Flexello Castors & Wheels v Fallshaw Holdings Pty Ltd

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 into a tube (which could be the leg of a piece of furniture) and which is designed to carry castors on which such furniture stands. As manufactured by both the applicant and the respondent the device comprises two plastic cones, an inner and outer cone; the inner cone is a nut into which a metal bolt is screwed, that bolt being threaded with a three-start thread. The action of tightening the bolt forces the inner cone into the outer cone which is so formed as to expand outwards towards the inner wall of the tubing into which it is to be fixed, thereby locking the wedge into the tube.
The letters patent describe the claims of Flexello, so far as they were the subject of argument before me, defining the "invention" 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, 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.

2. A device as claimed in claim 1, wherein the sleeve is formed with at least two first slots extending from one end of the sleeve part way towards the opposite end, and at least two second slots extending from the opposite end part way towards the one end.

3. A device as claimed in claim 2, wherein the first and second slots are arranged asymmetrically so as to define major and minor sleeve portions therebetween, so that during expansion of the sleeve deformation thereof takes place predominantly in the minor portions.

4. A device as claimed in any one of claims 1 to 3, wherein the conical portion of the sleeve is formed over at least half, and preferably over at least three quarters of the axial extent thereof..."

The grounds upon which it was claimed that the patent should be revoked were those set out in s.100(1)(d), (e) and (g) of the Act, which provide relevantly as follows:

"100. (1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, and a petty patent may be revoked, on one or more of the following grounds, but on no other ground: ...

(d) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, is not an invention within the meaning of this Act;

(e) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim; ...

(g) that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, was not novel in Australia on the priority date of that claim ...".

The patent has a priority date of 3 October 1985.
Flexello, a company incorporated in the United Kingdom, has manufactured expanders for many years and since 1986 has, through its Australian subsidiary, sold them in Australia. Fallshaw is the family company of a Mr Robert Fallshaw, an Australian, and carries on business in Australia manufacturing and selling wheels, castors and other components, a business which it has carried on for approximately 30 years. Mr Fallshaw claims that Fallshaw is now the largest supplier of castors to the Australian market.
Prior to 1980, Flexello had manufactured castors and adaptors, using forged metal cones and later machined steel. Complaints from customers that the adaptors were loosening and the castors falling out led Mr Tooth, now a consultant with Flexello, to consider the making of a new plastic expanding adaptor. He considered the use of plastic for the cost advantage as well as for the added reason that the greater expansion quality of plastic permitted the possibility of reducing the range of adaptors to be manufactured (that reduction was ultimately from 10 to 3) so as to cover all common tube bore sizes. In January 1980 he produced an initial design for a plastic expander which worked in conjunction with a standard threaded steel bolt.
In coming up with this initial design, Mr Tooth considered other plastic expanders then on the market, namely an expander manufactured by British Castors and another by Steinco, a German manufacturer. The expanding element in the British Castors model was a hollow cylindrical nylon moulding, about 40mm long, split longitudinally at one side and with a groove down the opposite side to form a simple form of hinge. According to Mr Tooth, the only known disadvantages of this design were expense and difficulty of installation because there was no means provided to prevent the rotation of the nut in the tube. Also it had only a limited range of expansion. The Steinco model used identical moulded nylon collets mounted back to back, opened by a dished and tapped pressed-steel washer at the top and a matching untapped washer at the bottom. Again, there was no way of preventing rotation of the top washer in the tube as the bolt is tightened and as such it was necessary to adjust the expander before insertion. In addition, the tips of the collets only came into contact with the tube bore and this placed very high stresses on the collets and led to a high failure rate.
Despite the fact that the initial design was available in 1980, it was not until early 1984 that Flexello formally set about developing a plastic expander. According to Mr Tooth the delay came about because:

"...the board of directors (of Flexello) were not at that stage, interested in making a change for the sake of getting a range of expanders, a wide range of expanders."

