Lockwood Security Products Pty Ltd v Doric Products Pty Ltd

[2006] HCATrans 514

[2006] HCATrans 514

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 THURSDAY, 7 SEPTEMBER 2006, AT 10.02 AM

(Continued from 6/9/06)

Copyright in the High Court of Australia

GUMMOW J:   Yes, Mr Catterns.

MR CATTERNS:   May it please the Court.  Your Honours, just before the Court rose yesterday his Honour the Presiding Judge asked us whether we relied on the storeroom locks at trial in relation to the question of obviousness.

GUMMOW J:   Have you a storeroom lock in Court?

MR CATTERNS:   Yes, one of your Honour’s associates handed us a Boyd lock and a 530 but the lock I have in front of me is what was called the Falcon.  The reason I am choosing this one is its nicely mounted but there are in evidence some disassembled ‑ ‑ ‑

GUMMOW J:   What was the exhibit number of that one that you hold in your hand?  It is on the other side.

MR CATTERNS:   It is 32A.1B.7D.  I think it was a box of various locks exhibited by ‑ ‑ ‑

HEYDON J:   To whose affidavit?

MR CATTERNS:   By Mr Garland.

GUMMOW J:   Yes, they are Mr Garland’s, that is right.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   Can I just ask you this, looking at the Full Court’s judgment beginning at paragraph 160 under the heading “CGK + 1” and can you go to paragraph 165 and they say forget about DS360 and the Abloy rim lock.  Do you see that?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   Is what you have been showing us one of the locks covered by the first sentence there?

MR CATTERNS:   Yes, your Honour, they are the storeroom locks.

GUMMOW J:   Right, okay.

HAYNE J:   When you say “they are”, what do you mean “they are the storeroom locks”, Mr Catterns?

MR CATTERNS:   Yes, your Honour, there is a group of locks which his Honour referred to in his Honour’s reasons in several places – and I will give your Honours a reference, if I may, in a second – which included two or three Lockwood locks:  a 510 storeroom lock, a 5110 storeroom lock, a 5210, also a storeroom lock, and a Falcon lock which, as it happened, was also distributed by Lockwood.

GUMMOW J:   But not made by them?

MR CATTERNS:   But not made by them – which was called the S371.  I was going to take your Honours presently, if that is convenient, to some brochures which describe them.  Relevantly, they work the same.  The other two locks that the court referred to ‑ ‑ ‑

GUMMOW J:   The 530?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   That is the disassembled one?

MR CATTERNS:   Yes.

GUMMOW J:   DWG‑25?

MR CATTERNS:   Thank you, your Honour.  The difference with the 530 was that on the inside it did not have a key.

GUMMOW J:   No, it just had a button.

MR CATTERNS:   It just had a button.

GUMMOW J:   Which I think we are all familiar with.

MR CATTERNS:   Yes, locks like that I think your Honour knows used to be on the doors of Selborne and Wentworth Chambers – forgive my evidence from the Bar table.  That did not infringe, I think, claim 6 which required the inside lock to have a key.

GUMMOW J:   Yes, that is right.

MR CATTERNS:   Did not anticipate but, nevertheless, they anticipated claim 1 because they possessed all the relevant integers.  His Honour made an unchallenged finding about that. 

GUMMOW J:   Can I ask you this as well.  We are really talking about, are we, obviousness of claim 13?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   A lot of the judgments, and I can understand why, talk about obviousness of claim 1.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   That has fallen out for other reasons.

MR CATTERNS:   Yes, your Honour, and our friend put it very accurately and fairly yesterday.  The same question is involved with claim 1, or perhaps it is narrower for claim 13, namely, whether it is obvious to add to the 001, which is common general knowledge, integer (vi).  That embraces the obviousness of claim 1 and that is why claim 1 was a handy unit of discourse.  We agree that claim 13 has that additional integer not present in these locks, but, of course, all of the additional integers of claims 13, 14, 15, 20, 21 and, I think, 30, that our friends rely on are all present in the 001.  The one thing that nobody has fallen into error, either on the part of counsel or the courts, is misunderstanding that these are combination claims, of course.  They all work in combination, but the inventive step was to add in combination integer (vi).

GUMMOW J:   Yes, we understand that.  Looking at that Falcon, does that do or not do all that is done by an article made to answer claim 13?

MR CATTERNS:    Your Honour, may I just ‑ ‑ ‑

GUMMOW J:   Why is it not anticipation?

MR CATTERNS:    Because, your Honour, its locking means, not its lock release means, although of course the locking means and the lock release means are utterly interrelated, as one would expect with a combination, because the lock release means has to be designed to interact with the locking means so as to undo it, but as it happens, as I mentioned in answer to a question from her Honour Justice Crennan yesterday afternoon, this lock ‑ ‑ ‑

GUMMOW J:   That is the Falcon?

MR CATTERNS:    That is the Falcon, and this also applies to the storeroom locks, although their locking means involve cams, the detent does not move radially as the claim 13 says and claims dependent on it and as the 001 does.  It just so happens that the detent gets pushed axially, so it gets pushed along that way instead of up that way.  In the 001 and claim 13 the detent means moves radially over the axis, so that the cam spins around like that and it moves out radially, but in these ones they do not move that way.  In fact, it does not matter which way they do move, but they move in the opposite direction, namely, axially.

GUMMOW J:   So that is not an anticipation.

MR CATTERNS:    Of claim 13, that is right, your Honour.

GUMMOW J:   But in play at paragraph 165 of the Full Court’s reasons on the question of 7(3).

MR CATTERNS:   Yes, 7(3), your Honour, but ‑ ‑ ‑

GUMMOW J:   Is it not enough or is it enough for you to support the Full Court’s reasoning at paragraph 160 and following?

MR CATTERNS:   Yes, your Honour, it is, although that is our second case.  Our primary case, I suppose at least logically in time, relates to uphold a finding in paragraph 137.  There is a phrase his Honour Justice Heydon used yesterday afternoon, if your Honours just do not mind if ‑ ‑ ‑

GUMMOW J:   That is back in corollary territory, is it not, 137?

MR CATTERNS:   Yes, your Honour, but, of course, corollary ‑ ‑ ‑

GUMMOW J:   I mean, you could belabour us with that from here until 12 o’clock if you like.  It is up to you.

MR CATTERNS:   No, your Honour.  The way we would like to put it though is given his Honour Justice Hely’s finding that the problem of people being locked in was common general knowledge and that – I am sorry, and may I put it the other way round – that it was common general knowledge that the outside key did not undo the inside lock and that as a result people got locked in. 

Now, whether we call that a problem or not, as his Honour Justice Heydon says, to perceive the problem does not mean it necessarily follows that you perceive the solution.  We quite agree, but our submission is that as a matter of judgment the question is:  was it obvious to perceive that to make the key do it, to come up with the idea of making the key do it?  That, we submit, is a question of judgment.  Of course, it is the ultimate question for the Court. 

