MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd
[2024] FCA 24
•24 January 2024
FEDERAL COURT OF AUSTRALIA
MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24
File number(s): QUD 32 of 2021 Judgment of: DOWNES J Date of judgment: 24 January 2024 Catchwords: PATENTS – patent for apparatus for storing or holding items – claim construction – infringement – validity
PATENTS – infringement – construction of claims – no infringement found
PATENTS – validity – novelty – whether prior publications being patent and patent applications anticipated claimed invention
PATENTS – validity – lack of inventive step – ground not established
PATENTS – validity – lack of fair basis – ground established if patentee’s construction of disputed term is correct
PATENTS – unjustified threats – whether cross-respondents made unjustified threats in breach of s 128 of the Patents Act 1990 (Cth) – announcements made to customers and prospective customers
AUSTRALIAN CONSUMER LAW – whether cross-respondents contravened s 18 of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) – false and misleading allegation of copying in announcements
EVIDENCE – expert witness provided with patent and prior art and instructed to opine as to whether invention is obvious – no evidence that expert was informed as to meaning of term – opinion of expert evidence as to obviousness excluded
Words & phrases: “connected to” Legislation: Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) ss 2, 18
Evidence Act 1995 (Cth) s 135
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth) ss 7, 18(1)(b)(i), 40(3), 120, 128, 129
Patents Amendment Act 2001 (Cth) Sch 1
Federal Court Rules 2011 (Cth) r 1.32
Cases cited: Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411; [2002] HCA 59
Allam v Aristocrat Technologies Australia Pty Ltd (2012) 95 IPR 242; [2012] FCAFC 34
Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd (2015) 114 IPR 28; [2015] FCA 735
AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324; [2014] FCAFC 99
AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356; [2015] HCA 30
Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420; [2005] FCA 805
Australian Competition and Consumer Commission v Employsure Pty Ltd (2021) 156 ACSR 1; [2021] FCAFC 142
Australian Mud Co Pty Ltd v Globaltech Corp Pty Ltd (2018) 138 IPR 33; [2018] FCA 1839
Black and Decker Inc v GMCA Pty Ltd (No 2) (2008) 76 IPR 99; [2008] FCA 504
Caffitaly System S.p.A v One Collective Group Pty Ltd (2020) 154 IPR 1; [2020] FCA 803
CQMS Pty Ltd v Bradken Resources Pty Ltd (2016) 120 IPR 44; [2016] FCA 847
DamorgoldPty Ltd v Blindware Pty Ltd (2017) 130 IPR 1; [2017] FCA 1552
Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23; [1938] 4 All ER 221
Equuscorp Pty Ltd v Haxton (2012) 246 CLR 498; [2012] HCA 7
Film Investment Corporation of New Zealand (rec apptd) v Golden Editions Pty Ltd (t/as Hughes Leisure Group) (1994) 28 IPR 1
Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890
Flour Oxidizing Company Ltd v Carr & Co Ltd (1908) 25 RPC 428
General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd [1972] RPC 457; (1971) 1A IPR 121
Globaltech Corporation Pty Ltd v Australian Mud Company Pty Ltd (2019) 145 IPR 39; [2019] FCAFC 162
Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd (2022) 167 IPR 515; [2022] FCA 797
Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435; [2013] HCA 1
HLundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70
Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017
Hill v Evans (1862) 31 LJ Ch 457; (1862) 1A IPR 1
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 239 FCR 117; [2008] FCAFC 139
Ireland v WG Riverview Pty Ltd (2019) 101 NSWLR 658; [2019] NSWCA 307
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68; [2005] FCA 1474
Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86; [2005] FCAFC 90
Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1; [2001] HCA 8
Lido Manufacturing Co Pty Ltd v Meyers & Leslie Pty Ltd (1964) 5 FLR 443; [1964–5] NSWR 889
Lockwood Security Products Pty Limited v Doric Products Pty Limited (2004) 217 CLR 274; [2004] HCA 58
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173; [2007] HCA 21
Meat & Livestock Australia Ltd v Cargill, Inc (2018) 129 IPR 278; [2018] FCA 51
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248; [2002] FCAFC 315
Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd (2020) 279 FCR 354; [2020] FCAFC 116
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545
Occupational and Medical Innovations Ltd v Retractable Technologies Inc (2007) 73 IPR 312; [2007] FCA 1364
Pharmacia LLC v Juno Pharmaceuticals Pty Ltd (2022) 165 IPR 200; [2022] FCA 92
Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85; [2015] FCAFC 179
Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2023] FCAFC 202
Reflex Instruments Asia Pacific Pty Ltd v Globaltech Corporation Pty Ltd [2023] FCAFC 158
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225; [2000] FCA 980
Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) (2011) 196 FCR 1; [2011] FCA 846
Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479
SNF (Australia) Pty Ltd v BASF Australia Ltd (2019) 140 IPR 276; [2019] FCA 425
Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5
Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (2014) 110 IPR 82; [2014] FCA 1366
Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd (2001) 53 IPR 359; [2001] FCA 1350
Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 107 IPR 333; [2014] FCA 568
Trendtex Trading Corporation v Credit Suisse [1982] AC 679
U & I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 60 FCR 26
UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
WellcomeFoundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262
Division: General Division Registry: Queensland National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 405 Date of hearing: 8–12, 19 May 2023 Counsel for the Applicants and Cross-Respondents: Mr A Franklin SC with Mr D Larish Solicitor for the Applicants and Cross-Respondents: King & Wood Mallesons Counsel for the Respondent and Cross-Claimant: Mr A Fox SC with Ms C Bembrick Solicitor for the Respondent and Cross-Claimant: DLA Piper ORDERS
QUD 32 of 2021 BETWEEN: MSA 4X4 ACCESSORIES PTY LTD
First Applicant
SHANE MILES
Second Applicant
AND: CLEARVIEW TOWING MIRRORS PTY LTD
Respondent
AND BETWEEN: CLEARVIEW TOWING MIRRORS PTY LTD
Cross-Claimant
AND: MSA 4X4 ACCESSORIES PTY LTD (and another named in the Schedule)
First Cross-Respondent
ORDER MADE BY:
DOWNES J
DATE OF ORDER:
24 JANUARY 2024
THE COURT ORDERS THAT:
1.The parties are to confer and provide to the chambers of Downes J an agreed form of order giving effect to the reasons for judgment and proposed directions as to the further conduct of this proceeding by 12.00 pm on 2 February 2024.
2.If the parties are unable to agree upon a form of order and proposed directions, the parties shall each provide their proposed draft of same to the chambers of Downes J by 12.00 pm on 6 February 2024 accompanied by any written submissions not exceeding three (3) pages.
3.The matter be listed for a case management hearing at 9.45 am on 7 February 2024.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
1. SYNOPSIS
[1]
2. WITNESSES CALLED BY THE PARTIES
[13]
2.1 Witnesses called by MSA
[13]
2.2 Witnesses called by Clearview
[17]
2.3 Joint expert report
[22]
3. THE SKILLED ADDRESSEE
[23]
4. THE PATENT
[25]
4.1 The specification
[25]
4.2 The claims
[47]
5. CLAIM CONSTRUCTION
[54]
5.1 Issues on construction
[54]
5.2 Principles on construction
[56]
5.3 Issue 1: meaning of “pivotally connected”
[58]
5.3.1 The competing contentions
[58]
5.3.2 The expert evidence
[61]
5.3.3 Consideration
[76]
5.4 Issue 2: meaning of “offset lever”
[84]
5.4.1 The competing contentions
[84]
5.4.2 The expert evidence
[88]
5.4.3 Consideration
[98]
5.5 Issue 3: meaning of “connected to”
[112]
5.5.1 The competing contentions
[112]
5.5.2 The expert evidence
[116]
5.5.3 Consideration
[126]
5.6 Issue 4: integers 1.6 and 1.7
[141]
5.6.1 The competing contentions
[141]
5.6.2 Consideration
[145]
6. NOVELTY
[147]
6.1 The case as advanced by Clearview
[147]
6.2 Relevant legal principles
[148]
6.3 Lutkus
[155]
6.3.1 The contested integers
[155]
6.3.2 Consideration
[156]
6.3.2.1 Integer 1.1
[156]
6.3.2.2 Integer 15.1
[165]
6.3.2.3 Integer 1.8
[170]
6.3.3 Conclusion as to Lutkus
[184]
6.4 Thomas
[185]
6.4.1 Introduction
[185]
6.4.2 The disclosure in Thomas
[188]
6.4.3 Consideration
[192]
6.4.3 Conclusion as to Thomas
[204]
6.5 Dieter
[205]
6.5.1 Introduction
[205]
6.5.2 The disclosure in Dieter
[208]
6.5.3 Consideration
[216]
6.5.4 Conclusion as to Dieter
[222]
7. INVENTIVE STEP
[223]
7.1 The case as advanced by Clearview
[223]
7.2 Relevant legal principles
[229]
7.3 Identification of the invention
[236]
7.4 Identification of the common general knowledge
[246]
7.5 Whether invention obvious in light of common general knowledge and Lutkus
[251]
7.5.1 Objection to Mr Hunter’s evidence
[255]
7.5.2 Mr Hunter’s evidence generally
[261]
7.5.3 Whether Lutkus falls within s 7(3)
[270]
7.6 Conclusion
[276]
8. FAIR BASIS
[277]
8.1 Issue in dispute
[277]
8.2 Relevant legal principles
[282]
8.3 Consideration
[285]
9. EXCLUSIVE LICENCE
[293]
10. INFRINGEMENT
[307]
10.1 Issues in dispute
[307]
10.2 Consideration
[309]
10.2.1 Integers 1.6/15.7 and 1.7/15.8
[309]
10.2.2 Integers 1.8 and 15.9
[317]
10.2.3 Integers 1.11, 6.3 and 15.10
[331]
10.2.4 Integer 5.2
[333]
10.3 Conclusion
[336]
11. UNJUSTIFIED THREATS AND CONTRAVENTION OF ACL
[337]
11.1 Overview of the allegations
[337]
11.2 Alleged unjustified threats
[342]
11.2.1 Relevant legal principles
[342]
11.2.2 Consideration
[345]
11.2.2.1 KWM Letter
[346]
11.2.2.2 First MSA Announcement
[352]
11.2.2.3 Second MSA Announcement
[362]
11.2.2.4 Liability of Mr Miles
[367]
11.2.3 Relief under s 129 of the Patents Act
[374]
11.3 Alleged ACL contraventions
[383]
11.3.1 Relevant legal principles
[383]
11.3.2 Consideration
[387]
11.3.2.1 Whether the alleged representations were made
[387]
11.3.2.2 Whether representations were misleading or deceptive
[401]
11.3.2.3 Liability of Mr Miles
[403]
11.3.3 Conclusion
[404]
12. DISPOSITION
[405]
DOWNES J:
1. SYNOPSIS
This proceeding concerns Australian Patent No. 2009245888, which is directed to an apparatus for storing or holding items, particularly in vehicles and more particularly, for storing accessories typically used by off-road enthusiasts and tradesmen. Mr Shane Miles is the owner of the Patent, and the first applicant (MSA) is the exclusive licensee. On the first day of trial, Mr Miles was removed as the second respondent and joined as the second applicant on certain conditions.
