JMVB Enterprises Pty Ltd v Camoflag Pty Ltd - [2006] FCAFC 141

FEDERAL COURT OF AUSTRALIA
JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v
Camoflag Pty Ltd [2006] FCAFC 141
INTELLECTUAL PROPERTY – patents – validity – whether assignment effective – obviousness – entitlement to patent – whether title to patent derived from actual inventor – whether notional skilled addressee could reasonably be expected to have ascertained information – whether designer of caravans in Australia could be reasonably expected to conduct a patent search in New Zealand – whether an importer is an inventor
Patents Act 1952 (Cth)
Patents Act 1990 (Cth) ss 3, 7, 15, 18, 138
Statute of Monopolies 1623 (Cth) s 6
Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 referred to
Atlantis Corp Pty Limited v Schindler (1997) 39 IPR 29 applied
Commissioner of Patents v Emperor Sports Pty Limited (2006) 149 FCR 386 referred to
Jones v Dunkel (1959) 101 CLR 298 referred to
Speedy Gantry Hire Pty Ltd v Preston Erections Pty Ltd (1998) 40 IPR 543 referred to
Stack v Brisbane City Council (1999) 47 IPR 525 referred to
JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd) v CAMOFLAG PTY LTD
VID1409 OF 2005
EMMETT, STONE & BENNETT JJ
29 SEPTEMBER 2006
SYDNEY (HEARD IN MELBOURNE)

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID1409 OF 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd)
APPELLANT

AND:

CAMOFLAG PTY LTD
RESPONDENT

JUDGES:

EMMETT, STONE & BENNETT JJ

DATE OF ORDER:

29 SEPTEMBER 2006

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The appeal be dismissed.
2.The appellant file and serve any submissions on the question of costs no later than 10 November 2006.
3.The respondent file and serve any submissions in reply no later than 24 November 2006.

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

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID1409 OF 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd)
APPELLANT

AND:

CAMOFLAG PTY LTD
RESPONDENT

JUDGES:

EMMETT, STONE & BENNETT JJ

DATE:

29 SEPTEMBER 2006

PLACE:

SYDNEY

REASONS FOR JUDGMENT

The appellant, JMVB Enterprises Pty Ltd (‘the Patentee’), was granted Australian Patent No. 693176 (‘the Patent’) for an invention relating to campervans. The invention was for a campervan that can be readily and easily put into a compact form for towing and storage, but which can also be erected readily for use. The respondent, Camoflag Pty Ltd (‘Camoflag’), claims that the Patent is invalid. On 19 October 2005, a judge of the Court ordered that the Patent be revoked and that the Commissioner of Patents make an entry in the Register of Patents accordingly. In consequence, the primary judge also dismissed the Patentee’s claims against Camoflag for infringement of the Patent. Camoflag accepts that, if the Patent is valid, its actions have infringed the Patent. The…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2006] FCAFC 141
Decision Date: 29 September 2006

CaseChat Overview and Summary

The case of JMVB Enterprises Pty Ltd v Camoflag Pty Ltd involved a dispute over the validity of a patent held by JMVB Enterprises Pty Ltd, a manufacturer and supplier of collapsible campervans. Camoflag Pty Ltd, another manufacturer of collapsible campervans, contested the validity of the patent. The dispute was heard and determined by the court.

The central legal issue in this case was whether the Patentee, JMVB Enterprises, was entitled to the patent for the A-line campervan design. This hinged on the identification of the inventors of the design and whether there was a valid assignment of the patent rights from the inventors to JMVB Enterprises. The court had to determine whether Jeffrey Van Baardwyk and Mark Tait were the true inventors of the design and if there was a valid assignment of their rights to JMVB Enterprises.

The court concluded that there was insufficient evidence to prove that Jeffrey Van Baardwyk was an inventor in the relevant sense. Furthermore, the court found that the evidence and admissions from Mr Van Baardwyk were sufficient to conclude that it could not be satisfied, to the requisite standard, that Mark Tait was the inventor as claimed by JMVB Enterprises. Therefore, the court held that the actual inventorship of Mark Tait had not been proved, leading to the conclusion that JMVB Enterprises was not entitled to the patent.