Between 1980 and 1984 Mr Tooth continued to modify the initial design making a series of prototypes. On 24 January 1984 Mr Tooth prepared a report on a new range of plastic expanders and this was presented to a meeting of the product marketing committee of Flexello held on 25 January 1984. In preparing this report Mr Tooth says that he had little regard to his early testing and attempted to produce a completely new design as at January 1984. The report contained a number of drawings which were made into prototypes and then tested.
The male or inner cone (the nut) on this original prototype was moulded in two halves. Subsequent testing revealed that distortion was a major problem with the cone in this form and as such it was ultimately changed to a solid cone in conjunction with a threaded insert.
One of the problems which concerned Mr Tooth from the inception of the project was the possibility of thread-stripping of the plastic components. A single-start thread (where the lead is equal to the pitch) which was used on the existing range could provide the correct tension to lock the expander safely in the tube, but to do this required very little torque and as such the possibility of overtightening by fitters, who were used to tightening steel nuts and bolts, existed. Mr Tooth's initial response to this was to reduce the size of the head on the bolt so as to reduce the leverage that could be exerted. Further testing revealed that a better solution could be found by increasing torque through the use of a multi-start thread on the bolt. Minutes of meetings of Flexello's Research and Development Committee held through 1984 and 1985 reveal that the company considered bolts with a single-start coarse pitch as well as two, three and four-start threads (i.e. bolts which had leads two, three and four times their pitch respectively). In mid-1985, a 10mm three-start bolt was specified and the overall specification for the adaptor was finalised some time around September/October 1985. An application for patent was filed in England on 3 October 1985, the priority date claimed in the Australian patent.
According to Mr Tooth, the device as finally patented comprised a number of novel aspects.

1. Glass-filled nylon components - the principal advance being the greater flexibility offered than metal.

2. Three-start thread - offers increased torque for a given tension over a conventional (single-start) thread, thereby reducing the possibility of overtightening and hence stripping of the nut. In addition, it enables the male cone to screw down more quickly.

3. Asymmetrical slots - this enables the outer sleeve to grip the tube for the full length of the sleeve as only the thin segments flex.

4. Snap fit of lugs into slots - enables the adaptor to be sold as one unit as well as setting the minimum expansion of the adaptor prior to fitting, thereby preventing the adaptor inadvertently being fitted into a tube with a bore size below the specified minimum.

5. The arrangement of the protrusions or lugs - designed so as to enable the inner cone to track along the sleeve when tightened and not to rotate.

Flexello, through its Australian subsidiary, markets both square and round adaptors in three sizes, making a total of six adaptors in their range. It is claimed by Flexello that the square adaptor marketed by Fallshaw infringes each of the claims of the Flexello product. On the other hand, it is agreed that the round adaptor marketed by Fallshaw has symmetrical slots, not asymmetrical, and as such will not infringe claim 3 of the Flexello patent.
The development of the Fallshaw adaptor, according to Mr Fallshaw, came about for reasons different to the development of the Flexello adaptor in the U.K.
According to Mr Fallshaw, he first manufactured plastic expanders using dual plastic cones and sleeves during the mid-1970s. In the late 1970s, glass-reinforced nylon was used and since 1981 all Fallshaw expanders have had at least one part glass reinforced.
Since 1983, Fallshaw has marketed a range of 18 expanders which consist of an outer sleeve which is drawn down over an inner cone fitted to the vertical stem of the castor. In his affidavit, Mr Fallshaw stated that following requests from distributors, and to increase manufacturing efficiency, he decided to redesign the range of castors to allow for a standardised fitting, which could be fitted to each of the three ranges. In cross-examination, however, Mr Fallshaw admitted that customer complaints with respect to failure of his products were another reason for the need to redesign. One particular company, Joyce Industries, switched from Fallshaw to Flexello because, inter alia, the Flexello castor had a better breaking system and the Fallshaw adaptors tended to work loose.
It was early in 1991, according to Mr Fallshaw, that he set about designing the new expander device. The new device was to have the following features:

"a. A bolt that was 12mm where it went through the mounting hold and for some millimetres into the fitting, and a thread form which did not weaken the strength of the pintle. b. An outer sleeve, split in the German manner, and stronger than Flexello. c. An inner cone which was internally threaded to suit the bolt, and which was of a solid construction (not hinged). d. Retention of the remainder of the good features of the 1983 design."

