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Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd

Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd

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FEDERAL COURT OF AUSTRALIA
Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd
[2002] FCAFC 315
PATENTS – claimed invention of connector for electrical wires – construction of connector involves use of tongues protruding from side walls of canal in which the cable itself lies – tongues said to combine features of strain relief for the wire and retention of that wire within channel – revocation on the grounds of lack of novelty – alleged infringement by appellant’s electrical connector – whether the appellant’s connector possessed all essential integers of the claim
PATENTS – lack of inventive step – use of a “team” rather than an individual as the notional univentive skilled worker – relevant general knowledge at the priority date – the distinction between what is a logical step to the notional worker and what is obvious to that worker
EVIDENCE – expert evidence as to obviousness – whether admissible – utility of – Evidence Act 1995 (Cth) ss 76, 79, 80& 135
Patents Act 1952 (Cth) ss 40, 100(1).
Patents Act 1990 (Cth) ss 6, 13(1), 18(1), 40, 138(3), 230, 233, 234.
Evidence Act 1995 (Cth) ss 76, 79, 80 & 135.
HPM Industries Pty Ltd v Gerard Industries Ltd (1957) 98 CLR 424 cited.
Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd (1961) 180 CLR 98, followed.
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, followed.
Graham Hart (1971) Pty Ltd v S W Hart & Co Pty Ltd (1978) 141 CLR 305, followed.
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253, followed.
Wellcome Foundation Ltd v VR Laboratories(Aust) Pty Ltd (1981) 148 CLR 262, cited.
Firebelt Pty Ltd v Brambles Australia Limited [2002] HCA 21, followed.
Allsop Inc v Bintang Ltd (1989) 15 IPR 686, followed.
Elconnex Pty Ltd v Gerard Industries Pty Limited (1991) 32 FCR 491, followed.
Winner v Anmar Holdings Pty Ltd (1993) 41 FCR 205, followed.Catnic Components Ltd v N.V. Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239, followed.
The General Tire and Rubber Company v The Firestone Tyre and Rubber Company Ltd [1972] RPC 457, followed.
Windsurfing International Inc v Petit (1983) 3 IPR 449, cited.
Windsurfing International Inc v Tabru Marine (Great Britain) Ltd (1984) 3 IPR 498, cited.
Catnic Components Ltd v Hill & Smith Limited (1981) FSR 60, followed.
MINNESOTA MINING & MANUFACTURING COMPANY v TYCO ELECTRONICS PTY LIMITED ACN 000 260 622
N 1598 OF 2001
HEEREY, EMMETT & DOWSETT JJ
18 OCTOBER 2002
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1598 OF 2001

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

MINNESOTA MINING & MANUFACTURING COMPANY
APPELLANT

AND:

TYCO ELECTRONICS PTY LIMITED ACN 000 260 622
RESPONDENT

JUDGES:

HEEREY, EMMETT & DOWSETT JJ

DATE OF ORDER:

18 OCTOBER 2002

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.the appeal be…

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.

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Details

Case: [2002] FCAFC 315
Decision Date: 18 OCTOBER 2002

CaseChat Overview and Summary

The case of Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd involved a dispute over the patentability of a connector for electrical wires, particularly for use in telecommunications. The primary issue was whether the invention in question involved an inventive step and was not obvious in light of prior art. The matter was brought before the court to resolve these questions of patent law.

The court had to decide whether the expert evidence provided by both parties was admissible and whether it could assist in determining the issues of inventive step and obviousness. Given the nature of such evidence, the court considered the potential for it to be misleading or result in a waste of time. The court had to balance the probative value of the evidence against the risk of it causing confusion or undue delay.

The court found that the evidence provided by the experts, while potentially admissible, was unlikely to be helpful in resolving the central issues of the case. The court concluded that the probative value of this evidence was substantially outweighed by the danger of it being misleading or causing a waste of time. Therefore, the court decided to exclude the expert evidence. The court also addressed the costs associated with the proceedings, setting aside certain orders related to costs and substituting new orders for the dismissal of the cross-claim and the allocation of costs between the parties.

The final orders of the court were to uphold the appeal in part, set aside certain previous orders, and substitute new orders for the dismissal of the cross-claim and the allocation of costs. Specifically, the cross-claim was to be dismissed, the applicant was to pay the respondent’s costs of the application, and the cross-claimant was to pay the cross-respondents’ costs of the cross-claim. There was to be no order as to the costs of the appeal itself.

Orders

Orders of the court

1. the appeal be upheld in part;

2. orders 1, 3 and 4 of Sackville J made 16 November 2001 be set aside and in lieu of those orders there be substituted the following orders:

“1. The cross-claim be dismissed.

3. The applicant pay the respondent’s costs of the application.

4. The cross-claimant pay the cross-respondents costs of the cross-claim.”;

3. there be no order as to the costs of the appeal.

Background

Background to the litigation

Questions of obviousness and inventive step are ultimately for the Court to determine, irrespective of the opinion expressed by any number of experts. Evidence by an expert as to whether a claimed invention was obvious or did not involve an inventive step will of necessity be essentially argumentative. Even if admissible, such evidence is likely to result in a waste of time by reason of the analysis of and cross-examination of the evidence that will be required. Such evidence is therefore a prime candidate for the application of s 135 of the Evidence Act, under which the Court may refuse to admit evidence if its probative value is substantially outweighed by the danger that the evidence might be misleading or confusing or cause or result in an undue waste of time. Hence such evidence, even if it is strictly admissible, is unlikely to be helpful and it is preferable to exclude it. Background The Patent is for a connector of electrical wires, particularly for use in telecommunications. As is well known, that industry makes wide use of cables, each of which usually consists of a wire made of copper or some other conductive metal, surrounded by plastic insulation. The terms “cable” and “wire” are used hereafter with these specialized meanings. For telecommunication purposes, cables are usually installed in pairs. It is frequently necessary to connect wires. Connectors provide facilities for doing so. A connector may contain multiple connection facilities. It is then called a “modular connector”. A number of connectors are in evidence. Most helpful for present purposes is the 3M MS2 connector (“3M2”) connector manufactured by 3M and in distribution for many years before the Priority Date. It consists of two layers of moulded plastic fixed together into strips which are about 15 mm wide and 5 mm in thickness. Its length may vary, depending upon the number of connections to be supplied. The outer face of each layer is crossed from long side to long side by open channels. Each channel contains a “U-contact element” which is, in effect, a terminal. It consists of a slotted metal plate placed at right angles to the channel. The slot is midway across the channel and is U-shaped. The cable is pressed into the channel from above. The shoulders of the slot penetrate the insulation and make electrical contact with the wire inside the insulation. There is also a metal blade placed some millimetres behind the U-contact element, on the side of the connector away from that on which the cable enters the channel. When the cable is pushed into the channel, the blade cuts both insulation and wire at a point which is convenient. The elements are arranged on each face so that half are nearer the side from which the cable enters the connector and half are nearer the other side. This design makes maximum use of the space available on each face of the connector. Each U-contact element on one face is electronically connected to a corresponding element on the other face so that contact can be established between the wires attached to those elements.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1598 OF 2001

BETWEEN:	MINNESOTA MINING & MANUFACTURING COMPANY APPELLANT
AND:	TYCO ELECTRONICS PTY LIMITED ACN 000 260 622 RESPONDENT
JUDGES:	HEEREY, EMMETT & DOWSETT JJ
DATE OF ORDER:	18 OCTOBER 2002
WHERE MADE:	SYDNEY