Freeman v TJ and FL Pohlner Pty Ltd - [1994] FCA 1013

PETER DOUGLAS FREEMAN and FREE-ROLL PTY LIMITED v. T.J. AND F.L. POHLNER PTY
LIMITED and TREVOR JOHN POHLNER
No. SG65 of 1994
FED No. 1013/94
Number of pages - 11
Patents
(1994) 30 IPR 377

COURT

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
BLACK CJ, GUMMOW AND O'LOUGHLIN JJ

CATCHWORDS

Patents - revocation - want of novelty - meaning of term "adjoining" - skilled addressee - requirement that complete specification "describe the invention fully" - best method of performing invention.

Patents Act 1952, s. 40
Patents Act 1990, s. 40, s. 233 (1) and (4)

Welch Perrin and Co. Pty Ltd v Worrel (1961) 106 CLR 588 Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd (1980) 144 CLR 253
Martin v Scribal Pty Ltd (1954) 92 CLR 17
Kauzal v Lee (1936) 58 CLR 670
Adhesives Pty Ltd v Aktieselskabet Dansk Gaerings-Industri (1935) 55 CLR 523
Natural Colour Kinematograph Co. Ltd (In Liquidation) v Bioschemes Ltd (1915) 32 RPC 256
C.Van der Lely NV v Bamfords Ltd (1963) RPC 61

HEARING

ADELAIDE, 28 November 1994
#DATE 20:12:1994

Counsel and Solicitors Mr D.K. Catterns QC and
for the Appellants: Miss L.J. King instructed

by Stratford and Co.

Counsel and Solicitors Mr R.C. Macaw QC and
for the Respondents: Mr B.J. Hess instructed

by Fisher Jeffries.

ORDER

THE COURT ORDERS THAT:

(1) The appeal be dismissed.

(2) The appellants pay the costs of the respondents of the appeal.

(3) The stay on the execution of order 3 made by Branson J on 1 September 1994 be removed.

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

JUDGE1

BLACK CJ, GUMMOW AND O'LOUGHLIN JJ The first appellant ("Mr Freeman") is proprietor of standard patent No. 593354, for an invention entitled "Improvements relating to Road Making Apparatus" ("the Patent"). The Patent was sealed on 18 May 1990, that is to say whilst the Patents Act 1952 ("the 1952 Act") was in force and before the commencement of the Patents Act 1990 ("the 1990 Act"). The 1990 Act commenced on 30 April 1991.

Sub-section 233 (1) of the 1990 Act provides that this statute applies in relation to a patent granted under the 1952 Act as if granted under the 1990 Act. However, sub-s. 233 (4) provides that objection cannot be taken to validity of a patent granted under the 1952 Act, and such a patent is not invalid, on a ground which would not have been available against it under the 1952 Act. The result is that in a case such as the present the patentee is not to be worse off than if the 1952 Act had continued in operation, but that the patentee may be better off if the 1990 Act treats as no longer applicable what was previously a relevant ground of revocation.
By proceeding commenced in this Court on 11 August 1993, the appellants sought relief in respect of…

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.

Keep reading for free

Create a free CaseChat account to read Freeman v TJ and FL Pohlner Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1994] FCA 1013
Decision Date: 20 DECEMBER 1994

CaseChat Overview and Summary

In the case of Freeman v TJ and FL Pohlner Pty Ltd, the dispute centred on the validity of a patent granted to the defendants, Pohlner. The plaintiff, Freeman, sought to have the patent revoked on the basis that it lacked novelty and did not fully describe the invention as required by the relevant legislation. The case was heard and determined in the Federal Court of Australia. The plaintiff argued that the term "adjoining" in the patent did not adequately describe the invention, and that the defendants had not disclosed the best method of performing the invention. The defendants contended that the patent was valid and that the term "adjoining" was clear and sufficient. The court was required to determine whether the patent was valid and whether the plaintiff's arguments had merit. In delivering the judgment, the court found that the term "adjoining" was clear and unambiguous when considered in the context of the complete specification. The court held that the skilled addressee would understand the term to mean "next to or in contact with". The court also found that the defendants had disclosed the best method of performing the invention, as required by the legislation. Accordingly, the court dismissed the plaintiff's appeal and ordered that the defendants were entitled to costs. The court also removed the stay on the execution of a previous order made by Branson J. This decision highlights the importance of clear and precise language in patent specifications and the need for patentees to disclose the best method of performing the invention.

Orders

Orders of the court

THE COURT ORDERS THAT:

(1) The appeal be dismissed.

(2) The appellants pay the costs of the respondents of the appeal.

(3) The stay on the execution of order 3 made by Branson J on 1 September 1994 be removed.

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

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.