The Patent claims an earliest priority date of 22 October 2007 (priority date). The application for the Patent was a divisional application of Australian Standard Patent Application No. 2007229415 filed on 22 October 2007. The version of the Patents Act 1990 (Cth) that applies to the Patent is that which appears in the compilation prepared on 27 March 2007.
Construction issues arise in relation to three terms in the claims of the Patent. These are: (a) “pivotally connected”, (b) “offset lever” and (c) “connected to” (disputed terms).
If MSA’s construction of “connected to” in the claims is accepted, then Clearview contends that the relevant claims are not fairly based because they travel beyond the invention disclosed in the Patent.
MSA alleges that the supply by the respondent/cross-claimant (Clearview) of its product infringes claims 1, 5, 6, 7, 8, 9, 10, 11, 12 and 15 of the Patent (the relevant claims). That product is called the Clearview Easy Slide.
Clearview denies infringement and alleges that claims 1, 8, 9, 10, 11, 12 and 15 are invalid for want of novelty, contending that:
(1)these claims lack novelty in light of United States Patent 6,019,567 (Lutkus);
(2)(if the construction of the disputed terms is found to be as posited by MSA), then these claims lack novelty in light of:
(a)German Patent Application Publication DE19606196A1 (Thomas);
(b)German Patent Application Publication DE19938727A1 (Dieter).
Clearview also contends that claims 1, 5, 6, 7, 8, 9, 10, 11, 12 and 15 lack an inventive step in light of the common general knowledge, or the common general knowledge together with Lutkus.
Clearview also alleges that Mr Miles and MSA have made unjustified threats in contravention of s 128 of the Patents Act and engaged in misleading or deceptive conduct in contravention of s 18 of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL).
For the reasons which follow, the claim for infringement has failed which has the consequence that the claim brought by MSA should be dismissed.
As to the cross-claim brought by Clearview, the attacks on the validity of the Patent have failed but I have accepted that MSA and Mr Miles made unjustified threats within the meaning of s 128 of the Patents Act in relation to a letter from their solicitors, and that MSA made an unjustified threat in contravention of that section in relation to an announcement. I have also accepted that MSA engaged in misleading or deceptive conduct in contravention of s 18 of the ACL, and that Mr Miles was knowingly involved in such conduct. Declaratory and injunctive relief will be the subject of orders to be made shortly after these reasons are published and after conferral by the parties. However, by reason of an order of Greenwood J dated 5 March 2021, issues concerning the quantum of any damages award will require determination at a further hearing. The cross-claim should otherwise be dismissed.
I will order the parties to confer with a view to drafting a form of order giving effect to my findings and draft directions in relation to the further hearing.
Additionally, the parties should have leave to appeal and, if necessary, leave to cross-appeal.
2. WITNESSES CALLED BY THE PARTIES
2.1 Witnesses called by MSA
Dr Bruce William Field is a mechanical engineer, consultant and retired academic in the field of mechanical engineering, a subject in which he has a PhD. Since before 1990, Dr Field has worked primarily as a full-time academic. Between this time and the priority date, his role also included teaching with some research work and consulting work. Dr Field affirmed four affidavits in the proceeding dated 17 November 2021, 23 March 2022, 6 May 2022 and 9 June 2022.
My general perception was that Dr Field’s evidence was heavily influenced by his academic experience, and by reliance on abstract and theoretical concepts. I expand on this further below.
Mr Michael Simonetti was (and remains) an expert in digital marketing and advertising as at the priority date. Mr Simonetti is the founder of AndMine, a digital agency assisting clients with online marketing and advertising. Mr Simonetti swore two affidavits dated 23 March 2022 and 12 May 2023.
Ms Suzanne Madar, solicitor at King & Wood Mallesons, affirmed three affidavits in this proceeding, dated 17 November 2021, 22 March 2022 and 5 May 2023. Ms Madar was not cross-examined.
2.2 Witnesses called by Clearview
Mr William Hunter is a consulting engineer with Masters level qualifications in mechanical engineering. Mr Hunter has more than 30 years of experience in developing and designing industrial products. Mr Hunter affirmed three affidavits in the proceeding dated 17 November 2021, 22 March 2022 and 13 May 2022.
Mr Rodney Cruise is a patent attorney, with more than 33 years of experience in patent searching. As at the priority date, and for at least seven years prior to 2007, the majority of Mr Cruise’s work related to patent and literature searching. Mr Cruise affirmed three affidavits in the proceeding dated 17 November 2021, 13 May 2022 and 9 May 2023.
Mr Graeme Chapman, Project Engineer for Clearview, affirmed one affidavit dated 19 November 2021, regarding the development of the Clearview Easy Slide from the Black Widow Easy Slide. Mr Chapman was not cross-examined.
Ms Robynne Sanders, solicitor at DLA Piper, affirmed three affidavits dated 17 November 2021, 8 May 2023 and 9 May 2023. Ms Sanders was not cross-examined.
Mr Kenneth Stewart is a German to English translator who affirmed one affidavit dated 12 October 2021 annexing his translation of Dieter and Thomas from the original German documents. Mr Stewart was not cross-examined and MSA did not dispute the accuracy of these translations.
2.3 Joint expert report
Dr Field and Mr Hunter prepared a joint expert report which was filed on 9 March 2023 (JER).
3. THE SKILLED ADDRESSEE
The person skilled in the art is the hypothetical person to whom the patent specification is addressed and who, generally speaking, works in the art or science with which the invention is connected: see, e.g., Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225; [2000] FCA 980 (Finkelstein J) at [70]–[71]. It is not a reference to a specific person but is a legal construct or notional person who may have an interest in using the products or methods of the invention, making the products of the invention, or making products used to carry out the methods of the invention either alone or in collaboration with others having such an interest: Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd (2015) 114 IPR 28; [2015] FCA 735 (Nicholas J) at [26]; Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017 (Burley J) at [86].
In this case, the person skilled in the art is someone with expertise in and knowledge of mechanical engineering. There was no dispute in this case that both experts had such expertise.
4. THE PATENT
4.1 The specification
The title of the Patent is “Apparatus for Storing or Holding Items”.
The Field of the Invention states that “[t]he present invention relates to an apparatus for storing or holding one or more items.”
The Background to the Invention describes known storage systems used in four-wheel drives and commercial vehicles, such as sliding drawers or other sliding arrangements, as follows:
Four-wheel drive and off-road enthusiasts frequently undertake lengthy journeys into wilderness areas. In order to provide for the necessities of life during such journeys, it is common for four [sic] drives and off-road enthusiasts to fit their vehicles with appropriate storage systems and refrigerators. Tradesmen often have to carry many tools in their vehicles and frequently use large tool boxes.
One common storage system fitted to four wheel drive and commercial vehicles includes sliding drawers mounted to the luggage compartment of four wheel drive vehicles. The sliding drawers typically have a common top surface that provides a further surface for storing further items. It will be understood that the top surface is positioned at a height above the height of the floor of the luggage compartment of the vehicle.
Refrigerators and tool boxes that are used by four-wheel-drive and off-road enthusiasts (which are typically called "car refrigerators" or “car fridges”) or tradesmen typically have a lid that pivots upwardly about a top edge thereof. In order to provide access to such refrigerators or tool boxes, they may be mounted on a sliding arrangement that itself is mounted to the common top surface of the storage drawers. In order to store the fridge or tool box, the sliding arrangement is slid into the vehicle such that the refrigerator or tool box sits over the top surface of the storage drawers. In order to access the refrigerator or tool box, it is slid outwardly so that the sliding arrangement is extended and the refrigerator or tool box extends out of the luggage compartment of the vehicle.
It also states that, throughout the specification, the term “comprising” and its grammatical equivalents shall be taken to have any inclusive meaning unless the context of use clearly indicates otherwise.
The specification then provides a Brief Description of the Invention, and states that it is an object of the present invention to provide an apparatus that provides an improvement over the prior art devices mentioned above, or at least provides a commercial alternative.
The specification goes on to describe aspects of the invention commencing at page 2 line 5. It states that:
In a first aspect, the present invention provides an apparatus for storing one or more items, the apparatus comprising a first part adapted to be mounted to a surface or a wall and a second part mounted to the first part, the second part adapted to store or hold one or more items, wherein the second part is movable relative to the first part such that the second part can be moved from a storage position to a first access position at which the second part is at one level, the second part being movable from the first access position to a second access position, the second access position being located at a lower level than the first access position.
The specification then progressively informs the reader of the componentry to be used in performing the invention.
For example, on page 2, the specification states:
In one embodiment, the second part slidably moves from the storage position to the first access position (and vice versa). When in the storage position, the second part may at least partially overlie the first part. In some embodiments, when in the storage position, the second part may be positioned at essentially the same level as the first part.
The concepts of “sliding mechanism” and “linkage arrangement” or “linkage mechanism” are introduced from page 2 line 17 as follows:
In some embodiments, the apparatus is provided with a sliding mechanism that can slidably move relative to the first part, the apparatus further including a linkage arrangement mounted to the sliding mechanism, the linkage mechanism mounting the second part to the sliding mechanism, the linkage mechanism operative to move the second part between the first access position and the second access position.
On page 2 commencing at line 23, the specification identifies that the first part, in one embodiment, may comprise opposed rails or sliding guides which are mounted to a surface or wall. One alternative which is stated is that “the opposed rails or sliding guides may be provided with attachment means for mounting to a surface. For example, the attachment means may comprise a strip of adhesive or adhesive tape”.
On page 3 commencing at line 3, by reference to another embodiment, it is stated that:
The second part may comprise a support frame. Alternatively, the second part may comprise a platform. In either case, the second part is adapted to support one or more items are thereon. For example, the second part may support a small refrigerator, such as a refrigerator commonly used in four-wheel-drive vehicles. It will be appreciated that the second part may provide support for a number of other items and that the present invention should not be considered to be limited solely to use in supporting small refrigerators.
The specification also refers to “actuating means”, “offset lever”, “biasing means” and “pivotally connected”. Such references appear in the specification commencing at page 3 line 10 as follows:
The apparatus may further comprise actuating means for moving the second part from the first access position to the second access position. The actuating means may comprise, for example, an offset lever connected to one or more linkages. Moving the lever, such as by rotating the lever upwardly or downwardly, causes the linkages to rotate and causes the second part to move between the first and second access positions. A biasing means, such as a spring, hydraulic cylinder, gas strut or the like, may be used to assist in moving the second part between the first access position and the second access position. A handle may be pivotally connected to the offset lever to facilitate movement of the offset lever.
