Gs Technology Pty Ltd v Davies Shephard Pty Ltd and Gsa Industries (Aust) Pty Ltd

[2000] APO 38

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent  :          No. 662284 in the name of G S Technology Pty Ltd

Title:         Water Meter Assemblies

Action: Application for extension of term under section 69; notices by Davies Shephard Pty Ltd and GSA Industries (Aust.) Pty Ltd under section 28; hearing.

Decision:          Issued            

Abstract

Petty patent 662284 was granted to George Stack on 24 August 1995.  An assignment of the patent to G S Technology Pty Ltd was recorded on 20 September 1996.  An application for an extension of term of the petty patent was filed.

Two parties filed notices under section 28 asserting that the petty patent was invalid. One ground asserted that George Stack was not entitled to be granted the petty patent.

The findings in the decision were:

1. The petty patent specification 662284 does not offend against section 40(2) or (3).
   
   

2. The claims of petty patent 662284 are entitled to the priority date of 30 August 1990.
   
   

3. The invention claimed in petty patent 662284 is novel given the items of prior art relied on by the notifiers.
   
   

4. The invention claimed in petty patent 662284 involves an inventive step.
   
   

5. The invention claimed in petty patent 662284 is a manner of manufacture within the terms of s.18(1)(a).
   
   

6. George Stack was not entitled to be granted petty patent 662284.
   
   

Given finding item 6, it follows that petty patent 662284 is invalid on the ground provided in s.28(1)(a). The grant of an extension of the term of petty patent 662284 is refused.

The parties allowed a period of 21 days from the date of the decision to provide any written submissions on costs, and costs will be decided after the expiration of that period.

[A related petty patent 645740 has been the subject of s.28 and court proceedings.]

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 662284 by G S Technology Pty Ltd, application under section 69 for an extension of the term of the petty patent, and notices by Davies Shephard Pty Ltd and GSA Industries (Aust.) Pty Ltd under section 28 regarding the petty patent.

BACKGROUND

1.  Petty patent 662284

Petty patent 662284 arose as application 55215/94 filed in the name of George Stack on
17 February 1994 and being a divisional application based on application 85236/91.  The petty patent was sealed on 24 August 1995.  The petty patent claims priority through patent application 85236/91 (PCT/AU91/00404), which was filed on 30 August 1991, from two provisional applications, namely PK2036 filed on 30 August 1990, and PK5286 filed on 26 March 1991.

The patentee applied for an extension of the term of the petty patent under s.69 of the Patents Act 1990 ("the Act") on 11 December 1995. On 23 July 1996 Davies Shephard Pty Ltd ("Davies Shephard") and GSA Industries (Aust.) Pty Ltd ("GSA") filed notices under s.28 of the Act with identical evidence. The patentee filed evidence in response in the matter on 1 November 1996.

On 11 December 1995 a deed of assignment made on 24 August 1995 between George Stack and G S Technology Pty Ltd concerning the assignment of Petty patent 662284 was filed at the Patent Office.  A request for registration of interest in a patent was filed on 5 February 1996. 
G S Technology Pty Ltd ("GST") was recorded as patentee in the Register of Patents on 20 September 1996.

2.  Related petty patent 645740

A related petty patent 645740 was granted on 20 January 1994 - this patent also arose as a divisional application based on application 85236/91.  This petty patent was subject to extension of term action before the Commissioner.  By decisions dated 5 January 1996 and 27 February 1996, a Deputy Commissioner refused to extend the patent term since he found that the petty patent had been granted to a person who was not entitled to be granted the patent (see the decisions Stack v Davies Shephard Pty Ltd and Another (1996) 34 IPR 117 and 34 IPR 131). That decision was subsequently appealed.

In March 1994 the patentee commenced infringement action against a number of parties in relation to petty patent 645740.  Counter claims for revocation arose in those proceedings.  In due course the Federal Court proceeded to first determine the validity issues.  The judgement of the court was delivered by Cooper J on 15 September 1999 (see Stack v Brisbane City Council [1999] FCA 1279). I understand appeals have been filed in that matter. A further related judgement by Cooper J issued on 10 May 2000 (see Stack v Brisbane City Council [2000] FCA 598).
3.  Hearing for petty patent 662284

Following advice from the patentee in April 1997 that it sought to have the extension of term matter determined immediately, a hearing for petty patent 662284 was originally agreed and set for 11 June 1997.  A hearing on this date was set aside when within days of the scheduled hearing the patentee requested that the Commissioner issue a summons to certain persons for production of certain documents.  This led to a decision by the Commissioner on the summons request, a judicial review of that decision by the Federal Court, and a further decision by the Commissioner on the summons request.  The latter decision was also subject to review action - the application for review was dismissed in February 1999.

In January 1999 the patentee again asked for the extension of term hearing to be set down.  A hearing was then set for 20 July 1999 in Canberra.  Mr A Abaza, solicitor appeared by telephone for the patentee.  Mr T Collins, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne represented both Davies Shephard and GSA and also appeared by telephone.

When the hearing commenced on 20 July 1999, Mr Abaza made a request for the Commissioner to grant leave for the patentee to adduce further evidence into the proceedings. The parties presented verbal submissions on this issue and then I adjourned the hearing in order to allow Mr Collins to review the proposed further evidence and provide further written submissions and then for me to decide this issue. However within a week of the hearing the patentee subsequently advised in writing that it was withdrawing its request. The date for the resumption of the hearing was then set for 16 August 1999. None of the parties chose to appear at that time however Davies Shephard and GSA filed lengthy written submissions in support of their claims as asserted in their s.28 notices.

SECTION 28 NOTICES AND EVIDENCE

1. Section 28 Notices

Both Davies Shephard and GSA ("the notifiers") assert that petty patent 662284 is invalid on one or more of the following grounds, being those grounds listed in s 28(1) of the Act:

"(a)      That the patentee was not entitled to be granted the petty patent.

(b)That the invention is not a patentable invention because it does not comply with section 18 (1)(a) or (b).

(c)       That the patent specification does not comply with sub-section 40(2) or (3)."

To support these assertions, both of the notifiers relied on statutory declarations by 16 persons.  To these declarations are exhibited a total of 115 exhibits.  I will refer to these declarations and exhibits as necessary in my decision.

2.  Patentee's evidence in response

The patentee filed a statutory declaration by George Stack dated 1 November 1996 as evidence in response to the s 28 notices. There are no exhibits to this declaration.

3.  Further evidence action

As already mentioned, when the hearing commenced on 20 July 1999, Mr Abaza made a request for the Commissioner to grant leave for the patentee to adduce further evidence into the proceedings. Such a request brought in proceedings under s.28 and s.69 is a matter to be determined by the Commissioner pursuant to regulation 22.24 of the Patent Regulations. The proposed further evidence in this case comprised material in an exhibit ("Exhibit 24") in the Federal Court proceedings concerning related petty patent 645740. As this exhibit was subject to certain confidentiality undertakings before the court, the court had made certain orders which allowed the patentee to seek to bring documents from this exhibit into these proceedings, for the Commissioner to refer to them in determining the extension of term, and for the Commissioner to treat the documents as confidential and not make the documents or submissions thereon open to public inspection.

During submissions on the patentee's request it transpired that the patentee sought to have all documents from Exhibit 24 adduced as evidence.  Exhibit 24 was said to comprise multiple documents totalling more than 500 pages.  After hearing extensive verbal submissions on behalf of the parties, as Mr Collins was not in a position to specifically address the relevancy of all documents of exhibit 24 at that time, I adjourned the hearing to give Mr Collins a short time period to review the documents and provide further submissions in writing on relevancy of the documents and whether I should permit them into the proceedings.

By letter dated 22 July 1999 and received at the Patent Office on 26 July 1999, Mr Abaza for the patentee advised that the request for adducing further evidence was withdrawn, and further advised that the Commissioner could "now proceed without the benefit of the further documents … or any written or oral submission from my client or on its behalf".  This advice was received before Mr Collins had filed written submissions and before the date I had allowed him to file such submissions.  Mr Collins was first aware of the withdrawal of the further evidence request when formally notified of it by the Patent Office on 27 July 1999.  The resumption of the hearing was then set for 16 August 1999.  Mr Collins for the notifiers has sought an award of above scale costs for the further evidence issue - I will consider this when deciding costs in this matter.

4.  Submissions

The parties chose not to appear at the resumed hearing. Mr Collins on behalf of the notifiers filed written submissions on 11 August 1999. To that time, the only material from GST answering in any way the s.28 notices concerning petty patent 662284 was the statutory declaration by George Stack previously mentioned.

After the court judgement issued on petty patent 645740, given the general similarity of subject matter of the two petty patents and validity issues, the parties were invited by the Commissioner on 11 October 1999 to file by 1 November 1999,

"any written submissions addressing the relevance or otherwise of the findings in the judgement to similar matters concerning petty patent 662284 which have been raised in the extension of term proceedings and which the hearing officer thus needs to determine."

The notifiers provided written submissions in response to this invitation on 28 October 1999.  By facsimile Mr Abaza filed a letter dated 16 October 1999 and headed "re: PATENT 662284 & APPLICATION 32815".  This letter commenced "Your letter 11 October 1999 … is receiving our attention as is your letter of 22 September 1999."  Whilst this opening suggests the letter is not a response to the invitation, there follows 40 numbered paragraphs which variously refer to petty patents 662284 and 645740 and issues concerning entitlement.  As there has been no other specific response to the invitation from GST, I will note any point in the letter of relevance to the invitation when considering the present matters.

