lever 31), performed more than one function inasmuch as it was part of both the locking means and the retaining means. He was not asked whether it was also part of LRM, but it certainly has a role to play in LRM.
Similarly, in the preferred embodiment the cylinder tail 43 is a member which is described as a connector or drive bar. But that does not mean that the cylinder tail cannot also be the LRM, or part of the mechanism which is LRM. As a result of the operation of the second actuator, the cylinder tail, in association with other components identified above, releases the lock on the inside handle. The cylinder tail is at least a component of the LRM, if not itself the LRM. In the view I take, the cylinder tail is a component of LRM. As this is a question of construction of the Patent, I am not bound to defer to expert opinion summarised in par [24] above to the extent to which that opinion proposes a different construction.
The specification teaches that LRM may take any suitable form provided it is responsive to the operation of the second actuator. Doric’s argument seeks to add a further, unexpressed proviso. The specification does not teach that the constituents of LRM cannot perform a role in satisfying other integers of the claim. An implication to that effect is an unexpressed qualification on the teaching of the Patent that LRM may take any suitable form.
Whilst the construction of the patent is a matter for the Court, it is not immaterial to note that none of the experts called advanced the proposition that LRM was not to be found in the Doric product. As a practical matter, the operation of the second actuator results in the automatic release of the lock on the inside handle, hence the object which the invention claims to satisfy has been achieved. Claim 1 is also satisfied in accordance with its terms.
It follows that, subject to issues as to validity, the Doric products infringe claims 1-6 of the Patent.
Claim 7
Claim 7 refers to a latch assembly according to any preceding claims, which has the following additional features:
(vii)the locking means includes a cam member which is moveable between a first position at which the locking means is inactive or unlocked and a second position in which the locking means is active or locked;
(viii)a cam biasing means urges the cam member toward the first (unlocked) position; and
(ix)a retaining member which is engagable with the cam member to thereby prevent movement of the cam member out of the second position when the locking means is in the active condition.
It is common ground that feature (vii) is to be found in the Doric products. The dispute centres on features (viii) and (ix).
Diagram A illustrates the position of the cam member in the Doric products when the locking member (m) (the “T-member”) is in the second or locked position.
The T-member (m) has been pushed by the cam member out of the hub and into a cavity in the casing (o). When the T-member is in this position the hub cannot be rotated.
“Cam biasing means” is something which has a biasing influence on the cam. In lock mechanisms this would typically be a spring. In the Doric products a spring (q) is located underneath the T-member. When the T-member is in the second or locked position, some force caused by the small spring (q) is exerted on the T-member (m) pushing it against the nose of the cam.
In Mr Wilson’s evidence in chief he said that the spring (q) is cam biasing means, as it urges the nose of the cam (n) through the T-member (m) into the first position once the nose of the cam has moved out of the recess (p) in the cross-bar of the T-member. Hence feature (viii) is present.
On the other hand, in Mr Garland’s evidence in chief, he said that when the T-member is in the second or locked position, the small spring (q) would not cause torque to be applied to the cam member, and would therefore not contribute to the rotation of the cam member. Hence feature (viii) is not present.
Diagram B illustrates the respective positions of the cam and the T-member at about 25^o from the zero degree position. Although the zero degree position was referred to by Mr Kuhnell, it was not defined. I have taken it to refer to the position at which the axis of the cam is coincident with the axis of the T-member.
In Mr Garland’s evidence in chief, he said that the position of the cam member at this stage would cause the maximum torque or load to be applied by the small spring (q) through the T-member (m) during use. In Mr Garland’s opinion that force would be extremely small when applied to the small radius relative to the point of contact between the T-member (m) and the cam member. Even at that maximum torque, the force of the small spring (q) would not, in Mr Garland’s opinion, contribute to the rotation of the cam member “in any practical sense”. In Mr Garland’s opinion, it is the operation of the key tumbler by the user which urges the cam member towards the first position, hence feature (viii) is not to be found in the Doric products.
A “retaining member” is something that acts to hold something else in position. In Mr Wilson’s evidence in chief he said that the part of the T-member which has a recess (p) engages with the nose of the cam (n) when the locking means is in the active condition and thereby stops movement of the cam out of the locked position. His evidence was that it is therefore acting as a retaining member on the cam, such that feature (ix) is present.
In Mr Garland’s evidence in chief he said that in the Doric products, there is no “locking” or “retaining” of the cam member by its engagement with the T-member:
“At no time is there any ‘prevention’ of movement of the cam member. At most, there is caused a very slight resistance to rotation or biasing of the cam member out of the second position.”
The engagement of the T-member with the cam when in the second or active/locked position does not of itself stop or prevent movement of the cam member out of the locked position. In the Doric products, in contrast to the Lockwood preferred embodiment, there is no pre-existing and continuous urging by way of spring loading or otherwise to cause the rotation or movement of the cam member while it is in the locked position.
In Mr Garland’s evidence in chief he said that the “retaining member” referred to in feature (ix) describes a separate physical component and is not satisfied by the recess (p) in the T-member.
Mr Freestone, in his evidence in chief, disagreed with Mr Garland’s evidence that features (xiii) and (ix) of claim 7 are not to be found in the Doric products. In particular Mr Freestone said:
“The cross-bar of the T-member engages the cam and is pressed against the cam by the action of the compression spring. A recess is formed in the end of the T-member that engages the cam. When the nose of the cam is located within that recess a detent formed by the opposite end of the T-member is held in a position such that it prevents rotation of the handle. The cam can be rotated by means of key operation of either one of the cylinder locks. When the cam is thereby rotated to an extent such that the cam nose is removed from the T-member recess, the spring presses the T-member against the cam in a manner such as to apply a turning force to the cam. That spring created turning force drives the cam towards a position at which the detent no longer prevents rotation of the handle.”
In cross-examination Mr Garland accepted that the features of claim 7 are present in the Doric products. In particular, he accepted that:
-the spring functions as a cam biasing means inasmuch as once the nose of the cam is disengaged from the recess in the T-member, the spring urges the cam member to a position at which it is unlocked;
-the ability of the spring to function in that way is a natural consequence of the fact that the spring was compressed as part of the locking process, although the intended role of the spring was to drive the T-member from out of the cavity in the casing into the hub as part of the unlocking process;
-the action of the spring is able to overtake the action of the hand in moving the cam because of the “lost motion” feature which was incorporated into the Doric products for a different purpose. Whether the action of the spring will overtake that of the hand depends upon their relative speeds;
-the engagement of the cam member with the retaining member does prevent movement of the cam member from the locked to the unlocked position.
Thereafter the issue between the parties was not any difference of opinion between the experts as to the way in which the Doric products operate, but was substantially confined to issues of construction. Indeed a point came when Mr Catterns objected (unsuccessfully) to further cross-examination of Mr Garland on the ground that there was no issue as to the physical operation of the Doric products, but only as to questions of construction, fair basis and the laws of infringement.
Many of Doric’s submissions involved a comparison between the mechanics of the Doric products and those of the Lockwood preferred embodiment. Mr Freestone accepted in cross-examination that the products work in different ways, although they are alike in that both use a cam to drive the detent. The way in which the cam is operated is different. In particular in the case of the Lockwood product, the cam is preloaded with a spring which is held back by a lever or trigger. At all times the spring urges the cam to the unlocked position but is held back by the lever. To unlock the lock, the operation of a second cam depresses the trigger, thus releasing the spring which in turn drives the cam into the unlocked position.
Mr Freestone accepted that in the case of the Doric products, the second actuator causes the nose of the cam (n) to disengage from the recess (p) in the T-member (m) in the manner earlier described. It is not necessary for the unlocking of the lock for the spring (q) to push the cam to the unlocked position, because this will occur in any event by the manual operation of the key. But the spring may get ahead of the hand, and if it does so, it will push the cam into an unlocked position. Whilst the obvious role for the spring is to push the detent out of the casing as the cam is turned to the unlocked position, it also has this urging effect.
Doric submitted, accurately, that nothing of the detail provided in the description of the preferred embodiment appears in the Doric locks. The mechanism of a spring and trigger, with the trigger released by a second outside cam, is not used. But this is immaterial, as the appropriate comparison is not between the two products, but between the claims of the Patent and the Doric product. As earlier indicated, whilst the Patent must be construed as a whole, it is not legitimate to use the preferred embodiment so as to construct unexpressed limitations on the terms of a claim. That is all the more so when the specification makes it clear that the preferred embodiment is but one example of a suitable lock release means. In Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29, 48-49 the Full Court held that it was an error to interpret the claims as containing an implicit limitation by reference to the drainage purpose which was discernible in the body of the specification, but not in the claims, albeit the consequence was the invalidation of the claims for lack of fair basing. The fact in that case that the reason why two integers of the claims had the features which they did was left unclear by the claims, did not give rise to a lack of clarity which might be legitimately resolved by reference to the specification as a whole.
Finally, as Heerey J observed in Welcome Real-Time SA v Catuity Inc (supra) at [21], the alleged infringement is to be ignored when construing the patent. A patent must be construed “as if the infringer had never been born”.
The construction of claim 7
Two issues of construction were debated in final submissions, although other issues were raised at earlier stages of the proceedings:
-first, whether the recess (p) in the cross-bar of the T-member can serve as the retaining member as well as performing a function as a locking means;
-second, whether the claim is satisfied if the retaining member prevents mere movement of the cam member, or whether the claim requires that the engagement of the retaining member with the cam member prevent movement of the cam member to which it is being urged by the cam biasing means.
Does claim 7 necessitate a separate retaining member?
The recess (p) in the cross-bar of the T-member performs a retaining function. It has no other purpose than to receive the nose of the cam and to assist in holding it in position. Mr Garland accepted in cross-examination that in the Doric products, the engagement of the cam member with the retaining member does prevent movement of the cam member from the locked position to the unlocked position. He had previously accepted that the Lockwood patent teaches that a retaining member can perform more than one function, and that the recess in the T-member could be described as a retaining member.

