Lockwood Security Products Pty Ltd v Doric Products Pty Ltd
[2006] HCATrans 497
[2006] HCATrans 497
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 WEDNESDAY, 6 SEPTEMBER 2006, AT 11.58 AM
Copyright in the High Court of Australia
MR A.J.L. BANNON, SC: If it please the Court, I appear with my learned friend, 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 are starting a little late, but counsel should not be constricted in their submissions. We can run over to tomorrow if need be.
MR BANNON: May it please the Court. Your Honours, the key question in this appeal is the role of implied corollary admissions in determining whether a claimed invention is obvious. Specifically, is it open to a court to imply from a patent specification an admission that an invention is obvious or that the claimed invention already forms part of the common general knowledge. If it is permissible, can such an admission be sufficient to establish obviousness and, moreover, can it trump specific evidence of common general knowledge which is to the contrary.
The appeal also raises a question as to the proper approach to section 7(3) of the Patents Act and, in particular, whether evidence is required to establish the elements of section 7(3) or whether it is sufficient in effect, as the Full Court appears to have found, that if something is available or can be found then ‑ ‑ ‑
GUMMOW J: That is section 7(3).
MR BANNON: Subsection (3), yes. The statutory context is the combined effect of section 18 and section 7 of the Patents Act, if I could briefly refer to those. The reprint which is the relevant reprint is Reprint No 2 I think which has been identified to the Court. Section 18(1)(b)(ii) is the relevant section. It requires a consideration of the patent or invention by reference to a claim. We are not dealing with (a) a manner of manufacture and (b) whether it involves an inventive step “when compared with the prior art base”. There is a definition of “prior art base” in schedule 1, but the matter is sufficiently dealt with for the present purposes by considering section 7(2) firstly, which 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 before the priority date of the relevant claim, whether that knowledge is considered separately or together with either the kinds of information mentioned in subsection (3), each of which must be considered separately.
There is no definition of “common general knowledge” in the Act, so one relies on the principle that has been upheld in this Court a number of times to the effect that common general knowledge refers to the knowledge or information which constitutes the ordinary equipment of the ordinary non‑inventive skilled worker in the field. Section 7(3) permits an expansion of the prior art base.
GUMMOW J: Has not 7(3) been amended?
MR BANNON: It has. Reprint 2 does not include the amendment but the ‑ ‑ ‑
GUMMOW J: What we have is the right form?
MR BANNON: That is right. Subsection (3)(b) refers to:
such that a person skilled in the relevant art in the patent area would treat them as a single source of that information –
The words “in the patent area” have come out. There has also been amendments to include references to innovation patents which are not of concern here.
GUMMOW J: So the words “in the patent area” have gone out?
MR BANNON: Yes. Then the concluding words of subsection (3):
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.
There is a further difference that one can also now combine two or more pieces of prior art. I think the current form is annexed to our submissions.
GUMMOW J: Yes, at the back of your submissions.
MR BANNON: Yes, appendix page A4. The particular lock which is the subject of evidence and which is the cause for the invention is a Lockwood 001. If I could have leave to refer to a particular exhibit just by way of demonstration, if I could ask my instructing solicitor to bring it forward, this is an example, which is a lock which is known as the Lockwood 001. It consists of a number of features, one of which is a keyhole or lock on the outside of the door. The inside is what is called a rim‑mounted lock. It also has a handle. This version of it has a lock on the handle which prevents it rotating, and I will come to that in a moment. It also has a retractable latch‑bolt which refers to the bevelled piece which is my fingers pushing in and out. The effect of that retractable latch‑bolt is that on contact with the doorframe it is pushed back in to enable passing the doorframe and when it reaches the cavity in the doorframe it pops back out again to lock the door.
The first versions of this type of lock and, indeed, the versions up to the priority date, included as an integer the outside lock which was operated by a key. This key‑operated device is referred to in the patent and in the evidence as an actuator; it simply causes something to happen. By putting the key in the lock and rotating it, the effect of that was to cause the latch‑bolt to be withdrawn and one could then enter the premises from outside. It is important to appreciate that as at the priority date the only function of that key was to withdraw the latch‑bolt by rotation.
Similarly, on the inside there was a turning handle which, if one was inside the premises and wanted to get out, if one could just assume for a moment that lock is not there, one would turn that handle and the effect of that would be to rotate a device inside and again to withdraw the latch‑bolt and then one could open the door and leave. The operations of each of the outside actuator and the inside handle on the latch‑bolt were independent of each other. In other words, if one turned the key on the outside to withdraw the latch‑bolt, that did not cause the inside handle to turn.
CRENNAN J: For how long was that available before the priority date?
MR BANNON: In the form which this depicts with a lock on the inside handle, from at least the early eighties. The priority date was about 1996. Equally, when one turned the handle on the inside to withdraw the latch‑bolt, that did not cause the actuator on the outside to rotate. In other words, one could turn this handle and one would not see the lock‑bolt rotating. So they each operated independently to withdraw the latch‑bolt to get in or out.
In its original form this lock, which is commonly used as a front door security lock, did not have a device which locked the inside handle. The consequence of that was that although there was security provided from the outside, if a burglar or an intruder entered the premises from a smaller aperture – a bathroom window, for example – there would be nothing to prevent such a person from leaving the premises by simply turning that handle and getting out. So if they got in by a small aperture, they could leave with a television or whatever. Equally, if the front door happened to be next to a glass pane, one could punch a fist through the glass pane, reach round, turn the handle and open the door and enter the premises.
Hence, to overcome that security problem a lock was added at least by the 1980s to that internal handle. The effect of that lock was to enable the rotation of that handle to be prevented once the lock was activated. So if one was in the premises and getting ready to leave, one would open the door while the handle was in the unlocked condition, one would then lock the handle, pull the key out, walk out the front door and pull the door behind you.
The lock simply prevented rotation of the handle. It did not cause the bevelled latch‑bolt to cease to be retractable. As a consequence, simply locking the handle with the key, one could pull the door behind you when one left, it would again jam up against the edge of the door jam, and then go into the cavity, and one could leave. In that situation one had the security from the inside in case there was an unwanted intruder. When one came home one would again put the key in the outside actuator, turn the key – that would have the effect of withdrawing the latch‑bolt – and one would enter. Once inside, however, unless one undertook the deliberate step of putting the key into the locked handle on the inside, that locked handle remained locked.
GUMMOW J: I am sorry, can you say that again, Mr Bannon?
MR BANNON: That once inside after opening the front door – this is before the priority date – the door could still shut behind you. Unless one took the deliberate step of putting the key in the inside handle lock, that inside handle lock remained locked. As my friend says, put in the key and turn it to unlock it and that is right. So that one would be in the situation where one was inside the house with an internal handle which was locked.
Before I go into the consequence of that, can I just emphasise that before the addition of this lock handle, as I indicated, the only function of this outside actuator was to withdraw the latch‑bolt and it did not have any effect on the turning of that inside handle. After the addition of the locking device on the handle, the outside actuator continued to do the only function that it had ever been designed to perform, namely, to withdraw the latch‑bolt. So it was still doing what it was designed to do and this handle was still doing what it was designed to do, only now it was locked.
The problem which is referred to in the patent and which was recognised in the art was that although this system resulted in an internal security when one went out, there was a problem of being locked inside unless one had taken the deliberate step of unlocking the inside handle when one came home.
GUMMOW J: Or left the key in it.
MR BANNON: Or left the key in it. I think three situations are posited in the evidence. One is one opens the front door and one has got a load of books or whatever, one does not take the key out of the front door, one goes inside, the door slams shut and one is stuck inside with the key outside and one cannot get out. That is one situation. Another is you go inside, you do not put the key in it to unlock it or you lose the key or, if you do not lose it, it is misplaced, an emergency arises where somebody needs to rush outside quickly, in the case of a fire, a child is observed near a road, or whatever, and one has to run around and look for the key.
The invention involved identification of a combination which included the features of this old 001 but included an additional integer which is referred to in all the material as integer (vi), which is a lock release means, which consisted of giving the outside actuator, that is the outside key, two functions. It continued to have the function of withdrawing the latch‑bolt but it was given the additional function which it had never previously had, which was to cause when the key was turned on the outside the inside lock handle to be automatically released. So in other words, by putting the key in the outside handle and opening the door on arrival back at the house in circumstances where the inside handle had previously been locked on departure, by turning the key the latch‑bolt was withdrawn, one could enter but turning the key also caused that inside lock to be released and hence when one got inside without more, that inside handle was free to rotate and hence one did not have the lock‑in problems which I have described.
GUMMOW J: Is that the use you want to make of that exhibit?
MR BANNON: Yes. That was exhibit E for the purpose of the transcript.
GUMMOW J: And there is no doubt that that was made to conform to claim 1, is there?
MR BANNON: There is no doubt, yes.
GUMMOW J: Can you just take us to claim 1. We had better be clear about this. Is there any dispute about this?
MR BANNON: My friend asks if that is the old one or the new one. This exhibit has suffered troubled times. There is a broken key on the inside. I actually cannot now recall whether or not that is the old version because we have lost the front key and the back key is broken. We believe it is the old one. That is the form of the lock prior to the invention.
CRENNAN J: The 001?
MR BANNON: The old 001.
GUMMOW J: Right, thank you.
MR BANNON: So this has all of the integers (i) to (v) of claim 1.
GUMMOW J: Integer (vi), looking at claim 1, is:
lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive.
MR BANNON: That is right. The second actuator is the outside key for present purposes.
GUMMOW J: And the first actuator?
MR BANNON: Is the inside handle. The first claim which is the subject of this appeal because of rulings of novelty and other rulings of obviousness is claim 13. As I will explain, claim 13 includes an additional integer which is a form of locking means which characterises a rim‑mounted lock, which is what this is.
GUMMOW J: So what is left as the live issue, I suppose, is you want to achieve a result where you have an injunction based on claim 13?
MR BANNON: Yes, and 14 as well, 13 and 14 are indistinguishable and there is a couple of other ones consequential, but 13 and 14 or 13 on its own are a convenient way to deal with it. Now, what we say and what the learned trial judge found was that the problem with the lock was the so‑called locking in problem which I have described, the problem of being locked inside as a result of a conjunction of the circumstances of entry without putting the key in the lock. There was no defect in the outside actuator of the old 001. It still withdrew the latch‑bolt in the way it had always been designed to do. It had never been designed to have an operation or effect on the inside handle.
The Full Court, on the other hand, inferred that the patent specification admitted that the skilled worker always knew that the solution to the locking in problem was to give that outside actuator the additional function, whereas they inferred that everyone already knew at the priority date that that was the solution but no one knew how to implement it. The difficulties with that conclusion included at least the following. The respondent’s own witnesses said that they were not aware of that solution, the appellant’s witnesses said the same thing, and it is only the implied corollary admission which the Full Court had to rely upon, we submit, to reach this result.
We submit it is simply not permissible to imply such an admission either at all, but particularly not in the light of that evidence. We also submit that it is not a matter about which one can make an admission which can ever be sufficient because, effectively, it is purportedly an admission about the state of minds, uncommunicated state of minds, of a number of individuals which the alleged admitter cannot possibly know.
GUMMOW J: It would have to be an admission that rose to an estoppel, would it not?
MR BANNON: Yes.
GUMMOW J: Plenty of admissions are withdrawn in the flow of evidence. It would have to be an estoppel, would it not?
MR BANNON: Yes, that is so. The question of…..estoppel has been considered certainly in the Prestige v Dart Industries without determining it. There was also a related question – and there was a reference to this in one of the Lego cases in the Privy Council – as to whether or not you are estopped from claiming copyright in circumstances where you have lodged a registered design. I can give your Honours a reference to the Prestige v Dart reference, but we say it just cannot rationally amount to an estoppel. I will take your Honours to some cases in relation to, to the extent there is any admission at all, it cannot be an admission which is binding.
GUMMOW J: I am not sure your opponent wants to come out and fight on that question.
MR BANNON: No. I think my learned friend wishes really to say firstly that the Full Court did not rely on implied corollary admission. We say they did and he accepts if they did it is an error. If that be right, and they did, and there is an error, in a sense, one reverts to the trial judge’s reasoning and it is for my friend to persuade the Court really that ‑ ‑ ‑
GUMMOW J: He seeks to do so, I think.
MR BANNON: He seeks to do so, but we address in the round. Secondly, we submit that properly understood my learned friend’s submissions really are seeking to perpetuate the implied corollary admission because ‑ ‑ ‑
GUMMOW J: That means you have to get to the bottom of what this doctrine is, I suppose.
MR BANNON: Yes, but in order to understand the way in which the Full Court has undertaken it, it is necessary to go to a little detail of the trial judge’s reasoning and the terms of the patent and parts of the evidence at least, but initially could I take the Court to this Court’s judgment on the fair basing issue which is in 217 CLR 274. It is also in the appeal books at volume 3, page 1215, but if it is convenient I will refer to it by reference to the paragraph numbers of the judgment.
GUMMOW J: There is a typographical error in the headnote. At 217 CLR 274 at 275, the line immediately above the quotation of Shave & McKay “additions or prolonged study of matters” it should be “presenting additional difficulty”.
MR BANNON: Yes. Paragraph 4 of the judgment refers to claim 1 and identifies the six integers, namely:
[(i)] a casing –
and perhaps going back to exhibit E, I am pointing to the casing there which is the bulky feature –
[(ii)] a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position –
again, that is the extended latching position to which it is biased and the retracted release position is when you push it in –
[(iii)] a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to said released position –
that is the inside handle –
[(iv)] locking means operable from said inner side of the assembly to adopt an active condition and thereby render said first actuator inoperable –
that is the lock on the inside handle and when it is activated the lock is activated then you cannot rotate the inside handle –
[(v)] a second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position –
that is the key‑operated lock on the outside –
and [(vi)] lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive.”