I will refer to submissions by the parties where necessary in this decision.

THE SPECIFICATION

The specification states that the invention relates to water meter assemblies.  It mentions that typical assemblies, which are said to include separate components for performing the desired functions, whilst operating efficiently "are often cumbersome, difficult to service and expensive to install".  The invention "aims to alleviate the abovementioned disadvantages and to provide water meter assemblies which will alleviate the abovementioned disadvantages and which will be reliable and efficient in use".  The specification then includes a consistory statement of the invention in similar terms to claim 1.  Claim 1, is as follows:

"A water meter assembly including:-

a connector body having an inlet, an outlet and a flow passage extending between said inlet and said outlet and a threaded access port opening to said flow passage and remote from said inlet and outlet;

said connector body including support means for supporting a back flow prevention assembly, said support means including a cylindrical recess forming part of the flow passage;

a removable back flow prevention assembly having a cylindrical sleeve-like housing including tandemly arranged non-return valve assemblies housed therein sealingly supported in said cylindrical recess whereby said back flow prevention assembly may isolate said inlet from said outlet;

stop means for limiting movement of said sleeve like housing into said cylindrical recess to a preselected operative engagement;

said threaded access port being coaxial with said cylindrical recess whereby said back flow prevention assembly may be inserted through said access port to slidingly engage in said recess or be removed from said recess through said access port;

a flow-through measuring element assembly threadedly engaged with said threaded access port and sealingly engaged with said sleeve-like housing such that water entering the connector body through said inlet flows through the measuring element assembly and thence through said back flow prevention assembly to said outlet;

said flow through measuring element assembly cooperating with said sleeve like housing such that said flow through measuring element assembly alone operatively retains the back flow prevention assembly in said cylindrical recess at said preselected operative engagement."

Notable features of the water meter assembly described are the connector body, the back flow prevention assembly, the stop means, and the flow-through measuring element assembly.  In order to perform its function as a water meter, these features include particular elements of construction which cooperate with other elements to provide a combination which permits the metering of water flowing from the inlet to the outlet and prevents back-flow.  Furthermore the arrangement permits easy insertion and removal of the back flow prevention assembly as well as adjustment of position of some elements to accommodate the use of different measuring element assemblies.

The features of the water meter assembly combination defined in claim 1 are these:

(a)a connector body having an inlet, an outlet and a flow passage extending between said inlet and said outlet and a threaded access port opening to said flow passage and remote from said inlet and outlet;

(b)a support means on or in the connector body including a cylindrical recess forming part of the flow passage;

(c)a removable back flow prevention assembly having a cylindrical sleeve-like housing sealingly supported in said cylindrical recess;

(d)       stop means;

(e)a flow-through measuring element assembly threadedly engaged with said threaded access port.

The claim further characterises these features and their interaction with each other in combination.  These characterisations, which I will also refer to as features of the claim, are that:

(f)the cylindrical sleeve-like housing includes tandemly arranged non-return valve assemblies housed therein;

(g)       the back flow prevention assembly may isolate the inlet from the outlet;

(h)the stop means limits movement of the sleeve-like housing into the cylindrical recess to a preselected operative engagement;

1. the threaded access port is coaxial with the cylindrical recess whereby the back flow prevention assembly may be inserted through the access port to slidingly engage in the recess or be removed from the recess through the access port;

(j)the flow-through measuring element assembly is sealingly engaged with the sleeve-like housing such that water entering the connector body through the inlet flows through the measuring element assembly and thence through the back flow prevention assembly to the outlet;

(k)the flow-through measuring element assembly cooperates with the sleeve-like housing such that the flow-through measuring element assembly alone operatively retains the back flow prevention assembly in the cylindrical recess at the preselected operative engagement.

Submissions and evidence placed before me on behalf of the notifiers have commented on the description of the invention in the specification, features of the claims, and scope of the claims.  It is necessary that I discuss some of these matters in order to interpret the claims and the monopoly.  In doing so I do not have any evidence of significance from the patentee to aid my considerations.

Stop means

I note that the claim does not define the construction of the stop means (feature (d)) or where it is located.  However from feature (h) it functions to limit movement of the sleeve-like housing into the cylindrical recess to a preselected operative engagement.  The stop means could comprise elements respectively on the cylindrical sleeve-like housing and on a part of the cylindrical recess which cooperate to limit the movement of the sleeve-like housing, or could be an element elsewhere (for example on the connector body) which provides the intended function.  The described embodiments show one arrangement for limiting movement of the sleeve-like housing (in figure 1) as comprising a circlip in a selected groove on the housing which is able to abut a shoulder at the inlet to the cylindrical recess.  Figure 4 shows a non-adjustable sleeve-like housing which has an outer flange portion which bears on a shoulder at the inlet to the cylindrical recess thus constituting another general form of stop means.

I believe that it is thus reasonable to interpret the stop means broadly as any element or elements wherever located which achieve the stated function as in feature (h).

Preselected operative engagement

This expression is used in relation to the sleeve-like housing and the function of the stop means (see feature (h)).  From the way in which the sleeve-like housing is defined in association with the cylindrical recess (see features (c), (i) and (j)), I interpret an "operative engagement" between the housing and the recess to be where the engagement permits the water meter assembly to operate with the water flowing as indicated in feature (j) when the flow-through measuring element assembly cooperates to retain as in feature (k).  By use of the word "preselected" the claim to me requires some facility by which the stop means can be rearranged or repositioned to adjust the extent of movement of the sleeve-like housing into the cylindrical recess to achieve a desired operative engagement.  This facility would thus enable the operative engagement to be varied for a given housing and support means (or cylindrical recess) to operatively suit different flow-through measuring element assemblies whilst still achieving the functionality of feature (k), as described in relation to figures 1 and 3.  I agree with Mr Collins that the embodiment of figure 4 does not show any such adjustable facility.

I therefore interpret claim 1 to require the stop means to have some adjustable facility to allow selection of a particular operative engagement of the sleeve-like housing within the cylindrical recess.

Measuring element assembly

From the claim the flow-through measuring element assembly,

·    is threadedly engaged with said threaded access port,

·    is sealingly engaged with the sleeve-like housing, and

·    cooperates with the sleeve-like housing such that it alone operatively retains the back flow prevention assembly in the cylindrical recess.

Furthermore I think it is clear that it has a metering or measuring function for the flow of water passing through it from inlet to outlet of the connector body.

Declarants Collins and Hubbard discuss this feature in some detail.  They express some difficulty in placing a precise meaning on this feature, their difficulty arising from the fact that the description in the specification leaves largely unexplained what constitutes such a feature in the embodiments.  Figures 1 and 4 are said to be "typical embodiments" of the invention.  Figure 1 is described as showing a "flow measuring element assembly 117" which threadingly engages with a complementary thread in the access port 119.  An annular end face 121 of the assembly sealably engages the upper end face of the back flow prevention assembly 109 to retain it in operative position.  What appears to be shown and described here is a single unit being a metering device threaded to the access port with a part of the unit sealingly engaging the sleeve-like housing of the back flow prevention assembly.  For the arrangement of figure 4, the description makes no mention of a flow measuring element assembly, but instead refers to a "metering part" supported on the connector assembly or body through an "adaptor".  A surface of the adaptor seems to engage the back flow prevention assembly, and other components shown in the figure but not described seem to firstly couple the metering part and adaptor together and secondly hold these elements in operative position by way of one component which threads into the access port.

The use of the term "assembly" suggests, given its normal meaning, a number of parts assembled to form a complete device.  In my view the embodiments of figure 1 and 4 embrace such an assembly, notwithstanding that they may not be described in those terms.  Even if figure 1 is taken to disclose a metering device threaded into the access port, such a device can still be termed an assembly because undoubtedly it is formed of various parts (including a housing, meter mechanism, meter dial, seals etc) assembled together.  In figure 4 the metering part and adaptor with other components which form the device situated in the access port constitutes an assembly.  In each embodiment the assembly meets the requirements of the flow-through measuring element assembly in claim 1.  It is immaterial that different parts of the assembly may fulfil the functional requirements as specified in claim 1.

I therefore interpret the flow-through measuring element assembly of claim 1 to include a number of components including a metering element forming an assembly, and being constructed to perform the functions as specified in claim 1.

In respect of the functions the flow-through measuring element assembly performs, feature (j) requires it to sealingly engage with the sleeve-like housing.  I agree with Mr Collins' submissions that the definition does not specify how that engagement is achieved - it could be at the side of the housing or at one end, and such arrangements are clearly within the scope of the claim.  Whatever the nature of the sealing engagement, it needs to ensure the water flow as specified in feature (j).