Claim 7 uses the expression “retaining member”, rather than “retaining means”. Claim 23, for example, distinguishes between “retaining means” and “retaining member”. Mr Freestone said in cross-examination that in the description of the preferred embodiment in the Lockwood patent, “means” describes an overall assembly, whereas “member” describes a separate element of that assembly. That is the sense in which the expressions are used on p 6 ll 26-29 of the specification, and for that matter, it is the sense in which the expressions are used in claim 23. Doric submits that it is stretching the notion of “member” as a physical element to treat it as encompassing a groove or recess in some other element.
I have already found in relation to LRM that the patent does not teach that the constituents of LRM cannot perform a role in satisfying other integers of the claim. If the recess in the cross-bar of the T-member otherwise answers the description of a retaining member, then by parity of reasoning it should not be denied that character merely because the T-member serves some other function as well.
Given the evidence of Mr Garland referred to in par [52] above, the recess in the cross-bar of the T-member, or putting it slightly differently, the cross-bar of the T-member with a recess ground into it, is a “retaining member” in terms of feature (ix). That is the intended and only function of the recess as well as its effect.
Does claim 7 require an interaction between the retaining member and the cam biasing means?
It is common ground that the cam in the Doric product is moveable between a first, unlocked position and a second, locked position. Doric contends, and ultimately Lockwood came to accept, that the second, locked position is the cam/recess engagement position (“the recess position”). Lockwood does not now dispute that the “second position” is the recess position.
The contest between the parties is whether claim 7 is satisfied if the engagement of the recess and the cam in fact prevents movement of the cam out of the recess position (Lockwood), or whether the recess prevents movement of the cam which is being, or would otherwise be caused by the cam biasing means (Doric). Lockwood says that the Doric approach involves the addition of an impermissible gloss upon the ordinary meaning of the claim. Three High Court cases (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (supra) at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 469) and one Full Federal Court decision (Atlantis Corporation Pty Ltd v Schindler (supra) at 48-49) teach that claims are to be given their ordinary meaning without glosses. Doric’s approach is said to be heavily dependent on descriptions of the interaction of a particular lock release means with a particular locking means which are disclosed in the preferred embodiment. It is submitted that is manifestly inappropriate in circumstances where the specification makes it clear that the preferred embodiment is but one example of a suitable lock release means.
The specification includes the following:
“The cam may be spring biased towards [the unlocked position], and retaining means may be operable to allow or prevent such movement according to whether or not, respectively, the second actuator is operated.”
(p 2, ll 21-24)
(emphasis added)
These lines are consistent with the proposition that the retaining means prevents movement which would otherwise be caused by the spring biasing although this is not expressly stated in terms. In any event, this is something which is “preferred” rather than a qualification upon the terms of the claim.
The working of the preferred embodiment is described in the specification at p 6, ll 23-25:
“The spring 30 tends to move the cam 22 back to the Figure 3 position [viz: unlocked] and releasable retainer means is provided to prevent that movement.”
It is clear in the case of the preferred embodiment that the retaining means acts against an urging force supplied by the cam biasing means.
Claim 7 does not follow the form of claim 22, which says:
“... retaining means is operable to prevent the locking means adopting said inactive condition under the influence of said cam biasing means.”
I have already accepted [pars 33-34 above] the submissions put by Lockwood as to the illegitimacy of placing glosses on the ordinary meaning of a claim, particularly when the gloss derives from a description of the preferred embodiment.
Feature (viii) stipulates that the cam biasing means urges the cam member towards the unlocked position. It is implicit in this feature that the urging towards the unlocked position is from some other position. That other position is the second position or the recess position. Thus feature (viii) describes cam biasing means which urges the cam member from the recess position to the unlocked position.
But the claim contemplates that notwithstanding the urging effect of the cam biasing means, the cam member will not move out of the locked position when the locking means is in the active condition. To borrow the language of claim 8, the cam member will not be driven into the unlocked position even though the cam biasing means urges the cam member toward that position. That is because a retaining member is engagable with the cam member to prevent movement of the cam member out of the second position.
Thus feature (ix) describes a retaining member which is engagable with the cam member to thereby prevent movement of the cam member out of the second position. The potential for that movement flows from what would otherwise be the effect of the cam biasing means.
Thus I agree with Doric’s construction of claim 7, namely that the claim requires that the cam biasing means urges movement out of the locked position whilst (at the same time) the retaining member prevents it. That result accords with the description of the interrelationship between the retaining member and the cam biasing means contained in the specification with respect to the preferred embodiment, but it is neither dependent upon or derived from that description. Rather, the grammatical structure of the claim and element (ix) indicate that there is an interaction between the retaining member and the cam biasing means inasmuch as the retaining member prevents the movement which, but for the retaining member, the cam biasing means would otherwise promote.
Does the spring urge the cam member towards the unlocked position when the cam is in the recess position?
Until final submissions, I was under the impression that it was common ground that the spring (q) in the Doric products provides zero torque when the locking means is in the active condition, hence it does not urge the cam out of the second position. It is only when the nose of the cam is manually disengaged from the recess (p) in the cross-bar of the T-member that the spring urges the cam member to the unlocked position. By the time the spring applies some torque, the recess is no longer engaged.
Thus Mr Kuhnell said that once the cam is rotated (by turning the key) to clear the recess (p) in the cross-bar of the T-member (m) there is a turning moment biasing the cam towards the unlocked configuration. His table records zero torque when the cam is at the zero degree position. Positive torque is first recorded when the cam is 10^ofrom the zero degree position.
Mr Wilson confirmed that it is only once the nose of the cam is manually rotated out of the recess (p) that the spring can push the cam to the unlocked position. Mr Freestone said that when the cam is manually rotated to an extent such that the cam nose is removed from the recess, the spring presses the T-member against the cam in a manner such as to apply a turning force to the cam. That spring-created turning force drives the cam toward the unlocked position. Mr Garland’s evidence was to similar effect.
In final submissions, and then mainly in Lockwood’s submissions in reply, an issue was raised for the first time as to whether it was too simplistic, and as a matter of theory incorrect, to assert that there is no urging towards the unlocked position in the Doric products when the cam is in the recess position. Neither this issue, nor the “theory” on which it is based was raised, or squarely raised, with any witness.
The Doric products do not infringe claim 7 if the cam biasing means only urges the cam member towards the unlocked position once the cam member is manually rotated such that the nose of the cam is moved out of the recess (p) in the cross-bar of the T-member. In order to infringe, there must be urging towards an unlocked position by the cam biasing means at the point where the cam biasing means is in the recess, which is restrained by the engagement of the retaining member and the cam member.
It is still common ground that at the zero degree position there is no torque, ie there is no cam biasing means urging the cam towards the unlocked position.
However, in Mr Bannon’s submission, the recess position and the zero degree position are not necessarily coincident. Whilst accommodated within the recess, the cam need not maintain the precise zero degree position. There is capacity for some “play”. Absent the recess, at each of the infinite points of interaction between the cam and T-member with the exception of one, namely zero degrees, there is cam biasing means urging the cam to the unlocked position. It is submitted that the prospect of a user of a lock turning the cam to precisely that point every time, or even usually, and leaving it there “must be practically nil. In any event, there is no prospect of that position being maintained in ordinary use”. Moreover, the construction of a device which has a single point at which the cam biasing means is not operative for a short period in practical use does not avoid infringement (see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243).
The absence of an evidentiary foundation for this “theory” means that it does not rise above a theory. It does not reach the level of a matter established by the evidence. Nor did any expert seek to explain the practical operation of the Doric locks in a manner consistent with the theory. Rather the tenor of their evidence on this point, as summarised above, points in a different direction. In particular, Mr Kuhnell's report, on which he was not cross-examined, proceeds upon the basis that the locked position is equivalent to the zero degree position, at which point there is no spring biasing effect. Lockwood also conceded that the locked position is the cam/recess engagement position, rather than a range of positions.
This is not a case like Catnic Components Ltd v Hill & Smith Ltd (supra) where there is a minor variation from a descriptive phrase (“vertically”) which makes no practical difference to the working of the invention. The substantial idea embodied in claim 7 is that when the cam is in the locked position, movement towards the unlocked position which would otherwise result from the urging of the spring is restrained by the retaining member. But in the case of the Doric products, there is no spring biasing effect when the cam is in the locked position, considered as zero degrees, and manual rotation of the cam so as to clear the recess is required before the spring will have any practical effect.
In Radiation Ltd v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 at 51 Dixon J said:
“But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing.”
That has not occurred with respect to claim 7. Claim 7 describes a different notion or idea from that found in the Doric product.
Infringement of claim 7 has not been established.
Claim 8
Claim 8 describes a latch assembly according to claim 7 with the following additional element:
(x)“... wherein said retaining member is responsive to operation of said lock release means to disengage from said cam member and thereby permit said cam member to be driven into said first position by said cam biasing means.”
If I am correct in my conclusion that claim 7 is not infringed, then it follows that there is no infringement of claim 8. If I am wrong in that conclusion, the question arises whether element (x) above is present in the Doric products.
Claim 8 proceeds upon the basis that LRM has an impact on the retaining member, which causes it to disengage from the cam member. In the case of the Doric products, the following occurs:
-the key in the outer lock turns the tail piece (connector) which turns the cam;
-as the nose of the cam is turned through the recess of the T-member (p), the T-member is pushed down, and there is some slight compression of the spring (q) so as to permit disengagement of the nose of the cam from the recess;
-upon disengagement, the cam member is “permitted” to be driven under the force of the spring which extends and urges the cam to the unlocked position.
Doric submits that the cylinder tail operates on the cam member rather than upon the retaining member. It is submitted that it is not the retaining member which is responsive to LRM, rather it is the cam member which responds.
Once again, an issue arises as to what constitutes LRM. Again I do not think it matters whether it is the cylinder tail which is appropriately characterised as LRM, or all of the parts which combine to release the lock. In either case pressure is applied to the T-member, which compresses the spring slightly to permit disengagement. The pressure is applied as a result of the operation of the cylinder tail, or as a result of the operation of the cylinder tail and the nose of the cam. In either case, the retaining member is responsive to the operation of LRM to disengage from the cam member.
Feature (x) is thus to be found in the Doric products.
Claims 9–11
Infringement is not alleged.
Claims 12–15
Claims 12-15 are alleged to be infringed. However, the only issue is whether the Doric products include feature (vi) of claim 1. If my conclusion that feature (vi) of claim 1 is to be found in the Doric products is correct, it follows that claims 12-15 are also infringed.
Claim 16
Infringement is not alleged.
Claim 17
Claim 17 is for a latch assembly according to claim 15 or 16 with the following additional feature:
(xi)“... wherein cam biasing means acts on said cam to urge it into said first position of rotation at which said detent is able to adopt said actuator release position.”
Infringement of claim 16 is not alleged. Thus, relevantly claim 17 is built upon claims 1-6, and 12-15, and the conclusion which I have reached in relation to claim 7 does not necessarily determine the issue of infringement of claim 17.
Lockwood submits that the language of claim 17 differs from the language of claim 7. In particular there is no specification in claim 17 that the cam biasing means should urge the cam “out of said second position” into the first position. Hence it does not matter that in the case of the Doric products, the spring biasing effect only occurs once the nose of the cam is moved out of the recess in the T-member.
The Patent must relate to one invention only: the Act s 40(4). The various claims should be read so as to produce internal consistency. When the Patent is read as a whole, the cam biasing means referred to in claim 17 is the same cam biasing means as is referred to in earlier claims, including claim 7. It is implicit in claim 17, as it is in claim 7, that cam biasing means urges the cam member from the recess position to the unlocked position. The purpose of claim 17 is not to introduce different cam biasing means; claim 17 spells out an effect of cam biasing means, namely that the detent is able to adopt the actuator release position at the first position of rotation to which the cam biasing means has urged it.
My conclusion in relation to claim 7 leads to the conclusion that there is no infringement of clause 17.
Claims 18-19
Infringement is not alleged.
Claim 20
Infringement is alleged. The only issue is whether the Doric product includes feature (vi) of claim 1. In view of my conclusion on that question, claim 20 is also infringed.
Claim 21
Infringement is not alleged.
Claim 22
Claim 22 is for a latch assembly according to claims 17, 18 or 19 where:
(xii)“... retaining means is operable to prevent the locking means adopting said inactive condition under the influence of said cam biasing means.”
Claim 22 is built upon claims 1-6, 12-15 and 17, hence my decision on claim 7 does not necessarily determine the issue of infringement of clause 22. Claim 22 includes claim 17 within its elements. As claim 17 is not infringed, neither is claim 22.
Claim 23
Claim 23 is for a latch assembly according to claim 22 with the following additional feature:
(xiii)“... wherein said retaining means includes a retaining member which is moveable between a cam retaining position at which it prevents movement of said cam from said second position of rotation to said first position of rotation, and a cam releasing position at which it permits such movement of the cam.”
Claim 23 is built upon claims 1-6, 12-15, 17 and 22, hence my decision on claim 7 does not necessarily determine the outcome. However, claim 23 includes within its elements claims 17 and 22. I have concluded that there is no infringement of those claims, hence claim 23 is not infringed.
Claims 24-29
Infringement is not alleged.
Claims 30-32
Infringement is alleged. The only issue is whether the Doric product includes feature (vi) of claim 1. In view of my conclusion on that question, these claims are also infringed.
Claim 33
Infringement is not alleged.
Novelty
Doric contends that the alleged invention was not novel by reason of prior art information made publicly available in Australia before the priority date by the sale or offer for sale of a number of specified locks. The alleged invention was thus not a patentable invention by reason of s 18(1)(b) of the Act.
The test for want of novelty is whether an alleged anticipation is the same in substance as the claim in suit. The test is commonly referred to as the “reverse infringement test”: R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565, 568-569; Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228.
The question is whether the alleged anticipation possesses each and every integer of the claim(s) so that it could be said to infringe the claim(s). Each of the claims of the Patent is a combination claim. To anticipate, the prior art must possess each and every integer of the claim in question.
The storeroom locks
A group of locks relied upon as an anticipation of claims 1-6 and 12 of the Patent were referred to during the hearing as the “storeroom locks”. The “storeroom locks” are the Lockwood 510, 5110 and 5210 locks, and the Falcon 371. They were all available in Australia prior to the priority date. Lockwood distributed the Falcon 371 in the late 1980s or early 1990s and manufactured the Lockwood 510, 5110 and 5210. The storeroom locks are the principal anticipation.
In their affidavit evidence, Mr Wilson and Mr Freestone contended that the storeroom locks did not anticipate claims 1-6 and claim 12 of the Patent, because they did not contain the element which I have earlier referred to (par 7 above) as feature (v) of claim 1. That evidence was based on limited disclosures in brochures relating to the locks. When the physical locks became available for inspection at or shortly prior to the hearing, both Mr Wilson and Mr Freestone accepted that feature (v) was to be found in them. Mr Garland also expressed that view. There was thus a consensus between the experts that the storeroom locks possessed each and every integer of claims 1-6 and claim 12 of the Patent.

