Dynamic Suspensions Pty Ltd v Elizabeth Anne Molnar
[2021] APO 8
•19 February 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dynamic Suspensions Pty Ltd v Elizabeth Anne MOLNAR [2021] APO 8
Patent Application: 2016247125
Title:Leaf Spring System and a Reinforcing Spring for a Leaf Spring System
Patent Applicant: Elizabeth Anne MOLNAR
Opponent:Dynamic Suspensions Pty Ltd
Delegate:R Subbarayan
Decision Date: 19 February 2021
Hearing Date: Applicant’s written submissions filed on 10 December 2020
Catchwords: PATENTS – section 59 – opposition to grant of patent – whether Applicant entitled to invention – whether the claims are novel – whether the claims are inventive – none of the grounds made out – costs awarded
Representation: Patent attorney for the Applicant: Baxter Patent Attorneys Pty Ltd
Patent attorney for the Opponent: IP GATEWAY Patent & Trade Mark Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016247125
Title:Leaf Spring System and a Reinforcing Spring for a Leaf Spring System
Patent Applicant: Elizabeth Anne MOLNAR
Date of Decision: 19 February 2021
DECISION
The opposition is unsuccessful. Subject to any appeal, I direct that the application proceeds to grant.
I award costs according to schedule 8, against the Opponent, Dynamic Suspensions Pty Ltd.
REASONS FOR DECISION
BACKGROUND
Patent application AU 2016247125 in the name of Elizabeth Anne Molnar (the Applicant) was filed on 19 October 2016 as a divisional application of AU 2012206952 (the Parent) and claims an earlier priority date of 13 January 2011. Following examination, it was advertised as having been accepted on 7 March 2019. The grant of the patent has been opposed under section 59 of the Patents Act by Dynamic Suspensions Pty Ltd (the Opponent). The Opponent’s evidence in support was filed on 4 December 2019 and the Applicant’s evidence in answer was filed on 6 March 2020. The Opponent did not file any evidence in reply but requested the Commissioner for a stay of proceedings on the basis of the impact to their business due to the Covid-19 pandemic. Rather than grant a stay, the Commissioner delayed the setting of the hearing taking into account the effects of the pandemic and also the availability of suitable hearing officers.
The matter was scheduled to be heard via videoconferencing on 10 December 2020, but on 23 November 2020, the Opponent advised the Commissioner that they do not wish to appear at the hearing and nor do they intend to file any written submissions due to the continuing impact of the pandemic on the Opponent’s business, but that they still rely on their evidence in support for the Commissioner to find in their favour.
In the circumstances, the Applicant agreed to the Commissioner’s proposal to hear the matter through written submissions. The Applicant’s written submissions was filed on 10 December 2020.
I also note that the Parent was filed in the name of Sax Suspension Technology Pty Ltd (“Sax”), but later proceeded in the name of Elizabeth Anne Molnar pursuant to an assignment. This assignment was then unsuccessfully challenged under section 36 of the Patents Act by Michael McCann as Joint and Several Liquidator of ACN 137 233 919 (formerly Sax)[1].
Both parties to the present opposition have made submissions directed to the validity of the s 36 decision of the Parent and its applicability to the present opposition. I decline to comment further on matters already decided. This decision will only discuss material facts relevant for the current proceedings; namely, whether the named inventors are the actual inventors of the claimed invention and whether the Applicant is entitled to the invention.
[1] Michael McCann as Joint and Several Liquidator of ACN 137 233 919 vI also note that the evidence from the parties refers to organisations called Sax Suspension Pty Ltd and Sax Suspension Technology Pty Ltd. According to the Applicant, they are both the same entity. I will therefore refer to both of these companies as ‘Sax’ in this decision.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars (SGP) lists the grounds as lack of entitlement of the nominated person, lack of novelty and lack of inventive step of the claimed invention.
ONUS AND STANDARD OF PROOF
The present application is governed by the Patents Act 1990 (the “Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“Raising the Bar Act”). Amendments to Sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act. The present application was filed after 15 April 2013.
The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the present application. Nevertheless, it remains the case that, in proceedings such as these before the Commissioner, the onus rests with the Opponent to clearly establish its case in reaching a conclusion on any issue.
EVIDENCE
The Opponent’s evidence in support comprises:
·Declaration by Howard George Kodra dated 4 December 2019 with exhibits HGK-1 to HGK-39 (Kodra)
The Applicant’s evidence in answer comprises:
·Declaration of John Peacock filed 6 March 2020 (Peacock).
·Declaration of Elizabeth Anne Molnar dated 5 March 2020 with exhibits EAM-1 to EAM-15 (Molnar).
Mr Kodra is the CEO of the Opponent, Dynamic Suspensions Pty Ltd, and prior to that he was the General Manager of Sax Suspension Technology Pty Ltd (Sax) from late 2013 until mid-2015.
Mr Peacock is a qualified mechanical engineer who has over 25 years experience in providing professional services and evaluations in the field of mechanical engineering.
Ms Molnar is one of the inventors of the present application and was formerly an employee of Sax where she held the position of International Operations Manager between 2009 and 2015.
SPECIFICATION
The present invention relates to a reinforcing spring for a leaf spring suspension system used in vehicles. Such reinforcing springs are also referred to as helper springs and hence these two terms are used interchangeably in this decision.
The specification notes that leaf springs used in suspension systems may suffer from sag when the vehicle is fully loaded as these are often designed for providing a comfortable ride rather than full loading capacity and that this can lead to spring damage.
