Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc

[1993] FCA 487

FALLSHAW HOLDINGS PTY LIMITED v. FLEXELLO CASTORS AND WHEELS PLC
No. NG7 of 1992
FED No. 487
Number of pages - 6
Patents
(1993) AIPC 91-018

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox(1), Burchett(1) and Foster(1) JJ

CATCHWORDS

Patents - claim for revocation on ground of obviousness - whether the claimed invention was to be regarded as truly a new combination or as an improvement to one integer only of an old combination - discussion of principle of May v. Higgins - discussion of the nature of a combination patent - discussion of obviousness.

Patents Act 1952, s. 100(1)(e)

May v. Higgins (1916) 21 CLR 119

Sami S. Svendsen Incorporated v. Independent Products Canada Limited (1968) 119 CLR 156

Welch Perrin and Co Pty Ltd v. Worrell (1961) 106 CLR 588 Minnesota

Mining and Manufacturing Co v. Beiersdorf (Australia) Ltd (1980) 144 CLR 253

Elconnex Pty Limited v. Gerard Industries Pty Limited (1991) 32 FCR 491

Elconnex Pty Ltd v. Gerard Industries Pty Ltd (1992) 25 IPR 173

Palmer v. Dunlop Perdriau Rubber Company Limited (1937) 59 CLR 30

Allsop Inc v. Bintang Ltd (1989) 15 IPR 686

HEARING

SYDNEY, 21 September 1992

#DATE 22:7:1993

Counsel for the Appellant: Mr R.J. Bainton QC with

Ms J Stuckey-Clarke

Solicitors for the Appellant: Messrs Bruce and Stewart Turton

Counsel for the Respondent: Mr J.M. Ireland QC with

Mr J.O. Anderson

Solicitors for the Respondent: Messrs Blessington Judd

Freeman Lazarus

ORDER

The Court orders that:

1. The appeal be allowed with costs.

2. The orders made below be set aside, and in lieu thereof it be ordered that:

(a) the interlocutory injunction granted on 12 August 1991 be dissolved;

(b) the application be dismissed;

(c) the cross-claim be allowed and Australian Patent Number 588634 be wholly revoked;

(d) the Registrar or other appropriate officer of the Court serve an office copy of these orders on the Commissioner of Patents; and

(e) Flexello Castors and Wheels PLC pay the costs of Fallshaw Holdings Pty Limited of the application and cross-claim.

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

JUDGE1

WILCOX, BURCHETT AND FOSTER JJ The issue in this appeal is whether the Judge at first instance rightly rejected the appellant's cross-claim, brought in a patent infringement suit, for an order revoking the grant of the patent on the ground of obviousness (Patents Act 1952, s. 100(1)(e) - cf. Patents Act 1990, ss. 7(2) and 18(1)(b)). The nub of that question is the appellant's contention that it was wrong to regard the matter as governed by those principles applicable to an invention consisting of a new combination of integers, some or all of which may be old. In truth, the appellant says, no more was involved than the selection, for quite straight forward reasons, of a well known variant in substitution for one only of the integers of an already existing combination.

1. Both sides agreed, at the trial and on appeal, that the governing statute is the Patents Act 1952.

2. The patent relates to a device for fixing a castor to the tubular (or otherwise hollow) leg of a piece of furniture or other article to be mounted on castors. An outer hollow plastic cone is caused to expand when an inner plastic cone is forced into it, so that the device, to which the castor is attached, will lock firmly into the tubular or hollow leg. The method by which the inner cone is forced into the outer cone is by rotation of a threaded bolt or pintle which engages a threaded bore in the inner cone (in the manner of a bolt engaging in a nut). The bolt is of steel.

