LBI Holdings Pty Ltd v Leafscreener Pty Limited

[2001] APO 42

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent :  No. 716209 in the name of LBI Holdings Pty Ltd

Title:  Improvements Relating to Screening of Guttering

Action:  Application for an extension of the term of the petty patent and notice by Leafscreener Pty Limited alleging invalidity.

Decision:  Issued             .

Abstract:

The invention relates to a method of installing gutter screening mesh to prevent the gutter clogging with leaves, twigs and other materials. Notably, the method includes aligning the strands on the upper side of the mesh with the lengthwise direction of the guttering so that it “produces a greater turbulence in water flowing over the mesh and causes the water to pass more quickly and easily through the mesh”.

The informant attempted to demonstrate that similar mesh had been inadvertently used "upside-down" by do-it-yourself installers and hence in accordance with the method claimed.  Consequently, it was alleged that the method was not novel and lacked an inventive step.

Found that there was insufficient evidence to prove such use or that the use was such to make information about it publicly available.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 716209 in the name of LBI Holdings Pty Ltd, application for an extension of the term of the petty patent and notice by Leafscreener Pty Limited alleging invalidity.

BACKGROUND

These proceeding are governed by the Application, Savings and Transitional provisions of the Patents Amendment (Innovation Patents) Act 2000. Under those provisions, the Patents Act 1990 and regulations as in force immediately before 24 May 2001 (old law) continues to apply, with certain exceptions, to petty patents in force before commencement. Consequently references below to the Act are references to the old law.

Patent application 716209 (28115/99) was filed on 13 May 1999 in the name of Polymesh Australasia Group Pty Ltd. The application now proceeds in the name of LBI Holdings Pty Ltd (LBI) on the basis of an assignment effected on 2 July 1999.  A petty patent was sealed on 24 February 2000 and the patentee filed its application for extension of the term on 17 January 1991. The informant Leafscreener Pty Limited notified the Commissioner of matters pursuant to section 28 of the Act on 24 January 1991.

After the completion of evidence in response, the matter was set for hearing on 22 August 2001. In the event, neither party sought to be heard nor rely on written submissions. Consequently my decision is based solely on the section 28 notice, the evidence filed in support of that notice and the evidence filed by the patentee in response.

SPECIFICATION

The specification indicates that the invention relates to mesh materials and their application over the roof guttering of a house for the purpose of preventing the entry of unwanted materials such as sticks, leaves, and other tree debris, large insects, litter and the like. The benefits of excluding such material include reducing overflows and corrosion associated with gutter and down pipe blockages, as well as mitigating fire risks and the contamination of drinking water collected by the roof and guttering.

It is said that most prior attempts have resulted in a mesh that is so coarse that much of the foreign material passes through or, in the case of sticks and leaf stems, becomes trapped in the mesh, so that they prevent the escape of other material and contribute to the build-up of debris about the gutter area.

The alternate approach has been to use fine mesh, but this suffers from the problem of restricted water flow due to surface tension effects. Consequently water tends to flow over the top surface of the mesh and over the outside edge of the gutter.

The invention claimed is as follows:

1.         A method of preventing the entry of unwanted materials into a guttering affixed to an outside edge of a roof of a building including affixing a screen over the edge of the roof and the guttering, said screen having a generally planar panel of mesh affixed along one edge of the panel to the roof and along the opposite edge of the panel to the outer face of the guttering, said mesh having the form of a first planar array of parallel strands aligned in a first direction overlaid by and adhered to a second planar array of parallel strands aligned at right angles to the first array, each strand being of 1 to 3 mm diameter at a pitch of 4 to 8 mm with the holes therebetween having a clearance of 3 to 5 mm, said mesh being oriented so that the strands on the underside of the mesh extend from the roof to the guttering while the strands on the upper side of the mesh extend in the direction of the length of the guttering.

2.        A method according to claim 1 wherein said strands have a diameter in the range of 1.5 to 2.5 mm and are spaced in the range of 4.0 to 8.0 mm centre to centre.

3.        A method according to claim l or 2 wherein said strands have a clearance therebetween in the range of 3.5 to 4.5 mm.

Notably the claimed invention is limited to method affixing screens of mesh comprising planar arrays of strands adhered at right angles to each other. This is said to produce an advantage over woven mesh although the reason for the increased water flow said to be produced is not fully understood.

The most significant feature for current purposes, is the aligning of the strands on the upper side of the mesh with the length of the guttering. It is said that this orientation “produces a greater turbulence in water flowing over the mesh and causes the water to pass more quickly and easily through the mesh”

NOTICE UNDER S.28

The notice under section 28 says that the invention is not patentable because it does not comply with sub-section 18(1)(b), that is, that the invention is not novel and does not involve an inventive step in light of the prior art.

Declarations in support are provided by John Raymond Masters dated 22 January 2001 and Fraser Patison Old dated 24 January 2001. I note that Mr Masters is a director of the informant Leafscreener and has some experience in the industry of selling and installing leaf screening mesh products. However, the extent of his experience is unclear except for the reference in a number of places to “well before 13 May 1999”. Exhibits to Mr Masters’ declaration include a product brochure for his company and samples of two mesh types depicted therein. Both of these appear to be of the “fine” mesh type, one JRM2 being a plastic rectangular mesh and the other JRM3, a plastic “diamond” mesh. Mr Masters declares that the mesh of JRM2 is typically installed with underside strands of the mesh aligned with the length of the guttering but it was known for “do it yourself” installers to install the mesh in the opposite manner, ie up-side-down.

