General Transport Equipment Pty Ltd v Tytec Logistics Pty Ltd
[2015] APO 91
•23 December 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
General Transport Equipment Pty Ltd v Tytec Logistics Pty Ltd [2015] APO 91
Patent Application: 2008216958
Title:Trailer for hauling tyres
Patent Applicant: Tytec Logistics Pty Ltd
Opponent: General Transport Equipment Pty Ltd
Delegate: O L Haggar
Decision Date: 23 December 2015
Hearing Date: 7 September 2015 in Perth
Catchwords: PATENTS – opposition to the grant of a patent – entitlement – inventive concept – the identity of the person responsible for the inventive concept – whether the opponent derived sole or joint entitlement from the person responsible for the inventive concept – opponent found to be jointly entitled – no award of costs in the circumstances
Representation: Patent applicant: Ben Fitzpatrick of counsel instructed by Dr Mary Turonek of FB Rice
Opponent:Barry Newman of Armour IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008216958
Title:Trailer for hauling tyres
Patent Applicant: Tytec Logistics Pty Ltd
Date of Decision: 23 December 2015
DECISION
Tytec Logistics Pty Ltd and General Transport Equipment Pty Ltd are jointly entitled to the invention. Subject to any appeal, I allow a period of two (2) months from the date of this decision for Tytec Logistics Pty Ltd to request amendment of the patent request and notice of entitlement to reflect the finding of joint entitlement, following which I direct that the application proceed to grant in the name of both GTE Tytec Logistics Pty Ltd and General Transport Equipment Pty Ltd. I make no award of costs.
REASONS FOR DECISION
Background
Patent application 2008216958 was filed by Tytec Logistics Pty Ltd (Tytec) on 3 September 2008 with a claimed priority date of 4 September 2007. The application was advertised as accepted on 10 October 2013.
General Transport Equipment Pty Ltd (GTE) filed a notice of opposition to the application on 16 December 2013 and a statement of grounds and particulars on 6 March 2014. The only ground of opposition relied on by GTE is entitlement. Evidence in support was completed on 3 June, evidence in answer was completed on 3 September, and evidence in reply was completed on 14 October 2014. On 5 December 2014 Tytec requested that a notice to produce be issued to GTE. The parties were advised by a delegate on 30 January 2015 that the notice was considered unjustified. Tytec did not pursue its request any further. After a number of exchanges of correspondence regarding the availability of the parties to attend, the opposition was eventually heard in Perth on 7 September 2015. Tytec was represented by Ben Fitzpatrick of counsel instructed by Dr Mary Turonek of FB Rice. GTE was represented by Barry Newman of Armour IP. Brett Fennell, the sole inventor of record, and Robert Diss, an employee of GTE, also attended the hearing as observers. As it happens, Mr Fennell and Mr Diss are at the centre of the present dispute over entitlement.
Subject matter of the application
The application indicates that invention relates to a trailer, and in particular to a trailer for hauling tyres. The background to the invention is explained as follows:
“Transportation of large numbers of tyres is typically achieved by stacking several recumbent tyres on top of one another and securely tethering the stacks to a platform of a flat bed truck or similar low platform trailer. Height and width restrictions on haulage vehicles, however, mean that special permits must be sought for transporting outsize tyres for use on heavy vehicles such as construction and mining vehicles, particularly in instances where the outer diameter dimension (ODD) [of the] tyre is greater than the width of the haulage vehicle, and the haulage vehicle must consequently be accompanied by an escort, thereby leading to increased overall transportation costs.”
The invention aims to overcome at least some of these disadvantages. The invention is described in detail with reference to a number of drawings of which Figures 1 and 2 (reproduced below) are the most instructive.
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The trailer 10 shown in these drawings comprises a base frame 12 having a front end 14 and a rear end 16 and wells 20a, 20b between the front and rear ends and configured to support a number of tyres in an upstanding position. Each well comprises a tyre stillage 30 against which one or more adjacent upstanding tyres are supported. At least one of the wells may be additionally provided with a recess 28 to receive a broad diameter tyre.
Each tyre stillage 30 comprises a first elongate member 32 having a front end 34 and a rear end 36 in generally parallel alignment with the opposing sides 19 of the base frame 12, a substantially vertical elongate member 38 mounted on the first elongate member 32 generally equidistantly between its front and rear ends, and a pair of brace members 40 extending between the vertical elongate member 38 and the first elongate member 32. The front and rear ends 34, 36 of the first elongate member 32 are slidably coupled to respective front and rear sides 22,24 of the wells 20a, 20b.