May I remind your Honours, of course, that in the recent, we call it the Astra Case, but the Hässle v Alphapharm Case, the Court, after finding the errors that the Full Court fell into, and in a different way his Honour Justice Lehane, about what you could take into account in the prior art base and also the question of obvious to try, the court itself held as a matter of judgment that it was inventive.  Your Honours remember – I do not need to take your Honours to it – in the early part of the Court’s reasons the majority sets out all the effort that the people at Astra went to in coming up with this invention and say in light of that it is surprising that one would hold that it is not inventive after X years of work, and then there are the two errors held by the Court, as I say, contravening the Minnesota Mining Case by bringing in items that were not part of common general knowledge, that is, generally understood and assimilated and accepted.

His Honour Justice Callinan, I think, particularly had regard to the evidence of Dr Marshall who is a person who when set the task post‑invention, for the purposes of the litigation, did not come up with it on, I think, six attempts.  Of course that is a relevant fact and we would accept it is a relevant fact but in the end the Court makes a judgment.

GUMMOW J:   Yes, in that respect Justice Crennan refers to Edison Bell Phonograph Corporation Ltd v Smith and Young (1894) 11 RPC 389 at 398 where it was said by Lord Esher:

It really comes to this, that, although the invention is new – that is, nobody has thought of it before – and although it is useful, yet, when you consider it, you come to the conclusion that it is so easy, so palpable, that everybody who thought for a moment would come to the same conclusion; or, in more homely language . . . it is so easy that any fool could do it.

Are we in that area?

MR CATTERNS:   I submit so, your Honour.  I do not mean to be rude about our friend’s invention but ‑ ‑ ‑

HAYNE J:   You just have been.

MR CATTERNS:   ‑ ‑ ‑ it is not beyond the skill of the calling is the Graham v John Deere phraseology which is picked up numerous times in courts in Australia.  As soon as you realise that people are being locked in, as held by his Honour, as a result of the key not undoing the lock, it is not beyond the wit of a lock designer to say let it do it.

GUMMOW J:   But you do not really have a finding to that effect in the Full Court and you do not really have a finding the other way at the trial level, do you?  What may have been a not all that complicated case became very complicated.

MR CATTERNS:   Your Honour, I respectfully submit I do have the finding in the Full Court in 137.

GUMMOW J:   Yes.

MR CATTERNS:   Let me go as far as I go.  Your Honours, there is no doubt, and our friends proclaim, that the problem that is admitted to become a general knowledge is people being locked in, but then this is the admission in the specification the Full Court relies on.  In 136 there is a reference to reliance on admissions as to common general knowledge.  Then in 137 the court says:

Doric does not claim that the specification expressly admits that claim 1 (and thus claim 13 . . . is obvious.  Rather it says that the specification admits that it was common general knowledge that, in the typical lock, the outside key did not release the inside lock.

Now, as I have submitted, your Honours, his Honour Justice Hely found that was admitted, unchallenged, in paragraph 202 and you would see it as a piece of common general knowledge in 198.  So both as a matter of admission and as a matter of evidence, unchallenged, his Honour held that.

HAYNE J:   Again, you are embroidering what seems to be a very simple proposition.  Be it right or be it wrong, the base proposition seems to be the proposition that unlocking from the front does not unlock the back and all that the patent claims is unlocking from the front unlocks the back.

MR CATTERNS:   Absolutely, your Honour.

HAYNE J:   That is not a question of admission, leave aside corollaries, et cetera, but either that proposition is good or bad, but it is there, is it not, and embroidering it simply ‑ ‑ ‑

MR CATTERNS:   Leads to trouble, if I may complete your Honour’s sentence.

HAYNE J:   I was going to complete it much less charitably, Mr Catterns.  You were wise to ‑ ‑ ‑

MR CATTERNS:   I will try not to interrupt again.  But, your Honour, we respectfully agree precisely with a qualification which does not affect it which is, we had to establish the first sentence, your Honours, as common general knowledge, that the key does not undo the – from the outside does not ‑ ‑ ‑

HAYNE J:   You inject the key?  Now, again, unlocking from the front does not unlock the back?

MR CATTERNS:   Yes.

HAYNE J:   The only means of unlocking from the front with this lock, or this kind of lock, is a key, but again you are adding to it.

MR CATTERNS:   I apologise, your Honour.

HAYNE J:   It is not a case of apology.  I want to get down to what is the bottom line of the proposition and then test it.  As I say, it may be right, it may be wrong, but I want to understand what the bottom line is.

MR CATTERNS:   Well, your Honour, my only qualification on what has fallen from your Honour – and always being careful, as one is, accepting gifts from the Bench and I know your Honour is only articulating the proposition – is that it is our case that it is common general knowledge that unlocking from the front does not unlock the back and his Honour Justice Hely held so unchallenged in both 198, as a matter of looking at it, and as a matter from the specification in 202.

So having established that as common general knowledge, which section 7(2) of the Act requires us to do, the way we put our case is the way your Honour put it to us.  If I may just go on to the next two sentences of 137 in making good the proposition that the Court accepted our submission:

Doric goes on to contend that given that admission –

and may I add, and the findings of Justice Hely –

there was no inventive step merely to conceive of remedying that defect by any means using an outside actuator.  That submission should be accepted.

GUMMOW J:   That is right, but then you get to the secondary factors and what do you say about, for example, Mr Justice Whitford in the Intalite Case [1987] RPC 537 we have been referred to, at 547 about line 35:

“When skilled and inventive individuals looking for improvements in the field, fail to arrive at the claimed construction it is impossible to suggest that it would have been obvious to the hypothetical skilled man, not necessarily inventive.”

MR CATTERNS:   Your Honour, I say we do not disagree that what I have called yesterday a secondary consideration such as ‑ ‑ ‑

GUMMOW J:   Of which this is one, I would have thought.

MR CATTERNS:   Of which this is an example – are relevant.  Of course they are not determinative, as the cases say in many places, but, your Honour, we say that, as with all of these secondary considerations, let us check the facts.  We say as a matter of – and this is where his Honour Justice Hely erred in paragraph 211.  Those words ‑ ‑ ‑

GUMMOW J:   Just a minute – 211 of the primary judge?

MR CATTERNS:   Yes, your Honour.  That is what his Honour is doing there.  After citing this Intalite Case in 209, he then refers to the evidence – may I come back to the first sentence?

GUMMOW J:   The fact “It was not obvious to Mr Freestone or Mr Wilson”?

MR CATTERNS:   Yes, your Honour.  Then he goes on and says the:

resolution of the problem was placed in the “too hard” basket by Mr Freestone . . . perceived need to find a solution to the problem, but it had not occurred to Mr Alchin or Mr Garland –

and then he relied on a different but related secondary indicator, namely, copying.  In our submission, I answered his Honour Justice Hayne’s question a little too quickly yesterday about 211.  Although we have a submission based on the words “in a manner”, I accept that “in a manner” could mean just using the outside actuator to release the inside lock.  So the words “in a manner” do not show on their face that his Honour has descended to the detail of the solution.

