Lockwood Security Products Pty Ltd v Doric Products Pty Ltd

[2007] HCATrans 80

[2007] HCATrans 080

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S226 of 2006

B e t w e e n -

LOCKWOOD SECURITY PRODUCTS PTY LTD

Appellant

and

DORIC PRODUCTS PTY LTD

Respondent

GUMMOW J
HAYNE J
CALLINAN J
HEYDON J
CRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON FRIDAY, 23 FEBRUARY 2007, AT 10.04 AM

(Continued from 7/9/06)

Copyright in the High Court of Australia

MR A.J.L. BANNON, SC:   May it please the Court, I appear with my learned friends, MR S.C.G. BURLEY and MR C. DIMITRIADIS, for the appellant.  (instructed by Phillips Ormonde & Fitzpatrick)

MR D.K. CATTERNS, QC:   May it please the Court, I appear with my learned friends, MS S.J. GODDARD and MR A.D.B. FOX, for the respondent.  (instructed by Spruson & Ferguson)

GUMMOW J:   We did not have Mr Fox last time, did we?

MR CATTERNS:   Yes, your Honours, he did appear.  Sorry, that was an error on our part in notifying the Registry.

GUMMOW J:   Yes, Mr Bannon.

MR BANNON:   We have had Mr Burley in spirit on previous occasions, but happily physically, although if not ‑ ‑ ‑

HAYNE J:   The incorporated nominal junior is a well-known phenomenon.

GUMMOW J:   Yes, Mr Bannon.  We have had some further submissions.  Perhaps if you would take us through them or supplement them as you wish, but relatively succinctly and with a fair basing.

MR BANNON:   I would not anticipate we would be terribly long this morning, speaking for myself, your Honour.  Could I deal with two preliminary matters.  The first is, if I could direct attention to our supplementary submissions paragraph 10, we deal with the question of appropriate orders.  The third sentence of paragraph 10 says, “However, as a preliminary matter, if this Court was to determine that claim 13 involves an inventive step but that claim 1 does not, the Appellant would not seek to amend claim 1”.  That paragraph is generally addressing the question of the fact that we have reserved the ability to seek the opportunity to amend claims 1 to 6, 12, 31 and 32 to attempt to overcome the novelty problem.  A similar point is made in the last sentence of that paragraph.  My instructions are, and I tell the Court, there are no circumstances in which we now seek or would seek to amend claims 1 to 6, 12, 31 and 32.

GUMMOW J:   Just a minute.  So how do we amend the sentence on page 4 beginning at line 3?

MR BANNON:   I think perhaps if this Court was to determine down to “does not” was simply deleted and perhaps simply, “the Appellant does not seek to amend claim 1”, in order to overcome that deficiency.  So “would” just becomes “does not.”  Then the last sentence is deleted.

GUMMOW J:   What, the sentence beginning, “Subject to what follows”?

MR BANNON:   That is so.

GUMMOW J:   Thank you.

MR BANNON:   Hence, the orders we seek, if one then goes to the attachment to those submissions, these orders represent an amendment to orders previously handed up at the end of the last hearing and these orders as framed here reserve simply the ability – I will start again.  Paragraph 3 of these orders deals with the question of rewriting claims 7 and 13.

GUMMOW J:   Is “rewriting” an appropriate expression in this field of discourse?

CRENNAN J:   “Amend” is better, is it not?

MR BANNON:   Yes.  Order 3 is sought by us as an alternative.  Our primary submission is, as we have detailed in our written submissions that I will come to, that one does not need to amend in the circumstance where claim 1 is revoked and claim 13 lives on.

GUMMOW J:   Yes, you read it distributively in some way.

MR BANNON:   Exactly, yes.  Order 3 is only there - if we are wrong on that submission and if we do have to go to an Order 3 process, then I am obviously open to ‑ ‑ ‑

GUMMOW J:   We will not be doing it.

MR BANNON:   No, well, that is probably the end of that in any event.

CRENNAN J:   Can an order 3 process be on notice to the Commissioner?

MR BANNON:   It does require notice to the Commissioner and that has not been given.  That is a mandatory requirement.

GUMMOW J:   Yes, that would have to be done in the Federal Court.

MR BANNON:   Yes, so the only question then is to whether or not there is a need to pursue that.  I call it a rewriting amendment for convenience purposes and that is to debate between the parties as to whether that is needed at all.  We say it is not, but if we are wrong about that and we otherwise succeed on claim 13, then we would need to reserve the ability to go and seek that formal amendment in due course.

GUMMOW J:   In the Federal Court.

MR BANNON:   In the Federal Court.  What I do indicate is that we are not seeking a substantive amendment in relation to claims 1 to 6, et cetera, as previously advised.

GUMMOW J:   Of course, the primary judge who would be most familiar with this is sadly not with us.  I suppose there – well, there has already been consideration to some degree by the Full Court, so ‑ ‑ ‑

MR BANNON:   That is so.  But the only amendment we are envisaging doing now ‑ ‑ ‑

GUMMOW J:   One or other of those judges if need be might be the appropriate person.

MR BANNON:   Yes, quite.  Having regard to what I have indicated this morning, the only amendment which would possibly be needed if we are wrong on our primary submission about the need for any amendment is one which is a fairly mechanical one, just to accommodate the fact that claim 13 has been written as a matter of drafting as depending on claim 1 which we now accept is revoked and will always be in that position if it is ‑ ‑ ‑

GUMMOW J:   On this hypothesis.

MR BANNON:   Yes, that is right. So hopefully that course removes one question which was I think raised by our learned friends to say the fact that we were seeking a substantive amendment of claims 1 to 6 is something which was of materiality.  To avoid that issue we remove that.  This is the second preliminary matter which I want to advert to which is related to that, which is that the only question appropriate for determination, we submit, by this Court on the question of obviousness is whether claims 13 to 15, 20, 21, and 30 are obvious.  Those are the claims which we referred to in our first written submissions in paragraph 6 as the live claims which ‑ ‑ ‑

GUMMOW J:   Give us those numbers again, Mr Bannon.

MR BANNON:   Yes.  13 to 15 inclusive, 20 ‑ ‑ ‑

GUMMOW J:   Yes.  13 to 15 were novel and infringed so far.

MR BANNON:   That is right.  Then 20, 21 and 30 are dependent on those claims.

GUMMOW J:   Yes, I see.

MR BANNON:   In the first round of submissions before this Court, paragraph 6, we have identified those claims.  The reason I say that is, as was said a minute ago, the claims which were ruled out for want of novelty - and I will just perhaps list those again, that is 1 to 6, 12, 31 and 32 - that finding of lack of novelty was not the subject of any appeal to any of the Full Courts. 

GUMMOW J:   That is right, and 7 was valid, but not infringed.

MR BANNON:   That is right.  So that claims 1 to 6, 12, 31 and 32 as and from the time of Justice Hely’s determination have been subject to a finding of invalidity on the ground of want of novelty which has never been challenged, and the only reason a stay of revocation of those claims was ordered was to permit us the opportunity to pursue a substantive amendment which we now do not wish to pursue.

CRENNAN J:   You do not seek any injunctive relief in relation to claim 21, do you?

MR BANNON:   No, but we want to maintain its validity for future purposes and, because we would say it is a rim‑mounted lock claim, it would survive.  Because those non‑novel claims, their validity was not sought to be supported on any basis – well, there was no matter – let me start again.  The Full Court decided that those claims which had been held to be liable to be revoked for lack of novelty were also liable to be revoked for want of validity.  Now, that was a process all parties agreed in ‑ ‑ ‑

GUMMOW J:   For want of?

MR BANNON:   Sorry, for want of inventive step.  I am sorry, yes.  That was a process all parties agreed with, but in the last 24 hours it must have been a process, we submit, which was beyond the exercise of any judicial power, a la Bass v Permanent Trustee, because there was actually no controversy between the parties on which the court could opine.  In other words, those particular claims had been determined to be invalid on the ground of want of novelty.  We were not appealing that, and the only way those claims would ever have any life further would be in the hypothetical situation we sought to amend and did amend ‑ ‑ ‑

CRENNAN J:   Were you always reserving your position in relation to them?

MR BANNON:   That is right.  If we did amend, it is conceivable on the amendment application or a subsequent revocation application, the question of the obviousness of those amended claims might come up for issue.  But again, I confess to being involved with the process.  I was involved in the Bass v Permanent Trustee process as well, along with others. I can just identify the actual order. It is in volume 3 of the appeal books at 1331.

GUMMOW J:   “Subject to order 9”.

MR BANNON:   Yes, which is relating to the stay and that says all of those claims “be revoked for lack of inventive step”.  Now, the point I am making is, insofar as that order picked up claims 1 to 6, 12, 31 and 32, the court was determining a hypothetical question.  It was judicial advice, it was not an exercise of judicial power.

GUMMOW J:   Where is all this going, Mr Bannon?  It is going towards a 78B notice at the moment.

MR BANNON:   It is really going to say that – we say, although it is not in our notice of appeal, order 2 should be revoked in whole for two reasons.  One is that so far as it relates to those claims I have just mentioned, it did not need to be determined and should not have been determined.  So far as the balance of the claims are concerned, we say the Full Court erred on the want of inventive steps for the various reasons we have discussed and will continue to discuss today.

CRENNAN J:   Minutes were brought in before these orders were made.

MR BANNON:   Yes.  Where this is all leading to is to say that this Court should revoke that order so far as it relates to the non-novel claims for the reasons I have mentioned.  It should revoke the balance of the order so far as it relates to claim 13 and following claims because we say the court erred on inventive step but the point is that this – and this is ultimately where I am coming to – that this Court does not need – this Court may consider in the process of reasoning whether claims 1 to 6 did or did not lack inventive step.  The only question ripe for determination to be decided by this Court is whether claims 13, 14, 15 lack inventive step.  In other words, this Court does not have to make ‑ ‑ ‑

GUMMOW J:   Yes, but it may be necessary or of utility to consider obviousness in relation to 1 to 6 in the course of reasoning dealing with the other claims.

MR BANNON:   Quite.  I do not dispute that at all.  But as a matter of regularising what we submit we are asking the Court to do and what the Court should be doing, what I have attempted to suggest is the proper analysis - so that ultimately the Court would say that the Court does not have to make a determination, in fact, should not make a determination to claim 1 if it were still otherwise a valid claim was also invalid for another reason - the Court should not say that, albeit it may go through a process of reasons saying that it is relevant to the question of inventiveness of claim 13.  So they are the two preliminary matters.