So that the lock release means is responsive to the operation of the second actuator, that is, the outside key. In other words, that is giving this actuator two functions, not only to withdraw the latch‑bolt, but also to unlock the inside lock. The background to the invention refers to the fact that:
At one time, a typical key controlled latch assembly included a single key‑operated lock.
That is just the outside lock.
The key hole of the lock was on the outside of the door. A person outside the door could use the key to release the latch and unlock the door. A person inside the door could release the latch, not by using a key, but instead by using a handle or knob. This arrangement is described in integers (i)‑(iii) and (v) of claim 1. An “actuator” is something that causes an operation to occur. Thus the handle or knob is described in integer (iii) as a “first actuator operable from an inner side of the assembly”. The “second actuator” in integer (v) refers to a device, usually a key‑operated tumbler, which enables movement of the latch bolt to the release position from the outside of the door.
Then it refers to the disadvantage, which I have described, of unwanted intruders, et cetera.
7 The introduction of integer (iv). Latches including integer (iv) –
that is, the locking means on the inside handle –
were developed to overcome this shortcoming. Integer (iv) is a second key‑operated lock on the inside of the door, located on the inside handle or knob. The purpose of the second lock was to enable the inside handle or knob to be locked into position, using the key, so that the handle or knob could not then be used to release the latch and open the door from the inside. While overcoming the disadvantage discussed above, this permitted the latch to be released using the key from the outside of the door, regardless of whether the inside handle had been locked into position. In integer (iv) the second lock facilitating the locking of the inside handle or knob (the “first actuator”) is described as “locking means operable from said inner side of the assembly”.
8 The problem created by integer (iv). However, a problem arose with latches incorporating integer (iv). The body of the Patent specification described the problem thus:
“Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible.”
The problem was that while it was possible for an occupant of the premises to enter by unlocking the door from the outside and then to close it, the internal handle or knob remained locked until the key was used to unlock it from the inside. If the occupant failed to do this on entry, dangerous circumstances could arise. For example, an occupant, encumbered by full shopping bags, who entered by using a key from the outside, left the key in the door or misplaced it and then discovered that the door had banged shut would find it impossible to leave . . .
9 The solution to the problem created by integer (iv) –
and note the language there, with respect, and it is absolutely correct, namely, the problem was created by integer (iv). There is no suggestion there was a problem with integer (v), namely, the second actuator, from the outside. It was continuing to do what it was always intended to do.
9 The solution to the problem created by integer (iv): integer (vi).According to the Patent specification, this problem was overcome by integer (vi). The specification said:
“It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used.”
It then set out what it described as a “typical latch assembly to which the present invention is applicable”. The description comprised integers (i)-(v).
So that is the old 001.
The specification continued:
“In normal latch assemblies of the foregoing kind operation of the outer or second actuator . . . does not affect the operation of the locking means [on the inside of the door]. That locking means remains active in spite of operation of the outer actuator, and can be rendered inactive only by appropriate and deliberate operation of the locking means from the inner side of the latch assembly. It is usually the case in such prior assemblies that the locking means is key operated. That is, the locking means will generally include a key operated tumbler lock and locking mechanism connected to that lock so as to be influenced by operation of the lock. The second or outer actuator may also include a key operated tumbler lock, but in conventional assemblies of the foregoing kind operation of that lock does not influence operation of the first actuator locking means. The two locks are arranged so that one is operated from the inner side of the assembly and the other is operated from the outer side.”
10 The specification then described the inventive step as follows:
“According to the present invention, a latch assembly of the foregoing kind [ie using integers (i)-(v)] is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.”
It will be noticed that this language corresponds with that of integer (vi) as . . . a “consistory clause” –
et cetera. Fundamentally, from those parts of the specification which this Court has referred to, that the Full Court found by those words, by saying that this was new, by addition of this feature, they said implicitly everyone already knew that.
HEYDON J: Could you just put that again?
MR BANNON: The Full Court effectively says, from those parts of the specification there quoted ‑ ‑ ‑
GUMMOW J: Where quoted?
HEYDON J: Paragraph 10, line 2.
MR BANNON: Paragraph 8 and paragraph 9, those words. That those words, albeit in a context of trying to explain why it is that this is an invention and saying that the solution to the locking in problem is to add integer (vi), the Full Court has effectively said those words constitute an admission that the skilled worker already knew that the solution to the locking in problem was to add integer (vi).
CRENNAN J: That is to say describing the problem itself has that implicit corollary. That is really how they put it, is it not?
MR BANNON: Yes, and what they say is, in effect, that the problem being referred to was the problem that the outside actuator had a defect, that the outside actuator had a defect and was perceived and understood to have a defect, the defect being that it did not operate to release the inside lock.
HEYDON J: To understand there is a problem is not to appreciate its solution necessarily.
MR BANNON: Yes.
CRENNAN J: And it is conventional in many specifications to describe a problem or a felt need.
MR BANNON: Yes.
CRENNAN J: That would have been done in thousands of patent specifications. It is usually done by the patent attorney who has had the carriage of making the application.
MR BANNON: Yes, and the fact of the matter was that this locking in problem was well recognised and that nobody had provided a solution to it. When we did it our competitor, as his Honour found, copied the idea of lock release means and yet the Full Court has effectively said by those words where the patent attorney does his best to say in effect this is the advance, you get from that that everyone already knew the solution.
HEYDON J: Do not go to this now if it is out of order, but where precisely did the Full Court set out this reasoning?
MR BANNON: I am happy to go there now and I will come back to it. If I can give reference to the paragraphs of the judgment, it is a combination of paragraphs 136, 137, 140, 156 and 157.
HAYNE J: But the essence is at 137, is it not?
MR BANNON: Yes. In 137 in the second sentence:
[Doric] 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. Doric goes on to contend that given that admission, there was no inventive step merely to conceive of remedying that defect by any means –
Already one has introduced a concept that people recognise that the defect in the sense that something was needed to be remedied was the fact of the outside key doing it rather than recognising there was a general locking in problem.
That submission should be accepted. Heerey J’s decision in Winner is in point. The fact that the Club ‑ ‑ ‑
GUMMOW J: Will you be coming back to Winner to the trial judge ‑ ‑ ‑
MR BANNON: Yes.
GUMMOW J: Am I right in thinking it is only reported – this is Justice Heerey at trial in Winner – in 24 IPR 137?
MR BANNON: Yes.
GUMMOW J: I am not sure we have it on the list of authorities.
MR BANNON: No, it is not.
GUMMOW J: That can be remedied over lunchtime.
MR BANNON: Yes. Then it continues:
The fact that the Club had to be locked with a key was obvious to the user, “as would the corollary that it would be convenient to be able to secure the lock without a key” -
In other words, what their Honours are saying, the corollary here is that it was obvious or was known that it was convenient to be able to have the key perform the additional function. Then paragraph 140 starts off:
The problem referred to in the first sentence –
this is picking up a part of Justice Heerey’s judgment –
is that key operation of the latch from outside does not release the inside lock.
We take issue that that is the problem being referred to but be that as it may:
That sentence, while literally true, ignores the implicit “corollary” admission to which we have referred at [137]. We respectfully differ from the primary judge’s conclusion at [202] that the specification does no more than admit the existence of the problem and its possible consequence.
Then in 156 their Honours say:
Accordingly, nothing that Mr Alchin or Mr Garland said about “the solution” was to the contrary of the fact that it was understood at the priority date that a solution to the problem was to use the outside key to release the inside lock.
That was squarely saying, in effect, that that was part of the common general knowledge. Then, in 157, having dealt with his Honours reasons, they summarise what their Honours said was evidence on obviousness. There are four items. The third sentence is:
However there was other evidence that pointed to obviousness. First, there was the obvious corollary of the problem with the existing 001. That is available to be taken into account without a witness deposing to it. See [136].
Then there are two points, a factual debate, but it is important to appreciate that if one looks at the sentence third, Mr Blanch’s statement to Mr Freestone, the second and third are related matters about the same piece of evidence. They say, when properly understood, as indicated at 147, supports the view that the corollary of the problem was common general knowledge.
HAYNE J: What exactly is the corollary there identified? Where do we find in their Honours’ words an identification of the proposition which is later referred to as “the corollary” or “the corollary admission” or whatever?
MR BANNON: I think that 156 is the clearest statement of how they see the corollary although they do not use the word “corollary” there, it has be accepted, your Honour. But, in other words:
it was understood at the priority date that a solution to the problem was to use the outside key –
When one goes back to 137, the corollary which is identified, it may be inferred, by reference to the club lock point, namely that:
it would be convenient to be able to secure the lock without a key”.
The corollary that they are referring to, if one identifies the problem, is that the outside key did not release the inside lock. The corollary is that it would be convenient or a good thing or a solution is to have that key do that.
HEYDON J: Corollary is an inevitably logical consequence of another proposition.
MR BANNON: Yes. What we say, really cutting to the chase, I suppose, for that matter is to say that to identify a corollary one really is engaging in the exercise of applying common general knowledge. Whether something is an inevitable consequence ‑ ‑ ‑
HAYNE J: Sorry, can I just slow you down a bit. Is the chain of reasoning that is sought to be employed one which says because the patentee identifies the problem which its invention seeks to address, persons other than the patentee (a) saw the problem as the patentee now does?
MR BANNON: Yes.
HAYNE J: Because others what, must have, might have, should have, are to be taken as have, seen the problem as the patentee now sees it, where do we go from there?
MR BANNON: They say it is an inevitable consequence that the solution follows. That is why we say they are very dangerous words to use, “implied corollary admission” or “implied” or “corollary”, because they mask what is really going on. They really mask ‑ ‑ ‑
HAYNE J: The notion of admission is also not without its difficulties in that the patentee, as you, I think, earlier said, supposedly admitting not what it knew but what others knew.
MR BANNON: Yes, uncommunicated states of mind, in effect. But it really masked an exercise of the court substituting for the factual coercion its own intuition of saying, “If that was a problem then it must follow that everybody knew it” and you cannot do that, we submit, at all, but certainly you cannot do that without paying regard to common general knowledge.
CRENNAN J: Well, you say, I suppose, even if you could do it you would have to weigh in the balance the evidence to the contrary.
MR BANNON: Yes, and as a principle you would construe a patent specification which is well accepted by reference with the common general knowledge. There is an element of circularity in starting off saying “I am going to construe it without reference to the common general knowledge” and then go and look at what the common general knowledge is and really this is what the Full Court does, with respect. We say they construe an effect that it was an implied corollary admission then they go and address the evidence which his Honour considered and made findings about and really in the light of the fact they found that admission it is hardly surprising they come to the view they did come to about the nature of the evidence.
If you start at the solution then you are inevitably going to come to that view and while I am at it, may I say their approach on section 7(3) was exactly the same. They said that the problem which had to be addressed under section 7(3) and considering what might be relevant prior art is the problem of making sure the outside key released the inside lock, but if your starting point is looking for that exercise there is no need to resort to section 7(3) – I will come to this in a bit more detail – because you are already there anyway. We accept and the patent makes it clear that the invention consisted of conceiving that you needed to make the outside key look for the inside lock – release the inside lock in addition to releasing the latch-bolt.
But in short compass that is where we are headed. But, as I say, the starting point of the High Court’s consideration of the matter is, with respect, the correct identification of the problem by the High Court, by this Court, as the problem being one of locked in. This Court certainly did not say the problem identified was a perception or a recognition that the outside key had a defect which everyone understood, namely, the outside key needed to be made to do an additional function. In a sense, part of the exercise for my learned friend, we would submit, indeed for the Full Court, although we say they did not do it, is to really read around this Court’s consideration of the matter in the circumstances in which it did consider the matter.
CRENNAN J: Was your claim in relation to the inventive step somehow wider than the preferred embodiment, was it? What I am getting at is your description of the inventive step, as it were, went beyond the inventiveness of how to solve the problem?
MR BANNON: Yes, absolutely. The preferred embodiment is actually only identified in the drawings claim, the last claim. Before that the lock release means is not identified in any of the claims, curiously, not curiously but perhaps thankfully, perhaps appropriately.
HAYNE J: Well, that has covered all horses in the race, I think, Mr Bannon.
MR BANNON: Yes. The respondent initially attacked all of the claims including the preferred embodiment claim. But they also said on the appeal, they abandoned the attack on a number of claims which they described as preferred embodiment claims, but if one looks at them, what they describe as preferred embodiment claims are not greater delineation of the lock release means, they are greater delineation of the locking means. So there is this odd outcome where they seem to say that there is some logical difference between what they call preferred embodiment claims and the other claims, but again I will come to that.
Then just continuing briefly with this Court’s judgment, at paragraph 12, after setting out another part of the specification in paragraph 11, this Court emphasised that the lock release means could take any suitable form, and the question was whether or not that broad version of the invention was what was described, and this Court held that that is the case. Could I then go to the patent itself?
GUMMOW J: Perhaps before you do that there is perhaps a useful judgment of Justice Isaacs in Hoad v Swan (1920) 28 CLR 258 at 264 to 265 explaining the basic distinction between an admission and an estoppel.
MR BANNON: Yes, thank you, your Honour.
GUMMOW J: I do not quite see how this admission would get you away from evidence, even treating it as an admission.
MR BANNON: Yes.
HEYDON J: You have an argument, do you not, that even if the implied corollary admission exists, it could be destroyed by other evidence?
MR BANNON: Yes.
HEYDON J: And is?
MR BANNON: Yes.
GUMMOW J: We will adjourn until 2.00 pm.
AT 12.46 PM LUNCHEON ADJOURNMENT
UPON RESUMING AT 2.03 PM:
GUMMOW J: Yes, Mr Bannon.
MR BANNON: Thank you, your Honours. If I could go to the patent which appears in volume 1 of the appeal book at page 4. The opening paragraph I do not need to read. The next paragraph is the one which is the focus of attention in relation to alleged admissions.