The storeroom locks have a handle on both the inside and outside of the door. The inside handle may be locked and unlocked by the operation of the inside key. That operation also locks and unlocks the outside handle. Similarly, operation of the key in the outside handle locks and unlocks both the lock on the outside handle as well as the lock on the inside handle.
Unlike the old Lockwood 001, the storeroom locks do not remain deadlocked when a person enters from outside by use of a key and then closes the door behind them. The storeroom locks do not give rise to the problem that the invention solves; entry by key frees both the inside actuator and the outside actuator.
Lockwood contends that the storeroom locks do not cause the problem which the Patent is intended to redress. Lockwood submits that the Patent assumes a situation in which entry by key from the outside frees the inside actuator, whilst maintaining the security of the door from outside entry. With the storeroom locks, entry by key from the outside has the result that the door is no longer secure from outside entry, unless the locking mechanism is reactivated by deliberate operation of the key.
Neither the claims nor the specification refer to the “assumption” which Lockwood says is implicit in the patent. The problem which is identified in the specification is people who inadvertently lock themselves in (see p 1 ll 14-17). The object of the present invention is:
“to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used.”
(p 1 ll 18-20). The storeroom locks achieve that objective.
As Mr Garland said in cross-examination the storeroom locks do not give rise to the problem which the Patent is attempting to address, rather they solve the problem. The reason the storeroom locks solve the problem is because they include feature (vi) of claim 1.
The Patent is not limited to locks for use on outside doors, or for that matter to locks for use on doors at all (p 1, l 20). This suggests that the Patent includes locks which are not necessarily secure from the outside when unlocked. There is no utility in a storeroom being secure on the outside when the storeman is inside the room. The problem arises if he is inadvertently locked inside. Thus one cannot by any legitimate process of construction read down the claims so that they are confined to locks which achieve the objective of the invention and maintain the security of the door from the outside.
Lockwood submits that the skilled worker would not understand the Patent to be directed to the storeroom locks. That submission was grounded in cross-examination of Mr Garland in which he was invited to assume that the locking means referred to in claim 1 was directed to locking means which operated the inside handle only and to assume that the outside actuator was key operated. Mr Garland’s evidence was:
“If you were to assume that the locking means referred to in claim 1 of the patent was directed to locking means which operated only an inside handle? --- Yes.
And that the outside actuator was key operated? --- Yes.
It would be confined, would it not, to products of the type which create the problem which you understood the patent to be attempting to solve? --- Could you repeat that, please?
It would confine the products, the subject of the claim, the products which had the problem which you understood the patent was trying to solve? --- Yes.
If you don’t make the assumption I put to you, it results in the claim including products such as the Falcon which you, as a skilled person in the industry, understood had no problem to be solved of the type to which the patent refers? --- It doesn’t have the problem, no.
So you agree with me? --- Yes.”
That evidence provides an insecure foundation for a conclusion that a skilled worker would read claim 1 so narrowly. Mr Garland was simply invited to assume that the Patent was confined in that way, rather than to express a view as to the manner in which a skilled worker would read the claim.
In any event, if a claim is worded broadly enough to cover any “latch assembly”, then it will cover all latch assemblies which possess the other integers. There is a distinction between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 585.
Multiple actuators
The storeroom locks have two outside actuators. An actuator, for present purposes, is something which has the capacity to withdraw the latch bolt. That function can be performed by operation of the key in the outside handle, or by the operation of the handle itself when unlocked. The presence of the additional outside actuator does not save claims 1-6 on novelty, just as the presence of additional integers in the Doric products would not save them on infringement. See, eg, Blanco White, Patents for Inventions 5^th ed 1983 at par 3-004; British Liquid Air Company v British Oxygen Company Ltd [1909] 26 RPC 509 at 528. The Doric lock has two actuators which work from the inside – the key and the handle. The presence of these two actuators would not save the Doric product from infringement by reason of a supposed implication flowing from the use of the expression “first actuator” that multiple actuators are outside the scope of the Patent. Lockwood’s argument has to be that multiple external actuators are outside claim 1, whilst multiple internal actuators are within the claim. That suggests that Lockwood is embarking upon a recasting of the claims, rather than construction of them in accordance with accepted principles. Page 10 of the specification refers to the operation of “the outside lock (or other actuator)”. Doric sought to invoke this reference as supporting its submission that multiple actuators are within the scope of the Patent. In my view, the reference is equivocal and does not advance the argument on this question in either direction.
The latch assembly is described in claim 1 as “including” the features earlier referred to. That term is used to accommodate the fact that the locks may contain more elements than those described in the claims.
The only submission put by Mr Bannon in opposition to the contention that claims 1-6 and 12 of the Patent are anticipated by the storeroom locks is that claim 1, on its proper construction, should be confined so as to exclude those locks as an anticipation. For the reasons given, I reject that submission.
Claim 13
I requested the respondent’s lawyers prepare a document, which came to be referred to as “the road map”, which summarised the issues in relation to each claim. I am grateful to Mr Bannon, and to those assisting him, for the preparation of that document. According to the “road map”, novelty arising from the storeroom locks is an issue in relation to claim 13.
In a later document styled “applicant’s notes to the respondent’s ‘road map’”, Doric withdrew that contention. Accordingly, it is not necessary for me to address it.
Claim 31
The road map does not identify novelty arising from the storeroom locks as an issue in relation to claim 31. It was added as an issue by the applicant’s notes on the road map, without any recorded protest on the part of Lockwood. I therefore proceed on the basis that there is no procedural impediment to the applicant raising this issue, as I have not been notified of any such impediment.
Claim 31 is expressed to be a latch assembly “according to any preceding claim”, and adds the integer “wherein said first actuator includes a key operated lock”. Claim 31 is thus dependent, inter alia on claim 1, and if claim 1 is invalid for lack of novelty, then so too is claim 31. A claim will be invalid for lack of novelty even if some combinations can be found within its scope which are novel. In the case of a claim constructed in this way, if any one of the preceding claims is invalid, then so too is the claim in question: Blanco White, Patents for Inventions 5^th ed (1983) at par 4-004; Bannon, Australian Patent Law (1984) at par 118. Claim 31 is therefore infected by the invalidity for lack of novelty of claim 1.
Claim 32
The position which applies in relation to claim 31 also applies in relation to claim 32. Claim 32 is dependent on claim 31 via claim 4. If claim 31 is invalid for want of novelty then claim 32 is invalid on the same account.
Abloy Rim Lock 1300
This lock is said to anticipate claims 1-5 of the Patent. It is accepted that the Abloy does not anticipate claim 6. Claims 31-32 were included as claims anticipated by the Abloy in Doric’s response to the road map.
With this lock, when the door is unlocked from the outside, the interior lock is released when the door is open. Whilst the door is open, the inside handle can be turned and the latch bolt retracted. But as soon as the door is closed, the deadlock automatically locks again, and the latch bolt cannot be retracted by the use of the inside handle.
Only one issue was raised in submissions in relation to the Abloy. Mr Bannon contends that the Abloy does not, by the operation of the second actuator, render the interior locking means inactive within claim 1. Upon the closing of the door the interior locking means is automatically reactivated. The Abloy lock does not solve the problem addressed by the Patent.
It is consistent with the utility of the invention to construe “inactive” as describing a state of affairs which exists where the door needs to be opened from the inside: see specification p 1 ll 15-17. That state of affairs does not exist in the case of the Abloy lock, hence it is not an anticipation. I accept Mr Bannon’s submissions in this respect.
The sliding door locks – DS30; DS60
The DS30 is a patio door lock, or a lock for a sliding door, which was launched by Doric in the early 1980s. The DS60 was launched in about late 1993, with a newer version introduced in 1995. The DS60 superseded the DS30. There were significant sales of the newer version in Australia before the priority date.
