Flexello Castors & Wheels v Fallshaw Holdings Pty Ltd - [1991] FCA 824

Re: FLEXELLO CASTORS AND WHEELS PLC
And: FALLSHAW HOLDINGS PTY LIMITED
No. G328 of 1991
FED No. 824
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Hill J.(1)

CATCHWORDS

Patents - combination patent - application for infringement and cross- claim seeking revocation - obviousness - novelty - applicable principles - overlap between lack of inventiveness (obviousness) and lack of novelty - inventiveness required to sustain a combination patent - whether challenge to patent constitutes ex post facto dissection of applicant's patent - whether applicant's product a mere workshop improvement on device previously published.

Patents Act 1952: ss.40(2), 100(1)(d), (e), (g); 157

Patents Act 1990: s.233(4)

Patents Regulations: reg.23.26.

Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261

Dennison Manufacturing Company v Monarch Marking Systems Inc (1983) 76 FLR 200

Griffin v Isaacs (1938) 12 ALJ 169

Graham Hart v S.W. Hart (1978) 141 CLR 305

Martin Engineering v Trison Holdings (1988) 14 IPR 330

Meyers Taylor v Vicarr Industries (1977) 137 CLR 228

Minnesota Mining and Manufacturing v Beiersdorf (Australia) Ltd (1980) 144 CLR 258

Nicaro Holdings Pty Ltd v Martin Engineering (1990) 16 IPR 545

Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd (1972) RPC 346

Wellcome Foundation v V.R. Laboratories (1981) 148 CLR 262

Werner v Bailey Aluminium (1989) 25 FCR 565

HEARING

SYDNEY

#DATE 18:12:1991

Counsel and Solicitors for Applicant/Cross-Respondent: J.M. Ireland QC

and J. Anderson

Instructed by: Blessington Judd

Counsel and Solicitors for Respondent/Cross-Claimant: R.J. Bainton QC,

S.G. Finch and J. Stuckey-Clarke

Instructed by: Bruce and Stewart

Turton

ORDER

The injunction granted by Morling J. on 12 August 1991 and contained in Order 4 of the Short Minutes of Order signed by his Honour on that day, be made permanent.

The cross-claim be dismissed.

The respondent pay the applicant's costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

The applicant, Flexello Castors and Wheels PLC ("Flexello") claims that the respondent, Fallshaw Holdings Pty Limited ("Fallshaw") has infringed its letters patent (No 588634) ("the patent") for an invention entitled "Expander Device for Castor". Fallshaw admits that if the patent be valid it has infringed the patent. It has accordingly cross-claimed for an order revoking the grant of the patent.

The application to this court was filed on 26 June 1991, that is to say, after the commencement of the Patents Act 1990 (Cth) ("the 1990 Act"), which came into operation on 30 April 1991. The parties were, however, in agreement having regard to s.233(4) of the 1990 Act that the issue of validity falls to be determined by reference to the provisions of the Patents Act 1952 (Cth) ("the Act"). See also Regulation 23.26 of the Patents Regulations and Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty Limited and Ors (unreported, Gummow J., 23 September 1991 at 3-4).
The invention, the subject of the disputed patent, relates to an adjustable wedge which is to be inserted…

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: [1991] FCA 824
Decision Date: 18 DECEMBER 1991

CaseChat Overview and Summary

Flexello Castors & Wheels brought an action against Fallshaw Holdings Pty Ltd in the Federal Court of Australia, alleging infringement of a patent held by Flexello. Flexello sought a permanent injunction against Fallshaw, who had been granted an interim injunction, as well as damages for infringement and an account of profits. In response, Fallshaw filed a cross-claim seeking revocation of the patent on the grounds of obviousness and lack of novelty. The case turned on the interpretation and application of patent law, particularly as it related to combination patents and the requirements for inventiveness and novelty.

The primary legal issue before the court was whether the patent in question was valid and infringed by Fallshaw's product. Specifically, the court had to determine whether the patent met the criteria for inventiveness and novelty, and whether Fallshaw's challenge to the patent amounted to an ex post facto dissection of the applicant's invention. The court also had to consider whether Flexello's product was merely a workshop improvement on a previously published device.

The court found that the patent was valid and infringed by Fallshaw's product. The court held that the patent met the requirements for inventiveness and novelty, and that Fallshaw's challenge did not amount to an ex post facto dissection of Flexello's invention. The court found that Flexello's product was not merely a workshop improvement on a previously published device, but rather represented a significant advancement in the field. The court also found that the patent was not obvious to a person skilled in the art, and that Fallshaw's product did not anticipate the patent. Accordingly, the court dismissed Fallshaw's cross-claim and granted Flexello's application for a permanent injunction.

In addition to granting a permanent injunction, the court ordered that Fallshaw pay Flexello's costs. The court also noted that settlement and entry of orders was dealt with in Order 36 of the Federal Court Rules. Overall, the decision in this case provides guidance on the requirements for a combination patent and the overlap between lack of inventiveness and lack of novelty. It also underscores the importance of meeting the criteria for inventiveness and novelty in order to obtain and maintain a valid patent.

Orders

Orders of the court

The injunction granted by Morling J. on 12 August 1991 and contained in Order 4 of the Short Minutes of Order signed by his Honour on that day, be made permanent.

The cross-claim be dismissed.

The respondent pay the applicant's costs.

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

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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