As to feature (k), it requires that the flow-through measuring element assembly alone cooperates with the sleeve-like housing to retain the back flow prevention assembly in its preselected operative engagement within the cylindrical recess, the preselected operative engagement being determined by the stop means.  The qualification alone in this context clearly means that it is the flow-through measuring element assembly which acts to retain the back flow prevention assembly at this operative engagement.  Again the definition does not detail the nature of the cooperation to achieve the function specified so that many arrangements are possible not just end contact with the housing as the embodiments seem to specifically disclose.  From feature (k) it is clear that no other feature of the water meter assembly retains the back flow prevention assembly in the stated engagement.
Back flow prevention assembly

There are several aspects of this feature requiring mention not already included in the above discussion.  Firstly, claim 1 requires the back flow prevention assembly to have a cylindrical sleeve-like housing which is sealingly supported in the cylindrical recess (feature (c)), and from feature (i) that it slidingly engages in the cylindrical recess.  If use of the different terms "supported" and "engage" are to have a different meaning then I believe the former is referring to the operative state of the assembly in the recess whereas the latter is referring to inserting the assembly in the recess.  Secondly, feature (i) requires that the back flow prevention assembly be inserted in or removed from the recess via the access port.  As the flow-through measuring element assembly retains the back flow prevention assembly in its operative engagement and is threaded to the access port, from a practical point of view it is clear that either the entire measuring element assembly or relevant components of it need to be removed from the access port to allow the back flow prevention assembly to be removed through that port.  I note that the definition does not necessarily require that the entire measuring element assembly needs to be removed from the access port for this to be achieved.

SECTION 40

The s. 28 notices assert the patent specification does not comply with s. 40 requirements of the Act. The notifiers' evidence and submissions in this regard touch on the following matters.

Invention fully described

The submissions refer to difficulties with the description of the invention and meaning of features in the claims.  Flowing from this it is asserted that the invention is not fully described.  My earlier discussion has covered features of the claims and the description most in contention.  There is certainly some absence of description in respect to some features in the embodiments, and for that matter absence of precise details of some features.  There is also an issue about whether each of figures 1 and 4 include all features of the invention and thus represent "typical embodiments of the invention" as stated in the description.  However I do not think these deficiencies are of such a nature to compromise a fair understanding of the invention described.  I believe that the skilled addressee wishing and wanting to understand the invention would have no real difficulty in determining the invention and its features from the description and would be able to construct a device according to the invention.  I find that the specification does not offend against s. 40(2).

Clarity of claims

It is also asserted that there is non-compliance with s. 40 because terms in claim 1 are not clear.  Given my earlier discussion about those terms under the Specification heading, I do not consider that there is support for this assertion since I believe that these terms can be given a clear meaning and scope, and as a consequence the claim does not lack clarity.

In his evidence Mr Collins referred to claim 3 arguing that it lacked clarity.  I agree that there is a lack of precision in the definition.  However given that it is further characterising the valve member of claim 2 (being part of a non-return valve assembly of claim 1), I believe it is reasonable to interpret it as further characterising the valve head and its surfaces wherein at least the frustoconical surface mentioned in claim 2 is part of the frustoconical peripheral portion defined in claim 3.  As such I believe claim 3 does not lack clarity.

I find that the specification does not offend against s. 40(3).

PRIORITY DATE

The priority date of the claims is relevant to considerations of whether the invention is a patentable invention.  Thus it is necessary to determine the priority date.

Petty patent 662284 was granted on application 55215/94 which was filed as a divisional application of application 85236/91.  Application 85236/91 has a priority link to two provisional applications, namely PK2036 filed on 30 August 1990, and PK5286 filed on 26 March 1991.  The specification of application 55215/94 was subject to amendment proposals on 5 occasions before the patent was granted.  In the legislation the following provisions relate to priority dates: s.43 and s.114, regulations 3.12 and 3.14.

The claims of petty patent 662284 at grant were filed with an amendment proposal on 9 June 1995.  The possibilities for priority date of these claims are as follows:

1. To obtain a priority date earlier than 9 June 1995 the claims must not claim matter that was in substance disclosed as a result of amending the specification (s. 114 and regulation 3.14).  If
   s. 114 does not apply, the claims will have an earlier priority date of at least 17 February 1994, the date when application 55215/94 was filed (regulation 3.12(1)(a)).

2. As application 55215/94 was a divisional application, if the claims are fairly based on the specification accompanying the application on which the divisional application was made
   (s. 39(1)(a)), the claims will have the same priority date as if they had been included in that specification (regulation 3.12(1)(c)).  That application was application 85236/91 which was filed on 30 August 1991.

3. To obtain an earlier priority date based on the provisional specifications PK2036 (30 August 1990) or PK5286 (26 March 1991), it is necessary that the claims are fairly based on matters first disclosed in those respective specifications (regulations 3.12(1)(b) and 3.12(2)).

The submissions on behalf of the notifiers provide extensive reasons in advancing a possible priority date no earlier than 17 February 1994 but arguably later such as 21 December 1994 or 9 June 1995, the latter dates being associated with certain filed amendments.  These submissions concentrate on the claims being affected by:

• the first disclosure of "a measuring element assembly" (argued to be in application 55215/94);

• the first disclosure of a measuring element assembly exclusively retaining the back flow prevention assembly (argued to be when amendments were filed on 21 December 1994);

• the first disclosure of only a part of the measuring element assembly needing to be removed to allow removal of the back flow prevention assembly (argued to be when amendments were filed on 21 December 1994); and

• the first disclosure of a measuring element assembly including an adaptor means as at page 3 lines 18 to 22 of the specification, or the "meter assembly" on pages 7 to 9 (per figure 1) (argued to be when amendments were filed on 9 June 1995).

The question of the priority date of a claim relies on an assessment of whether the matter claimed is fairly based on matter disclosed in a prior specification or priority document.  The judgements in Stack v Brisbane City Council [1999] FCA 127; CCOM Pty Ltd v Jeijing Pty Ltd (1994) 51 FCR 260, 28 IPR 481; and Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1995) 30 IPR 479 summarise the law and issues involved in making such an assessment. One way of looking at it is to consider whether the relevant specification provides "a real and reasonably clear disclosure" of the claimed matter. Another way is to consider whether or not the claim "travels beyond the matter disclosed in the specification". In making these assessments it is clear that a claim can be fairly based on matter disclosed by drawings alone even if not relevantly described by text in the specification. Furthermore, in carrying out this task, I note that an "over meticulous verbal analysis" should not be applied.

Specification of application 55215/94

The first consideration is whether the specification which accompanied the petty patent application 55215/94 at filing provides a real and reasonably clear disclosure of the claimed invention.  If it does not, then a claim will have a priority date based on the date of the filing of such disclosure as an amendment to the specification.  I believe that the fair basing test is also applicable to testing the "in substance disclosed" requirement in s. 114. 

As filed, specification 55215/94 included 8 figures of drawings.  Apart from some differences in identifying numerals on the figures, figures 2 to 8 correspond to figures 1 to 7 of the granted patent.  Thus originally filed figure 1 is generally of similar disclosure to figure 2 of the patent.  In my view the specification discloses the integers of claim 1 as previously referenced as features (a) to (e).  With regard to feature (e), the flow-through measuring element assembly, the specification discloses a number of elements including a metering device which together are such as to form an assembly threaded to the access port opening.  I believe that figure 5, corresponding to figure 4 of the patent, discloses such an assembly.  I also note that on pages 3 and 4 there is disclosed a "closure means" for the access port which can support "a measuring element" and "may include adaptor means" for directing fluid flow to and from the measuring element.  In other words, this is an assembly of parts including a measuring element.  Further I note that claim 3 as filed contained the definition "a removable flow-through measuring element assembly threadedly engaged in said meter access port".  Whilst the specification does not describe features of a "measuring element assembly", I do not believe that a skilled addressee would have a difficulty in identifying a disclosure of such an assembly in the specification.

I also consider that features (f) to (k) of claim 1 are disclosed in specification 55215/94.  I am in no doubt that there is disclosure of the measuring element assembly alone operatively retaining the back flow prevention assembly in the cylindrical recess as feature (k) requires in line with my earlier interpretation of this requirement.  Each of figures 1, 2 and 5 suggest such a function for the measuring element assembly regardless of the degree of specific description of same and irrespective of the precise form of "stop means" respectively disclosed in those figures.

The submissions for the notifiers by referring to several matters tend to suggest that the claimed invention may go beyond the matter disclosed in this specification.  A first matter is the exclusive retaining function of the measuring element assembly as in feature (k).  However, as already mentioned, I believe the specification fairly foreshadows this function and thus the claim does not travel beyond the disclosure in this regard.  A second matter concerns the manner of removal of the back flow prevention assembly.  The submissions suggest the specification does not disclose that only a part of the measuring element assembly needed to be removed from the access port in order to remove the back flow prevention assembly.  Claim 1 does not require the measuring element assembly or a part of it to be removed from the access port in order to remove the back flow prevention assembly.  The specification clearly discloses arrangements whereby the back flow prevention assembly can be inserted and removed from its cylindrical recess through the access port as feature (i) of the claim requires.  To enable this to occur clearly the measuring element assembly or parts of that assembly need to be removed from the access port.  I do not believe the specification discloses that it is essential for the entire measuring element assembly to be removed from the access port to allow the insertion and removal of the measuring element assembly.  Thus again the claim does not travel beyond the disclosure in this regard.

There is also some suggestion in the notifiers' submissions that because the nature by which the measuring element assembly sealingly engages and "cooperates" with the sleeve-like housing of the back flow prevention assembly is not stated in the claim 1, the claim travels beyond the disclosure of specification 55215/94.  The "typical" embodiments shown in the figures and described in the specification disclose arrangements wherein the outlet region of a metering element or the outlet of an adaptor sealingly abuts an (upper) end annular face of the sleeve-like housing.  However on page 3 there is disclosure that an "outlet from the measuring element communicates sealingly with the inlet of the non-return valve".  To me this disclosure does not limit the engagement and cooperation between these components to that disclosed in the figures.  In my view other engagement and cooperation arrangements apart from contact with the end annular face of the sleeve-like housing and which satisfy the functions indicated in features (j) and (k), are fairly foreshadowed in the specification and accordingly the claim does not travel beyond the disclosure in this regard.