In use the trailer 10 is loaded by first adjusting the position of the tyre stillage 30 to an appropriate position in its respective well 20a, 20b to define one or more subspaces having a width generally corresponding to the width of the tyre to be loaded. The tyre is then placed in the subspace in the well on its circumferential surface with the tyre side walls in parallel alignment with the opposing side walls of the trailer in a close facing arrangement with the tyre stillage. The trailer comprises one or more tensioning members (not shown) arranged in use to be inserted through a space defined by the upstanding transversely aligned tyres to facilitate lateral tensioning of the tyres against one another. Typically, the tensioning member bears against the vertical elongate member 38 of the tyre stillage.
The invention is broadly defined in the following terms:
“1. A trailer for hauling tyres comprising:
a base frame having a front end, a rear end, and opposing side walls with one or more wells disposed therebetween, each well being configured to support one or more tyres in an upstanding position, each tyre having a side wall is in [sic] generally parallel alignment with the opposing side walls of the base frame;
a tyre stillage against which one or more upstanding tyres are supported, the tyre stillage being translatable between the opposing sides of the base frame to define adjacent subspaces in the one or more wells in which the one or more tyres are received,
wherein the tyre stillage comprises:
a first elongate member having a front end and a rear end that is in generally parallel alignment with the opposing sides of the base frame;
a substantially vertical elongate member mounted between the front and rear end of the first elongate member;
and a pair of brace members extending between the vertical elongate member and the first elongate member.”The evidence has revealed that the invention the subject of claim 1 was developed in two stages: the “initial trailer design” which incorporated the feature of a translatable stillage member, and the “stage two design” which additionally incorporated the feature of one or more wells. For ease of understanding I will adopt the same terminology in this decision.
Statement of grounds and particulars
The statement of grounds and particulars identifies that the opposition is solely grounded on GTE’s alleged entitlement to the grant of a patent, either solely or jointly with Tytec:
“The nominated person Tytec Logistics Pty Ltd is either:
i.not entitled to a grant of a patent for the invention; or
ii.entitled to a grant of a patent for the invention only in conjunction with General Transport Equipment Pty Ltd.
Robert Diss is the actual inventor of the subject matter claimed in Australian patent number [sic] 2008216958. Mr Diss was at all material times an employee of General Transport Equipment Pty Ltd, and his rights vest in General Transport Equipment Pty Ltd.”
The evidence
Evidence in support consists of a declaration by Robert Diss dated 28 May 2014 (Diss #1) with
Exhibits RD-1 to RD-12. Evidence in answer consists of declarations by Brett Guy Fennell (Fennell) with Exhibits BGF-1 to BGF-6, and Paul Joseph Walker (Walker), both dated 3 September 2014. Evidence in reply consists of declarations by Robert Diss (Diss #2) with Exhibits RD-13 to RD-23, and Barry Moon (Moon), both dated 14 October 2014.
Tytec’s declarants
Mr Fennell and Mr Walker have both acquired considerable experience in the tyre industry, particularly in the field of off-the-road (OTR) tyres for use in mining and earthmoving vehicles. In December 2002 they co-founded Tytec Pty Ltd (TPL), the predecessor in title to Tytec. The main service provided by TPL (and later by Tytec) was and still is earthmover tyre repairs. In 2004, TPL expanded its business to include haulage and transportation of OTR tyres. It expanded further in 2007 into retreading of earthmover tyres. By 2009 the tyre haulage business of TPL had grown to the extent that Mr Fennell and Mr Walker established Tytec as a specialist OTR tyre logistics and storage provider.
GTE’s declarants
Mr Diss has been employed as a design engineer by GTE and its associated operating company, Makgen Holdings (Makgen), since 1997. Mr Moon has held the position of Sales Executive of GTE since December 2013. He was formerly director (sales) of GTE and Makgen when founded in 1979.
It is thus immediately apparent that all of the declarants are closely associated with one party or the other, and it also emerges that the evidence is in large part based on their recollection of events which took place some ten years before the present dispute arose, unaided in some instances by corroborating contemporaneous documentation. I have as a consequence treated the evidence of both parties with a degree of caution.
Relevant law
The categories of persons who may be granted a patent are set out in section 15(1). Accordingly, the primary person to whom a patent may be granted is the inventor; all other people derive title to the invention through the inventor. Relevantly for present purposes, section 15(1) makes a distinction between the inventor in paragraph (a) and a person who derives entitlement from the inventor such as through an employment relationship under paragraph (b).
The law governing disputes over entitlement was considered by the Full Court in University ofWestern Australia v Gray [2009] FCAFC 116; 179 FCR 346 (UWA). The Full Court at [253] cited with approval the steps identified at first instance by French J (as he then was) to be considered when assessing entitlement, namely:
- identify the “inventive concept” of the invention as defined in the claims;
- determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
- determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.
