Michael John Arieni v Sun-Wizard Holding Pty Ltd
[2021] APO 20
•11 May 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Michael John Arieni v Sun-Wizard Holding Pty Ltd [2021] APO 20
Patent No:2014100975
Title:Solar Powered Outdoor Lighting Device
Patentee:Sun-Wizard Holding Pty Ltd
Opponent/Requestor: Michael John Arieni
Delegate:Ranganath Subbarayan
Decision Date: 11 May 2021
Hearing Date: Written submissions completed on 27 January 2021
Catchwords: PATENTS – certified innovation patent – opposition to surrender of patent under s137 of the Act – request for a declaration under s191A of the Act – inventorship and entitlement to the invention – offer to surrender refused – declaration under s191A not made – further information requested – costs awarded
Representation: Counsel for the opponent/requestor: Ben Fitzpatrick
Patent attorney for the opponent/requestor: Spruson & Ferguson
Patentee: Ian Fry, Director
Patent attorney for the patentee: Wynnes Patent & Trade Mark Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent No:2014100975
Title:Solar Powered Outdoor Lighting Device
Patentee:Sun-Wizard Holding Pty Ltd
Date of Decision: 11 May 2021
DECISION
I refuse to accept the offer to surrender the patent or to revoke the patent.
I find that Michael John Arieni is the sole inventor of the innovation patent. Consequently, subject to any appeal, the Register will be amended to record the inventor as Michael John Arieni.
I am unable to make a declaration under s191A(2) as it is unclear whether Michael John Arieni or Key Logic Pty Ltd should be recorded in the Register as the patentee of this innovation patent. I allow Michael John Arieni a period of one month from the date of this decision to provide further information on this point.
REASONS FOR DECISION
BACKGROUND
Innovation patent AU 2014100975 in the name of Sun-Wizard Holding Pty Ltd (the Patentee) was filed on 25 August 2014 and granted on 11 September 2014. The granted innovation patent certificate lists the inventors as Ian Fry and Richard McCleary.
Examination of the innovation patent was requested by Michael John Arieni on 8 October 2014. Mr Arieni also filed a notice under the provisions of s28, identifying certain prior art which he alleged anticipate the claimed invention.
A first examination report issued on 22 December 2014 which included an objection that the claimed invention was not novel and lacked an innovative step over various prior art including some that were identified in the s28 notice.
On 10 March 2015, the Patentee filed proposed amendments to the specification which they submitted overcame the adverse findings. However, a second examination report issued on 11 March 2015 which maintained that the claimed invention still lacked novelty and innovative step.
The Patentee responded with some minor amendments and submissions in rebuttal on 13 March 2015. This then led to the patent being certified on 16 March 2015.
Mr Arieni filed on 16 April 2015, further prior art that he alleged deprived the claimed invention of novelty and innovative step.
A delegate of the Commissioner wrote to Mr Arieni on 14 May 2015 advising that the Commissioner having considered the new prior art, was of the view that the certified claims of the patent were still valid even in light of this prior art.
On 12 September 2019, Mr Arieni filed a notice of opposition to the certified innovation patent along with a Statement of Grounds and Particulars and evidence in support of the opposition.
The Patentee was advised by the Commissioner that their evidence in answer should be filed on or before 12 December 2019.
On 4 December 2019, the Patentee filed an application to surrender the innovation patent under the provisions of s137 of the Patents Act.
The Commissioner wrote to the parties that the notification of the surrender would be advertised for a period of 1 month in the Australian Official Journal of Patents dated 19 December 2019 and provided no opposition was filed, the innovation patent would be revoked in accordance with the Patentee’s offer to surrender.
On 10 January 2020, Mr Arieni withdrew the notice of opposition to the innovation patent and filed a notice of opposition to the surrender of the patent asserting that the current Patentee is not solely entitled to the patent and that Mr Arieni is an inventor of the patent and, therefore, Mr Arieni is entitled to the patent (either solely or along with the current patentee) and that the revocation of the patent would therefore unfairly disadvantage Mr Arieni.
On the same day, Mr Arieni also filed a request under s191A to record Michael John Arieni (the Requestor) as the patentee of the innovation patent. This request was accompanied by a Statement of Grounds and Particulars and evidence in support. This evidence in support is identical to that filed by the Requestor for the opposition to the surrender of the patent.
After inviting comments from the parties, the Commissioner made the following directions:
1. The request for a declaration under s191A(2) and the opposition to surrender of the patent would be heard and decided together.
2. The evidence filed in the s191A(2) matter would be evidence in the opposition to surrender of the patent and vice versa.
3. The Patentee had two (2) months to file any evidence in answer to the evidence filed by the Requestor in support of its entitlement to the patent and following that the Requestor had one (1) month to file any evidence in reply to the evidence in answer.The Patentee filed their evidence in answer on 1 June 2020.
The Requestor filed their evidence in reply on 29 July 2020.