Perhaps I could just give the reference to Bass v Permanent Trustee (1999) 198 CLR 334. I have got multiple copies which I can provide to the Court but I was not going to go to it. Can I then address the questions which are raised by the Court’s notification. The first question posed is does section 7(3), either on its own or in combination with 7(2), admit of the possibility that different material might be regarded as capable of being considered under section 7(3) depending on the claim. Our submission is yes, and if I could take your Honours to section 7 of the Patents Act, our submission is that section 7 addresses the question of whether or not an invention involves an inventive step.  Section 7(2) provides:

an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area –

et cetera.  The terms of section 7(2) are referable to the terms of section 18.  I will come back to section 7(2) in a bit more detail but it is referable to section 18 which provides that:

an invention is a patentable invention . . . so far as claimed in any claim . . . 

(b)when compared with the prior art base as it existed before the priority date of that claim . . . 

(ii)       involves an inventive step ‑ ‑ ‑

GUMMOW J:   So you say when 7(2) talks about an invention being taken in certain respects you have to read that with 18, so you are talking about claims?

MR BANNON:   Exactly.  So that you can, as one knows, have some claims which are obvious and some claims which are not obvious; some which are novel, some which are not novel.  You can even have claims which have been the subject of an amendment which have different priority dates.  That is why the wording says in (b):

with the prior art base . . . as it existed . . . before the priority date of the relevant claim -

So you can have differential results in respect of a patent with multiple claims on a claim by claim basis.  Therefore, coming back to 7(2), the comparison, we submit, on a claim by claim basis, must be between the invention as claimed and the prior art base.  Section 7(2) also picks up the notion of inventive step, but it really requires an inventive step be determined indirectly.  I say that for this reason.  It says:

an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention –

we say the invention as claimed –

would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3) -

So the comparison is between the prior art base and the invention as claimed. 

As a result of that comparison one could come to the conclusion one way or another as to whether or not the invention as claimed involved an inventive step.  The parties seem to be at one that you can conceive of the possibility of 7(3) resulting in different information being considered for different claims but, reading the submissions, there is perhaps a point of difference between us.  My learned friend submits that the inventive step in claims 1 and 13 is the same and therefore you should get the same information. 

We say the difficulty with that approach is that the Act does not say identify the inventive step and you assess it intrinsically.  What you do is you work out whether or not something involves an inventive step indirectly by comparing the invention as claimed with a prior art base.  So to take an example and test it by reference to this patent, claim 1, it is accepted, describes, amongst other things, a lock which has the features of a storeroom lock. 

If it be assumed that under 7(3) a storeroom lock gets admitted into the 7(2) prior art base, one then asks the statutory question:  you compare the invention as claimed with the prior art base and, assuming for present purposes that 7(3) allows the storeroom lock to be admitted to the prior base, the comparison would then be between on the one hand a storeroom lock and a claim which describes the features of a storeroom lock.  So that not only is there no inventive step on that assumption, there is no step at all.  In contrast, go to claim 13.  Assume again the storeroom lock comes into the prior art base, there is a difference between a storeroom lock and claim 13.  There is a step to be assessed.  That analysis teaches one that you cannot say the inventive step is the same in claim 1 and claim 13.

CRENNAN J:   You would say the same, I expect, about Lockwood 530, is it not?

MR BANNON:   Exactly, yes, all the same.  I suppose what one could say in perhaps a lay way is to say that claim 1 includes as an embodiment the Lockwood 001, the claim 13 lock.  One could say the inventive step involved in one embodiment of claim 1 is the same as the inventive step on claim 13, but that is just not a question the statute requires one to answer and is an irrelevant question because the validity of the claim is the test by reference to its complete breadth.  If one can find one embodiment which is obvious or not novel, then the whole claim goes.  So for that reason, we submit our analysis of considering the matter by reference to the terms of the claim should be accepted and the analysis put forward by my learned friends of inventive step is apt to, we submit, lead into error.

We have submitted before - and I do not want to use today to go over old ground.  We submit the features of claim 13 are such as to limit it to a rim‑mounted lock.  I thought that that was a matter of common ground, but I think my friend in the latest round of submissions has suggested that may not be the case.  I addressed this on the last occasion at transcript 66, and I will not repeat what I said there, by reference to appeal book 1 pages 459 to 460 of Mr Garland’s evidence.

GUMMOW J:   What was the transcript reference again?  What line?

MR BANNON:   I am sorry, I have given you the wrong page.  It is pages 22 and 23 and up to the top of 24.

HAYNE J:   Lines 945 and following, is that what you are referring to?

MR BANNON:   Yes, that is so.  Just in very short summary, claim 13 identifies radially moving locking means or detent means.  Mr Garland’s evidence says in those passages they are associated with rim‑mounted locks.  He makes a slight error, which I discussed last time.  He says claim 13 does not have that limitation.  In fact it does, but that does not detract from the effect of his evidence that if you do have radially moving detents, that is rim‑mounted.

CRENNAN J:   What about what Mr Catterns says, I think, in the supplementary submissions in paragraph 5?

MR BANNON:   We submit that that does not address the statutory question and that is the sort of error which can be involved if one focuses on an integer by integer basis.  The statutory comparison is between the combination in claim 13 which is a combination which includes features known as integers (i) to (vi) plus a particular locking means which characterises a rim‑mounted lock.  So that is the combination of features.  One compares those features with the prior art base, and essentially that is the factual question comparing the Lockwood 001 without additional integers, integer (vi), that is the prior art base, with Lockwood 001 with integer (vi).  It is not permissible to test the validity of any combination by saying a combination which is different, say, claim 1, we say that is not inventive.  Then we will use that as a launching pad to move from that to a later claim and say is there invention as between claim 1 and claim 13? 

There is no statutory licence to do that and so it is wrong in principle and it ignores the fact that a combination patent is about a particular combination of features.  That is where the language of inventive step can cause one problem.  As I say, the comparison is whether or not something involves an inventive step is to ask what is the product you have claimed, what was there before, does that involve an inventive step?  My learned friend says, in effect, it did not involve an inventive step to go to the storeroom lock and what have you done to the storeroom lock to get to claim 13?  Interesting academic or lay exercise, but nothing to do with the Act.

Just dealing with whether or not claim 13 is limited to rim‑mounted locks, it is common ground that the storeroom locks do not anticipate claim 13 and it is common ground that the reason is that claim 13 specifies a locking means which the storeroom locks do not have.

GUMMOW J:   Namely?  Where does it specify that?

MR BANNON:   In claim 13.

GUMMOW J:   Yes, where in claim 13?

MR BANNON:   It is at AB 15 and it says:

said detent means includes at least one detent which moves substantially radially of said cam axis when moving between said actuator locking and release positions.

They are the words.  Perhaps I should just go to the Garland evidence on that, having said I would not, which is at 459 in the same volume. 

GUMMOW J:   Yes, 71.3.

MR BANNON:   Yes.  He says:

Claims 12 and 13 of the Lockwood Patent do not limit the operation of the “detent means” so as only to move (radially) outward in order to lock the “hub” –

Now, so far as 12 is concerned he is right, so far as 13 he is wrong.

GUMMOW J:   I have put brackets around “and 13”.

MR BANNON:   Yes, it is just a slip.  But then he goes on to explain what detent means:

Claim 14 of the Lockwood Patent, however, further restricts the “said detent”. . . As a result, the “detent means” described . . . is limited to such means which only move radially outwardly to the active (or locked) position –

And then over the page to 71.5 he says:

The choice of restricting the movement of the detent means (either radially outward or radially inward, to engage the “hub” with the lock casing) was, in my opinion, purely a design choice . . . (radially outward moving detent means generally being more secure but also more expensive to manufacture).  Generally speaking, surface mounted locks (such as the Whitco (Original) Deadlock . . . Whitco tended to use detent means as described in Claim 14 of the Lockwood Patent (i.e. radially outwardly moving).

They are all rim‑mounted locks.  That is the reason why we say that demonstrates that these are associated with rim‑mounted locks and, as I say, in any event it is common ground that the storeroom locks do not anticipate claim 13 because of that locking means and it is common ground that the storerooms locks are not rim‑mounted locks and it is also common ground that claim 13 identifies a locking means which is in the 001 rim‑mounted lock.  So at the end of the day I am not sure there is a real difference between us as to whether or not claim 13 is limited effectively to locks with radially – perhaps the common ground between us is claim 13 is limited to radially outward detent means which is associated with rim‑mounted locks and does not describe or comprehend storeroom locks.  That is perhaps the fuller version which my friend would probably not dispute.

The next question then, having dealt with the general possibility of claim 13 admitting different material, is, with respect, an interesting question as to the interpretation of 7(3) and how wide a net does it cast.  Now, if one goes to 7(3) it says, “the kinds of information are”, and (a) is the only one relied upon in this case:

prior art information made publicly available in a single document or through doing a single act . . . being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.

Now, our submission on that is that that is a filter which confines the material which should get in to material which is actually relevant to the subject matter of the particular invention and, in particular, claim 13, we say, 001 rim‑mounted locks.  We get that from words such as the “skilled person” mentioned in subsection (2).  That is the person in (2) which one considers on an ordinary obviousness case as someone addressing the particular problem or the particular need in the art.  Then, secondly, the combination of the words “be reasonably expected”.  It is not a question of could have ascertained, it is be expected to ascertain and reasonably to be expected to ascertain.  In other words, understood and regarded as “relevant to work in the relevant art”. 

That in combination with the purpose of 7(2) suggests that the inquiry is to replicate what might be perceived to be the design process of somebody dealing with a particular problem.  In other words, somebody dealing with a particular problem would be armed with common general knowledge, part of their ordinary equipment.  They may also be expected to undertake searches directed to the particular matter they are addressing.  So they might undertake a patent search…..literature which you can search by computer or by word reference.  One would be looking for words related to the particular problem.  One would not simply go “locks” and pull out every single patent on locks.  You would have a thousand patents.  A person humanly could not ‑ ‑ ‑

GUMMOW J:   This word “document” is rather peculiar, is it not?  It does not seem to encompass objects, utilitarian objects, but everyone understands it does, do they not?

MR BANNON:   Yes.

GUMMOW J:   I mean, the definition which we are referred to in the Acts Interpretation Act has paper on which there is writing, paper on which there are marks and symbols, articles or materials from which sounds or images can be reproduced.  It is odd, but it is subject to contrary intention, of course.

MR BANNON:   We would submit it would not include an object, a single act.  The act they rely upon is an act of sale of a particular lock, but they do not rely on ‑ ‑ ‑

GUMMOW J:   I see.  It is the doing of that act, I suppose.

MR BANNON:   Yes. 

GUMMOW J:   Yes, thank you.

MR BANNON:   Perhaps that made a difference between I think it is Longworth v Emerton proposition as to whether or not you could see whether a tractor moving publicly, or a harvester I think it was, whether you could work out what it was from across the fence.  It did not matter if it was a public act as long it is a public act, whereas here it might matter whether or not you can actually see and understand what it is doing.  Hence the words “be reasonably expected to have ascertained, understood and regarded as relevant”.  The reason I say that is because – see, there are really two approaches to (3) and I am not sure – and a wide one which I suppose is arguably available on the section is to say everything which is capable of being ascertained and which relates to the relevant industry gets in via 7(3).