The DS60 has a hook bolt which is biased to the unlatched position. There is no automatic latching of the door upon closing the door, hence the problem which the Patent identifies does not arise in the case of the DS60, although, as with the storeroom locks, the DS60 discloses the solution to the problem inasmuch as operation of the outside actuator releases the inside lock.
The DS60 is alleged to anticipate claims 1-6, 7, 12, 30-32 of the Patent.
Mr Garland provided affidavit evidence to the effect that the DS60 discloses each integer of claims 1,2, 3, 4, 5, 6, 12 and 13 of the Patent. Claim 30 describes a latch assembly according to any one of claims 13-29 when appended to claim 4 “wherein said cam axis is substantially coincident with said actuator member axis”. Mr Garland was uncertain as to the meaning of the words “substantially coincident”. If the words mean “substantially co-axial” then, in his opinion, the features of claims 30-32 of the Patent are disclosed by the DS60.
Mr Wilson said, on the other hand, that the DS60 does not disclose feature (ii) of claim 1 because the pivoted tongue or “hook bolt” of the DS60 is not a latch bolt. To locksmiths:
“The term latch bolt describes something that ‘latches’. A latch will automatically return to its original position after being deflected in order to hold shut the window or door to which the latch assembly is mounted. For instance a latch bolt on a door contacts the strike plate on the door jam and is pushed into the lock case. Once the door is closed, the latch bolt will return to its extended position under the influence of a bias, usually a spring, to hold the door shut.”
Mr Garland responded that in his opinion, “latch bolt” does not have any special technical meaning, but is an ordinary English expression. In his affidavit of 24 July 2001, Mr Garland said:
“I would not read the words ‘latch bolt’ as used in the Lockwood Patent as limited to a spring biased latch bolt (biased in an extended or retracted position). Those words would also describe a non-spring biased latch bolt including any type of bolt or locking tongue which can lock a door, gate, window or the like in a closed position against, for example, a frame by engaging a ‘strike’ or ‘keeper’ located on the frame.”
Mr Garland substantially retreated in cross-examination from the position which he adopted in his affidavits:
“Let’s get it clear. You understand that the patent is directed to solving problems which only arise where you have self-latching bolts? --- Yes.
And you accept that if you don’t interpret latch bolt in claim 1 to refer only to self-latching bolts and you only give the handles or the actuators the features which claim 1 specifies, you will end up with completely and utterly useless locks within claim 1? --- Yes.
You agree? --- Yes.
And one way to avoid that circumstance is to give latch bolt what you regard as a common meaning, namely a self-latching bolt? --- Yes.
Sitting there as you do in the witness box and having regard to the matters we’ve just been discussing wouldn’t you agree that a person of ordinary skill in this industry picking up this patent and reading it would interpret latch bolt in claim 1 to refer to a self-latching bolt? --- Yes.
You agree? --- Yes.
On that basis you agree don’t you that DS60 does not have the features of claim 1? --- Yes.”
At T 281 the following appears:
“Ordinarily if someone had mentioned in conversation with you the expression, latch bolt, in about 1996 in the context of discussing locks, you would have ordinarily understood that to refer to the spring-actuated bevelled bolt usually operated by door furniture? --- In a hinged door, yes.
And you would expect, would you not, reading the patent as a whole and understanding the problem which it is directed to, the fair and sensible construction to give to latch bolt in claim one is to refer to a spring-actuated bevelled bolt usually operated by door furniture? --- Yes.
And not, for example, hook bolts? --- I see the hook bolt is possible.
But you would not regard that as the ordinary and sensible meaning to give to latch bolt as it is used in its context in the claims in the patent, would you? --- No.”
Mr Garland accepts that in the context of the Patent, if “latch bolt” is given the meaning which he ascribes to that expression (see [139] above), then the claim describes a useless piece of equipment, given that the Patent provides for the latch bolt to move in one direction only. That fact provides some reinforcement for Mr Wilson’s view that the trade meaning of the term is a bevelled bolt which is spring loaded to adopt the extended latching position. Further support for that view is to be found in the passages of Mr Garland’s cross-examination which I have quoted above. To the extent that there is or remains a conflict in the evidence of Mr Wilson and Mr Garland on this point, I prefer the evidence of Mr Wilson. It was my impression that Mr Wilson was generally a more reliable witness than Mr Garland (see for example the cross-examination concluding at T 200 on the topic of “errors” in Mr Garland’s affidavit).
I therefore conclude that the DS30 and DS60 do not contain feature (ii) of claim 1 of the Patent, hence the sliding door locks are not novelty destroying as they do not involve a “latch bolt”.
Doric submits that the bevelled latch bolt is an inessential feature, and that the hook bolt in the DS60 is a mechanical equivalent. No witness gave evidence to that effect. There is no evidentiary foundation for this submission.
Doric has not established that the DS60 anticipates all of the features of the claims.
Boyd mortice lock
This lock was sold in Australia prior to the priority date. The lock was sold with and without a “kick-off” function. When the lock with the “kick-off” function is installed, if the door is locked from the inside and then shut, the deadlock unlocks automatically. The point of this function is to prevent a person being accidentally locked out if the door slams shut behind him. On the other hand, if the door is deadlocked whilst closed, either from the inside or from the outside, the door remains deadlocked. If deadlocked from the inside, one needs to leave the premises through another exit.
Lockwood contended that the Boyd mortice lock could not anticipate any of the claims in the Patent because it had this “kick-off” function. As the hearing progressed, it became apparent that the “kick-off” function was in fact optional, and versions of the lock had been sold without that function.
There is no material distinction between Boyd mortice locks without the “kick-off” function and the storeroom locks insofar as anticipation of claims 1-5 is concerned. The Boyd mortice locks have multiple actuators in the form of a handle and key on both the inside and the outside of the lock. Lockwood relied upon these multiple actuators to avoid anticipation. That reliance fails for the same reasons that it failed in relation to the storeroom locks.
Doric accepts that the Boyd mortice locks do not anticipate claim 6. I conclude that claims 1-5 of the Patent are anticipated by the Boyd mortice locks sold without “kick-off” function. It may be that those claims are also anticipated by locks sold with the “kick-off” function. No submissions were put on this aspect of the matter, and it is not necessary for me to determine it.
Lockwood 530
This lock is similar to the storeroom locks except that there is a snib on the inside handle, rather than a key operated lock. Rotation of the snib locks and unlocks both the inside and outside handles. When the outside handle is locked, key operation releases the inside and outside handles. Thus the problem of being locked inside does not arise in the case of this lock. Feature (vi) of claim 1 is present, although when the door is unlocked from the outside it is no longer secure from the outside. In order to be secure from the outside, the handle must be locked, either by use of the snib on the inside, or by use of the key on the outside.
The same issues arise in relation to this lock as in the case of the storeroom locks. By parity of reasoning this lock anticipates claims 1 and 2 of the Patent, which were referred to in the road map as being allegedly anticipated by this lock.
In cross-examination of Mr Wilson, the following appears:
“Does that sort of problem which the patent is directed at solving arise with the sort of lock which is the 530 in front of you? --- No, it doesn’t.
Did you have any understanding as to whether or not that sort of lock which is the 530 was the sort of lock which the patent was claiming as an invention? --- I wouldn’t have thought so.”
For the reasons explained in relation to the storeroom locks, the question of anticipation is essentially one of construction of the Patent. Issues of construction are for the Court, rather than for the expert witnesses.
The applicant’s notes to the road map includes claims 4, 5, 6 and 12 amongst the claims allegedly anticipated by the Lockwood 530. They are included on the basis that each of those claims have a number of permutations and combinations, some of which are not anticipated by the lock. But in the case of each of those claims, at least one of the possible combinations is anticipated by the Lockwood 530. For the reasons earlier given, that is sufficient to invalidate the claim [see 128 above].
Obviousness – lack of inventive step
The Third Further Amended Particulars of Invalidity include the following:
“2 The alleged invention, so far as claimed in each claim of the Patent:
(i)is not a patentable invention within the meaning of the Act in that the invention so far as claimed in each claim did not involve an inventive step when compared with the prior art base as it existed before the priority date of each claim;
(ii)was obvious and did not involve an inventive step having regard to what was known and used prior to the priority date of each claim.”
The particulars itemised a large number of locks and publications as constituting the prior art base, although the range of matters relied upon was considerably narrowed in the course of submissions.

