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JMVB Enterprises Pty Ltd v Camoflag Pty Ltd

JMVB Enterprises Pty Ltd v Camoflag Pty Ltd

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FEDERAL COURT OF AUSTRALIA
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474
PATENT – revocation – want of novelty – obviousness – patent for a campervan with a roof capable of being stowed or erected by spring means – prior publications – claim that patentee not entitled to invention.
DESIGN – expungement – want of novelty or originality – entitlement.
Patents Act 1990 (Cth) ss 7, 13, 14(1), 15(1), 18(1)(b), 40(2), 40(3), 102, 105, 112, 114(1), 120(1), 121, 128, 129, 138(3)
Designs Act 1906 (Cth) ss 4(1), 15(2)(b), 17(1), 19, 20(1), 30, 32, 32C, 32D
Evidence Act 1975 (Cth) ss 76, 79, 80
Federal Court Rules 1976 (Cth) O 58 r 10(1)
A’Van Campers Pty Ltd v Camoflag Pty Ltd (2003) 57 IPR 494 cited
Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 followed
Alsop’s Patent [1907] 24 RPC 733 referred to
Atlantis Corp Pty Ltd v Schindler (1997) 39 IPR 29 referred to
Australian Steel Co (Operations) Pty Ltd v Steel Foundations Ltd (2003) 58 IPR 69 referred to
Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 referred to
Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 followed
Benmax v Austin Motor Co Ltd [1953] 70 RPC 284 referred to
Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 followed
C Van der Lely NV v Bamfords Ltd [1963] 80 RPC 61 referred to
Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 followed
Conrol Pty Ltd v Meco McCallum Pty Ltd (1996) 34 IPR 517 referred to
Conrol Pty Ltd v Meco McCallum Pty Ltd (1997) 80 FCR 264 followed
D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 referred to
Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403 followed
Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 53 IPR 270 referred to
Dunlop Rubber Co Ltd v Golf Ball Developments Ltd [1931] 48 RPC 268 referred to
F Hoffman-La Roche & Co AG v Commissionerof Patents (1971) 123 CLR 529 followed
Fina Research SA v Halliburton Energy Services Inc [2003] FCA 55 referred to
Firebelt Pty Ltd v Brambles Australia Ltd (2002) 76 ALJR 816 followed
Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1985) 82 FLR 311 referred to
Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 referred to
Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 referred to
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] 89 RPC 457 referred to
George C Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 41 ALJR 75 followed
Hill v Evans (1862) 31 LJ Ch 457 referred to
Hsiung’s Patent [1992] RPC 497 referred to
Humpherson v Syer [1887] 4 RPC 407 referred to
Illuka Midwest Ltd v Wimmera…

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: [2005] FCA 1474
Decision Date: 18 OCTOBER 2005

CaseChat Overview and Summary

The case of JMVB Enterprises Pty Ltd v Camoflag Pty Ltd was heard in an Australian court, where the primary dispute centred around the validity of patents and design registrations held by the applicant against the respondent. The applicant, JMVB Enterprises, sought to enforce its intellectual property rights, which included a patent and a registered design, against the respondent, Camoflag Pty Ltd. The court was tasked with determining the validity of these intellectual property rights, as well as addressing claims of infringement and threats made by the applicant.

The legal issues before the court included the assessment of the inventive step required for the patent to be valid under the Patents Act, the novelty and originality of the registered design, and the admissibility of evidence presented by both parties. The court had to evaluate whether the patent met the statutory requirements for grant, including whether it involved an inventive step and met the conditions outlined in section 15 of the Patents Act. Additionally, the court needed to determine if the design was novel and original, and if the claims of authorship were correct. The court also had to consider the evidence presented by both parties, including objections to the admissibility of certain affidavits and documents.

The court found that the applicant's patent was invalid as it did not involve any inventive step. Furthermore, the patent was also subject to revocation because the conditions for its grant under section 15 of the Patents Act were not satisfied. The registered design was also deemed invalid due to a lack of novelty or originality and was further subject to expungement because of incorrect claims of authorship. The court did not find it appropriate to grant relief regarding threats made by the applicant as there was no evidence suggesting that these threats were likely to be repeated. The court allowed the parties to bring in short minutes to give effect to the reasons for the judgment.

The final orders included adjourning the proceeding and allowing the parties to bring in short minutes to formalise the court's reasons for judgment. The court did not grant relief concerning the threats made by the applicant, and the invalidity of the patent and design was upheld, with the design also being subject to expungement due to incorrect claims of authorship.