Our submission is that when one goes to the evidence, which I propose to do, of each of those four witnesses, properly understood, either they are referring to the internal mechanics, as I submitted yesterday or, for example, in the case of the copying, it is an indicator of nil or virtually nil weight which cannot overcome the case – the way put to me arguendo by his Honour Justice Hayne this morning.  For example, in the John Deere Case which I would also take the Court to, they are the powerful secondary indicators of exactly the Intalite type held not to outweigh the simple mechanical expedient which I add, in square brackets, any fool could have done.

It is a pure question of judgment whether one outweighs the other, and I do submit that this is a case where the Full Court, or indeed this Court, is in just as good a position because most of it turns on written evidence; a little bit turns on transcript evidence.  So, your Honours, we were going to go to each of those four witnesses, as the Full Court did, and submit that the reliance his Honour placed on them was either completely misconceived, as in the case of Mr Wilson, or his Honour placed too much weight on them because it is evidence of virtually nil weight.

HAYNE J:   In doing that, will you bear in mind, as I understand it you want to do so for several reasons, one of which is to challenge the statement “It was not obvious to Mr Freestone or Mr Wilson”.

MR CATTERNS:   Yes, your Honour.

HAYNE J:   And I understand the challenge to be that what was not obvious, you say, was the particular mechanical method of achieving the result.  Is that right?

MR CATTERNS:   Precisely, your Honour.

HAYNE J:   In your journey through the evidence, point me to where you have challenged Mr Freestone and Mr Wilson in a way that reveals that their statements about obviousness were so to be understood.  You will do that as you run, not instantly. 

MR CATTERNS:   Your Honour, I am unable to do it in the case of Mr Freestone because I did not challenge him.  We took his evidence on its face and, we submit, as I will come to it, we were right as a matter of reading his evidence.  In the case of Mr Wilson, again, it is largely a question of the evidence on its face.  In relation to that, his Honour held earlier that there was an ambiguity in it.  May I take your Honours to that just to illustrate what I am trying to get at, your Honours.

HAYNE J:   The bottom line for me at the moment on this aspect of the case, Mr Catterns, is essentially are you running a different case here from that which you ran at trial?  That is the underlying worry, no doubt you will take account of it as you go.

MR CATTERNS:   Your Honour, certainly not, we submit.  We opened on the specification and put the case, I believe, exactly the way, with embellishments that I, no doubt, wish I had not.  But, put it in brief the way your Honour put it to me this morning, it was ‑ ‑ ‑

HEYDON J:   But your secondary case was put differently, was it not?

MR CATTERNS:   I beg your pardon, your Honour?

HEYDON J:   What you have called your secondary case, CGK + 1, was put differently at trial.  The Full Court said that on appeal Doric did not rely on the Abloy and DS60 was not at the forefront of its case but at trial you did rely on the Abloy and Justice Hely said that the lock on which you placed the greatest reliance was DS60. 

MR CATTERNS:   Yes, your Honour.  We would respectfully disagree with his Honour about that because we thought the storeroom locks were better.  The significance of the DS60 was that it was our own lock and, as his Honour held, it possessed integer (vi).  It was, however, a lock for a sliding glass patio-type door and there is no doubt that it had a key.  The outside key undid the lock but it did not anticipate because it lacked integer (ii) in that the hook bolt of a sliding patio door was held not to be a latch.  Your Honour, frankly, the Abloy just turned out to be such a complicated lock and it was held, his Honour held it did not anticipate so it was it was not at the forefront of our submissions on 7(3).

HEYDON J:   He dealt with it.  This business of -this is not your fault, but forefront and background and so on, he did deal with it so you must have put something on it.

MR CATTERNS:   Yes, your Honour.

HEYDON J:   Now, according to the Full Court, you did not.

MR CATTERNS:   By the time we got to the Full Court we had abandoned the DS60 and the Abloy as section 7(3) and we ‑ ‑ ‑

HEYDON J:   So the Full Court was not right to say that the DS60 was not at the forefront of your case, it was not part of your case at all then.

MR CATTERNS:   I will check it, your Honour.  It may be that we made a submission to the Full Court that even though it did not possess all of the integers, nevertheless, that was another lock which possessed integer (vi) but we certainly do not press that now.  We are content to deal with it the way the Full Court - subject to the matters we will address in submissions.

HEYDON J:   I am interrupting your journey through the evidence but there is just one other thing I do not quite understand.  Paragraph 159 in the Full Court said that certain parts of the notice of contention relating to:

the storeroom locks, Falcon S371, the Boyd mortice lock and Lockwood 530), should be upheld.

That was a conclusion that they were part of common general knowledge?

MR CATTERNS:   It was, your Honour, and ‑ ‑ ‑

HEYDON J:   But you, I think, in the special leave application said that the Full Court was wrong because ‑ ‑ ‑

MR CATTERNS:   Your Honour, there is definitely ‑ ‑ ‑

HEYDON J:    ‑ ‑ ‑ you had asked for leave to amend the notice of intention to rely on those and leave had never been granted.  Is that right?

MR CATTERNS:   Absolutely, your Honour.

HEYDON J:   Right.

MR CATTERNS:   We conceded, I think, even in writing on the special leave application and orally, that that last sentence is plainly a mistake.  We try, your Honours, to rescue it by putting a knot in one place or another but, we really submit, it does not belong there and it is wrong.

HEYDON J:   So that the conclusion in the previous two sentences is to be supported by reference to what appears before paragraph 159?

MR CATTERNS:   Precisely, your Honour.  Secondly, so in short, your Honour, that sentence, which is plainly wrong, does not infect, we submit, the preceding paragraphs which are 138 to 159 and those two sentences, nor does it infect what follows.  Our friends submit that it infects what follows because how could we lose on 7(3) as to ascertained et cetera if they are common general knowledge, but that is plainly wrong because the Full Court does analyse whether in fact they would have been ascertained, understood, and regarded as relevant, could be reasonably expected to.  So, your Honours, it is a sentence which stands out on its own and we accept it is plainly wrong.

Finally, your Honours, just on that if I may just complete that, even though it is out of order, our learned friends rather seized on something that fell from the Bench yesterday about 181.  I am still dealing with the question of the erroneous sentence, your Honours, which says:

Had that hypothetical skilled worker considered the common general knowledge referred to at [159] together with the kind of information mentioned in the second limb of s 7(3)(a) -

Well, that is an appropriate ‑ ‑ ‑

GUMMOW J:   That is the first two sentences of 159?

MR CATTERNS:   Of course, your Honour, not the erroneous sentence.  The first two sentences refer to common general knowledge and they are referring to section – that is the conclusion on section 7(2) and 181 is the conclusion on section 7(3).  Your Honours, we did run the DS60 as part of our section 7(3) case before his Honour Justice Hely.  My learned friend gave me a note and I have forgotten exactly what it says, but we had evidentiary reasons why we liked the DS60 and it is fair to say that in our written evidence most reliance was placed on the DS60.  In fact, we physically only got storeroom locks three or four days before the trial.  That is what that supplementary appeal book shows.