In other words, at a theoretical level, all locks ever sold are conceivably relevant to any lock design generally and, assuming they can be identified, could be caught.  The difficulty with that would be it would provide no filter whatsoever.  Section 7(3) adds it to 7(2).  Section 7(2) talks about common general knowledge.  If one is adding information to 7(2) one would think it has to be information which someone has or can be deemed to have in the same way as common general knowledge, ie, in the head…..simply said ineffectively all you prove is there is a whole lot of locks there and they have a whole lot of features, it would distort the 7(2) test enormously because as a matter of practicality no skilled worker can, for example, read all the patent specifications which exist.  If they spent the rest of their lives they would not finish reading it.  They would never get to design anything.  Equally, they cannot understand and know all the features of every lock.

HAYNE J:   Is it not the last four lines of 7(3) that provide that filter?

MR BANNON:   We submit so, yes.

GUMMOW J:   The citation of Longworth v Emerton is 83 CLR 539. It talked about the invention being “practised openly or made known publicly”.

MR BANNON:   Yes.  So our submission is there must be a filter and otherwise the whole effect of MMM would be obliterated.  A filter, as we say, the object is – the Court would be putting itself in the position of perhaps overcoming what might be thought to be an odd outcome, namely, if it be the fact that in a particular industry, particularly high technology industries, there will be a large body of, say, some chemical knowledge, for example, biochemical knowledge, but, as a matter of fact, somebody will systematically do searches of other work in a particular area and they will read that.  They will read the results of that and they will absorb it and they will have it in their head and then they will move from there.  If one interprets the legislation that way, then the focus should be not on what is relevant to locks generally, looking at our case, but relevant to the particular type of invention which claim 13, which is a rim‑mounted lock - and, we would add, addressing the problem identified in the body of the specification which was a problem everyone accepted related to a 001 lock.

We say there is some support for this approach in the authorities.  Firebelt we have given a reference to.  That is Firebelt v Brambles 76 ALJR 816 at page 816. Paragraph ‑ ‑ ‑

GUMMOW J:   It does not seem to have passed the Merralls test.

MR BANNON:   No…..It might get into volume 280, your Honour.

GUMMOW J:   Neither did Malleys v Tomlin 180 CLR years ago, I thought.  Yes, whereabouts in Firebelt?

MR BANNON:   Paragraph [35] dealing with section 7(3) – or perhaps it starts at [33], after referring to Minnesota Mining, last sentence in [33] records the fact that:

there has been an expansion of the legislative text dealing with the ascertainment and content of the common general knowledge relevant for the determination of the obviousness of a claim -

Now, without suggesting one reads this as a statute, but I mean, that is consistent with assuming - the knowledge you come in is the equivalent of common general knowledge, ie, something in somebody’s head, so they must have actually ascertained it and understood it as a matter of likelihood of actually doing.  Then there is a reference in [34] to the background of the proceedings.  [35]:

Reference to the legislative history of the Act is of assistance.

Then there is a reference to the background report which heralded the introduction of the legislation and in the first paragraph of that report, the second sentence says:

On this basis the requirement of inventiveness will not be fulfilled if the knowledge imparted by the disclosure or use, combined with what is common general knowledge in the art, would render the claimed invention obvious to a person reasonably skilled in the art.

Next paragraph – you cannot combine the two.  Then there is a question of – then it says:

On the other hand, we see as being treated as within the common general knowledge of the art, not merely information which is generally known -

Again this expression “being part of the common general knowledge” which is consistent, we say, with our approach…..got to be a sensible filter and refer to only information someone would actually get in their head.  Then continuing on in the same paragraph, he says:

The recommendation in the emphasised passage was accepted -

Then it just refers generally to the terms of the legislation.  Then there is a reference to Tidy Tea quoting from Justice Burchett’s decision and the last sentence in particular of the quote referring to the fact that even if you get it in you still need to demonstrate that it would have been obvious, and that construction was accepted.  Then paragraph [38], there is a reference to Justice Dowsett’s conclusions.  His Honour says:

“The evidence from the experts satisfies me that prior to 10 February 1992 the content of the disclosures . . . had passed into common general knowledge or, alternatively, was prior art information that a skilled person in the industry could reasonably be expected to have ascertained, understood and regarded as relevant to his or her work in that area.

The reference to “his or her work in that area,” we would submit, is interpreted as directing to work directed to solving the problem or solving the need in the particular industry, and that does not seem to have been disturbed, that process of reasoning, by the High Court. 

The next case is – we have also put on our list – Commissioner of Patents v Emperor Sports 149 FCR 386. The invention in this claim was whether or not velcro tags used in touch football was an invention with a view to overcoming the problem of the normal method of demonstrating whether someone is tackled and has to stop and play the next pass was touching could result in over‑aggressive touching and potentially physical industry or a debate as to whether or not someone had actually been touched, and these removable tags that everyone carried on their shorts was the invention. A question arose as to whether or not a similar idea which had been promoted in America in relation to American football could be brought in under section 7(3). The question was the likelihood of somebody interested in AFL or rugby league would have done patent searches in the US. That was the…..At paragraph 28 their Honours say, after dealing with the terms of section 7(3):

The reasonableness of expectations as to what the skilled person could do has to be assessed in light of the characteristics of the relevant hypothetical skilled person and the particular problem faced, the overcoming of which is said to involve the inventive step -

Reference is made to Wellcome and Alphapharm. 

The context of that passage in Alphapharm is the High Court’s consideration of the “matter of routine” element, but their Honours do not suggest the problem-facing element was not relevant, or might cease to be relevant under the Act.  Obviousness is not an abstract issue, but one which has to be determined in the context of a particular alleged inventive step.

Their Honours went on to say in 31:

Section 7(3) does not assume an ascertainability by any and all skilled persons, of whatever description, of all publicly available prior art documents.  Nor does it assume that the skilled person has found the document in question, so that the only question is as to whether he or she has understood it and regarded it as relevant.  Such a construction ignores the elements of expectation and reasonableness, as applied to the particular skilled person.

We rely on that reasoning.

In paragraph 32 they deal with the question as to what extent evidence is necessary and they say:

In high technology areas, eg it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them.

But in this particular case paragraph 35:

self‑evident that it could not be reasonably expected that a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct a search in the United States Patent Office.

May be very unkind on rugby league and AFL administrators.

CALLINAN J:   It does not mention rugby union.

MR BANNON:   Rugby union.  It does not mention rugby union, yes.  I suppose one can draw something from that.  Either it goes without saying or – and I think on the previous occasion I also referred to the decision of Justice Cooper in Stack.  The transcript reference on the last occasion – I hope this is the right one – transcript 135, and I will not go back to that.

Then applying those principles to this case, the starting point is what are the matters they say they relied upon.  Justice Hely in paragraph 219 of his Honour’s judgment records what was relied upon and that appears in the appeal book at page 1126, volume 3, paragraph 219:

In Doric’s submission the relevant act is the sale, taken individually, of the following locks –

and I think for present purposes our focus is on the storeroom locks and perhaps the Lockwood 530 as well.  So that is how they framed the matter.  So in terms of what is not relied upon, there is no reliance, for example, on a documentary publication, so there is no reliance on the brochure about which there has been some submissions.  One has to treat it as a single act of sale of any one of these locks.  That is the first point in considering the application of the principles.  The second point is to say the starting assumption must be that the skilled addressee that one is talking about is not aware of the lock because we are talking about the skilled addressee for the purposes of (2).  If the skilled addressee for the purposes of (2) is aware of the lock, then it is part of 7(2) anyway. 

So the starting point for this exercise is the skilled addressee is a blank canvas when it comes to the storeroom locks and the task is having regard to the question of claim 13 and the invention it disclosed about which we say two things, namely, it does not encompass storeroom locks as a locking means associated with rim‑mounted locks and having regard, if it is relevant, to the terms of the body of the specification which talks about a problem with the 001.  What is the evidence which would permit someone to conclude or the court to conclude that a skilled addressee would be reasonably expected to ascertain, understand and regard as relevant the storeroom locks. 

With a patent search one can say it is identifiable with the body of literature, one can type in words, one can say that.  A sale assumed to be unknown - and the evidence shows there is thousands of locks on the market - you have got to actually try and identify an evidentiary process which would get the putative lock designer out of his or her chair to actually go and find this lock.  That is even before you are talking about understanding it.  Why?  What is the trigger?

The bare facts on this case in relation to this is no one gave evidence that faced with the problem of the old 001 or faced with trying to come up with a claim 13 lock - I would have expected someone to go looking at locks which were used on storerooms and buildings.  Garland, their star witness expert on obviousness and all things, he did not say it.  My friend in the latest round of submissions relied on a passage not previously had any air time at all which says, he says, generally rim‑mounted locks and other sorts of locks are similar.

GUMMOW J:   We are getting back into an encore, are we not, Mr Bannon?

MR BANNON:   Only a little bit because my friend seems to have taken the opportunity to encore plus, but can I briefly summarise these points, if I may.  The failure of Garland to make that as something which can be relied upon, one can draw the Jones v Dunkel inference in circumstances a witness is called but does not address the particular topic.  The Commercial Union Assurance v Ferrcom 22 NSWLR 389 at 418 is an authority for that proposition. But moreover, as Justice Hely said, judgment 194, Mr Garland, when he put his toe in the water as to say the process he would have come up with, relied on the DS60.

GUMMOW J:   Which paragraph in Justice Hely?

MR BANNON:   Paragraph 194, that is page 1119 of the appeal book.

GUMMOW J:   Yes, we have had detailed submissions on that.

MR BANNON:   That is right.  Then Freestone said he would not look at anything other than rim‑mounted locks.  Justice Hely accepted that, paragraph 222.  Again this is repetition, but the contemporaneous evidence was the persons who actually attempted to solve the problem, the actual inventor, Mr Blanch, did not look at storeroom locks.  That is Justice Hely, paragraph 224.  Mr Alchin, the copier, did not say he was inspired by them.  He said he was inspired by DS60.  That appears from page 501 of the appeal books.  So that the difficulty faced is just simply not only an evidentiary vacuum, but actually evidence goes the other way.  It is just not open as a matter of speculation as to how one would get to it.

Perhaps I could just say one other thing.  The brochure is not relied upon, but even if one did go to the brochure, and there seems to be some reference to the brochure, repeated references, the actual brochure does not disclose integer (vi).  Can I just take your Honours to an example of that at 779, volume 2.

GUMMOW J:   Line 20?

MR BANNON:   Yes, it says:

Outside:  Opened by knob when free.  Key outside locks or unlocks both knobs.