Before considering these steps in the context of the present dispute, there are some preliminary issues that require attention. First, Mr Fitzpatrick voiced the concern that the alternative claim to joint entitlement asserted in the statement of grounds and particulars had apparently been abandoned in GTE’s written submissions in which it presses for a finding that it is solely entitled to the invention. I do not share this concern as such since it is evident from the decision of the Full Court in Stack v Davies Shepard [2001] FCA 501 that even if I was not inclined to a finding of sole entitlement in GTE’s favour, the question of whether it is jointly entitled within section 15(1) would unavoidably then fall to be determined. This is because a patent for a joint invention could not be granted to Tytec alone (Stack at [21]). I would add that in the event Mr Fitzpatrick elected to verbally address the alternative claim to joint entitlement originally pressed by GTE despite my offer of doing so via written submissions filed after the hearing. Nevertheless, the concern raised by him may have a bearing on an award of costs.
Second, Tytec and GTE rely on the alleged original entitlement under section 15(1)(a) of Mr Fennell and Mr Diss, respectively, as the source of their rights in the invention. Clearly, then, my determination of who between them is an eligible person is critically dependent upon the true identity of the inventor.
The Full Court considered this issue in Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9; 165 FCR 527 where it formulated a number of propositions based on existing authority in various jurisdictions. These were conveniently summarised in Neobev Pty Ltd v Bacchus Distillery PtyLtd (Administrators Appointed) (No 3) [2014] FCA 4 at [108] (with references omitted):
“First, whether someone is properly described as a joint inventor is not determined by quantitative contribution, but rather, qualitative contribution. The contribution does not have to be equal to the other person’s and the key question is whether there has been a contribution to the invention. Secondly, in some cases it may be helpful to look to the claims and in some cases evidence may assist. It is important to look at what the invention is said to be. For example, a contribution to the construction of an apparatus may be sufficient where the invention is the apparatus and insufficient where the construction of the apparatus can be done by simply following the instructions in the specification. Thirdly, the key question is whether the person’s contribution had a material effect on the final invention. Fourthly, it is sometimes useful to approach the issue by asking who conceived the solution to a problem, but that will not always be so because not all inventions are susceptible to a problem and solution analysis. Fifthly, rights to an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions and if the final concept of the invention would not have come about without a particular person’s involvement, then that person has an entitlement to the invention. Finally, a person may be considered a joint inventor where they had a general idea of what was required, but someone else was required to put the ideas into effect and did so.”
The authorities examined in Polwood were further observed by the Full Court to draw a distinction between the conception of an invention and its verification or implementation (otherwise called “reduction to practice”). The same approach has been adopted in many Office decisions: see for example Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 where the delegate differentiated between the final concept of an invention as opposed to a preferred working embodiment of it.
For present purposes the key question is therefore whether Mr Fennell or Mr Diss contributed in any material way, either solely or jointly, to the conception of the invention. The question may otherwise be stated as would the invention have come about without the involvement of one or other of Mr Fennell and Mr Diss, or the two of them together.
Burden of proof
There is no disagreement between the parties that Dunlop Holding Ltd’s Application [1979] RPC 523 is well settled authority for the proposition that in a proceeding such as this GTE carries the legal burden of proof on the balance of probabilities. The Full Court in Grove Hill Pty Ltd vGreat Western Corporation Pty Ltd [2002] FCAFC 183 at 221 held that although decided under English legislation, this approach was entirely consistent with principle. However, as further held in Dunlop Holdings, the evidential burden may shift from time to time particularly where the relevant facts are likely to be within the exclusive knowledge of one party or the other.
I turn to consider the present dispute over entitlement.
The inventive concept
The inventive concept or “heart” of the invention is to be ascertained by reference to the specification as a whole including the claims. As stated in Polwood at [61]:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it.”
The parties have presented diametrically opposed views of the identity of the inventive concept. Tytec submits that the inventive concept is reflected in the initial trailer design alone and that the one or more wells did no more than put that concept into practical effect. For its part GTE has contended that as the initial trailer design had been in use before the priority date, the only inventive contribution came from the addition of the one or more wells.
I do not agree with either view. As said by Jacob J in Henry Bros (Magherafelt) Ltd v Ministry ofDefence and the Northern Ireland Office [1997] RPC 693 at 706 (cited at first instance in UWA at [1431]):
“I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination?”