HEYDON J:   I share Justice Hayne’s concern.  It seems to me that in a case of this complexity where there were immensely lengthy particulars of obviousness, the judge was entitled to try and work out what was in dispute before him and decide that case and you do not prove error in that process by proving that he failed to decide some other case that might be open on the locks lying around the associate’s table ‑ ‑ ‑

MR CATTERNS:   Fair enough, your Honour.  Indeed, that was what I was proposing to make good this morning in answer to what fell from the Bench yesterday, namely how we relied on the storeroom locks.  May I just quickly show your Honours how this Falcon works?  It does not work identically to the 001 but it nevertheless possesses all of the integers of claims 1 to 6, 12, and so on, though not 13.  The reason is you have to positively choose to lock yourself in to give yourself outside security, as our friend said.  However, as his Honour Justice Hely held, that is not part of the ‑ ‑ ‑

GUMMOW J:   Just explain that Mr Catterns.

MR CATTERNS:   I beg your pardon, your Honour?

GUMMOW J:   You have to choose to do what?

MR CATTERNS:   Yes, your Honour, when you come home with the new 001, our friend’s product, which is in accordance with claim 1, and you use the outside key to open the lock and you undo the deadlock and you slam the door shut, fine, you are not locked in because of the lock release means.  But an intruder coming down your pathway cannot get into your house because they do not have a key.  They do not have a key, whereas the Falcon locks or the chambers locks have in addition to a key on the outside, a handle, so if you want to lock yourself in, you positively have to do so.

However, his Honour Justice Hely said maybe that is an advantage of our friend’s lock or a different mode of operation, but nevertheless it has nothing to do with the claims, any of the claims.  So that is difference, and our friends rely on that difference and a further difference which is, as your Honours can see with this Falcon, in addition to the key there is a handle and our friends – it was called the multiple actuator point on the questions of novelty – our friends said that a lock that had two actuators that withdrew the latch, namely, the handle or the key, as I am doing, your Honours see, did not come within the claims and his Honour rejected that.

So the answer to your Honour Justice Gummow’s question a while ago was, it does operate differently, but not relevantly, because relevantly it is now in a locked condition and both sides are locked, and if you come home, turn the key, turn the latch to get in, now the inside is unlocked and, as the brochures say, key inside or outside unlocks both knobs – catalogues.

HEYDON J:   Where do we see those ‑ ‑ ‑

MR CATTERNS:   I beg your pardon, your Honour?

HEYDON J:   What page are those brochures on?

MR CATTERNS:   Your Honour, in volume 2, 768 – I have been trained to call these catalogues, your Honour, rather than brochures.  On 768 in the right‑hand column in the middle, so opposite about line 25, there is a 371, et cetera:

Latch bolt by knob from either side . . . Key in either cylinder unlocks both knobs.

Now, your Honours, on the novelty case, an argument on novelty that our friends had a bit of a run at yesterday about what one sees in these catalogues, our learned friends’ witnesses, Mr Wilson and Mr Freestone, said on looking at these catalogues, “I don’t see the integer whereby the outside actuator undoes the latch”, and that has to be the same thing that undoes the lock release means through integer (vi).  So that was integer (v), as his Honour held.  The minute you see one – and they were cross‑examined about this with physical locks when they became available – they agreed that that additional integer was present, as I have just demonstrated.

The Lockwood ones, your Honours, are at page 778.  Your Honours, noticing that one sees in these catalogues a range of different types of locks, and I will come to some more evidence about that on section 7(3), but at line 22 there is the 510 Storeroom Deadlatch:

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

So that is integer (vi).  The 5110 that I mentioned, your Honours, is on the next page, 779, at line 20.  It says again:

Key outside locks or unlocks both knobs.

To complete the numbers, I think I gave your Honour also the 5210.  That is at 780.  Your Honours see at line 23:

Key outside locks or unlocks both knobs.

So that is integer (vi).  We accept that it did not say “and also retracts the latch”, which was integer (v), and that is what those witnesses relied on in their affidavits but readily conceded when they were in the witness box that all integers of claim 1 and those other claims were present. 

So we relied on these locks in three ways.  First, your Honours – and I want to answer the question his Honour Justice Heydon put to me – his Honour deals expressly with each of them.  We relied upon them as being common general knowledge and his Honour rejected that and we do not now challenge that.  Secondly, we relied on them as evidence relevant to the question whether the step from the findings that his Honour ultimately made in 198 and 202 was inventive.  We submitted this problem had already been solved in these locks.  That is what we said.  His Honour rejects that, puts it aside, we submit erroneously, and of course, having rejected them, his Honour does not mention this argument in 211.  Thirdly, we relied on them in section 7(3), as your Honours know. 

I have shown the Falcon, your Honours.  Could I take your Honours to his Honour Justice Hely’s reasons under the heading of “Common general knowledge”.  With respect, there is a disconformity between his Honour’s reasons on novelty in relation to these locks and his Honour’s reasons on obviousness.  So at 186 his Honour refers to the Lockwood 001.  In partial answer to your Honour Justice Heydon, your Honour sees in 187:

The other locks upon which Doric relied in its submissions on the issue of obviousness were the storeroom locks (including the Falcon 371), the sliding door locks –

that is the DS60, our own sliding door lock –

and the Boyd mortice locks.

The experts agree that feature (vi) of claim 1 is to be found in the storeroom locks, but the means or mechanism used to produce that feature were not explained by any witness.  The experts also agree that feature (vi) –

that is the lock release means, of course –

is also to be found in the Boyd mortice lock and in the sliding door locks.

Mr Garland did not include the storeroom locks in his itemisation in par 68 of his first affidavit of the prior art base . . . In an affidavit sworn 24 July 2001, Mr Garland gave some evidence which tended to suggest that he had some knowledge ‑ ‑ ‑

HEYDON J:   Six days before a trial.

MR CATTERNS:   Yes, your Honour.  We got the physical locks three days before trial.  Your Honour, this trial came from start to finish in six months.  Our friends did not admit the sales of these locks until a few days before trial.

Mr Garland gave some evidence which tended to suggest that he had some knowledge of the storeroom locks, or some of them, in 1996, but this was not further pursued in cross‑examination or submission.

May I come back to that, your Honour.  He was cross‑examined about them.  Then there is the reference to the Boyd mortice locks and DS60.  Then Mr Wilson at 191 said he was not aware of the Boyd or the sliding door:

He said that the Lockwood 5110 was very rarely used.  He had seen “Mortice locks a bit like the Boyd lock where, on the outside the handle doesn’t move at all”.

GUMMOW J:   Say that again?  Yes, I see.

MR CATTERNS:   I am sorry, the last sentence.  Mr Wilson said:

He had seen “Mortice locks a bit like the Boyd lock –

that is this lock here, your Honours, exhibit 32A.1B.1.

GUMMOW J:   That is right.

