Mather v Lockwood Australia Pty Ltd - [2001] FCA 1814

FEDERAL COURT OF AUSTRALIA
Mather v Lockwood Australia Pty Ltd [2001] FCA 1814
PATENTS – claimed invention relating to lock barrel assembly and key – opposition upheld by Commissioner of Patents – appeal by applicant – whether requirements of novelty and inventiveness clearly not satisfied – whether specification meets requirements of s 40 of Patents Act 1990 – nature of appeal from opposition proceedings – whether patent would clearly be invalid
Patents Act 1990 (Cth) ss 7, 18, 40, 59, 60, 104
F. Hoffman La-Roche AG v New England Biolabs Inc [2000] FCA 283 cited
Décor Corporation v Dart Industries (1988) 13 IPR 385 cited
Leonardis v Sartas (No. 1) Pty Ltd (1996) 67 FCR 126 cited
Winner v Ammar Holdings (1993) 25 IPR 273 cited
R.D. Werner & Co Inc. v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 cited
Universal Oil Products Co. v Montsanto Co. (1972) 46 ALJR 658 cited
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 cited
Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 cited
Tidy Tea v Unilever (1995) 32 IPR 405 cited
SEIJA AULIKKI MATHER v LOCKWOOD AUSTRALIA PTY LTD
NG 1000 OF 1997
EMMETT J
20 DECEMBER 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 1000 OF 1997

BETWEEN:

SEIJA AULIKKI MATHER
APPLICANT

AND:

LOCKWOOD AUSTRALIA PTY LTD
RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

20 DECEMBER 2001

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.   The appeal be upheld.
2.   The decision of the delegate of the Commissioner of Patents dated 13 May 1997 be set aside.
3.   In lieu of the decision referred to in Order 2, the decision be that the grounds of opposition raised by the respondent are not made out.
4.   The respondent pay the applicant’s costs.
Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 1000 OF 1997

BETWEEN:

SEIJA AULIKKI MATHER
APPLICANT

AND:

LOCKWOOD AUSTRALIA PTY LTD
RESPONDENT

JUDGE:

EMMETT J

DATE:

20 DECEMBER 2001

PLACE:

SYDNEY

REASONS FOR JUDGMENT

Australian patent application number 652160 (“the Application”) was accepted by the Australian Patent Office (“the Office”) on 29 June 1994. The grant of a patent in respect of the Application was opposed by the respondent, Lockwood Australia Pty Ltd (“Lockwood”), pursuant to notice of opposition dated 18 November 1994. A hearing concerning the opposition was conducted by a delegate of the Commissioner of Patents (“the Commissioner”). On 13 May 1997 the delegate made a decision “that the opposition succeeds”. The applicant, Seija Aulikki Mather (“the Applicant”), is the assignee of all of the rights in the Application. However, the Applicant took no part in the hearing.
The delegate recorded the belief that the complete specification that is the subject of the Application (“the Specification”) could be amended to overcome the grounds of opposition and,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Mather v Lockwood Australia Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2001] FCA 1814
Decision Date: 20 DECEMBER 2001

CaseChat Overview and Summary

The case of Mather v Lockwood Australia Pty Ltd concerns a patent application for a coded locking mechanism. Lockwood Australia Pty Ltd opposed the application on the grounds that it lacked novelty, did not involve an inventive step, and did not comply with the statutory requirements for patentability. The Commissioner’s delegate upheld the opposition, but the applicant appealed to the court. The court was required to decide whether the patent application met the criteria for novelty, inventive step, and compliance with the statutory requirements for patentability.

The court found that Lockwood's arguments regarding the novelty and inventive step of the lock barrel and key claims were unconvincing. The court held that the invention met the criteria for novelty and inventive step. The court also found that the specification complied with the statutory requirements for patentability, despite the delegate's earlier conclusion to the contrary. The court observed that the delegate did not have the benefit of the applicant's submissions, which may have influenced the outcome. The court found that the opposition raised by Lockwood was not made out and set aside the decision of the delegate. The court ordered that the appeal be upheld, the decision of the delegate be set aside, and that the respondent pay the applicant's costs.