Having regard to the large range of locks on the markets, and the cost of obtaining a sample of each, I do not think that I should infer that the skilled worker could reasonably be expected to have ascertained, understood and regarded the Abloy as relevant. That is particularly so as sales of the Abloy appear to have ceased many years before the priority date. Feature (vi) of claim 1, which characterises the invention, is not to be found in the Abloy. Therefore, the same conclusion applies in relation to this lock. Even if the skilled worker could be reasonably expected to have ascertained the Abloy as relevant, the evidence does not squarely address the question of whether the invention claimed would have been obvious to a practical, skilled non-inventive worker in the field of manufacture and design of locks equipped with the common general knowledge in that field at the relevant date, and knowledge of the Abloy.
It has not been established that any of the claims in the patent is invalid for want of inventive step.
Fair Basis I
Section 40 of the Act, insofar as is presently relevant, provides as follows:
“(2) A complete specification must:
(a)describe the invention fully, including the best method known to the applicant of performing the invention;
(b)...
(c)...
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.”
Non-compliance with subs 40(2) or (3) is a ground on which the Court may revoke the patent: s 138(3)(f).
Paragraphs 3.8.3 and 3.8.4 of the Second Further Amended Particulars of Invalidity were as follows:
“3.8.3In the alternative none of the claims 7-33 is limited to the precise embodiment described.
3.8.4In the alternative, each of claims 7-33 claims as features limiting the invention respectively claimed in those claims, features in respect of which there is not a real and reasonably clear disclosure in the body of the specification.”
Amendment of Particulars of Invalidity
During the course of final submissions Mr Catterns sought to amend these grounds so that each ground would apply to claims 1-33, rather than being confined to claims 7-33. Mr Bannon opposed that amendment. He submitted that, depending upon the arguments sought to be put under the umbrella of the amendment, Lockwood would be prejudiced by an amendment after the close of the evidence. I therefore asked Mr Catterns to specify with precision the proposition he proposed to put if the amendment were allowed. His response was:
“Each of claims 1-6 travels beyond the matter described in the specification in that what is truly described in the specification is a single embodiment which provides the need referred to on page 1. Claims 1-6 cover very many ways additional to that of achieving that end.”
Mr Bannon accepted that he would not be prejudiced by an amendment made after the close of the evidence if the matter to be argued was confined to that outlined by Mr Catterns. On that basis I allowed the amendment. Had the amendment involved the reopening of the evidence, I would not have allowed it.
Travelling beyond
Whether a claim is fairly based on the matter disclosed in the specification depends upon whether there is a “real and reasonably clear disclosure” of the matter claimed: Leonardis v Sartas (No 1) Pty Ltd (supra) at 142. If the claim as expressed “travels beyond” the matter disclosed in the specification, then s 40(3) is not satisfied. In Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240 Barwick CJ said:
“The question whether the claim is fairly based is not to be resolved, in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product ... as expressed, travels beyond the matter disclosed in the specification.”
That formulation was recently approved by the High Court in Kimberly-Clark (Australia) Pty Ltd v Arico Trading International Pty Ltd (supra). In ICI Chemicals & Polymers v Lubrizol Corp Inc (2000) 106 FCR 214 the Full Court said that ordinarily at least, what will deprive a claim of fair basis in a complete specification is that the claim is broader than the invention as described in the specification.
Doric contends that claims 1-6 travel beyond the matter disclosed in the specification. In Doric’s submission Lockwood has “come up with” a particular device - the preferred embodiment - which solves the problem identified in the Patent, but the Patent claims all ways of solving that problem. In support of its contention, Doric relies upon the observations of the High Court in Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30. Rich J said at 64-65:
“When an invention depends upon a new principle it is enough for the patentee to describe one or more embodiments of the principle and having thus shown its practical application he may by a properly framed claim secure for himself a monopoly in all similar applications of his invention. But in combination claims it is very difficult to cover validly more than the particular aggregation of integers actually made by the inventor. It must be rare for a combination to consist in such an application of principle that the inventor can exclude from the field all combinations of mechanical equivalents of the integers producing the same result.”
See also Dixon J at 76-78. The monopoly must be restricted to the disclosure: Olin Corporation v Super Cartridge Co Pty Ltd (supra) at 263 per Stephen and Mason JJ.
In Biogen Inc v Medeva PLC (1996) 36 IPR 438 the House of Lords held that the breadth of a claim will exceed the technical contribution to the art embodied in the invention if it claims every way of achieving a result when it enabled only one way, and it is possible to envisage other ways of achieving that result which made no use of the invention.
Lockwood submits that there is no room for the application of these principles in the circumstances of the present case because the words in the specification match the words of the claim, hence the claims are necessarily “fairly based” on the specification. This is too narrow an approach to the question. The notion of “travels beyond” requires consideration of what is truly disclosed by the specification in terms of a “real and reasonably clear” disclosure. That this is so is recognised by the decision of the Full Court in Atlantis Corporation Pty Ltd v Schindler (supra) where claim 1 was couched in the same terms as the description of the invention in the specification. But the Court did not allow that coincidence of language “to disguise the fact” that the invention disclosed in the body of the specification “is truly” one which was subject to limitations as to use. The claims, however, were to pure apparatus claims, not subject to any limitations as to use. The claims therefore travelled beyond, and were found to be not fairly based on the matter described in the specification. Hence claim 1, and all other claims since they were dependent on it, were held to be invalid.
The structure of the specification in the present case refers to a known problem in relation to typical latch assemblies: key operation of the latch from the outside of the door does not release the inner handle, and as a result people may be locked in. The technical contribution to the art, to borrow the language of Laddie J in Re Raychem Corps Patents (supra) is the disclosure that the solution to the problem is the use of the outside lock to release the lock on the inside handle, coupled with the disclosure of one way of doing that in terms of the preferred embodiment.
Doric submits that the technical contribution made by the patentee, other than the preferred embodiment, is obvious, but I have declined to uphold that submission because of the evidentiary factors to which I have earlier referred. However, the fair basis objection overlaps with other grounds of invalidity, including obviousness (see Blanco White, Patents for Inventions 5^th ed 1983 at par 4-801). I agree with Mr Catterns’ submissions that the specification does not contain a real and reasonably clear disclosure of matters broader than the particular embodiment. Yet the Patent claims a latch assembly which contains LRM (which may take any suitable form) which is responsive to the operation of the second actuator so as to render the locking means inactive, no matter what means or mechanism is employed to achieve that result. It follows that claims 1-6 are not fairly based upon the specification. As all subsequent claims are dependent upon claims 1-6, it follows that they too are invalid, except for claim 33 which claims the preferred embodiment.
Fair Basis II
An alternative case was put which, in the written submissions, is confined to claims 7-33. The alternative case is that these claims are not fairly based on the specification because the claims are too narrow. There was little exposition of this alternative case in oral submissions. Having regard to my findings on Fair Basis I, it is not strictly necessary for me to deal with the alternative case, but I will do so, albeit briefly.
Mr Catterns put this case on the basis that the specification describes various features as being illustrative of the invention, and which are not to be taken as limiting the invention. Yet the claims then specify these features as matters which limit the invention claimed.
Paragraphs 3.8.1 and 3.8.2 of the Third Further Amended Particulars of Invalidity are the particularisation of this alternative case. Those particulars are as follows:
“3.8.1Claims 7-33 travel beyond the matter described in the specification in that the specification ~~in that the specification~~ states the following:
3.8.1.1‘According to the present invention, a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.’
(page 2, lines 10-12 of the specification of the Patent)
3.8.1.2‘Embodiments of the invention are described in detail in the following passages of the specification which refer to the accompanying drawings. The drawings, however, are merely illustrative of how the invention might be put into effect, so that the specific form and arrangement of the various features as shown is not to be understood as limiting on the invention.’
(page 2, lines 25-29 of the specification of the Patent)