According to the specification, this spring damage can lead to other serious issues such as reduced traction, reduced stability of the vehicle under heavy load and reduced braking performance.
The specification then notes that a common technique used in the prior art to address the problem of spring sag is to provide the leaf spring with an extra leaf. However, this is stated to be time consuming and expensive as it requires removing the spring leaf assembly from the vehicle in order to add the extra leaf and while it may stiffen the spring this often leads to an uncomfortable ride when no load is carried by the vehicle.
The specification then briefly describes a solution that is taught in prior art AU 200158004. This document discloses a helper spring that is provided on top of the leaf spring and is attached thereto by an inverted U-bolt, but the specification notes that the U-bolt is susceptible to breakage and can impact and damage the chassis and the leaf spring is liable to slippage as it is trying to move with the U-bolt that is not designed to move independently in the backwards and forwards direction.
The specification summarises the problems of the prior art leaf spring systems as follows:
“Therefore, the prior art lacks the ability to provide a suspension system with leaf spring assemblies to improve ride quality, load carrying capacity, towing and handling improvements, all of which add up to safer, more comfortable and enjoyable driving experience and achieve minimum sag to the rear of the vehicle”.[2]
[2] Specification at [0014]
An object of the present invention is stated to be to “at least partly overcome or ameliorate at least one of the disadvantages of the prior art or at least provide a viable alternative”.[3]
[3] Specification at [0015]
This is then followed by the following consistory statement of the present invention:
In one form of the invention there is provided a reinforcing spring for a leaf spring system having a plurality of leaf springs, the reinforcing spring comprising: a preformed curved body portion, having a greater curvature than that of the leaf spring system, a first end and a second end wherein the first end and second end are unsymmetrical; a first attachment mechanism connectable around the leaf spring system to provide pivotal connection of the first end of the preformed curve shaped body portion to the first attachment mechanism at a spaced position from
the top of the leaf spring system and for allowing relative movement of the preformed curve shaped body portion in a forward and backward motion along the direction of the longitudinal direction of the leaf spring assembly; a second attachment mechanism fixedly attachable to the leaf spring system and holding the second end of the preformed curve shaped body portion in a fixed state; wherein the reinforcing spring forms a single dynamic unit with the leaf spring assembly and improves spring load characteristics.[4][4] Specification at [0018]
A number of preferred embodiments of the invention are then described. The main embodiment is best understood with reference to figures 1, 2A and 2B that are reproduced below:
Figures 1 and 2 show a reinforcing spring 10 according to one embodiment of the present invention that is mounted on top of a leaf spring of a vehicle on the rear half (shackle end) of the leaf spring assembly. The leaf spring is a typical leaf spring that comprises several flat steel leaf spring strips bundled together to form a shock absorbing, load carrying suspension component that supports an axle of the vehicle.
The reinforcing spring 10 is made from high tensile spring steel and comprises a preformed curved body portion 11 with first and second ends 14, 13 mounted to the leaf spring between a first attachment mechanism 30 and a second attachment mechanism 20.
The second attachment mechanism is typically a U-bolt that firmly secures the second end 13 of the preformed curved body portion to the central portion of the leaf spring.
The first attachment mechanism 30 is in the form of a shackle comprising a pair of plates 32 positioned either side of the leaf spring and having aligned apertures at the upper end for pivotally securing the shackle to the first end of the connecting member using a first connector 31, such that the first end of the curved body portion is spaced from the top of the leaf spring. The plates are also provided with aligned first and second series of apertures 34, 35 towards the lower end that can be alternatively used to connect the shackle to the leaf spring using a second connector 38.
The curved body portion is preformed and prestressed and, in use, bears against the leaf spring to alter the stiffness characteristics of the leaf spring under varying vehicle loads and to prevent it from sagging under full load conditions. The curved body portion is capable of flexing under loads and this is further assisted by the pivotal connection of the first attachment mechanism that also enables the reinforcing spring to move relative to the leaf spring assembly in a longitudinal direction.
The shackle also provides for two different predetermined tension levels for the reinforcing spring depending on which of the aligned apertures 34, 35 is used for connecting the plates to the leaf spring.
The specification states that this embodiment of the reinforcing spring “can be fitted to existing, original manufacturing equipment or can be part of a replacement leaf spring assembly which can be used to replace the original manufacturing equipment”.[5]
[5] Specification at [0088]
The specification also describes other embodiments including ones in which the reinforcing spring is fitted centrally on the leaf spring such that it extends both forward and rearward of the leaf spring axle support.
The specification ends with 21 claims of which the independent claims 1 and 13 are reproduced below:
1. A reinforcing spring for a leaf spring system having a plurality of leaf springs, the reinforcing spring comprising:
a. a preformed curved body portion, having a greater curvature than that of the leaf spring system,
b. a first end and a second end wherein the first end and second end are unsymmetrical;
c. a first attachment mechanism connectable around the leaf spring system to provide pivotal connection of the first end of the preformed curve shaped body portion to the first attachment mechanism at a spaced position from the top of the leaf spring system and for allowing relative movement of the preformed curve shaped body portion in a forward and backward motion along the direction of the longitudinal direction of the leaf spring assembly;
d. a second attachment mechanism fixedly attachable to the leaf spring system and holding the second end of the preformed curve shaped body portion in a fixed state;
e. wherein the first attachment mechanism is in the form of a shackle which comprises of at least two of a plurality of plates fastened either side to the first end by the first connector and around the leaf spring assembly by a second connector and the plates provide for a predetermined adjustable state whereby the predetermined state moves to a medium state as a result of securing the second connector to a medium control and the predetermined state moves to a hard state as a result of securing the second connector to a hard control wherein the hard predetermined state provides for greater curve angle by the preformed shaped body
wherein the reinforcing spring forms a single dynamic unit with the leaf spring assembly and improves spring load characteristics.