MR CATTERNS:   That also was held to anticipate that the key on the outside works the same way.  It had an additional handle but the key also withdrew the latch and his Honour rejected our friend’s argument that having an additional actuator which also needs a latch ‑ ‑ ‑

GUMMOW J:   So which claim should that knock out?

MR CATTERNS:   There is one claim…..which I will just quickly find that it does not knock out.

GUMMOW J:   But it is not said to knock out for anticipation claim 13, is it?

MR CATTERNS:   No, your Honour.

GUMMOW J:   But we still have the outside key turning the inside lock?

MR CATTERNS:   Yes, your Honour.

CRENNAN J:   And the handle as well as an actuator?

MR CATTERNS:   Yes, the handle is an actuator.  Mr Wilson said he does not like using the key to withdraw the latch, he might break the key.  Mind you, of course, the 001 you use the key to withdraw the lock.  He said that that is designed to do that.  He said this is designed to use the handle.  It anticipates claims 1 to 5 but not claim 6.  In 192 his Honour says:

Mr Freestone was not aware of the Boyd mortice locks or the sliding door locks –

There was no doubt at all – he worked for Lockwood – that we was aware of the others.  I will take your Honours to the evidence but if your Honours care to note it, it is at 362 to 367.  So there is no doubt that he was aware of these locks.  Then his Honour refers to Mr Freestone’s evidence that:

some locks become well‑known . . . not the case that all do . . . In general terms, it may be necessary to acquire a particular lock and take it apart in order to understand its internal mechanism.

Now, your Honours, that is not objectionable in itself, with respect, but one has to be careful when one is dealing here with a claim which is purely an idea claim, purely a conception claim, and prohibitively expensive.  His Honour comes back to that evidence in relation to section 7(3).  Then these are the two findings in relation to two of the three ways we relied on the storeroom locks:

Mr Garland did not give evidence that the storeroom locks formed part of the common general knowledge . . . I am not satisfied that the storeroom locks, the sliding door locks or the Boyd mortice locks, and in particular the fact that feature (vi) of claim 1 was to be found in those locks, formed part of the common general knowledge at the relevant times.

The way his Honour has put it is completely correct.  We submitted to his Honour that whether or not any one of the individual locks was common general knowledge, if one person knew the Falcon and the other person knew the Lockwood storeroom locks, 510, the feature was common general knowledge.  Nevertheless, his Honour rejected that.  So the locks themselves or the existence of the feature were held not to be common general knowledge.  We have lost that and we do not challenge that.

Then his Honour goes on, however, to deal with our other reliance, which was the submission I read a couple of words to your Honours from, which we put under the heading of the inventive step as distinct from common general knowledge, namely, these locks actually solve the problem.  Your Honours, this is where his Honour puts them aside and, we respectfully say, erroneously, on his own findings.  He says:

Mr Garland does not say in terms that the storeroom locks provided the solution to the problem described in the Patent, or a step towards that solution.

His Honour there is referring to Mr Garland’s affidavit and is correct. 

Rather, Mr Garland points to the DS60 as disclosing the solution to the problem.  There are two problems with this.

Then his Honour says, putting aside, finally, in relation to our basic case on obviousness under section 7(2):

Accordingly, the fact that the storeroom locks, the sliding door locks and the Boyd mortice locks had been sold in Australia before the priority date does not establish want of an inventive step.

Your Honours, the way we had put it was others had solved the problem in the same way, whether or not it was common general knowledge, and that is what we say today ‑ ‑ ‑

GUMMOW J:   Yes, but what do you get out of that?  This is some evidentiary argument, is it not, this second way of putting it?  The first way of putting it is they are into the body of common general knowledge.  You lost that.  You had an alternative argument which operated how?

MR CATTERNS:   Exactly as the opposite of Justice Whitford in Intalite.  In Intalite others had tried and failed.  Here people tried and succeeded.

GUMMOW J:   So there is some evidentiary inference, is there?

MR CATTERNS:   It is merely a secondary matter which is weighed in the balance or partly answers a submission that our friends make:  others tried and failed.  For example, our friends say Mr Garland never came up with it, Mr Alchin had to copy us.  Well, we say, hang on a minute, there are locks out there which show that people tried and succeeded.  Of course, with a storeroom you are dealing with the same problem, namely, you do not want to be locked in.

GUMMOW J:   I see.  Anyhow, you lost that at paragraph 195.

MR CATTERNS:   Yes, your Honour, but his Honour, with respect, erred because his Honour omitted or overlooked his Honour’s earlier findings with respect to these locks.

GUMMOW J:   Namely?

MR CATTERNS:   That they do solve the problem.

GUMMOW J:   Where did he say that?

MR CATTERNS:   Your Honour, it begins at 112, and we are in the heading of “Novelty”.  Your Honour, 112 refers to the storeroom locks and, as I repeat they are on anticipation; those three Lockwoods and the Falcon.  Then there is the evidence that I mentioned earlier where, on the basis of the catalogues or the brochures, Mr Wilson and Mr Freestone said it does not have feature (v) which was the outside actuator turning the latch.  They did not say that outside key unlocks both locks did not mean that feature (vi) was not present. 

When the physical locks became available for inspection at or shortly prior to the hearing, both Mr Wilson and Mr Freestone accepted that feature (v) was to be found in them.  Mr Garland also expressed that view.  There was thus a consensus between the experts that the storeroom locks possessed each and every integer of claims 1 to 6 and claim 12 of the Patent.

GUMMOW J:   You go to paragraph 118?

MR CATTERNS:   Yes, your Honour.  May I just go to 117, if your Honour does not mind, because in 117, there is the quotation from the patent where the object which we have all seen is:

“to provide a key controlled latch which can be released from a locked condition by use of a key . . . 

The storeroom locks achieve that objective -

Then your Honour remembers his Honour had put aside Mr Garland’s, I said, affidavit evidence:

As Mr Garland said in cross-examination the storeroom locks do not give rise to the problem which the Patent is attempting to address, rather they solve the problem.  The reason the storeroom locks solve the problem is because they include feature (vi) -

lock release means.  Your Honours, then, just while I am in these paragraphs, after his Honour rejects our friend’s argument about “Multiple actuators” in 122 and rejects our arguments in relation to the Abloy at 130 to 133, his Honour looks at the DS60.  Your Honours, this was the immediate predecessor of our infringing lock, which we accept infringes claim 13, in that it had a single central cam which the outside key physically turned, or the tail of the lock.  That directly turning the cam is a different approach, as his Honour held, from our friend’s approach which, because it was built on the existing 001, used the existing cam mechanism of the 001, which had a spring in the trigger, and the lock release means depressed the trigger and allowed the spring to do the unlocking. 

With respect to our lock, and, your Honour, this is important in relation to his Honour’s finding on copying because the DS60 is the lock our designer Mr Alchin had, which he designed, as his predecessor in a different market – one sliding door, one is front door, one is swinging doors.  This was his predecessor on which he based his design.  His Honour says:

The DS60 has a hook bolt which is biased to the unlatched position.  There is no automatic latching of the door upon closing the door, hence the problem which the Patent identifies does not arise in the case of the DS60, although, as with the storeroom locks, the DS60 discloses the solution to the problem inasmuch as operation of the outside actuator releases the inside lock.