Fallshaw had not previously used internally threaded parts and as such Mr Fallshaw looked to text books for guidance. One requirement indicated in these books in relation to moulded threads, was the need to quickly remove them from the mould. Failure so to do would lead to different cooling rates along the thread leading to distortion over time. Hence, the use of a three-start thread.
According to Mr Fallshaw, he was one of a group of Fallshaw employees involved in the design of the new adaptors. The group had in front of them a number of samples of adaptors then on the market, including the Flexello range. One such product was the "Shepherd Castor" manufactured by Consolidated Castors Pty Ltd and which was patented in Australia in 1972. It was by looking at this invention that Mr Fallshaw thought of the idea of having lugs on the inner cone to prevent twisting when tightening. A further advantage of the lugs is that they snap into the slots on the outer sleeve thereby allowing the device to be sold as one unit. Mr Fallshaw decided to use a solid internal cone rather than the hinged nut used in the Sheppard castor and this gave him the option of using four lugs rather than two. The initial prototype tested had two lugs but was found to be not strong enough. A split mould had to be used in the manufacturing process, being a two part or four part mould. To use a four part split mould, according to Mr Fallshaw, would be too complicated and expensive. Faced with the need for four protrusions and the use of a two part split mould, the logical design of the protrusions was to have radial faces supported by oblique faces because to design otherwise and put a protrusion on the part line would, in the words of Mr Fallshaw, "be bad tool design" and would lead to flashes developing. The flashing would make it difficult for the inner cone to snap fit into the outer sleeve. As a matter of manufacturing necessity therefore, the arrangement of the lugs or fins on the Fallshaw device was identical to that on the Flexello product.
The design characteristics of the outer sleeve were a modification of what had become known as "German sleeves", so named after the German manufacturers Tente, Rhombus and Steinco who first used them. German sleeves are characterised by there being a number of slots in the sleeve as distinct from one slot which had previously been used. The slot design on the square adaptor marketed by Fallshaw is identical to that on the Flexello. The slot design on the Fallshaw round adaptor is different. Mr Fallshaw explained this by saying that you cannot put symmetrical slots around a square fitting. In relation to the round adaptor, Mr Fallshaw said that he was aware Flexello adaptors had a tendency to snap at the thin end of the outer sleeves and as such he was conscious of strengthening this area in his design. As a matter of "commercial courtesy", Mr Fallshaw adopted symmetrical slots on the round expander because, in his view, it did not matter whether the sleeves were symmetric or asymmetric and to copy the Flexello design would unnecessarily harm them or stir them up.
By June of this year, Fallshaw had manufactured its new range of expanders and had distributed promotional material to suppliers predicting a release date of early July. The present proceedings intervened, however, and as such there have been no substantial sales of the Fallshaw expanders.

The principal evidence, as one would expect, was given by the inventors of the respective products, Mr Tooth on behalf of Flexello and Mr Fallshaw on behalf of the respondent. This evidence, as described above, was concerned with the need to design a new range as well as the development of the products. In addition, both sides adduced expert evidence.
The respondent called three experts. First, Professor La Brooy, an Associate Professor in Manufacturing Systems Engineering at the Royal Melbourne Institute of Technology, gave evidence on the engineering principles behind the expander device. In his opinion, the elements of the Flexello expander were already present in October 1985 in the Tente and Rhombus devices, the Shepherd Castor and the 1982 Fallshaw series. The concept of drawing an internal cone into an external cone so as to produce expansion had been known for 20 years, the Tente and Rhombus devices used "German Sleeves" the principle behind the slots in the Flexello, and the Shepherd Castor had fins or protrusions which limit rotation of the inner cone. Professor La Brooy doubted that the use of a three-start thread would reduce applied torque and hence prevent stripping.
Second, evidence was given by Mr Stones, a mechanical engineer and plastics design consultant, which was directed at the characteristics and uses of multi-start thread bolts. The use of a single-start thread in an expander gives the operator less sensitivity when tightening and hence may result in overtightening and stripping. A multi-start thread, on the other hand, gives the operator the impression that the bolt is tight through greater torque and is much quicker to screw in. Finally, Mr Noonan, a patent attorney, undertook a comparison of the Flexello and Fallshaw products indicating that, in his opinion, the only feature of the Flexello product not disclosed in the patent specification for the Shepherd castor was the multi-start thread. Mr Noonan was not cross-examined but in assessing his evidence, together with that of the other experts, it must be borne in mind that the question of whether a patentable invention is novel or obvious is one for the court and one on which no expert can give direct evidence; see Collier v Foskett (1990) 19 IPR 44 at 50 per Gummow J.
For Flexello, evidence was given by both academics as well as persons experienced in the day to day use and fitting of the expander devices in question. Richard Frost, the head of the Machine Systems Design Programme in the School of Mechanical and Industrial Engineering, University of New South Wales, gave evidence in relation to the features that make up the Flexello expander. According to Mr Frost:

