Instant Foundations (Aust) Pty Ltd v Steel Foundations Limited and Turson Products and Constructions Pty Ltd
[1999] APO 13
•24 February 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 678131 in the name of INSTANT FOUNDATIONS (AUST) PTY LTD
Title: Ground Anchors
Action: Application under section 69 for an extension of term of the petty patent; notices under subsection 28(1) filed by STEEL FOUNDATIONS LIMITED and by TURSON PRODUCTS AND CONSTRUCTION PTY LTD
Decision: Issued .
Abstract
The patent was found invalid for want of novelty in light of two trade brochures and several instances of prior use of devices depicted in the brochures. Central to the matter was whether certain features of the claimed invention were inessential, whether the brochures had been published in Australia and how the person skilled in the art would interpret various photographs and drawings in the brochures.
One of the subsection 28(1) notifiers - Steel Foundations Limited - was held to have standing in this matter notwithstanding the fact that its largest shareholder and a current director was the inventor of the invention and assigned the invention to the patentee.
The application to extend the term of the patent was refused while in its present form. As there is an infringement/revocation action currently before the Federal Court concerning this petty patent, the patentee was allowed 60 days in which to give to the Commissioner a notice in accordance with Order 58 Rule 10 of the Federal Court Rules that it intends to apply to the Federal Court under the provisions of section 105 of the Patents Act to amend the patent to remove the causes of invalidity.
Costs were awarded against the patentee.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent No. 678131 by INSTANT FOUNDATIONS (AUST) PTY LTD; application under section 69 for an extension of term of the petty patent, and notices under subsection 28(1) filed by STEEL FOUNDATIONS LIMITED and by TURSON PRODUCTS AND CONSTRUCTION PTY LTD
BACKGROUND
Petty Patent 678131 was filed as petty patent application 74225/96 on 9 December 1996 by Instant Foundations (Aust) Pty Ltd. The applicant is the assignee of the inventor, Paul Anthony Camilleri. Application 74225/96 was filed as a divisional application of standard patent application 658252. Application 658252 is under opposition by one of the parties to the present action, Steel Foundations Limited. The opposition matter was heard on the day after the present matter. A separate decision on the opposition matter is being issued concurrently with this decision.
Petty Patent 678131 was sealed on 18 April 1997. On 14 October 1997 Steel Foundations Limited ("SFL") filed a notice under subsection 28(1) of the Patents Act asserting that the petty patent was invalid on the grounds that:
a) the patentee was not entitled to be granted the petty patent,
b) the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b) and
c) that the specification does not comply with subsection 40(2) or(3),
that is, all the grounds available under subsection 28(1).
On 17 March 1998, Turson Products and Construction Pty Ltd ("Turson") filed a section 28(1) notice similarly invoking all available grounds.
Evidence in response to the evidence filed with the section 28(1) notices was duly filed. In the case of the SFL action, both parties adopted the expedient of cross-referencing evidence which had already been filed in relation to the parallel opposition matter.
The matter was heard in Canberra on 24 November 1998. The patentee was represented by Mr David Logan of counsel, assisted by Mr Ron Halliday, patent attorney of the firm Cullen & Co., Brisbane. SFL was represented by Mr Grant Adams, patent attorney of the firm Fisher Adams Kelly, Brisbane, and Turson was represented by Ms Susan C. Thompson of counsel, assisted by Mr Allen Evans, patent attorney of the firm Evans & Rose, Melbourne.
THE SPECIFICATION
The field of the invention is stated by the specification to be as follows:
"…….ground anchors having particular but not exclusive application for supporting upstanding members such as posts for permanent or temporary fencing, sign and delineator posts, columns such as for street lighting, for providing a building foundations (sic) or for other applications where ground anchorage and support is required."
The specification then gives a brief outline of the prior art, constituted by such well-known techniques as setting the post or suchlike in concrete, or using spigots set permanently in the ground upon which a temporary above ground structure can be mounted.
The device of this invention is, in actuality, a very large helically-threaded screw (length of up to several metres and diameter of up to several decimetres). The thread is constituted by a strip of material helically wound about the screw such that it extends outwardly from (that is, perpendicularly to) the axis of the screw. The screw has a shank, and the head of the screw is either a planar disc or helical shape which is co-axial with, and has a larger diameter than, the shank of the screw. In preferred form the thread is very short (about one revolution) and the shank makes up, by far, the preponderance of the length of the screw.
There are three claims, as follows:
"1.A ground anchor comprising a load bearing tube of uniform diameter having a helical flat adjacent its open ground penetrating end and, spaced along the tube from said helical flat, an integral ground engaging flange having either a planar disc shape or a helical shape.
2.A ground anchor as claimed in claim 1, wherein said ground engaging flange is a helical flat having substantially the same radial dimension as the helical flat adjacent the ground penetrating end of the anchor.
3.A ground anchor as claimed in claim 1, substantially as herein described with reference to the accompanying drawings."
The expression "helical flat" was the focus of considerable attention in the evidence and at the hearing, and I will be returning to it later. For the meantime I note the following statement in the specification that
"[t]he helical flat or flats may be in the form of a strip of material fixed to the load bearing tube to extend outwardly therefrom and follow a helical path about the tube"
as being material to this context.
As I understand the invention, the helical flat operates as a screw thread facilitating the entry of the anchor into the ground upon rotation of the load bearing tube. The ground engaging flange is apparently intended to contribute to the operation of the device as an anchor both directly, by physically contributing to the anchoring effect, and also indirectly, by regulating the distance the anchor penetrates into the ground.
The specification describes a considerable number of preferred embodiments of the invention: in fact the drawings run to thirty-four figures. In the main these embodiments are simply embellishments of the basic form of the invention, tailored to specific applications. It is not necessary for the purposes of this decision to go into the fine details of the embodiments.
THE EVIDENCE
The evidence from SFL consists of:
· a statutory declaration by Graeme Bagley, who is a principal of a company which does not appear to have any connection to SFL or Turson, but which is clearly not a disinterested party; the principal item of evidence is an exhibit of a catalogue ("the Chance 1988 catalogue") of a United States company - A. B. Chance Co. - with which Mr Bagley's company has a manufacturing agreement; most of the remainder of the evidence goes to establishing prior use of items illustrated in the catalogue.