13. A reinforcing spring for a leaf spring system, the reinforcing spring comprises:
a preformed curve shaped body portion having a connecting member, a first end and a second end;
a first attachment mechanism connectable around the leaf spring system to provide pivotal connection of the first end of the preformed curve shaped body portion to the first attachment mechanism at a spaced position from the top of the leaf spring system and for allowing relative movement of the preformed curve shaped body portion in a forward and backward motion along the direction of the longitudinal direction of the leaf spring assembly;
a second attachment mechanism fixedly attachable to the leaf spring system and holding the second end of the preformed curve shaped body portion in a fixed state;
wherein the first attachment mechanism is in the form of a shackle which comprises of at least two of a plurality of plates fastened either side to the first end by the first connector and around the leaf spring assembly by a second connector and the plates provide for a predetermined adjustable state whereby the predetermined state moves to a medium state as a result of securing the second connector to a medium control and the predetermined state moves to a hard state as a result of securing the second connector to a hard control wherein the hard predetermined state provides for greater curve angle by the preformed shaped body
and wherein the reinforcing spring forms a single unit with the leaf spring assembly and improves spring load characteristics.
ENTITLEMENT
The patent request of the opposed application lists the inventors of the present invention as Elizabeth Anne Molnar and John Molnar.
In respect of this ground, the SGP states as follows:
“1.1. The nominated person is not entitled to the grant of a patent for the alleged invention because the persons stated as the inventors, namely John Molnar and Elizabeth Anne Molnar, are not the actual inventors of the alleged invention.
1.2. UMC Export Corporation, UMC Auto Industries Pvt Ltd, Ultra Tech Suspensions Pvt Ltd and Unique Suspensions Pvt Ltd, which are companies incorporated in India, are the actual co-inventors of the alleged invention (collectively referred to herein as “the UMC Companies”).
1.3. From about 2008 to about 2011, the UMC Companies designed, manufactured and sold the alleged invention to CVSS Pty Ltd and its successor, SAX Suspensions Pty Ltd, which are companies incorporated in Australia, of which the Applicant was a director at the time of the supply.
1.4. The UMC Companies did not assign their intellectual property rights in the alleged invention to the Applicant, CVSS Pty Ltd or SAX Suspensions Pty Ltd.
1.5. The nominated person is not entitled to the grant of a patent for the alleged invention in view of not having obtained entitlement to the grant of a patent for the alleged invention from each of the actual inventors of the alleged invention.
1.6. The nominated person is not entitled to the grant of a patent for the alleged invention as a sole patentee because another person or party is also entitled to the grant of a patent for the alleged invention”.
The Law on Entitlement
Section 59(a) of the Act reads as follows:
“The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:
(a) that the nominated person is either:
(i) not entitled to a grant of a patent for the invention; or(ii) entitled to a grant of a patent for the invention but only in conjunction with some other person...”
The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
Section 15(1) of the Act reads as follows:
“Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”That is a patent may be granted to the inventor of an invention or someone who derives title to the invention from the inventor.
The law on inventorship/entitlement has been considered in University of Western Australia v Gray [2009] FCAFC 116 (“UWA”) and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 (“Polwood”). In particular, steps for determining who is an eligible person are apparent from [253] of UWA as part of a broader discussion from [253] to [256]. These steps may be given for present purposes as follows:
- identify the “inventive concept” of the invention as defined in the claims.
- determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice.
- determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
Polwood provides guidance with regard to determining the inventive concept at [61]:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
The Opponent’s Case on Entitlement
As noted earlier, the Opponent’s evidence in relation to this matter is Mr Kodra’s declaration and associated exhibits. His evidence can be summarized as follows:
·Mr Kodra is currently the CEO of the Opponent, the other directors of the company being Mr Manjit Singh Kohli (Manjit) and Ms Ishdeep Kaur Kohli. Prior to joining the Opponent, Mr Kodra worked as the general manager with Sax from late 2013 until mid-2015.
·The Opponent has a close working and commercial relationship with a number of companies which are incorporated in India, including UMC Export Corporation, UMC Auto Industries Pvt Ltd, Ultra Tech Suspensions Pvt Ltd and Unique Suspensions Pvt Ltd. (collectively referred to as “UMC”), all of which are controlled by Manjit.
·The use of helper springs to alleviate the problem of leaf spring sag was well known in the art at the priority date.
·Neither John Molnar nor Elizabeth Molnar nor anyone else at Sax has ever designed or invented a helper spring product, and Sax also did not manufacture their helper spring product. The design and manufacture of the helper springs sold by Sax was completely outsourced to the UMC Companies after Manjit responded to a 2008 advertisement in Alibaba website from Ms Molnar seeking a supplier of suspension products including load helper springs[6].
[6] HGK-12
·UMC was already supplying at that time the ‘Load Plus’ helper spring to Iron Man Suspensions which has been jointly developed by UMC and Iron Man Suspensions[7].
·The discussions between UMC and Sax resulted in UMC supplying to Sax, samples of a ‘modified Load Plus’ helper spring[8]. Sax also asked UMC to design a ‘modified Load Plus’ helper spring for use on a Toyota Land Cruiser[9].