The final orders of the court were to dismiss the appeal, require JMVB Enterprises to file and serve any submissions on the question of costs by a specified date, and allow Camoflag Pty Ltd to file and serve any submissions in reply by a later date.

Orders

Orders of the court

1. The appeal be dismissed.

2. The appellant file and serve any submissions on the question of costs no later than 10 November 2006.

3. The respondent file and serve any submissions in reply no later than 24 November 2006.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Thus, ss 7(2) and 7(3) require the identification of a notional person skilled in the relevant art and the identification of the common general knowledge as it existed in the patent area. They also require an enquiry as to the information that such a notional person could reasonably be expected to have ascertained, understood and regarded as relevant to work in the relevant art.THE DECISION OF THE PRIMARY JUDGE The Patentee is a manufacturer and supplier of collapsible campervans, known in the Australian market as ‘A-vans’. A-vans have an A-shaped appearance when erected. That A- shape is sometimes referred to as ‘A-line’, such that the expression ‘A-line’ functions adjectively to describe a campervan with an A-shaped appearance. Camoflag is similarly engaged in the market for collapsible campervans. Its products are known in the Australian market as ‘Chalet’ campervans. It is common ground that campervans like those claimed in the Patent had been manufactured and sold in the United States for several years before the priority date of the claims of the Patent. Mr Jeffrey Van Baardwyk, who is a director of the Patentee and an industrial designer, saw A-line campervans on a visit to the United States in late 1993 and realised their potential for the Australian market place. At that time there were two manufacturers, Chalet RV Manufacturing Inc (‘Chalet RV’) and A-Liner Inc, a Pennsylvania corporation. Mr Van Baardwyk first went to Chalet RV, in November 1993, to endeavour to negotiate for the right to import and assemble its campervans in Australia. His negotiations were unsuccessful. Mr Van Baardwyk then approached A-Liner Inc and entered into a licence agreement with A-Liner Inc in December 1993. Subsequently, a campervan manufactured by A-Liner Inc was imported into Australia. Drawings were made from that campervan for the purpose of preparing a provisional application for a patent. Mr Van Baardwyk redesigned the campervan for Australian conditions. The changes included changes to the aluminium extrusions, stiffening the chassis and strengthening the latches. There were also changes to wall heights, axles, internal layouts, the power system, certain seals and the banjo cord. All the changes, however, were manufacturing changes, rather than part of the claims of the Patent. In the final version of its Notice of Entitlement, filed in connection with the application for the Patent, the Patentee claimed entitlement ‘from the actual inventor(s) by reason of contract of employment of Jeffrey Van Baardwyk to the patentee and assignment of all rights to the applicant company and licence from Mark A. Tait to the patentee dated 12th December 1993’. The complete specification for the Patent named Jeffrey Van Baardwyk and Mark A. Tait (‘Mark Tait’) as the actual inventors of the invention of the Patent. The primary judge held that any entitlement of the Patentee to the Patent depended upon Mr Van Baardwyk and Mark Tait being the co-inventors or upon a successful assignment of the Patent from Mark Tait to the Patentee, assuming that Mark Tait was, in fact, the inventor. Her Honour concluded that there was no evidence that Mr Van Baardwyk was an inventor in the relevant sense. Further, the primary judge considered that Camoflag had led evidence and elicited admissions from Mr Van Baardwyk in cross-examination sufficient for her Honour to conclude that it was not possible to be satisfied, to the requisite standard, that Mark Tait was, in fact, the inventor as claimed by the Patentee. Her Honour considered that the actual inventorship of Mark Tait had not been proved.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID1409 OF 2005

BETWEEN:	JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd) APPELLANT
AND:	CAMOFLAG PTY LTD RESPONDENT
JUDGES:	EMMETT, STONE & BENNETT JJ
DATE OF ORDER:	29 SEPTEMBER 2006
WHERE MADE:	SYDNEY

JUDGES:	EMMETT, STONE & BENNETT JJ
DATE:	29 SEPTEMBER 2006
PLACE:	SYDNEY