Orders

Orders of the court

1. The proceeding be adjourned to 4:00 pm on 19 October 2005.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

As in Benmax, the only threats made in this case were solicitors’ letters before the action was commenced. I have found that if the patent and design were good they would have been infringed. Expungement occurs as final relief in this proceeding after a considerable body of evidence has been put before the court. Accordingly, I do not think it appropriate to exercise my discretion to grant relief in respect of the threats made by the applicant. There is no evidence they are likely to be repeated.Evidence During the hearing, after discussion with counsel for the parties, I took the course of admitting some material in affidavits subject to objection. Counsel on both sides indicated that not only would this course not cause them any difficulty, but also they urged that in the circumstances it was the preferable course. My attention was drawn to Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442 at 529 per Allsop J. I am conscious that courts making decisions binding on me occasionally deprecate such a course: Firebelt at [42]; Alphapharm at [77]. I am equally conscious that the course taken is not uncommon in intellectual property litigation. See for example at first instance, Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1985) 82 FLR 311 (King J). Reasons for such a course can include the fact that evidence relevant to the cogency of an objection (for example as to the proper qualification of a skilled addressee) may not be available when the objection is first raised. Further, it is a common experience that many objections to the admissibility of evidence are not maintained at the conclusion of the hearing. The rulings on evidence are contained in Appendices E and F, being the respective rulings on the applicant’s objections to admissibility in respect of the respondent’s affidavits and the respondent’s objections to admissibility in respect of the applicant’s affidavits and evidence.Conclusion The applicant’s patent is invalid because it did not involve any inventive step. It is also liable to revocation because the conditions entitling a person to the grant of a patent in s 15 of the Patents Act have not been satisfied. The applicant’s registered design is invalid for want of novelty or originality. Further, it is also liable to expungement by reason of incorrect claims of authorship. It is appropriate to afford the parties an opportunity to bring in short minutes to give effect to the reasons for judgment.

Decision

Reasons for decision

CRENNAN J

The rulings on evidence are contained in Appendices E and F, being the respective rulings on the applicant’s objections to admissibility in respect of the respondent’s affidavits and the respondent’s objections to admissibility in respect of the applicant’s affidavits and evidence.Conclusion The applicant’s patent is invalid because it did not involve any inventive step. It is also liable to revocation because the conditions entitling a person to the grant of a patent in s 15 of the Patents Act have not been satisfied. The applicant’s registered design is invalid for want of novelty or originality. Further, it is also liable to expungement by reason of incorrect claims of authorship. It is appropriate to afford the parties an opportunity to bring in short minutes to give effect to the reasons for judgment.

Ratio Decidendi

Legal Principle Established

Established by: CRENNAN J

I find that in relation to the RV Trade Digest advertisement the skilled person is reasonably likely to have ascertained, understood and regarded it as relevant. Accordingly, it is a relevant document for the purposes of s 7(3).Consideration of prior art and relevant documents Associate Professor Field considered the Chalet (Alpine Lite) brochure and the RV Trade Digest advertisement together and said that they showed the folded campervan and the folding process, so there is no doubt about the ways in which the campervan might be folded. He said that: ‘An ordinary engineer would realise that the separate roof panels, most likely being made from a lightweight material such as aluminium or plywood, would nevertheless be heavy, since they would require heat insulation, light fittings and other attachments such as additional windows. Consequently, the ordinary engineer would at once have recognised the need to reduce the effort needed to erect the roof panels, and would consider the use of counterweights and springs to do so. He would without any difficulty at all have seen the possibility of using a rat –trap spring for this purpose. He would also without the slightest trouble have seen the possibility of using fitments to support the upper side walls in their stowed position.’ In relation to the features in claim 2 and the Johnson patent Associate Professor Field gave evidence that:‘. . . the adoption of any spring means to assist in the raising or closing of structures have been known for a considerable time and an engineer of ordinary ability would immediately consider the use of spring means – be they torsion springs, compression springs or tension springs and be they inside or outside the body of the caravan – to open and close the roof of the caravan.’ In oral evidence Mr Funder agreed that if he had the Johnson patent at the priority date and he wanted to change the spring means in claim 2 to the rat‑trap spring it would have been a readily available alternative. He said that he had seen the rat‑trap spring used in analogous circumstances, namely raising and lowering truck tail gates. Although he resisted the proposition that using a rat‑trap spring would have been one of the options he would have immediately considered, he agreed that it would have been an option and was able to identify only 3 other options, namely gas struts, flat panel type springs and scissor lift type mechanisms. He also agreed that the logical place to put the rat‑trap springs would be inside the van. As to claim 3, Mr Funder did not contest Associate Professor Field’s assertion that it was obvious to support the side sections in stowed position upon built in fitments within the caravan. Further, in his oral evidence he agreed that the sides of the Johnson van would rest upon the fittings inside it. Mr Funder did not contest the assertion that the use of ‘resilient means’ referred to in claim 8 to assist holding the two sections of the roof together when in the erected position was obvious. Mr Funder agreed that it was similar to an ockie strap and gave evidence when cross‑examined as follows: ‘Mr Ryan: Ockie straps were well known in 1994, weren’t they?Mr Funder: I would assume so. I couldn’t be confident of the date that they were brought into Australia or whatever, but I would assume so.Mr Ryan: Well, people have been using ockie straps, haven’t they, for putting, for example, surfboards on roof racked, since the 1970’s. Would you agree with that? Mr Funder: Perhaps, yes.Mr Ryan: It’s an absolutely straight forward simple thing to do, is it not, to use an ockie strap to hold together two members?Mr Funder: Yes, I would say so.Mr Ryan: That would have been so in 1994, wouldn’t it?Mr Funder: Yes.’