3. Claim one of the patent, the priority date of which is 3 October 1985, is expressed in the following terms:
   

"1. An expander device for anchoring a castor in a hole by expansion therein; the device comprising a radially expansible sleeve having a conical inner surface which extends over at least a major portion of the axial extent of the sleeve; an expander member engageable in the sleeve and having an outer surface at least a major portion of which is conical; the conical surface portions of the sleeve and the expander member being adapted for sliding interengagement over a major portion of the axial extent of the sleeve such that axial movement of one of the expander member and the sleeve relative to the other causes radial expansion of the sleeve, an elongate externally-threaded member engaged in a complimentary (sic), axially-extending tapped bore in the expander member; and means for rotating the externally-threaded member relative to the expander member whereby to move the expander member relative to the sleeve and thereby to expand the sleeve into contact with the hole and anchor it therein; characterized in that the sleeve and the expander member are formed of a plastics material and the externally-threaded member has a multi-start (eg. a three-start) thread."

1. The learned primary Judge identified seven integers in this claim, as follows:
   

"(i) a radially expansive sleeve having a conical inner surface which extends over at least a major portion of the axial extent of the sleeve;

(ii) an expander member engageable in the sleeve and having an outer surface at least a major portion of which is conical. This is the synthetic nut or inner cone;

(iii) The conical surface portions of the sleeve and the expander member being adapted for sliding interengagement over a major portion of the axial extent of the sleeve relative to the other causes radial expansion of the sleeve; i.e. as the inner cone is drawn into the outer cone the outer cone expands;

(iv) an elongated externally threaded member, engaged in a complementary axially extending tapped bore in the expander member; i.e. a threaded bolt engaged the threaded nut;

(v) means for rotating the externally threaded member relative to the expander member whereby to move the expander member relative to the sleeve and thereby to expand the sleeve into contact with the hole and anchor it therein; i.e. the head on the bolt allows the bolt to be turned thereby moving the inner cone into the sleeve expanding the sleeve into contact with the inner wall of the tube thereby anchoring the castor;

(vi) characterised in that the sleeve and the expander member are formed of plastic material i.e. the inner and outer cones are made of plastic.

(vii) the externally threaded member has a three-start thread."

1. The evidence showed that, apart from the seventh integer, i.e. the three-start thread, this combination was already known at the priority date, and available in the market. A castor known as the Shepherd castor had all these features, except that its thread was not a three-start thread; and there were possibly others also. But what was urged for the respondent, both at the trial and before us, was that the patent was a combination patent, and that this combination, utilizing a three-start thread, was inventive. His Honour acceded to the argument. He noted that counsel "placed reliance upon the necessary level of inventiveness required to sustain a patent, especially a combination patent". He accepted a submission: "Perceiving the need to use a three-start thread is but one part of the combination and it is all parts which must be shown to be obvious to the non-inventive worker." His Honour stated his view in the following terms:
   

"Even if one were to accept that the first six integers were present in the Shepherd Castor, the final integer, the three-start thread, had never been used in connection with a castor expander. None of the experts said that they had even considered this use. To say, as the respondent does, that any non-inventive worker in the field could have seen the use of plastic on the Shepherd Castor then realised the problem of the thread-stripping or the need to remove plastic components from the mould quickly, and then come up with the solution of a three-start thread, is, in my opinion, to undertake a post facto dissection and to overlook the very inventiveness that often exists in a combination patent.

A new combination of old integers is often patentable. . . .

It is the entire combination of the features of the Flexello device that are not obvious."

1. But why should attention be directed to "the entire combination of the features of the Flexello device"? Save for the use of a multi-start thread, in the place of a single-start thread, or some other type of thread, that particular combination, as a device to achieve the very end the patent contemplates, was familiar to the relevant industry at the priority date. The advance which the patent could be claimed to have achieved was the substitution of a more suitable type of thread - more suitable, it seems, because of the tendency of a single-start thread in plastic to be stripped when used with a steel bolt, and also because of the greater speed in fitting achieved with a multi-start thread. Whether the perception of the problems, or the provision of their solution, required an inventive spark is not to be answered by reference to the difficulties which once may have confronted the inventor of the combination. They did not confront the patentee. He has come later to the task, and refined one aspect of a device by then well known. The critical question, as it seems to us, is whether the decision to add to the known combination a multi-start thread involved an inventive step.

