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Firebelt Pty Ltd v Brambles Australia Ltd

Firebelt Pty Ltd v Brambles Australia Ltd

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Case Copied 23 May 2002 34 min read

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HIGH COURT OF AUSTRALIA
GLEESON CJ,
McHUGH, GUMMOW, HAYNE AND CALLINAN JJ
FIREBELT PTY LTD APPELLANT
AND
BRAMBLES AUSTRALIA LIMITED RESPONDENTS
(trading as Cleanaway) & ORS
Firebelt Pty Ltd v Brambles Australia Ltd
[2002] HCA 21
23 May 2002
B52/2001
ORDER
Appeal dismissed with costs.
On appeal from the Federal Court of Australia
Representation:
J J J Garnsey QC with C J Carrigan and D H Katter for the appellant (instructed by Xavier Kelly & Co)
D F Jackson QC with A B Crowe SC and R I M Lilley for the first respondent (instructed by Deacons Lawyers)
No appearance for the second and third respondents
Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

The appellant ("Firebelt") was incorporated in 1992. It holds the intellectual property utilised by companies which are controlled by two branches of the Richards family and which carry on refuse collection and related businesses in New South Wales and Queensland. The Richards family had established a refuse collection business in 1932 in the Tweed District of northern New South Wales.
Firebelt was the grantee of Petty Patent No 657082 which was granted under the Patents Act 1990 (Cth) ("the Act") on 23 February 1995 for an initial term of 12 months from that date and in respect of an invention entitled "A Side-Loading Refuse Vehicle" ("the Petty Patent"). The inventor is identified as Mr Idwall Richards.
At all material times, the first respondent ("Cleanaway") carried on business under that name using a side-loading refuse and recycling collection vehicle. Cleanaway did so in the region of the second respondent, the Cooloola Shire Council ("the Council"), which is a body incorporated pursuant to the Local Government Act 1973 (Q). In particular, in August 1994, the Council awarded to Cleanaway a contract for the collection, removal and conveyance of refuse.
The litigation
After the issue of the Petty Patent, Firebelt instituted a proceeding in the Federal Court alleging infringement of the Petty Patent by Cleanaway and the Council. The relief sought included damages and, in the alternative, an account of profits. Cleanaway and the Council denied infringement and also set up a defence under the Crown use provisions of Ch 17 Pt 2 (ss 163‑170) of the Act. The contention was that any exploitation of the Petty Patent had been for the services of the third respondent, the State of Queensland, and under an authority in writing by the State, within the meaning of s 163 of the Act.
By its cross-claim under s 138 of the Act, Cleanaway sought an order for revocation of the Petty Patent. Reliance was placed upon various grounds of alleged invalidity. There was a trial of the cross-claim before Dowsett J, in advance of a determination of the issues in the infringement action[1]. His Honour ordered that the Petty Patent be revoked and, as a consequence, dismissed the infringement action.
[1]Firebelt Pty Ltd v Brambles Australia Ltd (1998)…

Grounds of appeal

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

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

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

Consideration

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

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

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Details

Case: [2002] HCA 21
Decision Date: 23 May 2002

CaseChat Overview and Summary

Firebelt Pty Ltd appealed to the High Court of Australia against a decision of the Full Court of the Federal Court of Australia, which had upheld a trial judge's revocation of a petty patent held by Firebelt. The dispute concerned the validity of the petty patent, which related to a system for collecting and recycling pre-sorted domestic waste using divided mobile garbage bins and specially equipped collection vehicles.

The central legal issue before the High Court was whether the petty patent possessed an inventive step, or alternatively, whether it was obvious at the priority date. This involved construing sections 7(2) and 7(3) of the *Patents Act 1990* (Cth) and determining whether the evidence supported the conclusion that it was obvious to combine known elements in the interactive combination claimed by the patent. The court also considered the relevance of the patent's commercial success to the question of obviousness.

The High Court found that while the judgments at trial and on appeal might have had some unsatisfactory aspects, the appeal was ultimately determinative. Both the trial judge and the Full Court had correctly stated the applicable legal principles regarding inventiveness. The court accepted that the evidence, particularly the evidence of Mr Ahrens, properly supported the conclusion that the petty patent lacked inventiveness and was therefore invalid.

Consequently, the High Court dismissed Firebelt's appeal with costs, upholding the order for the revocation of the petty patent. The court also noted that there was no need to consider further grounds of invalidity or the dismissed infringement action.

Orders

Orders of the court

Appeal dismissed with costs.