Due to the ongoing failure of the parties to nominate mutually suitable dates for a hearing by
videoconference, the Commissioner advised the parties on 22 October 2020 that the hearing would be by way of written submissions only.
The written submissions were completed on 27 January 2021 and comprise submissions in support and submissions in answer from both the Requestor and the Patentee.
I also note that the Requestor has in their submissions in answer for the hearing included as an attachment a Transcript of Proceedings of evidence given by Ian Fry on 23 May 2019 during cross-examination in the Federal Court proceedings QUD607/2017. My understanding is that these proceedings relate to a dispute between Key Logic Pty Ltd and Sun-Wizard Holding Pty Ltd in relation to Australian Design 332890 in the name of Key Logic Pty Ltd. In my view, this is clearly new evidence that the Patentee has not had an opportunity to respond to. The Requestor has also not requested the Commissioner to bring this document into the proceedings using principles similar to those that apply to bringing in new information into opposition proceedings under the provisions of regulation 5.23. In my view, this new information is unlikely to be of significant relevance to the present proceedings. I have therefore not had regard to this new information in arriving at my decision.
GROUNDS OF OPPOSITION TO SURRENDER AND DECLARATION UNDER S191A(2)
The grounds for both matters are the same, namely that the Patentee is not entitled to the Patent; or is entitled to the Patent but only in conjunction with Michael John Arieni.
The particulars for this ground are that the innovative features of the claimed invention were conceived by Mr Arieni and disclosed to one of the named inventors Ian Fry during his employment with Exlites Pty Ltd. and that the true inventor is Michael John Arieni.
EVIDENCE
As noted earlier, both parties have filed evidence that is common to both matters.
Evidence in support from the Requestor comprises:
·Declaration of Michael John Arieni dated 20 August 2019 (Arieni #1) with exhibits MJA-1 to MJA-6
Mr Arieni is the managing director of Key Logic Pty Ltd since 2003 and Key Logic was the sole shareholder of Exlites Pty Ltd (Exlites) till Exlites was deregistered in 2014.
Evidence in answer from the Patentee comprises:
·First declaration of Ian Fry dated 30 May 2020 (Fry #1)
·Second declaration of Ian Fry dated 28 June 2020 (Fry #2)
Mr Fry is the Director of the Patentee, Sun-Wizard Holding Pty Ltd, and one of the named inventors of the innovation patent.
Fry #2 was filed out of time and is therefore not properly in evidence. The Commissioner therefore wrote to the parties that the Hearing Officer will consider the additional information in
Fry #2 as part of the hearing and decide whether Fry #2 should be brought into the proceedings applying the principles used in relation to regulation 5.23 and that the Requestor may, if they wish, respond to Fry #2 in their evidence in reply. The Requestor has addressed Fry #2 in their evidence in reply and I am therefore satisfied that they have been afforded natural justice. I have therefore decided to admit Fry #2 as part of the Patentee’s evidence in answer.
Evidence in reply from the Requestor comprises:
·Declaration of Michael John Arieni dated 29 July 2020 (Arieni #2) with exhibits MJA2-1 to MJA2-2.
THE INVENTION
The present invention relates to a solar powered, weatherproof outdoor lighting device for use in various environments such as gardens, walkways, driveways and jetties.
The specification notes that conventional solar powered outdoor lighting devices are not rugged and durable enough and are often “incapable of consistently, sustainably and reliably running a full night without failing”.[1] Some of the reasons for this are mentioned as:
• the solar panel being partially shaded by portions of the lighting device.
• ingress of moisture, dust, and other contaminants.
• inability to optimize solar panel power output.
• inability to control energy usage.
• use of low quality solar panels; and• mismatch between the lighting load and the solar panel rating.[1] Specification page 1, lines 31-32
The specification also notes that known solar lights are “typically assembled using adhesive and screws” and this “method of assembly is slow, and prone to error and damage”.[2]
[2] Specification page 2, lines 1-3
The object of the invention is to therefore “provide a solar powered outdoor lighting device that is highly ruggedized against the elements, and which is able to sustainably and reliably power the lighting device in various atmospheres and conditions”.[3]
[3] Specification page 2, lines 7-10
A summary of the invention and description of a preferred embodiment then follows. The features of the present invention can be best understood with reference to figure 2 that is reproduced below:
This figure shows a solar powered lighting device 10 having a main body SW02 connected to a clear dome SW01 at the top and a post SW28 at the bottom. A funnel-shaped diffuser assembly SW06 is mounted within the main body with its wider mouth on top. A number of downwardly facing LED lights SW10 are fitted within apertures provided around the periphery of the wider mouth of the diffuser assembly. A base assembly SW04 is fitted in the bottom of the main body and supports a number of upwardly facing LED lights SW09. The external surface of the funnel shaped diffuser assembly is configured to reflect the light from both sets of LED lights in a downward and outward direction.