· a statutory declaration by Grant Adams which is mainly of significance for its exhibits which comprise a number of patent specifications and bulletins, brochures and the like, including the Chance 1988 catalogue.
· a statutory declaration by Dale John Anderson, who is a principal of Turson, affirming that the Chance 1988 catalogue was available to the public in Australia prior to the priority date of the claims in suit.
· a statutory declaration by Keith Talbot Smith, who is an employee of a company which apparently operates in the area of the invention but does not have a direct interest in this matter; Mr Smith affirms that "screw anchors" which are disclosed in another A. B. Chance Co. catalogue ("the Chance 1983 catalogue") were well known and extensively used in Australia prior to the priority date of the present claims.
· a statutory declaration by Kevin Skinner, who is a principal of a company which apparently operates in the area of the invention but which has no apparent direct interest in this matter; Mr Skinner affirms that "screw anchors" which are shown in the Chance 1988 catalogue were imported into and sold in Australia prior to the priority date of the present claims; as well, he supports assertions made by Graeme Bagley regarding the Chance 1988 catalogue anticipating the claims of patent application 658252 (which has claims equivalent to the claims presently in consideration).
The patentee's evidence in response to the SFL evidence comprises:
· a statutory declaration by Terry O'Haire, a director of the patentee company; the only substantive evidence provided by Mr O'Haire is in relation to whether SFL is estopped from challenging the extension of term of the patent because one of its principals (Paul Anthony Camilleri) was the inventor of the invention, having assigned his rights in the invention to the patentee; the remainder of Mr O'Haire's declaration concerns shortcomings which he considers to exist in the evidence of SFL.
· a statutory declaration by John Darling, managing director of the patentee company; Mr Darling simply declares that he is in full and total agreement with the statements made by Terry O'Haire and endorses them in full.
The evidence from Turson is:
· a statutory declaration by Allen Evans constituted by two exhibits, which are affidavits in support of a Summary Judgement Application by Turson in relation to a matter dealing with infringement and revocation concerning this petty patent currently before the Federal Court; those affidavits are:
· an affidavit by Graeme Bagley in which, despite having given no indication of doing so in his earlier statutory declaration for SFL, he now recalls having seen the Chance 1983 catalogue (but also stating that it was not distributed to customers because it was too detailed and technical), and in which also he provides evidence (including three videotapes) relating to a number of other occurrences of paper anticipation of the invention as well as prior use of anticipating devices shown in the Chance 1983 catalogue, the Chance 1988 catalogue and other documents; and
· an affidavit by Allen Evans setting down his construction of the specification and its relation to the prior art.
The patentee's evidence in response to the Turson evidence comprises:
· a statutory declaration by Terry O'Haire confined mainly to pointing out shortcomings in the Bagley declaration.
· a statutory declaration by Ron Halliday disputing aspects of the construction of the specification and interpretation of the prior art given by Mr Evans.
I will set out the evidence in more detail, as required, later in my decision.
SUBMISSIONS
At the hearing Mr Adams submitted on behalf of SFL that:
· because section 28 simply specifies that "A person ……may notify the Commissioner," the notifying company, which is a commercial competitor of the patentee, is entitled to question the validity of the patent, despite the fact that the inventor is a director and largest shareholder of the notifying company, as was determined in dismissal proceedings in relation to the opposition to the parent application.
· for SFL to be estopped from challenging the validity of this petty patent under subsection 28(1) would be an injustice to the other shareholders who own 77.2% of the company.
· Bagley, Skinner and Smith are skilled addressees and expert witnesses in the field of the invention.
· the terms "helical flat" and "ground penetrating" are not clear.
· the claims are not novel in light of the prior art anchors identified by Bagley, Skinner and Smith, and in particular, the anchors of A. B. Chance Co.
· Bagley, Skinner and Smith all held copies of the Chance 1983 and 1988 catalogues and were under no obligation of confidentiality in relation to them; they declare their first hand knowledge of these things and of the fact that 50 or so copies of them were distributed.
· the invention is lacking in an inventive step since it was common general knowledge at the priority date of the claims to provide two or more helical screws on ground anchors.
Ms Thompson for Turson submitted that
· the construction of a patent specification is a function of the court or tribunal.
· claims must be interpreted according to their terms on ordinary principles, but if an expression is not clear or is ambiguous it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim.
· the term "ground engaging flange" in reference to "planar disc shape or a helical shape" is not clear.
· Mr Bagley's affidavit establishes that the Chance 1983 and 1988 catalogues and other materials were provided to Mr Bagley before the priority date of the claims "without inhibiting fetter".
· evidence in the form of photographs must be looked at through the eyes of the skilled addressee of the specification and where the evidence is contradictory, the judge or hearing officer must decide.
· Mr Bagley is the skilled addressee of the specification.
· the ground anchors with separately inserted and/or square shaped "ground engaging flanges" cited in the Bagley affidavit are "mechanical equivalents" of the disc-shaped flange defined in claim 1.
· the publications and instances of prior use cited in the Bagley affidavit would infringe the claims in suit, and therefore anticipate those claims.
· the matters set out in the Bagley affidavit show that the particular combination of integers in claim 1 would, before the priority date, have been obvious to a person skilled in the relevant art of the manufacture of ground anchors in light of the common general knowledge as evidenced generally in the Bagley affidavit.
Mr Logan submitted in relation to the SFL action that:
· in the statement of grounds and particulars in respect of the opposition to the parent application it is stated that "the skilled addressee is a civil engineer and, more particularly, such an engineer with knowledge and expertise in the area of building foundations;" accordingly, Mr Bagley, who is a managing director, is not qualified to be the skilled addressee as he does not have any "hands-on" experience.
· SFL is estopped from asserting invalidity in these proceedings as Mr Camilleri is, and was at all material times, the guiding mind of SFL, having been a director as of 20 April 1995 and managing director as of December 1995.
· each of the combination of eight features defined in claim 1 is essential, and in none of the cited prior art is an anchor disclosed having the combination of all the essential integers of the patented invention.
· there is no evidence to establish that the foreign patents included in the Adams declaration have ever been publicly available in Australia, and therefore they are not part of the prior art base for assessing the validity of the petty patent.
· none of the alleged prior publications contain clear, unequivocal and unmistakeable directions to use the apparatus in the manner described in the specification.
· the evidence does not clearly establish that each of the Chance and other prior art documents relied upon was publicly available in Australia prior to the priority date.