Stopping there, your Honours, that is an important context, we submit, of the finding of copying because, given that Mr Alchin already had the attribute in his locks, we submit that the finding that he copied the idea or had the inspiration from Lockwood to include it in a lock does not go anywhere because it follows from his design process that it is going to possess that attribute.  Then we lost on latch‑bolt in relation to the DS60.  Your Honours, the Boyd mortice lock at 148, his Honour says, after looking at this “kick-off” function which I will come back to:

There is no material distinction between Boyd mortice locks without the “kick-off” function and the storeroom locks insofar as anticipation of claims 1-5 is concerned.

We accepted that it did not anticipate claim 6.  Finally, your Honours, the Lockwood ‑ ‑ ‑

GUMMOW J:   Did his Honour say that Boyd mortice solved the problem?  I know he is dealing with the context of anticipation, but in the course of doing that, does he say about that what he said about the storeroom?

MR CATTERNS:   No, his Honour does not use those words.  I accept that what I have submitted follows from the fact that they possess integer (vi).

GUMMOW J:   All right.

MR CATTERNS:   Just for completeness, your Honour, his Honour at 150 held that the 530 also anticipated claims 1 and 2, notwithstanding the fact that it had the little button on the inside.  I am sorry, your Honour, in further answer to what his Honour the Presiding Judge put to me, at line 4 of paragraph 150:

Thus the problem of being locked inside does not arise in the case of this lock.

Sorry, that is the Lockwood 530.  Feature (iv) is present.  So, your Honours, we respectfully submit that, of course they are not determinative, the storeroom locks ‑ ‑ ‑

GUMMOW J:   That is right, but can we just look at Justice Whitford again at page 547 of [1987] FPC, that third sentence there:

“When skilled and inventive individuals –

How do you turn that around the other way?  You say skilled and inventive individuals have arrived at ‑ ‑ ‑

MR CATTERNS:   The claimed construction.

GUMMOW J:   Yes.  You want to put it positively?

MR CATTERNS:   Yes, your Honour, and I also ‑ ‑ ‑

GUMMOW J:   How do you put it positively?

MR CATTERNS:   Well, your Honour, the fact that skilled – sorry, I do not want to say inventive – non‑inventive – the person skilled in the relevant art ‑ ‑ ‑

GUMMOW J:   Yes.

MR CATTERNS:    ‑ ‑ ‑ had in fact been able to deal with the locked‑in problem or the feature that the outside actuator does not undo the inside lock, in fact, solved the problem, as his Honour said in 117 to 118 - that is a factor showing that the ‑ ‑ ‑

GUMMOW J:   Yes, but is it sufficient?  You have to show it is sufficient, you see.

MR CATTERNS:   I beg your pardon, your Honour?

GUMMOW J:   You have to show that you should have won on obviousness.

MR CATTERNS:   This is not sufficient in itself, your Honour.

GUMMOW J:   I know.

MR CATTERNS:   But the shortness of the step – first of all, his Honour, we submit wrongly put these locks aside there.

GUMMOW J:   That is right.  You say his Honour should have reached this conclusion you are now putting to us, for example, about the significance of the storeroom locks.  What should his Honour then have done but failed to do?

MR CATTERNS:   His Honour should have weighed that in the balance in 211 and his Honour should have – for example, when his Honour said others have tried and failed, and I will come to the submissions about others trying and failing - his Honour does not use those words – it was not obvious to them.  In particular, in the exercise that Mr Garland was involved in, our friends did not get to that part of the transcript.  It is quite obvious why Mr Garland did not come up with this solution.  He was designing a completely different thing.

GUMMOW J:   Just forget about that for a minute.  So you are really saying that 211, in focusing on what was or was not in the evidence of Mr Wilson and Mr Freestone, omitted from that consideration what you say follows from the character of the storeroom locks?

MR CATTERNS:   Precisely, your Honour.  In 211, if I could just leave aside the first sentence because of the ambiguity in the word “understood” ‑ ‑ ‑

GUMMOW J:   You say you would get enough from the evidence of these witnesses properly understood to achieve a result in your favour when added to what you say is the Justice Whitford point turned in your favour?

MR CATTERNS:   Yes, your Honour, and I also submit that this is ultimately a question of judgment.

GUMMOW J:   Yes, but we are on appeal, you see.

MR CATTERNS:   Yes, your Honour, but the Full Court made the exercise of judgment in paragraph 137 and I submit it was entitled to do so and that is an exercise of judgment analogous to the 1890s case – I am sorry, I forgot its name – that your Honour ‑ ‑ ‑

GUMMOW J:   Edison.

MR CATTERNS:   Yes, your Honour, and it is analogous to the exercise of judgment that the Supreme Court of the United States makes in Graham v John Deere, or the High Court here makes in the old Acme Bedstead Company.

HEYDON J:   Is this the point you were making in paragraph 64(a) of your written submissions?

MR CATTERNS:   Yes, your Honour, precisely.  Our footnotes do not give all of those references, but that is the point we wish to make, your Honour.  It is a secondary consideration of the type that is relevant, but not determinative.  Your Honours, each of the matters referred to in his Honour’s paragraph 211 are secondary considerations.  The primary consideration is the question his Honour Justice Hayne put to me.  Is it obvious?  Is it an inventive step to move from that starting point to this invention?  That is a question of judgment on which, as the, I repeat myself, US Supreme Court says and this Court has on numerous occasions, they can help, but they do not determine it, just as what the inventor does can help, but is not determinative because on the one hand he or she may ‑ ‑ ‑

GUMMOW J:   Do you have a citation somewhere of Acme Bedstead?

MR CATTERNS:   Yes, your Honours, I think it is in our list.

GUMMOW J:   On this point.

MR CATTERNS:   Your Honour, I am happy to take the Court to it quickly if that is convenient, your Honour. It is at (1937) 58 CLR 689.

GUMMOW J:   Which page though.  We know that.

MR CATTERNS:   Sorry, your Honour, I am just fumbling for my copy.  In particular, your Honour, his Honour Justice Dixon – I am sorry, perhaps I should go a little bit further.  May I just make one caveat, of course.  This is an old case and as ‑ ‑ ‑

GUMMOW J:   Obviousness and novelty were not clearly distinguished in those days.

MR CATTERNS:   Exactly, your Honour, and we see the phrase “Subject matter” used.

GUMMOW J:   We do.

MR CATTERNS:   All of those matters have to – and also, your Honour, the prior art ‑ ‑ ‑

GUMMOW J:   As you do in Edison really.

MR CATTERNS:   Absolutely, your Honour, and, of course, also the prior art base question had not been settled à la 3M.

GUMMOW J:   Yes.

MR CATTERNS:   So their Honours are looking at matters which would not be common general knowledge necessarily.  But nevertheless, his Honour the Chief Justice at 700 ‑ ‑ ‑

GUMMOW J:   There is the problem or the object.