A solar panel SW07 is provided under the dome and supported by the diffuser assembly. The positioning of the solar panel on top of the diffuser assembly and within the clear dome ensures that the solar panel is not shaded by other components of the lighting device. The diffuser assembly further defines a space under the solar panel for positioning the LED lights SW10 associated circuitry and to facilitate air flow.
A battery compartment SW05 is connected to the bottom of the base assembly and supports a rechargeable battery 210 inside. The battery 210 provides power for the LED lights and is electrically connected to the solar panel SW07 to be charged thereby.
The connections between the various external components such as the main body, the dome and the post employ seals to ensure the entire structure is weatherproof.
A light intensity controller is also provided to vary the intensity of the LED lights so as to conserve battery power and ensure that the device will continue to function even on non-sunny days.
The certified innovation patent ends with 5 claims which read as follows:
1. A solar powered outdoor lighting device including:
a solar panel;
a battery electrically connected to the solar panel;
a diffuser for reflecting light downwards and outwards, said diffuser is substantially funnel shaped with the solar panel mounted above a widest mouth end of the diffuser;
a lighting element electrically connected to the battery and positioned around the periphery of the widest mouth end facing downwards to reflect light from the outer surface of the diffuser;
domed or flat housing within which the solar panel, the lighting element, and diffuser are positioned and adapted to be mounted to a post, wherein the diffuser is orientated with the widest mouth end uppermost and the other end closest to the post.2. A lighting device as claimed in claim 1, wherein the solar panel is mounted to have substantially uninhibited exposure of sunlight and provide a space between the solar panel and the diffuser to allow air flow, positioning of the lighting element and passage of electrical wire through an internal space of the diffuser.
3. A lighting device as claimed in claim 1 or 2, wherein the lighting element includes one or more LED lights.
4. A lighting device as claimed in any one of the abovementioned claims, wherein there is at least one O-ring seal in the housing to prevent the ingress of water and a vent in a floor of a compartment housing the battery to prevent the build up of pressure.
5. A lighting device as claimed in any one of the abovementioned claims, wherein further comprising a control circuit for controlling an operation of the lighting element, the control circuit configured to control an emitted light intensity of the lighting element with reference to the installed geographical location.
THE S191A REQUEST
Section 191A of the Act is directed to the Commissioner’s power to rectify an error in an entry in the Register and reads as follows:
191A Commissioner’s power to rectify register
(1) The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:
(a) the omission of an entry from the Register;
(b) an entry made in the Register without sufficient cause;
(c) an entry wrongly existing in the Register;
(d) an error or defect in an entry in the Register.
(2) The Commissioner must, on application, make a declaration as to a person’s entitlement to a patent, or a share in a patent, if the Commissioner is satisfied, on the balance of probabilities, that the Register does not properly record a person’s entitlement to a patent, or a share in a patent:
(a) because the patent, or a share in the patent, was granted to a person who was not entitled to it; or
(b) because the patent, or a share in the patent, was not granted to a person who was entitled to it; or
(c) for any other reason.
(3) If the Commissioner makes a declaration under subsection (2), the Commissioner must rectify the Register accordingly.
(4) The Commissioner must not make a declaration under subsection (2), or rectify the Register under subsection (3), without first giving the following persons a reasonable opportunity to be heard:
(a) the person whose entitlement is not properly recorded by the Register;
(b) any person whose entitlement to the patent, or a share in the patent, is recorded in the Register.
(5) The Commissioner must not make a declaration or rectify the Register under this section while relevant proceedings in relation to the patent are pending.
(6) An appeal lies to the Federal Court against a decision of the Commissioner:
(a) to make, or refuse to make, a declaration; or
(b) to rectify, or not rectify, the Register;
under this section.
Section 191A therefore allows the Commissioner to rectify the Register if a patent was granted incorrectly to a person who was not entitled to it or was not granted to a person who was entitled to it.
The Law on Inventorship and Entitlement
The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
Section 15(1) of the Act reads as follows:
“Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
That is a patent may only be granted to the inventor of an invention or to someone who derives title to the invention from the inventor.
The law on inventorship/entitlement has been considered in University of Western Australia v Gray [2009] FCAFC 116 (UWA) and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 (Polwood). In particular, steps for determining who is an eligible person are apparent from [253] of UWA as part of a broader discussion from [253] to [256]. These steps may be given for present purposes as follows:
1.identify the “inventive concept” of the invention as defined in the claims.
2.determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice.