Preferably movement from the first access position to the second access position comprises simultaneous vertical and horizontal movement. Even more preferably the second part extends further from the first part as it is lowered. Preferably the one or more items are maintained substantially level (i.e. not tilted or angled) when being moved from the storage position to the first access position, and also from the first access position to the second access position. The second part, or at least a portion of the second part, may by [sic] extendable in the second access position.
Preferably the second part is mounted to a mechanism that is adapted to lower the second part from the first access position to the second access position. The mechanism preferably moves/slides with the second part from the storage position to the first access position, and is actuated to move the second part from the first access position to the second access position…
Reference is made to the storage position commencing at page 4 line 3 as follows:
In the storage position the first part, second part, and mechanism are preferably adjacent and, even more preferably generally flat. If the second part is holding one or more items, it preferably holds those items from below, or at least at or near a lower region of the item.
A second embodiment is described at page 4 of the specification commencing at line 12:
In a second embodiment, the present invention provides an apparatus for storing a car fridge or a tool box in or on a vehicle, the apparatus comprising a base or frame adapted to be mounted in or on the vehicle, a sliding arrangement fixed to the base or frame, the sliding arrangement being slidably movable between a retracted position and an extended position, and a support platform being mounted to the sliding arrangement wherein the support platform is mounted to the sliding arrangement such that when the sliding arrangement is in the extended position, the support platform is movable between a first height that is at essentially the same height as the sliding arrangement and a second height that is lower than a height of the sliding arrangement. Preferably, the second height is lower than the level of the base or frame.
In another aspect, the present invention provides a storage device in which the first access position is lower than the second access position. This provides for easier access in situations where the first part is mounted at a low level.
There may be provided an apparatus for storing a car fridge or a tool box in a vehicle, the apparatus comprising a base or frame mounted in the vehicle, a sliding arrangement fixed to the base or frame, the sliding arrangement being slidably movable between a retracted position and an extended position, and a support platform being mounted to the sliding arrangement wherein the support platform is mounted to the sliding arrangement such that when the sliding arrangement is in the extended position, the support platform is movable between a first height that is at essentially the same height as the sliding arrangement and a second height that is higher than a height of the sliding arrangement.
In a further aspect, the present invention provides an apparatus for storing one or more items, the apparatus comprising a first part adapted to be mounted to a surface or a wall and a second part mounted to the first part, the second part adapted to store or hold one or more items, wherein the second part is movable relative to the first part such that the second part can be moved from a storage position to a first access position at which the second part is at one level, the second part being movable from the first access position to a second access position, the second access position being located at a higher level than the first access position.
On page 5, lines 11–25, there is described “another aspect” of the invention, in identical terms to claim 1 (being the first independent claim).
The specification then contains a further consistory clause commencing on page 5 at line 27, which is in the same terms as claim 15 (being the second independent claim):
In another aspect, the present invention provides an apparatus for storing a car fridge or a tool box in or on a vehicle, the apparatus comprising a base or frame adapted to be mounted in or on the vehicle, a sliding arrangement fixed to the base or frame, the sliding arrangement being slidably movable between a retracted position and an extended position, and a support platform being mounted to the sliding arrangement wherein the support platform is mounted to the sliding arrangement by a linkage arrangement including at least one arm pivotally connected at or near one end to the sliding mechanism and pivotally connected at or near another end to the support platform, and an offset lever connected to at least one of the at least one arm such that when the sliding arrangement is in the extended position, the support platform is movable between a first height that is at essentially the same height as the sliding arrangement and a second height that is lower than a height of the sliding arrangement by moving the offset lever.
There is then a brief description of the drawings, which includes five drawings of the same embodiment of the invention (Figures 1 to 5). Figures 1 and 2 are reproduced below:
Figures 6 to 10 are photographs of the apparatus shown in Figure 1 moving from the first access position to the second access position.
At page 8, lines 10–25, the linkage arrangement of the invention is described as follows:
As shown in figures 1 to 5, the support platform 22 is mounted to the sliding arrangement by use of two pivoted linkage arms on either side of the support platform. For example, referring to figure 1, linkage arms 24, 26 are mounted to one side of the platform. Similarly, two other linkage arms are mounted to the other side of the support platform 22. As best shown in figure 5, linkage arm 24 is pivotally mounted as one end to a pin 28. Pin 28, in turn, is mounted to the support platform 22. The linkage arm 24 is pivotally mounted at its other end to a pin 30. Pin 30 is, in turn, mounted to the innermost sliding member 20.
The other linkage arms are mounted to the platform and sliding arrangement in a similar fashion. For example, as shown in figure 1, linkage arm 26 is mounted to the sliding arrangement via pin 32. The other end of linkage 26 is pivotally mounted to the support frame 22 by pin 34. Similarly, on the other side of support platform 22, linkage arm 38 is pivotally mounted at one end to the platform by pin 40 and is pivotally mounted at the other end to the sliding arrangement by pin 42. Linkage arm 44 is pivotally mounted at one end to platform [sic] by pin 46 and pivotally mounted at the other end to the sliding arrangement by pin 48.
At page 9, lines 4–23, there is a description of how the platform is moved between the first and second access position in the following terms:
…the apparatus is further provided with an actuating means 60. The actuating means 60 comprises an offset lever 62 having an offset portion 63 that is mounted to linkage arm 24. This may be achieved, for example, by welding the end of offset portion 63 to the linkage arm 24. A handle 66 is connected via pivoting arm 68 to the offset lever 62. A pin 70 is used to connect the pivoting arm 68 to the offset lever 62. A gas strut 72 is also provided. Gas strut 72 is connected at one end via bracket 74 to the sliding mechanism to which the platform 22 is connected. The other end of gas strut 72 is connected to the offset lever 62. As is shown in figure 1, as the platform 22 moves between the first access position 56 and the second access position 58, the gas strut extends to thereby ease lowering and raising of the platform 22.
…
In order to lower the platform 22 from the first access position 56 to the second access position 58, the handle 66 is grasped by a user and swung upwardly. This causes the offset lever 62 to move from the position 62A (see figure 1) to the position 62B (shown in figure 1 in dotted outline). As the end of the offset portion 63 of offset lever 62 is mounted to the linkage arm 24, moving the offset lever as described above (and as shown by reference to arrow 78) causes the linkage arm 24 to pivot downwardly. This also causes the linkage arm 26 to pivot downwardly. The support platform also moved downwardly.
At page 11, lines 1–9, it is stated that:
The present invention provides an apparatus that allows for storage of one or more items in the storage position. For ease of access, the apparatus allows the second part to be moved to a first access position. The first access position is normally located outwardly from the storage position so that easier access is provided. The first access position is normally at essentially the same vertical height as the storage position. If the first access position is inconveniently or uncomfortably high, the second part of the apparatus can be moved from the first access position to the second access position. As the second access position is located at a lower level than the first access position, easier access may be obtained.
At page 11, lines 10 to 19, the specification states that the invention may be susceptible to variations and modifications other than those specifically described and then provides several examples of modifications but does not suggest any modification to the linkage arrangement, the arrangement of the offset lever, or the way in which the offset lever is positioned and interacts with other components of the apparatus. This passage includes the statement that, “Although a support platform is shown in the embodiments…, it will be appreciated that an item to be stored or held by the apparatus may be directly connected to the linkage arms”.
4.2 The claims
The Patent concludes with 20 claims, of which the relevant claims are asserted to be infringed.
The relevant claims are set out below, with claims 1, 5, 6 and 15 broken down into their integers for convenience.
As to Claim 1:
1.1
An apparatus for storing one or more items, the apparatus comprising
1.2
a first part adapted to be mounted to a surface
1.3
a second part adapted to store or hold one or more items
1.4
a sliding mechanism that is slidably movable relative to the first part
1.5
a linkage arrangement
1.6
including one or more arms pivotally connected at or near one end to the sliding mechanism
1.7
and pivotally connected at or near another end to the second part, and
1.8
an offset lever connected to at least one of the one or more arms,
1.9
wherein the second part is movable relative to the first part such that the second part can be moved from a storage position to a first access position by sliding the second part outwardly relative to the first part
1.10
the second part being at one level in the first access position,
1.11
the second part being movable from the first access position to a second access position by moving the offset lever,
1.12
the second access position being located at a lower level than the first access position.
As to Claim 5:
5.1
An apparatus as claimed in any one of the preceding claims
5.2
further comprising a biasing means to assist in moving the second part between the first access position and the second access position.
As to Claim 6:
6.1
An apparatus as claimed in claim 5
6.2
wherein one end of the biasing means is connected to the sliding mechanism
6.3
and another end of the biasing means is connected to the offset lever.
Claims 7 to 12 are set out below:
7.
An apparatus as claimed in claim 5 or claim 6 wherein the biasing means comprises a gas strut.
8.
An apparatus as claimed in any one of the preceding claims wherein, when in the storage position, the second part at least partially overlies the first part.
9.
An apparatus as claimed in any one of the preceding claims wherein, when in the storage position, the second part is positioned at essentially the same level as the first part.
10.
An apparatus as claimed in any one of the preceding claims wherein the first part comprises opposed rails or sliding guides.
11.
An apparatus as claimed in claim 10 wherein the sliding rails or guides are mounted to a base and the base is adapted to be mounted to a surface.
12.
An apparatus as claimed in any one of the preceding claims wherein the second part comprises a support frame or a platform.
As to Claim 15:
15.1
An apparatus for storing a car fridge or tool box in or on a vehicle, the apparatus comprising
15.2
a base or frame adapted to be mounted in or on the vehicle,
15.3
a sliding arrangement fixed to the base or frame,
15.4
the sliding arrangement being slidably movable between a retracted position and an extended position, and
15.5
a support platform being mounted to the sliding arrangement
15.6
wherein the support platform is mounted to the sliding arrangement by a linkage arrangement
15.7
including at least one arm pivotally connected at or near one end to the sliding mechanism
15.8
and pivotally connected at or near another end to the support platform, and
15.9
an offset lever connected to at least one of the at least one arm
15.10
such that when the sliding arrangement is in the extended position, the support platform is movable between a first height that is at essentially the same height as the sliding arrangement and a second height that is lower than a height of the sliding arrangement by moving the offset lever.
5. CLAIM CONSTRUCTION
5.1 Issues on construction
As already observed, the disputed terms appear in claims 1 and 15, and are: (a) “pivotally connected”, (b) “offset lever” and (c) “offset lever connected to at least one of the at least one or more arms” (claim 1) or “offset lever connected to at least one of the at least one arm” (claim 15) (emphasis added).