MR CATTERNS:   Yes, your Honour.  There are new features:

The ratchet and pawl device had not previously been actually incorporated in a bed ‑

it was to lift up the end of the bed so you can move the patients around –

nor had a rectangular or other non-rotatable telescopic member been used . . . shown by the evidence to be a device which would readily suggest itself to the mind of a competent workman –

Then on the next page ‑ ‑ ‑

GUMMOW J:   Page 701:

If a competent workman, seeing either ‑ ‑ ‑

MR CATTERNS:   Yes, your Honour:

could, upon a defect being pointed out, devise, without the exercise of any inventive ingenuity –

this would not be supported.  Then quoting the Bloxham Case:

“The first so-called invention is, in my judgment, merely a correction of an obvious defect –

Then there is the Adelmann Case:

simply the application of a well known and well understood piece of mechanism to achieve an obvious advantage –

and, your Honours, our case is stronger because you only have to perceive the advantage.  Any mechanism will do, even the ratchet.  Of course, the ratchet and pawl went without saying and in Winner it was proved that the ratchet had been known since Roman times.  Your Honours, his Honour Justice Starke – I think I do not need to go there – at 703 goes down to the commonness of the ratchet and pawl.  His Honour Justice Dixon discusses the question of the prior art base in a way that is not relevant to us but, at 706, in the first full paragraph, his Honour says:

If the contrivance embodied in the bed end possesses the necessary quality of invention, at least it does not carry it upon its face.  No evidence is needed to show that very familiar and very old expedients are employed.  They are not applied to any new purpose, except in so far as raising and lowering a bed by mechanical means may be considered a new purpose . . . They constitute one element, a commonplace mechanical contrivance for the performance of the very purpose to which it is applied.

That is lifting something up.

To form the opinion that a mechanical means of lifting the foot of a hospital bed is desirable, to choose as the means a single telescoping post with a ratchet and pawl, to place it midway between the two end bed posts and to furnish it with two castor feet close together may amount to invention, but unless these things do, it is not obvious what other considerations there can be which will support the patent.

Then his Honour holds they do not.  There is a discussion of the question of public knowledge, as opposed to common general knowledge, as we would now say, at 707 and then at 708 it says at the very bottom:

To my mind the truth of the present case is that once mechanical means of raising and lowering a hospital bed were asked for, the task of supplying them became one of selecting the most convenient and satisfactory out of a host of mechanical expedients all lying ready to hand.  The actual inventor has narrated how matrons of hospitals had asked him –

Then his Honour also refers to the Ham Boiler Case:

the application of a well-known and well-understood piece of mechanism to achieve an obvious advantage –

and, your Honours, we submit the conception of the advantage here is the inventive steps, so it is even a shorter journey ‑ ‑ ‑

GUMMOW J:   You wanted to take us through the evidence.

MR CATTERNS:   Yes, your Honour.  Perhaps if I go directly, if I may, to the evidence that his Honour refers to in paragraph 211.  He refers to the four witnesses.  The starting point is Mr Garland because he gave the opinion to which the other witnesses responded.  His evidence, which our friends took your Honours to but I wish to stress one aspect of it, is at page 554.  The proposition that I would seek to derive is that the crucial evidence to which his Honour Justice Hely referred, leaving aside Mr Alchin, is this evidence, plus evidence in answer to Mr Garland where Mr Garland was plainly talking about the obviousness of the particular solutions, in other words, the internal workings.

CRENNAN J:   Not the concept.

MR CATTERNS:   Not the concept.  Your Honours, the cross‑examination of him by our learned friend that our friends took your Honours to yesterday which I will go to briefly all proceeded from this paragraph and when our learned friend asks the witness, indeed once with a slightly raised voice, “It wasn’t obvious to you, was it?”, what is “it”?  What does the witness take to be the solution?  My submission is he took to be the solution what he called the solutions here.  I will try and make that good.  He says:

put broadly, the Lockwood Patent describes locking mechanisms said to overcome certain “serious problems” . . . concern[ing] persons being, in effect, “locked inside” premises as a result of . . . being unable, from the inside of the door, easily (without the use of a key) to release the deadlocking mechanism.  The solution to those “serious problems” is described on pages 1‑2 of the specification of the Lockwood Patent being “lock release means which is responsive to operation of the second actuator . . . [thereby enabling the latch to be operated from the inside of the door without the use of a key]” –

The he said – and the word “brief” is important then because he is not a fulltime lock design à la Mr Freestone.  He is a designer, generally, in many areas including, I think, very numerous fields of industrial design.  He said:

If I had been given a “brief” to design a lock assembly to address such “serious problems” as at 14 February 1996, I believe that one or more solutions would have been readily apparent to me without the use of any inventive faculty, by the application of then well known and available locking techniques and locking parts and fittings.  One such solution would have been, with the use of the (also then well known) locking mechanism of the Doric “DS 60” Lock, to employ a common central cam mechanism –

that means your key on the outside turns the cam just as your key on the inside does, that is why the DS60 possessed integer (vi).

Another quite independent solution to such “serious problems” would have been by the use of a pretensioned or spring loaded cam member held in position, until activation, by a “retaining member” (as is described in the Lockwood Patent).  The two solutions, however, are in my opinion quite independent of each other and evidence quite different design approaches.

We tried and failed to get Mr Wilson to agree with this.  I cross‑examined Mr Wilson and did not succeed in getting him to agree that all of these tricks were just ordinary parts of a locksmith’s repertoire.  That does not matter any more because we are not arguing about those claims, but it is clear that the evidence to which these other witnesses respond is evidence about two detailed solutions and he tells you what those solutions are.

Just for references, your Honours, this is referred to in our submissions at 52 to 53.  Mr Freestone is in volume 2 at page 692, and to save coming back here, may I just draw attention to his qualifications, et cetera, at page 692?  In paragraph 4, he is a design draftsman, he is involved in various sets of locks, and your Honours can see there a wide range of locks – this is of some value to us on 7(3).  Then at 8, on page 694, he says:

The Lockwood 001 with Safety Release Deadlatch was invented by Mr David Blanch during the period from 1992 to 1996.  During this time Mr Blanch ‑ ‑ ‑

It turns out that the period was much shorter, even to the detailed preferred embodiment claims.

I supervised Mr Blanch’s work on this project.  However, in this instance I did not conceive the idea for the product, nor make any contribution to the design of the product.