On my reading of the present specification as a whole the inventive concept resides in a combination of elements, being the tyre stillage and the one or more wells or, in other words, the stage 2 trailer design. The broad summary of the invention set forth almost at the beginning of the specification notably includes “… one or more wells … configured to support the tyres in an upstanding position, each well having a tyre stillage against which one or more adjacent upstanding tyres are supported”, and the ensuing detailed description reinforces the clear impression thus conveyed that to achieve its stated objective the invention is critically reliant on the presence of both elements in combination. It is also important to note with regard to the position for which GTE contends that as made clear by the authorities, inventiveness is not relevant to a determination of the rights to an invention which instead, as stated for example by the Deputy Commissioner in CSIRO v Gilbert and Hazlewood [1995] APO 16; 31 IPR 67 at 72, involves “an objective assessment of the contribution simpliciter to the invention”. I therefore do not consider that either element can be disregarded, as the parties have in effect argued, as being immaterial.
Who was responsible for the inventive concept?
The initial trailer design
Mr Fennell deposes that as at December 2002 OTR tyres were conventionally transported on a flatbed trailer with the tyres lying flat on their side wall, stacked on top of one another. Such an arrangement is illustrated in the photograph exhibited as BGF-1. Although remaining stable during transport, the number of tyres that could be transported was limited due to their size. It was also time-consuming and awkward to load and unload the tyres onto the flatbed trailer, and could as a result lead to tyre damage which was a significant issue given the considerable cost of each tyre. Further, when OTR tyres with a large diameter and width are transported in the conventional manner, the load is considered “oversize” and consequently subject to special transport restrictions and conditions which result in higher transport costs and increased transport times.
Mr Fennell nevertheless says he was also aware of some limited instances where tyres had been transported in an upright position on their tread which complied with the then applicable road transport regulations and were easier to load and unload with forklifts. As best as can be determined Mr Fennell is here referring to the type of trailer shown in Exhibits RD-1and RD-2 in which the tyres appear to be supported by a fixed frame on the trailer. However, when transported in this way, the tyres had to be fastened to the flatbed with chains and removable poles to ensure their stability during transit.[1]
[1] Fennell at [17]
TPL did not at any relevant time own trailers for transporting OTR tyres.[2] As explained by Mr Fennell:
“Rather, it was the customers who transported their tyres to [TPL] for repair. Oftentimes, some tyres that were brought to [TPL] could not be repaired, adding to the customer’s costs and not resulting in additional business for [TPL]. I resolved that it would make commercial sense to develop our own purpose built trailers to carry tyres to and from the customer, with a tyre repairer on board to assess the customer’s tyres on site before bringing the tyres back to [TPL] for repair.”
[2] Fennell at [15], [48]
To this end it was recommended that Mr Fennell approach GTE, a leading supplier of customised transport equipment in Western Australia, to assist with the manufacture of a specialised OTR tyre trailer. Mr Fennell is adamant that the type of trailer illustrated in Exhibits RD-1 and RD-2 “is not what Tytec wanted.”[3] Mr Fennell and Mr Walker consequently met with Mr Moon in December 2003. According to Mr Fennell, he told Mr Moon at the meeting that he wanted a drop-deck trailer with a racking system which would hold multiple OTR tyres. He allegedly indicated that the tyres were “to be held vertically, that is with stillages (or towers) that you could stand the tyres up against.”[4] This is corroborated by Mr Walker[5].
[3] Fennell at [46]
[4] Fennell at [19]
[5] Walker at [14]
Mr Moon recalls a series of meetings in and around December 2003 and early January 2004 with Mr Fennell and Mr Walker, or with Mr Fennell alone, but states that he is not certain “which conversations occurred in which of these meetings.”[6] Notably, he makes no attempt to contradict Mr Fennell’s claim as to what he told Mr Moon about his trailer design requirements at their initial meeting in December 2003. Mr Moon does however confirm that he suggested that Mr Fennell discuss these requirements with Mr Diss who Mr Moon knew to have relevant expertise in designing trailers for particular purposes.[7] Mr Fennell and Mr Walker met with Mr Diss soon after.
[6] Moon at [4]
[7] Moon at [7]
There is little common ground between the parties on what transpired next. Indeed the parties cannot even agree on whether it was Mr Moon or Mr Diss who drew the analogy between Mr Fennell’s design requirements and a “tyre rack on a trailer”. It is convenient to mention here though that as I understand it the terms “tyre rack” and “tyre stillage” are synonymous.