"... for a multi-start thread applied to a cone-type expander device as its forcing means, at any particular level of applied torque there will be less axial crushing force applied to the expander cones and there will be less tendency to strip the threads than would be the case for a corresponding single start thread."

He said that faced with the problem of thread-stripping, one could look to either a multi-start thread or a single-start thread with a longer lead. The use of the multi-start thread with glass filled nylon was new as it recognised that the incomplete fill in the plastic components would lead to deformation of the plastic nut when tightened causing it to grip the thread of the bolt and provide a secure fit. This combines what were originally thought of as two negative features into a positive feature.
Dr Stark, a plastic moulds expert, gave evidence to counter the suggestion of Mr Fallshaw that it was a moulding problem that led to his using a three-start thread in his device. According to Dr Stark, no plastic would be so brittle as to have its strength substantially affected by time of withdrawal from the mould. Faced with the criteria of fast withdrawal from a mould, Dr Stark suggested that the solution that would first appear to engineers would be to use a large coarse thread form and that given the criteria made known by Fallshaw it is remarkable that he arrived at an identical thread form to Flexello.
In cross-examination, Dr Stark agreed that the use of a steel bolt with a plastic nut would immediately alert an engineer to the problem of thread-stripping which would require a fine thread and that a coarse pitch thread would not be appropriate. If the sole criteria were preservation of the bolt, three solutions would appear, either multi-start, single-start or single-start where lead is greater than pitch (self-tapping screw). If thread-stripping is the problem, the best of the three would be the single-start, lead greater than pitch. If thread-stripping is not to be considered and removal from mould is the sole criteria, Mr Stark agreed that a multi-start thread would be preferable or a single-start thread where lead exceeds the pitch (self-tapping screw).
Mr Whitelaw, a design consultant with 20 years' experience in the use of institutional (heavy duty) castors and experience in the design of moulded plastic products, gave evidence as to the features of the Flexello product. Faced with the problem of thread-stripping, Mr Whitelaw said he would not use a multi-start thread, but would use an acme thread which is a more rounded threadform allowing glass fibres to penetrate into the tips of the thread thereby preventing deformation during tightening. In cross-examination, he admitted he probably would have also considered the multi-start thread.
The final witness was Mr Meerwald, the former head of Joyce Industries, the company that used Fallshaw Castors in the early 1980s but switched to Flexello because of reliability problems with the Fallshaw range. Mr Meerwald recounted the problems that existed with the early Flexello and Fallshaw adaptors and with the 1982 Fallshaw range. Mr Meerwald was aware of the products marketed by Tente, Rhombus and Consolidated Castors (Shepherd), although he did not recognise any of their catalogues.
Credibility of Mr Fallshaw
Counsel for the applicant submitted that I should not accept Mr Fallshaw's evidence that his use of the three-start thread was brought about by the need to remove the plastic threaded nut from the mould quickly so as to prevent differential cooling and hence weaknesses. It was submitted that this was a post facto rationalisation on the part of Mr Fallshaw and that the failure to call other members of the design team led more readily to this inference.