·The email exchanges between UMC and Sax clearly confirms that the helper spring products that came to be sold by Sax, including the product called the “Equaliser” and the product called the “Three Stage Dynamic Suspension”/“3SDS”, which are the subject of the opposed application, were not invented by John Molnar or Elizabeth Molnar and that the true inventor(s) was/were Manjit and/or other personnel at UMC.
·Manjit or UMC have not transferred or assigned any intellectual property rights to the invention to Sax or John Molnar or Elizabeth Molnar.
·While the present application lists the inventors as both John Molnar and Elizabeth Molnar, the parent application where the presently claimed invention was already disclosed, only lists the inventor as John Molnar, again indicating that Ms Molnar is not an inventor.
[7] Kodra at [43]
[8] HGK-20
[9] Kodra at [57] and HGK-20
Applicant’s Answer to the Opponent’s Case
The Applicant’s evidence in relation to this matter is Ms Molnar’s declaration and associated exhibits. Her evidence can be summarized as follows:
·Mr Kodra was employed by Sax from late 2013 to mid-2015 as general manager and in that role his duties were to manage and run the sales team and he had no involvement with development of Sax’s helper spring product or the outsourcing of its manufacture to UMC. The Sax helper spring had already been in the market by the time Mr Kodra joined Sax. Hence Mr Kodra is clearly not qualified or has the first-hand knowledge to make any comment on technical and manufacturing aspects of the Sax helper spring product.
·UMC merely supplied samples of the modified Load Plus helper spring that had been designed by John and Elizabeth Molnar. All the CAD drawings for the helper spring were done in house at Sax.
·The reference to ‘your project of modified load plus’ in Manjit’s email[10]clearly establishes that the design was Sax’s.
[10] HGK-17
·The Opponent appears to simplify the Sax helper spring as merely a helper spring and there is no attempt to identify the inventive features of the Sax helper spring and how UMC contributed to these inventive features.
·UMC merely manufactured and supplied the helper spring product to Sax till things went sour between the parties around 2014, when products supplied by UMC were faulty and Sax decided to source their product from another supplier.
·The evidence of Mr Peacock clearly establishes that the claimed invention is different from any of the prior art including the ‘Load Plus’ helper spring allegedly developed by UMC jointly with Ironman Suspensions.
·Just because Sax offered to sell the patents to UMC does not mean that UMC personnel designed the present invention.
·The failure to include Elizabeth Molnar as a joint inventor in the parent application was an error that has been corrected in the divisional application.
Considerations on Entitlement
It is clear that Mr Kodra was not an employee of either Sax or UMC when the initial discussions took place between Sax and UMC in the period 2008-2011 and hence does not have a first-hand knowledge of what transpired between Sax and UMC during this period. All the statements he makes in relation to who designed the Sax helper spring are inferences he makes based on email correspondence between these parties.
While some of the copies of the emails he has annexed to his declaration may suggest contribution by UMC in relation to some of the design aspects of the Sax helper spring, in my view they are not sufficient to clearly establish some input by Manjit or other UMC personnel in the development of the inventive features of the Sax product that is the subject of the claimed invention.
As noted by the Applicant, the Opponent has made no effort to identify the inventive concept of the claimed invention and how UMC personnel contributed to this inventive concept. While it appears that the Sax helper spring is a modified ‘Load Plus’ helper spring, there is no evidence to clearly establish that this modification was conceived by Manjit or other UMC personnel either independently or jointly with John and Elizabeth Molnar. The onus clearly rests with the Opponent to establish its case and in my view, their evidence falls well short of establishing this. It was open to them to have provided a declaration from Mr Manjit who was clearly involved in the discussions between Sax and UMC with regards to UMC being chosen to manufacture and supply the Sax helper spring and who is also now a director of the Opponent.
I am not satisfied based on the evidence that John Molnar and Elizabeth Molnar are not the inventors of the claimed invention.
Furthermore, there is no evidence that the Applicant owed any contractual or fiduciary duties to the Opponent. While there appears to have been a sales contract for the supply and purchase of modified ‘Load Plus’ helper springs, that does not in itself constitute any assignment of intellectual property rights from Sax to the Opponent.
Consequently, on the evidence, I cannot be satisfied that the Applicant is not entitled to the invention. This ground of opposition fails.
NOVELTY
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486). Also as stated in General Tire (supra) “A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
It was considered in Catnic Components v Hill & Smith Ltd [1982] RPC 183 that a claim may not be novel if it only differs in features that are inessential. It is therefore important to identify what features of an invention are ‘essential features’ and whether all the ‘essential features’ are disclosed by the prior art. To further clarify what constitutes an essential feature, Denning J found at [228] that a feature will be essential to a claim if:
·it was essential to the working of the invention or if it materially affects the way in which the invention works; or
·if the Applicant for the patent has made it an essential feature by the terms of the claim, properly construed.
In relation to the ground of Novelty, the SGP provides the following particulars:
“2.2. The alleged invention defined in each claim of the Opposed Application is not a patentable invention pursuant to section 18(1)(b)(i) of the Patents Act 1990 in that the alleged invention as claimed lacks novelty in light of the prior art base as it existed before the priority date of each claim.
2.3. From about 2000, the UMC Companies designed and sold a product known as the Helper Spring (also known by brand names such as Load Hog and Load Plus) in Australia and worldwide. The UMC Companies designed subsequent iterations of the Helper Spring which were mere variations of the original Helper Spring. The alleged invention is one of the variations of the Helper Spring, which the UMC Companies designed, manufactured and sold to CVSS Pty Ltd and SAX Suspensions Pty Ltd.
2.4. The reinforcing spring for a leaf spring system the subject of the Opposed Application has been marketed and sold in Australia by the Opponent for four years, and by Dynamic Suspensions Global Pty Ltd for the past year on the global market.