· in relation to inventive step, there is no evidence as to the common general knowledge in the art at the priority date, and nor is there evidence of whether the Chance documents or information obtained from use of the Chance anchors would have been ascertained, understood and regarded as relevant to work in the relevant art at the relevant time by the person skilled in the art.
· the feature of the open ground-penetrating end of the patentee's anchor, in combination with its load-bearing foundation capacity in universal applications and the other integers, constitutes an inventive step, and it is the inter-relationship of all the integers (some of which may be old) which produces the combination of integers providing the new advantages.
· apropos section 40, the authorities warn against adopting a purely literal approach and prefer construction of the specification in a purposive manner in the light of the common general knowledge of a person skilled in the art, and warn against invalidating a patent for lack of clarity or ambiguity in relation to mere technicalities.
· the expression "helical flat" is used in the art to mean a unitary flat surfaced element which wraps around the tube to form a single helix, and is clear.
· the invention is an inventive combination meeting the threshold requirement for patentability under paragraph 18(1)(a) of the Patents Act.
In relation to the Turson action, Mr Logan made these additional submissions:
· in his affidavit, Mr Evans has identified only five essential integers by impermissibly limiting the plain wording of claim 1 by reference to words in the specification which merely describe one of the embodiments of the claim.
· contrary to what is asserted by Mr Evans, the phrase "ground engaging flange" is not ambiguous - it simply means engaging or interlocking with the ground.
· if claim 1 is limited to a ground engaging flange having a planar disc or helical shape (as it is), no claim is made in respect of a planar square, rectangular or other shape, notwithstanding the contrary inference contained in the body of the specification, and hence it follows that anchors with square or rectangular ground engaging flanges do not infringe or anticipate the petty patent.
· many of the Chance anchors are "tension anchors," not "foundation anchors," whereas the patentee's invention is for a universal load bearing anchor which has many foundation applications.
· the Chance anchors do not all clearly show an open ground penetrating end, which is an essential feature of the subject invention.
· many of the Chance anchors are described as having "shafts", which contemplates a solid rod construction,
· various Chance anchors are not of "uniform diameter" as required by claim 1, in that they have (for example) a pilot point "being a solid rod welded to the centre of the helix."
· the Chance foundation anchors often do not incorporate a spaced ground engaging flange having a planar disc shape or helical shape.
I will give a more detailed account of the submissions the parties made at the hearing, where pertinent, later in my decision.
DECISION
Procedural issue
The patentee has challenged the standing of SFL as an informant under subsection 28(1). This is done on the basis that Mr Camilleri, the inventor of the invention in suit, is a substantial shareholder, director and the "guiding mind" of SFL and therefore SFL is estopped from pursuing its action as an informant under section 28(1). The legal basis for this is Gonville v Hay, 21 RPC 49.
The patentee has raised this issue before, in an action under regulation 5.5 for dismissal of the opposition to the parent application 658252. The decision in that matter was issued on 20 March 1996. As it is a decision of a tribunal it is not binding, but in any case it is contended by the patentee that it did not give any guidance in the present matter since it was decided by applying the stringent criteria relevant to summary dismissal of being "so obviously untenable that it cannot possibly succeed," "manifestly groundless," "so manifestly faulty that it does not admit of argument," and so forth. However, there is no indication in the reasoning contained in the decision that these criteria were a factor in the findings made. I note that, in deciding that Mr Camilleri was not a director at the time the opposition was filed, the hearing officer reached that conclusion on the basis of the balance of probabilities. Also, the principles of law that were relied upon would seem to me to be insensitive to those criteria.
Regardless, the reasoning and the conclusions reached in the dismissal action would seem to still hold good. In his decision on the dismissal, the hearing officer found that, notwithstanding the existence of two applications for registered designs dated 20 April 1995 and 1 June 1995 in which Mr Camilleri represented himself as being a director of SFL, on the balance of probabilities Mr Camilleri was not a director of SFL at the time the notice of opposition was filed on 4 July 1995. I think the evidence here for that conclusion is even more compelling than it appears was before the hearing officer on that occasion. In particular, in Mr O'Haire's evidence in answer there is the Director's Report which is part of SFL's Annual Return for the financial year ended 30 June 1996 filed with the Australian Securities Commission. It shows Mr Camilleri as having been appointed an executive director on 5 December 1995.
I also note that the report for the previous financial year (in which Mr Camilleri does not figure) shows cessations of directors. I therefore further conclude that Mr Camilleri was first appointed as director of SFL on 5 December 1995.
Of course, Mr Camilleri became a director before the section 28(1) notification was filed. However, it would be illogical to view the section 28(1) action as anything more than an outcome or flow-on of the opposition to the parent. Clearly, it is the date of filing the opposition to the parent that is crucial to this consideration.
Regarding Mr Camilleri's role as a consultant with the opponent company prior to the filing of the opposition, the hearing officer in the dismissal matter stated, correctly in my view:
"I find it difficult to accept that a company is estopped from questioning an application on the grounds that the inventor of the invention the subject of the application may have been associated with the company through employment, consultancy work or otherwise. In business, employees, consultants and other officers frequently transfer their services amongst many companies in the course of their lifetimes. This is particularly likely between companies manufacturing similar products and competing in the same market. To preclude companies from contesting applications on the basis of prior associations of their employees or other officers with other companies would lock out many companies from instigating opposition proceedings."
I can well understand the disquiet of the patentee over the situation in relation to Mr Camilleri. However, as I have already stated, the evidence points towards Mr Camilleri not having been a director of the company at the date of filing the opposition to the parent. There is no evidence to substantiate the contention of Mr Logan that Mr Camilleri "was, at all material times, the guiding mind of Steel" and that the company is "a mere cloak or sham." All that exists in the way of evidence is a mere unsubstantiated assertion by Mr O'Haire that he "understands" this to be the case.
Having found that Mr Camilleri was not a director at the relevant time, the hearing officer in the dismissal action went on to conclude that, on that basis, SFL was entitled to proceed with the opposition. I consider an analogous finding in relation to petty patent 678131 to be justified.
I find that Steel Foundations Limited is not estopped, because of its relationship with Mr Camilleri, from contesting the validity of petty patent 678131.
Section 40
SFL and Turson have raised a number of section 40 issues. I consider that only two of these are deserving of mention in regard to compliance with section 40. However, several of the other concerns raised by Turson and SFL go to the construction of the specification, and I will deal with them in that context.