In addition to the expert evidence suggesting that no moulding problem existed, reliance was placed by the applicant on a videotape prepared by Mr Fallshaw prior to the start of the present proceedings and received in evidence in which Mr Fallshaw compared the characteristics of single-start and multi-start threads. According to Mr Fallshaw, he prepared this video to show to his salesmen to allay any fears that they may have had as to the relative strength of single-start and multi-start threads as apparently the salesmen had been dismissive of the use of multi-start threads on the Flexello product for a number of years.
Counsel for Mr Fallshaw, on the other hand, submitted that Mr Fallshaw never at any stage denied that he had a sample of the applicant's product, among others, with him when he designed his product. Mr Fallshaw had, it was submitted, answered all the questions truthfully and forthrightly. It may be noted that it was never put to Mr Fallshaw whether he realised that thread-stripping would be a problem.
The relevance of the credibility of Mr Fallshaw lies in the fact that if I accept his evidence as to the process by which he came to use a three-start thread, the fact that two engineers faced with different problems came up with the same solution leads more readily to the conclusion that the device patented by Flexello involved no inventive step.
Counsel for Mr Fallshaw submitted that I should find that Mr Fallshaw arrived at his end product independently of, and uninfluenced by, the Flexello product. On the other hand, counsel for Flexello submitted that Mr Fallshaw deliberately copied the Flexello design. There is, however, a middle course open to me. I have had the opportunity of observing Mr Fallshaw in the witness box. He gave his evidence, in my opinion, truthfully. He is clearly a person knowledgeable in his field and I do not believe that he consciously copied the Flexello product. Equally, however, it must be acknowledged that he was conscious of the Flexello product, just as he was conscious of other competitive products and the knowledge gained from seeing the product could hardly have played no part in the ultimate solution arrived at, even if the role of the Flexello product was, in this process, unconscious. But that is not to say that Mr Fallshaw deliberately copied his competitor's product.
The Law
The principal objections to the validity of the Flexello patent were lack of novelty and want of subject matter (inventive step) or obviousness.
Over the course of this century there has been a continual debate as to the overlap between novelty and obviousness, in particular the relevance of lack of inventiveness to an action opposing the grant of a patent or seeking revocation of a patent from the register on the grounds of lack of novelty. A number of early High Court cases held that inventiveness is required to establish novelty or at the very least may be considered under a plea of want of novelty; see Linotype Co Ltd v Mounsey (1909) 9 CLR 194; McGlashan v Rabett (1909) 9 CLR 223; Stamp v W.J. Powell Pty Ltd (1918) 24 CLR 339; Henry Berry and Co Ltd v Potter (1924) 35 CLR 132; Gum v Stevens (1923) 33 CLR 267; Griffin v Isaacs (1942) 12 AOJP 739, (1938) 12 ALJ 169. These cases have most recently been discussed in the full court of this court in Werner v Bailey Aluminium (1989) 25 FCR 565. In this case Lockhart J, recognising that the High Court cases were all decided under the 1903 Act which provided no separate ground for opposition to a patent on the ground of obviousness, concluded (at 582) that there is a line of demarcation between novelty and invention but not a very clear one and that:

"in considering an objection to an application for a patent on the ground of want of novelty it is permissible to take into account whether the alleged invention appears to be wholly lacking in subject matter or invention or is a clear case of manifest absence of invention or a case of an invention which is so obviously trivial as to contribute nothing of worth to common general knowledge."

Gummow J. (with whom Jenkinson J. agreed) took a somewhat different view, concluding (at 601-2):

"A distinction is drawn in the terms of the legislation between novelty and obviousness, both as to opposition and as to revocation ... In my view, in construing the grounds of opposition under the present Act it is not an element in the objection on the ground of lack of novelty that whilst there was no anticipation in the necessary sense, nevertheless the difference in the two is to be disregarded because to come from the alleged anticipation to the alleged invention would not have involved the exercise of inventive ingenuity in the light of common general knowledge."

It must be remembered that Werner v Bailey Aluminium was concerned with opposition to the grant of a patent not, as here, revocation. In any event, it is not necessary for the purposes of this case to investigate the overlap any further as counsel for the respondent conceded that if he was unsuccessful on the ground of obviousness he would be unlikely to succeed on the ground of lack of novelty.
Obviousness
In considering whether a patent should be revoked on the ground of obviousness, it is necessary to ask:

"...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."

See Wellcome Foundation v V.R. Laboratories (1981) 148 CLR 262 at 270 per Aickin J. His Honour had earlier discussed the applicable principles in his judgment (with which Barwick C.J., Stephen, Mason and Wilson JJ. agreed) in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 258 at 293 (the 3M Case) as follows:

"An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of integers out of, perhaps many possibilities, which must be shown to be obvious."

Reference may also be made to the judgment of the full court of this court in Allsop Inc. v Bintang Ltd (1989) 15 IPR 686 at 700 ff.
The common general knowledge referred to is that which exists in Australia; it is irrelevant what the common general knowledge overseas is. In this respect the position under the 1952 Act contrasts with that existing in the United Kingdom and also that that will prevail in Australia under the 1990 Act; see s.7 and sch.1 to the 1990 Act.
The cases have emphasised that the relevant worker against whose efforts the alleged invention must be tested, must be taken to be uninventive although he must be assumed to be skilled in the relevant art. He is sometimes referred to as the "unimaginative skilled technician"; see Graham Hart v S.W. Hart (1976-8) 141 CLR 305 at 330 per Aickin J. although he may be a "highly qualified technologist in the research department of a manufacturing company"; see Martin Engineering v Trison Holdings (1988) 14 IPR 330 at 351 per Burchett J.
The relevant date at which to assess the common general knowledge is 3 October 1985. At this time it can be accepted that there were a number of problems with the expanders then on the market, the most prominent of which were the fact that they required regular retightening and also each manufacturer had to carry a large number in the range in order to satisfy the standard tube bore sizes.
There were on the market at this time products of a number of other manufacturers which, it was said, disclosed all the relevant integers claimed in the Flexello patent. Tendered in evidence were catalogues of three manufacturers, namely Tente, Rhombus and Shepherd showing their ranges at the time. These catalogues came from Mr Fallshaw's private collection. Mr Meerwald, when shown the catalogues, said that he was unable to say whether or not he had previously seen them, but said he was aware of the products marketed by those companies in Australia at that time. One would expect, as a minimum, that the non-inventive worker in the field would be aware of the products then on the market. This awareness would, in my opinion, extend if it be relevant, to the patent specifications for those products including Australian Patent No. 475243 which was granted to Consolidated Castors Pty Ltd in 1972 in respect of the Shepherd Castor.
Another product said to be available as at the relevant priority date was the Steinco Castor. The evidence surrounding its availability is rather patchy. Apart from Mr Fallshaw, the only witness to recognise the Steinco castor was Mr Tooth who said that he became aware of the product in the United Kingdom in the late 1970s. He gave no evidence as regards its availability in Australia. The evidence of Mr Fallshaw was initially that he had received the product "some time in 1985" although he ultimately agreed with a proposition of his counsel that he received it "early in 1985". There is thus some evidence, albeit of only one person, that the Steinco product was available in Australia as at the priority date. Although not relevant to the outcome, I am prepared to accept,for the purposes of this case, that the non-inventive worker equipped with the common general knowledge in the field as at 3 October 1985 would have been aware of the existence of the Steinco Castor.
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 as had the process of injection moulding of plastic components. 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.
The issue of obviousness must be assessed in relation to each claim in the Flexello patent because, as the Act makes clear, the fact that one claim is found to be invalid does not render all others contained in the complete specification invalid; see s.157 of the Act. This is particularly relevant in the present case for the reason that if only Claim 3 of the patent is upheld then the round expander device of Fallshaw will not infringe. Otherwise, it was agreed between the parties that if Claim 1 of the patent is upheld both the square and round Fallshaw expanders infringe. It will still be necessary, however, to consider all the claims to determine whether or not any should be revoked. I shall deal firstly with Claim 1.
Claim 1 has been set out in full above. Seven integers can be identified:

(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 elongate externally threaded member, engaged in a complimentary axially extending tapped bore in the expander member; i.e. a threaded bolt engages 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.