Latch assemblies for doors commonly include a turn knob or handle which is generally located at the inside of the door and which is rotated to withdraw the latch bolt into its casing. In order to improve the security of such assemblies, manufacturers have included a key operated lock which is operative to releasably hold the turn knob or handle against rotation.
That is the addition of the key on the handle:
Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside, particularly if the lock key has been misplaced or is not conveniently accessible.
It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside –
et cetera. This Court has said that that is the essence of the invention. Then it goes on:
A typical latch assembly to which the present invention is applicable includes a casing, a latch bolt movable relative to the casing to adopt either an extended latching position or a retracted release position, a first actuator at an inner side of the assembly which is operable to move the latch bolt to the release position, locking means which is rendered active or inactive by key operation from the inner side of the assembly and which when active renders the first actuator inoperable, and a second actuator at an outer side of the assembly which is operable to move the latch bolt to the release position.
That is the existing type of lock.
In normal latch assemblies of the foregoing kind operation of the outer or second actuator does not affect the operation of the locking means. That locking means remains active in spite of operation of the outer actuator –
that is, turning the outside key –
and can be rendered inactive only by appropriate and deliberate operation of the locking means from the inner side of the latch assembly. It is usually the case in such prior assemblies that the locking means is key operated. That is, the locking means will generally include a key operated tumbler lock . . .
According to the present invention, a latch assembly of the foregoing kind is characterised in that it includes lock release means which is responsive to operation of the second actuator to render the locking means inactive.
Effectively, what that passage is saying, existing locks, the old 001 does not have integer (vi). This is a new improvement because it does and it solves the locking in problem. I must admit, one cannot get from that an admission that everyone knew - there is certainly no express admission but everyone knew that the solution to the problem was to add integer (vi), but that is the effect of the Full Court’s finding. One does not even get at it as a matter of implication.
If one is going to talk about admissions, one at least has to have something which is tolerably clear and that is simply not there. The implication which is drawn, and it is from that passage, really is an exercise in the court, without reference to common general knowledge, attempting to reach a conclusion of obviousness. The passage then proceeds at line 23:
The first actuator will generally include a rotatable knob or handle –
that is the inside handle –
which is connected to the latch bolt in a known manner so as to be operable to move that bolt into the release position, and the bolt may be spring biased into the latching position. The locking means preferably includes at least one cam controlled detent which is movable between actuator locking and actuator release positions.
I will just explain that because it is relevant to claim 13. If one turns to the figures at page 20 of the appeal book there is an exploded version on figure 2 of the turn handle on the inside which is inserted into the casing.
Items 18 which are pointing to lozenge shaped pieces are the detents. In that exploded version item 24, about halfway up the page, is the cam. A cam is something which turns rotational movement into translational movement. If one then goes to figure 3, one can see items 18, the lozenges, on either side of the top and the bottom of the drawing. The cam is now the element which has the arrows running round it.
GUMMOW J: Item 22.
MR BANNON: Yes. In that position in figure 2 the two detents, that is 18, are resting in the recesses in the cam. One can see at the bottom of the figure the hatched area which represents the casing which is identified as item 5, and one can see a recess which is ready to accommodate the detent whence it is pushed into position. It is so pushed into position by the rotation of the cam as appears from figure 5 over the page on page 22. One can see in that instance the cam has been rotated so that the detents, instead of having the recess of the cam opposite, has a non‑recessed part of the cam and that has the consequence of pushing each of the detents in a radially outward direction and into the recesses. Once it is in that position, then it is blocked against movement. Those items and numbers are explained in detail. I will not go to it now but that is the essential explanation on page 8 of the appeal book, picking up the various references to the numbers.
Then going back to the description on page 5 of the appeal book, at line 30, after referring to the control – so in other words, reading that sentence again:
The locking means preferably includes at least one cam controlled detent which is movable between actuator locking –
So that is when the lock position is pushed into the outer recesses –
and actuator release positions.
That is what that is when they are able to be withdrawn.
It is also preferred that the lock release means is operable to influence the detent cam in a manner such that operation of the second or outer actuator –
that is the outside key –
causes the detent cam to move to a position corresponding to the actuator release position -
If I could then go to claim 1, which appears at page 14 of the appeal book, just to identify it and it has been set out elsewhere. The terms of it is this Court’s judgment identified as set out in the body of the specification. Then the first relevant claim for the purposes of this hearing is claim 13. That is on page 15:
A latch assembly according to claim 12, wherein said cam means includes a cam of which is movable about an axis of rotation between first and second positions of rotations so as to thereby control said detent means, and 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.
That effectively describes that figure 2, 3 and 5. Claim 14 – this takes it a step further:
A latch assembly according to claim 13 when appended to any one of claims 4 to 6, wherein said detent is connected to said actuator member for rotation therewith and is operable to prevent said actuator member rotation when in said actuator locking position.
That just again describes the figures in claim – in figure 3, namely the detent means rotates with the handle.
Now, the evidence in the case was that those detent means, the radially outward ones, characterised rim‑mounted locks. If I could just go to that evidence, that is in the same book, volume 1, page 459. This is evidence of a Mr Garland, a witness called by the respondent. At paragraph 71.3 it 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 –
I think in that regard it is just a slip by the witness. In fact, that is true of 12 but not 13. I only refer to that because of something he says a bit later:
Such (unrestricted) moving “detent means” as described in Claims 12 and 13 of the Lockwood Patent is also reflected in each of the Prior Art –
et cetera. Then he says:
Claim 14 of the Lockwood Patent, however, further restricts the “said detent” by identifying it to be “connected to said actuator member for rotation therewith”. As a result, the “detent means” described in Claim 14 of the Lockwood Patent is limited to such means which only move radially outwardly to the active (or locked) position and which also move or rotate with the “hub” when the lock is in the inactive condition. I note that the same “detent means” as referred to in Claim 14 (ie restricted in its movement radially outward to the active or locked position and rotating with the “hub” when the lock is in the inactive condition) is clearly evident in the following locking products, each of which was, to my knowledge, widely sold –
and that is the old 001. In paragraph 71.5 he says:
The choice of restricting the movement of the detent means (either radially outward ‑ ‑ ‑
GUMMOW J: I am sorry, what is the old one? What is being described as the old? Whereabouts?
MR BANNON: Yes, sorry, 1B.4 is the pre‑priority date Lockwood 001.
CRENNAN J: Exhibit 5.
MR BANNON: Exhibit 5, yes – sorry, exhibit E, yes. He goes on to say:
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 which may have been influenced by, for example, the degree of security required by the product and cost and complexity of its manufacture (radially outwardly moving detent means generally being more secure but also more expensive to manufacture). Generally speaking, surface mounted locks –
that is rim‑mounted locks –
(such as the Whitco (Original) Deadlock –
and two other deadlocks –
tended to use detent means as described in Claim 14 of the Lockwood Patent (ie radially outward moving).
Now, the point of that is just to identify a matter which I do not think – we will hear about it – is seriously in issue, but claim 13 was not anticipated by any of the prior art locks and claim 13, because of the locking means identified, namely, the radially outward detent means, characterised a rim‑mounted lock such as the old 001.
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.
Could I then move to Justice Hely’s judgment. That is in volume 3, 1071. Again I will refer to it by paragraph numbers. The relevant starting point for present purposes is paragraph 7 of his Honour’s judgment where his Honour refers to claim 1 and sets it out. Then paragraph 8 his Honour refers to the part which describes typical latch assemblies and says:
One example of a deadlatch having those features . . . which is the precursor of the preferred embodiment . . . first released for sale in Australia in the 1980s, and enjoyed widespread success until manufacture was discontinued after the new 001 –
with safety release feature.
Feature (iv) is an important element of the security –
and that reflects this Court’s judgment. Then paragraph 10 in similar language, (iv) being the problem. Then paragraph 12 his Honour refers to:
Mr Wilson, an expert called by Lockwood, had been aware for many years of the problem of people locking themselves in their houses because the key to unlock the inside handle was not accessible. The problems described on page 1 of the Patent had been known to Mr Freestone, another expert called by Lockwood, since deadlatch locks were first used in Australia.
Because the Full Court has in effect found that the admission amounted to an admission that persons in the industry recognise that the problem was that the outside key did not release the inside lock and that it should do so, it is important to look at that evidence which is referred to there. That appears firstly in Mr Wilson’s evidence in volume 2 of the appeal book at page 594 at paragraph 241. He says:
Prior to 14 February 1996 I was aware of the problem of people locking themselves in their houses because the key to unlock the inside handle was not accessible.
GUMMOW J: Who is this witness?
MR BANNON: This is Mr Wilson, who was an expert called by Lockwood. His evidence is referred to at paragraph 12 of Justice Hely’s judgment. Who he is and where he comes from appears from page 557 – actually no, it does not.
HEYDON J: Yes, it does, 557 and 558 plus his earlier affidavit.
MR BANNON: Back at 594, paragraph 241:
Prior to 14 February 1996 I was aware of the problem of people locking themselves in their houses because the key to unlock the inside handle was not accessible. Such a situation can arise where, for example, a person arrives home . . . Alternatively, the person may misplace their key after they arrive home. This is a potentially dangerous . . . For this reason, it has been my practice since at least the late 1970’s, whenever I have fitted a lock that functions in this manner to the exterior door of a client’s premises, to give advice to the client in words to the following effect: “you must get into the habit of always leaving the key in the inside lock . . . to make sure that you do not get locked in”.
He says he adopted that practice at home in paragraph 242. Then 243:
Despite the fact that I have been very aware of the problem of people locking themselves in their houses and I have always been conscious to avoid this problem –
Then he says at 244:
Before the release of the new Lockwood 001 with safety release, it would never have occurred to me to design such a lock that operated with a safety release mechanism –
I emphasise “a” –
to overcome the problem addressed by the Patent.
Justice Hely did not so find, but effectively the Full Court did, that people in the industry such as Mr Wilson understood that there was a problem that the outside key did not operate the inside lock and that was understood as a defect. You simply do not get that out of that passage in the evidence. The problem he was referring to was a problem of being locked inside generally.
Similarly, Mr Freestone’s evidence, which is also referred to by Justice Hely, which is the focus of much attention in the Full Court, the reference to that is at page 717 in the appeal book volume 2. His background is identified at the beginning of the affidavit at page 692, but I will not go to it. At page 717 at paragraph 173 he says:
The problems described on page 1 of the Patent have been known to me since the deadlatch locks were first used in Australia. The first version of a deadlatch lock known to me was the ERA Lock which was sold in Australia in about the 1950’s. Since then, deadlatch locks have become increasingly popular in Australia and the problem of being locked into residences has been increased over the years. I recall on a number of occasions during the 1980’s and early 1990’s, having discussions with other lock draftsmen and designers at Lockwood about the difficulties that arose as a result of people being unable to unlock the door from the inside without the key.
It refers to Lockwoods, newspaper clippings, et cetera. Again, there is nothing there to suggest that there was a discussion within Lockwood – this is to foreshadow something the Full Court found – of them sitting around saying, “You know what the problem is? The outside key doesn’t unlock the inside lock. How are we going to solve that?” It is a million miles from that. Then he refers to a project by Mr Blanch who is the inventor, how that started out. This is in paragraph 174. At paragraph 175 he exhibits certain documents which includes a design brief. At paragraph 177 he says:
Shortly after the commencement of the 001 Project –
it was a project generally to try and improve the 001 –
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 at Lockwood. The clipping referred to the problem of people being trapped inside a house during a fire and not being able to escape as a result of being locked‑in.
Sometime after Mr Blanch commenced working on the Project in about May/June 1993, although I cannot recall precisely when, 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”?
I said “If you can do that, good luck to you. I don’t think you can do it.”
I said these discouraging words because at the time, I considered that the problem posed by the deadlatch would be too difficult to resolve. I had put the question of solving this problem in the “too hard” basket, and I believe that other lock designers had done the same. However, I considered Mr Blanch to be a lateral thinker and whilst I was doubtful that he would succeed, I was prepared to support him if he could find a solution.
That piece of evidence is evidence on which Justice Hely did rely. The way his Honour correctly interpreted it is that the problem being put in the too hard basket was the problem generally of people being locked inside. Mr Freestone does not say, did not say, and was not asked the problem – which he put in the too hard basket – was implementing the solution which you already knew which was to get the outside key to release the inside lock. You do not get that from the affidavit but that is what the Full Court found, based, we submit, on the corollary admission.
Then over the page he gives evidence in response to paragraph 182 when he saw the actual preferred embodiment. He considered that was “ingenious”. Justice Hely was careful to identify that as related to the preferred embodiment, not to the putting of the general problem in the too hard basket, as will appear. Then coming back, if I may, to Justice Hely’s judgment ‑ ‑ ‑
GUMMOW J: Paragraph 154, is it not? Does he not start to deal with obviousness at 154?
MR BANNON: Yes. Could I just refer, just before dealing with that, to two items under the novelty heading because it is background to a question of that conversation. Firstly, paragraph 146, his Honour refers to a Boyd mortice lock:
This lock was sold in Australia prior to the priority date. The lock was sold with and without a “kick-off” function. When the lock with the “kick-off” function is installed, if the door is locked from the inside and then shut, the deadlock unlocks automatically. The point of this function is to prevent a person being accidentally locked out if the door slams shut behind him. On the other hand, if the door is deadlocked while closed . . . the door remains deadlocked.