The inventor was not called.  But significantly, on he goes, saying:

I kept up to date with relevant lock products –

et cetera.  That becomes relevant on 7(3).  Then, your Honours, at page 717 we have the paragraphs that include the evidence his Honour is referring to.  Now, crucially we would add to what our friends referred to yesterday, paragraphs 171 and 172, where he says:

I have been asked to comment on the statement made in paragraph 4 of Mr Garland’s affidavit of 19 April 2001 –

which is what I took the Court to –

when he states that in his view, the solution to the problem set out in the Patent was one which involved no use of any inventive faculty –

So he is answering Garland’s opinion about two particular solutions or that the invention is obvious in light of the two solutions which come to Mr Garland.  He disagrees for the reasons he sets out below.  So he is answering Garland.  Then, as our friends pointed out, the problems – let us assume that means just locked in and he does not mean the other aspect of the problem.  We see about fatalities in paragraph 173.  Then Mr Blanch’s brief is set out in paragraph 174, and it was a highly constrained brief to develop the existing lock.  It is crucial that that is what he was doing because we submit that the evidence we are about to come to where he says it was in the too hard basket is, is it is in the too hard basket in relation to this lock.

Mechanically, with a complicated existing lock, with existing tooling, with 60‑something per cent of the market held by it, 32 per cent of it held by Whitco, its ugly sister, as Mr Freestone called it, they were fixing that lock.  In paragraph 174 he says the job was “to improve the 001 Deadlatch in various ways”.  One is the hold‑back; another is the way you attach it to the surface; (c) is the number of parts; automatic production.  Then he exhibits the document that relates to that.  Then he says in paragraph 177, after assigning it to Mr Blanch:

Shortly after the commencement of the 001 Project, a further clipping referring to the problems associated with double cylinder lock products such as deadlatches being used in domestic homes was circulated around the design group of Lockwood.  The clipping referred to the problem of people being trapped inside –

Then there is the crucial paragraph:

Sometime after Mr Blanch commenced working on the Project –

that is the 001 –

in about May/June –

your Honours, that is probably just before the meeting of 2 June, maybe between 2 June and 9 June, where Mr Freestone was present –

I had a conversation with him in words to the following effect:

He said “What if I could do auto-unlocking in the 001 Project”?

We respectfully submit that those words there contain the inventive step.  Of course, if you have auto unlocking in the 001 you have added integer (vi) to 001, and that is claim 1 and claim 13.  Your Honours, our learned friends yesterday, with respect, had a go at saying auto unlocking means something completely different which is the knock‑off feature.  If it did mean that, then what on earth was this evidence about and how could his Honour possibly rely on it because his Honour would be talking about something completely different. 

It is completely clear anyway from the minute that is exhibited by Mr Freestone that auto unlocking means letting the key undo the lock in the 001 Project.  Then, Mr Freestone says – of course Blanch was available, Mr Freestone had seen him two days earlier from when he was cross‑examined – Mr Freestone says:

“If you can do that –

that is, auto unlocking in the 001 Project –

good luck to you.  I don’t think you can do it.”

So, your Honour, I respectfully submit there – and we have now got findings of this Full Court and, to the extent we can rely on them, findings of at least her Honour Justice Branson, and possibly Justice Wilcox, to the same effect that what this means is auto unlocking in the 001 Project and “If you can do that” means if you can achieve auto unlocking in the 001, which is, in other words, the mechanical details of doing it in the 001.  We respectfully submit that properly read this is very powerful evidence of obviousness because in a single sentence Mr Blanch encapsulates it – of these claims:  “auto‑unlocking in the 001 Project” contains in those words claim 13.  He said:

I said these discouraging words –

So paragraph 179 is explaining what he said, namely:

“If you can do that, good luck to you.  I don’t think you can do it.”

That is, auto unlocking in the 001 Project.

I considered that the problem posed by the deadlatch would be too difficult to resolve.

Then the passage his Honour relies on:

I had put the question of solving this problem in the “too hard” basket, and I believe that other lock designers at Lockwood had done the same.

Your Honours, we respectfully submit – and we did not cross-examine him out of it or to reinforce it, I accept – that that clearly means he had conceived of auto unlocking in the 001, not the project, but had put it in the too hard basket and he believed other lock designers had done the same.

For reasons which I have previously indicated, the Full Court judgment was tainted with numerous errors and cannot stand, we would submit, at least on its reasoning, and we submit this is not an occasion in which this Court would be satisfied it should interfere fundamentally with a trial judge’s finding by revisiting the evidence in a way which does not involve any demonstration of error on the part of the learned trial judge.  For those reasons, we submit that the appeal should be allowed.

GUMMOW J:   Yes, thank you, Mr Bannon.  Are both sides going to get together with one of the versions of orders?

MR BANNON:   Yes.

GUMMOW J:   Can that be done within seven days?

MR BANNON:   Yes.

MR CATTERNS:   Would your Honours give me leave to answer one matter in which we submit our friend’s submissions ‑ ‑ ‑

GUMMOW J:   Subject to a further response from Mr Bannon.

MR CATTERNS:   Of course, your Honour.  I do apologise, your Honours.  It is just the question of the identification of the inventive step.  Your Honours, of course we are at issue about the storeroom locks,

the secondary indicia, and I will not go on to that.  Our submission is that the primary question is whether it is obvious to delete the “not”. 

Your Honour, as to the identification of the inventive step in questions from her Honour Justice Crennan and his Honour Justice Heydon, we may have misheard our friends, but we understood very clearly yesterday at transcript 18 and transcript 33 and 34 that our learned friends agreed, your Honours – we have an Internet copy.  I hope the pages are ‑ ‑ ‑

GUMMOW J:   What lines of the transcript?

MR CATTERNS:   Your Honour, on the Internet copy we do not have lines, I am sorry, but if I could just read the words.  Our friends said yesterday at the bottom about page 18:

Hence, the question in terms of obviousness is whether or not taking what was acknowledged to be part of the common general knowledge, namely the old 001, and producing a combination which included the features of the old 001 with a lock release means of any form was obvious.  That is the way it was conducted at trial and that is the way the debate proceeded before the Full Court.

More directly, your Honours, our friends took the Court to the passages that record our submissions at 226 ALR 91 in paragraph [111] and our friend just took the Court to (l) but the passage bridging 33 and 34, our friends read out (g):

The obviousness issue is whether it was obvious to add to the known 001 lock integer (vi) in combination.

Our friends said “We agree” and our friends also agreed with (e) which was the two integers of 13 say “from novelty” but are both part of the common general knowledge – that is the detents we have been talking about.  The inventive step for claim 13 is exactly the same as for claim 1, that is add integer (vi) to the 001.  Your Honours, we respectfully submit that that is the issue.

Finally, your Honour, on the same point, the locking‑in submission which I mentioned when I was dealing with the Falcon this morning, accepting that it makes a difference as to how it operates but his Honour rejected our friend’s submission in relation to that in relation to these claims, that difference is not relevant to these claims, as his Honour held at 116 to 119.  May it please the Court.

MR BANNON:   Perhaps I should just say that the addition of (vi) to 001 is right.  That is what you get with claim 13 so the comparison is a claim 13

lock, which is the old features of 001 plus integer (vi), compared to the prior art.  I do not understand anything I have submitted this afternoon to be inconsistent with that proposition.

GUMMOW J:   We will reserve our decision in this matter.  We thank counsel for their assistance.  The Court will adjourn to Tuesday, 26 September at 10.15 am.

AT 2.59 PM THE MATTER WAS ADJOURNED