2. Of course, patent law recognizes that a combination patent may be granted in respect of a combination every integer of which may be both old and simple. But in such a case the combination is new. What is involved was stated by Dixon CJ, Kitto and Windeyer JJ in their joint judgment in Welch Perrin and Co Pty Ltd v. Worrell (1961) 106 CLR 588 at 611, as follows:
   

"That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing." (Emphasis added.)

In Minnesota Mining and Manufacturing Co v. Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 266, Aickin J said:

"The patent thus claimed is a combination patent in the proper sense of that term, i.e. it combines a number of elements which interact with each other to produce a new result or product. Such a combination may be one constituted by integers each of which is old, or by integers some of which are new, the interaction being the essential requirement."

An illustration of a simple combination of old integers which was nevertheless inventive, considered as a combination, is provided by Martin Engineering Co v. Trison Holdings Pty Ltd (1989) 14 IPR 330 (when this matter went on appeal as Nicaro Holdings Pty Ltd v. Martin Engineering Co (1990) 91 ALR 513, the allegation of obviousness was not pursued).

1. What Griffith CJ said (with the agreement of Barton and Rich JJ) in May v. Higgins (1916) 21 CLR 119 at 121-122 shows clearly the distinction between a new combination and an improvement in one integer of an old combination:
   

"It was sought to support the claim as being one for a combination, and it can only be supported as a combination. A combination is not an invention unless the combination is substantially a new thing. In this case the only new thing is the substitution in one integer of an old machine of a slightly different mode of applying power. ... The machine for which the patent is claimed is not new; it is old, but it is alleged that one of the parts has been improved. It is possible that that alteration is both valuable and novel, and so may be patentable. It is fair, therefore, that, although the applicant is not entitled to the patent which he claims, he should be allowed to put forward a claim for what may be patentable."

In the same case Isaacs J said (at 122-123):

"A true combination of parts, whether the parts be old or not, is a new unit, and is patentable, other requisites being present. It is the combination itself that is the novelty. ... I am assuming that there was invention here. Then comes the question whether the presence of this feature makes the whole thing a combination. It appears to me that it is a mere improvement of one previously existing integer. ... It is, I think, at best an improvement upon a prior integer not altering the essential character of the machines. Then, if that is the case, the whole machine as claimed is not a true combination, and, if the inventor has a meritorious invention, it is in respect of the improvement only, and that should be separately claimed."

May v. Higgins was cited in Sami S. Svendsen Incorporated v. Independent Products Canada Limited (1968) 119 CLR 156, which was concerned with an alleged invention of a unit for holding a sausage skin so as to facilitate the introduction of sausage meat into it by means of a nozzle, known as a stuffing horn. The idea of such a holder was old, and what was actually new was the provision of a tab, referred to as an "ear", utilized in drawing the holder onto the stuffing horn. Kitto J said (at 164-165):

"The provision of the tab or ear was at best an improvement on a known device, not making the device a new thing but merely facilitating the use of an old thing in the old way for the old purpose. It seems to me impossible to regard the claims of the specification as being for a new combination of old integers; they are for the known device of a sausage casing holder (or unit) with an improvement in a particular part of it, consisting of an extension of the walls with a cut-out or cut-outs made in it so that what remains of the extension, namely the tab or ear, may be used for gripping to pull the holder (or unit) onto the stuffing horn more easily and therefore more quickly than before."

1. May v. Higgins and Sami S. Svendsen were not revocation cases. However, their reasoning depends upon an appreciation of the nature of a combination patent, and an appreciation that a mere improvement of one integer of an existing combination does not, as the unsuccessful counsel had contended in May v. Higgins, and as counsel for the respondent contended here, involve the creation of a new combination. At all events, this reasoning has been applied to a revocation suit in Elconnex Pty Limited v. Gerard Industries Pty Limited (1991) 32 FCR 491 at 509-510, and that decision was affirmed on appeal by the Full Court: Elconnex Pty Ltd v. Gerard Industries Pty Ltd (1992) 25 IPR 173 at 180, 184, 194 and 196. More recently, a similar view has been taken by Cooper J in Winner v. Ammar Holdings Pty Ltd (1993) 25 IPR 273 at 294-295 (and see also, per Davies J, with whom Morling J agreed, at 284-285). It cannot be said, in these cases, that the question of obviousness concerned, as it did, for example, in Rescare Ltd v. Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 at 141, "the problem solved by the whole apparatus"; it concerned a new and narrower problem, confined to the operation of a part of an existing apparatus, and solved by an alteration of that part.