There was a system called this “kick-off” mechanism which had an automatic unlocking of a deadlock by the interaction of the latch-bolt and the door plate. It was not by use of the key. A similar but a reverse function is described in relation to Abloy at paragraphs 131 and 132. I will not read that but I will just refer your Honours to it. Then “Obviousness” commences at 154. There is obviously nothing untoward in what his Honour says at 154, 155. At 156 he deals with certain evidence of Mr Garland. At 157 he refers to an affidavit of Mr Garland:
if he had been given a “brief” as at 14 February 1996 to design a lock assembly to address the “locked in” problem referred to in the Patent, he believed that one or more solutions –
would have been obvious to him. His Honour ultimately rejected that evidence as persuasive. But the actual evidence appears in page 554 of the appeal book, if I could go to that briefly. This is part of an affidavit of his which starts at 552. The relevant part is at 554. He says:
I refer to my comments under the sub‑heading “Obviousness” in My First Affidavit. By way of background, it appears to me that, put broadly, the Lockwood Patent describes locking mechanisms said to overcome certain “serious problems” as are described on page 1 of the specification to that patent. These problems concern persons being, in effect, “locked inside” premises as a result of the use of deadlocked rim mounted latching mechanism and being unable, from the inside of the door, easily (without the use of a key) to release the deadlocking mechanism.
So he describes the problem as locking in. He does not say the problem was what the Full Court said it was. Then he says:
The solution to those “serious problems” is described on pages 1-2 of the specification of the Lockwood Patent being “lock release means –
So he is fully aware of what the question is he is addressing and he says:
If I had been given a “brief” to design a lock assembly to address such “serious problems” as at 14 February 1996, I believe –
and then he says, in effect, I would have solved it by a lock release means in one of these two forms. But what he does not say is I already knew that that was the solution. So then coming back to Justice Hely’s judgment, 158, he refers to the evidence of Mr Wilson, again to which reference has been taken, 159 refers to that paragraph of Mr Wilson, 244. His Honour says:
There is a potential ambiguity inherent in this paragraph. It is not clear whether “such a lock” refers to the physical Lockwood product manufactured in accordance with the preferred embodiment, or whether it refers to a lock containing feature (vi) of claim 1. In any event, Mr Wilson said in cross‑examination that he has never been asked to design [such] a lock.
That is a first instance where his Honour demonstrates he is acutely aware of the difference between the issue of deciding obviousness on the preferred embodiment and obviousness in relation to claim 1.
GUMMOW J: Which paragraph is that?
MR BANNON: Paragraph 159. Paragraph 161, his Honour refers to Mr Freestone’s evidence which we just looked at; 162, the conversation, 163 he refers to the response. He says:
Mr Freestone’s contemporaneous reaction to the suggestion is one of scepticism which is admissible on the issue of obviousness -
Paragraph 164 he refers to his reaction to the preferred embodiment and his Honour, after quoting that, again makes it clear he is fully appreciating the difference between obviousness on the preferred embodiment by saying:
This evidence relates to the physical Lockwood product, and is therefore restricted to such of the claims in the Patent as incorporate the preferred embodiments, or elements of it. I do not think that this paragraph says anything about whether claim 1 is obvious, although the fact that the problem identified by the Patent had previously been recognised by Lockwood personnel, and put into the “too hard” basket is germane to that question.
Just no error shown there, what his Honour’s interpretation and Mr Freestone’s evidence was the only available one. The general problem of being locked inside had been put in the too hard basket and that was relevant to the claim on obviousness.
Then his Honour refers to – at 165 he in effect says that Mr Garland was too skilled. At 166 he refers to the fact that:
Mr Garland was set the specific task by Doric of designing a rim mounted deadlatch to compete with the old Lockwood 001. The solution to the problem referred to in the Patent did not occur to him at that time. If the idea had then occurred to him he would have mentioned it to Doric, even though he was working to a brief, and the resolution of the problem referred to in the Patent did not form part of that brief. He was then aware that the “locked in” problem was a serious problem but the solution to it did not come to his mind.
Can I again take your Honours to that evidence. It is a short passage. It is at 181 in volume 1, the cross‑examination of Mr Garland. At the top of the page he was asked:
You had seen in practical use the old 001 with the deadlatch?---Yes, I have.
You observed that there was a problem of locking yourself in?---Yes.
And you recognised that such a problem could have serious consequences in certain circumstances?---Yes . . .
And the problem arose as you understood it and recognised was because the door could latch shut behind the person who had just entered it?---Yes.
In circumstances where the internal handle had been locked?---True.
Then two pages over at 183 at the top of the page:
Indeed you were set, were you not, the specific task in 1995 of designing a rim mounted dead latch lock to compete with the old Lockwood 001 . . .
. . . spent some time on that . . .
You’ve paid attention to the features of that lock you were designing . . .
. . . features of the old 001 . . .
You brought to bear your design skills . . .
The solution to this obvious problem, it didn’t occur to you then, did it?---No, because I was told to do something different.
Bottom of the page, 50 and 53:
solution did not occur to you –
He is right on the priority dates.
GUMMOW J: You seem to have been shouting at the witness, Mr Bannon.
MR BANNON: I say nothing.
HAYNE J: It was enthusiasm.
MR BANNON: That is right. I do not want to be accused of being a whisperer. Over the page at 184 there is a sequence from line 15 to line 35:
Do you agree now that the addition of this safety release feature is an eminently sensible . . . it’s a good features, yes.
An excellent feature . . . If you say so, yes.
And his Honour chimes in with characteristically more precise questions than mine:
whether you say so . . . it’s a good idea but I don’t think it’s novel.
It would be true, would it not, that if, in the course of doing the design work to a specific brief . . . if this, what you describe as a good idea, had occurred to you, may we take it you would not have kept it back from the client?
As always, there is only one answer to that question: “No”.
If it had occurred to you, you would have said, Listen have you thought . . . I would’ve, yes.
So, again, you have this remarkable circumstance where, based on this so‑called admission, the Full Court has somehow discerned that everyone knew that this was the solution and going back to the judgment ‑ ‑ ‑
HEYDON J: You rely on the first half of 182 as well?
MR BANNON: Yes.
GUMMOW J: Line 20, for example?
MR BANNON: Yes, that was without the shouting. Then back to Justice Hely. So that was 165. At 167 his Honour says, even taking his evidence at face value, it was not good enough because it may well have come up to the mark, and then he refers to a contradiction, a conflict with Mr Alchin. At 169 he refers to Mr Freestone’s evidence:
I accept his evidence that the problem identified by the Patent –
had been put in the too hard basket. Again, that is in the context where his Honour has carefully recognised that that is relevant to claim 1 evidence. His Honour deals with an issue at trial, “Did Doric copy Lockwood?”, and in the course of that, after a consideration of that material, at paragraph 178 his Honour finds that he rejects Mr Alchin’s assertion. Mr Alchin was the designer of the infringing Doric product, the principal of the respondent:
that the Doric products were designed prior to any awareness on his part of the new Lockwood 001. Exhibit D suggests to the contrary, and the prevarication which is implicit in the various shifts . . . Doric had worked on locks of this type in 1995 and earlier when the safety release feature was not part of the design brief, but nonetheless it did not occur to those engaged in the design process (which included Mr Alchin and Mr Garland) to incorporate that feature although it is said to be both beneficial and obvious. It is too much of a coincidence to accept that the Doric products incorporated that feature at the time of the release of the Lockwood product and that this occurred without any reference to that product. I do not accept that Mr Alchin only became aware of the new Lockwood product after the completion of the design of the Doric product . . .
I find that the new Lockwood 001 with safety release feature was the inspiration for the Doric products. I do not accept that the Doric products were independently conceived. I accept, however, that Mr Alchin did not set out to copy that product, beyond taking the bare idea of the inclusion of a lock release means –
That is quintessential saying he took effectively claim 1. At 180 his Honour says that evidence is relevant on obviousness. Just one reference to Mr Alchin’s evidence on this issue, at least as to this question of known problems, again in volume 1 of the appeal book at 286 at line 17 he has been asking questions about the old Lockwood 001. This is in the context of the cross‑examination effectively designed to suggest that he was inspired by the new Lockwood 001. But in the course of that he was asked this question:
And you recognised that it had a known problem in relation to the lack of a safety release feature, didn’t you?‑‑‑No, I did not.
You say that there was no known problem of the lack of a safety release feature?‑‑‑I don’t say there was no known problem. What I say is it was not a problem that was necessarily aware to me. We were not selling this type of lock in the marketplace.
Effectively he was saying there he did not understand that there was a known problem with the fact that the outside key did not release the inside lock. That was not part of his appreciation. Then at 291, line 10:
One of the key advantages you had over the old Lockwood lock with your new design was it provided the safety release feature?---The lock did have that feature, yes.
That was an advantage over the old Lockwood 001, wasn’t it?---It was an advantage if there was a problem out there that people were getting locked in, yes.
You appreciated that that was a problem, didn’t you?---No.
You appreciated it was a potential problem, didn’t you?---We had no advice . . . was I aware that it was a distinct problem, no.
HIS HONOUR: If it would, would it not have been a better product if it had that feature?---I am sorry, your Honour.
In your view, at the time, would it have been a better product if it had that additional feature?---With the benefit of hindsight, yes.
Again, that is inconsistent with what the Full Court found, that everyone in the industry appreciated that that was an advantage.
HEYDON J: In the next Justice Hely is directing attention to that and the question was not answered. The next question tends to support your position does it:
As you then saw things?--- . . . I am not too sure at that time whether there was enough evidence to say that it was a big enough problem for this change to have been an advantage.
MR BANNON: Yes. Again, it is inconsistent with the view that everyone in the industry always appreciated that this was a thing to have, ie, the outside key release the inside lock. Coming back to the judgment, the Lockwood solution, paragraph 181 refers to the development process. Paragraph 182 refers to certain minutes of the product development meeting. Your Honours will note it refers to a design concept. If I can go to those minutes of meeting, they appear in volume 3 at page 965. This is a meeting of 2 June 1993. Mr Freestone, who had the conversation about auto unlocking in May – this is May or June, but it is probably before this meeting – was not at this meeting, but over the page, at page 80, under the heading “Development Progress” it says:
It is possible that design could be such that operating exterior cylinder will automatically unlock the interior knob.
Design concept to be further explored and confirmed. Marketing to assess.
Notice the reference to it as a concept. Then at 967 there is another meeting on 9 June and at 968, line 10:
Design concept to be further explored and confirmed. Marketing indication is that this is a highly desirable feature.
So it is described as a concept which is consistent with the claim 1 description of it. The minutes reflect that this is something new and, secondly, they do a marketing assessment to see whether this feature, ie, using the outside key, would be good or bad.
That is inconsistent with a conclusion that everyone always realised using the outside key would be a good thing. Then coming back to his Honour’s judgment, his Honour goes on to say in relation to the efforts of the inventor that they are not determinative one way or another. In 185 the time frame is not determinative one way or another. Then his Honour deals with the topic of common general knowledge. He says:
The Lockwood 001 deadlatch had been sold in large quantities in Australia for many years. It possessed features (i)-(v) of claim 1. The specification admits that those features were part of the common general knowledge at the relevant date.
His Honour addresses whether or not any of the other locks relied upon were parts of the common general knowledge, that is, the storeroom locks in particular.
GUMMOW J: What is the significance of the storeroom lock body of evidence?
MR BANNON: They anticipated claims 1 to 6, his Honour found, and 12. Our learned friends say and the Full Court found that they were relevant not on section 7(2) invention but they were relevant to section 7(3). In other words, they were material which could reasonably be expected to be ascertained, understood and regarded as relevant.
GUMMOW J: Do you 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. Claim 13 locking feature was referable to rim‑mounted locks. Nobody gave evidence to say that we would have paid regard to the storeroom locks if we had been set the task of improving the 001 or whatever the task was. In fact, the only people who addressed the question of dealing with the locking in problem were Mr Alchin, who did not say anything about the storeroom locks as being his inspiration – he relied on something called a DS60 and his Honour actually found that he relied on us – Mr Garland, who was aware of the storeroom locks but did not say that they would have led him to the invention, and Mr Blanch, the inventor, his papers are before the Court and he makes no mention of the storeroom locks.
So there is actually no evidence to support the conclusion that anyone would have regarded the storeroom locks as something which they would have ascertained, understood and regarded as relevant to the question. We say that is a matter of evidence which you need. There is evidence to the contrary. It is a hendiadys expression, or analogous to it, in the sense that reasonably expected to ascertain, understand and regard as relevant. They all have a relationship between the three concepts. It is not simply being capable of being ascertained, so we do strongly dispute that.
Then his Honour rejects it. He says that they were not part of the common general knowledge. He refers in paragraph 192 to the fact that there are locks all over the place and:
In general terms, it may be necessary to acquire a particular lock and take it apart –
to have a look at it. Just on that question, because claim 13 deals with a particular locking mechanism which is associated with rim‑mounted locks, if you were not familiar with a locking mechanism of a particular lock, then you would not know, or necessarily you could not assume it would be relevant to a claim 13 combination and, as a matter of fact, the storeroom locks did not have the claim 13 locking mechanism. It did not have radially projected detents. In 194 his Honour refers to the fact:
Mr Garland does not say in terms that the storeroom locks provided the solution to the problem –
So that is evidence which is contraindicative of the proposition they were relevant to 7(3), although he is not dealing with 7(3) here. In 195 it is not part of the common general knowledge. Then “Admissions in the specification” and his Honour refers to the fact that Doric breaks the claims into two groups, the so‑called CGK claims and for the purposes of this classification claim 13 is in that category.
GUMMOW J: This word “corollary” seems to come in at 199.
MR BANNON: That is right. In 198 and 199 his Honour refers to the submission and correctly, with respect, identifies that they were putting this proposition, namely, that the corollary, the advantage was common general knowledge. His Honour considered the evidence of Mr Freestone and rejected that and we submit there is no error shown in any of that by his Honour. Then 201 refers to “obvious on its face” and 202 his Honour says:
The specification does not admit that claim 1 is obvious. The specification accepts two matters as generally known as at the priority date:
–key operation of the latch from the outside of the door does not release the inner handle,
–as a result, people may be locked in,
but does not contain any broader admission.
There is a citation which is of Raychem which is cited by our learned friends – it talks about technical contribution and other matters which are not necessarily part of our law in this country – and refers to Winner v Ammar. At 205 his Honour identifies the fact that – and this is where corollary admission appears to have, if it did not get its genesis then certainly had life breathed into it:
At first instance, Heerey J held that the fact that the Club Lock –
that was the steering lock –
has to be locked with a key is something which would be obvious to the user, “as would the corollary that it would be convenient to be able to secure the lock without a key” . . .