A further issue arose following the preparation of the JER in connection with the construction of integers 1.6 and 1.7 which, in combination, state that “one or more arms pivotally connected at or near one end to the sliding mechanism and pivotally connected at or near another end to the second part”. That issue will also be addressed.
5.2 Principles on construction
The principles applicable to patent claim construction are well-settled and were not in dispute. In Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86; [2005] FCAFC 90 (Hill, Finn and Gyles JJ) at [67], the Full Court summarised the principles for the construction of patents as follows:
(1)the proper construction of a patent specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 (Sheppard J) at page 400;
(2)a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 (Hely J) at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberly-Clark Australia Pty Limited v Arico Trading International Pty Limited (2001) 207 CLR 1; [2001] HCA 8 (Gleeson CJ, McHugh, Gummow, Hayne and Callinan JJ) at [24];
(3)the words used in a specification are to be given the meaning which a normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation at page 391;
(4)while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberly-Clark at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 (Dixon CJ, Kitto and Windeyer JJ) at page 610;
(5)the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221; (1939) 56 RPC 23 at page 39;
(6)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 (Gummow J) at pages 485–486;
(7)the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time: Kimberly-Clark at [24]; and
(8)it is for the Court, not for any witness however expert, to construe the specification: Sartas No 1 at pages 485–486.
This decision, and these principles, were cited with approval in Reflex Instruments Asia Pacific Pty Ltd v Globaltech Corporation Pty Ltd [2023] FCAFC 158 (Moshinsky, Burley and Kennett JJ) at [75].
5.3 Issue 1: meaning of “pivotally connected”
5.3.1 The competing contentions
The first disputed term appears in integer 1.6 and integer 15.7, namely “one or more arms pivotally connected at or near one end to the sliding mechanism” (emphasis added). It also appears in integers 1.7 and 15.8.
MSA submits that a pivotal connection is one in which the connection between components is rotational so as to allow one component to rotate with respect to the other around a point or axis, and that the point of rotation does not need to be fixed.
Clearview submits that “pivotally connected” refers to a connection between two components that permits only rotational movement of the components relative to one another.
5.3.2 The expert evidence
The expert evidence indicated that the term “pivotally connected” has (and had as at the priority date) a technical meaning for skilled addressees. It is therefore necessary to have regard to this technical meaning: see Product Management Group Pty Ltd v Blue Gentian LLC (2015) 240 FCR 85; [2015] FCAFC 179 (Kenny and Beach JJ) at [36].
The experts were asked by senior counsel for MSA to explain their understanding of this term during the concurrent evidence session.
Dr Field’s response was as follows:
DR FIELD:Pivotally connected, to me, means connected as in not able to come apart in a way that has a rotation that is either a pivot or a rotation that could be or is equivalent to having a pivot. Rotations can occur around a pivot, such as the hinge pin in an ordinary door hinge. But rotations can occur because of the way mechanisms are arranged to cause a rotation or to allow a rotation about a point which isn’t an actual object. For example, a train going around a curve is pivotally connected to the ground, even though there is no pivot in the middle of the curve. It’s ‑ ‑ ‑
HER HONOUR: Sorry. It’s connected to the ground? Is that what you said?
DR FIELD: Yes. Pivoted relative to the ground.
HER HONOUR: Relative.
DR FIELD:Everything is relative. Kitchen cabinet doors open and shut without having a hinge pin. They have a mechanism which makes it pivot, but not on a pin or on an axle. So that’s what I mean by pivotally connected. Literally, with a pin, an axle, or as if on a pin as created by the mechanism design itself.
Mr Hunter’s response was as follows:
MR HUNTER: … So, in my view, pivotally connected simply means that, at the connection point, one component can only rotate with respect to the other component. So only rotate. And that’s consistent with the way in which the term “pivotally connected” is used in patent specification. In each and every instance, the way in which pivotally connected is described is that a pivot occurs at a pinned connection, and that pinned connection is a location at which only rotation is possible. So, for example, page 8, lines 15 to 17 of the patent:
The linkage arm 24 is pivotally mounted at its other end to pin 30. Pin 30 is, in turn, mounted to the inner most lighting member.
So that’s an example of that type of connection.
(Emphasis original.)
While Mr Hunter accepted that there are other ways of creating pivotal connections which did not involve a pinned connection (that is, the pivot point fixed at a particular location), he maintained that “pivotally connected” as explained in the specification of the Patent is, in all cases, a pinned connection and that a pinned connection is a connection where only rotation can occur. Mr Hunter further explained during the hearing:
[I have] from my engineering training an understanding of what a revolute joint is, which is a joint which is – allows – is a pivotal connection that allows one degree of motion only, which is rotation, and I read a patent specification and I’m trying to understand pivotal connection from claim 1 in the context of the patent specification, and in every instance, the patent specification provides me with examples of pivotal connection which confirm my understanding of what a pivotal connection is, ie, one degree of freedom, meaning rotation, why would I be taken to some other idea for pivotal connection in claim 1?
As to this, Dr Field said that a pivot point did not need to be fixed at a particular location – that broader view, he said, arose from specific teaching and design experience he had with various components including hidden hinges, linkages that have a rotational point that is not a hinge pin, ligamentous type joints, flexure joints, and a reclining mechanism in a wheelchair, which had a “virtual pivot”.
However, it was also Dr Field’s evidence that there was nothing in the Patent which suggested “directly” to him that the pivot (in the context of “pivotally connected”) was of the kind that did not need to be fixed at a particular location. I can find no such suggestion either. This tends to support the construction posited by Mr Hunter.
Leaving aside the issue of whether a fixed or pinned connection is required, Dr Field maintained the view that “pivotally connected” encompassed a connection which allowed rotation as well as other degrees of motion, such as a sliding motion.
Mr Hunter distinguished a pivotal connection from a sliding connection (which he considered to be a different type of connection), such that, even if the sliding connection had rotational movement, the connection would no longer (in engineering terms) be referred to as a pivotal connection.
Dr Field did not like the expression “sliding connection” as used by Mr Hunter and expressed the view that it was “confusing” and “not useful” to use the same word, being “sliding”, for a connection that allowed for both rotation and sliding movement, because it would involve the same word being used for two types of connection.
It is difficult to reconcile this stance with Dr Field’s view as to the meaning of “pivotally connected” which, on his evidence, requires the same word “pivotally” to encompass both a pivotal connection, and a pivotal and sliding connection. This is especially as, during the view of the Clearview Easy Slide (which occurred in the court room with these experts and was filmed), Dr Field again emphasised the importance of precision in names:
I accept that Mr Hunter and I have different backgrounds and therefore have different ways of approaching the terminology. I have, I think, more background than he – I’m not trying to one-up – about design of mechanisms. So I would tend to use more specific descriptions than perhaps he. So it’s not a matter of right or wrong. But, as far as I’m concerned, if this has got dual movement, sliding and pivoting, it doesn’t help to describe it as a sliding connector because over here we have another sliding connector when the device moves in and out, so if that’s a sliding connector, this is sliding and pivoting, it deserves a separate name. So I call it a sliding pivot to distinguish it from a straight slider. I think Mr Hunter is calling them both sliders and that, to me, isn’t useful.
(Emphasis added.)
Self-evidently, the descriptor “sliding pivot”, which encompasses both pivotal and sliding movements, is more precise than describing a connection as “pivotally connected” or as a pivotal connection, if the latter is intended to encompass a sliding movement as well.
Yet the claims do not use the term “sliding pivot”. They use the term “pivotally connected” and there is no disclosure or even suggestion in the claims or the specification of a connection which involves a sliding pivot. Based on Dr Field’s evidence that precision in names is important (which evidence makes sense in the context of the type of skilled addressee in this case to whom the Patent is addressed), this tends against a construction of “pivotally connected” as encompassing a sliding movement (for example) or any movement other than rotation.
This is supported by the fact that Dr Field accepted (quite correctly) that the consequence of his approach to “pivotally connected” would allow for what he referred to as a “sliding pivot” (being a term not used in the Patent) to be placed at all four pivot points of the parallelogram linkage arrangement in the Patent, that is, at points 28, 30, 32 and 34 as seen in Figure 1. He conceded that if this occurred, there would be too many degrees of freedom to maintain the platform substantially level, as referred to at page 3 of the specification, unless other links were added. The addition of such further links is not addressed anywhere in the Patent, but they would be required. These matters also tend against the construction of “pivotally connected” in the claims as encompassing a sliding movement (for example) or any movement other than rotation.
Dr Field also accepted (and I agree) that the invention in the Patent is a relatively simple mechanical invention. Yet, on occasion, he appeared to take an overly complicated and technical approach to construction of the claims. This was demonstrated by (for example) his view that the relevant axis of rotation in a pivotal connection could be a “virtual centre of rotation” or an “instantaneous centre” (which required an understanding of complex vector mechanics). By contrast, Mr Hunter explained that the concept of “instantaneous centre” was not widely understood or practised in mechanical engineering, and that he would have to resort to textbooks to understand what an “instantaneous centre” was, and how it was calculated. These matters tend to support a conclusion that a person skilled in the art as at the priority date would approach the construction of the term “pivotally connected” in the claims in the way that Mr Hunter did, without the need to resort to complex engineering concepts which require resort to be had to academic texts. This is especially having regard to the nature of the invention and the content of the specification (which includes hand-drawn figures and a reference to using adhesive tape as an attachment at page 2, line 31 of the specification).
5.3.3 Consideration
I have indicated above that, for various reasons, I prefer Mr Hunter’s construction in preference to Dr Field’s construction although that is not, of course, decisive. I turn then to the arguments advanced by the parties, in particular those of MSA.
Both sides relied upon the dictionary definition of “pivot”, and MSA also relied upon the dictionary definition of “pivotally”. That was so even though they also called experts who were united that the meaning to be ascribed to “pivotally connected” would be interpreted by mechanical engineers in a way which went beyond the English meaning of the words. It follows that the dictionary definitions proffered by the parties do not provide much, if any, assistance in a determination of the meaning that a skilled addressee would give to “pivotally connected” in the claims as at the priority date, having regard to his or her own general knowledge and to what is disclosed in the body of the specification.
MSA’s posited construction, relying upon aspects of Dr Field’s evidence, appeared to be focused on an abstract debate about the meaning of the words “pivotally connected”, rather than the meaning of those words in the claims. Further, my impression was that its arguments tended to move away from the manner in which the term would be understood by a skilled addressee and were more focused on ensuring that the term would be construed in a way which had the consequence that the Clearview Easy Slide (which has a sliding pivot) would be regarded as having infringed the Patent.