3.determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
Polwood provides guidance with regard to determining the inventive concept at [60]:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
In relation to the question of when the invention was conceived, in University of Western Australia v Gray (No 20) [2008] FCA 498, French J listed the following principles at [1426]:
1.Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2.Conception is the "formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice". It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
3.An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
4.It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
Following the principles outlined in UWA, I need to first identify the inventive concept for the claimed invention of the innovation patent and then determine the question of inventorship based on the contributions made by the alleged inventors to the development of the inventive concept. Finally, I need to determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
The Inventive Concept
Although the specification asserts that a number of features of the described embodiments, such as the funnel shape of the diffuser assembly, the positioning of the solar panel, the location of the LED lights, the provision of seals at the joints and the light intensity controller provide for significant advantages over the prior art solar lights, the broadest aspect of the invention as defined in claim 1 only includes the features of the funnel shaped diffuser assembly and its orientation, the positioning of the solar panel and the location of the downwardly facing lights. These three features are described as key features of the invention that contribute to achieving the objective of providing a solar lighting device which is able to sustainably and reliably power the lighting device in various atmospheres and conditions.
“The diffuser assembly, SW06, in the preferred embodiment, is a light guide adapted to receive light and reflect the light downwards and outwards. Use of a light guide provides a more even light pattern. The tapered shape of the diffuser assembly SW06 facilitates the preferred downwards and outwards reflection of light.
The diffuser assembly SW06 supports the solar panel SW07, and is sized to position the solar panel SW07 as high as possible within the lighting device 10. Preferably, the diffuser assembly SW06 positions the solar panel SW07 above the join between the dome SW01 and the body SW02.
By sizing the diffuser assembly SW06 in this manner, the solar panel SW07 is located in a position where it is not shaded by other portions of the lighting device 10, for example the join where the dome SW01 meets the main body SW02. Accordingly, the maximum possible amount of sun light given the lighting device's current external position, location. and orientation is allowed to be incident on the solar panel SW07”.[4]
“Light from the upper LED element SW10, if present, propagates downwards and to the side, and is also partially diffused by the diffuser assembly SW06 by reflecting off the diffuser assembly SW06”.[5]
[4] Specification page 7, lines 6-20
[5] Specification page 11, lines 9-12
The Requestor has submitted that “during examination of the Opposed Patent, the feature of the
lighting element being positioned around the periphery of the widest mouth of the diffuser and facing downwards in claim 1 of the patent was found to be novel and innovative over the closest prior art”[6] and that therefore these features constitute the inventive concept. The Patentee has not disputed this or made any other submissions as to what they consider as the inventive concept.
[6] Requestor’s written submissions in support at [37]
In entitlement disputes, the inventive concept of the claimed invention is to be identified from a reading of the specification based on admissions of drawbacks of the prior art, the objects of the invention and what are the claimed features that contribute to overcoming one or more of these drawbacks and achieving the objects of the invention. Whether these features are novel and innovative are not relevant considerations. As I noted earlier, it is the combination of the three features of the funnel shaped diffuser assembly and its orientation, the location and orientation of the lights and the positioning of the solar panel that contribute to achieving the objects of the invention. Hence for the purpose of assessing the inventive contribution of the named inventors and Mr Arieni, these are the features I will take into consideration as being representative of the inventive concept.
The Requestor’s Case
Mr Arieni’s submissions as to why he should be considered the sole or at least joint inventor can be summarised as follows:
·He has been the managing director of Key Logic Pty Ltd (Key Logic) since 2003 and Key Logic was the sole shareholder of Exlites Pty Ltd (Exlites) until Exlites was deregistered in 2014.
·He has been involved in designing solar lights since 2004.
·Ian Fry was employed as a Director of Exlites from January 2010 to March 2013, responsible for production, assembly and logistics of Exlites’ solar lighting range of products.
·Prior to joining Exlites, Mr Fry was a reseller and installer of solar lights but did not have any practical experience in the design and manufacture of solar lights.
·In mid-2009, during discussions with Mr Fry prior to him joining the company and before he was shown any new IP that Exlites were developing, Mr Fry was asked to sign a confidentiality agreement in relation to all confidential information belonging to Exlites (Exhibit MJA-1).
·While employed at Exlites, Mr Fry had access to the company server and to all files stored on the server.
·From 2009 to 2010, he had discussions with Mr Glen Gray of Yandina Plastics, Exlites’ toolmaker, on various conceptual drawings for a solar bollard light. As part of this discussion, on 19 April 2010, Mr Gray sent him an email with pictures of 3D models of a concept design for a reflector to be located inside the solar light (Exhibit MJA-2), based on instructions he had provided to Mr Gray. This design shows a funnel-shaped reflector.
·Around the same time, he also drew a sketch of a concept reflector design (Exhibit MJA-3) and emailed it to Mr Fry seeking his comments on the design. This sketch shows the placement of LED lights around the periphery of the reflector. It also mentions a booking for “Aus Gov Mag for June”.
·On 12 May 2010, he sent an email to a number of colleagues in Exlites including Mr Fry where he confirms that an advert for Exlites products will be published in mid-June in the Australian Local Government Association Directory (Exhibit MJA-4).