An appeal from that decision was unsuccessful.
The Full Court addressed the complaint made on the appeal, by my learned friend as it turned out, to the effect that his Honour had simply relied on this corollary in the specification and had not addressed the evidence. But at 206 Justice Davies held – that perhaps is not the relevant part of 206 but there is a part of Justice Davies which is picked up by the Full Court – and we will see it as we go through – which effectively said, no, his Honour Justice Heerey ‑ ‑ ‑
GUMMOW J: He had looked on the evidence as well.
MR BANNON: Exactly, yes. So, in other words, the Full Court Winner does not support this corollary approach. At 208 his Honour says it is a matter of evidence ‑ ‑ ‑
GUMMOW J: What will we do for the future? Just assume that the Full Court placed too generous a construction on what Justice Heerey had done and assume that what Justice Heerey had done is what is on its face what he was saying at page 142 of the intellectual property report. What do we then do about that? What do you ask us to do about that?
MR BANNON: That is wrong. That involves an error of principle.
GUMMOW J: The principle being what? The error being what?
MR BANNON: Obviousness is a question of fact – sorry, obviousness involves a jury question which is a question of fact. You cannot admit obviousness on the face of the specification for the purposes of the section 7(2) attack because it is an evidentiary issue. An admission as to obviousness is at best an admission of mixed question of fact and law and even if it is admitted or admissible it cannot be sufficient to establish a factual proposition. I think . . . part of Eastern Express refer to that proposition.
GUMMOW J: You better give us the citation for that.
MR BANNON: Yes.
HEYDON J: These are ambitious submissions. You can make admissions of mixed fact and law under the general law of admissions, can you not?
MR BANNON: It can be admitted.
HEYDON J: Received into evidence?
MR BANNON: Yes.
HEYDON J: You have to weigh it with all other evidence that bears on the point no doubt, but it could outweigh the other evidence. I would accept it does not trump or it does not have paramount significance compared to the other evidence but it could either outweigh or be outweighed by the other evidence. Is that not the correct approach?
MR BANNON: As a matter of theory, yes, with respect. We would submit on the question of obviousness it really just cannot be sufficient of itself. In other words, if the specification said, for example, that this is obvious and assuming a manner of manufacture argument was not run, what does that inform the Court as to the question of what is or how is it the lack of inventive step. It may be a matter which can be received into evidence, but there is a second question as to whether it – perhaps when I say it can never be sufficient may be an overstatement.
HEYDON J: Maybe.
MR BANNON: But there will always be a question as to whether or not the admission is sufficient to establish obviousness.
GUMMOW J: Your point, I think, is that it is being relied on here as some sort of estoppel.
MR BANNON: Basically, yes. Can I just give the references to a number of the cases which deal with questions of admission.
HAYNE J: To what end, in this sense, the admission we are concerned with is an admission that is to be found in the patent.
MR BANNON: It is asserted.
HAYNE J: So it is said.
MR BANNON: Yes.
HAYNE J: The patent is properly in evidence before the Court.
MR BANNON: Yes.
HAYNE J: The question is what use is to be made of the fact that the patent says whatever it says.
MR BANNON: Yes.
HAYNE J: No separate question of admissibility of evidence arises, does it?
MR BANNON: No, that is so.
HAYNE J: To speak of it in terms of an admission may be to apply to it a tag, perhaps one that is inapposite, for a purpose that seems to carry it down a path that at the moment seems to lead not very far, if anywhere.
MR BANNON: Yes. Our primary submission is that there is no admission of the type asserted. There is certainly no express admission of the type asserted. What we submit is you cannot draw an implication of this sort of admission because that involves an exercise in applying an assumed level of common general knowledge, even in drawing the admission.
HAYNE J: But if that is right, that is a proposition about what the words used mean and convey.
MR BANNON: To the extent that the implied admission is to effectively say that this was obvious or well known, that is a conclusion which is itself a factual conclusion which you cannot draw, we would submit as a matter of principle, without informing oneself first of the level of common general knowledge, because it is well accepted you cannot interpret a specification otherwise than against the background of common general knowledge.
There must be an element of circularity if you draw an implication from the specification as to what is being said about common general knowledge on the basis of what must be obvious or must be inferred without first looking at what the state of common general knowledge was. Our real point is that the expression “implied corollary admission” really disguises an exercise which is drawing a conclusion about obviousness without evidence.
GUMMOW J: Yes, it is really the additional factors of “implied” and “corollary” that take it out of what one ordinarily would regard as even in ordinary terms of an admission.
MR BANNON: One can readily accept that if a patentee in a specification said, “X has been widely sold”, it is an observable fact and can be readily admitted. That would be a piece of evidence which could be received, but here something more than that is being sought to be derived from this, and that is this implied corollary to suggest that everyone always knew that the desirable advantage – or the solution to the problem was to make the outside key do two functions. We say that is more than an exercise in word play; that is an exercise in drawing a conclusion about obviousness.
GUMMOW J: You would not make the implication in the document without being aware of how you construe the document, and there are special rules about that with patents.
MR BANNON: Yes, which involves taking account of common general knowledge.
HEYDON J: I have a burning curiosity to see what was in those pieces of paper you were going to hand up.
MR BANNON: Firstly, can I hand up a copy of Sonotone v Multitone which refers to – I think it is referred to in one of the parties’ submissions –the notion of admissions and whether or not there is an estoppel. This perhaps goes to a wider point, but at page 140 of that at line 35 they say it cannot operate as an estoppel.
HEYDON J: He does say it is “an admission which must necessarily carry great weight”.
MR BANNON: Yes. That may be the case in the case of an express admission which one takes – so there are a couple of issues flowing here but to the extent it is said if the admission is to be found, it is certainly not an estoppel. That is point one. Point two, we say very dangerous territory of implied corollary is a different kettle of fish.
Then in the Astra decision, 212 CLR 411, which is on our list, although it is admittedly oblique or not expounded upon, at paragraph 11 in the majority judgment is a second sentence which refers to:
Nor, despite the submissions by Alphapharm in this Court respecting alleged admissions by Astra against interest arising from the amendment process, does that process assist in dealing with the issues respecting obviousness with which this appeal is concerned.
Although it is not expounded upon there, what that is alluding to is a statement in Justice Lehane’s judgment at the trial. If I could hand up copies of that, just the relevant page, and at paragraph [121] of that his Honour refers to the topic of admissions.
GUMMOW J: Also a decision of Mr Justice Lloyd‑Jacob in one of the Rosedale cases. That is the shuttlecock litigation [1959] RPC 189 at 199 there is an exchange between the judge and Aldous QC. Anyhow, the net effect of what the judge is saying is that it would not shut out, or could not shut out determination of the question on the evidence.
MR BANNON: Yes.
GUMMOW J: Which seems sensible.
MR BANNON: Yes, and then lastly, can I just hand up, just on discretion generally, what admissions can or cannot be made. There is a judgment of Justice Burchett in the Commonwealth v Oceantalk (1997) 79 FCR 520. It is convenient because it picks up some other authorities.
GUMMOW J: Any particular page?
MR BANNON: At page 523D his Honour deals with a question as to whether or not ownership of copyright can be the subject of an admission and picks up the reference in Eastern Express to the difficulties of utility of admissions on questions of misfact and law and it also picks up a reference to and the quotation there Lustre Hosiery Ltd v York which was consistent with what your Honour Justice Heydon referred to as admissions of something about which somebody does not necessarily know. Obviously it can be received into evidence, but whether or not they are sufficient involves a question of looking at them to see whether they actually ‑ ‑ ‑
GUMMOW J: Justice Hayne said to you this is in evidence because you have to tender the patent.
MR BANNON: Yes, but Lustre Hosiery Ltd v York just confirms that even though it is in evidence, you still look at it to consider whether it is sufficient of itself if there was nothing else, would that actually get you over the line.
CRENNAN J: Sufficiency of purpose.
HEYDON J: That does not support your theory that it will never by itself on the balance of probabilities establish what has to be established.
MR BANNON: That submission was too ambitious.
HEYDON J: We are at one.
MR BANNON: Yes. But in this case, this particular admission which they assert we submit of itself would never get them over the line because of the steps one has to take to get there, the implied corollary nature.
GUMMOW J: You have to tweak it.
MR BANNON: Yes.
GUMMOW J: To put it mildly.
MR BANNON: Yes. So then, concluding on this question of his Honour’s reasoning on the question of obviousness, at paragraph 211:
No witness deposes to the fact that it was understood at the priority date that a solution to the problem identified in the specification was to use the outside key to release the lock.
Just pausing there, there is no confusion there on his Honour’s part about the claim 1 type obviousness as opposed to preferred embodiment, and the witness did give that evidence. So, in other words, it is just a remarkable state of affairs that if everyone was running around fully appreciative this was the solution, no one could be found to say that, and Mr Garland and Mr Alchin certainly did not. It was not obvious to Mr Freestone or Mr Wilson. You could not get that out of the evidence of either of those gentlemen. The too hard basket is referred to, and the reliance of Mr Alchin, all of which we submit is completely without difficulties.
Can I then go on to the section 7(3) issue, which is CGK + 1, and this commences at paragraph 217. After referring in paragraph 220 to the Firebelt decision, his Honour at 221 and 222 refers to – and this is the subject of criticism – that it is inappropriate to take into account the fact that locks need to be taken apart. When one considers the question of the claim 13 lock, which has a particular locking mechanism, it is important to know whether a lock is relevant to a particular locking mechanism or not.
Without going to it, can I give your Honours this reference, that Mr Wilson was a locksmith, was not familiar with how, for example, the storeroom locks worked inside, and the reference is volume 1, page 85 of the appeal books, line 25. His Honour then considered, at paragraph 224, the Abloy. His Honour noted that Mr Blanch regarded the Abloy lock as a potentially relevant lock because that was referred to by his material. His Honour concludes:
Having regard to the large range of locks on the markets, and the cost of obtaining a sample of each, I do not think I should infer that the skilled worker could reasonably be expected to have ascertained, understood and regarded the Abloy as relevant.
We do not understand our learned friends to rely much on the Abloy any more. It is the storeroom locks. But just to give your Honours the references which I adverted to earlier, there was no evidence by any witness to say, faced with any task before the priority date, “I would have regarded as relevant to ascertain the storeroom locks and would have regarded them as relevant to a claim 13 combination”.
Firstly, Mr Blanch, the inventor, made no reference in his material to storeroom locks. Paragraph 224 indicates that the only lock he referred to was Abloy. Mr Garland only had a look at the DS60 and did not see the storeroom locks as relevant. Paragraph 194 of Justice Hely’s judgment confirms that. Mr Alchin only looked at the DS60. He does not suggest the storeroom locks are relevant - paragraphs 176 and 178 of Justice Hely’s judgment.
Perhaps lastly an evidentiary reference on this topic - Mr Freestone made it clear that storeroom locks did not have the locking means of claim 13 and that appears from his evidence at volume 1 of the appeal books, page 361, line 5.
GUMMOW J: Sorry, 1 appeal book?
MR BANNON: Page 361, line 5 and page 363, line 14. I will then, as quickly as I may, deal with the Full Court judgment. That appears in volume 3 of the appeal book, commencing at page 1625. Once again I will deal with it by reference to the paragraph numbers. Paragraphs 8 to 10, in particular, 8 and 9, correctly identify the problem in respect of the locking in problem. In paragraph 80 it says:
It was common ground that obviousness is to be determined as against claim 1.
That is not quite right in the sense that the correct way that was accepted by the parties is as appears from paragraph 111 of the same judgment at point (g):
The obviousness issue is whether it is obvious to add to the known 001 integer (vi) in combination.
We accept that. Point (e) identifies the fact that claim 13 was saved by novelty by additional features. That is “(ie add integer (vi) to the 001)”. Then going back to paragraph 93 after setting out his Honour’s reasoning the third sentence:
His Honour rejected Doric’s submission that the “corollary of this”, namely the advantage of unlocking the door from the outside, was also common knowledge.
Again they interpreted that was Doric’s submission. At paragraph 103 their Honours set out in some detail parts of the judgment of the first Full Court, albeit their Honours were not deciding obviousness, but one infers that they felt they received some guidance from these passages. In particular, paragraph 104 refers to a passage from Justice Wilcox’s judgment. In the concluding line, it can hardly be an inventive step simply to say that the solution ‑ ‑ ‑
GUMMOW J: Just slow down a bit, Mr Bannon.
MR BANNON: Paragraph 104 of the judgment. This is their Honours in the second Full Court referring with apparent approval to ‑ ‑ ‑
GUMMOW J: The first Full Court.
MR BANNON: The first Full Court which did not decide the question of obviousness, but there are some statements in, for example ‑ ‑ ‑
GUMMOW J: “No doubt for that reason”, is that the sentence?
MR BANNON: Yes.
GUMMOW J: Or just above that, “Obviousness would not turn on”.
MR BANNON: That statement at the bottom of 104:
Lockwood’s case on obviousness dealt not with the question whether the concept was obvious but whether it was obvious to adopt the particular solution –
His Honour Justice Hely did not get that idea from the way he ran the case and, with respect, there was no way one could.
HEYDON J: In a nutshell you are saying that was not your case on obviousness?
MR BANNON: Absolutely not, no. We could not have defended – claim 33 was the only embodiment which identified the lock release means. In other words, we would have had to give up claims 1 to 32. At paragraph 105 of the judgment they refer to another part of Justice Wilcox’s judgment.
HAYNE J: What do you understand their Honours to be doing in this, recording history, recording argument that is germane to the point before them? What are their Honours doing here?