The first section 40 issue I need to address is the question of whether the expression "helical flat" is clear. Mr Adams stated in his statutory declaration that
"[t]he word 'helical' means that the feature has three-dimensional characteristics, while the definition for 'flat' defines that such an article has features in two dimensions only, ie, is 'planar.' The terminology 'helical flat' is clearly an oxymoron and can be given no clear definition when construing the claim,"
while at the hearing he submitted that "reference to the body of the specification does not assist."
Mr Logan, on the other hand, contended that there is nothing unclear in the phrase, and in any case if any difficulty was had with the expression by the skilled addressee, then recourse would be made to the description of the invention in the specification to see what was intended. Mr Logan stated that the expression is used in the art to mean a unitary flat surfaced element which wraps around the tube to form a single helix.
I agree with Mr Adams that it is impossible to attach a definite meaning to the expression "helical flat," either in isolation or in the context of the claim. Nowhere in the evidence is there any indication of it being a term of art, and at the hearing no one was aware of any use of the expression outside the present specification. Mr Logan attempted to place a meaning on it, but the meaning he came up with seems to me to be just one of a number that could be postulated. Indeed, as will become apparent, it was one with which, upon applying the full force of the rules of construction, I do not agree.
The law concerning the rules of construction is long settled. Those rules were drawn together by Sheppard J in Décor Corp Pty Ltd v Dart Industries, (1988) 13 IPR 385 at 400. Sheppard J identified 10 rules of construction, of which rules 1, 2 and 4 have application to the present situation:
1.The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
2.It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
4.In some cases the meaning of words used in the claims may be qualified or defined by what is said in the body of the specification.
In my view because the term "helical flat" defies a definite meaning in the context of the claim, the rules of construction require one to go to the specification as a whole to determine if a definite meaning is attributable to it. If one does this, then I think there is no doubt that the expression "helical flat" is to be construed as being a strip of material following a helical path and extending outwardly from the axis of the helical path. This definition is derived from the statement in the body of the specification that I have noted above as being material to this context. This is notwithstanding the presence in that statement of the word "may", which would normally suggest that that to which it relates is just one of a number of possibilities. Nowhere in the specification is there any indication that some other form of "helical flat" is contemplated. Once the specification is used as a dictionary in this way, then I believe the expression "helical flat" is clear.
The second section 40 issue concerns the wording of the omnibus claim, claim 3. As I understand it, Mr Adams is saying that because omnibus claims are intrinsically independent, and paragraph 40(2)(c) requires a petty patent to have no more than one independent claim, the specification contravenes section 40 due to it having two independent claims.
I fail to see how claim 3 could be viewed as independent. Firstly, claim 3 is worded in the form of a claim appended to claim 1. It begins:
"A ground anchor as claimed in claim 1……."
Secondly, it clearly operates as a dependent claim. It depends for its scope on whatever integers there are in claim 1, such that if, for example, claim 1 were to have a feature added or deleted by amendment this would potentially (depending upon what is "substantially as herein described with reference to the accompanying drawings) flow on to claim 3. And its scope will always be within that of claim 1.
Accordingly, I conclude that the petty patent complete specification has just a single independent claim.
I find that that petty patent 678131 satisfies all the requirements of section 40 of the Patents Act.
Construction of the specification
Before proceeding to determine whether the invention defined by the claims is novel and involves an inventive step, it is necessary to ascertain the scope of the claims, including which features are essential.
Mr Logan, if I understand him correctly, sought to infer from the existence of the words "load bearing" in the claim that this placed the claimed invention in the realms of a certain category of ground anchor, namely, those which can be used for foundation applications. In support of this he relied upon certain passages in the specification, as well as statements made by Mr O'Haire in his evidence in response to the Turson evidence. It is true that the present invention is described in the specification as being suitable for such applications. However this does not permit a gloss to be given to the words of the claim so as to remove from their scope such applications as fencing, sign and delineator posts and columns for street lighting. This would be contrary to the plain meaning of "load bearing" and would be at odds with what the specification itself says. I therefore construe "load bearing" in the context of the present claim as meaning that, when in situ, the tube is capable of supporting a downward force, with no limitation upon the size of that force.
Regarding the term "tube," I accept the contention of the patentee that by definition a tube must have a hollow extending its full length. But I consider that in order for the tube to have a "uniform diameter" (which I take to refer to the overall, or outside, diameter) only requires that it have a substantially uniform diameter. It could, for example, have apertures in its wall or flanges located on the external surface of the tube, as with the present arrangement. I am also prepared to accept, although not without some hesitation, the patentee's contention that by attaching a pilot point to the end of a tube of uniform diameter means that the tube can no longer be said to have a uniform diameter.
I take the term "integral" in relation to "ground engaging flange" as meaning that the flange is permanently located on the load bearing tube, while I construe "ground engaging" as signifying that, when in normal use, the flange can be in contact with the ground, whether it be at the surface of the ground or within the ground.
I have already set out my understanding of the scope of the expression "helical flat" in the course of considering its clarity.
The parties held differing views as to the essential features of the invention. In his evidence Mr Halliday concludes that all the features of claim 1 are essential, and Mr Logan submitted likewise at the hearing. Mr Logan stated:
"the purpose of the specification is to give practical instruction on how to perform the invention; but the purpose of the claims is to define the scope of the monopoly. Accordingly, if the claim is limited (as claim 1 is) to a ground engaging flange having a planar disc or helical shape, no claim is made in respect of a planar square, rectangular or other shape. What is not claimed is disclaimed: Terrell on the Law of Patents, 13th edition, paras 4.31 & 4.32."
In this and other comments Mr Logan seems to be denying the possibility that any claim could have inessential features. However this flies in the face of the authorities. The case commonly cited in regard to this is Catnic Components v Hill and Smith Ltd, [1982] RPC 183, in which Buckley LJ stated that if a feature is essential to the working of the invention, then it has to be an essential feature of the invention. If however a feature is not essential to the working of the invention, one must construe the claim to see if the patentee has made it an essential feature by the terms of the claim, properly construed.