·On 20 April 2010, Mr Gray sent him another email with a picture of a 3D model of a concept design for a spacer plate to be located on top of the reflector (Exhibit MJA-6), again based on instructions he had provided to Mr Gray. This spacer is for the purpose of locating the solar panel spaced above the reflector.
·These exhibits evidence that the features of the funnel shaped reflector/diffuser with the wider end on top, the provision of LED lights around the periphery of the upper end of the reflector/diffuser and the location of the solar panel above the reflector/diffuser had been conceptualised by him alone and that all of this information was disclosed to Mr Fry during his employment with Exlites.
·Key Logic filed a design application 332890 on 7 June 2010 for a solar bollard which shows a solar bollard with a funnel-shaped reflector similar to that of the claimed invention. Mr Areini is the named designer in this design application, again confirming that this feature was conceived by him and not Mr Fry.
·This registered design was the primary prior art cited by the examiner during examination of the innovation patent.
The Patentee’s Case
Mr Fry’s submissions as to why Mr McCleary and he are the inventors and not Mr Arieni can be summarised as follows:
·The confidentiality agreement is a fraudulent document as it is not dated and the individual pages are not initialled. He however acknowledges that it is his signature on the signed page of the document.
·While he had access to Exlites’ server, a number of business files were on Mr Arieni’s PC to which he did not have access.
·While he recalls seeing the reflector design of exhibit MJA-2, he does not recall any reference to LED lights to be fitted to this reflector. In fact, it was he who once suggested to Mr Arieni that it might be worthwhile to trial LED lights at the top of the bollard shining downward.
·He has never received or seen the concept design of exhibit MJA-3 and it is a fraudulent document. The LED lights shown in this sketch appears to be similar to that used in the Sun Wizard solar lights and cannot be fitted in the plate without further modifications to the plate as they are in the location of the solar panel mounts.
·The purpose of the spacer of exhibit MJA-6 is for providing enough gluing area and there is no mention of LED lights as asserted by Mr Arieni.
·None of the components of the Patentee’s solar light product is a copy of the Exlites solar light.
Who Contributed to the Inventive Concept?
As discussed earlier, I have identified the inventive concept as the features of the funnel-shaped diffuser and its orientation, the positioning of the solar panel and the location of the downwardly facing LED lights. Hence these are the features that I shall consider in assessing who contributed to the inventive concept.
Diffuser assembly
Mr Arieni has relied on exhibits MJA-2 and MJA-3 to support his contention that he had developed the concept of the funnel-shaped reflector assembly with the wider end being on top around April 2010 which is well before the priority date of the claimed invention. As mentioned earlier, Exhibit MJA-2 is an email from Mr Gray with two pictures of 3D models of a concept design for a reflector to be located inside the solar light. One of these pictures is reproduced below.
It is plainly evident that this picture shows a funnel-shaped reflector.
According to Mr Arieni, the concept design of the reflector shown in these exhibits were drawn up by Mr Gray based on instructions and information that he had provided to Mr Gray.
Mr Fry acknowledges having seen exhibit MJA-2 but not exhibit MJA-3 during his time with Exlites. In relation to MJA-2, he has argued that the email from Mr Gray to Mr Arieni forwarding these design concepts does not mention anywhere that the design was based on instructions from Mr Arieni and that it is more likely that they were solely developed by Mr Gray.
However, I do not find that line of argument persuasive. Mr Arieni has asserted that these were his designs and without any contradictory evidence from Mr Gray, there is no reason for me to suspect the veracity of Mr Arieni’s assertion. Furthermore, the sketch of exhibit MJA-3 also shows a funnel-shaped reflector and the email of 12 May (exhibit MJA-4) corroborates the claim that this sketch was made in April 2010.
Furthermore, I note that the registered design 332890 in the name of Key Logic lists Mike Arieni as the designer and this design clearly shows a funnel shaped reflector as can be seen in one of the figures that is reproduced below.
Based on the evidence, I am satisfied that the funnel shaped reflector design with the wider end on top was conceived by Mr Arieni.
In his written submissions for the hearing, Mr Fry has sought to latch on to the fact that the claimed invention defines a ‘diffuser’ as opposed to a ‘reflector’ and that a diffuser is different to a reflector. He noted:
“To clarify the difference;
(1) A reflector is an improvised or specialised reflective surface used to redirect light towards a given subject or scene.(2) A Diffuser, which is the fitting designed by the Directors and Owners of Sun-Wizard Holding Pty Ltd, is described as a lighting fixture used to scatter light and prevent glare and to reduce the sharpness of shadows and thus soften the light”.[7][7] Patentee’s written submissions in support at [15]
The Requestor has however submitted that the apparent distinction that Mr Fry seeks to draw between a ‘Reflector’ and a ‘Diffuser’ is “entirely illusory” and even the specification and claim 1 of the innovation patent define that the diffuser functions “for reflecting light downwards and outwards”.[8]
[8] Requestor’s written submissions in answer at [22]
I am inclined to agree. While the specification of the innovation patent may use the term ‘diffuser’ rather than ‘reflector’, it is quite evident from the following passages of the specification that the function of the diffuser is to reflect light outwards and downwards.