What the 001 does is it gives two functions to the outside actuator.  It not only retracts the latch bolt, it also releases the inside lock.  That is integer (vi).  You have got to have both functions.  This says you withdraw the latch bolt by the knob, you use the key to unlock, so it is not integer (vi).  Their point is to say the storeroom locks do it because, although this does not say it, if you keep turning the key, it will withdraw the latch bolt as a matter of fact.  But the brochures do not say that.  So even if you had to speculate as to what the skilled addressee would do and say, look at some brochures, and even if it was permissible to say I am going to go looking for integer (vi), which we say it is not permissible, this would teach away from it, and none of the brochures support them on this.  Justice Hely recorded the fact that the brochures do not make the disclosure at judgment 113, volume 1101.  He went on to say if you actually look at the thing and you fiddle around with it, then you can actually find it.

But again the problem is why is anyone going to go and look for it?  And why would anyone go looking at locks which are not – there is nothing to suggest they are used as outdoor security locks and which the evidence shows you do not get outdoor security when you go in, the Lockwood 001 does look at it – it is just why would you go and look at it and why would you fiddle around with it?  You would have to buy it and, furthermore, to see whether you had the combination of locking means, plus integers, which 13 requires, you would have to take it apart.  One evidentiary reference to that of Mr Wilson is volume 1, page 85.  Lastly, on additional evidentiary references, even if one could concede one was motivated to go and look at one of these locks, not only is it not advertised as a feature, these particular references to Garland and Freestone indicate – that is 67, 78 and 361 – that it was not expected you use the key to retract the latch bolt.  I am sorry, I gave a reference to Mr Alchin’s reliance on the DS60.  I think I may have given the incorrect one.  It should have been Justice Hely, 176. 

Could I then just deal with this lastly on this 7(2),7(3) point is namely that even if it does get into 7(2) it is not axiomatic at all that – even if the storeroom locks do get in, it is not axiomatic at all that it is lacking invention because, as my learned friend points out, Mr Garland was a man who was aware of the locks at the time but he did not say he was inspired by them.  So, in other words, almost you have your putative skilled addressee with the knowledge, going from 7(3) to 7(2), and he was not inspired by them.  You have Mr Freestone who thought it was in the too hard basket.  He was aware of them.  You have Mr Blanch.  We do not know what his state of knowledge was but he worked at Lockwood so there is a fair chance he knew about some of these locks.  He did not regard them as relevant.  So that even if you get these locks into 7(2), as Justice Hely found, the evidence does not satisfy a conclusion of obviousness.

The last point I needed to address was the question as to whether or not there was a need to amend on a rewriting.  What I wanted to say on that is really set out in our written submissions and I do not want to add to that unless the Court wants to hear from me on any additional matter.  Subject to anything else, they are the additional matters I wish to raise.

GUMMOW J:   Thank you, Mr Bannon.  Yes, Mr Catterns.

MR CATTERNS:   May it please the Court.  Your Honours, we agree with our learned friends that order 2 at 1331 would need to be amended so that it only – if we were right – if our friends our right order 2 would be set aside.

GUMMOW J:   Just a minute?  1331?

MR CATTERNS:   Yes, your Honour.  That is the order that revokes claims that have already been revoked.

GUMMOW J:   Yes.

MR CATTERNS:   We would agree that if we lose that order would be set aside completely.

GUMMOW J:   If you win?

MR CATTERNS:   If we win it would be amended to refer to the live claims which are 13 to 15, 20, 21 and 30.  I think our friends agree.

Your Honours, the Court’s questions, as we see it, flow partly from a discussion in reply last time we were here from the fact that claim 13 is narrower than claim 1, which of course we agree.  It has the additional integers of the cam and the radially moving detent.  We accept that.  The fact that claim 1 is narrower can in principle make a difference.  Quite often a narrower claim ‑ ‑ ‑

CRENNAN J:   Claim 13 is narrower.

MR CATTERNS:   I beg your pardon, your Honour.  Thank you.  In principle, a narrower claim might be less likely to be obvious.  So, your Honours, there are two cases that we can see under the Act where a narrower claim is less likely to be obvious.  The first is where there is a different inventive step involved.  Now, an example of that, your Honours, is what we called the preferred embodiment claims which have never had to be dealt with by this Court.  They were the claims that we had the infringement argument about and we do not infringe.  So, your Honours, if your Honours would please look at claim 7 in appeal book 1, page 14, that is the first claim that describes the particular way Mr Blanch achieved auto‑unlocking in the 001 and which Mr Freestone gave some evidence about saying, “I thought that was ingenious the way he did it, applying a bias to the cam.”  That is the first claim that introduces cam biasing means.  Your Honours, there is no doubt that that claim, being considerably narrower than claim 1, gave rise to different questions on obviousness.  His Honour Justice Hely held that it was not obvious and we have not challenged that since.  So, in principle, of course, your Honours, a narrower claim can be more likely to be inventive but ‑ ‑ ‑

GUMMOW J:   There was an actual finding, was there, that 7 was not obvious?

MR CATTERNS:   Yes, your Honour.  I will take your Honours to it quickly.  His Honour dealt with those claims separately, as we asked him to and was correct.  They were called the preferred embodiment claims and they are at 213 to 216 and we do not complain that his Honour downed us fairly readily on that, because those claims did involve dissent to the innards of the 001 and saying that this new invention of our friends using the cam biasing means, the little spring which held back the cam and then let it go when you turned the key, we were not able to prove that that was obvious.  Fair enough.  But, your Honours, here, however, precisely the same inventive step is involved and our friends do not disagree.  There is exactly the same inventive step involved in moving from claim 1 to the invention as in moving from claim 13 to the invention, because we have always agreed – and we have given your Honours references to it – that the inventive step is to add to the common general knowledge lock, which is the 001, the lock release means.  Your Honours remember from the fair basis case that the lock release means may take any form whatsoever.  So the inventive step is to add to the common general knowledge lock any form of lock release means and it is the common general knowledge lock has inside it a cam and detent which are the extra integers of claims 12 and 13. 

Our friends have not submitted, rightly of course, that the skilled addressee who knew the common general knowledge lock, 001, did not know about its cams and detents.  So, your Honours, if we are in the territory – and I will come back to what the Court says in Firebelt about the two alternative routes to obviousness in section 7(2), as the Court said in Firebelt and it is clear on the face of the section, with respect.  Your Honours, if we are in the first route of section 7(2) - which is the traditional MMM v Beiersdorf, discussed again by the Court in Hassle v Alphapharm ‑ in that traditional territory the first of the two Firebelt alternatives as the Court emphasised, if we are right on claim 1, we must be right on claim 13 because the same inventive step is involved.

CRENNAN J:   What about the position when the evidence may show that the real inventive step is narrower than has been agreed or than what has been characterised if a patentee has attempted to explain it in the text, and so forth?  What about that situation?

MR CATTERNS:   That is a possibility, your Honour.  Claim 7 might be an example of that.

CRENNAN J:   Yes.

MR CATTERNS:   But, your Honour, claim 13 is not, and we have always agreed – as I repeat myself – that claim 13 involves precisely the same inventive step.  Is it obvious to add lock release means to the 001 of any type?  That is why this Court said in the fair basis judgment that acceptance of our friend’s submission about the breadth of the lock release means of any type – we said that was too broad and not fairly based – but the acceptance of our friend’s submission gives rise to problems, including on obviousness, potentially.  That is why we here. 

So, your Honours, we submit that if claim 1 is obvious, and we accept that it is now a step in the reasoning, but reasoning that would leave claim 1 to be obvious would lead to claim 13 being obvious inextricably.  On the first basis the traditional law of obviousness, 3M v Beiersdorf, Alphapharm.  Then, your Honours, there is another possibility which has formed the – so if your Honours were with us on the basis of claim 1 without needing to go to section 7(3), your Honours, we would submit, must be with us on claim 13.  Then, your Honours, the focus of the debate assumes, for present purposes, that your Honours are not with us on the traditional Alphapharm/3M approach and we need resort to section 7(3) to add in the storeroom locks. 

Now, your Honours, there there is an argument about whether or not the narrower claim 13 excludes the storeroom locks from being relevant.  So they might be relevant to claim 1 but not relevant to claim 13.  I will come back to the rest of those terms in section 7(3).  Now, your Honours, we imagine that is possible, but our submission is not in this case.  So, the narrower claim 13 has exactly the same – information is as relevant to claim 13 as it is to claim 1.

Your Honours, may we quickly go to Firebelt again in the Australian Law Journal Report.  Our friends took your Honours to the legislative history, explaining that to get over the strictness of 3M and the Court addressed that question again, of course, as your Honours know, in the Alphapharm Case, but your Honours see in [37] at 823 that his Honour the trial judge, Justice Dowsett:

correctly construed s 7(2) as looking first to the light shed by the common general knowledge as it existed in the patent area before the priority date, considered separately -

Your Honours, that is what we have been calling the traditional 3M/Alphapharm way of looking at obviousness, but then there is the extension –

and, secondly, to that common general knowledge considered together with either of the kinds of information mentioned in s 7(3) –

and your Honours quote the whole section, including the words that we stress at the end of that paragraph, namely -

regarded as relevant to work in the relevant art in the patent area.

Your Honours, our short submission is the reason there is no change in the present case is that the storeroom locks would be regarded as “relevant to work in the relevant art” which his Honour Justice Hely held was – I will take your Honours to it – the field of lock design and manufacture, not rim‑mounted locks.

In [38] your Honours emphasise – the Court emphasised there are two ways of getting at obviousness now:  first, by italicising the word “alternatively” as your Honours see.  The first was whether this presentation, which was an act rather than a document, as it happens, was “common general knowledge or, alternatively”, could reasonably expect it.

So, your Honours, if we are on the first basis, we submit - and your Honours were with us on claim 1, to answer the Court’s question, we must win on claim 13, but then the question is, does the narrowness of claim 13 affect the preconditions of 7(3) so we can get the locks in or we are less able to get the locks in under claim 13 our friends say.

We had thought, until today, that the only debate was about whether the locks could be regarded as “relevant to work in the relevant art” for reasons set out in our paragraph 9.  Our learned friends accepted fair and square last time we were back here at line 1505 on page 34 where our friends refer to 7(3).  His Honour the presiding judge asked:

Do your dispute that?

MR BANNON:   Yes.  They were plainly capable of being ascertained because they existed and had been sold in some quantities, albeit not part of the common general knowledge, but they were not rim‑mounted locks.

Your Honours will see, as we understand it, that our friends’ attack on it was whether or not they were able to be regarded as relevant because they were not rim‑mounted locks.  Your Honours, that is what their written submissions also put.  Then today our friends say, “It doesn’t matter that each of the witnesses in fact knew of these locks.  We assume they did not know of them because they are not common general knowledge.”