MR BANNON: Having regard to what their Honours subsequently decide, one infers that in addition to recording history they have picked out certain passages from which they seem to have drawn comfort in their own conclusions, which we submit does not help the proper approach to the matter.
GUMMOW J: We were not very happy on the first journey of this case to this Court on that way of treating it. It seemed to be rather Macbeth-like: willing to wound but afraid actually to strike. They did not actually decide it. What was the point?
MR BANNON: Well, one cannot be conclusive about it, but it does appear that the recitation of – obviously I will leave your Honours to read it more closely – particularly picked out statements in that Full Court judgment and it is not – as a matter of history, it is really picking out questions relating to obviousness. They are subsequently reflected in later reasoning.
HEYDON J: We seem to return to the Full Court in paragraphs 124 and following. I do not say we go there now. I just note that.
MR BANNON: Yes.
HEYDON J: I am just trying to see whether this in 106 and 107 leads anywhere later.
MR BANNON: Well, I think they later come back to say, in fact, they were right. Then their reasoning process starts at 116. That paragraph says:
Doric identified the problem the invention was concerned to solve as the fact that, after an occupant had entered premises by unlocking the door from the outside and then closing it, the internal handle or knob remained locked until the key was used to unlock it from the inside. On the other hand Lockwood identified the problem as the fact that after the occupant had secured entry –
With great respect to their Honours, we do not see the difference between those two propositions. Either is completely acceptable. The difficulty arises in paragraph 118, after referring to the part of the specification, their Honours’ conclusion in the first sentence:
The first four sentences describe the conventional latch assembly, including, in the fourth, its perceived deficiency. The fifth sentence says the deficiency can give rise to serious problems, including being locked in. However the deficiency the invention was designed to overcome was that inherent in the conventional assembly, namely that the key operation of the latch from the outside of the door did not release the inside lock. It is true the specification refers to “serious problems” arising from the configuration of the conventional assembly, but that is a mere consequence of a deficiency in the assembly. In the context of construing a patent specification, the invention was not to solve the consequential problem, but to overcome an inadequacy in the existing art by remedying the deficiency in the assembly. Of course, if that deficiency were cured, the consequential –
In other words, they construe the problem as effectively being the solution. At paragraph 123 they pray in aid and support Justice Wilcox’s statement – it obviously was not a finding:
“it is not possible to release the inside lock from outside the door. As the specification says: ‘In particular, key operation of the latch from the outside of the door will not release the lock.’ The evidence demonstrates that this was widely perceived, in the trade, to be a problem –
We say this is not right. Then at the bottom of the paragraph:
In other words, the solution to the problem of the inside lock not being responsive to the key, or other outside actuator, is to make it so.”
It is only the last sentence’s identification of the problem that is material for present purposes.
It is not material at all, with great respect. It is obiter views. Then paragraph 124, and then paragraph 125 refers to Justice’s Branson’s view on some evidence about auto unlocking and then in paragraph 127 refers to the judgment of this Court. In paragraph 128 we submit there is another error involved. In the second sentence it says:
The Court –
that is the High Court, this Court –
saw the “problem” not as someone getting locked in, but the fact that the unlocking from the outside did not also unlock the inside lock.
With the greatest of respect, that is not what this Court said and to pray in aid this Court’s judgment for that proposition ‑ ‑ ‑
HEYDON J: What we said was at line 40 on 1307:
The problem was that while it was possible for an occupant of the premises to enter by unlocking the door from the outside and then to close it, the internal handle or knob remained locked . . . If the occupant failed to do this on entry, dangerous circumstances could arise.”
MR BANNON: So we say in 128 they misinterpreted this Court’s reasoning and pray in aid the conclusion they reached. Then at 129:
we accept Doric’s submission that the deficiency sought to be remedied, or the problem sought to be cured, by the invention was the fact that operation of the key from the outside of the door did not release the inside lock.
Then there is a reference to Winner at 131 and it picks up the corollary admission point of Justice Heerey. Paragraph 132 identifies, as your Honour Justice Gummow said a little while ago, namely the Full Court said that actually Justice Heerey’s judgment should be interpreted as relying on evidence. Notwithstanding that, at 137 this Court prays in aid Justice Heerey’s judgment in support of reaching the implied corollary admission. So, in other words, this Court recognises that the Full Court did not interpret Justice Heerey’s judgment as relying on implied corollary admission but relied on the evidence but then in 137 prays in aid for support of the implied corollary admission in this case Justice Heerey’s judgment.
HAYNE J: So much appears from the third sentence of 133.
MR BANNON: Yes, your Honour, quite. Then at 138 they deal with some reasoning of his Honour, particularly at 139 at paragraph 211 of his Honour’s reasoning. I took your Honours to this earlier but the first sentence of 140, we submit, just involves error. It says:
The problem referred to in the first sentence is that key operation of the latch from outside does not release the inside lock.
When his Honour the trial judge referred to the fact in that quoted – no witness deposes to the fact that it was understood at the priority date that a solution to the problem identified in the specification, his Honour was correctly referring to the locked in problem. They dismiss that, this Court, the Full Court says, dismisses that by saying “No, his Honour got it all wrong. The problem in the first sentence is effectively the solution”. That…..ignores the implicit corollary admission. I think I need to pause further on that. Then they deal in 141 with Mr Wilson’s evidence and there is a passage there which goes from 141 – and I will not pause to deal with it. The conclusion comes in 144. They say:
we do not discern any ambiguity in Mr Wilson’s evidence. The context makes clear that he was speaking of the preferred embodiment.
We dispute that. His Honour did not come to a view about that, but it says:
Accordingly, it is not possible to derive from his evidence that it was not obvious to him that the problem could be solved by using the outside key to release the inside lock.
That seems to be almost a reversal of onus. But it is plain from the passages where I took your Honour to Mr Wilson’s evidence it just did not occur to him that the solution was to use the outside key. He was telling his clients, his customers, to leave the key on the inside lock. Then the Full Court addresses some evidence in 145 and 146 – this is the Freestone and Blanch evidence. Paragraph 147 starts with the proposition that:
Mr Freestone, Mr Blanch and others at Lockwood knew that the problem with the 001 lock was that operating the key from outside the door did not unlock the inner lock.
Well, that is just a finding of fact without any basis. What they are effectively saying is that it was understood that effectively the problem in the sense of the thing to be resolved was to make the outside key, and he says:
When Mr Freestone says the problem was discussed from time to time over the years, especially when some mishap due to the problem had recently become known, it is to be inferred that those involved did more than just moan about the problem. They must have thought about solving it, by making the key used to unlock the door from the outside also unlock the inner lock.
HEYDON J: Of course, usually if you want to find out what discussions people had in the past, you might ask them questions about it.
MR BANNON: Absolutely.
HEYDON J: Was Mr Freestone asked questions about it?
MR BANNON: No.
CALLINAN J: That is why it has been put in the passive voice.
MR BANNON: Yes, absolutely. But the impetus for reviewing this evidence is the conclusion at 137. You see, by the end of 137 they have concluded that it is obvious based on the implied admission, and not only that it is obvious, that everyone knew that the problem was – it was common general knowledge that everyone knew the solution was to use the key. So it is hardly surprising when they come to deal with this to review the evidence of Lockwood to come to what can only be regarded as judicial, with greatest respect, speculation as to what discussions took place within Lockwood. He then says:
That is what Mr Blanch proposed at the product development meeting that he be authorised to do – investigate the feasibility of solving the problem in that way; in other words, how to do it. Similarly, when Mr Blanch said “What if I could do auto‑unlocking in the 001 project?”, he was not referring to the concept of the outside key unlocking the inside lock, but to how it might be done; the mechanics –
Two points to be making about that. That is not what he said. Firstly, the contemporaneous documents which I have taken your Honours to describe his proposal as a design concept. But despite that, their Honours say he was not talking about a design concept, he was talking about nitty-gritty. Again, we say it is just not open.
When Mr Freestone said “I don’t think you can do it”, he too was directing his mind to the mechanics or nitty-gritty.
He was not asked that.
He was responding to Mr Blanch at the level at which the latter had posed the question.
That was not put to him.
As Mr Freestone said, he responded as he did because he thought the problem would be too difficult to solve. What he and others had put in the “too hard basket” was the way in which the solution to the problem might be brought to fruition; again the mechanics or nitty‑gritty –
In other words, there is a finding there that Lockwood had specifically put within the too hard basket how to implement the solution of using the outside key. No evidence to support that, with the greatest of respect, firstly, and that they refer to a design concept as one interprets something new.
Perhaps I will, just lastly – in effect, this finding means that people in Lockwood for years have been saying, “Oh, goodness me, wouldn’t it be a great idea to have the outside key release the inside lock? We just don’t now how to do it”. Mr Blanch is within Lockwood. He comes up and he says, their finding is, effectively, “Wouldn’t it be a good idea to use the outside key to inside lock?” Well, the fact that he asks the question – either he is a fool and he has not been listening to all the conversations or the fact that he proposes that is antithetical to the conclusion that they reached and we submit that is the case.
Now, one last difficulty on that conclusion is their attempts to interpret what Mr Freestone understood by auto unlocking. It is true the later design minutes – that is subsequent to this conversation – referred to auto unlocking as use of the key, but that was not explained to Mr Freestone, on the face of it, and auto unlocking had an accepted meaning as referring to this kick‑off mechanism which did not involve a key.
If one was concerned as to whether or not Mr Freestone had a particular understanding one way or another, can I just refer your Honours to this piece of evidence, namely, Mr Freestone was asked a question about automatic unlocking at page 370 in volume 1. Here he is asking Mr Freestone about certain documents which were referred to in the inventive process. We refer to the process of identifying the invention. He refers to a kick‑off lever about line 15 and at line 20 he asked Mr Freestone this question:
They were known in the trade in a number of features, including features where, when you shut a door, it automatically unlocked?
So my friend introduces the parlance of automatic unlocking as referring to something which is not referable to the key. He says:
There was a general terminology of a kick off mechanism, not, I wouldn’t specifically say, kick off lever, in the application you speak of where you automatically release locking by closing the door.
Lockwood had a number of products on which that was at least an optional extra?---There were products where we had automatic unlocking, automatic release of the lock by closing the door.
Now, it is not critical, but when the Full Court comes to re‑interpret what Mr Freestone’s response to the auto unlocking suggestion – and that is before it is further clarified by later minutes as referring to the key operation – to get from that response that he necessarily understood it was referring to the key operation, when he was not asked that question and when my learned friend had actually introduced as part of the language of the industry automatic unlocking – correctly, I should add – as including unlocking without a key, the unfairness of the process is just multiplied.
GUMMOW J: I am not suggesting you speak any faster, Mr Bannon, but how are we going for time?
MR BANNON: I should finish in about 10 minutes.
GUMMOW J: That is very quick. We might slow you down. Yes, go on, Mr Bannon.
MR BANNON: Well, I will certainly be finished by 4 o’clock.
GUMMOW J: Yes, all right. At the end of the day their Honours reversed the primary judge.
MR BANNON: Yes.
GUMMOW J: Putting aside this corollary, on the view the judge took of the evidence. How did they manage to do it?
MR BANNON: And we say the way they did it was this leader of the implied corollary.
GUMMOW J: Well, your opponent says, granting that that is not to be relied on, nevertheless what they did still has its own legs. You are seeking to demonstrate that is not so?
MR BANNON: That is right, and their process of reasoning is inherently affected by this error.
GUMMOW J: Yes, I understand that submission.
MR BANNON: At 153 they attempted to dismiss his Honour’s finding in relation to Mr Alchin, bearing in mind his Honour had found that Mr Alchin had copied the bare idea and that his Honour felt that was relevant to the question of obviousness on claim 1. They then proceed, in 153 and following, to effectively say his Honour got it wrong because Mr Alchin was only talking about the preferred embodiment, but their Honours’ reasoning does not answer his Honour’s conclusion that taking the bare idea is relevant. The second‑last sentence of 153 says:
While Mr Alchin did not realise until after the release of the new Lockwood that the problem could be solved in the manner shown by the new lock, Doric’s’ submission has never been that that was obvious. It has always been that the concept reflected in claim 1 was obvious –
In other words, they seem to explain away his Honour’s reasoning process in relation to Mr Alchin on the basis that Lockwood had never submitted that the preferred embodiment was obvious. Well, that is just wrong; they had run that case. This same Full Court in paragraphs 103 and 110 had recognised that.
GUMMOW J: Just a moment, the first sentence of 103.
MR BANNON: Yes, and 110 is the same. So that by the time one gets to trying to explain away his Honour’s finding in relation to Mr Alchin, the Full Court seems to have forgotten that and relies on a proposition which is just plainly wrong. Can I just remind your Honours of, without going to it, paragraph 17 of Justice Hely’s judgment, in which his Honour referred in the last couple of lines to:
The Patent does not have to teach how release means may be constructed as that is a matter within the knowledge of a skilled addressee . . . Mr Catterns QC made it plain that there is no allegation of insufficiency in this regard, an allegation which, if made, would have been antithetical to Doric’s case on obviousness.
His Honour was referring there to the fact that they were running the case, that everything was obvious. They were not running a case to say the preferred embodiment was not obvious; that is, the way in which you implement the solution, but the concept was obvious. You see, if they had run a case to say, “Okay, the preferred embodiment is not obvious, but the – they could not run a case that the preferred embodiment was obvious – perhaps I will start again. I withdraw that.
The difficulty they faced is, which they never explained, if everyone knew what the desirable solution was, why had not anybody implemented it? They were running a case before trial to say the preferred embodiment was obvious, so they never had any satisfactory explanation to solve that dilemma they were in. Once they get to the Full Court, they really switch tack and they say, “Okay, we accept the preferred embodiment is obvious – is not obvious, at least is inventive. The general concept was obvious and the only reason it wasn’t implemented was people didn’t know how to implement it”. But that is a complete change of direction from trial and one which the Full Court failed to recognise.