Mr Fennell asserts that over the course of a number of meetings with Mr Diss he specified that it was essential for the trailer to include the following features:
- the tyres were to be transported in an upright manner on their tread;
- the tyres were to be supported in an upright manner on their tread by chocks;
- fixed rails had to be provided on the floor of the trailer, running between the sides of the trailer, for the chocks to be attached to;
- there had to be uprights (‘towers’ or ‘stillages’) for the upstanding tyres to lean against; and
- the upright [sic] had to be moveable across the width of the trailer to fit tyres of different widths on each side of the upright.[8]
[8] Fennell at [21]
This is corroborated by Mr Walker[9], but I must say it is again a striking feature of his evidence that he has recalled events using precisely the same language as Mr Fennell. This does not reflect well on the corroborative value of Mr Walker’s evidence. It also bears comment that the features of chocks and attachment rails specified by Mr Fennell do not on any view fall within the inventive concept. Leaving these observations aside, I note Mr Fennell’s further claim that he and Mr Walker “continually provided [Mr Diss] with input and feedback in relation to various aspects of the proposed trailer design.”[10]
[9] Walker at [16]
[10] Fennell at [23]
Mr Diss acknowledges that the suggestion of using chocks to restrain the tyres during loading and unloading came from Mr Fennell[11], but states that only two other features were specified by him:
- that the tyres were to be transported in an upright manner; and
- that there had to be frames for tyres to lean against.[12]
[11] Diss #1 at [9]; Diss #2 at [10]
[12] Diss #2 at [7]
The reference by Mr Diss to “frames” for supporting the tyres can in my opinion be correlated with his earlier evidence that upon becoming aware of the purpose of the trailer required by Mr Fennell, he suggested that:
“… rather than an outside rack, vertical support for the tyres could be mounted centrally to the transverse beams of the trailer. This means that tyres could be accessed directly from the side of the trailer, without the rack being in the way, or requiring removal during loading and unloading.” [13]
[13] Diss #1 at [4]
Further, and after asking how tyres were normally restrained during transit, Mr Diss says he suggested that the need for ropes could be eliminated “by adding a cross bar, like on a set of rugby goals, and secure the tyres to the cross bar.”[14] Mr Diss adds that the only feedback he recalls receiving from Mr Fennell were details of “operational preferences and requirements”. The little evidence I have from Tytec regarding the precise nature of these details suggests that they were mainly concerned with the height and weight measurements of the tyres to be transported.[15]
[14] Diss #1 at [7]-[8]
[15] Fennell at [22]; Walker at [18]
Mr Fennell has nothing more to say on this, but refutes Mr Diss’ evidence of what trailer design features had been specified during discussions held between them for the reason that it does not take full account of his “concept and instructions”.[16] Although by no means certain, it seems Mr Fennell had the feature of a moveable tyre support specifically in mind here. The largely unsubstantiated nature of the evidence dealing with this aspect of the initial trailer design has raised more questions than it answers. Mr Diss submits that he suggested that the tyre support be mounted such that it could be moved sideways, whereas Mr Fennell seemed to assume that the support would be welded in position.[17] Mr Fennell has steadfastly maintained that the idea was his and had arisen from the perceived need for the trailer to be able to accommodate tyres of different widths.[18] It would be surprising then if he did not mention this when briefing GTE. Whatever the case may be, there seems little doubt that the suggestion to use nuts and bolts to secure the support at various intervals, to be later discarded in favour of “trolley” assemblies,[19] came from Mr Diss.
[16] Fennell at [45]
[17] Diss #1 at [6]; Diss #2 at [8]
[18] Fennell at [48]-[49]
[19] Diss #1 at [20]
As noted by Mr Newman, the weight of evidence regarding the initial trailer design does not lie clearly on one side or the other. Nevertheless, ultimately I must resolve the question of inventorship of the initial trailer design and in this I am bound by whatever evidence has been put before me.
There is no dispute that Mr Fennell had the idea of transporting tyres on a trailer by supporting them in an upright position in mind when he and Mr Walker first approached GTE. Further, and in the absence of persuasive rebutting evidence, I am satisfied that Mr Fennell had not simply come up with “a vague idea or pipe dream saying wouldn’t it be nice if we could do such and such – but without any idea on whether ‘such and such’ can in fact be done or how it might be done” (per Floyd QC in Stanelco Fibre Optics Ltd’s Application (No 2) [2005] RPC 16). Instead the evidence suggests to me that this is a situation where Mr Fennell had a firm idea of what was required in the initial trailer design, but did not necessarily know how to implement that idea. As held under closely analogous circumstances in Row Weeder Pty Ltd v Nielsen [1997] APO 38; 39 IPR 400 and Costa v GR and I E Daking Pty Ltd [1994] APO 23; 29 IPR 241, this is at the very least sufficient to confer Mr Fennell’s status as a joint inventor.
This brings me to the question of the extent to which Mr Diss contributed to the initial trailer design. Tytec has pointed out that Mr Diss had no prior knowledge of the tyre industry, and accordingly argues that any contribution by him to the initial trailer design amounted to nothing more than routine engineering work conducted under the guidance of Mr Fennell. It may be true that Mr Diss was not familiar with the tyre industry, but in my opinion this does not outweigh the fact that he had some ten years of experience in designing trailers.[20] To the contrary, Mr Fennell was referred to GTE in the first instance because of its recognised expertise in customising transport equipment,[21] and then specifically to Mr Diss who Mr Moon considered to be “extremely creative” in designing purpose-built trailers. In this regard the evidence clearly establishes that Mr Diss made a number of modifications to the initial trailer design. I have previously discussed what in the context of the present dispute appear to be the more important changes introduced by him.