Your Honours, we ended up not challenging his Honour Justice Hely’s holding that these locks were not common general knowledge, but we set out in our paragraph 18, where there is a reference to his Honour’s paragraph 193 where his Honour holds they are not common general knowledge, we say there is, however, no doubt that these witnesses knew about them.  They were familiar with them.  Each of them said in evidence, two of them led by our friends, that they knew these locks existed and that they solved the problem. 

So, your Honours, we really do submit that the matter comes down to one regarded as “relevant to work in the relevant art”.  It cannot be a question of understood because all you have to understand is that the key undoes the lock.  Contrary to what our friends say – I will take your Honours to it – when one does look at the brochure, or when one operates the lock, it is clear that the key undoes the lock.  The brochure says that.  The debate about what the brochure disclosed was integer v, as his Honour Justice Hely says.  Perhaps I will give your Honours the reference now so I do not lose it.

GUMMOW J:   That is the second actuator operable from the outer side.

MR CATTERNS:   It was the key turning the latch, your Honour.  I am sorry.  Let me make that good.  It was paragraph 113 of his Honour’s reasons where - in 113 at page 1101 his Honour says that Mr Wilson and Mr Freestone said these door and locks did not anticipate claims 1 to 6, et cetera, because they did not contain the integer his Honour referred to as feature 5.  Feature 5 your Honours can see at 1075 in paragraph 7, which is the paragraph his Honour refers to ‑ ‑ ‑

GUMMOW J:   That is the second actuator.

MR CATTERNS:   Yes, your Honour.  But the key thing was, your Honour, it was to cause movement of the latch bolt to the release position.  These witnesses said you cannot see from the brochure that the key turns the latch.  They all agreed readily in cross-examination that, of course, as a matter of fact it did and several of them did it as a little exercise with the Falcon lock that your Honour saw.  So, your Honours, there is no doubt you can see from the physical lock or from the brochure, that the locks possess integer (vi), which is the inventive step.

So, your Honours, the only question can be, do we fail to make good the precondition of section 7(3)?  If your Honours would not mind going to 7(3), perhaps 7(2) first.  Your Honours, section 7(2), as our friends pointed out, states the familiar test, which is the first of the two alternative ways of getting there:

obvious to a person skilled in the relevant art -

Your Honours, the words “in the relevant art” in (2) must be the same as in (3), we would submit -

in the light of common general knowledge as it existed in the patent area before the priority date . . . whether that knowledge is considered separately –

so that is the first way of looking at it, just common general knowledge, is there an inventive step –

or together with either of the kinds of information mentioned in subsection (3) –

which you cannot mosaic.  Subsection (3) refers to information made publicly through, we say, the sales of the storeroom locks, and then the precondition is – stopping there, your Honours.  The information is that in the storeroom lock, which solves the problem of people being locked in, the way it solves the problem and you are not locked into the storeroom is that the outside key undoes the deadlock, integer (vi).  Put another way, the storeroom locks solve the problem by possessing lock release means.

Now, your Honours, that is the information.  We submit that it is common ground or, in any event, cannot seriously be disputed, because each of the witnesses knew them, that they would be ascertained and understood.  The only question is “relevant to work in the relevant art in the patent area”.  Now, your Honours, the phrase does not say, “to the hypothetical inventive process,” and we submit that ‑ ‑ ‑

GUMMOW J:   I am sorry.  Where are you focusing at the moment, Mr Catterns?

MR CATTERNS:   The words “relevant to work on” – “in the relevant art” in the patent area, your Honour, sorry.  Your Honours know we are looking at Reprint 2.  I will mention the legislative history post the Act, if your Honours are interested and our friends do not object, in a minute.  There has been a change but not one that is relevant, we think.

GUMMOW J:   It is set out in Firebelt, perhaps.

MR CATTERNS:   I beg your pardon, your Honour?

GUMMOW J:   The change is set out in the footnote in Firebelt.

MR CATTERNS:   Thank you, your Honour.  I had not noticed that.

HEYDON J:   Is this the change which is at the back of the appellant’s original written submissions?

MR CATTERNS:   No, your Honour.  That is only halfway through to the change.  We have a bundle which we can hand the Court which has the subsequent change.  I can…..that in a second, your Honours.  Your Honours, the question is what is really relevant to “work in the relevant art” means?  Our learned friends say it is rim‑mounted locks.  We say – and sometimes our friends say it is the hypothetical task.  They draw on a sentence from Emperor Sports which seems to give some comfort to that.  We need to deal with those, your Honours. 

Our submission is that “the work in the relevant art” is the broader concept that appears in subsection (2) which is an entirely familiar concept in patent law.  You identify the art in which the skilled addressee works.  Your Honours, just to give some references without needing to take the Court to it, for example, in the Alphapharm Case 212 CLR 411 at paragraph 30, page 426, the Court picked up his Honour Justice Lehane’s identification:

a team of persons) experienced in the practical work of formulating drugs -

The Court later kept using the phrase “formulators” or “the formulator”.  It was not a person related to the particular problem with omeprazole, for example.  The art, as Sir Keith Aickin, formulated it in the 3M Case, MMM v Beiersdorf 144 CLR 273 at 295, is the field of adhesives or of surgical tapes. Your Honours, here, his Honour Justice Hely made a finding about what the art was to lay the platform for considering obviousness. That is in paragraph 165 at 1113 of volume 3. His Honour, in the context of obviousness in paragraph 165 says:

The issue is whether the alleged invention would have been obvious to a non-inventive ‑ ‑ ‑

GUMMOW J:   The trouble is, Mr Catterns, a lot of these general statements - I can well understand, we have all made them – are not statements which zero in the alleged invention claim by claim.

MR CATTERNS:   Yes, your Honour, but the ‑ ‑ ‑

GUMMOW J:   Which is what Mr Bannon emphasises.

MR CATTERNS:   Your Honour, we accept, of course, that ‑ ‑ ‑

GUMMOW J:   By reference back to section 18.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   And, indeed, the reference in 7(2) to “the priority date of the relevant claim”.

MR CATTERNS:   Absolutely, your Honour.  There is no question that the revocation and obviousness are tested on a claim by claim basis.  We accept that.  But we submit that the words “work in the relevant art” are intended to be broad and are broad words.  I accept, your Honours, of course, these examples I am giving are for a start, prior to this Act but, your Honours, I cannot think of a case where there has been regarded as a sub‑art for a narrower claim.  That is why we have given these examples.  Two more, your Honours.

GUMMOW J:   I am sure you are quite right in saying that, Mr Catterns.  The trouble is does 7(2) and 7(3) stimulate such an inquiry?

MR CATTERNS:   We submit not, your Honour.  Secondly, your Honour, even if so, our friends are wrong in saying that claim 13 is limited to rim‑mounted locks.  It is lock design generally, and I was going to take your Honours to a couple of pieces of evidence on that.  Sorry, your Honours, I had not quite finished mentioning just his Honour’s finding in paragraph 165.  Pardon me, I have just lost the page temporarily, your Honours.

HEYDON J:   Page 1113.

MR CATTERNS:   Thank you, your Honour.  It is 1113, your Honours, and his Honour held the relevant field is that of manufacture and design of locks.  Your Honours, just two other cases.  In the Camoflag Case 70 IPR 77 where her Honour Justice Crennan sat at first instance - we have copies, I do not think I need to take time, your Honours - her Honour has at paragraph [18] identified the art and the Full Court came back to that in paragraph [81] as:

work in the design of campervans in Australia –

not narrowing it to some particular kind of campervan, as per the invention.

Your Honours, the Emperor Sports Case that our learned friends referred to, we submit, cannot help because their Honours did not even quote those words “relevant to work in the relevant art”.  That is at paragraphs 27 and 28 of the report in 149 FCR.

Finally, your Honours, there is a discussion again of the art, a long used term in patent law, of course, in paragraph 4-207 of both Blanco White’s fourth and fifth editions.  So, your Honours, we respectfully submit that as a matter of statutory construction our friends cannot come back to rim‑mounted locks.  The more broadly defined art is appropriate as a matter of construction.  The fourth edition of Blanco White says:

that art or science” . . . is “part of the mental attitude of a well‑instructed representative of the class to whom the specification is addressed” -

Similar passages in the other texts.  Your Honours, the field of this art is both of claim 1 and claim 13 lock design generally, as his Honour held.  So even if contrary to our ‑ ‑ ‑

GUMMOW J:   How does one go about identifying this field?

MR CATTERNS:   First, your Honour, by looking at the specification, and that is what I was going to do.  But we have the benefit of a finding of his Honour and, I submit, a concurrent finding of the Full Court that the art ‑ ‑ ‑

GUMMOW J:   Yes, I know, but what was said at trial in the Full Court, given the nature of the submissions made, did not have the refinements that are now sought to be made.  That is the problem.

MR CATTERNS:   I accept that, your Honour.

GUMMOW J:   That is a problem for us.

MR CATTERNS:   Your Honour, starting with, so to speak, the primary source, page 15 of the appeal book is the claim and your Honours can see on its face it is a latch assembly according to claim 12 written so broadly, we submit, as to include any form of lock that happens to possess the integers and not limited to rim‑mounted locks.  Then, your Honours, it has the cam means which rotates and pushes or controls detent means which move substantially radially.

Your Honours, we submit that claim 13 like claim 1 is broad enough to cover both rim‑mounted locks and other forms of locks such as mortice locks.  May I just remind your Honours that there is a root of dependency.  It is dependent upon claim 12 which says that the locking means include detent means and cam means, which the storeroom locks possessed.  That is why claim 12 is not novel.  The integer that gave 13 its novelty is the fact that the detent moved radially.

Your Honours, our submission is that the evidence does not show that that is a feature whereby this claim is confined to rim‑mounted locks.  Your Honours know claim 1.  Your Honours, just a couple of general things in the specification.  Page 4, lines 5 and following:

This invention relates to latches of the kind which are controlled by a key operable lock  –

doors and windows.  So, your Honours, our friends, as they keep trying to do, with respect, confining this to front door locks thereby pushing the storeroom locks aside, are wrong.  The patent is intended to be broad.  Then, your Honours, at page 7, reminding your Honours that claim 13 is itself dependent on claim 1 which encompasses storeroom locks ‑ ‑ ‑

GUMMOW J:   This phrase “dependent” carries some baggage, too.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   I am not saying it is fatal for you, but it does.

MR CATTERNS:   That is right, your Honour.  Page 7, lines 46 and 47 is a sentence that the court took account of in the fair basis argument, “The release means may take any suitable form”.  Your Honours, at page 5 ‑ ‑ ‑

GUMMOW J:   Is 5 of the patent?

MR CATTERNS:   Yes, your Honour.  Sorry, page 5 of the book, I beg your pardon, your Honour, page 2 of the patent, introduces figure 1.  Figure 1 is at page 19 of the book and that is the only depiction of the whole lock I think as opposed to the innards and it is a schematic depiction, but everybody agreed, and the Full Court noted, that that is not a rim‑mounted lock.  That is a mortice lock.  The shape of it shows you that you can shove that into a rebate morticed into the door.  So, your Honours, the primary source, as to help us know what the relevant art is, shows that it is not confined to rim‑mounted locks.