2.5. The prior art information was made publicly available before the priority date of each claim of the Opposed Application by the UMC Companies to at least one member of the public in Australia, namely:
2.5.1. The Opponent, Dynamic Suspensions Pty Ltd;
2.5.2. Dynamic Suspensions Global Pty Ltd;
2.5.3. IRONMAN 4X4 Pty Ltd; and
2.5.4. A business in Australia known as Tough Gear Trading,
who, in that capacity, were free, in law and in equity, to make use of it.2.6. The prior art information provided by the UMC Companies to the abovementioned companies particularised in paragraphs 2.3 to 2.5 disclosed all of the essential features or integers of the alleged invention.
2.7. The UMC Companies’ Helper Spring and its variations would be an infringement of the Applicant’s claim if the patent were valid”.
It is clear from the aforementioned particulars, that the Opponent is asserting that the claimed invention lacks novelty on the basis of prior use of the reinforcing spring manufactured by UMC and supplied to the companies listed in paragraph 2.5.
However, Mr Kodra’s evidence does not address these particulars at all. While he has stated that UMC designed, manufactured and supplied to Sax the helper spring of the claimed invention, no further information is provided as to when and how the information about this UMC designed helper spring was conveyed to these companies and what are the features of this helper spring. I also note that the SGP only states that UMC helper spring has been marketed and sold in Australia by the Opponent for four years, and by Dynamic Suspensions Global Pty Ltd for the past year, which is well after the priority date of 13 January 2011.
It follows that ground of lack of novelty based on prior use has not been made out.
Mr Kodra has submitted in his evidence that the invention defined in each of the independent claims is not novel in light of certain prior art documents that are not mentioned in the particulars for this ground in the SGP. So, while the Opponent is strictly not allowed to rely on these documents as the SGP has not been amended to include these prior art, I will still address Mr Kodra’s submissions in relation to these prior art documents.
D5: US 1113941, D6: US 1125199, D7: US 1199019 and D8: US 1640778
Mr Kodra has submitted that the claimed invention is not novel in light of documents D5-D8.
D5 is directed to a vehicle spring and shock absorber assembly that includes a reinforcing/helper spring. As shown in figure 1 below, the assembly comprises a main spring 3 and a supplementary spring 8 having a greater curvature than the main spring mounted in the centre to the main spring 3 via clips 4. The main spring 3 and the supplementary spring 8 are further connected at the ends by spaced links 9. The spaced links 9 include sets of pivot bolts 10 and 11, wherein the pivot bolt 11 may be fixed in either of a plurality of spaced holes 12 in order to adjust the stiffness of the supplementary spring. Clearly it does not disclose the claimed features of the ends of the reinforcing spring being unsymmetrical and the second end being held to the leaf spring in a fixed state.
D6, as shown in figure 1 below, discloses a supplementary spring 2 having a greater curvature fixedly attached to a main spring 1 via U-clips 6. The ends of the supplementary spring are attached to U-shaped stirrups 10 by bolts 11. The ends of the main spring pass through the stirrups and the stirrups comprise rollers that allow relative movement of the main spring and the supplementary spring. The U-shaped stirrups are configured to allow adjustment of the stiffness of the supplementary spring 2 via apertures 12. There is no clear disclosure that the bolts 11 provide a pivotal connection for the ends of the supplementary spring. Also it does not disclose the claimed features of the ends of the reinforcing spring being unsymmetrical and the second end being held to the leaf spring in a fixed state.
With regards to D7, shown below in figure 1, there is an improved spring assembly comprising a main spring C and a supplementary spring D attached at the centre via clips B. D7 further comprises stirrups E connected to the ends of the main spring C and the supplementary spring D. The distance between a supporting bar e and the underside of the main spring C is adjustable, this allows a user to increase stiffness of the supplementary spring D. Clearly it does not disclose the claimed features of the ends of the reinforcing spring being unsymmetrical and the second end being held to the leaf spring in a fixed state. Also the connection of the ends of the supplementary spring to the stirrups are rigid connections.
It is clear from the figure shown below, that D8 has a similar disclosure to that of D6.
It is clear from the above, that each of documents D5-D8 does not at least disclose the claimed features of the ends of the reinforcing spring being unsymmetrical and the second attachment mechanism fixedly attachable to the leaf spring and holding the second end of the reinforcing spring in a fixed state.
Mr Kodra accepts these differences between the claimed invention and these prior art but has however submitted that the features of “the first (rear) end and the second (front) end of the preformed curved body portion to be unsymmetrical, and especially the requirement that the second attachment mechanism must hold the second (forward) end of the preformed curve shaped body portion in a fixed state, cannot be essential features of the invention in the Opposed Application because there are numerous embodiments of the invention described in the Opposed Application which do not include these features”.[11]
[11] Kodra at [73]
He specifically refers to the embodiment of figures 6A-C in support of this contention. These figures are reproduced below:
The specification describes the embodiment shown in these figures as a full three stage dynamic leaf spring. It shows a full helper spring that extends both forward and rearward of the leaf spring assembly with the front end of the helper spring attached to the leaf spring assembly by the second attachment means in the form of a hanger and the rear end of the helper spring attached to the leaf spring assembly by the first attachment means in the form of the shackle similar to the half spring embodiment. The reinforcing spring has a base portion in the middle that rests on the leaf spring assembly providing for two curved portions which extend from the base portion.