Further, MSA’s submissions did not grapple with the following, each of which told against MSA’s contended construction:
(1)the lack of any disclosure in the Patent of a pivotal connection between the components identified in the integers in question and which included any kind of movement other than, or in addition to, a rotational one;
(2)the fact that the claims use the term “pivotally connected” and not “sliding pivot”, remembering that (according to Dr Field) the use of the precise term is important. That precision is required makes sense – the Patent is addressed to a person skilled in the art, the term “pivotally connected” has a technical meaning to those skilled in the art and the invention is for a mechanical device;
(3)the fact that, if a sliding pivot was used at each of the four “pivotal connections” in the device, this would render the device uncontrollable in the absence of other links or constraints in the device to control motion. However, such arrangements are not contemplated in the Patent. As to this, a construction according to which the invention will work is to be preferred to one in which it may not: see Blue Gentian at [39];
(4)the fact that the invention in the Patent is for a relatively simple mechanical device such that it would not be expected that a skilled addressee would be required to have an understanding of complex vector mechanics.
By contrast to the inconsistencies in Dr Field’s evidence, Mr Hunter’s evidence remained consistent that a pivotal connection (which he also referred to as a revolute joint) was a connection that had only one degree of freedom, that is, it allowed only rotational motion. As submitted by Clearview, that construction is also consistent with: (a) the manner in which a skilled person would understand the term in the context of a mechanical apparatus, and (b) the way that the term is used throughout the Patent.
It is therefore not correct to say, as MSA does, that Mr Hunter or Clearview are impermissibly restricting the meaning to be given to the term “pivotally connected” in the claims because of what is disclosed in the specification. That is because Mr Hunter’s position was that “pivotally connected” has a particular meaning which a normal person skilled in the art would attach to that term apart from the disclosure in the specification and that there is no disclosure in the Patent of anything which indicates to him that a different meaning should be given to that term. In other words, the meaning given by Mr Hunter to the term is not narrowed by the disclosure in the specification – rather, it is confirmed by what is disclosed in the specification.
When one looks at the specification, it is apparent that Mr Hunter is correct in terms of his description of what is disclosed in the Patent. That is because the specification refers repeatedly and in simple terms to a sliding movement when that is intended (such as “sliding mechanism that can slidably move” or “mechanism preferably moves/slides with the second part”) whereas in the case of connections in the linkage arrangement of the kind described in integers 1.6/1.7 and 15.7/15.8, there is no suggestion that these connections have anything other than a pivotal (i.e. rotational) movement. In particular, notwithstanding that the apparatus in claims 1 and 15 are defined by what they “comprise” and that this term is defined as being inclusive, the specification does not disclose the construction of an apparatus which has pivotal connections of a type which is something other than that which would be understood by the notional skilled addressee by reference to that term (i.e. rotational).
For these reasons, I accept Clearview’s construction as to the meaning of “pivotally connected” in claims 1 and 15. That is, I find that “pivotally connected” in the claims refers to a connection between two components that permits only rotational movement of the components relative to one another.
5.4 Issue 2: meaning of “offset lever”
5.4.1 The competing contentions
The second disputed term “offset lever” appears in integers 1.8, 1.11, 15.9 and 15.10.
Both experts agreed that the term “offset lever” is not a term of art in mechanical engineering.
MSA submits that:
(1)an offset lever is a lever that is modified by a geometric offset in its shape, which construction is based on the ordinary meaning of its two components, both being ordinary English words: “offset” and “lever”;
(2)in the context of “Machinery”, the word “offset” is defined in the Macquarie Dictionary (8th ed, 2020) as “a more or less abrupt bend in a pipe, bar, rod, or the like, to serve some particular purpose” and in the Concise Oxford English Dictionary (12th ed, 2011) as “a bend in a pipe etc. to carry it past an obstacle”;
(3)a lever is “a bar or rigid piece acted upon at different points by two forces, as a voluntarily applied force (the power) and a resisting force (the weight), which generally tend to rotate it in opposite directions about a fixed axis or support (the fulcrum)”: Macquarie Dictionary (8th ed, 2020);
(4)its construction is consistent with the specification and points to the exemplary embodiment, in which the offset portion (63) is a bend in the offset lever.
Clearview submits that:
(1)the term “offset” in a mechanical device means that one component is spaced apart from, or set to the side of, another component (relying upon Mr Hunter’s evidence);
(2)the term “lever” means a solid component which has a rotational point and is capable of transmitting torque or leverage (relying upon Dr Field’s evidence, with which Mr Hunter agreed);
(3)by itself, the term “offset lever” does not identify what the lever is offset from, and its meaning is not apparent from the claims alone. It submits that, as such, a skilled person would look to the specification to assist their understanding of the term in the context of the Patent and would not attempt to understand the term “offset lever” by hybridising one dictionary definition of “offset” and one dictionary definition of “lever”;
(4)an offset lever in the claims is a lever having a centre line that is offset (that is, spaced apart) in the plane of operation of the mechanism from the centre line of one of the linkage arms to which it is connected.
5.4.2 The expert evidence
In his first affidavit, Mr Hunter stated at [48]–[53]:
I am familiar with the term “offset” as this is used in mechanical devices. When used in relation to a mechanical device I understand the term “offset” to mean that the item that is offset is spaced apart, or set to the side, from another component. Therefore, I understand an “offset lever” to mean a lever that is set off to one side or spaced apart from another component. However, the term “offset lever” alone does not tell me what the lever is offset from. Without this information, the term is not clear to me. Therefore, in order to understand this term, I have looked at the remaining language of claim 1 and references to “offset lever” that appear in the specification.
Neither the claims nor the remainder of the specification explain what is meant by an offset lever. The specification also does not explain the purpose of the lever being offset.
Claim 1 states that the “offset lever” is “connected to at least one of the one or more arms”. This suggest [sic] to me that the “offset” in “offset lever” is an offset between the lever and the arm to which it is connected. This understanding of “offset lever” is consistent with the single example of an “offset lever” that is given in the specification. This is described at page 9 lines 5 – 7 of the Patent, which refer to an offset lever 62 having an offset portion 63 which is mounted to linkage arm 24. From this, I understand that it is the offset portion 63 that is responsible for creating the offset in the offset lever 62.
Referring to Figure 1 of the Patent, I can see an offset between offset lever 62 and the linkage arm 24. This is most clearly seen when the offset lever is in its raised position (indicated as item 62B). If I was to draw a centre line through linkage arm 24 and a centre line through the lever arm 62B, those centre lines would be parallel and spaced apart, or set aside, from each other. This relationship between the lever and the linkage arm is consistent with my understanding of an “offset” in a mechanical device.
Similarly, in Figure 7 (extracted below), I see that offset portion 63 causes the centre line of lever 62 (which is marked by a red dashed line) to be spaced apart or set aside from the centre line of linkage arm 24 (also marked by a red dashed line) [sic] The red arrow shows the offset created between these two components.
I therefore understand the term “offset lever” as it is used in the claims to be referring to an active lever that is offset (i.e. set to one side or spaced away) from the component to which it is connected (i.e. the linkage arm).
In his second affidavit, Mr Hunter stated at [35]–[39] that:
… [I]n the context of the Patent, I understand that the “offset” refers to something that has a configuration and orientation that is not in line with another thing in the plane of motion of the device, so that it has functional significance in the way in which the device operates.
By way of explanation, a mechanism such as the one disclosed in the Patent can be understood in a two-dimensional plane (notwithstanding that the device itself is three dimensional). This is because the motion of the device only occurs in two dimensions.
The motion of the device described in the Patent is illustrated by reference to drawings such as that shown in Dr Field’s Figure A, which is extracted below. In this drawing, there is no motion of the device in or out of the page. All the motion takes place in the plane of the page. The relevant “offset” in the offset lever is between the lever 62 and the linkage arm 24, which are parallel and offset to each other in the plane of the page.
Handle 66 also has a configuration and orientation that is not in line with the lever 62 (as it extends into the page). However, this is not described by the Patent as being “offset”, and nor do I regard it as being any type of offset that is relevant to the way the device moves and operates. In contrast, the “offset” in the offset lever is between the lever 62 and the linkage arm 24, and provides the function I described in paragraph 35 above.
The function of the offset lever as providing a point of attachment for the gas strut is described at page 9 lines 9 – 13 of the Patent: “A gas strut 72 is also provided. Gas strut 72 is connected at one end via bracket 74 to the sliding mechanism to which the platform 22 is connected. The other end of gas strut 72 is connected to the offset lever 62. As is shown in figure 1, as the platform 22 moves between the first access position 56 and the second access position 58, the gas strut extends to thereby ease lowering and raising of the platform 22.”
(Emphasis original.)
In the JER, Mr Hunter reiterated that he interprets “offset lever” to mean a lever which has an offset portion which is spaced apart (in the plane of the mechanism’s operation) from the longitudinal centreline of the lever.
Mr Hunter is criticised by MSA for adding the words “in the plane of motion of the device” in his construction of the term in his second affidavit, and for his opinion given in the JER, when those words were not part of his initial definition. Mr Hunter explained his reasons for this during the hearing, which included that Dr Field had a different interpretation (to which he was responding) which “takes us into a different plane other than the two-dimensional plane of operation of the mechanism”. He also explained that he had not volunteered it initially because he considered it to be self-explanatory “because all of the explanation of the way in which the mechanism worked in diagrams was in a two-dimensional sense, as mechanisms are often explained in engineering terms in a 2D planar sense”. Mr Hunter’s explanations for the modification to his initial construction are satisfactory, and MSA’s criticism is misplaced.
Mr Hunter also gave the following oral evidence during the concurrent evidence session:
MR FRANKLIN: And I’m suggesting to you that it need not be in a vertical orientation. It could be in a different orientation and still operate.
MR HUNTER: Yes, but the difficulty there, Mr Franklin, is that as a person skilled in the art I’m reading the patent and I’m trying to interpret a term, offset lever, which doesn’t have a general meaning in engineering terms. So the only way I can understand that term is to go into the patent specification and see how the patentee uses that term. Now, [the] patentee uses the term precisely in the manner that you’ve just described, which is that the offset is in the plane of operation of the mechanism. So if that’s what the patentee says that an offset lever is, then that’s what I take the meaning to be. The only – the only explanation which helps is the one embodiment that’s described in the patent. There are no others. So I have no other way of understanding what an offset lever is, other than by referring to that embodiment.
Mr Hunter also explained that it was entirely “inappropriate” to construct the meaning of offset lever from a dictionary and said that “engineers reading patent specifications don’t look at every term and look at dictionary definitions. We look at the specification to make sense of things”. When it was pressed upon him that he should have “simply” gone to the dictionary to understand what offset meant, Mr Hunter said this:
Well, you can suggest that to me, but that’s not what I did and that [sic] not what I do when I read patents. If I’m doing things the wrong way, perhaps I should be looking at the dictionary more often. I don’t know, but there are terms which, obviously, when they’re used in patent claims have a common sense easy to understand definition. You don’t need the dictionary even to look them up. But there are also terms which we come across, or I come across in patents which do need to be understood with the specification in mind. This is one of those cases.