“the diffuser assembly supporting the solar panel and configured to reflect light downwards and/or outwards”[9]
“The diffuser assembly, SW06, in the preferred embodiment, is a light guide adapted to receive light and reflect the light downwards and outwards. Use of a light guide provides a more even light pattern. The tapered shape of the diffuser assembly SW06 facilitates the preferred downwards and outwards reflection of light”[10].
“Light from the upper LED element SW10, if present, propagates downwards and to the side, and is also partially diffused by the diffuser assembly SW06 by reflecting off the diffuser assembly SW06”.[11]
[9] Specification page 2, lines 23-24
[10] Specification page 7, lines 6-10
[11] Specification page 11, lines 9-12
While Mr Fry has submitted that the diffuser of the present invention is used to scatter light and prevent glare and to reduce the sharpness of shadows and thus soften the light, there is no support for this in the specification itself, which only repeatedly refers to the function of the diffuser as to reflect the light from the LEDs in a downward and outward direction. There is nothing in the specification as to what are the features of the diffuser other than its shape that causes the scattering, the reduced glare and softening of the light.
I also note that Mr Fry has not put up this argument in his evidence and it is only in the written submissions for the hearing that he has tried to focus on this difference in terminology. Mr Arieni has on the other hand referred to this feature in his evidence as ‘reflector/diffuser’, clearly suggesting that he considers these two terms are effectively the same in this case.
In my view, the term ‘diffuser’ as used in the patent specification is no different to the term ‘reflector’ used in the evidence of Mr Arieni. Therefore, the concept of the funnel-shaped diffuser was conceived by Mr Arieni around April 2010.
LED Lights
Mr Arieni relies on the sketch of exhibit MJA-3 that is reproduced below to support his claim that he had developed the concept of positioning the LED lights around the upper periphery of the funnel-shaped reflector and facing downwards.
Mr Arieni has stated that this sketch shows two options for placement of LED lights:
(i) each LED light being located in a hollow portion of the raised portions of the reflector, or
(ii) the LED lights being located on a ring-shaped plate and the ring-shaped plate being attached to the underside of the reflector, along the periphery of its mouth.While there is no specific marked reference to LED lights, it is clear from the sketch including the reference to the LED chips that the features that I have circled in the sketch are LED lights. These LED lights can be clearly seen to be pointing downward.
As can be seen from the writing on the sketch, Mr Arieni is seeking the opinion of Mr Fry (Ian) as to which option would be better.
Mr Fry has argued that he has never seen this sketch and that there is no date on this sketch to establish when it was made. He accepts that LED lights can be seen in the sketch but has argued that there would be practical difficulties in placing the LEDs in this position because of the solar panel mounts and also the LED lights would not be able to effectively illuminate without additional holes in the reflector.[12]
[12] Fry #2 at [2]
While I accept that there is no date on the sketch, that is not sufficient to doubt its authenticity or its date of creation without further evidence on this point. Mr Arieni has stated that it was drawn in April 2010 and it shows a funnel-shaped reflector similar to the one shown in exhibit MJA-2. He has also submitted that his email of 12 May 2010 (exhibit MJA-4) corroborates that the sketch was made in April 2010.
While Mr Fry may not recollect having seen the sketch during his time with Exlites, that does not mean that it did not exist in April 2010. As can be seen in the sketch, it has the words “Booked Aus Gov Mag for June” written on it and the email of 12 May states that “Just to let you know and could you also notify your key people you have in place for this segment of your business that I have bought the inside front cover and the 1st page of the Australian Local Government Association Directory which will go out in mid June”.
I am satisfied that this corroborates Mr Arieni’s assertion that the sketch of exhibit MJA-3 was drawn in April 2010. As it shows the LED lights mounted on the upper periphery of the funnel-shaped reflector and facing downwards, I also find that these features had been conceived by Mr Arieni in April 2010 when Mr Fry was an employee of Exlites. While there may have been practical difficulties in relation to the mounting of the LEDs as mentioned by Mr Fry, in my view any such difficulties would relate to the reduction to practice of the invention and does not have any bearing on its conception.
Solar Panel
Mr Arieni also contends that the feature of placing the solar panel spaced above the top of the funnel-shaped reflector was conceived by him and relies on exhibit MJA-6 in addition to exhibit MJA-3 to support this contention. MJA-6 is an email from Mr Gray to Mr Arieni in which
Mr Gray was written “Here is a pic of a spacer which has plenty of gluing area” and the picture as an attachment. The picture of MJA-6 is reproduced below:
This picture shows the funnel-shaped reflector with a spacer plate on top and according to
Mr Arieni, the function of the spacer plate is to space the solar panel above the reflector.