Mr Adams considered that the feature of the tube being open-ended was inessential, due to certain of the preferred embodiments disclosing anchors which do not appear to have open ends. Even if Mr Adams is right about the certain embodied anchors not having open ends (and some doubt accompanies that) the inconsistency in the specification is readily resolved in favour of the open end being an essential feature. Both the claims and the description of the invention support that interpretation, and it is clear that for the ground anchor to have an open end will materially affect the working of the invention in respect of its ground penetrating capabilities.
Mr Evans in his affidavit draws attention to the passage in the specification which states:
"The ground engaging flange may be defined by a planar member of sufficient size to define a radial abutment surface for location at ground level so that soil may be compressed thereagainst. The planar member may be of disc-like form, square, rectangular or of any other form."
From this Mr Evans concludes that, as the form of the planar member is not essential to the function of compression of the soil, the disc-like, square and rectangular forms of the ground engaging flange (provided they are of sufficient size, etc.) are all mechanical equivalents, and that the specific configurations of the "planar disc shape" and "helical shape" which claim 1 recites for the "integral ground engaging flange" are not essential features of the invention, although the "ground engaging flange" itself against which soil may be compressed is an essential feature.
In deciding whether the planar disc shape is an essential feature or not, I firstly have to decide whether it has any material effect upon the way the invention works. The difficulty for the patentee in this regard is that nowhere in the specification or its evidence and submissions does it point to there being any such material effect. Rather, there is the contrary statement in the specification to which Mr Evans has drawn attention. Moreover, on my analysis of the invention I can see nothing in the way of a material effect arising from the particular choice of a disc shaped flange, as distinct from any other shaped flange such as square or rectangular. The choice of any particular shape would appear to me to be primarily influenced by the purpose to which the ground anchor is to be put. Moreover, the fact that flanges having other shapes are marketed and are put to practical use would suggest that if there is a material effect it is not a particularly beneficial one. I am led to conclude that the planar disc shape does not materially affect the way the invention works.
That being the case, the question I then have to decide is whether the patentee has made it an essential feature by the terms of the claim, properly construed. In relation to that question, Lord Diplock stated in Catnic:
"It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way the invention worked."
As to what would have been understood by the skilled addressee of the present specification to have been intended by the patentee by its use of the words in the claim, I believe that the conclusion reached by Sheppard, Beaumont and Sackville JJ of the Federal Court in E Street Enterprises Inc v CPS Housewares Pty Ltd, 36 IPR 431 is also applicable in the present matter. The court stated:
"In our view, the draftsman of the claim chose his words carefully. A 'vent groove formed on' the piston is particular language. There is no warrant apparent on the face of the draftsman's language for widening it so as to embrace another form of aperture such as a hole."
The draftsman of the present claims has stipulated a particular geometric shape, namely a planar disc shape. I can see no justification for departing from the specific meaning of those words in order to construe them as embracing other geometrical shapes such as planar square or rectangular ones. I am inclined therefore to think that, so far as the present matter goes, the answer to the Catnic question is not in the negative.
Accordingly I consider the planar disc shape to be an essential feature of the invention.
Novelty
The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited, [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd., (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd., [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd., (1908) 25 RPC 428). Two forms of prior disclosure are alleged in the present matter, namely prior disclosure by document and prior disclosure by prior use.
Prior disclosure by document
The evidence from SFL and Turson comprises a number of documents which are said to anticipate the claimed invention. The patentee contends that a satisfactory level of proof as to whether these documents were publicly available in Australia before the priority date of the claims has not been provided. As a precursor to proceeding to determine whether these documents disclose the claimed invention and thereby render the claims not novel, I must decide whether there is sufficient evidence that publication of these documents has taken place before the priority date of the claims.
Turning firstly to the evidence of Mr Adams, his evidence comprises a number of specifications of patents and patent applications. However, he has provided no proof of the publication in Australia of these documents, and therefore they are not available for consideration under subsection 28(1). As they are patent documents, it is practically certain that they would have been published in the Patent Office library, and given their publication date in their country of origin it is practically certain they were published before the priority date of the present claims. Therefore, it would be possible (indeed, relatively easy) to establish the publication date of the documents in the Patent Office library and consider them as subsection 28(3) documents. However, as shall become apparent in due course, because of my finding in the present matter in relation to novelty, any finding adverse to the patentee in relation to the subsection 28(3) documents would be immaterial. Therefore, for the present, the patent documents in Mr Adam's evidence can be set aside insofar as petty patent 678131 is concerned, although there is a possibility they could come into play if the petty patent is amended under section 104. Those documents are in any event considered in relation to the opposition on the parent application 658252.
Mr Adam's evidence also includes a number of brochures and the like by A. B. Chance Co. and Dixie Electrical Manufacturing Co. No substantial evidence is provided of date of publication in Australia except for hearsay evidence in one case that:
"In a telephone conversation with Mr Skinner of Bardiworth Pty Ltd. he advised me that these brochures were distributed in Australia by his company prior to 12 December 1991."
Notable among the brochures is the Chance 1988 catalogue, although no evidence is provided of publication in Australia.
The Chance 1988 catalogue also puts in an appearance in the Bagley declaration for SFL. He states no more than that it was distributed by Hayman Industries in Australia prior to 12 December 1991 (the priority date). Also in Mr Bagley's evidence is a photocopy of an article from a newspaper called "The Summit Sun" which apparently circulates in the Monaro region of New South Wales. The copy is marked "Wed 19th June 1991."
Mr Smith's evidence for SFL includes the Chance 1983 catalogue. He states that the brochure was supplied by Evans Deakin Industries, South Brisbane, on a non-confidential basis in 1985. Mr Skinner states that the Chance 1988 catalogue was widely distributed in Australia, while Mr Anderson states that his enquiries have established that the brochure was available in Australia prior to December 1991.
The Bagley affidavit for Turson includes both the 1983 and the 1988 Chance catalogues. I note that this 1983 catalogue is different from that in Mr Smith's evidence. It is labelled "REV 4/6/84", whereas the Smith catalogue is labelled "REV 11/83". There are differences between the documents, but for present purposes their disclosures correspond. Two other documents in this affidavit which appear may have been intended for publication in some manner are one entitled "Supplemental Specifications and Recurring Special Provisions," which is published by the Illinois Department of Transportation, and one entitled "Chance Streetlight Foundations." Mr Bagley states that a few copies of the former document were provided to various engineers on request. No assertion is made by Mr Bagley that the latter document was published in Australia.