Counsel for the respondent submitted that the non-inventive worker would have been aware of the need to redesign the existing range. Faced with this need he would have looked at what was on the market and have seen the Shepherd Castor and associated patent No. 475243 as well as the Tente and Rhombus expanders. This would have disclosed the first six integers of Claim 1. The use of plastic in combination with a metal bolt would have posed the problem of thread-stripping or alternatively the need to remove plastic parts from the mould quickly so as to preserve strength of the part would have presented itself. Knowing full well the characteristics of multi-start threads, the non-inventive worker would have immediately adopted a multi-start thread as the obvious solution.
In making this submission, counsel for the respondent placed significant reliance upon one particular piece of cross-examination of Mr Tooth which proceeded as follows:
Counsel: "All of the features of a multi-start thread were

known long before the middle of 1985 to engineers, weren't they?"

Mr Tooth: "Maybe, but..."

Counsel: "Your decision was that the multi-start was the best

of the available options you were seeking to achieve."

Mr Tooth: "To the best of my knowledge it was the only option." Counsel: "No competent engineer would have reached any

different conclusion from yours in 1985 confronted with the same problem, would he?"

Mr Tooth: "No comment."

... Counsel: "Well, won't you agree with me any organisation with

engineers of the same competence as yours confronted with the same problem would have come up inevitably with exactly the same answer?"

Mr Tooth: "Yes."

It was thus submitted that any non-inventive worker could have come up with the Flexello expander.
Counsel for the applicant, on the other hand, whilst disputing the obviousness of each of the seven integers of Claim 1, placed reliance upon the necessary level of inventiveness required to sustain a patent, especially a combination patent. So, it has been said that only a "scintilla of inventiveness" is needed: see Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at 248 per Aickin J. The applicant characterised the respondent's case as an ex post dissection of the Flexello invention and pointed out that such an analysis has often been frowned upon by the courts. Particular reliance was placed on the remarks of Aickin J. in the 3M Case where his Honour said (supra at 294):

"It is pointless to say, as some witnesses did in the present case that given the description in the claims in the patent they could with the aid of some prior specifications have produced the end product. This is an extreme example of the ex post facto dissection of an invention which has been vigorously criticized in many courts."

The remarks of Lord Diplock in Technograph Printed Circuits Ltd v Mills and Rockley (Electronics) Ltd (1972) RPC 346 at 362 also bear repeating:

"... Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay that in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."

See also Terrell on the Law of Patents, 13th Ed. 1982 at 136-7.
It was said by the applicant that the cross-examination of Mr Tooth set out above involved just such an ex post facto dissection. To put to a witness whether, when faced with a particular problem, a non-inventive worker in the same field would have come up with the same answer, it was submitted, was applying the wrong test. The target must first appear to the non-inventive worker before he can be said to be aware of the problems associated with reaching that target. 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.
In my opinion, the submissions of the applicant are correct. 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. In the words of Aickin J. in the 3M Case (supra) at 293, the:

"...prior existence of publications revealing those integers, as separate items and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."

But it has not been shown here that the selection of the integers out of the many possibilities was obvious. At the very least the expert evidence establishes that nobody would think it obvious to use a three-start thread, at most it was one of a number of options. In so finding I am mindful of the fact that it is only a small inventive element that is needed and that where an imaginative leap (even if only a small one) is required to perceive the application of known techniques to a new area, there will be invention.
It is the entire combination of the features of the Flexello device that are not obvious. It cannot be said, to paraphrase the words of Aickin J. in Wellcome Foundation (supra at 286), that as a matter of routine the hypothetical addressee would have taken the steps that led from what was known to the Flexello device.
A useful metaphor can be found in the judgment of Buckley L.J. in Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261 at 296, viz:

"To reach the discovery of the particular characteristics of Amoxycillin and its suitability for treating humans the research worker would have had to embark upon a voyage of discovery. It is possible now to see that his voyage would have been short and perhaps uneventfully straight forward, but where each of his two, or possibly more, vessels would make landfall and what those places would be like would not have been obvious to him at the outset. The voyage might have been clearly worth trying but not as a means of reaching a specific hoped-for destination."