Mr Old is a patent attorney of the firm representing the informant. In this case, however, he provides evidence of his personal use of a number of mesh types in the gutters of his home in Sydney. More specifically he refers to, and exhibits, samples of a “fine” plastic “diamond” mesh and a “coarse” plastic rectangular mesh. In the latter case, the strand spacing exceeds 10 mm in both directions.

The notice under section 28 further includes the following statements:

“In view of the Exhibits attached in the above referenced Statutory Declaration by John Raymond Masters, Leafscreener Pty Limited asserts that the invention as claimed in claims 1- 3 lacks novelty and inventive step. In particular, we wish to point out that a screen having a generally planar panel of mesh as claimed in claims 1- 3 was known and in use in Australia before the priority date of 13 May 1999.

Furthermore, Leafscreener Pty Limited asserts that the method of orienting the mesh "so that the strands on the underside of the mesh extend from the roof to the guttering" while the strands on the upper side of the mesh extend in the direction of the length of the guttering" as stated in claim 1 also lacks novelty and inventive step as a result of use of the mesh as set out in the above mentioned Statutory Declaration of John Raymond Masters.

In addition, the physical size of the mesh strands and mesh openings specified in claims 1 -3 inclusive are a matter of choice and are not novel and/or obvious in the light of the prior art disclosed in the two abovementioned Statutory Declarations.”

EVIDENCE IN RESPONSE

The evidence in response includes a declaration by the inventor Paul Anthony Groom who is also general manager and a director of LBI. He appears to have considerable experience in the field of mesh gutter protection and claims to have previously developed the “diamond” mesh for this purpose. Mr Groom does not consider the example provided in JRM2 to have the necessary planar form because each 9^th strand on one side extends out of the plane of the strands. He also elaborates on what he sees as the inventive merit of the invention, including that it goes against the accepted wisdom in installing the mesh.

A declaration by Norman Bruce Morcom adds some observations on mesh types set up for trial at Olinda in Victoria and also mesh that was installed at his home in Melbourne in the late 1970’s. Mr Morcom is a patent attorney of the firm representing the Patentee.

DECISION

Section 28 allows a person (the informant) to assert that a petty patent is invalid on various grounds and if the Commissioner is satisfied that a ground mentioned in subsection 28(1) is made out, the extension of the term of the petty patent may be refused.  If not satisfied, the Commissioner must grant an extension of the term (see section 69 and regulation 6.6).

The grounds specified in subsection 28(1) are:

(a)that the patentee was not entitled to be granted the petty patent;

(b)that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);

(c)that the specification does not comply with subsection 40 (2) or (3).

Here we are concerned only with ground (b). Turning first to the question of novelty, I take the informant’s case to be, at best, that the method claimed had been anticipated by installation of the mesh JRM2 in the “reverse” manner by “do-it-yourself” installers including on an outhouse at a particular residence in Epping, NSW.

The general test for novelty is the "reverse infringement test". That is, that the earlier disclosure must take "each and every one of the essential integers" of the invention claimed. Furthermore, the disclosure must be "for the purposes of practical utility" (Hill v Evans, (1862) 6 LT 90), the same as the later claim. In this regard there appears to be no distinction between the information that must be conveyed by a documentary disclosure over that made publicly available through prior use or some other act (Stanway Oyster Cylinders Pty Ltd v Clement Rex Marks 35 IPR 71).

In the absence of cross-examination it has generally been accepted that proof of prior use must be very clear (Seiller's Application [1970] RPC 103 at 106) and from Windsurfing International Inc v Borsimex Pty Ltd (1984) AIPC 90-135:

"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."

I believe on this basis that the informant’s evidence falls far short of that necessary for me to be satisfied that a ground mentioned in subsection 28(1) has been made out. While there is perhaps some question as to whether the mesh JRM2 meets the “planar” requirement specified in the claims, the evidentiary onus indicated above has simply not been met. There is, for example, no corroboration of Mr Masters’ statements about the use of the mesh in a “non-typical” or “opposite” manner to what I assume may have been indicated in installation instructions. There is, in particular, no corroboration of what Mr Masters says he saw at a residence in Epping and without specific details of location, date and other circumstances of the alleged disclosure, a positive finding of fact is impossible. Consequently, I find that there is insufficient evidence to support a conclusion that there was, before the priority date, use of the prior art mesh "the wrong way" or, even if this was assumed, that the use was sufficient to make information about it publicly available, as required by section 7.

The informant’s case on the question of inventive step similarly fails for lack of evidence. There is also no suggestion that it was obvious to use the mesh the opposite way to address the problem identified in the specification. Consequently, I am not satisfied that the patent is invalid and am therefore compelled to grant the extension of term sought.

CONCLUSION

The informant has failed to satisfy me that the petty patent is invalid on any grounds applicable under section 28(1). Consequently, I grant an extension of the term of the petty patent.

COSTS

Since the matter did not come to hearing there are no applicable costs under Schedule 8. That being the case, I make no award of costs.

Delegate of the Commissioner of Patents
Philip M Spann

Patent attorneys for the informant:  Hodgkinson Old McInnes, Sydney

Patent attorneys for the patentee:  Morcom Pernat, Mount Waverly