In his first affidavit, Dr Field identified that a lever is a solid component which has a rotational point and is capable of transmitting torque or leverage. Mr Hunter agreed with this definition.
Dr Field’s definition of lever became more expansive in his second affidavit, when he was asked to consider novelty issues relating to prior art. Dr Field described a “lever” to have the following features:
(1)(pivoting about a fulcrum) pivoting movement about an axis (a fulcrum) to provide a force or torque. The fulcrum is located on or near the longitudinal axis of the lever;
(2)(arc of motion) an arc of motion that is less than a full revolution. That is, in engineering, a lever is generally understood to rotate about a fulcrum less than 360 degrees;
(3)(perpendicular force) force components are applied in directions that are perpendicular to the longitudinal axis of the lever; and
(4)(elongation) levers are ordinarily rigid beams elongated in the direction of the axis of the lever.
In the JER, Dr Field stated that he interpreted “offset lever” as being one of the formally recognised lever types that has a portion or portions not parallel to the remaining portion, with the apparent principal purpose in the Patent of facilitating compact storage of the device.
Dr Field also gave oral evidence that:
…Offset in an engineering context is a physical dimensional measurement. Something is offset from something else... It has a measurement that you can measure in millimetres or metres or kilometres…And when applied to [the lever] it implies a physical distance associated with a lever. The word lever has a technical meaning which, in simple terms, is described as a beam with two forces perpendicular to the beam and [a] fulcrum, a seesaw is a lever in a simple form, or one form.
…As far as I’m concerned, there [are] dual meanings of the – the word offset and the one is that the lever is offset from something else, which is not the lever. It is using the word offset to mean a parallel displacement. A distance from something, is an offset. And the second meaning is the lever isn’t a classic lever, it contains offsets, so it’s no longer, for example, a straight beam, it’s a beam with – with zigzags or folds within it.
…
…That is, offset lever might be a lever with its own offset and offset from something else and still be an offset lever. I can’t exclude the possibility that both offset types apply in any one circumstance.
…
…When I now look at the 888 patent, I can ask does the patent say whether the offset lever is a lever which is offset from something, or is the lever a lever which has offsets in its shape.
And what I see most readily, is a lever with offsets in its shape, in the preferred embodiment. I don’t see anywhere in the general description and the specification, that it is one type or the other. In fact, I think lever or even offset lever are not generally mentioned in the overall. It’s – it’s the offset lever in the specification is used as a preferred way of causing the mechanism to work. So in the preferred embodiment that I see, I do see something which is very close to a first order lever, except that it has a an offset along its length. The two portions of the lever, like the seesaw, has one portion parallel to but not in line with the other, and that is clearly an offset.
5.4.3 Consideration
Claims 1 and 15 do not describe the term “offset lever”. According to Dr Field, there are two possible meanings to be given to the term; however, which of those meanings is to be given to the term is unclear from the claims themselves.
As already observed, the claims must be construed in the context of the specification as a whole. As the meaning of the term “offset lever” in the claims is unclear, it is appropriate and indeed necessary to have resort to the specification to obtain an understanding of the meaning of “offset lever” in the claims. Contrary to MSA’s submission, such a course of action does not involve an impermissible use of the embodiment to define or restrict the claim; rather, it involves defining a term in a claim which is unclear by reference to the body of the specification.
Turning then to the specification, and other than in the consistory clauses or in the Detailed Description of the Drawings, the only references to “offset lever” appear at page 3 in a passage which commences at line 10:
The apparatus may further comprise actuating means for moving the second part from the first access position to the second access position. The actuating means may comprise, for example, an offset lever connected to one or more linkages. Moving the lever, such as by rotating the lever upwardly or downwardly, causes the linkages to rotate and causes the second part to move between the first and second access positions. A biasing means, such as a spring, hydraulic cylinder, gas strut or the like, may be used to assist in moving the second part between the first access position and the second access position. A handle may be pivotally connected to the offset lever to facilitate movement of the offset lever.
(Emphasis added.)
This passage tells the reader very little about why the word “offset” has been added before the word lever, rather than having the word “lever” appear on its own.
Because of this, it is necessary to have regard to the Figures in the specification, and to consider how they would be interpreted by the notional skilled addressee.
As to this, MSA is critical of an approach which is based on interpreting the apparatus in the Figures in a “2D planar sense” (as Mr Hunter did) but, again, its criticism is misplaced because it fails to grapple with the evidence of Mr Hunter (which Dr Field did not contradict) that mechanisms are often explained in engineering terms in a 2D planar sense. When asked by senior counsel for MSA why the offset portion must be spaced apart in the plane of the mechanisms operation, Mr Hunter gave this evidence:
Because that’s how I understand the mechanism is to be interpreted. That’s how all 2D planar mechanisms like this are interpreted in terms of how they function.
As the Patent is directed to a person with expertise in and knowledge of mechanical engineering, I will adopt the same approach (and, indeed, it is necessary that I do so).
Further, as Mr Hunter states in the JER, there is no description in the Patent of the offset being applied in any other plane.
The Figures depict that the “offset lever” has a centre line that is offset (ie. spaced apart) in the plane of operation of the mechanism from the centre line of one of the linkage arms to which it is connected. This is shown, for example, in the annotated version of Figure 7 prepared by Mr Hunter (see above at [88]), with 62 being the offset lever and 63 being the offset portion, which appears in his first affidavit. In this image, the red double-headed arrow is the offset of the centre line of the offset lever 62 from the linkage arm 24 to which it is connected.
If one uses the annotated Figure A from Dr Field’s affidavit, which Mr Hunter discussed in his second affidavit (see above at [89]), it is apparent that the offset lever 62 (when it is moved to position 62B) is offset (that is, spaced apart) from the centre line of the linkage arm 24 in the plane of motion of the device.
That offset occurs because of the displacement created by the offset portion 63. In the specification at page 9, lines 5–6, it is stated that, “The actuating means 60 comprises an offset lever 62 having an offset portion 63 that is mounted to linkage arm 24” (emphasis added). At page 9, lines 19–20, reference is made to “the offset portion 63 of offset lever 62 [which] is mounted to the linkage arm 24” (emphasis added). These sentences indicate that offset portion 63 forms part of the offset lever 62, and that offset portion 63 is the part of the lever which causes or creates the displacement referred to above.
Further, although the offset lever (including the offset portion) is depicted as a bent lever in the Figures, Mr Hunter’s evidence, which I accept, is that the bend has no functional significance in terms of how the mechanism works in a 2D planar sense. While Dr Field’s view was that the bend in the offset lever enabled the device to operate without the lever “snagging” on one of the arms, I did not understand this evidence was given by reference to the Figures and their interpretation in a 2D planar sense. This is confirmed by Dr Field’s evidence in the JER concerning the purpose of the offset by reference to page 4 of the specification.
For these reasons, I prefer Clearview’s construction to MSA’s construction as to the meaning of “offset lever” in integer 1.8, 1.11, 15.9 and 15.10. That is, I find that an “offset lever” in these integers is a lever having a centre line that is offset (that is, spaced apart and not in line with) in the plane of operation of the mechanism from the centre line of one of the linkage arms to which it is connected.
In reaching this view, I did not consider it to be necessary to decide the purpose of the offset lever which was the subject of a minor debate by the experts.
5.5 Issue 3: meaning of “connected to”
5.5.1 The competing contentions
The third disputed term appears in integer 1.8, namely “offset lever connected to at least one of the one or more arms” (emphasis added). It also appears in integer 15.9.
The dispute between the parties in relation to this term largely centres on whether the term “connected to” requires a direct or indirect connection.
MSA submits that the proper construction of “connected to” is that it connotes a relationship by which the link between the two parts can be effected by an indefinite number and type of intermediate components. It submits that, more particularly, “connected to” refers to a functional connection such that when Item X (in this case, the offset lever) is moved, so too is Item Y (such as, in the case of claim 1, the at least one of the one or more arms) and that there must necessarily be physical mechanical connections, albeit through intermediate components. MSA submits that whether the offset lever is “connected” to the arm(s) depends on whether, if the offset lever moves, the arm also moves.
Clearview submits that, in the context of the Patent, the term “connected to” requires a direct connection between the offset lever and the linkage arm (or arms) such that the offset lever acts directly on the linkage arm.
5.5.2 The expert evidence
Dr Field contends that the term “connected” describes the functional (causal) interaction between the relevant parts (offset lever and one or more arms) so as to achieve the stated kinematic outcome in the claim, namely, “the second part being movable from the first access position to the second access position by moving the offset lever”). He stated in the JER that:
My interpretation acknowledges that the offset lever is to cause the motion of any of the separate arms, such as (26), either directly, or via routine alternative linkages and structure, whether part 60 has been constructed from separate pieces or not.
That Clearview is an aggrieved party is common ground in this case. To succeed, it must therefore demonstrate that: (a) the relevant communications involve the making of a threat; and (b) the threat is unjustifiable.
11.2.2.1 KWM Letter
The KWM Letter stated (inter alia) that:
(1)MSA and Mr Miles were “concerned that the Clearview Easy Slide product range infringes the Miles Patent and [their] exclusive rights under that patent”;
(2)the Patent is “valid and enforceable and has been successfully enforced against a number of other traders”;
(3)any “manufacture, sale or use of products falling within the scope of any of the claims…will constitute an infringement”, and will entitle MSA and Mr Miles to “several remedies, including: an injunction… [and] damages…”;
(4)the Clearview Easy Slide product includes “each and every essential element of claim 1”; and
(5)MSA and Mr Miles “reserve all rights under the Miles Patent, as well as the right to present this letter to a Court as evidence should the need arise”.
MSA and Mr Miles accepted that the KWM letter involved a threat of patent infringement proceedings by each of them. However, they contend that the threat was not unjustified and rely upon an observation by Middleton J in DamorgoldPty Ltd v Blindware Pty Ltd (2017) 130 IPR 1; [2017] FCA 1552 at [422] that “[j]ust because proceedings for infringement are not sustained does not necessarily mean the threats are unjustified in terms of s 128”.
So much may be accepted. That is, while this Court has typically taken the approach that a finding that there has been no infringement means that the threats were unjustified (see, e.g., CQMS Pty Ltd v Bradken Resources Pty Ltd (2016) 120 IPR 44; [2016] FCA 847 (Dowsett J) at [159]), it is not the case that such a finding will necessarily result in a finding that a threat was unjustified. Rather, it depends on the circumstances.