[20] Diss #2 at [29]
[21] Fennell at [18]
However, even after carefully weighing the evidence it is simply not possible given the many uncertainties inherent in it to determine whether Mr Diss made a material contribution to the initial trailer design. The evidence is equally consistent with the view that his involvement went no further than assisting Mr Fennell to develop a workable embodiment of that design. I am therefore unable to conclude that GTE has discharged the burden it carries in establishing on balance that Mr Diss was jointly responsible for the initial trailer design.
Accordingly I find that the initial trailer design originated with Mr Fennell alone.
The stage two design
It will be recalled that the stage two design differs from the initial trailer design through the addition of one of more wells. The evidence overall seems to have used the term “well” in a generic sense (cf. the distinction drawn in Diss #2 at [25] between a “well” and a “belly”), and I will do likewise when discussing the stage 2 design.
The first trailer manufactured by GTE that incorporated the initial design was in use by October 2004, but was unable to transport a range of tyres referred to in the evidence as “63” tyres” which are very large (out-of-gauge) tyres in extensive use in the United States at the time. The main problem with transporting 63” tyres was that they did not fit within the height and width restrictions imposed by the relevant transport authorities. Nevertheless, Mr Fennell formed the view that 63” tyres would soon be adopted by the mining industry in Australia. As a result, at some stage in 2005, Mr Fennell contacted Mr Diss and told him that he wanted a trailer which was capable of transporting these tyres. Mr Fennell alleges that Mr Diss was initially unable to devise a suitable solution.
In or around mid-2005, Mr Fennell travelled to the United States on business where he saw a customised trailer in which 63” tyres were held in a “well” between the outside structural beams of the trailer. Mr Fennell says he recognised that the well would enable 63” tyres to be transported in compliance with regulatory restrictions. He consequently took a photograph of the trailer (Exhibit RD-5) and provided Mr Diss with a copy upon his return to Australia.[22]
[22] Fennell at [32]
According to Mr Fennell:
“Under my direction, [Mr Diss] then used this concept and idea to create initial drawings for the trailer. In those drawings, rather than having structural beams on the outside of the trailer he had plate steel creating a barge-like space in which the racking system for the tyres was placed.”[23]
[23] Fennell at [34]
This version of events is supported by Mr Walker,[24] but rejected by Mr Diss. He says that when contacted by Mr Fennell he immediately realised that the regulatory height restrictions meant that the 63” tyres needed to be held below the top of the trailer wheels, and reasoned that this could be achieved by creating a “well” between the wheels.[25] Mr Diss then set about designing a trailer sectional shape (Exhibit RD-4) which he “felt would create a frame of sufficient strength, whilst also adding side aprons which effectively reproduced the frame height of the [initial trailer design]”. He denies that he found the trailer depicted in RD-5 to be at all useful which as a consequence was “not referenced again”. It is rather odd then that not only has he obviously retained a copy of the photograph, he also exhibited it with his first declaration. The sectional shape was shown to Mr Fennell and this is perhaps what he meant by the “initial drawings for the trailer”. In any event, Mr Diss submits that when “this concept was shown to Mr Fennell, he recalled a trailer he had seen in the USA”.[26] The evidence of Mr Fennell is that he was “excited” to discover a trailer that could transport 63” tyres,[27] and I therefore have difficulty in accepting that Mr Fennell only mentioned this discovery to Mr Diss upon viewing his design work.
[24] Walker at [26]
[25] Diss #1 at [12]
[26] Diss #1 at [16]
[27] Fennel at [32], [56]
I will have more to say on the origin of the well concept shortly. The parties are agreed that the width of the wells, which was limited by the spacing between the pair of tyres at the end of each axle of the trailer, was recognised as being insufficient to accommodate the width of the 63” tyres. It was suggested that “super single” tyres be employed to overcome this constraint. Mr Fennell has explained that this type of tyre is wider than a single trailer tyre, but not as wide as a pair of tyres although still capable of carrying the same weight as two standard tyres. In this way, the width of the wells could be suitably increased.
There is a dispute as to whether it was Mr Fennell or Mr Diss who suggested the use of super single tyres. They each assert that these tyres were known to them as a result of their respective fields of expertise.[28] Even allowing for the fact that super single tyres were apparently not readily available in Australia at the time,[29] both accounts seem entirely plausible. However, I do not consider that this assists either party since it is quite clear from the evidence that the selection of a particular trailer tyre was merely to enable the practical implementation of the stage two design. The concept of wells had by that time been finalised.