Orders

Orders of the court

1. The appeal be upheld.

2. The decision of the delegate of the Commissioner of Patents dated 13 May 1997 be set aside.

3. In lieu of the decision referred to in Order 2, the decision be that the grounds of opposition raised by the respondent are not made out.

4. The respondent pay the applicant’s costs.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

EMMETT J

The delegate also concluded that:· Claims 1, 6, 10 and 13 are not clear;· Claims 1 and 10 are not fairly based on the matter contained in the body of the Specification; and· the Specification does not fully describe the claimed invention.The delegate concluded, therefore, that the specification does not comply with s40(2) and s40(3).DELEGATE’S CONCLUSION The delegate concluded, therefore, that the opposition succeeded on all grounds relied on. However, as I have said, the delegate was also of the view that the Specification could be amended to overcome those grounds. No indication was given as to the amendments that would achieve that result. In any event, as I have said, no application to amend was made with the time limited be the delegate. Accordingly, the appeal falls to be decided by me on the basis of the Specification in the form in which it was considered by the Commissioner’s delegate. I should observe that, because the Applicant took no part in the proceeding before the delegate, the delegate did not have the benefit of the submissions made to me on behalf of the Applicant. GROUNDS OF OPPOSITION IN THIS PROCEEDING By its amended points of opposition filed in this Court, Lockwood relies on the following grounds:· the invention as claimed in any claim of the Application is not a patentable invention because it is not novel, when compared with the prior art base as it existed before the Priority Date;· the invention as claimed in any claim of the Application is not a patentable invention because it does not involve an inventive step when compared with the prior art base as it existed before the Priority Date;· the specification filed in respect of the Application does not comply with s 40(2) or s 40(3) of the Act. Particulars of those grounds were furnished in the amended points of opposition filed with leave of the Court. I shall deal with the particulars below in the course of dealing separately with each of the grounds relied on by Lockwood. Several questions as to the construction of the Specification are raised by Lockwood. I shall deal with the questions of construction in the context of the particular ground of opposition. NOVELTY Challenges on the ground of lack of novelty are mounted against both the lock barrel claims and the key claims. I shall deal with each group of claims separately. THE LOCK BARREL CLAIMS Feature 1.7 (see paragraph [26] above) provides the foundation for the Applicant’s case that there exists a “coded locking bar feature”. Lockwood contends, however, that that feature does not arise from a fair reading of Claim 1. Lockwood says that the purpose and function of the pin or projection in the disc, as described in feature 1.7, is not specified, except that it is to be received into the locking bar (feature 1.5), and so permit the locking bar to move to an inner position, thereby facilitating the opening of the lock. Claim 1 refers to a pin or projection adapted to be received in a slot, groove, hole or the like. It does not refer to the pin or projection being contained within the outermost circumference of the disc. The Specification does not refer to a portion of the disc being grooved or cut away. On the other hand, the embodiments in the Specification show the discs having a cut away portion to receive the locking bar. Lockwood contends that Claim 1, and all of its dependent claims, require the locking bar to be received into the disc and not the reverse. That assertion is correct in one sense, namely, that when the pin or projection of each disc is aligned with the appropriate slot groove or hole, the locking bar will then be able to move radially towards the centre of each disc. That is how the lock opens. Nevertheless the pin or projection is still received into the slot, groove or hole.

Ratio Decidendi

Legal Principle Established

Established by: EMMETT J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1000 OF 1997

BETWEEN:	SEIJA AULIKKI MATHER APPLICANT
AND:	LOCKWOOD AUSTRALIA PTY LTD RESPONDENT
JUDGE:	EMMETT J
DATE OF ORDER:	20 DECEMBER 2001
WHERE MADE:	SYDNEY

JUDGE:	EMMETT J
DATE:	20 DECEMBER 2001
PLACE:	SYDNEY