However it is quite evident from the figures that even in this embodiment both ends of the helper spring are unsymmetrical. Even though the hanger is stated to be able to pivot and move slightly as the spring flexes, it is still primarily described as a fixed pin connection.
Mr Kodra’s submission on this issue is clearly misplaced and unpersuasive. In relation to the purpose of having a pivoting end and a fixed end, the specification repeatedly notes that the shackle connection at one end allows stretching of the reinforcing leaf spring while the fixed connection at the opposed end, whether it be a U-bolt connection as in the embodiment of figures 1-2 or the hanger connection of the embodiment of figure 6, provides support for the opposed end when the reinforcing spring is distorted under load.[12] Clearly the unsymmetrical ends and the fixed connection at one end are not arbitrary design choices. I am not convinced that these features are non-essential features as asserted by Mr Kodra.
[12] Specification at [0024], [0031], [0096]
It follows that the claimed invention is novel over each of the documents D5-D8.
INVENTIVE STEP
In relation to this ground, the SGP provides the following particulars.
“3.2 The alleged invention defined in each claim of the Opposed Application is not a patentable invention pursuant to section 18(1)(b)(ii) of the Patents Act 1990 in that the alleged invention defined by each claim would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of each claim.
3.3. The person skilled in the relevant art is a person who is:
3.3.1. a mechanical engineer;
3.3.2. a design engineer; and
3.3.3. a manufacturer of suspension products for vehicles.3.4. The common general knowledge of the person skilled in the relevant art at the relevant priority date of each claim in the Opposed Application includes:
3.4.1. US 1125199 A (SPRAGUE) 19 January 1915;
3.4.2. US 1199019 A (OBRECHT) 19 September 1916;
3.4.3. US 3039759 A (PALLER) 19 June 1962; and
3.4.4. GB 221247 A (LUTMAN et al) 05 September 1924.3.5. Each of the documents referred to in paragraph 3.4 is, individually, information that the skilled person could, before the priority date of each claim, be reasonably expected to have ascertained, understood and regarded as relevant and, where appropriate, combined.
3.6. Where there is a reference contained within a document particularised in paragraph 3.4 to a further document particularised in paragraph 3.4, that combined information is information that the skilled person could, before the priority date of each claim, be reasonably expected to have ascertained, understood, regarded as relevant and combined.
3.7. In the premise of the matters set out in paragraphs 3.2 to 3.6, a person skilled in the relevant art at the priority date, would in all the circumstances, directly be led as a matter of course to try the alleged invention, in the expectation of achieving a useful/desirable result. As such, the alleged invention described in the Opposed Application does not involve an inventive step”.
Law on Inventive Step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claims, involves an inventive step. Subsection 7(2)-(3) states:
“(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the art in light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
The test for obviousness was stated in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at [45]:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Person Skilled in the Art (PSA)
In general, the skilled person or addressee is the person who works in the art or science with which the invention is connected. He or she is a person, or team, likely to have a practical interest in the subject matter of the invention. While the skilled person may be assumed to be well versed in the relevant art, such a person must be taken to be non-inventive. (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [ 2000] FCA 980 at [71]-[72]; 49 IPR 225 at [71] -[72] referring to Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242 and General Tire (supra) at 485; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 293).
The Court in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30, further clarified that a PSA is not a real person, but an artificial construct used as a tool for analysis:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the Court. It is a pale shadow of a real person – a tool of analysis which guides the Court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
Mr Kodra was a general manager at Sax from late 2013 to mid-2015. He has provided no information about his qualifications or experience prior to his employment with Sax. Ms Molnar has stated that he was only responsible for managing the sales team and did not have any involvement in product development and nor did he have any prior technical knowledge of suspension systems. The Applicant has therefore submitted that Mr Kodra is not qualified to comment on the CGK or the obviousness of the claimed invention.
However, I am not convinced that I should disregard Mr Kodra’s view or opinions on the CGK in the art or the obviousness of the claimed invention. As the general manager for sales, one would expect that Mr Kodra would have acquired a reasonable understanding of Sax’s helper spring product, as well as also those of their major competitors at least from late 2013. However, the fact that he has provided no information on his involvement in this art at the priority date, means that the probative weight of his opinions on the CGK would be low.
Ms Molnar has been the International Operations Manager of Sax between 2009 and 2015 and has stated that she “had an active role in all research and development of products including infield testing of products” and that she “was also responsible for the business and development of the design and manufacture of leaf springs at Sax Suspension Technology Pty Ltd (SST) between 2009 and 2015”.[13] It is therefore clear that she would qualify as a PSA at the priority date and would also have a good understanding of the CGK in 2011. Where Mr Kodra and Ms Molnar have differing views or opinions on what was known in the art at the priority date or what would have been obvious to the skilled addressee, Ms Molnar’s opinions should be preferred.
[13] Molnar at [1]-[2]
Mr Peacock is a qualified mechanical engineer with over 25 years’ experience in providing consulting services, but he does not provide any information on whether he has had any involvement with automotive suspension technology. Therefore, I have no basis to assess his knowledge of the helper spring art and whether any comments he has made are indicative of the CGK in this art.
COMMON GENERAL KNOWLEDGE (CGK)
Emmett J considered common general knowledge in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled worker’s mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
Standard texts and handbooks;
Standard English dictionaries;
Technical dictionaries relevant to the field;
Magazines and other publications specific to the field.”As discussed in Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163 at [104] common general knowledge is established by evidence:
“it is necessary to establish common general knowledge by appropriate evidence. Evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary material such as text books, trade journals and technical publications, should be treated with caution and given little weight.”