As Ms Thompson noted, a document is made available to the public if it is communicated to a single member of the public without inhibiting fetter (Bristol-Meyers Co.'s Application,
[1969] RPC 146 at 155). On the other hand, in matters such as these the notifying party bears a heavy onus to establish that the alleged relevant disclosures occurred before the relevant priority date. In proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523).
I am satisfied that based on the evidence of Mr Bagley the Summit Sun article constitutes a document which was publicly available before the priority date. Indeed, the patentee seemed prepared to concede as much.
Of the other documents in evidence, I think that only the Chance 1983 and 1988 catalogues approach having a satisfactory level of proof of publication. I do not agree with Mr O'Haire that they may be some form of internal document: they are clearly intended as a marketing device, and therefore are intended to be disseminated widely to potential customers. Also, I am not particularly concerned that the declarants for SFL and Turson cannot be more specific as to when the catalogues came into their hands, as a considerable period of time has elapsed since the events in question took place. But, on the other hand, I do have misgivings about the dearth of evidence about from where these documents (assuming there is more than one: in all the evidence only one original of each is provided) have materialized. They bear no indication of their date of receipt, or of having been, for example, placed in a file, and there is nothing in the declaratory evidence casting any light on this.
However, I believe it is clear on the evidence that A. B. Chance Co. had a presence in Australia in the 1980's, and it would be surprising if the sort of catalogues we are concerned with here were not at least given some distribution. I believe there is enough confirmatory evidence from either one of the parties in relation to that to conclude on the balance of probabilities that at least the minimal requirements for publication to have occurred have been met. I therefore find that the Chance 1983 and 1988 catalogues were published in Australia before the priority date of the claims in suit.
In looking now at what each of the three published documents has disclosed, of crucial significance is whether a certain category of ground anchor illustrated in the Chance 1983 and 1988 catalogues comprises a tube with an open, ground penetrating end. It is contended by Turson and SFL that this version of the ground anchor is, apart from appurtenances, simply a tube with one end - the ground penetrating end - having the plane of its opening at 45 o to the axis of the tube, thus creating a point at that end of the tube. That is, if one were to take a normal tube and cut through it at an angle of 45 o to the axis of the tube, one would end up with two such pointed tubes. The patentee, on the other hand, contends that there is insufficient evidence to say conclusively that that is in fact what is illustrated.
The construction of documents is always ultimately the responsibility of the hearing officer. To quote from Blanco White, Fifth Edition, 4-105:
"The question whether a claim has novelty over what is disclosed in an earlier document is primarily one of construction of the two documents, once the court has been put by evidence of the state of the art into the position of a skilled reader of them. For this purpose the earlier document must be construed in the usual manner, but as of its own date; that is to say, its meaning must be the meaning it bore at the date when it was written. Just as in the case of infringement, however, the further question, whether or not what the prior document ought to be regarded as disclosing is or is not substantially within the claim, is a question of fact."
The difficulty in the case of the Chance 1983 and 1988 catalogues is that the disclosure, at least insofar as hollowness is concerned, relies mainly on depictions such as photographs and non-diagrammatic drawings. C Van Der Lely N.V. v Bamfords [1963] RPC 61 is the main authority on the interpretation of photographs. What C Van Der Lely N.V. v Bamfords says, I think, is that in the case of photographs a court or tribunal may need to lean more heavily on the evidence of experts in arriving at a conclusion as to what is disclosed. That is, it is a matter of degree. In this case the issue is quite a straightforward one, but still remains a question of what the eye of the person with appropriate engineering skill and experience would see in the photograph or drawing of the prior art arrangements.
In the citations the appearance, especially the shading, of the ground anchors concerned is very much suggestive of the cylinders of the category of ground anchors in question being hollow at each end at least. Mr O'Haire has expressed the view that what is shown of the ground penetrating end could, in fact, be a closed end, that is, the depictions are not conclusive. While the depictions could be of a closed ground penetrating end, that is not how they appear to me, even taking Mr O'Haire's contrary view into account. Also, while the interior of the middle-section of the cylinders is not shown in the depictions, it seems a reasonable assumption that, to the person with appropriate skill and engineering experience, the impression gained would be that the hollow interior of the cylinder extends for its full length; that is, the cylinder is a tube as contended by SFL.
There is evidence apart from the drawings alone to support this conclusion. As both Ms Thompson and Mr Adams observed, the reference to one form of these ground anchors - the "HS Foundation" - in the Chance 1988 Catalogue as being a section of 3'' pipe is indicative that what is disclosed here is a hollow cylinder rather than a solid or partly hollow one. A like reference occurs in relation to the "T/C Foundation." In the Chance 1983 catalogue the reference is rather to a "pipe shaft." Mr Halliday attempted to explain this away as follows:
"This description is ambiguous in meaning since a 'pipe' is defined as a 'hollow cylinder of metal' yet a 'shaft' is defined as a long pole or rod. That is, the meanings are mutually exclusive. Is the pod hollow or solid? The latter meaning, that is solid, would seem to be more appropriate as otherwise there would be no need to qualify the word 'pipe.'"
"Pipe shaft" is also used in relation to a category of anchor referred to as a "Pad-Pod" device.
In rebuttal of this, Ms Thompson gave an informative English grammar lesson on adjectival nouns. Although this reinforced my own perception of what the term "pipe shaft" conveys, I approach the issue somewhat differently. I believe that Mr Halliday's definition is too narrow. I consider that in ordinary usage "shaft" has the connotation of anything that is long and straight. Indeed, a shaft may have no substance to it at all, as in a mine shaft. In light of this I am in no doubt that the expression "pipe shaft" conveys the meaning of being something that has all the characteristics of a pipe.
In consequence of the constructions I have placed upon claim 1 and the Chance 1983 and 1988 catalogues, I conclude that, as regards each publication, claim 1 is not novel in light of:
· the HS and T/C Foundations, which are tubular and have several helical shapes located above a helical "flat" and therefore anticipate the second aspect of claim 1 in which the integral ground engaging flange is a helical shape.
· the Pad-Pod Foundation, which is tubular and has a planar disc base plate which can engage the ground and therefore anticipates the first aspect of claim 1 in which the integral ground engaging flange is a planar disc shape. (Note that in the 1988 catalogue this ground anchor is not referred to explicitly as being of the Pad-Pod type, but is identifiable as such from its catalogue number.)