Specification 55215/94 also provides a real and reasonably clear disclosure of the matter claimed in claims 2 and 3.  This is apparent from at least the disclosure concerning the non-return valve assemblies in figures 2 and 3.

To summarise, I find that the specification of application 55215/94 provides a real and reasonably clear disclosure of the claimed matter.

Specification of application 85236/91

The next question is whether claim 1 is fairly based on matters disclosed in the specification of application 85236/91 filed on 30 August 1991.  This specification, apart from the claims, is identical in content to the specification 55215/94.  Accordingly my previous finding in respect of the specification 55215/94 applies equally to this specification.

Provisional specification of application PK2036

This specification has much disclosure essentially in common with specification 85236/91.  Figures 1, 2, 4, 5 and 6 correspond respectively with figures 1, 2, 6, 4 and 3 of specification 85236/91.  Figure 2 of specification PK2036 thus corresponds to figure 1 of the patent.  Specification PK2036 has no disclosure of an "adaptor" to be used between the measuring element and the non-return valve means (back flow prevention assembly).

The question arises whether in specification PK2036 there is a real and reasonably clear disclosure of a "measuring element assembly".  But as I have already indicated earlier in this decision when discussing this feature, the arrangement of measuring element in figure 2 can be so considered.  Furthermore in figure 1 the components of measuring element 17 and threaded collar 19, which engages a corresponding thread about the access port and retains the measuring element in the port, also constitute such an assembly "threadedly engaged with said threaded access port".

Another issue is whether specification PK2036 discloses the measuring element assembly sealingly engaging and cooperating with the sleeve-like housing of the back flow prevention assembly other than by abutting an (upper) end annular face of the sleeve-like housing.  The embodiments of figures 2 to 5 disclose end face sealing engagement of the type mentioned.  Figure 1 does not disclose sealing between the measuring element assembly and the sleeve-like housing (see page 7 line 18).  However on page 3 there is disclosure that "Preferably the non-return valve means is adapted to be retained by the measuring element …".  In my view this disclosure, when considered with other disclosure in the specification of a sealing function, fairly foreshadows other engagement and cooperation arrangements which satisfy the functions indicated in integers (j) and (k) apart from measuring element assembly contact with the end annular face of the sleeve-like housing.  Accordingly claim 1 does not travel beyond the disclosure in this regard.

The matter of claims 2 and 3 is also disclosed by PK2036 for similar reasons to those mentioned for specification 55215/94.  With respect to the matter defined by claim 3, referring to the form of non-return valve assembly disclosed by figure 6 of specification PK2036, in my view a "frustoconical peripheral portion" of the valve member is immediately apparent (being designated as "face 77") as is "a substantially flat inner barrier portion" (being the region centered above the "stem 81").

Thus I find that the specification of application PK2036 also provides a real and reasonably clear disclosure of the claimed matter.  It follows that the claims of petty patent 662284 are entitled to the priority date of 30 August 1990.

NOVELTY

The notifiers submit that the claimed invention is not novel when compared to the prior art base as it existed before the priority date of the claims.  The basic test for anticipation or want of novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228. For this test one asks oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.

In support of this ground of invalidity, the notifiers rely on numerous patent and other documents.  These are referred to in the Collins declaration before me in evidence.  They also rely on a number of water meter assemblies as referred to in the Hubbard declaration.  I will consider those items of prior art relevant to the priority date of 30 August 1990.

GB2210465 (Evans)

This patent specification, which was published in Australia on 16 August 1989, discloses a water meter assembly with many features of similarity with the claimed invention.  However it differs in the following respects:

• it has a single rather than tandemly arranged non-return valve assemblies as in feature (f);

• there is no disclosure of stop means to limit movement of the sleeve like-housing containing the check valve with an adjustable facility to achieve a preselected operative engagement as I have previously interpreted feature (h) to require;

• the measuring element assembly does not sealingly engage the housing of the non-return valve assembly as in integer (j).  A "ring 68" in figure 3 which is screwed into the "support plate 11" engages and retains the non-return valve assembly.  The outlet of the "meter unit" is in telescoping engagement with the ring 68.  The ring 68 is not a component of measuring element assembly disclosed in figure 3.  Other components including the casing 60, locking rings 61 and 62 together with the meter unit form an assembly threadedly engaged with the port in the support plate (thus corresponding to feature (e)); and

• the measuring element assembly does not retain the non-return valve assembly in its operative position as in feature (k).

The device disclosed in this citation would not constitute an infringement of the claimed assembly if it were in a patent.  Thus claim 1 is novel given this disclosure.

AU633441 (Philmac)

This specification was filed on 27 June 1991 and was laid open to public inspection on 2 January 1992. It has an earliest priority date of 29 June 1990 which is before that for the present invention. Thus it can only be relevant for novelty purposes if it discloses the invention under the provisions of s.7(1)(c) of the Act, commonly referred to as "whole of contents" considerations. Moreover such disclosure must derive from the priority document otherwise the conditions of s.7 will not be satisfied.

This specification discloses a water meter assembly with many features of similarity with the claimed invention.  However it differs in the following respects:

• while retaining tongues 47 (which constitute stop means) cooperate with an apparent flange on the holder 48 to inhibit movement of the holder, there is no disclosure of any adjustable facility to achieve a preselected operative engagement as I have previously interpreted feature (h) to require;

• there is no disclosure that the holder 48 is retained in preselected operative engagement only by the measuring element assembly as in feature (k).  There is no description to that effect (unlike the disclosure in the priority document AU PK0921, which disclosure cannot be imported into specification 633441), and the arrangement in figure 1 shows insufficient detail for the drawing alone to disclose such an arrangement.  Although declarant Harris, the listed inventor for this invention, states the outlet of the meter housing engages and holds the check valve in position, the specification itself does not disclose this arrangement; and

• although the specification discloses dual non-return or check valves 49, the priority document AU PK0921 only discloses a single check valve. Thus the notional priority date for disclosure of dual check valves is no earlier than the date of filing specification 633441. Disclosure of this feature does not therefore satisfy the conditions of s.7(1)(c).

Given these differences, claim 1 is novel given the disclosure in this specification.

EP061908 (Hudson)

This specification was published in Australia on 16 November 1982.  It discloses a water meter assembly having a single non-return valve in the flow path between inlet and outlet of the assembly.  The valve is held within a cylindrical insert 32 which in turn is secured within the assembly housing by screws.  Whilst in the terms of claim 1 the body 20 could be considered the support means of feature (b), and the insert 32 housing the non-return valve the assembly of feature (c), there is no disclosure of the following features:

• tandemly arranged non-return valve assemblies (feature (f));

• any stop means to limit movement of the sleeve-like housing with an adjustable facility to achieve a preselected operative engagement as I have previously interpreted feature (h) to require; and

• the measuring element assembly alone retaining the sleeve-like housing in preselected operative engagement as in feature (k).

Thus claim 1 is novel in the light of this specification.

Brisbane City Council Tender

Exhibit TJC 17 to Collins' declaration is a copy of a Brisbane City Council invitation to tender in relation to contract WS/34/90/91.  Exhibit TJC 18 is a copy of a tender drawing WM8 referred to in the tender and which indicates in diagrammatic form the relative position of components and a "meter manifold that is a preferred assembly".  The evidence establishes that the tender documents were available on 4 August 1990.  According to declarant Hubbard, responses to the invitation terminated at 12 noon on 31 August 1990.  Hubbard declares that this tender was seen by him and others at Davies Shephard some weeks prior to 30 August 1990.

The drawing WM8 discloses a water meter assembly with many features of similarity with the claimed invention.  However it differs in the following respects:

• the non-return valves seem to be held in respective cylindrical housings not a cylindrical housing as features (c) and (f) require;

• there is no disclosure of stop means to limit movement of the sleeve like-housing containing the check valves with an adjustable facility to achieve a preselected operative engagement as I have previously interpreted feature (h) to require;

• there is no disclosure that the measuring element assembly sealingly engages with the sleeve-like housing as feature (j) requires; and

• there is no disclosure that the measuring element assembly retains, alone or with other elements, the back flow prevention assembly as feature (k) requires.

Accordingly claim1 is novel given these tender documents.

AU29701/89 (Glynwed)

This specification whilst disclosing a water meter assembly does not disclose many of the features of the claimed invention.   For example there is no disclosure of a cylindrical sleeve-like housing forming a back flow prevention assembly, no tandemly arranged non-return valves and no stop means, as features (c), (f) and (h) require.  It does not disclose the combination of the claimed invention.

US4614113 (Daghe)

Whilst this specification discloses a pair of non-return valves in relation to a water meter installation, there is no disclosure of the combination of the claimed invention.

US3894432 (Coughlan)

This specification discloses a water meter assembly.  Tandemly arranged non-return valves are arranged in a housing fitted in a flow passage adjacent the meter.  The housing is not removable via the access port for the measuring element assembly nor does that assembly retain the valve housing.  This specification does not disclose the combination of the claimed invention.