3.8.1.3‘It is a feature of the assembly 1 that it includes lock release means 17 which responds to operation of the lock 10 so as to automatically deactivate the locking means 13. The release means may take any suitable form, and one particular form will be hereinafter described.’
(page 4, lines 26-29 of the specification of the Patent)
3.8.1.4‘It will be appreciated from the foregoing description that the present invention provides a relatively simple means for deactivating the knob locking mechanism from a position outside the door with which the latch assembly is associated. Furthermore, the release operation is of a positive nature such that release will always occur each time the outside lock (or other actuator) is operated to withdraw the latch bolt. Various alterations, modifications and/or additions may be introduced into the constructions and arrangements of parts previously described without departing from the spirit or ambit of the invention as defined by the appended claims.’
(page 10, lines 7-16 of the specification of the Patent)
3.8.2Contrary to these statements, each of claims 7-33 claims as features limiting the invention respectively claimed in those claims, features which are merely described as illustrative in the body of the specification.”
Mr Catterns based the alternative case on the decision of the Full Court in Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382. That was a case in which the Court was required to determine whether a petty patent specification was fairly based on the provisional specification. It was found not to be so, because the whole emphasis of the invention claimed had changed from the description in the provisional. Beaumont J said at 400 that the role attributed to a particular compound by the provisional was so subsidiary and so incidental to the main thrust and orientation of that specification “that one would hesitate to describe it as forming a basis for the later claim”.
The passages from the specification set out above do not demonstrate any disconformity between the specification and the later claims. It is common for a specification to state that the preferred embodiment does not limit the invention claimed. The fact that the lock release means may take any suitable form simply conveys that a person skilled in the art would have no difficulty in fulfilling this integer without the necessity for any instruction from the patentee (see par 17 above). Nor does the last matter relied upon create any disconformity. It is merely a reiteration of the proposition that the claims of the Patent are not to be limited by inference from the preferred embodiment.
The alternative case is not made out.
Sufficiency
Section 40(2)(a) provides that the complete specification must describe the invention fully.
The Third Further Amended Particulars of Invalidity describe this ground as follows:
“3.9.1To a person versed in the prior art, the only possible ingenuity in relation to the specification is in making a particular improvement, but the precise embodiment described, to a known mechanical device, namely a lock.
3.9.2However, the specification describes not this improvement, but the entirety of the combination, without enabling the reader to discern the particular improvement in the combination.”
This is said to be a related, but distinct ground of invalidity, to that referred to in s 40(3). Invalidity on this ground is based on the judgment of Kitto J in Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156, as endorsed by the High Court in Kimberly-Clark Australia Pty Ltd v Arico TradingInternational Pty Ltd (supra) par 23. The Court there said:
“The point being made by Kitto J ... was that, to a person versed in the prior art ... (i) the only possible ingenuity had been in making a particular improvement to a known mechanical device used in sausage manufacture, but (ii) the specification described not this improvement but the entirety of the combination, without enabling that reader to discern the particular improvement in that combination.”
In Mr Catterns’ submission there are two types of insufficiency. The first is failure to enable an addressee to make something within each of the claims. That is not alleged here. The preferred embodiment comes within each claim and is fully described. The second is the type of insufficiency established by Sami S Svendsen Inc v Independent Products Canada Ltd (supra).
If a patentee, in writing the specification, attempts to support broader claims than are otherwise warranted by the disclosure, then it may be that the patentee has failed to describe the invention fully such that there is a failure to comply with s 40(2)(a) as well as s 40(3). That was held to be the case in Atlantis Corporation Pty Ltd v Schindler (supra). That was the way in which Mr Catterns ultimately put his submission, but I have some difficulty, with respect, in seeing how the decision in Sami Svendsen has any real bearing on that question. In any event, the specification makes it clear, in the case of claims 1-6, that feature (vi) is the particular improvement to be found in the combination.
However, given my conclusion as to “fair basis”, and having regard to the way in which the sufficiency submission was ultimately formulated, it is not necessary for me to pursue this matter further.
Utility
Section 18(1)(c) of the Act provides that an invention is a patentable invention if the invention, so far as claimed in any claim, is useful.
Paragraph 4 of the Third Further Amended Particulars of Invalidity is as follows:
“The specification of the Patent does not comply with Section 18(1)(c) of the Patents Act 1990.
Particulars
4.1If, which the Applicant denies, the words in Claim 7 (and dependent claims) ‘urges said cam member towards said first position’ is the force applied by spring (‘q’) through the ‘locking bar’ (‘m’) as referred to in paragraphs 28-34 of the affidavit of Gary Noel Wilson sworn 27 December 2000 in these proceedings then the invention as so claimed is not useful.”
Doric’s written submissions on this issue were confined to the following:
“As pleaded in para 4.1 of the particulars, claim 7 and dependent claims are not useful if, as the Respondent presumably will submit on infringement, they include products where the cam biasing means provides torque over only part of the rotation. See Terell on the Law of Patents, 13^th ed, paras 5.39-5.45.
A distinct mechanism by which the outer key directly drives the Doric cam is necessary for it to work. The spring and recess are not enough, together with the integers of claim 7. On that construction, these claims are not useful.”
Lockwood’s written submissions on this point were as follows:
“Claim 7 is directed to the locking means, not the lock release means. Claim 7 is appended to claim 1. The objective of the invention as stated in the preamble of the specification is to achieve deactivation of the inner locking means as an automatic consequence of operation of the outside actuator. That objective is satisfied by feature (vi) of claim 1. Claim 7 by definition incorporates this feature.
It is submitted that claim 7, when properly construed, requires the biasing means to drive the cam through a distance sufficient to deactivate the locking means. That distance need not be the total distance through which the cam can travel.”
There was no development of these submissions in oral argument, and whilst this ground was not formally abandoned, counsel for Doric declined to elaborate further upon it.
My findings in relation to claim 7 are inconsistent with the assumptions on which Doric’s submissions as to inutility are grounded. Those findings gain support from Lockwood’s written submission extracted above. Therefore the question of inutility does not arise.
Uncertainty
Section 40(3) of the Act requires that the claims must be clear and succinct.
Ground 3.7 in the Third Further Amended Particulars of Invalidity is as follows:
“3.7Each of the claims is, and in the alternative, all of the claims are, not clear and succinct in that the claims are multiply dependent giving rise to a total of over 1,400 possible individual devices claimed.”
Doric selects claim 30 as a bad example, (but it says not the worst), of the problem of which Doric complains. Claim 30 provides:
“30A latch assembly according to any one of claims 13 to 29 when appended to claim 4, wherein said cam axis is substantially coincident with said actuator member axis.”
Doric submits that on its face, this claim contains 17 combinations (“according to any one of claims 13 to 29”). Each of claims 13-29, however, is itself dependent on multiple claims. Thus claim 30 can be dependent only on claim 13 (itself dependent on claim 12, itself dependent on any one of claims 1-6 – thus six different combinations), or it could be dependent on claim 29, itself dependent on claim 28, itself dependent on any one of claims 23-27, themselves variously dependent.
In Re Raychems Corp's Patents (supra) at 37, Laddie J criticised a practice of drafting patents as follows:
“There is another practice which can be used to obscure the patentee’s contribution, if any, to the art. This takes the form of drafting claims in an unnecessarily complicated way so that they are difficult to work through. Since the claims in a granted patent prima facie are valid and the onus is on the party attacking validity to make out his case, this obscurity may help the patentee. This practice has been deployed extensively in this case. Many of the primary claims in the patents have been drafted in a way which is calculated, in the legal sense, to make them difficult to understand. In some of them, simply known concepts have been dressed up in an elaborate clothing of quasi-science and complicated terminology. Unnecessary obscurity is not a separate ground for invalidating a claim. Within wide limits a patentee can use what language he likes to define his invention. But the court has to guard against being impressed by the form and language of the claims rather than the substance of the patentee’s alleged technical contribution.”