[28] Fennell at [54]; Dist #2 at [29]
[29] Fennell at [35]
Returning to the main point of contention, Mr Fennell has insisted that “the photograph of the US design” provided by him to Mr Diss was the genesis of the stage two design. This poses considerable difficulties for Tytec. Mr Fennell relies entirely on the photograph of RD-5 to substantiate this assertion, but despite having closely scrutinised this photograph I am still unable to tell with any certainty whether the trailer shown in it includes a well. Further, Mr Fennell states (with my emphasis) that he “visited GTE many times during this period [viz. around 2006-2007] and before and drew many hand sketches outlining my concept and specifications in relation to the trailer design, all of which I left with [Mr Diss].”[30] Mr Diss emphatically denies that he has any drawings authored by Mr Diss in his possession, and has no recollection “of ever having seen Mr Fennell sketch a single idea, or having seen any sketch or drawing done by him.”[31] In any event, Mr Fennell’s submission that it was somehow incumbent on Mr Diss to exhibit these hand sketches is hardly convincing.
[30] Fennell at [58]
[31] Diss #2 at [45]
The situation regarding GTE’s evidence is somewhat unusual. It emerged at the hearing that GTE had redirected the focus of its case on ownership of the well concept to a number of sheets of drawings exhibited by Mr Diss as RD-18 to RD-20 with his second declaration. Mr Fitzpatrick submits that these drawings were prepared for a Bryan Murray of TMC Australia. Mr Diss does not say, so the argument continues, that this third party was engaged to assist with the work he was undertaking for Tytec, and there is no reason to suggest that it was. Mr Fitzpatrick says it is very odd that Mr Diss belatedly asserts that he developed the well concept for Tytec by reference to drawings provided to an unconnected third party.
Mr Diss has said very little about the substance of the drawings which evidently have been sourced from GTE’s computer files.[32] The drawing of RD-18 was last saved in December 2004 which Mr Diss alleges is when Mr Fennell actually requested him to design a trailer that could transport 63” tyres. Mr Diss expresses the belief that this drawing represents his initial conception of the well design, and claims that the name of the file indicates that he had made enquiries with Mr Murray “about a suitable axle to support a ‘well’ configuration”. The drawings of RD-19 and RD-20 were created on 18 January and 25 January 2005, respectively, and each exhibit is stated to also show the well concept. Mr Diss describes RD-19 as “very much a work-in-progress”. However, nothing turns on this since it is apparent that Mr Diss is simply referring to the choice of trailer tyres which as I have said only concerns the implementation of the well concept.
[32] Diss #2 at [18]
I find myself faced with the task of deciding the question of inventorship of the well concept again without the benefit of strong evidentiary support. Mr Fennell critically relies on the photograph of RD-5 to establish his case, but as it is not possible to conclusively determine whether it discloses a well this photograph carries no probative value and, consequently, is of no benefit to him. This shortcoming is not assisted by Mr Walker’s evidence. He refers to “a photograph of a customised trailer … that [Mr Fennell] had seen in the United States of America”,[33] yet says nothing of its disclosure or that he has even seen the photograph. Not all sits well with GTE’s evidence either. The case presented by Mr Newman is that Mr Diss had conceived the well design by at least 20 January 2005. If this is correct, it is most peculiar that Mr Diss did not show any of the drawings of RD-18 to RD-20 to Mr Fennell, or at least inform him that he had devised a solution to the problem of transporting 63” tyres, before Mr Fennell travelled to the United States. It will be remembered that after returning from overseas Mr Fennell was simply shown the drawing of BF-4 which is undated, and there is no evidence from Mr Diss as to whether this drawing was in any way informed by those of RD-18 to RD-20.
[33] Walker at [25]
Nevertheless, Tytec does not dispute that the drawings of the latter exhibits were produced by Mr Diss on the dates indicated. The initial conception drawing of RD-18 was last saved in December 2004 which significantly is both consistent with the timing according to Mr Diss of Mr Fennell’s request for him to design a trailer for transporting 63” tyres, and his alleged immediate realisation that this could be achieved in compliance with regulatory height restrictions by the creation of a well between the trailer wheels. Further, it seems to me from a close comparison that the trailers depicted in RD-18, and the second and fourth sheets of RD-20, do not fundamentally differ from the trailer illustrated in Figure 9a of the present specification. The same can be said of the trailers shown in RD-19 and the third sheet of RD-20 when compared with Figures 10 and 11. In all cases the tyres under transportation are “held below the top of the trailer wheels” which Mr Diss saw as the key to solving the problem of transporting 63” tyres. I finally observe that the file name of RD-19 is “Tytec Gen 2 Big Bastards”. “Tytec Gen 2” could conceivably refer to the stage 2 design, but most interestingly the term “big bastards” is remarkably similar to the term “fat bastards” which had been coined with reference to the 63” tyres.[34]
[34] Diss #1 at [11]
I should add that I do not agree with Tytec that any significance can be attached to the concept drawing exhibited as RD-6. The drawing is annotated “Donuts added? Food for thought!!” However, even if this is a vague reference to the 63” tyres, Mr Diss has confirmed that the only reason he sent this drawing to Mr Fennell was to support his proposal for a more sophisticated tyre support arrangement which by this stage he had begun to refer to as “towers”.[35] Nothing in his evidence indicates that the drawing of RD-6 was in any way related to the conception of wells.