GUMMOW J:   I am not quite sure how, but you rely upon the success your opponent had on the fair basing case.  You seek to turn that against him.

MR CATTERNS:   Yes, your Honour.  The Court, with respect, saw the two‑edged sword in paragraphs 28 to 32.  So, your Honour, it is broad enough to – the Court said we were misguided in our fair basis argument which is not to say that the excessive breadth did not give rise to other possible grounds of revocation.

His Honour at paragraph 222 in dealing with the question of 7(3) dealt with this question of – that is at page 1127 – dealt with a matter related to what we are talking about.  He says:

However, the large range of locks on the market, and the cost of acquiring one type of each lock in order to take it apart so as to understand its internal mechanisms, impose practical constraints on this approach.  According to Mr Freestone, even Lockwood did not undertake this exercise on a general scale.

Your Honours, that reflected error, and it is an error we have made submissions about before, in that it shows that his Honour is descending to the innards as opposed to the bare lock release means of any form.  You do not need to take apart the storeroom lock to notice that it possesses lock release means.  That sentence infects the next sentence:

Further, if Mr Freestone were comparing lock designs, he would have regard to other rim mounted locks only.

But that is because the evidence to which his Honour is referring is when Mr Freestone is talking about the particular solution that Mr Blanch had come up with.  It was answering our long since lost case about the preferred embodiment claims.  Your Honours, that is what the Full Court holds in paragraphs 166 to 168 at page 1319.  Their Honours refer to his Honour’s paragraph, first is the practical constraints of the approach, then their Honours say his Honour erred in failing to distinguish between the present claims and the preferred embodiment claims:

In order to determine whether a storeroom lock, a Lockwood 530 or a Boyd mortice lock possesses integer (vi), it is only necessary to operate it or read a brochure describing its attributes.  There is no need to take it apart -

Then there is the brochure, the page our friends took your Honours to says:

“Key outside lock or unlocks both knobs”.

That is it, your Honour.

GUMMOW J:   I think we have been down this track before.

MR CATTERNS:   Yes, your Honour.  Then, in paragraph 168 they point out that Mr Freestone’s evidence that his Honour referred to was answering evidence about the particular internal mechanisms.

Our friends took your Honours to Mr Garland’s evidence in volume 1 at page 459 as, as we heard it, the high point of their argument, that claim 13 is to be read as limited to rim‑mounted locks, always remembering that we submit that that is not the statutory question.  Your Honours, at page 458 he begins by referring to detent means as referred to in claims 12 and 13, present in a number of blocks, he says at paragraph 71.2, including the two Doric locks, the DS30 and DS60, which are not rim‑mounted locks that we relied on.  Then I think it is right to say that the rest of those locks listed are rim‑mounted locks.  We agree about the slip in 71.3.  Then in 71.5 there is the passage our friends took your Honours to saying that the choice of which way the detent moves is a purely design choice:

Generally speaking, surface mounted locks . . . tended to use –

outwardly moving locks.  Your Honours, that cannot give rise to a syllogism whereby the 001 lock had outwardly moving detents, therefore – sorry, it is a rim‑mounted lock, therefore claim 13 with its outwardly moving detents is limited to rim‑mounted locks.  We submit that is illogical fallacy.  It is insufficient to say that there is a narrow field that would be regarded as relevant. 

Your Honours, just finally on that, at page 848 in volume 2 in the context of claim 14 Mr Garland refers to the Boyd mortice lock which was another one of the locks which anticipated claim 1.  Then there is a further discussion at the top of 849 of rim‑mounted locks.  Then he says in 45.1:

Any distinction between mortice locks and rim‑mounted locks is, however, largely a question of the positioning of the locks with respect to, for example, a door rather than differing locking function.  Accordingly . . . I would include within the general description of mortice locks . . . locks in the nature of “lock sets”.

The lock sets include the storeroom locks.  They do not fit neatly into either category.  I remind your Honours that the picture in the patent is of a mortice lock, which he goes on to say:

However, the specification and drawings of the Lockwood Patent specifically describe a mortice lock but do not specifically make reference to a rim‑mounted lock.  Despite this, the principles . . . are, in my opinion, fundamentally the same.  Each lock may commonly include similar locking mechanisms involving . . . cams and detents.  In my opinion, there is neither any specialised knowledge nor any special mechanical principles which apply –

one to the other.

I am also of the opinion that lock designers would not generally specialise towards one type of lock.  For example, I have personally been involved . . . in the design of both mortice locks and rim‑mounted locks.  Similar locking principles also may apply in, for example, window locks.

GUMMOW J:   Is there any cross‑examination on this?

MR CATTERNS:   No, your Honour, I do not think so.  We did look.  We respectfully submit that it is not a question of his Honour Justice Hely preferring Mr Freestone who said, “When I was designing the nitty‑gritty of the lock, I would stick to rim‑mounted locks”, because he was, as the Full Court held, answering another question.  So we respectfully submit that however one reads 7(3), it is inappropriate to confine the relevant art, accepting that we are looking claim by claim, to rim‑mounted locks.  Accordingly, your Honours, we respectfully submit that 7(3) is activated, if that is the right phrase, and then the storeroom locks may be considered together with the common general knowledge.  As we heard what our friends said, there is no inventive step then because our friends agreed that if you take the storeroom lock with claim 1 of course, which renders them not novel, there is also no inventive step because everything is there.

Similarly, if you are allowed to consider the common general knowledge, which is the 001 lock, which possesses the extra integers of claim 13 and of claim 1, of course, and then you add to that the storeroom lock, you have the only missing integer which is the information that in the storeroom lock there is lock release means.  The outside key undoes it.  So, your Honours, if we get through 7(3) we respectfully submit there is no inventive step at all or if there is a step it is not inventive.

CRENNAN J:   How would it work - and I am not saying Mr Bannon suggested this, but if a patentee said, “Well, I accept that claim 13 ought to be partially revoked insofar as its dependence on claim 1 picks up non‑rim‑mounted locks”, how would section 7(3) work in those circumstances?

MR CATTERNS:   Your Honour, our friend would have to go further and amend 13 to say “in a rim‑mounted lock possessing all these features”.

CRENNAN J:   Yes.  That is probably captured by saying the patentee would be accepting partial revocation so that the dependence on claim 1 would be confined to rim‑mounted locks.

MR CATTERNS:   Yes.  Your Honour, then our friends would have to do more than the rewrite we say which is necessary or which our friends say flows and just write in claim 1.  They would need to add a further narrowing integer, namely, what your Honour says, a rim‑mounted lock.

CRENNAN J:   I accept that, yes.

MR CATTERNS:   Your Honour, post‑judgments our learned friends could ask for leave to apply to amend to narrow their claim to rim‑mounted locks.  They would, without question, be refused as a matter of discretion, we respectfully submit, because when you get to a validating amendment of that kind, a narrowing amendment, after all this litigation, your Honour, our learned friends, we submit, would have no prospect of success.  We have cited cases on that, including a recent Court of Appeal one in the UK where citing Henderson’s Case – I cite Anshun – it said you are far too late because, your Honour, whether or not discretion is activated by our friends just saving claim 13 it is ‑ ‑ ‑

GUMMOW J:   This is Novartis, is it?

MR CATTERNS:   I beg your pardon, your Honour.

GUMMOW J:   The Court of Appeal case is what?

MR CATTERNS:   No, your Honour, Novartis is an example of an Australian ‑ ‑ ‑

GUMMOW J:   Yes, that is what ‑ ‑ ‑

MR CATTERNS:   That is Justice Merkel refusing an amendment on discretionary grounds.  I have just put that in as an example of that.  Your Honour, the Woolworths Case that we refer to followed – the Court of Appeal case, I am sorry, is in our 33 – Nikken Kosakusho Works v Pioneer Trading [2006] FSR 4.

GUMMOW J:   What was that invention about?

MR CATTERNS:   I am sorry, your Honour, I do not remember.

GUMMOW J:   That is trademarks, is it?  It is a trademark case?

CRENNAN J:   Yes, it was trademark case, was it not?

MR CATTERNS:   Woolworths is a trademark case?

GUMMOW J:   Yes.

MR CATTERNS:   Yes, your Honour.  What happened there, your Honour is post‑judgment one of the ground ‑ ‑ ‑

GUMMOW J:   What is the English Court of Appeal case?  Is it a patent case?

MR CATTERNS:   Yes, your Honour, I am sorry.  It is validating amendments.

GUMMOW J:   That is the one we need to look at.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   It is the English Court of Appeal, is it?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   Lord Justice Jacobs gave a judgment, did he?

MR CATTERNS:   Yes, your Honour.  Lord Justice Jacobs, I believe wrote the judgment agreed with by Lord Justices Waller and Laws and, as I say, your Honour, their Lordships applied Henderson’s Case.  If our learned friends win they will need to rewrite claim 1 into claim 13, if we are right just on that one question.  If our learned friends lose, to say that they would have to do what her Honour Justice Crennan suggested, which is not just write “in claim 1” but write in “in a rim mounted lock”.

Even then, your Honours, we say that would not work on our statutory construction point that the relevant art is a more general one, but I can well see the point, I respectfully admit, that you might confine the art by words like that.  So, your Honours, that is why we respectfully submit that we can get that information in.  In other words, a skilled addressee would consider it together with his or her common general knowledge in terms of section 7(2) and if that is so, we submit it is obvious that the lock release means integer is there and should be added.  So there is no inventive step, or at least it is not inventive.  Your Honours, that brings us to the question of whether there is a need to rewrite.  Your Honours, as we understand the practice, and of course we have not looked at it exhaustively, that is the practice.  We agree with our learned friends’ written submission that the UK practice referred to in the Raleigh Case did depend on section 32A of the particular provision there.  It is a question of our Act. 

GUMMOW J:   Section 32A seems to have been inserted by section 9 of the Patent and Designs Act 1919.  We do not have such a section, do we?

MR CATTERNS:   No, your Honour.  It was, in effect, a condition on relief. 

GUMMOW J:   The common law they are talking about is what used to happen with the writ of scire facias, I suppose.

MR CATTERNS:   Your Honour, as our friend says, in the old days one claim fell, the whole patent fell.

GUMMOW J:   Yes, because that is the way the writ worked, I suppose.  That was the relief you got.

MR CATTERNS:   Yes, and we accept, your Honours, that ‑ ‑ ‑

GUMMOW J:   The patent was struck off the record, as it were.