In Damorgold, Middleton J considered whether certain notices circulated by the applicant constituted unjustified threats in circumstances where his Honour had rejected allegations of patent infringement and invalidity. The applicant in Damorgold argued that the threats were not unjustified because it had “good legal grounds for asserting the rights that it did” (citing Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 107 IPR 333; [2014] FCA 568 (Murphy J) at [672], [681]) and because it had previously succeeded in contested proceedings on the validity of its patent (citing JMVB at [212]–[213]): [419]. Justice Middleton concluded that the threats were not “objectively groundless or unjustifiable in light of the matters raised by Damorgold”. His Honour observed that s 128 “is not aimed at deterring infringement proceedings” and the conduct complained of by the respondent was not “the type of conduct that s 128 was aimed at covering in its operation”: [422].
By contrast to the facts relied upon by the applicant in Damorgold, MSA and Mr Miles submit that the threats in the KWM Letter were not unjustifiable “in light of the matters raised by [them] on infringement”. However, no further submissions were advanced by them which identify what those matters are or explain why this has the consequence that the threats were justified in circumstances where the infringement claim has failed.
This has the consequence that MSA and Mr Miles have not discharged their onus to establish that the threats in the KWM Letter were justified. It follows that the KWM Letter constituted an unjustified threat by them in contravention of s 128 of the Patents Act.
11.2.2.2 First MSA Announcement
The First MSA Announcement included the following statements:
MSA4x4 Accessories has commenced legal proceedings in the Federal Court against Clearview Towing Mirrors Pty Ltd alleging infringement of the granted Australian full patent which protects MSA 4x4’s DropSlideTM.
MSA4x4 alleges that Clearview’s Easy Slide product copies essential features of the DropSlideTM patented technology. MSA4x4 is seeking an injunction preventing Clearview from manufacturing or selling the Easy Slide, as well as damages to compensate MSA4x4 for such infringement.
The MSA4x4 DropSlideTM is an industry first product … [which] has been the benchmark in the industry since coming to the market in 2007 and continues to be to this day.
MSA4x4 has exclusive rights to an extensive patent portfolio, both in Australia and internationally, which protect the DropSlideTM and many other innovative products in MSA4x4’s range.
“We take infringement of these valuable intellectual property rights very seriously, and we will not hesitate to enforce those rights,” said Shane Miles, director of MSA4x4.
“We are always watching the market for copies. It is easier for our competitors to simply copy our successful product than to create something new. We will not stand for this. We stand up for innovators in our industry and we will do everything we can to protect our investment in innovation.”
That the First MSA Announcement was published to customers and prospective customers was not disputed by MSA in its closing submissions. In any event, such publication is established by the fact that it appeared on MSA’s Facebook and LinkedIn pages on 11 February 2021, being about two days after this proceeding was commenced. That such publication occurred is also apparent, and is inferred, from the following documents:
(1)In an email from Mr Miles to MSA’s Marketing Manager Mr Richard Unwin dated 25 January 2021, Mr Miles provided a list of parties (including “industry contacts”) for the announcement to be sent to. Mr Peter Hazer, identified as the General Manager of MSA in his email signature, suggested in response that the announcement be sent through other manufacturing companies, and on LinkedIn; to which Mr Miles agreed, stating “Yes good idea, can spread it with others and their media, as well as Linkedin”;
(2)The “first pass” of the distribution list contained a list of more than 1,423 names;
(3)In an email dated 11 February 2021, Mr Miles approved the sending of the announcement by Mr Unwin and, in response, Mr Unwin noted:
Email list – Mailchimp 1,304 people
Industry Email List 81 people
Social Media – 43,000+ people.
The First MSA Announcement referred to past events, namely Clearview’s “infringement”, that Clearview’s Easy Slide product copies essential features of the DropSlideTM patented technology, that MSA had commenced proceedings and was seeking an injunction to prevent Clearview from selling the Clearview Easy Slide. These were statements of fact but they provide the context for what follows.
The First MSA Announcement then referred to future matters, namely that MSA takes infringement “of these valuable intellectual property rights very seriously, and we will not hesitate to enforce those rights” (emphasis added). It also stated that MSA was “always watching the market for copies” (emphasis added), that it “is easier for our competitors to simply copy our successful product than to create something new” and that it “[would] not stand for this” including by doing “everything we can to protect our investment in innovation”.
The First MSA Announcement referred to the allegation that “Clearview’s Easy Slide product copies essential features of the DropSlideTM patented technology”. The reference to copy or copies is repeated in the final paragraph, including the reference to “watching the market for copies”. In this context, the reasonable recipient would construe the reference to copies in the final paragraph as referring to Clearview’s Easy Slide product.
For this reason, and in circumstances where the recipients of the First MSA Announcement are existing and potential customers, the First MSA Announcement would be construed by the reasonable recipient as a threat of infringement proceedings against any person exploiting the Clearview Easy Slide.
Contrary to the submissions of MSA and Mr Miles, the strident words used in the final paragraph of the First MSA Announcement (and, indeed, the existence of the final paragraph itself) have the consequence that this announcement would be construed as more than just a general warning of the kind found in Damorgold.
That the First MSA Announcement only refers to competitors expressly, and not customers, does not matter. That is because the reference to “watching the market” captures all participants in the market and would be construed by the reasonable actual or prospective customer in that market as such.
MSA and Mr Miles also submit that, if the First MSA Announcement was a threat, it was not unjustified for the same reason that the KWM Letter was not an unjustified threat. Accordingly, for the same reasons I gave in relation to the KWM Letter, MSA and Mr Miles have failed to establish that the threat contained in the First MSA Announcement was justified. This includes, of course, that the Clearview Easy Slide does not infringe the Patent.
It follows that the threat in the First MSA Announcement constituted an unjustified threat by MSA in contravention of s 128 of the Patents Act.
11.2.2.3 Second MSA Announcement
The Second MSA Announcement included the following statements:
There have been some comments made about legal proceedings that MSA4x4 have filed against Clearview.
MSA4X4 would like to clarify the position. MSA4X4 approached Clearview on several occasions in a genuine attempt to resolve this matter without it being necessary to commence legal proceedings, but those attempts have been unsuccessful.
As the holder of an exclusive licence of a granted patent, MSA4X4 has the legal standing to enforce its patent rights for any infringing act that occurs during the 20-year term of the patent. MSA4X4 will do so where appropriate. Further, MSA4X4 will commence legal action against any company that chooses to infringe on our intellectual property or design registration rights, during the period within each grant.
That the Second MSA Announcement was published to customers and prospective customers was not disputed by MSA in its closing submissions. In any event, such publication is established by the documentary evidence which indicates that the mailing list for that announcement was extensive.
No case was advanced by Clearview to the effect that the recipients of the Second MSA Announcement were the same recipients as the First MSA Announcement such that the two announcements should be viewed as constituting one threat, or that it may be inferred that the recipients of the Second MSA Announcement were aware of the content of the First MSA Announcement. The Second MSA Announcement must therefore be viewed on its own.
For the following reasons, by the Second MSA Announcement, MSA did not threaten any person exploiting the Clearview Easy Slide with proceedings for patent infringement:
(1)The Second MSA Announcement did not refer to the Clearview Easy Slide expressly, or contain any detail as to the legal proceedings commenced against Clearview;
(2)Unlike the First MSA Announcement, the third paragraph (being the one which referred to commencing legal proceedings for infringement of MSA’s intellectual property) did not contain any direct or indirect reference to any intention to bring patent infringement proceedings against any person for exploitation of the Clearview Easy Slide;
(3)Like the notice at [393] of Damorgold, which bears similarities to the Second MSA Announcement, the latter is more appropriately characterised as a general warning to the addressees against infringement: Damorgold at [409].
It follows that the threat in the Second MSA Announcement did not constitute an unjustified threat in contravention of s 128 of the Patents Act.
11.2.2.4 Liability of Mr Miles
In relation to the KWM Letter, Clearview alleges that Mr Miles engaged in unjustified threats on the same basis as alleged against MSA. That letter was written on behalf of both MSA and Mr Miles, and the content of the letter consistently refers to both cross-respondents as “our clients”, on behalf of whom the infringement action is threatened. As such, for the same reasons that MSA is liable for having made the unjustified threats, Mr Miles is liable for contravention of s 128 of the Patents Act.
The issue presented by the First MSA Announcement is less straightforward. That is because Clearview alleges that MSA and Mr Miles are “joint tortfeasors” in respect of the unjustified threat contained in that announcement. Clearview submits that:
…Miles was knowingly concerned in, or directed or procured the contraventions [of s 128 of the Patents Act by MSA]. At all times he was the sole director and secretary of MSA, the managing and controlling mind of MSA, and the sole person having responsibility for making decisions on behalf of MSA including decisions in relation to the management of and business conducted by MSA. He is the owner of the Patent and was also the individual responsible for approving publication of the First MSA Announcement... Further, the First MSA Announcement contains quotes directly attributed to him. Miles is therefore a joint tortfeasor with respect to the conduct.
No authority was cited by Clearview to support its submission that contravention of s 128 of the Patents Act is a statutory tort such that Mr Miles could be held liable as a “joint tortfeasor”, and neither party engaged in fulsome submissions on this novel issue.
The only authority which I have been able to locate and which arguably supports such a proposition is UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885 (Moshinsky J) at [186]–[194]. However, the issue of whether contravention of s 128 of the Patents Act is a statutory tort was not decided in that case, as it did not appear to be in dispute. Instead, Moshinsky J found that the relevant parties were not joint tortfeasors on the facts which were before his Honour: [191].
The Patents Act contains no provision for imposing liability upon third parties (such as directors) who authorise contravention of s 128 of the Patents Act. The characterisation of such a contravention as a tort, and the usage of the joint tortfeasor concept by reference to this statutory tort appears, therefore, to be a backdoor means of imposing liability upon third parties in circumstances where Parliament has decided not to do so.
The problems with such an approach were addressed in a helpful article by Christopher Wood entitled “Liability of directors as joint tortfeasors in intellectual property matters” (2010) 21 AIPJ 164 at pages 174–176. The author’s arguments against imposing liability upon directors as joint tortfeasors for the contravention by companies of intellectual property rights created by statute appear, with respect, persuasive and are difficult to overlook in the absence of submissions to the contrary.
For these reasons, I am not prepared to find that Mr Miles was a joint tortfeasor in relation to the First MSA Announcement, as I am not persuaded that there is a proper basis in law to do so.
11.2.3 Relief under s 129 of the Patents Act
It is appropriate that a declaration be granted in the terms sought by Clearview. This relief is not opposed by MSA and Mr Miles. The parties will be directed to confer and agree upon an appropriate form of wording.