Again, while Mr Fry has argued that this exhibit does not indicate that Mr Arieni had any input into this design, I see no reason to doubt Mr Arieni’s statement that Mr Gray had produced this concept design based on instructions that he had provided to Mr Gray, without some contradictory evidence on this point.
I am satisfied that the feature of placing the solar panel spaced above the top of the reflector had been conceived by Mr Arieni around April 2010.
Inventorship
It is clear from my earlier discussion, that the key features of the funnel-shaped diffuser and its orientation, the placement of the LEDs facing downwards around the upper periphery of the diffuser and the placement of the solar panel spaced above the top of the diffuser had all been conceived by Mr Arieni, around April 2010, during the time Mr Fry was an employee of Exlites.
I am therefore satisfied that Mr Arieni made a material contribution to the conception of the claimed invention. He is therefore an inventor of the claimed invention of the innovation patent.
I also need to decide whether Mr Arieni is the sole inventor of the claimed invention or whether he is an inventor jointly with Mr Fry and Mr McCleary.
While Mr Fry has submitted reasons as to why Mr Arieni is not an inventor of the claimed invention, he has provided very little information in relation to his or Mr McCleary’s contribution to the conception of the invention. In an entitlement dispute such as this, one would expect that the person trying to defend their entitlement would clearly set out when and how they came up with the inventive concept. However, the only statements Mr Fry has made in support of his and Mr McCleary’s claim to inventorship are as follows:
“I mentioned while at the warehouse at the Sunshine Coast that it might be worthwhile trialling lights at the top of the bollard shining downwards .... That was totally ignored by Arieni and never mentioned again”.[13]
“I have reviewed the Declaration of Michael John Arieni and say that claim 1 is novel and innovative and all features were not know (sic) by any person except the real inventors Ian Fry and Richard McCleary prior to 28 August 2014 and was not know (sic) or invented by Arieni”.[14]
“The Sun-Wizard is an innovation and uses components designed and drawn to engineering standards to be efficient and reliable. No component was copied directly from another product and no component is a direct replacement for another product”.[15]
[13] Fry #1 at [8]
[14] Fry #1 at [12]
[15] Fry #1 at [15]
While Mr Fry’s submission that he suggested trialling lights at the top of the bollard shining downwards may suggest that he had some inventive input into the conception of the invention, he has unfortunately not stated when this event took place and nor has he corroborated this with any form of evidence. Mr Arieni strongly disagrees with this statement of Mr Fry and has submitted that he has no recollection of such an event. As noted earlier, Mr Arieni has provided evidence in the form of the sketch of exhibit MJA-3 to corroborate his claim that he came up with this aspect of the invention in April 2010 and which I have accepted.
Therefore, based on these 3 statements, it is simply not possible for me to conclude with any certainty that either Mr Fry or Mr McCleary had any material input into the conception of the invention that is the subject of the certified claims of the innovation patent.
Although not in his evidence, Mr Fry has in his written submissions for the hearing made the following additional statements about his and Mr McCleary’s contribution to the development of the Sun-Wizard solar light product.
“Explanation of Exhibit IRF-1; The features of placing the lights and the solar panel is the sole invention of the Patentee.
(1) The solar panel is attached to a mounting system that encompasses the complete outside diameter of the diffuser and engineered to position the solar panel as high as possible into the dome to assist in preventing sunlight distortion
(2) The lighting circuit is placed on the top surface of the diffuser for ease of mounting and locating the power cable. The circuit is mounted with the use of locating pins (2) to position the LED's directly in the holes provided to allow light distribution (4). It is also aesthetically pleasing as the circuit board is out of site which leaves a clean appearance as well as allowing the complete area of the diffuser to disperse the light. The space or "air gap" under the solar panel is to allow the placement of the lighting circuit board and is engineered for air flow as indicated in the patent claim and the air flow assists in the cooling of the LED's. The placement of the lights at the periphery of the mouth of the diffuser improves the angle that the light is diffused for a softer light output.
(3) The outer perimeter of the Diffuser (3) is shaped in such a way as to contain the light and direct more light towards the curved portion of the diffuser. This feature together with the lights mounted in the top section of the diffuser reduces the ULR (Upward Light Ratio) to 2% which makes the Light Head "Dark Sky Compliant".
(4) The marking indicated by the figure (5) is the part number of the component”.[16]“In summary, I reiterate that the placement of lights and the solar panel that are features of the Sun-Wizard and Certified in Claim 1 and Claim 2 of the Patent No. 2014100975 are features that were conceived and engineered by the Patentee's. The engineering was done in such a manner as to make the light as efficient as possible, simple to assemble and components easy to manufacture and the dimensions were engineered for maximum material strength and longevity. Richard McCleary is a very capable injection moulding person and has his own factory where the components are manufactured. His senior employee is a qualified Tool Maker and the drafting for all of the tooling components to make all the components of the light body was done on the same table as the light design and the tooling was completed at Richard's factory. I state that none of the components or features of the Sun-Wizard were conceived by Arieni and disclosed to me”.[17]
[16] Patentee’s written submissions in support at [36]
[17] Patentee’s written submissions in support at [38]
While I accept that both Mr Fry and Mr McCleary have contributed to the engineering and tooling work required to make the Sun-Wizard solar light product of the claimed invention, in my view these relate to the reduction to practice of the invention rather than to its conception. As noted by the authorities, it is the conception that is the key to the assessment of inventorship and not the reduction to practice. Consequently, based on the evidence, I am not satisfied that either Mr Fry or Mr McCleary can claim inventorship of the claimed invention.