EP0125010 (Hudson)

This specification discloses a water meter assembly.  A cylindrical recess is formed in the outlet passage beyond the measuring element assembly.  No details are given of the "non-return valve" to be accommodated in this recess.  There is no disclosure of a stop means as I have previously interpreted feature (h) to require, and no disclosure that the measuring element assembly retains, alone or with other elements, the back flow prevention assembly as feature (k) requires.  This specification does not disclose the combination of the claimed invention.

The submissions filed on behalf of the notifiers also include under the novelty heading reference to three water meter assemblies.  I will now refer to these assemblies.

Sentinel meter assembly

Hubbard in his declaration refers to a Sentinel meter assembly which he says was disclosed to the Brisbane City Council on a non-confidential basis in "September 1989".  He exhibits various drawings and documents regarding this assembly.  It is clear from what Hubbard states in paragraph 5.5.1 that the non-return valve assembly of this meter assembly was not retained by the measuring element assembly as feature (k) of the claimed invention requires.  Furthermore no feature as in feature (h) is evident.  Also it seems that only a version of this meter assembly disclosed in December 1992 included tandem non-return valves.  This meter assembly therefore does not disclose the combination of the claimed invention.

Ebco meter assembly

Hubbard refers to this assembly at paragraph 5.6.1.  He states that the assembly "has been known in Australia since at least 1989" and that a sample was disclosed to the Brisbane City Council on a non-confidential basis in 1989.  There are few details of this assembly provided, the single sheet which Hubbard includes as Exhibit JHH 15 shows no internal details.  However Hubbard states that the single non-return valve in this assembly is held in position by a threaded engagement between parts, as for the Sentinel meter assembly.  Consequently this assembly does not disclose the claimed invention.

Atlantic Plastics meter assembly

Hubbard refers to this assembly at paragraphs 1.4, 5.7 and 5.8.  Again there are few details of this assembly provided, reliance being placed on a drawing of Exhibit JHH 16 (the drawing apparently dated but the date not being decipherable given the copying) and a sketch produced after inspecting such a meter in 1996 (Exhibit JHH 18).  There is nothing to establish that the drawing of Exhibit JHH 16 was published before the priority date.  Bellingham exhibits as GRB 10 a letter and two drawings sent by Atlantic Plastics to an officer at the Brisbane City Council on 12 March 1990.  The drawings show a meter manifold to accommodate a concentric water mater.  From the few details before me, like the Sentinel and Ebco assemblies, the Atlantic Plastics assembly seems to have the single non-return valve in the assembly held in position by a threaded engagement between parts and without contact with a measuring assembly.  There is no information being a disclosure of feature (h) of the claimed invention.  Consequently even if these drawings, or an assembly consistent with the drawings, have been publicly available before the priority date there is no disclosure of the claimed invention.

In summary, I find that the claimed invention is novel given the items of prior art relied on by the notifiers.

INVENTIVE STEP

The notifiers assert the claimed invention lacks an inventive step. It follows from s.7(2) and 7(3) of the Act that a claimed invention will lack an inventive step when compared with the prior art base if it would have been obvious to a person skilled in the art in the light of:

(a)the common general knowledge existing in the art before the priority date considered alone; or

(b)the common general knowledge existing in the art before the priority date considered together with information in a single document or through doing a single act, provided that the skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded the document or act as relevant to work in the relevant art in the patent area.

Schedule 1 to the Act provides a definition of "prior art base".

The submissions filed on behalf of the notifiers assert that various matters formed part of the common general knowledge in Australia before 30 August 1990, namely:

• The Ebco water meter assembly

• The Neptune T10 water meter

• Australian Standard AS 2845

• Watts dual check valves

• Febco dual check valves

• Widespread use of end to end retention technique in the water industry

• Use of end to end retention technique in connection with one-way valves.

Given that knowledge, the notifiers submit that claim 1 would have been obvious and thus lacking an inventive step on these grounds:

1. The combination disclosed in GB2210465 (Evans) with the common general knowledge of dual check valves but subject to claim 1 not being understood as requiring an adjustable valve assembly.  A similar submission concerning EP061908 (Hudson) and AU633441 (Philmac).

2. It would have been obvious to modify the Ebco water meter assembly by incorporating dual check valves and utilising end to end retention to hold the valves in place.

3. It would have been obvious to modify the Atlantic Plastics water meter assembly (which they say was an item of public knowledge) by incorporating dual check valves and utilising end to end retention to hold the valves in place.

Common general knowledge

Crucial to an assessment of whether the invention lacks an inventive step is the common general knowledge in the art in the patent area before the priority date.  Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 remarked about common general knowledge in these terms at 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and must be treated as being used by an individual as a general body of knowledge."

A number of declarants for the notifiers, particularly Hubbard and Sengstock, have referred to matters known in Australia before 30 August 1990.  For example Hubbard under heading 4 of his statutory declaration, when referring to the individual features of claim 1 states that various devices or concepts were "well known in Australia before 30 August 1990".  Under heading 5 Hubbard refers to various items of prior art, particularly water meter assemblies, which he states were "well known to me" before 1990.  In his declaration Sengstock refers to various valve devices and water meter assemblies and indicates that many of these were sold before August 1990.  Although both these declarants appear qualified to attest to matters of common general knowledge, in making these references in their declarations the declarants do not specifically identify whether the matters discussed fall into the category of common general knowledge. 

In paragraph 5.1.1 Hubbard refers to and exhibits as JHH 4 a "copy of written submissions lodged on behalf of G Stack and G S Technology Pty Ltd in relation to a dispute concerning the validity of Stack's Petty Patent 645740".  The submissions dated 21 November 1995, provided for a hearing before the Commissioner of Patents, include over pages 38 to 40 what Hubbard states are "admissions concerning the common general knowledge considered to be applicable to that particular case".

The only evidence provided in this matter for the patentee is a statutory declaration by George Stack.  He discusses some of the prior art patent documents relied upon by the notifiers but makes no comment about the evidence of Hubbard, Sengstock and others concerning the existence of valves and meter assemblies before 1990.  There is also no comment by Stack or submissions on behalf of the patentee concerning the "admissions" said to be in Exhibit JHH 4.

In my view the assertions of common general knowledge advanced for the notifiers are not conclusively derivable from the evidence before me.  As I have already mentioned, declarants like Hubbard and Sengstock do not identify those matters which fall into the category of "common general knowledge".  Matters which are "well known" to one person or well known to a number of persons may not be matters of common general knowledge in the relevant art, but it is from the evidence about these well known matters that the notifiers have based their assertions.  As for the "admissions" in JHH 4, I am inclined to give them some weight but I do not think that those statements can be construed as being determinant of the relevant common general knowledge in this case.

The difficulty I have mentioned about whether matters known or well known to some in the relevant art were common general knowledge and thus a body of general knowledge to all in that art was an issue alluded to by Cooper J in Stack v Brisbane City Council [1999] FCA 1279 concerning the validity of related petty patent 645740 (see paragraph 185). In that action the particulars supporting lack of inventive step included similar matters to those advanced in evidence in this case. I note that the judgement does not identify matters of common general knowledge but considers the issue of whether there is an inventive step based on certain assumptions as stated in paragraph 185.

Regarding the notifiers' assertions of common general knowledge in this action, my conclusions are as follows:

• The Ebco water meter assembly: 
  From the evidence of Hubbard at paragraph 5.6.1 there is little support for this assembly being a matter of common general knowledge.

• The Neptune T10 water meter: 
  Hubbard states in paragraph 5.4 that these were introduced to the Australian market in 1987 and many have been installed throughout Australia.  I believe this meter assembly was common general knowledge at the priority date.

• Australian Standard AS 2845: 
  This standard would have been known by all designers and manufacturers in the art and would have been common general knowledge.

• Watts dual check valves: 
  The evidence of Sengstock at paragraphs 8 to 13 and Hubbard at paragraph 4.4.5 provide strong indications that these valves were available and many units of different models sold in Australia before the priority date.  I believe that they were common general knowledge.

• Febco dual check valves: 
  Sengstock exhibits a copy of a Febco catalogue as RWS 9 and states in paragraph 15 that he obtained the catalogue from the Australian distributor of Febco products in 1989.  There is no evidence of how widely or over what period this catalogue was distributed.  There is insufficient evidence to conclude that the catalogue or devices shown in it were common general knowledge.

• Widespread use of end to end retention technique in the water industry:
  The evidence of Hubbard at paragraph 2.9, Flynn at paragraph 7 and Gaskell at paragraphs 3 to 9 provide strong support for this technique being common general knowledge.

• Use of end to end retention technique in connection with one-way valves:
  The evidence of Hubbard at paragraph 2.9, Sengstock at paragraphs 23 and 24 and Harris(1) at paragraphs 4 to 7 provide strong support for this technique being common general knowledge.

Whether the invention was obvious

Where the invention is a combination, it is not enough to establish lack of inventive step by establishing that every feature of the combination was known or a matter of common general knowledge. It must be established that a non-inventive skilled worker in the field would have arrived at the combination claimed given the common general knowledge and any prior art information meeting the requirements of s.7(3) of the Act. The notifiers have advanced three grounds for the invention being obvious. I will discuss these in turn.