At paragraph 155 their Honours deal with the dismissal of his Honour’s reliance on the fact that Mr Garland had never come up with a solution. They say there that that is not relevant because in effect Mr Garland was only ever talking about the manner of solving it. The paragraph of Mr Garland’s evidence to which I took your Honours involves him recognising that the proposed solution was lock release means of any type. Secondly, the evidence in transcript makes it clear that Mr Garland was never seized of the solution. Again, in the last sentence of 155, they seem to place reliance on the proposition:
As we have said in connection with Mr Alchin, Doric did not submit that that solution was obvious.
Well, that is wrong; they did. That brings them to this point:
Accordingly, nothing that Mr Alchin or Mr Garland said about “the solution” was to the contrary of the fact that it was understood at the priority date that a solution to the problem was to use the outside key to release the inside lock.
Again, that almost seems to be reversing the onus. That brings them to their conclusion. The four pieces of evidence they rely upon or the four matters they rely upon, as previously discussed in paragraph 157, firstly the admission:
That is available to be taken into account without a witness deposing to it.
We say that is just not so. Then their treatment of the revisitation of Mr Blanch’s evidence and the response, which we submit this is simply not available.
Then, the last point, a fourth point, well into the paragraph, the fact that the lock was sold is part of the common general knowledge. Well, there was no dispute about that. Then 158, the basis on which they felt entitled to interfere with the primary judge’s conclusion was that he answered the wrong question. He said there was just no basis for that. There was a finding of fact by the trial judge who answered the right question. It is a jury question. It is a matter of impression.
GUMMOW J: There is a significant sentence maybe at paragraph 159, the last sentence:
The relevant parts of its notice of contention –
What do you make of that?
MR BANNON: That is an error because it was accepted that ‑ ‑ ‑
GUMMOW J: I have a note with a question mark, “Error conceded by respondent”.
MR BANNON: Yes, that is so. During the course of the argument on the appeal my learned friend sought to amend the notice of contention to assert that those locks which his Honour found were not part of the common general knowledge were part of the common general knowledge. Their Honours ruled that they were not entitled to amend and deal with that.
GUMMOW J: All right, but they seem then to have gone on to have made some fresh findings, as it were, particularly at paragraph 179. They say:
On the basis of the evidence –
which they have described and I think which Mr Catterns now relies on –
a skilled addressee could reasonably be expected –
et cetera.
MR BANNON: Yes.
GUMMOW J: Then at 181, and that brings them to their result.
MR BANNON: Yes. What we say about 179 is, firstly, this is introduced by the context where they have already found in error that those locks are part of the common general knowledge. That is the last sentence of 159. So they start a commencement at 7(3) which deals with locks which were not part of the common general knowledge with a finding that they were part of the common general knowledge. So we say, prima facie, this whole 7(3) section is riddled with error. That is the first point. The second point is, they say in the second sentence of 179:
Perusal of the Lockwood brochures would disclose products described as locks where the use of the key on the outside locks or unlocks both knobs.
That is a reference back to paragraph 167 of their findings which is to say:
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 so as to understand its internal mechanisms. For example, the Lockwood brochure for the storeroom locks (510, 5110 and 5210) says “Key outside locks or unlocks both knobs”.
Pausing there, that is a correct statement of what the brochures say. That does not identify integer (vi). Integer (vi) requires that the key do two functions, namely both unlock the inside lock and also withdraw the latch‑bolt, so that is not integer (vi). That is the first problem. The second problem is the exercise under 7(3) is not an exercise of saying where do we find integer 6?
HEYDON J: I would pause if I were you.
MR BANNON: I am sorry, your Honour. The point I was seeking to make in relation to 167 is their Honours say that the brochures identify integer (vi). Their own statement of what the brochures say involves a conclusion that it does not identify integer (vi). Integer (vi) requires the outside key to do two things, not only unlock the inside lock but also to withdraw the latch-bolt. It is true, as a matter of fact, the storeroom locks did both functions but so far as they rely on the brochures it is misconceived. That is the first point.
The second point is the way their Honours approached it is to say where would a skilled addressee find something which possesses integer (vi)? If one starts the exercise under section 7(3) of saying “Where do I find something which will tell me about integer (vi), ie, the outside key unlocking the inside lock”, one is starting the inquiry at the point where one has assumed knowledge of the invention. In circumstances where the invention is conceiving of integer (vi), ie, the outside key to use the inside lock, their Honours start in saying, “Well, where do we find integer (vi)?” Posing the question that way assumes the answer and that is apparent from the process of reasoning in paragraph 179. In the last two sentences they say:
The evidence establishes that a skilled addressee would know of the problem with locks such as the Lockwood 001 and the consequences that could flow from the problem.
GUMMOW J: We have this phrase “the problem” again.
MR BANNON: And the problem they are referring to is the problem that the outside key did not undo the inside lock, which it should do. The way they have paraphrased the problem, it is the solution. So when they say:
Such a person who read in the brochures that operation of the key on the outside locks . . . could be in no doubt that that information was relevant to the solution of the problem.
Based on their Honours’ reasoning, there was no need to go to section 7(3) at all.
GUMMOW J: Yes, well I think we have grasped your point about that.
MR BANNON: So we say their reasoning process is completely riddled with error on section 7(3). Moreover, I refer again to the points that – to rely on 7(3) a party has to establish by evidence that somebody would be reasonably be expected to go to this material, as I have said. The evidence does not support that. Justice Hely referred to the fact that Mr Freestone did not regard storeroom locks as relevant to rim-mounted locks. That is true in relation to claim 13, which relates to rim-mounted locks. They had no evidence to support it.
Thirdly, their approach to 7(3) admits of a conclusion that you use 7(3) in a way different to the way you approach combination patents under 7(2). What they say is you go looking for the missing integer. As a matter of concept, that is just –7(3) should not be given an interpretation which is different to 7(2).
The accepted way you deal with section 7(2) – and Astra emphasises this – you look at the prior art base, the common general knowledge, and then you say, “Here’s the combination which constitutes the invention”, in this case claim 13. You do not say, “How do I find a missing integer from the prior art base or the extended prior art base?” You look at the combination as a whole and say, “Would it be obvious to arrive at that combination”, which includes 1 to 6 plus the particular locking means. That is not the exercise they were involved in. Their approach authorises a different approach under 7(3) than the one authorised under 7(2) and that is a fundamental error, with respect.
GUMMOW J: I am not saying you are not right, but how do you fit your construction in the terms of 7(3) and 7(2)?
MR BANNON: Starting with 7(2):
an invention is to be taken to involve an inventive step –
so in this case claim 13 invention –
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 before the priority date –
and just pausing there, that is comparing the final combination with the common general knowledge:
whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3) –
So the only effect of (3) is to add to the common general knowledge certain individual pieces of information. You add them in, you still ask the same question, namely is the combination as a whole obvious in the light of common general knowledge extended by 7(3).
GUMMOW J: By certain publicly available material otherwise not part of the common general knowledge as previously understood.
MR BANNON: Yes. You do not go looking for integer (vi).
GUMMOW J: At paragraph 181 the Full Court says:
Had the hypothetical skilled worker considered the common general knowledge referred to at [159] –
Should that be 157? Perhaps that proceeds from 157, I suppose.
MR BANNON: I think 159 has the accepted error but the last line says:
The relevant parts of its notice of contention . . . so far as it relates to the storeroom locks –
that contention was to say, although they do not spell it out there, that those locks form part of the common general knowledge. So therefore 181 when it refers back to 159 presumably is intending to pick up that material.
GUMMOW J: That is what I am wondering about. Anyway, your submission is that it does, is it?
MR BANNON: It does, yes.
GUMMOW J: And that therefore that impairs 181?
MR BANNON: Absolutely. So they go down the 7(3) route already looking for material which is not part of the common general knowledge, having found that it already is, looking to find – on the basis of the inquiries to look for the solution which they have already determined someone knows and without anyone jumping in the witness box to say a person in the art would have had regard to this and would have regarded it be relevant in circumstances where people have given evidence which was contraindicative of that proposition.
GUMMOW J: What relief do you seek from us? You seek an injunction now, do you, from us?
MR BANNON: Yes, in terms of claim 13 and ‑ ‑ ‑
GUMMOW J: What happens about delivery up and damages or an account?
MR BANNON: That would have to go back to the Federal Court for determination.
GUMMOW J: What, as to the availability of those remedies or the form of those remedies?
MR BANNON: Sorry, only as to damages. I had not actually given consideration to ‑ ‑ ‑
GUMMOW J: Can you both give that some thought overnight just so that we know where we are going?
MR BANNON: Yes. There is one other issue which I did mention to my learned friend. There is an existing stay in relation to the revocation order. We would seek to maintain – we are obviously not revisiting the novelty finding but we have always indicated and we wish to maintain that if we are successful on overturning the obviousness finding, we would wish a stay on the novelty revocation to permit an application before a single judge to amend.
GUMMOW J: You want to amend, do you not, and escape the consequences of novelty, or try to?
MR BANNON: Yes. That is right. Our learned friends no doubt will violently oppose that but all we ask is the opportunity to make that application.
GUMMOW J: All right. Well, I do not think the submissions at the moment in the order that is proposed at the last page there, page 20, fully flag all these points.
MR BANNON: No, can we ‑ ‑ ‑
GUMMOW J: I am just suggesting you both give that some thought overnight, that is all.
MR BANNON: We will prepare a form of order which reflects that stay point and show it to our learned friend and seek to hand it up tomorrow. May it please the Court.
GUMMOW J: Yes, Mr Catterns.
MR CATTERNS: May it please the Court. Your Honours, in our submission, the question of admissions as formulated by our learned friends is a complete red herring. His Honour Justice Hely made unchallenged findings which accord precisely with the admission that we relied on and which the Full Court relied on. Our friends rather skip over those in their journey through his Honour’s reasons.
I will come on in a moment and submit that of course we do rely on some admissions which accord precisely with his Honour’s findings. They accord with the way her Honour Justice Crennan put it and it fits exactly with paragraph 137 of the Full Court’s reasons and our learned friends with their teasing of the implicit corollary admission conflate various passages in the Full Court’s reasons and I will make that good. But first, your Honours, may I make good our submission that his Honour’s findings are all we need and, indeed, they correspond, I submit, exactly with the approach in the Winner Case. They are findings as to the state of common general knowledge.
We do not say that the specification admits that the invention is obvious. Of course it does not. When one looks at those first two pages of the specification it plainly does not say that, nor does the specification admit, as our learned friends say, that the solution is common general knowledge. Of course it does not. It makes an admission about an attribute of the existing lock which it clearly describes in terms as his Honour held are that this attribute or this feature of it, this property of it – I am trying to avoid a word like “problem” – is common general knowledge.
We stop there. That is common general knowledge. It is common general knowledge that people get burnt to death as a result of it so as his Honour held there is a perceived need to fix that. That is when a question of judgment for the court comes in and as a matter of judgment it is obvious to provide that improvement. The outside lock does not undo the inside key. It is obvious as a matter of judgment for the court in the ultimate question. It is obvious to let the key do it.
That is what Justice Heerey and the Full Court meant in Winner by “corollary”. That is what the Full Court meant in paragraph 137 by “corollary” and that is what his Honour Justice Hely understood by “corollary” when his Honour formed an initial impression that this invention was obvious before moving off that impression because of the evidence that is referred to in paragraph 211, and again in 212, which the Full Court analyses in detail to show why his Honour was wrong to rely on it.
So, your Honours, all the submissions about the nature of this admission, we respectfully submit, miss the point utterly. The specification in an utterly conventional way makes them admissions about common general knowledge which are not challenged, which his Honour Justice Hely made parallel findings about and which lay the groundwork for the judicial question of whether the step was inventive.
Your Honours, the findings are in paragraphs 198, his Honour’s reasons at 192 ALR, 1121 to 1120 in the appeal book, I think – 198 - your Honours we accept and no doubt we share part of the blame that the use of the word “problem” and the use of the word “solution” causes difficulties in this case.
GUMMOW J: And the word “corollary”.
MR CATTERNS: Absolutely, your Honour. We took the word out of the Winner Case but we respectfully admit that that word and the word “desiderata” while I am here, are words that only get one into trouble. The question is, is that step inventive? When you know that the key does not undo the lock that leads to people being locked in with dangerous circumstances, as the High Court said. Is it obvious or does it involve an inventive step to choose to make a lock where the key does undo the lock?
We all know, and our friends accept, any form whatsoever of means whereby the key does undo it comes within the claim. So that is the judicial question. That is the ultimate question and, we submit, whether one calls it a corollary, that is the question for judgment. In some cases you do get somebody sitting happily in a solicitor’s office to expound upon why or not that last step is obvious. But, your Honours, this is a matter where the inventive step is to think of the idea when the key does not unlock the lock, to let it undo the lock. How bad, I ask rhetorically, would that be as a piece of hindsight evidence to say it would have been obvious to do so when, of course, your Honours, there is other – the evidence our friends refer to is what we would call secondary indicia, secondary considerations.
Well‑known ones are commercial success, long‑felt want, unfelt want, others have tried and failed. Here, your Honours, others have tried and succeeded. The storeroom locks come within claims 1 to 6 because somebody did think of using an outside key to undo the inside lock, so people did not freeze to death or suffocate in storerooms. It is precisely the same type of problem, people being locked in, and, of course, to use the words of the US Supreme Court, it was not beyond the skill of the calling to come up with that simple idea. So, your Honours, sorry for that digression. At 198 his Honour Justice Hely said:
The fact that a person could be locked inside using locks like the old Lockwood 001 deadlatch was common general knowledge –
Your Honours, that is a finding –
at and prior to the priority date.
Indeed, our friends proved it:
Both Mr Wilson and Mr Freestone gave evidence to that effect.