Helper springs in general
Mr Kodra has stated that the “problem associated with vehicle rear suspension sag under load was well known before 2011, and the use of helper springs to address or alleviate this problem was also well known before 2011”.
Ms Molnar does not dispute this in her evidence in answer. It is also clear from the age of some of the patent documents cited by Mr Kodra, that the problem of leaf spring sag has been well recognised and sought to be resolved with the addition of reinforcing/helper springs.
‘Load Hog’ (D1) and ‘Load Plus’ (D2)
Mr Kodra has stated that helper spring products called ‘Load Hog’ (D1) and ‘Load Plus’ (D2) had been commercially available well before the priority date and this has also been accepted by Mr Molnar. It is worth noting that both ‘Load Hog’ (D1) and ‘Load Plus’ (D2) are half helper springs in that they are meant to be fitted to only the rear half of the leaf spring, similar to the first embodiment of the present invention.
However, just because a product has been available in the market does not make it CGK without further evidence to establish that these products would be known to and accepted by all practitioners in the art. Such evidence is missing and I would also mention that Mr Kodra does not explicitly assert that the ‘Load Hog’ and ‘Load Plus’ themselves had become part of the CGK in the art at the priority date.
On balance, I am not satisfied that the ‘Load Hog’ and ‘Load Plus’ products and more generally half helper springs that are provided only on the rear half of the leaf spring were CGK at the priority date.
Shackles for supporting one end of helper springs
Mr Kodra has stated that the use of shackles to pivotally connect the ends of helper springs is well known in the art since the early 1900s and relies on the disclosure of prior art documents D5-D8 in support of his assertion.
He also refers to document D4 that shows a shackle connection at the ends of the helper spring and explicitly states that it is for the purpose of permitting both pivotal and translational movement of the connector relative to the main spring.
Ms Molnar has not disputed this in her evidence in answer, again preferring to refer to the evidence of Mr Peacock to distinguish the claimed invention from the prior art. However, the Applicant in their written submissions for the hearing has submitted that the mere disclosure of the use of a shackle connection in the cited documents does not make that feature CGK without further evidence that these documents were known to and generally accepted by those engaged in the art. While I accept this submission is established authority, Mr Kodra has only cited these documents as examples to substantiate his assertion that this feature is well known in the art. It was clearly open to Ms Molnar as a skilled addressee to have disputed this, but she has not done so. Furthermore, from my own experience as a mechanical engineer both in the automotive industry and as a patent examiner in vehicle technologies for over 30 years, I can confidently state that the use of a shackle type connection at the ends of leaf spring and/or helper leaf springs to enable the spring leaves to extend in length when their curvature is reduced under load or when the vehicle hits a bump, has been CGK in the art for close to a century. In fact, the use of a shackle connection at one end of the leaf spring for this specific purpose is standard practice in the art.
I am satisfied that the use of a pivoted shackle connection at one or both ends of leaf springs including helper leaf springs for the purpose of allowing the leaves to move in a longitudinal direction was CGK in the art at the priority date.
Problem to be Addressed
The test for inventive step requires a determination of the problem that the claimed invention seeks to address. In determining the problem or ‘starting point’ for considering inventive step, the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (‘AstraZeneca’) at [202]-[203] stated that it is not permissible to incorporate information that is not available to the person skilled in the art:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
The Applicant submitted that the problems sought to be addressed by the current application are described in paragraphs [0003] to [0014] of the specification and more specifically in relation to admitted prior art AU 200158004 (D3) the specification has highlighted the following disadvantages:
·The U-Bolt in this prior art is unable to sustain continuous weight and movement as the major spring flexes and is therefore prone to breaking;
·The helper spring and the associated U-bolt protrudes above the leaf spring and often interferes with other components of a vehicle and can damage the chassis;
·The U-bolt can be overtightened leading to spring breakage; and
·Spring slippage or dislodgement can occur in the leaf spring as it attempts to move with the U-bolt.[14]
[14] Applicant’s written submissions at [64].
Mr Kodra has submitted that the problems of leaf spring sag was CGK in the art as was the use of reinforcing/helper springs as one of the ways to address this problem. However, in relation to
prior art AU 200158004 (D3), he has submitted that this prior art does not really suffer from the problems that the specification has mentioned and that the Load Hog and Load Plus products continue to be sold with such U-bolts and continue to be market leaders in this field.
Ms Molnar does not make any submissions on the problem that the claimed invention seeks to address.
Given Mr Kodra’s opinion in this regard and the fact there is nothing else in the s7(3) information relied on by him to suggest these were indeed problems and that the specification also explicitly states that AU 200158004 was “not commonly or generally known disclosure”[15], I am not satisfied that I can use the problems associated with AU 200158004 as the starting point to assess obviousness.
[15] Specification at [0011]
However, it is clear that problems associated with leaf spring sag in general was CGK and therefore the problem that I will use as the starting point for my obviousness analysis is to provide an alternate design for a helper spring that addresses the problem of leaf spring sag under load.
D5: US 1113941, D6: US 1125199, D7: US 1199019 and D8: US 1640778 and the CGK
Mr Kodra has submitted that in case I find that the claimed invention is novel over these documents on the basis that all of the features are essential features, then the claimed invention lacks an inventive step over these documents when combined with the CGK in the art.
Mr Kodra has submitted that the helper springs in these documents are full helper springs that are mounted centrally on the primary leaf spring with curved sections extending both forwardly and rearwardly of the primary leaf spring. He however contends that it would have been obvious to cut the reinforcing spring in half if the skilled addressee only wanted the reinforcement for the rear half of the leaf spring assembly and that by doing so, they would end up with a reinforcing spring arrangement that would be the same as the claimed invention. He has provided the following figure to illustrate how the spring of D5 would look if it were cut in half.