Firstly the notifiers rely on patent specification GB2210465 (Evans) with the common general knowledge of dual check valves.  (They indicate a similar argument based on EP061908 and AU633441.)  There is no evidence before me going to whether a skilled person in the art dealing with water meter assemblies had, before the priority date, obtained and understood the disclosures in this GB specification.  The patent specification was first published in Australia in August 1989.  There is no evidence to indicate that skilled workers in this art routinely consulted the patent literature.  However as this patent specification, dealing with a water meter assembly, was available in Australia a year before the priority date, I believe a skilled person in the art of water meter assemblies "could … be reasonably expected to have ascertained, understood and regarded" information in the document as relevant to work in the relevant art in the patent area, thus meeting the requirement of s.7(3). Even though I consider the information in the GB specification meets the requirement of s.7(3), based on the disclosure in this specification I am not satisfied that the claimed invention lacks an inventive step. As I have indicated under the novelty ground, the claimed invention differs in a number of ways from the GB specification. One difference is that the claimed invention has the feature (h) being a stop means to limit movement of the sleeve like-housing containing the check valve, which feature I have previously interpreted to have an adjustable facility to achieve a preselected operative engagement given a particular flow-through measuring element assembly. This is not a feature shown to be a matter of common general knowledge in this art and in my view this change alone would not have been an obvious step to take to arrive at the claimed invention from the information in GB specification. There is also the difference regarding feature (k), and it has not been established that it was common general knowledge in the art at the priority date for the measuring element assembly of a water meter assembly to alone operatively retain a back flow prevention assembly. Lack of inventive step based on GB2210465 as alleged has therefore not been made out. Similar considerations and conclusions apply for the patent specification EP061908 (Hudson). As patent specification AU633441 (Philmac) was not published before the priority date, the information in it does not meet the requirements of s.7(3).

Secondly the notifiers assert that it would have been obvious to modify the Ebco water meter assembly by incorporating dual check valves and utilising end to end retention to hold the valves in place. There are a number of reasons why I do not believe lack of inventive step has been made out on this ground. The Ebco water meter assembly has not been established as a matter of common general knowledge. Therefore it can only be used to establish a lack of inventive step finding if it amounts to "prior art information made publicly available in a single document or through doing a single act" meeting the requirements of s.7(3). The only document to provide any such information before me in evidence is Exhibit JHH 15. Hubbard does not indicate when the sole sheet of this exhibit was available in Australia, although he states that an Ebco MVU manifold with meter attached has been known in Australia since at least 1989. Thus I am not satisfied that information arising from the material exhibited as JHH 15 meets the requirements of s.7(3). Even if it is assumed that it meets this requirement, this exhibit provides insufficient information and details of the Ebco water meter assembly to identify how a skilled person may have understood the device and thus considered obvious changes to it given the common general knowledge.

An alternative argument relating to the Ebco water meter assembly, although not clearly advanced by the notifiers' submissions, may be that it was a device used or publicly available in Australia before the priority date and that information arising from such act meets the requirements of s.7(3). Although Hubbard states that a sample of such a water meter assembly was disclosed to the Brisbane City Council on a non-confidential basis in 1989, there is no evidence establishing this alleged act. Even were this established, the nature of what prior art information may have been understood from the act has not been given in evidence. Hence no finding on whether the invention would have been obvious on this basis is possible. In summary, lack of inventive step has not been established on the second ground as alleged.

Thirdly, the notifiers assert that it would have been obvious to modify the Atlantic Plastics water meter assembly (an alleged item of public knowledge) by incorporating dual check valves and utilising end to end retention to hold the valves in place. Under the Novelty heading I have referred to evidence from Hubbard and Bellingham about this assembly. Declarant Huis also refers to such an assembly. The only documents that may provide prior art information within the requirements of s.7(3) are the drawing of Exhibit JHH 16 or the drawings of Exhibit GRB 10. However there is no evidence to establish that JHH 16 was publicly available before the priority date. Whilst the surrounding circumstances giving rise to the letter and drawings of GRB 10 are not stated, there is nothing to suggest that receipt of this material by the Brisbane City Council did not constitute publication in Australia. However even if the drawings of GRB 10 provide prior art information within the requirements of s.7(3), there is insufficient information and details of the Atlantic Plastics water meter assembly to identify how a skilled person may have understood the information about this device and thus considered obvious changes to it given the common general knowledge. In any event the Atlantic Plastics water meter assembly seems to differ from the claimed invention in respect to at least features (h) and (k) and in my view these changes would not have been obvious ones to make given the common general knowledge.

Bellingham's evidence at paragraphs 3.3 to 3.8 establishes that the Brisbane City Council received from Atlantic Plastics on or about 10 October 1989 some 60 Atlantic Plastics water meter assemblies.  It seems that some of these were installed for use in January 1990.  The only evidence going to the nature of these assemblies is the drawing of Exhibit JHH 18 and some comments by Bellingham in paragraph 3.8.  Overall, the prior art information arising from use of such assemblies for the purposes of considering whether the claimed invention was obvious is at best no different to that already mentioned for the drawings.  A similar conclusion regarding the obviousness of the claimed invention to that discussed for the drawings of the Atlantic Plastics water meter assembly necessarily follows.  In summary, lack of inventive step has not been established on the third ground as alleged by the notifiers.

Overall, based on the evidence before me, my conclusion is that the claimed invention involves an inventive step.

MANNER OF MANUFACTURE

Although the s.28 notices raise the ground of invalidity under s.18(1)(a) of the Act, no submissions have been made to support that ground. There is nothing contained in the specification which suggests that the invention lacks the quality of inventiveness necessary to be proper subject matter for letters patent. It thus passes the "threshold test" for being a patentable invention under the act (see for example Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243). Accordingly the invention claimed in petty patent 662284 is a manner of manufacture within the terms of s.18(1)(a).

ENTITLEMENT

Background

One of the grounds of invalidity of petty patent 662284 asserted by the notifiers is that "the patentee was not entitled to be granted the petty patent." This is an available ground under s.28(1)(a). In Stack v Brisbane City Council [1999] FCA 1279, hereinafter referred to as the Stack case, in considering the validity of petty patent 645740 Cooper J said:

"44. Section 28 is concerned with the grant of the petty patent. In the context of
s 28(1), the patentee is the original grantee and the provision is concerned with the eligibility of the original grantee to become the owner of the petty patent. In this context, the definition of "patentee" in the Dictionary in Schedule 1 to the Act is not applicable, as a registered assignee from the grantee after grant would never satisfy s 28(1)(a) because it could not satisfy the description in s 15(1). This follows because s 15(1) is only concerned with the eligibility to receive a grant and to become the owner of the patent upon the granting of it by the Commissioner."

And later, when discussing the revocation ground under s.138(3)(a), he referred to the position of an assignee of the patentee compared to the original grantee in these terms:

"52. The position of a later registered patentee is different, although the question of entitlement to the patent remains to be determined by reference to the eligibility of the original grantee under s 15 of the Act. This is because any subsequent holder of the title to the patent stands in the shoes of the person from whom title was acquired by assignment or by devolution by law. No holder in the chain of title obtains a better entitlement to the patent than the immediate predecessor in the chain and ultimately of the original grantee. An original grantee who was not entitled to a grant under s 15 of the Act cannot make good an improper grant by assigning the patent to another person. Therefore although assignment or devolution by law of the patent prior to revocation carries an entitlement to registration as the proprietor of the patent, registration does not cure a defect in the title which renders it liable to revocation because it should never have been granted originally."

Thus in the present case, for the purposes of s.28(1)(a), George Stack is the relevant patentee whose entitlement to be granted the petty patent is in issue. The fact that the patentee now recorded in the Register of Patents is G S Technology Pty Ltd ("GST") is not relevant to the determination of this matter since GST was not the original grantee of the petty patent. The question then is whether George Stack was entitled to the grant of the patent by virtue of being an eligible person under s.15 of the Act?

The grant of petty patent 662284

The basic facts relating to the grant of this petty patent are these:

1. Petty patent application 55215/94 was filed by George Stack on 17 February 1994.  The patent request indicated George Stack as the Nominated Person.  George Stack ("Stack") and Alan Joseph Grieves ("Grieves") were given as actual inventors.

2. The patent request for application 55215/94 indicated that it was a divisional application in respect of original application 85236/91 made by Stack.

3. Application 85236/91 arose as PCT application PCT/AU91/00404 filed on 30 August 1991 which designated Australia.  Stack was listed as applicant for Australia and with Grieves as a joint inventor.  The application claimed priority from Australian applications PK2036 and PK5286.

4. Applications PK2036 and PK5286 were filed by Stack as applicant on 30 August 1990 and 26 March 1991 respectively.

5. On 4 July 1995 the applicant's patent attorney, on behalf of Stack, filed a notice of entitlement for the petty patent application. It stated :

   "1. George Stack and Alan Grieves are the actual inventors.

   2. The person nominated for the grant of the patent is the applicant of the original application.

   3. The person nominated is entitled to the grant of the patent."

6. The petty patent numbered 662284 was sealed on application 55215/94 on 24 August 1995.  The petty patent was granted to George Stack.

Essentially the facts concerning the grant of petty patent 662284 are, for the purposes of entitlement considerations, identical to those for the grant of petty patent 645740.  Petty patent 645740 was granted to George Stack on 20 January 1994.  The patent was granted on an application 44897/93 filed on 25 August 1993 which, like application 55215/94, was filed as a divisional application in respect of original application 85236/91.  Stack and Grieves were given as actual inventors.  The entitlement of George Stack to be granted petty patent 645740 was at issue in the Stack case (supra).

