Garford Pty Ltd v DYWIDAG Systems International Pty Ltd

In the matter of Garford Pty Ltd v DYWIDAG Systems International Pty Ltd, the parties were engaged in a dispute regarding the validity and infringement of certain patent claims. The central issue before the court was whether the claims in question involved an inventive step, as required by the Patents Act 1990. The appellant, Garford, sought to challenge the primary judge's findings that claims 5 and 6 would not have been infringed if valid, and that claims 1 and 7 to 10 would have been infringed if valid. Additionally, Garford contended that the primary judge erred in finding that claims 1, 5, 6, and 7 were invalid for lack of novelty and that claims 1 and 7 to 10 were invalid for secret use. The court had to examine the primary judge's analysis of inventive step, specifically whether it correctly assessed the obviousness of the combination of the claimed apparatus, rather than focusing on the individual components. Furthermore, the court needed to determine whether the primary judge adopted the correct starting point in assuming that the hypothetical skilled person would wish to create such an apparatus in the first place.

The court examined the primary judge's reasoning and concluded that his analysis was correct. The court found that the primary judge did not focus on the obviousness of individual components, but rather on the combination of components in the claimed apparatus. The court held that the primary judge's approach was consistent with the principles established in Doric No 2, Allsop Inc v Bintang Ltd, and Elconnex. The court also found that the primary judge's assumption that the skilled person would wish to create such an apparatus was not incorrect, as it aligned with the evidence provided by the inventor. Furthermore, the court held that there was no invention in the combination of components, as they were all well-known and understood processing steps for manufacturing bulbed cable. The court found that the primary judge's assessment of inventive step was accurate, and therefore, the primary judge's findings on the validity and infringement of the claims were upheld.

The court dismissed the appeal and ordered that the appellant pay 80% of the respondents' costs of the appeal, suspended for 14 days. Any party seeking a different costs order was required to file and serve a written submission within 7 days. The decision of the court confirms the importance of correctly assessing inventive step in patent cases, by focusing on the combination of components and the overall functionality of the claimed apparatus, rather than on individual components or assumptions about the skilled person's intentions. The court's decision also highlights the need for patent applicants to demonstrate a clear inventive step in their claims to ensure the validity of their patents.