I agree that by providing only the rear half of the reinforcing spring of D5, the spring would have first and second ends that are unsymmetrical and the second end would be held to the spring assembly in a fixed state as required by claim 1. The other features of the independent claims are disclosed in D5 as discussed earlier.
The notion that it was known before the priority date that cutting a helper spring in half would be a known solution for providing improved stiffening only to the rear of the main spring is unsupported. I have also already found that the evidence does not establish that the use of a reinforcing spring only on the rear half of the primary leaf spring was CGK at the priority date. Mr Kodra has also not indicated why it would have been obvious at the priority date to provide a pivotal connection in combination with a fixed connection for a reinforcing spring. As such, on the balance of probabilities, I cannot be satisfied that a hypothetical skilled addressee would have arrived at the claimed invention as a matter of routine by cutting the helper spring of D5 in half as submitted by Mr Kodra. The claimed invention does not lack an inventive step over D5 when combined with the CGK.
For similar reasons, the claimed invention would also not lack an inventive step over prior art D6-D8.
Inventive Step with regards to D2 and D3
The SGP does not list D2 and D3 as prior art information for the ground of inventive step. However, Mr Kodra has provided reasons as to why the claimed invention lacks an inventive step over D2/D3 and the CGK. Although the Opponent is therefore strictly not entitled to rely on these prior art, I will still address Mr Kodra’s submissions.
According to Mr Kodra, prior art D3 is the patent application of the Load Plus helper spring of D2. Figure 1 of D3 and the photo of the Load Plus of D2 are reproduced below.
I agree that the helper springs are almost identical and therefore it follows that the findings I make in relation to D3 will also apply to D2.
As can be seen in figure 1, D3 discloses a reinforcing spring 10 to be mounted between the mid-point and the rear end of a leaf spring 11of a vehicle. Reinforcing spring 10 comprises a curved steel beam spring having a mounting end 16 provided with a lip, an opposite free end 17 provided with a cross plate 32 and a point of inflection 35 therebetween. The mounting end is fixedly secured to the leaf spring with a U-bolt.
The free end is secured to the leaf spring by means of a long U-bolt 26 that hooks under the leaf spring and passes through apertures in the cross-plate 32. The curvature of the reinforcing spring biases free end away from the leaf spring and the height of the free end above the leaf spring can be adjusted by suitably tightening nuts on the U-bolt, thereby adjusting the tension in the reinforcing spring.
It is clear that D3 discloses all of the features of the independent claims apart from the shackle connection at the free end that provides for a pivotal connection of the free end and predetermined adjustable states for the tension in the reinforcing spring.
While Mr Kodra has stated that there were no problems to his knowledge with the U-bolt connection at the first end of this helper spring, he has submitted that if breakage of the U-bolt was indeed a problem, then the obvious solution to this problem would be to replace the U-bolt with a shackle type connection so as to enable the helper spring to move longitudinally with respect to the leaf spring.
However, I have found that the problems that the claimed invention addresses are not the problems associated with the U-bolt in the prior art but rather to provide an alternative to known helper springs. With this as the starting point, while the use of shackle connection was CGK in the art, there is no basis for me to be conclude, on the balance of probabilities, that the skilled addressee would have as a matter of routine, replaced the U-bolt of the prior art with a shackle type pivoted connection that also provides for at least two adjustable states as claimed. The claimed invention does not lack an inventive step over D3 and the CGK in the art.
Even if I were to use the problem of U-bolt breakage in D3 as the starting point for assessing obviousness, I would still not be satisfied that the replacement of the U-bolt at the free end of the helper spring with a shackle would have been a matter of routine. The solution could well lie in providing a roller on the U-bolt where it hooks around the leaf spring enabling the U-bolt to slide relative to the leaf spring when the curvature of the helper spring and hence its length changes, similar to the arrangement in D6. Strengthening the U-bolt could be another solution.
It is clear that Mr Kodra was well aware of the claimed invention before he gave his opinion on obviousness, so it quite possible that his opinion is tainted by hindsight. Also, being an employee of the Opponent, his views are certainly not an independent assessment. Furthermore, given the lack of information on his qualifications and experience at the priority date, his views may not reflect that of a skilled addressee at the priority date. While the fact that neither Ms Molnar nor Mr Peacock have explicitly disputed Mr Kodra’s views on obviousness may suggest that Mr Kodra’s views may have some merit, at the end of the day without some evidence in reply from Mr Kodra or at least written submissions from the Opponent regarding Mr Kodra’s qualifications to provide evidence in relation to what would been obvious to a skilled addressee at the priority date, I cannot, on the balance of probabilities, be satisfied that the claimed invention is obvious in light of D3 and the CGK.
Inventive Step over D1 and the CGK
D1 as noted earlier is prior art information on the ‘Load Hog’ helper spring product. An extract from D1 that shows the Load Hog is reproduced below:
It can be clearly seen that this product is identical to the Load Plus product. It follows that the claimed invention does not lack an inventive step over D1 and the CGK.
CONCLUSION
None of the grounds of opposition have been made out and therefore the opposition under s59 is unsuccessful. Subject to any appeal, I direct that the application proceeds to grant.
COSTS
The normal approach is that costs follow the event and I see no reason to depart from this. I will award costs, according to Schedule 8, against the Opponent, Dynamic Suspensions Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents
Elizabeth Anne Molnar [2017] APO 30
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