Submissions and evidence

Stack's evidence
In the judgement in the Stack case (supra), Cooper J sets out in paragraph 31 a number of grounds forming the basis on which it was argued that Stack was entitled to the grant of petty patent 645740.  Those grounds correspond to grounds put forward by Stack in paragraph 5 of his declaration in this matter in support of his entitlement to be granted petty patent 662284 and I will not reproduce those grounds here.  These grounds inter alia refer to Stack applying at the time for provisional patent PK2036 "in my name with the knowledge and consent of Grieves and with the intention that any patents granted in consequence of that application be assigned to a company to be incorporated".  There is evidence exhibited to Collins' declaration that Stack and Grieves became directors of the company GST on 6 September 1990.  The grounds relied on by Stack refer to this company.

Notifiers' evidence and submissions
The submissions on behalf of the notifiers assert that George Stack lacked entitlement to be granted the petty patent 662284 for a number of reasons including:

a)There is no assignment of rights from Grieves to Stack.

b)There is no evidence that Stack was entitled to the contributions to the invention made by Michael Williams (claim 1) and Robert Cornish (claim 3), these being employees of Reliance Manufacturing Company ("RMC").

c)Stack was a director of Russell Plastics Pty Ltd ("Russell Plastics") from 1 July 1989 to 26 August 1990, and reappointed a director on 7 September 1990.  Grieves was a Director from 7 September 1990 to 16 December 1992.  The principal activity of the company is the design and supply of water meters.  Stack and Grieves were employed by the company during the period of the development of the invention.  Russell Plastics was entitled to the relevant IP rights under normal master and servant considerations.

Consequently the notifiers submit that there is no basis for a different decision than that given by the Federal Court in the Stack case (supra) where Stack was declared not to be entitled to the grant of petty patent 645740.  They further submit that the evidence lodged by the notifiers constitutes the only body of material relevant to the issue of entitlement, and the patentee has not produced evidence contradicting that relied on by the notifiers.

As to the evidence lodged by the notifiers, there is evidence from declarants Williams, Cornish, Flynn and Osborne, all of RMC.  They indicate that in early 1991 RMC assisted Stack and companies with which he was associated (Russell Plastics and GST) to modify a water meter manifold of his companies.  One modification concerned the design of an adaptor to interface the manifold with a particular water meter, a design Williams says he suggested to Stack.  A second modification concerned a different design of non-return valve, a design which Cornish says he made, and a design he says figure 6 of the petty patent accurately depicts.  Osborne says that Grieves left RMC in January 1990 to join companies associated with Stack.  Osborne, Flynn and Cornish indicate that they dealt with Grieves of the Stack companies regarding the changed manifold and testing thereof.  Declarant Kowalczyk of GSA exhibits as Exhibit JSK 1 a telefax dated 9 February 1990 from Russell Plastics to RMC and signed by Stack acting for Russell Plastics.  He also exhibits as Exhibit JSK 2 a memo reporting a discussion between Stack and one David Mayor on 29 March 1990.  Kowalczyk states that it is his belief that Stack's contact with RMC and RMC's contact with Stack since Stack left the employ of RMC was on behalf of "his new employer" Russell Plastics.  Declarant Collins includes as Exhibit TJC 33 extracts from the Australian Securities Commission which indicates that Stack was a director of Russell Plastics from 1 July 1989 to 26 August 1990, and reappointed a director on 7 September 1990, and that Grieves was a director from 7 September 1990 to 16 December 1992.

There is no evidence on behalf of the patentee put in answer to the notifiers' evidence which disputes the evidence of those declarants mentioned in the previous paragraph. However in his statutory declaration dated 1 November 1996 filed in answer to the s.28 notices, Stack states that "Alan Joseph Grieves and I are the inventors of the invention the subject of the Patent." I also note that in his declaration Stack does not mention any links between he, Grieves and Russell Plastics concerning the invention and Stack's entitlement to the patent grant if he and Grieves developed the invention as employees of Russell Plastics.

Leaving aside for the moment whether other persons may have contributed to the claimed invention, the evidence as mentioned supports Stack and Grieves at least being joint inventors. Without any master and servant situation, they would be entitled to be granted the patent (per s.15(1)(a) of the Act). Furthermore, without any master and servant situation, Stack alone would be entitled to be granted the patent to the exclusion of Grieves if Grieves had assigned his rights as an eligible person to Stack (per s.15(1)(a) and (c)). As I will indicate later, the evidence does not establish any such assignment. However the evidence also supports the conclusion that Stack and Grieves developed the invention while employees of Russell Plastics. In that event the normal master and servant considerations would mean that an invention developed by Stack and Grieves as part of their normal employee duties, and absent any express agreement to the contrary, belongs to Russell Plastics who would thus be entitled to be granted the patent (per s.15(1)(b)). As I will also indicate later, the evidence does not establish the existence of any such agreement.

Certain file documents
I note that the official file for petty patent 662284 contains several other documents which are of some relevance to the entitlement issue, these documents having been filed before the s.28 action commenced. In support of the request to the Commissioner by GST to record its interest by assignment in the petty patent from George Stack, a number of documents were filed. Firstly, on 11 December 1995 there was filed a deed of assignment between George Stack and GST dated 24 August 1995 concerning petty patent 662284. Secondly, on 5 February 1996 the following were filed:

1. A statutory declaration by Grieves dated 24 January 1996 directed to the matter of petty patent 645740.

2. A statutory declaration by Miles dated 24 January 1996 directed to the matter of petty patent 645740.

3. A certified copy of a statutory declaration by Messrs Norton, Miles, Stack, Tweedale and Grieves made jointly in January 1996.

4. A statutory declaration by Stack dated 23 January 1996 directed to the matter of petty patent 645740.

These declarations correspond to those provided by the patentee in respect of the s.28 action for petty patent 645740. They are referred to in some detail by the Deputy Commissioner in his decision on entitlement for that petty patent (see Stack v Davies Shephard Pty Ltd and Another (1996) 34 IPR 131 at 134-136, hereinafter referred to as Stack v DS).  Although declarations 1, 2 and 4 are directed to the matter of petty patent 645740, they include incidental references to petty patent 662284.  As these documents are part of the official file and are open to public inspection under s.55, they are available for consideration in this matter and I will now discuss them.

1. Declaration by Grieves
The Grieves declaration refers to an assignment document dated 5 September 1990 between Grieves and Stack.  That document refers to Grieves being the author of certain artistic work and does not mention patent rights.  Patent application PK2036 had been filed before the date of this document.  The Deputy Commissioner in Stack v DS (supra) formed this conclusion about this evidence:

"In my view, whatever was the subject of the agreement between Grieves and Stack dated 5th September 1990, that agreement clearly does not contemplate any assignment of patent rights. To the extent that Grieves now declares that patent rights were covered by that assignment, an objective construction of that document does not support that contention. I strongly prefer the plain meaning of the contemporary document recording the agreement, to Grieves' current interpretation of what that document was intended to cover."

Grieves in his declaration also states:

"9.  George Stack became registered as Patentee of Petty Patent 645740 and Petty Patent 662284 with my consent and as assignee of all my right title and interest in and to the intellectual property contained in the said Petty patents and with the consent and agreement of G S Technology Pty Ltd.

10.  Russell Plastics Pty Ltd acknowledged to me on 16 March 1994 that it had no claim or interest in and to the intellectual property concerning the water meter assemblies or in or to Petty Patent 645740."

I do not believe that this evidence from Grieves is such as to clearly establish that Grieves assigned his patent rights in respect of the invention made the subject of application PK2036 to Stack.  There is no other evidence from Grieves to establish that before petty patent 662284 was granted, Grieves assigned his interests in the invention (as a joint inventor) to Stack.  With regard to Grieves' reference to Russell Plastics, Grieves provides nothing to support this statement or that Russell Plastics by way of express agreement had varied the normal master and servant considerations regarding the invention and its patent rights.

2. Declaration by Miles
I agree with the conclusion by the Deputy Commissioner in Stack v DS (supra) where he considered that the evidence of Miles did not prima facie establish Stack's entitlement to the grant of the petty patent, that conclusion being applicable in this case to petty patent 662284.

I note that Miles in paragraph 4 states that "Russell Plastics Pty Ltd acknowledged and does acknowledge that it has no claim or interest in and to the intellectual property including patent rights … for water meter assemblies arising from or pursuant to … PK2036; … petty patent 645740; petty patent 662284; … ."  There is no evidence from Miles to support this statement and I note that whilst he was a director of Russell Plastics at the date of his declaration, he only became a director in December 1990, that is after application PK2036 was filed.

3. Declaration by Norton et al
This declaration was made jointly by the persons in their respective capacity as a current or past director of GST.  I agree with the conclusion by the Deputy Commissioner in Stack v DS (supra) where he stated "… I do not consider that the declaration by Norton et al prima facie establishes Mr Stack's entitlement to the grant of the petty patent", that conclusion being applicable in this case to petty patent 662284.