[35] Diss #1 at [19]
Taken alone, none of the issues discussed above are decisive of the question of inventorship. However, to my mind their cumulative effect weighs in favour of the case put by Mr Diss. On this occasion, then, I am satisfied that GTE has discharged its legal burden. I find on balance that the well concept originated with Mr Diss alone.
Summary of findings on inventorship
I have found that the initial trailer design was conceived by Mr Fennell alone, and that Mr Diss was solely responsible for the well concept. This inevitably leads to the conclusion that the inventive concept would not have come about without the involvement of the two of them together. Both may therefore be properly described as joint inventors.
Contractual or fiduciary relationships
There can be no doubt that Tytec and GTE each derive joint entitlement to the invention under section 15(1)(b) through Mr Fennell and Mr Diss, respectively.
A fair amount of evidence has been devoted to the nature of the commercial relationship formed between the parties. Although having no bearing on the outcome of the present dispute, for completeness I will briefly refer to it. Mr Fennell states that during 2004 he entered into a “gentleman’s agreement” with Mr Moon concerning the manufacture of trailers in accordance with the initial design.[36] This is corroborated by Mr Moon,[37] and also by Mr Walker who states that:
“… GTE and Tytec agreed that GTE would not make or market the Stage One trailer for any other company except Tytec. Additionally, GTE would let Tytec know if any other company approached GTE with a request to make a similar tyre trailer. In return, Tytec would purchase trailers exclusively from GTE.”[38]
[36] Fennell at [26]
[37] Moon at [10]
[38] Walker at [21]
This informal agreement remained in place with respect to the stage 2 design. In the meantime, in August 2007 Mr Fennell asked Mr Diss to:
“… supply him with sets of drawings for my trailer designs … He explained that he wished to display the new system at a trade show, and that the drawings were for this purpose. He requested that all references to GTE be removed so that his clients would not know the source of the trailers, and wouldn’t come directly to GTE.”[39]
[39] Diss #1 at [25]
Mr Diss sent the drawings requested by Mr Fennell via email (RD-9 and RD-10). Mr Fennell does not dispute this evidence.[40] Mr Diss was later “surprised” to learn that the drawings had been included with the present application which apparently had been filed without GTE’s knowledge.[41] According to Mr Moon,[42] in or around 2010 or 2011 Tytec approached GTE to design a new version of the trailer which would meet weight restrictions imposed in New South Wales. During this period discussions were held with a view to formalising an agreement between the parties, but none was entered into.
[40] Fennell at [59]
[41] Moon at [28]
[42] Moon at [24]
Both parties have sought to draw inferences from these events which are favourable to their case. In particular Mr Walker and Mr Fennell both claim that Tyec paid GTE a premium for the trailers, but was only prepared to do so on the understanding that it alone “owned the trailer design”.[43] They say that the binding agreement on GTE “to build exclusively for Tytec” recognised those rights. Mr Moon refutes that there was any such recognition by GTE. On the contrary, GTE considered that any intellectual property rights were held in its drawings.[44]
[43] Fennell at [65]-[66]; Walker at [54]
[44] Moon at [17]
It has become quite clear that the informal arrangement between the parties was driven solely by commercial interests. It cannot be inferred from this that the agreement was based on an acknowledgement by either party that the other party was solely entitled to the invention, or for that matter that either party consented to sharing any patent rights. Further, Mr Moon is obviously referring to the issue of copyright which is not in point.
Conclusion
I have found on the balance of probabilities that Tytec and GTE are together entitled to the invention. Subject to any appeal, I allow a period of two (2) months from the date of this decision for Tytec to request amendment of the patent request and notice of entitlement to reflect my decision, following which I direct that the application proceed to grant in the name of both Tytec and GTE.
Costs
Costs normally follow the event. At the hearing Mr Newman pressed for a finding that GTE is solely entitled to the invention. In the result GTE has only succeeded in establishing that it is jointly entitled, and I therefore think it appropriate that GTE bear its own costs. Accordingly, I make no award of costs.
O L Haggar
Delegate of the Commissioner of Patents
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