2. Another aspect of the point was put succinctly by Dixon J in Palmer v. Dunlop Perdriau Rubber Company Limited (1937) 59 CLR 30 at 73, when he said:
   

"But the characteristic which a combination of known integers must possess in order to afford subject matter is mutual relation in the operation of such integers."

In this context, of course, "subject matter" refers to inventiveness in contradistinction to obviousness: Terrell on the Law of Patents 13th ed. (1982) para. 5.82. There can be no subject matter, in that sense, in a mutual relation which is already well known; inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers. Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination.

1. In our opinion, therefore, it is necessary in this case to consider whether the substitution of a multi-start thread for the previously used single-start thread was obvious. This is not how the learned Judge approached the matter. However, he did make a finding which is very relevant:
   

"Whilst the expert engineering evidence could not be said to be unanimous, it was apparent that the characteristics and uses of multi-start threads had been known for some time ... . Faced with the problem of thread-stripping, it can reasonably be concluded that any engineer would see the solution lying with either a multi-start thread (either two, three or four-start), an acme thread or what became known as the self-tapping screw model. Opinion as to which would be preferable was divided."

1. There was ample evidence to support the finding that a multi-start thread would have been one of a quite small number of solutions apparent to any competent engineer, faced with the problem the patentee claimed to have solved, at the priority date. One of the experts pointed out that an invention involving multi-start threads has been attributed to Archimedes in the third century B.C. Presumably, he was referring to the pump known as the Archimedean screw, which played a role in the draining of the Fen Country in England. One of the respondent's own experts, Mr R.B. Frost, a senior lecturer in the School of Mechanical and Manufacturing Engineering at the University of New South Wales, conceded that the virtue of multi-start threads in relation to stripping of the thread "has been well known for donkeys' years". He thought that any engineer would examine the possibility of using multi-start thread, if confronted with the problem in question. The inventor himself conceded, in cross-examination, that "any other organisation with engineers of the same competence as (his) confronted with the same problem would have come up inevitably with exactly the same answer". He also conceded that "the available alternatives to overcome what (he) thought might be a problem were known and the task was to work out which one (he) thought would best do the job and that's what (he) did". Important factors, according to his evidence, pointing to the use of multi-start thread were the problem of stripping and the advantage of speed of installation.

2. It cannot be said that the appreciation of these matters was inventive; nor did a solution which required merely a choice between several well known forms of thread, a threaded member being already given in the known combination, involve any difficulty to be overcome (cf. Allsop Inc v. Bintang Ltd (1989) 15 IPR 686 at 701). As Starke J said in Griffin v. Isaacs (1942) 12 AOJP 739 at 741, "A development which any competent workman in the trade might have made had he needed it is not an invention and is wanting in ... subject matter". Cf. Winner v. Ammar Holdings Pty Ltd (supra, at 285).

3. Courts have stated many times, and this Court reiterated in Allsop v. Bintang, that the inventive element needed to sustain a patent may be quite small. The question of obviousness involves, as Aickin J pointed out in Wellcome Foundation Ltd v. V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 270, "asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge." But the hypothetical non-inventive worker must not be assumed to be ignorant. He is a person skilled in the relevant art; and in considering what the skills of such a person may embrace, the court should not ignore the rapid advance of technology during the present century, which has certainly enhanced the equipment that skilled persons in many arts bring to the solution of their problems. See the discussion in Allsop v. Bintang at 700-701; Elconnex at 25 IPR 178.

1. In our opinion, the invention claimed in claim one was obvious. It was not disputed that if this were so, the other claims would likewise fall. The appeal should be allowed with costs; and the orders made below should be set aside, and in lieu thereof it should be ordered that the application be dismissed, that the grant of the patent in suit be wholly revoked, that an office copy of these orders be served on the Commissioner of Patents, and that the respondent pay the appellant's costs of the application and cross-claim.