MR CATTERNS:   Absolutely, your Honour.  Our learned friends are right to say that section 22 of our Act stops that from happening, in effect.  It is not a question of the Crown being deceived in the grant and so on.  But, your Honours, the debate amongst us is, our friends say that means the Court can revoke claim 1 – it has been revoked – and they do not need to amend claim 13 on the hypothesis that it is inventive.  They do not need to amend claim 13 because, in effect, you can read it into claim 1.  I am just reminding your Honours that, in fact, as claim 13 is currently worded, there are 16 versions of claim 13 by the various routes that it goes to claim 1.  But our friends say, in effect, even though those claims are neatly crossed out in the register of patents, the ‑ ‑ ‑

GUMMOW J:   We would really need to know what the Commissioner’s practice was, I think, if we were to get into this question.

MR CATTERNS:   Of course, we would be more than prepared to tell the Court more fully, but your Honour will remember the Leonardis v Sartas Case, the one about the spaces.  In that case, your Honour held that the first claim in that, which was aligning these boxes and one pours concrete between them, it works in Adelaide, in particular, with the reactive soil, that makes the concrete beams, the first claim was not limited to the particular spaces and so that claim was revoked.  The spacer claims were upheld in the Full Court.  Eventually those claims were rewritten to make an arrangement claim, but a narrower one limited to ‑ ‑ ‑

GUMMOW J:   Rewritten by what process?

MR CATTERNS:   By amendment before the Commissioner.

GUMMOW J:   So what, there was an application to the Commissioner, was there?

MR CATTERNS:   Yes, your Honour, and so there is a later Full Court case where the amended claim is considered, but those words were all written into it, literally physically written into it by amendment.  Your Honours, we have accepted in our written submissions - and we agree that any question of amendment should be remitted because it has to be advertised, amongst other things.  We accept that often a consequential amendment of a rewriting type goes without saying or goes without objection, but we have discretionary grounds that we mentioned briefly here including the fact that our friends have until today maintained an intention to rewrite claim 1 and by keeping it on foot and not amending until today, they gave themselves the maximum potential breadth of claim because section 102 stops you from broadening claims.

So if our friends have narrowed claim 1 to get over the storeroom locks, then any amendment to claim 13 would be so narrow already, but 102(2)(a) does not let you broaden your claims.  I will not take the Court’s time on those discretionary matters.  But, your Honours, we submit as a matter of construction of the patent, it will be meaningless unless our friends amend.  Assuming claim 13 survives, it will be dependent on a claim which has been revoked, which is void ab initio, tested it by two other grounds of revocation, your Honours.  Her Honour Justice Crennan discussed the entitlement ground in the Camoflag Case.  You can have a situation where claim 1 is invalid because our friends are not entitled to it, yet claim 13 is dependent on that. 

So if our friends were right, again they could always rewrite it, I say, but it is a strange position that they would be able to rely on their claim 13 as being dependent on a claim that has been revoked for fraud or for lack of entitlement, including a case where section 34 could give claim 1 to somebody else.  That is the effect of section 34 when there is a case of competing entitlements.  Of course it is not this case, but if, say, we came along and said we are entitled to claim 1 but our friends were held to be entitled to claim 13, claim 1 would be revoked and we would get a new patent for claim 1.  Yet our friends say claim 13 will continue to be read with perhaps what was crossed off on the register, but it is claim 1 of somebody else’s patent.  In short, they need a consequential amendment to write these words back in again and which we submit should be remitted to the Federal Court.

As the Court can see, neither side has been able to find any authority directly on the point, but the English cases did in fact have a practice of amending to tidy up consequential cases and the Raleigh Case and the Van der Lely Case are cases where the Court draw the distinction between validating amendment to narrow a claim to make it valid and consequential amendments such as consequent upon the deletion of another claim. 

Your Honours, we respectfully disagree with our friends about their need to rewrite but we respectfully submit that the proper result is they will not need to rewrite because claim 13 ought to be revoked.  Our friend’s orders which we agree with so far as this goes, we have agreed that no matter what the result is here, if the Court thinks appropriate, costs below ought to be remitted to the Full Federal Court, as our friend’s orders show.  Of course, we would imagine the costs ‑ ‑ ‑

GUMMOW J:   Where do you deal with that in your written submissions?

MR CATTERNS:   The question of costs, your Honour?

GUMMOW J:   Yes.

MR CATTERNS:   We have not, your Honour.  May I refer to our friend’s submissions.  At page 3 of our learned friend’s orders at the very back of their submissions there it is order 5 that:

The matter be remitted to a Full Court of the Federal Court to make orders disposing of the costs of the appeals to that Court and the proceeding before Hely J.

GUMMOW J:   You agree with that?

MR CATTERNS:   Yes, your Honour.  Complicated questions of mixed success, and so on, might arise.

GUMMOW J:   Thank you.

MR CATTERNS:   The only other matter is that we respectfully submit that it is possible, depending on the way the Court deals with this matter, that the question of amendment might impact upon the Court’s orders about this case.  I think there is too many permutations to enter into that.

GUMMOW J:   There is going to be some clean surgery when we leave here.

MR CATTERNS:   I do not disagree, with respect, your Honour.  May it please the Court.

GUMMOW J:   Yes, thank you, Mr Catterns.  Yes, Mr Bannon.

MR BANNON:   A few brief matters, your Honours.  Contrary to what has been submitted, I did not concede on the last occasion that a skilled worker could reasonably be expected to have ascertained the storeroom locks.  Transcript 34 relied on by my learned friend demonstrates that I disputed that proposition squarely.  I did not dispute that they are capable of being ascertained.  There is a big difference between accepting something is being capable of being ascertained and the statutory question of it reasonably be expected to have ascertained and the elision between the two propositions, we submit, infects much of the respondent’s approach.

GUMMOW J:   We will not be deciding this case on the construction of line 1510.

MR BANNON:   No, and our submissions in reply on the first occasion, paragraph 14, confirmed that position we adopt.  Secondly, to the extent that my learned friend sought to say that the 7(3) inquiries dictated by the body of the specification, we submit that also involves error.

The mere fact that the body of the specification may describe in the text broader locks is neither surprising nor something which of itself will govern the terms of a claim.

CRENNAN J:   What about the related question that 7(3) is dictated by the dependence of 13 on 1?

MR BANNON:   Each claim is an independent claim in the sense that each independently defines an invention.  To describe something as a dependent claim, if I perhaps paraphrase something the learned presiding Judge said, has the potential to lead one into enormous error.  The notion of incorporating words by reference to an earlier claim is simply a drafting technique, if or otherwise one would have to set out in full every claim.

CRENNAN J:   But in this instance it is claim 1 that has the rim‑mounted and the non‑rim‑mounted and the point is what is the impact of that, the dependence in relation to that so far as relevant art is concerned?

MR BANNON:   Yes, well, if we are right that you assess inventiveness under 7(2) by reference to each claim as defined, and we submit we are, then you have to look at each claim in the terms in which it has been drafted.  Now, the fact that it picks up by incorporation the terms of an earlier claim does not dictate, we submit, either logically nor as a matter of principle the fate of that later claim.  The nature of patent specifications is they start as broader claims and they go narrower claims.  They will use the drafting device of the broader words in an earlier claim to assist in that later definition.  But the effect of my learned friend’s approach to amendment and, indeed, on the 7(3) point is that every time you have what he describes as a dependent claim, if you knock out the first claim, then everything else will fall over, which is just contrary to the whole history of patent law, that you look at each claim independently.

CRENNAN J:   It gets back to the way this case was always run, that the inventive steps are the same in relation to claim 1 and claim 13.

MR BANNON:   The way it was – there is debate as to that.  My friend kept saying it was agreed.

CRENNAN J:   I think it has been said many times it was common ground.

MR BANNON:   I know.  As he tried to say on the last occasion, what was common ground is that if it was obvious to add, in effect, integer (vi) to the 001 lock, then we would lose in obviousness on all claims.  That is true because the narrowest claim is the 001 lock and the broadest claim encompasses the 001 lock and everything in between encompasses the 001 lock.  So, it was always a convenient way of assessing inventiveness by asking, “If you take as your finishing point the 001 lock which comprises those integers and the starting point the prior art base, did that movement from the prior art base to that lock with the lock release means involve an inventive step?”  If the answer to that question was “no”, then claim 1 and everything else would be defeated.

HAYNE J:   Do I understand the argument to at least involve the following propositions, perhaps to be confined to the following propositions:  1, the question to ask is, does this claim involve an inventive step?

MR BANNON:   Yes.

HAYNE J:   Proposition 2, this claim relates only to rim-mounted locks?

MR BANNON:   Yes.

HAYNE J:   That is a proposition which Mr Catterns challenges.  Leave aside ‑ ‑ ‑

MR BANNON:   I can come back to 2.

HAYNE J:   I understand that.

MR BANNON:   There is room to move on 2, but I ‑ ‑ ‑

HAYNE J:   Can I just understand the way in which it runs? Proposition 3 either is or at least includes the lock release of a storeroom lock was not work that the skilled person would reasonably be expected to have ascertained, understood and regarded as relevant to work on rim‑mounted locks.

MR BANNON:   Correct.

HAYNE J:   You make those propositions.  Are the propositions wider than that?

MR BANNON:   So far as is claim 13 limited to rim‑mounted locks, yes, for the reasons we have indicated, but to the extent my friend says it is conceivable that it might cover something else, whatever that something else is, it does not include storeroom locks and has not been identified in any part of the evidence.  The only exception to that is, my learned friend took your Honours to page 458 of the appeal book, 458 and 459, and to demonstrate my learned friend’s proposition that they could include other locks other than rim‑mounted locks my friend said – this is paragraph 71.2 – that the Doric DS30 and the Doric DS60 were not rim‑mounted locks, that is correct. 

I am not sure if he said it, but he could have, and it was open to him, to say in 1B.13 the Whitco sliding door was not a rim‑mounted lock, and that is also correct.  But that does not advance his case because, as his Honour found, none of the claims cover sliding door locks because of the latch bolt requirement and the latch bolt is that the latch automatically springs in and out of the keyhole.  With window locks you have to actually positively flick the hook over or back again to lock or unlock. 

His Honour’s finding on that is at paragraph 143 of the judgment at page 1108 and that is because of the interpretation of “latch bolt”.  So that, I suppose, taking this evidentiary point at its best, all that he has done is confirm the proposition that the only evidence before the Court of something which had the claim 13 detent means and the other features was a rim‑mounted lock.  I suppose I cannot exclude the possibility that there may be something else out there which is not a rim‑mounted lock but it is not a storeroom lock and no one has identified it.  It is his task to persuade the Court by way of evidence, we submit, that a skilled worker addressing the invention in claim 13 could reasonably be expected to look at anything, starting on the assumption that he does not know about the rim‑mounted locks.

GUMMOW J:   That brings me to this.  In those four propositions Justice Hayne put to you, does there not have to be a fifth:  who is this skilled worker and what is the relevant art being spoken of in terms of 7(2)?  In that connection do you not have the double-edged sword problem arising from the fair basis advantage you got from, putting it rather widely, does not that carry with it always the possible problem of obviousness?