4. Declaration by Stack
This declaration refers to "agreed" matters between Stack and Grieves in August 1990 and (like Grieves) to the assignment document dated 5 September 1990.  In paragraph 3 he makes a similar statement to that by Miles in his paragraph 4 regarding Russell Plastics, but provides nothing to support this statement.  I note that Stack was not a director of Russell Plastics at the time provisional patent application PK2036 was filed.  Again I agree with the conclusion by the Deputy Commissioner in Stack v DS (supra) where he considered that the declaration did not prima facie establish Stack's entitlement.

Collectively in respect of these declarations the Deputy Commissioner in Stack v DS (supra) stated:

"Accordingly, whilst it is appropriate to accord some greater weight to the assertions made by reason of the corroborative nature of the four declarations, I do not think the weight is increased significantly. On the other hand the evidence is fully consistent with there having been no assignment of patent rights from Grieves to Stack in the document of 5 September 1990, and I strongly prefer this evidence to the assertions of entitlement made by the declarants.

Accordingly I do not consider that the declarations, either individually or jointly, establish a prima facie case for a finding that Mr Stack was entitled to the grant of the petty patent."

I fully concur with the Deputy Commissioner's finding, that finding being applicable in this case to petty patent 662284.  I would add that the references in these declarations to Russell Plastics and to any rights in the invention which they are said not to claim or in which they do not have an interest, are uncorroborated by any documentary evidence such as company resolutions, agreements, etc. of a contemporary period to the filing of provisional patent application PK2036 or to the filing of the application giving rise to petty patent 662284.

In summary, I do not consider that these declarations establish a prima facie case for Stack to be entitled to the grant of petty patent 662284, or that Russell Plastics by way of express agreement had varied the normal master and servant considerations regarding its rights to the invention as employer in favour of the joint inventors who were employees when application PK2036 was filed.

Further submissions for the patentee
In a letter to the Commissioner dated 15 September 1999 enclosing a copy of the judgement in the Stack case (supra) and in his letter dated 16 October 1999, Mr Abaza for the patentee makes reference to a Deed of Agreement between GST, Russell Plastics, George Stack and Alan Grieves made on 22 October 1996.  This deed was part of the evidence filed before the court in the Stack case (supra) apparently exhibited to a witness statement of Alan Grieves.  Mr Abaza states that in the extension of term application for petty patent 662284 "the Commissioner's delegate must have regard to the Deed  -  which the Court regrettably did not".  I note that in paragraph 55 of the judgement in the Stack case there is reference to a statement by Grieves, but there is no reference to this deed in the judgement.  I note that the judgement indicates in paragraph 14 that "a number of exhibits were wholly or partly struck out".  The judgement in Stack v Brisbane City Council [2000] FCA 598, issued on 10 May 2000, confirms that this deed was a document struck out from the court action (see paragraph 13).

The Commissioner only has access to a copy of this deed through the court action concerning petty patent 645740. The deed referred to has not been filed by the patentee in the s.28 proceedings for petty patent 662284. The patentee did not provide the deed in evidence in response to the invitation by the Commissioner issued on 1 August 1996 to file any evidence in response to the notifiers' original s.28 evidence. Clearly the patentee was in a position to advance and rely on the deed if it so wished when it responded to the s.28 notices given that it was a document dated several days before Stack, a signatory to the deed, declared and filed his statutory declaration dated 1 November 1996 in this matter.

The patentee has not requested the Commissioner to grant leave for the patentee to adduce the deed as further evidence into the proceedings for petty patent 662284.  I do not take Mr Abaza's submissions in his letter of 16 October 1999 as making such a request.  Even if it could be so treated, I am not convinced that a sound case could be made out for allowing this deed into the proceedings, particularly at such a late stage and well after the hearing date.  Issues of possible relevance of the material to the action, possible injustice to the other parties if allowed into the proceedings, diligence by the patentee concerning the material and the stage when it is sought to be presented, and likely protraction of the action, all arise for consideration in determining whether further evidence should be permitted into the proceedings pursuant to regulation 22.24 of the Patent Regulations.  As to possible relevance of the deed, although Mr Abaza's submissions suggest that entitlement matters fall into place given the deed, from a brief perusal of the contents of the deed I do not believe that necessarily follows.  In particular the deed does not seem to establish a prima facie case for Stack having entitlement to be granted petty patent 662284.

I do not believe that it is appropriate for me to admit the deed in question into the proceedings on my own motion.  The patentee has had ample opportunity to formally seek to adduce the document into the proceedings but has not done so.  Accordingly I will not have further regard to this deed.

Whether persons other than Stack and Grieves contributed to the invention
The notifiers assert that Williams and Cornish of RMC contributed to the invention particularly in relation to an adaptor to interface the manifold with different water meters and in respect of the non-return valve design.  An adaptor is not a feature of the claimed invention and consequently I reject the assertion that Williams contributed to the invention of petty patent 662284.  Regarding the non-return valve design, as I have earlier discussed, the valve defined by claim 3 is disclosed in provisional specification PK2036.  Application PK2036 was filed before Cornish says he was involved in some development work for a water meter assembly for Stack and his companies.  I therefore also reject the assertion that Cornish contributed to the invention of petty patent 662284.

Summary

The material before me does not satisfy me that George Stack was entitled under s.15(1) of the Act to be granted a patent for the invention disclosed in provisional application PK2036. It follows and I find that George Stack was not entitled to be granted petty patent 662284 which derived from application PK2036. Thus the petty patent 662284 is invalid on the ground provided in s.28(1)(a).

Section 69(4) of the Act provides:

"The Commissioner must not refuse to grant an extension of the term of a petty patent that the Commissioner is satisfied is invalid unless the Commissioner has, where appropriate, given the applicant a reasonable opportunity to amend the relevant patent request or complete specification, or both, for the purpose of removing the grounds of the invalidity and the applicant has failed to do so."

I can see no avenue by which my finding on invalidity can be overcome or removed by an amendment as indicated in this provision.  Thus this is not an appropriate situation where some purpose may be gained by providing the amendment opportunity as in this provision.  Accordingly I refuse to grant an extension of the term of petty patent 662284.

In respect of the provisions of s.33(2), there is no evidence to establish that either notifier under s.28, namely Davies Shephard or GSA, is an eligible person in relation to the invention claimed in petty patent 662284.

COSTS

Under s.210(d) the Commissioner is empowered to award costs against a party to proceedings before the Commissioner.  The Deputy Commissioner in his decision in Stack v DS (supra) considered but rejected an argument that the power of the Commissioner to award costs under s.210(d) was a judicial rather than an administrative power.  If there was any doubt concerning that decision, I believe that it is clear from the judgement of Drummond J in Stack v Commissioner of Patents [1999] FCA 148 that the power to award costs conferred by s.210(d) does not have a judicial character.

The usual practice is that costs follow the event meaning that costs would normally be awarded against an unsuccessful party to a proceeding. The patentee has been unsuccessful in its application for extension of term of petty patent 662284. The notifiers have sought an award of costs in their favour in these proceedings and prima facie an award in their favour is justified. At the hearing on 20 July 1999 Mr Collins for the notifiers sought an award of above scale costs for the further evidence issue. Further, when filing their submissions on 11 August 1999 the notifiers requested an award of costs above the scale of Schedule 8 of the Patent Regulations and provided reasons in support of that request. The reasons include reference to the history of setting this matter for hearing, preparing for the originally scheduled hearing set for 11 June 1997 which hearing date was set aside following actions on behalf of the patentee, the hearing of the 20 July 1999 and associated further evidence matters, preparation of submissions for the substantive s.28 matters, and the inconvenience and expense incurred in dealing with the various series of events leading to the substantive hearing.

In considering the question of an award of costs the provisions of regulation 22.8(1) are relevant.  That regulation provides:

"The Commissioner must not award costs, other than costs specified in Schedule 8, unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs."

It could be argued that by deciding not to attend the hearing on 16 August 1999 or to place any submissions before the Commissioner on costs at that time, the patentee relinquished its opportunity to make a submission on the matter of the award of costs.  However given that the notifiers have sought and advanced an argument for an award of costs other than costs specified in Schedule 8, and mindful of regulation 22.8(1), I believe it is appropriate to ensure that the patentee has an opportunity to make submissions on this question before I decide on costs.  Accordingly I allow the patentee a period of 21 days from the date of this decision to provide any written submissions on costs.  I allow the notifiers the same period in which to provide any further written submissions regarding costs.  I will decide on costs after the expiration of the period mentioned.

CONCLUSION

In this matter I have found that:

1. The petty patent specification 662284 does not offend against section 40(2) or (3).
   
   

2. The claims of petty patent 662284 are entitled to the priority date of 30 August 1990.
   
   

3. The invention claimed in petty patent 662284 is novel given the items of prior art relied on by the notifiers.
   
   

4. The invention claimed in petty patent 662284 involves an inventive step.
   
   

5. The invention claimed in petty patent 662284 is a manner of manufacture within the terms of s.18(1)(a).
   
   

6. George Stack was not entitled to be granted petty patent 662284.
   
   

Given finding item 6, it follows that Petty patent 662284 is invalid on the ground provided in s.28(1)(a). I have refused to grant an extension of the term of petty patent 662284.

I have allowed the patentee and the notifiers a period of 21 days from the date of this decision to provide any written submissions on costs, and I will decide on costs after the expiration of that period.

Trevor Bruhn
Delegate of the Commissioner of Patents

Solicitor for the patentee              :  Andrew P Abaza, Brisbane

Patent attorneys for the notifiers   :  Phillips Ormonde & Fitzpatrick, Melbourne