Ambiguity ordinarily arises if no reasonably certain construction can be given to a claim, or if it is fairly and equally open to diverse meanings. Ambiguity may also arise in relation to a claim if it is so obscure that its proper construction must always remain a matter of doubt. That is not the case here.
Lockwood did not challenge Doric’s assertions as to the number of permutations and combinations which were involved in the claims of the Patent. Lockwood submitted that this was simply irrelevant. Doric did not cite any authority, apart from the decision to which I have referred, in support of this ground. Multiple claims and dependent claims have long been a feature of patent law. Doric did not contend that one cannot unravel a claim, such as claim 30, and by that process, expose and understand the elements of the claims. Rather, Doric’s complaint is that it takes patience, concentration, time and effort to unravel all of these claims. That this is so is perhaps illustrated by the “road map” provided by Lockwood which essayed upon this task.
I accept that it takes patience, time and effort to unravel all of the claims of the Patent. Subject to the expenditure of that time and effort, there is no alleged ambiguity in the claims. The problem is not with prolixity, but with attempted compression, and the multitude of claims. That, however, falls short of establishing that the claim or claims are not clear and succinct.
Conclusion
Claims 1-6, 12 and 31-32 are invalid on the ground of want of novelty. Claims 1-6 and all subsequent claims, other than claim 33, are invalid as they are not fairly based on the specification. The Patent should be revoked in relation to all claims other than claim 33.
The parties should bring in short minutes of order to give effect to this decision. If there is disagreement on costs, I will hear argument on that question.