Then his Honour goes to the specification:
The specification discloses that in typical latch assemblies, key operation of the latch from outside the door does not release the lock –
But importantly, your Honours:
That disclosure is made in the context of a discussion of the practical disadvantages involved in the use of typical –
and your Honours saw the words “typical”, “common” and “general”, “typically”, et cetera, appear five, six or seven times on those pages –
so as to suggest that it is a matter well known to skilled workers in the trade.
So, your Honours, that is an utterly conventional use of an admission in the specification as to the state of common general knowledge. Then, your Honours, exactly as Justice Heerey did in Winner, Justice Hely says as a fact outside the specification, one only has to operate the old Lockwood 001, for example, to observe that the inner handle remains locked, notwithstanding key operation of the latch on the outside.
So, your Honours, they are the two elements that found the judicial conclusion in the Full Court’s 137, that is, there is no inventive step to move from those two unchallengeable facts to the idea of letting the key do it. So all one needs to do is add “does not remain locked”.
Then, your Honours, there is a submission we made at paragraph 199. We did not submit that the specification said that the admitted – that the corollary, the advantage of unlocking the door was common general knowledge. As his Honour says, the evidence cited in support of this submission was Mr Freestone, which does not support the submission. As your Honours know, we have a debate with our friends, a disagreement with our friends, as to whether or not the Full Court was right in its reading of Mr Freestone’s evidence.
Your Honours, this is a pure Fox v Percy case, we would say, because we are arguing about – it has nothing to do with credit, it has nothing to do with the impression when he gave the evidence, because it is written evidence which the Full Court was in precisely as good a position as the trial judge to evaluate, and I respectfully submit that the answer to his Honour Justice Heydon’s question is, of course we did not cross‑examine on it because we did not want to cross‑examine him out of it.
That will either be right or wrong in that judgment, as your Honours will hold, because we submit that that is the proper reading of his evidence, and I will take the Court to it. Then his Honour goes on dealing with the detail of Mr Freestone’s evidence and the too hard basket. What is it that they put in the too hard basket? They had a problem with the 001, which was common general knowledge, which you only had to touch it – or to operate it to know, namely it is a dual problem, let us agree, that the key did not undo the lock; as a result people got locked in. That is what was in the too hard basket.
GUMMOW J: How about the first sentence at paragraph 201?
MR CATTERNS: I beg your pardon, your Honour?
GUMMOW J: “Doric submits that claim 1 is obvious on its face”. Is that the way it was run?
MR CATTERNS: Your Honour, that may well be a very fair summary of what we submit, but we do not submit that now. We say it is obvious in the way I attempted to put it in the last five minutes, that it is, as a matter of judgment, once you are given those two items of common general knowledge, it is not inventive to ‑ ‑ ‑
GUMMOW J: Judgment in reliance upon what?
MR CATTERNS: Upon the common general knowledge, your Honour.
GUMMOW J: Upon the evidence.
MR CATTERNS: Yes, your Honour. The evidence and findings, on the findings as to common general knowledge, and the two elements of the findings are the key does not undo the lock, people get locked in ‑ ‑ ‑
GUMMOW J: Wait a minute. Do you seek to controvert the findings of the primary judge on the question of evidence?
MR CATTERNS: I beg your pardon?
GUMMOW J: The primary judge took a certain view of the evidence on obviousness, what it came to. Do you dispute that?
MR CATTERNS: Yes, your Honour. In his Honour’s paragraph 211, in particular, where his Honour moved from his initial impression – if your Honour would not mind, I would come to them in detail – but we adopt ‑ ‑ ‑
GUMMOW J: We just want to get it in our head before we adjourn.
MR CATTERNS: I am sorry, your Honour. Yes, your Honour, we do, and we submit that the Full Court unpicked his Honour’s 211.
GUMMOW J: Now, what is the problem with 211? Is it a legal problem?
MR CATTERNS: No, your Honour, it is a factual problem. His Honour slips into the detail – internal mechanics of the locks in looking at that evidence as opposed to the bare conception of the idea, and that is what the Full Court held at 140 to 159.
HAYNE J: Where do we see the slip into mechanics?
MR CATTERNS: Your Honour, first of all, “It was not obvious to Mr Freestone or Mr Wilson”. The Freestone question depends upon my going in detail to Mr Freestone’s evidence, but my submission is that the evidence of Mr Freestone and of Mr Wilson answered the paragraph of Mr Garland that our friend took your Honours to, and the evidence was two solutions, which he called the Doric solution, where you use the key to drive the cam directly, or the Lockwood solution ‑ ‑ ‑
HAYNE J: Maybe. Where in 211 do we see his Honour descend into questions of mechanics?
MR CATTERNS: First of all his Honour says:
It was not obvious to Mr Freestone or Mr Wilson.
That will take us back to the evidence of Mr Freestone and Mr Wilson. Your Honour, the next sentence does the same:
The fact that resolution of the problem was placed in the “too hard” basket –
We submit, properly read that evidence, as the Full Court said in 147, takes us back to the mechanics of the design. Your Honour, of course we rely on the next paragraph:
The evidence of Mr Wilson and Mr Freestone establishes that there was a perceived need to find a solution to the problem, but it had not occurred to Mr Alchin or Mr Garland until after the release of the new Lockwood 001 that the problem should be solved in a manner which, in Doric’s submission, was obvious.
We submit when his Honour says “in a manner” his Honour is descending to detail. Your Honours, we accept that it is arguable the other point of view that his Honour did keep them apart there ‑ ‑ ‑
GUMMOW J: Did keep what apart?
MR CATTERNS: The idea of the bare idea, on the one hand, your Honour, and the detailed mechanics of the 001. That is possible because this paragraph is ambiguous ‑ ‑ ‑
HAYNE J: Is the bare idea relevantly to use the outside key to release the inside lock? Is that what you refer to as the bare idea?
MR CATTERNS: Yes, your Honour. But, your Honour, it is clear by 222, when his Honour is on the question of section 7(3), his Honour 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 –
For his Honour to use that as an answer to our case on the present claims which relate to the bare idea shows, we respectfully submit, that his Honour is descending to the internal mechanisms.
CRENNAN J: But maybe all these matters of detail are another way of making a general point which is, it is relevant to assessing whether the step is inventive to use the key that no skilled workman has actually come up with it over a period of time.
MR CATTERNS: But, your Honour, that kind of secondary indicator is a relevant consideration. Those sort of secondary indicia have weight depending on how closely – you identify what you are trying to infer from it and make your circumstances all things equal. If the question is why did not anybody come up with this particular improvement to the 001, the answer is they dominated the market, they had 92 per cent of the market, it was their lock, they did not need to. When they did come up with this invention, they shelved it for three years. So that sort of point does not rise above a debating point.
If the question is why did you not add integer (vi) to claim 1, the answer is many people did - the Lockwood storeroom locks, the Lockwood 530 which was on very many front doors, the Falcon storeroom lock, the Boyd mortice lock. As the Supreme Court says in the John Deere Case in the US, the fact that other people did not get there can be outweighed by the fact that this is a very simple step over the prior art. Those secondary indicia are only secondary indicia.
The Supreme Court says in the John Deere Case they are helpful secondary indicia when the technology is hard for us but, your Honours, this could not be a more simple technology, relevantly.
GUMMOW J: That is 383 US 1.
MR CATTERNS: Yes, your Honour, thank you. I was going to come to that tomorrow. Noticing the time, your Honours, if your Honours do not mind I just wanted to finish my submission that this is based on ‑ ‑ ‑
GUMMOW J: Yes, do that. It is useful to get this in our heads.
MR CATTERNS: Yes, your Honour. So, we respectfully submit that his Honour – in 198 there is the finding we relied on. This has nothing to do with implicit ‑ ‑ ‑
GUMMOW J: You make the point that the ingenuity of Mr Bannon’s client’s camp was not exercised because they were in such a strong position, anyway, in the market. It was eventually stimulated by market concerns. We saw that in their brief.
MR CATTERNS: Yes, your Honour.
GUMMOW J: But, you say, other people in the lock‑making world, particularly the storeroom people, had come across this idea and employed it.
MR CATTERNS: Yes, your Honour. Lockwood itself had. The storeroom locks were Lockwood locks. The storeroom locks ‑ ‑ ‑
GUMMOW J: What is the big difference between the storeroom lock and the domestic lock?
MR CATTERNS: It just so happens, your Honour, that they anticipate claim 12 but their detents go axially instead of radially. That is why they do not anticipate.
CRENNAN J: Yes, plus not a rim lock, is that right?
MR CATTERNS: No, your Honour, that is not a reason they do not anticipate because claim 1 and claim 13 are not limited to rim locks. Indeed, the picture in the patent is not a rim lock.
CRENNAN J: No, I was just addressing the question, the actual differences. I understand your point about claim 1.
MR CATTERNS: I am sorry, your Honour. My friend was right in the passage he took your Honours to. I think, as a matter of fact, in a rim lock you are more likely to have the detent going one way as opposed to the other way and that is why they anticipate claim 12, but not claim 13 or 14.
GUMMOW J: You say that although they did not anticipate, it is a factor to be taken into account in obviousness.
MR CATTERNS: Yes, your Honour, of the secondary indicia type.
GUMMOW J: Yes, of the secondary indicia type.
MR CATTERNS: Yes, in short, it is not beyond the skill of the calling, the wit of lock designers, to come up with the idea of the outside key doing it.
GUMMOW J: Is that how the case was run at trial?
MR CATTERNS: Yes, your Honour. Our first argument was that they were common general knowledge and that was rejected and we, of course, do not press that now. But now we can rely on them under section 7(3), but also we can rely on them as secondary indicia, just as our friend can rely on Mr Alchin not coming up with it or Mr Garland not coming up with it.
GUMMOW J: You had better explain what you mean by this term “secondary indicia”, I think.
MR CATTERNS: Your Honour, the phrase is used in the US very regularly now following the John Deere Case, or “secondary considerations”. They mean things such as this Court discussed in Firebelt, commercial success. These are things that do not directly go to that step, but are other objective touchstones by which the Court can, as it were, be more comforted. Failure of others, of course, is a relevant one, but you have to look at the circumstances. The Court said that about commercial success in Firebelt and his Honour Justice Aickin says it in VR v Wellcome.
GUMMOW J: Yes, it has been said often.
MR CATTERNS: Yes, your Honour, unfelt want, long‑felt want and so on. It is a version of, in a way, of long‑felt want. That sort of implies others are trying and failing. It seems that that is what ‑ ‑ ‑
GUMMOW J: Why did you not manage to persuade Justice Hely of these matters in relation to the example, the storeroom lock?
MR CATTERNS: Well, his Honour held that they were not common general knowledge. Paragraph 211 is a series of secondary indicia. Each of those is a secondary indicia. Copying is a classic secondary consideration and I have been in a case, the Elconnex Case, where our invention was copied the very day of our launch and the court said, “Well, bad luck”. Nevertheless, it is obvious it was a simple mechanical invention. It is obvious, notwithstanding that, and it went on to show you have to analyse each of these indicia because otherwise they do not arise above debating points. What precisely can you infer from one of these indicators? In the end, your Honours, they do not substitute for the question of judgment for the court which has given these findings – and I will just, if I may, identify the last two – was it obvious to decide to let the key do it?
Your Honours, the other two are – perhaps this is about another three paragraphs. His Honour says in 200:
This is not a case in which the perception of the problem can be said to be inventive because the problem was well-known –
that is a repetition of a finding in our favour, but his Honour says:
any inventiveness lies with the solution.
I submit that that is beginning to suggest that his Honour – because his Honour is dealing just with this little group of claims now – is going to descend to the nitty‑gritty, as the Full Court called it, because his Honour should have just said “any inventiveness lies with the conception, the bare idea”. Your Honours, I will come back to 201, where I accept we said known desiderata and I wish we had not, only because it leads one off on red herrings, your Honours.
GUMMOW J: Exactly. We get very tired of catching them at our level. Even when counsel stands up and leads mea culpa and he is gone.
MR CATTERNS: I undertake to avoid them to best of my ability, your Honour. In 202 though his Honour makes findings about what the admission is in the specification. He says:
The specification does not admit that claim 1 is obvious. The specification accepts two matters as generally known –
and his Honour means common general knowledge, namely:
–key operation of the latch from the outside of the door does not release the inner handle,
– as a result, people may be locked in.
Now, whether or not we want to call that a problem or a defect or an attribute or a property, nevertheless the question is: given those two things, as a matter of judgment is it inventive to say “cross off the ‘not’ in that first dot point”?
Then, your Honours, I will come back to Winner because we respectfully submit that both reports assist us. His Honour, after referring to Winner and also to Raychem which I accept does not help particularly, says in 207:
Guided by Re Raychem . . . and Winner . . . my initial impression was that the generality of the description of the invention in claim 1, and in particular feature (vi), was sufficient to lead to the conclusion that the alleged invention as claimed is obvious.
Then his Honour went on considering factual questions up to 211 which we will, if we may, attack tomorrow. But the one case his Honour refers to which we will give the Court copies of – it was not on our list – is this Intalite Case in 209 which is a tried and failed case.
GUMMOW J: In 209 of what?
MR CATTERNS: His Honour’s paragraph 209. It is in [1987] RPC. We have copies which we will give the Court Crier as soon as the Court ‑ ‑ ‑
GUMMOW J: Give them when we rise, as we are about to do. How much longer are you likely to take, Mr Catterns, or to need, would perhaps be a better way of putting it?
MR CATTERNS: Your Honour, I fear up to two hours, so I ‑ ‑ ‑
GUMMOW J: No need to be afraid about it.
MR CATTERNS: I think Mr Jackson might be not before lunch, your Honour.
GUMMOW J: Yes, he will not be before lunch. The question is whether he is after lunch.
MR CATTERNS: Your Honour, I hope that I will take two hours. I expect to take two hours.
GUMMOW J: Yes, very well. We will adjourn until 10.00 am.
AT 4.24 PM THE MATTER WAS ADJOURNED
UNTIL THURSDAY, 7 SEPTEMBER 2006
0