MR BANNON:   Dealing with the two propositions ‑ ‑ ‑

GUMMOW J:   How does that pan out here?

MR BANNON:   So far as the expression “relevant art” is concerned, it is not determinative.  My friend’s approach was to say as soon as you determine relevant art, then that is the end of the matter.  We put, I trust, a slightly more sophisticated submission which is in writing and I have attempted to identify it, but you start with the proposition that the exercise one is engaged in is looking at information which is going to be added to the task being confronted under 7(2) and when one looks at 7(2) one deals with common general knowledge and one adds to it information which the skilled addressee, who is the relevant person for 7(2), would have and/or would be likely to do as a matter of routine in going from the prior art to the particular invention, in this case the claim 13 invention.

So that is the task which the Court is assessing.  So, as I say, do you treat 7(3) as saying, well, you assume a truckload of everything which is in the relevant art to be added on a one by one basis to the mind of the skilled addressee.  You interpret “reasonably expected to have ascertained, understood and regarded as relevant” for the work in the area, that is the skilled addressee, the one one is talking about in subsection (2), which is addressing the particular question of invention as claimed.  So there is about four different words there which govern this process.  There is the fact that there is the skilled addressee referred in 7(2), the word “reasonably”, the word “expected”, the words “understood, ascertained and regarded as relevant”.

If one regards all of those expressions and the place it sits in the legislation as all governed by relevant art, one comes back to the no filter proposition because one could readily say anything about locks.  Patents everywhere around the world falls into the category.  One can do that.  But that would seem to obliterate MMM.  If one starts, as I attempted to say, perhaps stepping back from the legislation, what is it designed to replicate, it is designed to replicate the sort of process which one expects does happen but people faced with a particular problem will go looking for - arm themselves with information which is readily ascertainable and likely to be regarded as relevant and it is in their heads and they add that to the common stock of knowledge.

That is, with respect, a sensible legislative outcome.  It is not a very sensible legislative outcome to say, “Okay, it’s locks.  Do they exist?  Okay, I can find that.”  That is true of every lock.  How is it to be expected that such a skilled addressee gets every one of those locks into their head?  They could spend the rest of their lives trying to do that.  One possible approach is you truckload everything from 7(3) into 7(2) ‑ ‑ ‑

HAYNE J:   The reference to getting it into their head is a flourish which detracts and distracts, is it not?

MR BANNON:   I source it in this Court’s judgment in Firebelt because they say additions to common general knowledge and in the legislative history.  It makes sense.

HAYNE J:   We are concerned with ascertainment, understanding and regarding as relevant.  Among other things, we are concerned with ascertainment.

MR BANNON:   But with a purpose of ascertainment and understanding.  Whatever is decided today has to be applied to all cases and to just again take my patent example, if it means that any patent can come in because it is dealing with locks or some other area, you have to ask once that information is there, how do you use that in 7(2)?  Do you assume it is in the head of the individual, even though it was completely impossible as a practical matter for that person to have searched every patent.

GUMMOW J:   In the head?  Do you mean ascertained and understood?

MR BANNON:   Yes, and then to form part of knowledge which may be regarded as common general knowledge, ie, as recently as Alphapharm again confirmed, part of the ordinary equipment of the skilled worker.  It is something one does not effectively have to think too much about.

That is why I use that expression.  One of the great difficulties in trying to speculate how this process would be applied, it is not as simple as my learned friend keeps saying, with great respect to him, to say claim 13 could cover non‑rim‑mounted locks, here is a storeroom lock, (a) it is already in and, secondly, that is a simple thing to go from there.  Part of the thing he says is, “Look, here are these three witnesses, they knew about them and they did not have these problems and they agreed in evidence that they solved the problem”.

GUMMOW J:   Yes, I was going to ask you about that.

MR BANNON:   But the starting point is ‑ ‑ ‑

GUMMOW J:   You seek to turn that to your account?

MR BANNON:   Yes, we say the starting point is - we turned it to our account on 7(3) so that even if you got it into 7(2) here are people who, it must be assumed, had the information and still did not come up with the invention.  That is why we say in our written submissions, we say orally, even if you can get it into 7(2), it is not a simple matter.  They still do not get there.  Tidy Tea confirms that, as confirmed by Firebelt.  It becomes very tempting to say, “Well, look, here is a witness who was aware of it, so therefore I assumed that somebody would have ascertained it.” 

It is just getting it back to front.  You start with a position as - they do not know it, they are sitting in a room, why are they going to leave?  Are they going to run around and look at every lock on every building and start fiddling around with it?  They probably do not have the key to it is one problem.  The mind boggles as to the sort of questions which have to be asked and which have to be addressed by evidence and were not.

I did not finish – I will come back to your Honour’s question about the fair basing, but another point, my friend prays in aid 849 of Garland where he says, generally speaking, there are mortice locks, rim‑mount locks, et cetera, but the very fact he goes that far and does not say, “And, hence, when faced with this problem I would have looked at the storeroom lock” means that that evidence is actually highly detrimental to them.  Here is the man who would purport to say he would look at things but fails to say “storeroom locks are the very thing I would be looking for” and in fact what he does say is “I’d be looking at the DS60”.  Again, it comes back to an absence of evidence.

Perhaps before lastly answering the fair‑basing question, there is a certain tension, with respect, in my friend’s attempts to say the inventive step question is determined by reference to the addition of integer (vi) to 001, which is a rim‑mounted lock and that determines the whole question but then say, claim 13 is open to consideration of a wide range of other locks.  There is just that tension which we submit does not sit happily.

Then answering, if I may – attempting to answer your Honour’s question about the fair basing.  As your Honours said in that decision, and picking up what Justice Williams has said in Rose v Carlton, one asks whether claims are fairly based and answers that question.  Having decided a claim is fairly based – I am sorry.  You could have a fairly based claim which was hopelessly invalid for want of novelty and you could have a fairly based claim which is hopelessly invalid for lack of inventive step.  So the mere fact that it is fairly based and each of the claims is fairly based does not tell you anything or dictate what is the likely outcome on inventive step.

Hence, it was conceded if claim 1 was fairly based in that hearing, then every other claim was fairly based and that is the proper concession, and then there is support for each of the individual integers in 13 and the following which are added later in the patent, so they are fairly based and the question simply comes back to the statutory question, compare the invention as claimed 7(2) of the prior art.  To the extent that the body of the specification asserts my inventive step is X, and we submit it does not ‑ ‑ ‑

GUMMOW J:   Does it not usually aver what the field is?  So it usually starts off to explain the problem.  It usually identifies a particular field in which there is a problem.

MR BANNON:   All the evidence that everyone accepted, that the field being addressed was the 001 problem, which is the rim‑mounted lock.  But again, in terms of the general art, one can concede that it relates to locks, but because of the number of terms which have to be satisfied under 7(3), skilled addressee 7(2), looking at the claim, plus “reasonably be expected to ascertain, understood”, et cetera, “relevant to work” in the area, to work in the area, I forgot to add work in the area, they are all terms of rational confinement for the reasons I have submitted.  So we say there is no inconsistency.  That is all I wanted to say on those issues.

GUMMOW J:   Just looking at paragraph 5 of your submissions, the idea is that costs of the Full Court and of the trial judge would go back to the Full Court for reconsideration.

MR BANNON:   Yes.

GUMMOW J:   If that were to be so, any question of amendment and how that should be dealt with would go back to the Full Court as well, would it not?

MR BANNON:   At least in the first instance and they could administratively ‑ ‑ ‑

GUMMOW J:   And they can work out what then they should do as to ‑ ‑ ‑

CRENNAN J:   A single judge or something.

MR BANNON:   Send it off to a single judge or whatever.

GUMMOW J:   Yes.

MR BANNON:   Just on that amendment point, obviously – we have not brought up the 1952 Act but the 1952 Act, as we have said, said nothing about rewriting or deleting claims.

GUMMOW J:   What was the relevant section?

MR BANNON:   I think it was 109, your Honour.  I am sorry, 103(b) – paragraph 12 of our submissions.

GUMMOW J:   Yes:

revoke the patent in so far as it relates to that claim, and shall order the patentee to lodge at the Patent Office a disclaimer of the invalid claim.

MR BANNON:   Yes.  That obviously contemplated they would have two pieces of paper sitting at the Patent Office:  the original specification with all the claims and a second separate document which would say, “We disclaim claim 1.”  That, we submit, is completely consistent with the absence of any words in the then Act or the current Act which say you have to go around rewriting and delete.

GUMMOW J:   The fraud situation seems to be dealt with under section 107.

MR BANNON:   Yes.  My learned friend’s approach would result in this oddity.  It seems to be accepted that if we win on the inventiveness of 13, claim 13 is a good claim.  There is no ground of contention, or it has never

been suggested, that 13 is bad even if it is inventive because claim 1 is bad, and that has always been revoked and has not been the subject of any appeal, and hence is ambiguous, for example.

GUMMOW J:   The problem is that this is a system of public registers and it is not much help to a hapless third or fourth party at some stage who looks at the register and sees that claim 1 has been struck out.  Then they would have to go away and read some case.

MR BANNON:   The order has to be filed on the register that the claim is revoked, and we have identified the provisions.

GUMMOW J:   I know.  Then they would have to understand some reasoning in some case that you nevertheless had to read 13 with 1.

MR BANNON:   Your Honour, I entirely agree that it is a much better system to have somebody ruling things out.  But the point we make is, (a), is it necessary, and we say no; (b) we say that as a matter of power it is not – in other words, claim 13 stands as a good claim and should not be revoked if it is inventive, notwithstanding – in other words, there is no independent ground to say that claim 13 is bad and should be revoked because it is dependent on claim 1 which is bad.  That has never been suggested.

GUMMOW J:   It is pointless pursuing this much further.  The hapless reader is going to turn up and read claim 13 and then look at claim 1 and find it has been struck out and think what on earth is going on.  Then he will see there is some court order.

MR BANNON:   I think what we say is whether it is satisfactory or not, the legislature does not contemplate anything else.  It would be a good idea for administrative tidying up and it may be that this judgment, on the assumption certain things go a certain way, could indicate that it would be a sensible legislative change, but at the moment we say the legislation actually does not accommodate it.  That is a simple point anyway.

GUMMOW J:   Is there anything else?

MR BANNON:   Yes, I am sorry, it has been suggested, rightly, that there is an additional proposition from your Honour Justice Hayne that even if one gets it into 7(2), and I think I have implicitly said this - if one gets it from 7(3) into 7(2) you still have to ask the question, is it obvious, and for the reasons we have already indicated, the evidence is actually to the contrary.  Thank you, your Honours.

GUMMOW J:   We thank counsel for their assistance and we will adjourn until Tuesday next, 27 February 2007 at 10.15.

AT 12.26 PM THE MATTER WAS ADJOURNED