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Leonardis v Sartas No 1 Pty Ltd

Leonardis v Sartas No 1 Pty Ltd

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Case Copied 13 June 1996 58 min read

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CATCHWORDS

PATENTS - FAIR BASIS on two provisional specifications - reference to drawings in a provisional specification - relationship of parts shown by drawings - need for assistance as to drawings from expert evidence - principle that drawing alone may sufficiently disclose an invention - effect of imprecise word such as "substantially" in a specification - meaning of "matter" in reg. 3.12 in the phrase "fairly based on matter disclosed in" a provisional specification - meaning of "fair basis" - whether an integer of a claim must be "plainly foreshadowed" in the provisional specification - test of "real and reasonably clear disclosure" - whether fair basis requires the taking of every aspect of the invention disclosed in the provisional specification - whether more than one invention may be disclosed in a provisional specification - implications of Mond Nickel tests.

OBVIOUSNESS - commercial success - hindsight - scintilla of inventiveness - requirement that the subject matter be beyond the skill of the calling - the importance of identifying the nature of the particular calling and the extent of the skill involved in that particular field rather than some unreal field peopled by a technological elite - perception of the nature of the problem and of the nature of the benefit to be attained as inventiveness.

INFRINGEMENT - whether the substantial idea of the invention was taken - alleged infringement working on different principle.

CONSTRUCTION OF PATENT - meaning of "medially positioned" - "substantially" - effect of drawings.

Patents Act 1990, ss. 38, 40 and 43
Patents Regulations 1991, reg. 3.12

Populin v H B Nominees Pty Ltd (1982) 41 ALR 471
Imperial Chemical Industries Limited (Clark's) Application
[1969] RPC 574
Vax Appliances Limited v Hoover plc [1991] FSR 307
Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59
Martin v Scribal Proprietary Limited (1954) 92 CLR 17
The King v Arkwright [1785] 1 WPC 64
Bloxam v Elsee [1825] Hayward's PC 558; 171 ER 1,316
Société des Usines Chimiques Rhône-Poulenc v Commissioner of
Patents (1958) 100 CLR 5
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260
Elconnex Pty Limited v Gerard Industries Pty Limited (1991)
32 FCR 491
C. Van Der Lely N.V. v Bamfords Limited [1963] RPC 61
The General Tire & Rubber Company v The Firestone Tyre and
Rubber Company Limited [1972] RPC 457
Stauffer Chemical Company's Application [1977] RPC 33
F. Hoffman-La Roche & Co. Aktiengesellschaft v Commissioner of
Patents (1971) 123 CLR 529
Coopers Animal Health Australia Ltd v Western Stock
Distributors Pty Ltd (1987) 15 FCR 382
Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1
Rehm Pty Ltd v Webster's Security Systems (International) Pty
Ltd (1988) 81 ALR 79
Olin Corporation v Super Cartridge Co Pty Ltd (1977)
180 CLR 236
Re Mond Nickel Co Ltd's Application [1956] RPC 189
Allsop Inc v Bintang Ltd (1989) 15 IPR 686
Graham v John Deere Co of Kansas City (1966) 383 US 1
The Wellcome Foundation Limited v V.R. Laboratories…

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: [1996] FCA 449
Decision Date: 13 JUNE 1996

CaseChat Overview and Summary

Leonardis v Sartas No 1 Pty Ltd is a patent case involving questions of fair basing on two provisional specifications, obviousness, and infringement. The appellant, Leonardis, sought to establish priority for claims in his complete specification based on two provisional specifications. The primary issue was whether the claims in the complete specification were fairly based on the matter disclosed in the provisional specifications. The court examined the language and drawings in the provisional specifications, noting that while the drawings revealed a significant aspect of the invention not explicitly stated in the text, they did not provide a "real and reasonably clear disclosure" of the specific feature of the frame members being substantially raised to allow concrete to flow beneath them. Consequently, the court found that the claims were not fairly based on the provisional specifications.

Regarding the issue of obviousness, the court held that the claims demonstrated a scintilla of inventiveness. The evidence showed that the invention achieved commercial success and was recognized by the industry as superior to existing methods, suggesting that the idea was not obvious to those skilled in the field. The court emphasized that the assessment of obviousness should be made in the context of the relevant calling and the common general knowledge within that field.

On the issue of infringement, the court concluded that the respondent's device did not infringe the claims because it operated on a fundamentally different principle. The respondent's spacer did not have frame members raised above the concrete beam to allow for the continuous flow of concrete, as required by the claims. The court underscored that infringement requires the taking of the substantial idea of the invention as claimed, and the respondent's device did not meet this requirement.

The appeal succeeded on the issues of validity but failed on the question of infringement. The court ordered that the appellant bring in minutes of orders reflecting the decisions made by the court, with any arguments concerning costs to be considered at that time.

Orders