It follows that I am of the view that Claim 1 is not obvious and does involve an inventive step. Claims 2-10 are all expressed so as to incorporate the device patented in Claim 1. As Claim 1 is not obvious, so too must be Claims 2-10 as the suggestion that any one of Claims 2-10 are obvious involves, as a threshold issue, Claim 1 being obvious which is not so. Accordingly, Claims 2-10 are, in my opinion, not obvious.
Novelty
The test for the revocation of the grant of a patent on the ground of want of novelty is often described as the reverse infringement test. The formulation most often relied upon is that of Aickin J. in Meyers Taylor Pty Ltd v Vicarr Industries (supra 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 ...".

Lack of novelty looks to whether the invention has already been made public as at the priority date.
In the case of anticipation by way of prior publication:

"Whatever is essential to the invention must be read out of or gleaned from the prior publication ... the prior publication must disclose all of the integers with the possible exception of the substitution of `mechanical equivalents to perform analogous purposes'."

See Nicaro Holdings Pty Ltd v Martin Engineering (1990) 16 IPR 545 at 549 per Lockhart J.
It is well accepted that it is not generally permissible to make a "mosaic" of, or to read together, various pieces of the prior art for the purposes of assessing novelty. As Aickin J. said in the 3M Case (supra at 292-3):

"The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process."

See also Nicaro Holdings (supra) at 558 per Gummow J.
In the case of a combination patent the prior publication must disclose all of the integers of that combination, it is not sufficient if it discloses only some: see Nicaro Holdings (supra) at 559 per Gummow J.
When addressing the issue of novelty it must also be remembered that if a device is what is known as a mere "workshop improvement" on a device previously published, novelty will not exist. In the words of Fox J. in Dennison Manufacturing Company v Monarch Marking Systems Inc (1983) 76 FLR 200 at 209-10 (quoting Dixon J. in Griffin v Isaacs (1938) 12 ALJ 169):

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty. ...This statement encompasses what are commonly called workshop improvements."

But, it is only when you have a very clear case of what is in effect a mere workshop improvement that there is an absence of invention sufficient to support an objection on the ground of want of novelty. See Werner v Bailey Aluminium (supra) at 583 per Lockhart J.
Counsel for the respondent submitted that the patent specification No. 475243 for the Shepherd Castor anticipated all of the elements of Claim 1 of the Flexello patent save for the use of a multi-start thread which was said to be a mere workshop improvement. A bolt is a bolt, it was said. It is arguable whether the Shepherd Castor adequately discloses all of the first 6 integers in Claim 1 of the Flexello patent, bearing in mind that the anticipation must be in clear, unequivocal and unmistakable terms. Even if it did I am of the opinion that the use of a three-start thread is not a mere workshop improvement on the prior art. No expert said they had thought to use it in this area. Accordingly, I am of the opinion that Claim 1 of the Flexello Patent is novel. As with obviousness, this has the result that Claims 2-10 are also novel.
The final submission of the respondent relied on s.40(2) of the Act in that it was claimed that Claim 3 of the patent was not "clear and succinct and ... fairly based on the matter described in the specification." It was said that to say "slots arranged assymetrically (sic)" without providing a point of reference to which symmetry is to be judged was not clear and succinct and accordingly a later manufacturer would not know by looking at Claim 3 whether his product would infringe the patent. The short answer to the point is that it was not pleaded and no application was made by the respondent to amend their particulars of invalidity. The only reference in the particulars of invalidity to s.40 was in relation to the reference in Claim 6 to "moving means". However, counsel for the respondent disavowed reliance on the complaint relating to Clause 6. No request was made to amend the particulars of invalidity and accordingly this claim must also fail.
It follows from what I have said that Claims 1-10 of the Flexello patent are valid and have been infringed by the respondent's production of their devices. Accordingly, the application is upheld and the cross-claim dismissed.
The injunction granted by Morling J. on 12 August 1991 restraining Fallshaw from infringing the applicant's letters patent, should accordingly be made permanent. The respondent should pay the applicant's costs.
I will adjourn the proceedings to a date to be fixed to hear evidence on the question of damages should the claim for damages be pressed.

[1991] FCA 824

18 DECEMBER 1991