By its closing submissions, Clearview seeks an injunction restraining the continuance of the threats. MSA and Mr Miles submit that no injunction is sought in the Amended Notice of Cross-Claim, but did not advance any other submission as to why an injunction should not be granted. While it is correct that no injunction is sought in the Amended Notice of Cross-Claim in relation to the unjustified threats, I will treat Clearview’s submissions as an application for an injunction.
My reasons for taking this approach are as follows:
(1)The written closing submissions of MSA and Mr Miles, delivered prior to the final day of trial, reveal that they were aware that Clearview was seeking an injunction in respect of the unjustified threats.
(2)It was apparent from the written and oral closing submissions of its counsel that Clearview understood that an injunction had been sought by it in its Amended Notice of Cross-Claim, which position was mistaken.
(3)Other than relying on its technical argument referred to above, MSA did not advance any substantive reasons why injunctive relief should not be granted in respect of the unjustified threats.
(4)There is a real prospect that third party consumers were misled by the First MSA Announcement. It is appropriate to take steps to prevent this occurring again.
(5)I am not confined by the relief formally sought in the Amended Notice of Cross-Claim and may make any order that I consider appropriate in the interests of justice: see r 1.32 of the Federal Court Rules 2011 (Cth).
For these same reasons, I will grant an injunction restraining MSA and Mr Miles from making any further unjustified threats as I consider it to be in the interests of justice to make such an order.
As to damages, by order of Greenwood J dated 5 March 2021, it was ordered by consent that:
Issues of quantum that arise on the claim, and any cross claim, in the proceeding are to be determined separately from, and following, the determination of all other issues for determination in the proceeding.
MSA and Mr Miles submit that there is no evidence that Clearview has suffered any loss as a result of any established breaches of s 128 of the Patents Act with the consequence that there should not be any inquiry as to damages. They submit therefore that the claim for damages, including additional damages pursuant to s 128(1A) of the Patents Act, should be dismissed.
However, as observed by Dowsett J in CQMS at [189], before whom a similar submission was advanced:
[Such a submission] highlights the fact that in case management, the distinction between issues of liability and issues of quantum is not always clear. When used in connection with the conduct of proceedings, the distinction is a matter of convenience rather than principle. The only real necessity is that the parties be accorded procedural fairness…
I will respectfully adopt the same approach in this case.
In any event, having regard to the extensive range and nature of the recipients of the First MSA Announcement, and the content of that announcement, damage to Clearview’s reputation can be (and is) inferred.
11.3 Alleged ACL contraventions
11.3.1 Relevant legal principles
Section 18 of the ACL relevantly provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
The principles in relation to s 18 of the ACL were recently summarised by the Full Court in Australian Competition and Consumer Commission v Employsure Pty Ltd (2021) 156 ACSR 1; [2021] FCAFC 142 (Rares, Murphy and Abraham JJ) as follows:
(1)the relevant context in which a statement is to be viewed in assessing whether it is misleading or deceptive, or likely to mislead or deceive, includes both internal and external factors operative at the time the representation was made: [75];
(2)the inclusion of the phrase “likely to mislead or deceive” in s 18 means that a contravention may be established if there is a real or not remote chance or possibility that a person exposed to impugned conduct would be misled. It is not necessary to demonstrate that the impugned conduct was actually misleading; it is enough if it was likely to be so: [89];
(3)the central question is whether the impugned conduct (under s 18), viewed as a whole and in context, has a sufficient tendency to lead a person exposed to the conduct into error (that is, to form an erroneous assumption or conclusion about some fact or matter): [92].
Where conduct is directed at consumers (or a class of consumers), the Court must consider whether the “ordinary” or “reasonable” members of the class would be misled or deceived: see Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435; [2013] HCA 1 (French CJ, Crennan and Kiefel JJ) at [7].
The characterisation of whether a statement is one of belief or opinion, or as to a matter of fact, was addressed in Ireland v WG Riverview Pty Ltd (2019) 101 NSWLR 658; [2019] NSWCA 307 (Bell ACJ, Macfarlan JA and Barrett AJA). In that case, Bell ACJ observed at [30]:
The case law requires that the characterisation of a statement as to one of belief or opinion, on the one hand, or as to a matter of fact, on the other hand, is to be viewed from the perspective of the person or “ordinary” or “reasonable” audience to whom the statement or representation is directed (as opposed to from the perspective of the maker of the statement): Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45; [2000] HCA 12 at [102]. This will frequently be a critical aspect of the context as the decision in Forrest also illustrates: see at [36]–[39]; [105]. Thus, in Pyrotek Pty Ltd v Ausco Industries Pty Ltd (1992) ATPR (Digest) 46-085 at [53,323]; [1991] FCA 743 at 33, French J (as he then was) observed that:
“A statement which has the character of a statement of fact when read by an ordinary person may to another, who has relevant knowledge, be seen as an opinion involving interpretation of other data. If in the circumstances in which it is communicated, including the nature or resources of the recipient, a statement presents as a statement of opinion then it is not necessarily to be characterised as anything other than a representation that the maker of the statement holds the opinion or interpretation offered.”
11.3.2 Consideration
11.3.2.1 Whether the alleged representations were made
Clearview alleges that the First and Second MSA Announcements each convey the representation that the manufacture or sale of the Clearview Easy Slide infringes the patent rights of either or both MSA and Mr Miles. Each announcement is pleaded as conveying the representation and no case is advanced by Clearview that the recipients of the Second MSA Announcement were or would have been aware of the content of the First MSA Announcement. For that reason, I will address each of the announcements separately.
The ordinary or reasonable members of the class of consumers to whom these alleged representations were made were persons who had acquired or might have an interest in acquiring products of the kind sold by MSA and Clearview. Such products are not especially sophisticated, being used by consumers to store and transport “car fridges” and tool boxes.
MSA and Mr Miles submit that the alleged representations were not made as a matter of fact and that the representation which was made in each announcement was that MSA had commenced proceedings against Clearview in which MSA alleged patent infringement.
While the First MSA Announcement uses the word “alleges”, it must be viewed in context and as a whole. The references to (for example) “granted Australian full patent which protects MSA 4X4’s DropSlideTM”, “MSA4X4 has exclusive rights to an extensive patent portfolio, both in Australia and internationally, which protect the DropSlideTM” and “we will not hesitate to enforce [these valuable intellectual property] rights” convey a representation of fact that there can be no doubt about the legitimacy of MSA’s assertion of its patent rights. Further, while the First MSA Announcement refers to the allegation that the Clearview Easy Slide copies essential features of the DropSlideTM patented technology, the final two paragraphs of the announcement contain a clear representation that Clearview Easy Slide in fact infringes the patent rights of MSA.
Contrary to the submissions of MSA and Mr Miles, the First MSA Announcement was not a statement of opinion or belief but a statement of fact when viewed from the perspective of the audience to whom the announcement was directed. There was no reference to or suggestion of any belief or opinion being held by MSA; rather, the statements were definitive.
However, I am unable to discern any reference to, or representation concerning, the patent rights of Mr Miles.
For these reasons, the First MSA Announcement conveyed the representation that the manufacture or sale of the Clearview Easy Slide infringes the patent rights of MSA, but not Mr Miles.
By contrast, the Second MSA Announcement does not refer to the Clearview Easy Slide, or to any patent rights of Mr Miles. For these reasons, although a representation may be inferred from the Second MSA Announcement that MSA had commenced proceedings against Clearview in which MSA alleged patent infringement (as MSA accepts), the Second MSA Announcement does not represent that the manufacture or sale of the Clearview Easy Slide infringes the patent rights of either or both MSA and Mr Miles.
Clearview next alleges that the First MSA Announcement conveyed the representation that the Clearview Easy Slide was copied from MSA’s product. Again, MSA and Mr Miles dispute that this representation was conveyed as a matter of fact.
MSA and Mr Miles submit that the First MSA Announcement relevantly states (with their emphasis added):
MSA4x4 alleges that the [Clearview Product] copies essential features of the DropSlideTM patented technology… “We are always watching the market for copies. It is easier for our competitors to simply copy our successful product than to create something new…”
They then submit that these statements would not be understood as a discrete representation that there was copying per se of MSA’s product independent of MSA’s patent infringement claim.
However, when the First MSA Announcement is read as a whole, in the manner as it appeared and without particular words emphasised (as they are in the submissions), it contains a clear and discrete representation that the Clearview Easy Slide was, in fact, copied from MSA’s product. This is especially so when one has regard to the final paragraph, which makes no mention of the patent infringement claim and conveys that Clearview took a shortcut and simply copied MSA4X4’s DropSlideTM rather than designing its own product.
Further, having regard to their content and contrary to the submissions of MSA and Mr Miles, this representation was not a statement of opinion or belief but was a statement of fact when viewed from the perspective of the audience to whom the announcement was directed.
For these reasons, the First MSA Announcement conveyed the representation that the Clearview Easy Slide was copied from MSA’s product.
11.3.2.2 Whether representations were misleading or deceptive
The representation conveyed in the First MSA Announcement that the manufacture or sale of the Clearview Easy Slide infringes the patent rights of MSA was false or misleading because, as I have found earlier in these reasons, the manufacture or sale of the Clearview Easy Slide does not infringe the Patent.
The representation conveyed in the First MSA Announcement that the Clearview Easy Slide was copied from MSA’s product was false or misleading because, based upon the uncontested and unchallenged evidence of Mr Chapman (whose evidence explained the origins of the design of the Clearview Easy Slide), there was no copying by Clearview of any kind, whether from the Patent or the MSA4X4’s DropSlideTM.
11.3.2.3 Liability of Mr Miles
Mr Miles was knowingly concerned in or induced or procured MSA’s contravention of s 18 of the ACL within the meaning of “involved” under s 2 of the ACL. That is because he was the sole director and secretary of MSA, and therefore the managing and controlling mind of MSA. He was also the sole person having responsibility for making decisions on behalf of MSA, which included decisions in relation to the management of and business conducted by MSA. Further, he is also the owner of the Patent and was the individual responsible for approving publication of the First MSA Announcement. Further, the First MSA Announcement contains quotes directly attributed to him.
11.3.3 Conclusion
For these reasons, MSA has engaged in misleading or deceptive conduct in contravention of s 18 of the ACL, and Mr Miles was knowingly concerned in or induced or procured MSA’s contravention of s 18 of the ACL. I am also satisfied that Clearview is entitled to the relief sought in paragraphs 3, 4 and 6 of the Amended Notice of Cross-Claim, with the quantum of damages to be assessed at the further hearing.
12. DISPOSITION
I will invite the parties to confer and provide an agreed form of orders having regard to the findings made, and directions as to the further conduct of this proceeding.
I certify that the preceding four hundred and five (405) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Downes. Associate:
Dated: 24 January 2024
SCHEDULE OF PARTIES
QUD 32 of 2021 Cross-Respondents
Second Cross-Respondent
SHANE MILES
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