The Summit Sun article provides insufficient detail to constitute an anticipation - its only potential impact in this matter is in relation to prior use.
Regarding claim 2, in both the HS and T/C ground anchors at least one helical shape above the helical "flat" is substantially the same radial dimension as the helical "flat", and therefore claim 2 is anticipated by the prior art as cited.
Regarding claim 3, the prior art anchors so closely resemble those substantially as described in the present specification that I am unable to discern any novelty conferring feature in what is described in relation to the integers of claim 3 over what is disclosed in the previously cited prior art.
Accordingly I find that claims 1, 2 and 3 are not novel in light of the Chance 1983 catalogue and the Chance 1988 catalogue.
Prior Use
As I have stated already, the standard of proof required in these proceedings as to the primary facts is the civil standard, that is, the balance of probabilities, but it is incumbent upon the opponent to make its case. In the case of prior use, some corroboration is usually required. For example, in Seiller's Application, [1970] RPC 103, Graham J said at 106:
"In my judgment it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
Another case on this point is Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135, in which it was stated:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."
However, there are at least two Patent Office decisions where the uncorroborated evidence of an independent witness has been sufficient to establish the facts alleged in relation to prior use: Glenwood Systems v Gooden, (1993) AIPC 90-985 and Endurequip v Robyn Ann Roelofs, (1993) AIPC 91- 037, 28 IPR 131.
In his statutory declaration for SFL, Mr Bagley has provided evidence of one instance of prior use of a ground anchor that would, if the use was established, anticipate the present invention. That use relates to the installation of the Chance HS Type Foundation at Burren Junction, NSW, for Namoi Valley Electricity. The evidence Mr Bagley provides for this is fairly comprehensive, starting with communications leading up to an order being placed, the order itself, the invoice and photographs of the actual installation in May 1991. I am persuaded that, notwithstanding the doubt in relation to Mr Bagley's independence in this matter, this constitutes an adequate level of proof that the prior use of the Chance HS Type ground anchor did actually take place as alleged by Mr Bagley. Therefore, based on my finding supra that the HS ground anchor renders the presently claimed invention not novel, the same applies for the prior use at Burren Junction.
The evidence for SFL provides details of other prior use of Chance anchors, but these relate to anchors in the Chance catalogues which I consider do not anticipate the present claims.
In his affidavit for Turson, Mr Bagley repeats his evidence of the Burren Junction installation, but with the addition of video evidence of the installation. As well he provides video evidence of field days he attended in 1987 which were run by a representitive of A. B. Chance Co. These were held at the South East Queensland Electricity Board ("SEQEB") Instruction and Training Centre in Brisbane and at the premises of the Shortland Electricity Authority at Newcastle NSW. The purpose of the field days was to demonstrate Chance products. According to the evidence of Mr Bagley, the Chance products which were demonstrated included T/C type and Pad-Pod type anchors. I am satisfied that the evidence is sufficiently strong to establish that the Pad-Pod type anchor was so demonstrated at the SEQEB Training Centre. The T/C type (or at least what I take to be the T/C type) that was demonstrated had a pilot point rather than an open ground penetrating end, and thus does not anticipate the present invention. Therefore I find that prior use of the Pad-Pod type ground anchor has been established as alleged by Mr Bagley. As a consequence, based on my finding supra that the Pad-Pod anchor renders the presently claimed invention not novel, the same applies for the prior use at the SEQEB Training Centre.
Mr Bagley's affidavit also provides evidence of a prototype ground anchor provided by Hayman to the Prospect County Council (in NSW) in 1989. The affidavit also includes a technical drawing of the prototype, which is interesting in that it shows conclusively that the anchor is tubular. However, the fact that the anchor was provided as a prototype, the fact that there are no details given of the circumstances surrounding its provision and the fact that there is no collaboration even of the evidence as it stands causes me to find that there is insufficient evidence establishing prior use in this instance.
As with Mr Bagley's evidence for SFL, his evidence for Turson provides details of other prior use of Chance anchors, but these relate to anchors in the Chance catalogues which I have found do not anticipate the present claims.
Therefore it is my finding that claims 1,2 and 3 are not novel as a result of prior use of the invention in the form of the A. B. Chance Co.'s Pad-Pod and HS devices in 1987 and May 1991, respectively.
For the sake of completeness I will briefly address another line of reasoning upon which Turson relied in supporting its contention that the claimed invention is not novel in light of the versions of the prior art Chance ground anchors having square or rectangular flanges. That line of reasoning invokes the doctrine of "mechanical equivalents." The square and rectangular flanges are, it is said by Turson, to be the mechanical equivalents of the planar disc shaped flanges of the claimed invention and, accordingly, based on such cases as Clark v Adie, (1875) LR 10 Ch App 667 and Nicaro Holdings Pty Ltd v Martin Engineeering Co, 16 IPR 545, the claimed arrangements are not novel.
Apart from a deficiency of evidence establishing mechanical equivalence, this argument fails for reason that the doctrine of mechanical equivalents is only applicable to inessential integers, whereas I have concluded that the disc shaped flange is an essential integer. In Marconi v British Radio Telegraph and Telephone Co., Ltd., 28 RPC 181, Parker J stated in relation to infringement:
"If that part of the combination, or that step in the process for which an equivalent has been substituted, be the essential feature or one of the essential features, then there is no room for the doctrine of equivalents".
Gummow J commented along similar lines in Nicaro Holdings Pty Ltd v Martin Engineeering Co (supra).
Clearly, then, in this case the doctrine of mechanical equivalents is not a consideration in whether the claimed invention is novel in light of ground anchors having square or rectangular flanges. Where an essential integer is substituted for by another integer, regardless of whether the difference over the prior art is a mechanical equivalent the only possible recourse in contesting the validity of the claimed invention is to inventive step.
Inventive Step
According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Considering the latter of these criteria first, I do not think there is any doubt that the various documents and acts which the SFL and Turson have established as being in the public domain before the priority date of the claims would be "understood" and "regarded as relevant" by the person skilled in the art. However I think considerable uncertainty surrounds whether those documents upon which an allegation of lack of inventive step might be sustained, namely, the Chance 1983 and 1988 catalogues, would also have been "ascertained."
In Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited (an unpublished Patent Office decision on application 646918 dated 4 September 1997), the hearing officer took the approach that a document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. That approach seems to me to be sound. Applying it to the situation at hand, the relevant publicly available documentary information is in the form of brochures, and the evidence is that about 100 copies of these brochures had been distributed to persons having an interest in them. Nothing, however, is known of the subsequent fate of those documents. Given the unsubstantial extent of, and the uncertainties surrounding, the distribution of the brochures, it is not possible, in my view, to conclude that the person skilled in the art could reasonably be expected to have found any of them.
In the case of prior acts, I think that in order to be ascertainable such acts would need to be relatively widespread and routine. In the present matter, the evidence seems more to the contrary, as I shall explore further when considering the state of the common general knowledge.
Therefore, in my view, the evidence does not satisfactorily establish that the relevant publication of documents and acts which the evidence has established have taken place could reasonably be expected to have been ascertained by a person skilled in the art. If the allegation of inventive step is to be sustained, it therefore must be sustained on the basis of common general knowledge alone.
A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited, 144 CLR 253 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 it must be treated as being used by an individual as a general body of knowledge."
The state of the common general knowledge is a question of fact which must be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Only two declarants for the parties challenging the validity of the patent gave evidence on common general knowledge. Mr Skinner states:
"At [the priority] date, anchors claimed in the patent application were common general knowledge in the ground anchor industry in Australia."
Mr Smith states:
"In my opinion, a screw anchor having a first helical flight at or adjacent the ground engaging end of the tube or shaft, and a second flight (or multiple flights) on the tube or shaft, spaced from the first flight, for ground engagement, was common general knowledge in the field of screw anchors as at [the priority date]."
A general statement such as Mr Skinner has made does not, I believe, carry a great deal of weight, and is not particularly useful to the case his evidence is supposed to be supporting. Mr Smith's recitation of the common general knowledge only addresses a subset of the integers making up the claims, and falls well short of providing a basis for finding that the claims lack an inventive step on the basis of common general knowledge alone.
Some confirmation of the meagre state of the common general knowledge in the art can be obtained indirectly from the evidence. Mr Bagley has provided evidence of his company's sales of the Chase ground anchors. They appear to number little more than 100 over about the four years before the priority date, which I assume to be only a minuscule portion of the potential market. A. B. Chase Co. seems to have had the market in this type of ground anchor to themselves at the time, and Mr Bagley's company Hayman Industries, Mr Skinner's company Bardiworth Pty Ltd and Evans Deakin Industries Ltd appear to have been the only companies dealing in the Chase anchors in Australia. Presumably the sales of the last two mirror those of the first. Furthermore, the category of anchor of interest here, namely that comprising a tube with an open ground penetrating end, does not appear to be prominent among the Chase products. There is also evidence that in the years before the priority date Chase had made some attempt to get its products known to potential customers, such as by holding field days. While this only suggests that Chase products were not well known at that time (which substantially pre-dates the priority date of the present claims), it is not evident that this situation has changed. This lends support to the conclusion that the category of ground anchor to which this invention relates was most probably relatively unknown at the priority date of the claims, and that there was very little in the way of common general knowledge in the art. In light of that I must therefore conclude that the evidence does not support a finding that the invention is lacking an inventive step.
I find that, on the evidence, the claimed invention involves an inventive step.
Manner of manufacture
While this was one the grounds stated by both SFL and Turson under subsection 28(1), neither party pursued it in their evidence or at the hearing. The invention clearly meets the threshold requirement for patentability required under paragraph 18(1)(a) of the Patents Act, being a combination in which there is a working interrelationship between the integers of that combination which leads to a new or improved result (Advanced Building Systems Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604).
I therefore find that the invention is a manner of manufacture in compliance with paragraph 18(1)(a) of the Patents Act.
Conclusion
I have found that on the basis of the evidence filed in this matter by SFL alone and Turson alone, petty patent 678131 is invalid as a consequence of being not novel. I therefore refuse to grant an extension of term of the petty patent in its present form.
However, I believe that there could be patentable matter disclosed in the specification, and that the specification may be amenable to being amended so as to be made valid. Under normal circumstances, before refusing to extend the term I would allow the patentee a period of time in which to propose amendments to overcome the defects in the specification. However in the present case there is a parallel court action in relation to the petty patent concerning infringement and revocation. I can see no impediment in that circumstance to my granting the extension of term, provided the patent is amended to make it valid, but it means that, consequential to section 112 of the Patents Act, the specification may only be amended under the provisions of section 105 of the Patents Act - that is, by court directed amendment. An application to the court for such an amendment will have to be made in accordance with Order 58, Rule 10, of the Federal Court Rules. Subrule 10(1) of Order 58 provides that:
"An application for an order under subsection 105(1) of the Patents Act may be made only after the applicant gives to the Commissioner a notice of intention to apply accompanied by an advertisement that states:
(a) the identity of the proceedings, or pending proceedings, in which the application will be made;
(b) the particulars of the amendment sought;
(c) the applicant's address for service; and
(d) that a person intending to oppose the application who is not a party to the proceedings or pending proceedings must, not later than 28 days after publication of the advertisement, give written notice of that intention to the Commissioner and to the persons who are parties to the proceedings."
In the circumstances, I think it is appropriate that before refusing to extend the term of the patent I should give the patentee an opportunity to apply to the Federal Court to amend the petty patent specification to overcome the defects I have identified above. I therefore allow the patentee 60 days from the date of this decision in which to file the notice of intention referred to in subrule 10(1) of Order 58 of the Federal Court Rules.
Costs
Costs in these matters normally follow the event. I see no reason on this occasion to depart from that approach. Mr Evans made a submission for a special award of costs in the event that his client was successful, on the basis that once the Turson's evidence had been filed the patentee had been well warned of the strength of the case against it. I can see no case for a special award of costs on the basis put forward by Mr Evans. Had his case been as strong as he suggests, it is difficult to see why any costs subsequent to the filing of the evidence needed to have been incurred at all.
I award costs against Instant Foundations (Aust) Pty Ltd in accordance with Schedule 8 of the Patents Regulations, in relation to both actions involved in these proceedings.
E. J. Knock
Delegate of the Commissioner of Patents
Patent attorneys for the patentee: Cullen & Co., Brisbane
Patent attorneys for Steel Foundations Limited : Fisher Adams Kelly,Brisbane
Patent attorneys for Turson Products and Construction Pty Ltd: Evans & Rose, Melbourne
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