The sole inventor of the claimed invention is Mr Arieni.
Who is entitled to the invention? (Who is the eligible person?)
Although I have found that Mr Arieni is the sole inventor of the claimed invention of the innovation patent, the Patentee would still be entitled to the invention if Mr Arieni had assigned his rights to the Patentee.
No evidence has been filed by Mr Fry to even suggest, let alone establish, that there was any assignment of rights from Mr Arieni to the Patentee. I have therefore no basis to find that the patentee Sun-Wizard is the eligible person for this patent.
While Mr Arieni has submitted that he is the eligible person for this innovation patent, I note that Mr Arieni was the Managing Director of Key Logic at the time he conceived the invention. He was therefore an employee of Key Logic during this time. As it is often the case that intellectual property created by an employee in the ‘course of employment’ will belong to the employer, it is highly likely that the eligible person for this innovation patent is Key Logic as the employer and not Mr Arieni. Such a conclusion is also supported by other IP rights held by Key Logic, namely innovation patent 2016102225 and registered design 332890 where the inventor/designer is recorded as Mr Arieni. The Requestor has not addressed this issue in their evidence or in the written submissions for the hearing.
I am therefore unable to make a definitive determination as to who is the eligible person for the innovation patent in suit without further information from the Requestor on this point.
SURRENDER AND REVOCATION OF THE PATENT
Section 137 of the Act provides as follows:
Revocation on surrender of patent
(1) A patentee may, at any time, by written notice to the Commissioner, offer to
surrender the patent.
(2) The Commissioner must give notice of an offer in accordance with the regulations.
(3) After hearing all interested persons who notify the Commissioner in accordance with the regulations of their wish to be heard, the Commissioner may accept the offer and revoke the patent.
(4) Where relevant proceedings in relation to a patent are pending, the Commissioner must not accept an offer to surrender the patent without either the leave of the court or the consent of the parties to the proceedings.
(5) Where a licence ordered under Part 2 is in force in relation to a patent, the
Commissioner must not accept an offer to surrender the patent.It is clear from the wording of s137(3) that the Commissioner has a discretion as to whether or not to accept a patentee’s offer to surrender the patent.
The Requestor has submitted that “The purpose of the Act is not served by allowing a party to improperly obtain rights to an invention and then seek to thwart an assertion of entitlement by a third party through a surrender of the patent” and if I find that Mr Arieni is entitled to the invention, I should refuse to accept the Patentee’s offer to surrender the patent.
I agree. Having found that Sun-Wizard is not entitled to any rights to the innovation patent, it is clear that they also do not have any rights to surrender what is legally not theirs. I therefore refuse to accept the Patentee’s offer to surrender the innovation patent.
While it may be open to the Commissioner to revoke the innovation patent on the basis that the Patentee is not entitled to the invention, I have found that either Michael John Arieni or Key Logic is the rightful eligible person for this innovation patent. As the invention has otherwise been found to comply with the other legal requirements and has been certified, revoking the patent would adversely affect the rights of Mr Arieni or Key Logic. I therefore also refuse to revoke the patent.
CONCLUSION
In relation to the opposition to the surrender of the innovation patent, I refuse to accept the offer to surrender the innovation patent or to revoke the innovation patent.
I find that Michael John Arieni is the sole inventor of the innovation patent. Consequently, subject to any appeal, the Register will be amended to record the inventor as Michael John Arieni.
For the reasons noted earlier, I am unable to make a declaration under s191A(2) as it is unclear whether Mr Arieni or Key Logic should be recorded in the Register as the patentee of this innovation patent. I allow Michael John Arieni the Requestor a period of one month from the date of this decision to provide further information on this point.
COSTS
It is the normal practice of the Commissioner to make an award of costs in inter partes proceedings before the Commissioner and I see no reason to deviate from this practice in the present instance. The Requestor has been successful in relation to their opposition to the surrender of the innovation patent. Although I have not made a finding as yet in relation to who is the eligible person for the innovation patent, I have found that Sun-Wizard is not the eligible person and in that respect the Requestor has been successful in relation to the s191A matter. I therefore award costs according to Schedule 8 against Sun-Wizard Holding Pty Ltd. in relation to both matters.
Ranganath Subbarayan
Delegate of the Commissioner of Patents
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