I certify that the preceding two hundred and sixty-four (264) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Hely.

Associate:
Dated: 21 December 2001

Counsel for the Applicant: D K Catterns QC, S Goddard

Solicitor for the Applicant: Sprusons Solicitors

Counsel for the Respondent: A J L Bannon SC, S Burley

Solicitor for the Respondent: Phillips Ormonde & Fitzpatrick

Date of Hearing: 30, 31 July 2001; 1, 2, 3 August 2001; 4, 5, 10, 11, 17 October 2001

Date of Judgment: 21 December 2001

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1089 OF 2000

BETWEEN:	DORIC PRODUCTS PTY LTD (ACN 000 577 195) APPLICANT
AND:	LOCKWOOD SECURITY PRODUCTS PTY LTD (ACN 086 451 907) RESPONDENT
JUDGE:	HELY J
DATE OF ORDER:	21 DECEMBER 2001
WHERE MADE:	SYDNEY

JUDGE:	HELY J
DATE:	21 DECEMBER 2001
PLACE:	SYDNEY

Counsel for the Applicant:	D K Catterns QC, S Goddard
Solicitor for the Applicant:	Sprusons Solicitors
Counsel for the Respondent:	A J L Bannon SC, S Burley
Solicitor for the Respondent:	Phillips Ormonde & Fitzpatrick
Date of Hearing:	30, 31 July 2001; 1, 2, 3 August 2001; 4, 5, 10, 11, 17 October 2001
Date of Judgment:	21 December 2001