Background

Background to the litigation

The Act was amended by the Patents Amendment (Innovation Patents) Act 2000 (Cth) ("the 2000 Act"). This commenced on 24 May 2001, after the expiry of the six year term of the Petty Patent, but it provided that the Act as in force immediately before that date continued to apply to petty patents the term of which had expired[7]; further, pending legal proceedings in respect of rights under the repealed litigation were continued by s 8 of the Acts Interpretation Act 1901 (Cth).[7]Section 3 and Sched 2, Pt 1, Items 1 and 2(1)(b). The background The trial judge said that the dispute arose in the context of what were[8]:"relatively recent attempts to facilitate the recycling of waste by pre‑sorting in the hands of those producing it, coupled with separate handling, transportation and disposition by waste collection services".[8](1998) 43 IPR 83 at 84. His Honour accepted evidence by the inventor, Mr Idwall Richards, about the development of the industry over many years. In the early 1980s, mobile garbage bins (known as "MGBs" or "wheelie bins") had come into use and were promoted by local government for the collection of domestic refuse. This had necessitated the development of purpose built loading mechanisms fitted to side-loading and rear-loading refuse collection vehicles. Later, side-loading vehicles had been developed to a stage where they were operated by one person. There was a transition from semi-automated collection to the use of equipment and adoption of practices whereby MGBs were picked up and unloaded by remote control from the cab. A demand for recycling of domestic refuse had led Mr Richards to the investigation of the prospects of success of separate bin storage and handling. The use of the single operator system dictated the use of a side-loading vehicle, presumably because of the need for the driver to observe the operation. Dowsett J referred to the effect of the evidence and continued[9]:"This implies that the driver is able to pick up a bin from the kerbside, using some form of device on the truck, empty it and return it to the kerbside. It is now a commonplace that such bins are able to be divided by partitions so that refuse and recyclable material or different categories of refuse or of recyclable material may be accumulated separately prior to collection. It is now also obvious that the trucks which collect such pre‑sorted waste may be equipped to permit separate handling, carriage and unloading of such material. This case is concerned with the events which led to the current position." (emphasis added)[9](1998) 43 IPR 83 at 84.The Petty Patent It is convenient now to turn to the relevant terms of the Petty Patent. Under the heading "BACKGROUND ART", it is stated:"With the introduction of environmental awareness, the collection of domestic garbage has taken on a new complexion, it being realised that new, convenient and economical approaches to garbage collection and recycling must be introduced. It has been proposed to provide householders with a plurality of waste bins so that each householder can sort waste into various categories.For example, paper, metal cans and bottles and garbage could conceivably be stored and collected separately and this has been tried, the main problem with this scheme is the high expense insofar as separate collections are required for each category.The alternative has been to provide local or regional sorting facilities where garbage is hand sorted or expensive automated facilities have been tried with minimal success due to the high expense involved.In summary therefore, sorting of recyclables from domestic garbage after collection is generally uneconomical."It is then said that the present invention has, as its primary object, the provision of a useful alternative to that prior art.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

However, it is far from clear that, in meeting the exigencies of argument as the litigation progressed, submissions were not made in a form which the trial judge may have understood as representing what "in the end" were the two approaches by Firebelt on the question of inventiveness which his Honour described in the judgment. Thus, in the course of final oral submissions on the obviousness issue, the trial judge put to senior counsel for Firebelt that its difficulty was with the width of its claim and that the method of performing the invention with a lid-opening device described in the passages of the body of the complete specification accompanying figs 4 and 5 might be the only method that was not obvious. Counsel responded that, on the evidence, that conclusion was not made out and continued[38]:"Because a lid‑opening device on the transfer mechanism operating during the loading cycle, no one has suggested that there is any – that that was known, with respect, before the 10th February '92. And what they say is, oh, there is no inventive step to recognise you could do that. That is what the case comes down to. And the objective evidence is against that because no one did it, no one thought of it, and the industry trends were away from the divided bin collection to separate collections." (emphasis added)[38]Trial transcript, 24 November 1998 at 643.Conclusions However that may be, and however unsatisfactory the judgments at trial and in the Full Court may be in some respects, the determinative consideration points to the dismissal of Firebelt's appeal. Both Dowsett J and the Full Court did state the appropriate principles and evidence was properly accepted which, consistently with those principles, supported the revocation of the Petty Patent for want of inventiveness. We refer in particular to the evidence of Mr Ahrens in cross-examination, and to the trial judge's acceptance of his evidence. The appeal should be dismissed with costs. The result is that the order for revocation of the Petty Patent stands. There is no occasion for this Court or for the Federal Court to consider any further grounds impeaching validity and the infringement action was properly dismissed at trial.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.