Multisteps Pty Ltd v Source and Sell Pty Ltd
[2013] FCA 743
FEDERAL COURT OF AUSTRALIA
Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743
Citation: Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743 Parties: MULTISTEPS PTY LIMITED (ACN 065 425 434) v SOURCE AND SELL PTY LIMITED (ACN 113 852 289 File number: NSD 1273 of 2010 Judge: YATES J Date of judgment: 31 July 2013 Catchwords: INTELLECTUAL PROPERTY – registered designs – infringement – whether design of each accused container is substantially similar in overall impression to any relevant registered design – discussion of the standard of the informed user – whether constraints on the freedom of the designer to innovate
INTELLECTUAL PROPERTY – patents – validity – innovation patent – whether invention as claimed is not novel – whether invention as claimed does not involve an innovative step
INTELLECTUAL PROPERTY – patents – infringement – interpretation of omnibus claim
CONTRACTS – whether applicant precluded from suing for patent infringement – whether claim for infringement resolved by contract
Legislation: Designs Act 2003 (Cth) ss 5, 7, 15(2)(a), 19, 71(1)
Evidence Act 1995 (Cth) ss 57, 80, 136
Patents Act 1990 (Cth) ss 18(1A)(b), 40(2)(a), 43(2), 122(1A), 138(3)(b)Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs
European Communities Act 1972 (UK) s 2(2)
Registered Designs Act 1949 (UK)
Registered Designs Regulations 2001 (UK)Cases cited: Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019
Commonwealth Industrial Gases Limited v M.W.A. Holdings Pty. Limited and Others (1970) 180 CLR 160
Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239
Dyson Ltd v Vax Ltd [2010] FSR 39
Dyson Ltd v Vax Ltd [2012] FSR 4
Empirnall Holdings Pty Ltd v Machon Paull Partners Pty Ltd (1988) 14 NSWLR 523
Flexible Steel Lacing Company v Beltreco Ltd and Another (2000) 49 IPR 331
Grupo Promer Mon Graphic, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-9/07) [2010] ECR II-981
J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19
J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd and Another (1989) 90 ALR 288
Keller v LED Technologies Pty Ltd (2010) 185 FCR 449
LED Technologies Pty Ltd (ACN 100 887 474) v Elecspress Pty Ltd (ACN 104 535 597) and Others (2008) 80 IPR 85
LED Technologies Pty Ltd v Roadvision Pty Ltd and Another (2012) 199 FCR 204
Nicaro Holdings Pty Ltd and Others v Martin Engineering Co and Another (1990) 91 ALR 513
Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8
Raleigh Cycle Coy. Ld. and Another v. H. Miller and Coy. Ld. (1948) 65 RPC 141
Review 2 Pty Ltd (in liq) v Redberry Enterprise Pty Ltd (2008) 173 FCR 450
Review Australia Pty Ltd (ACN 122 295 836) v New Cover Group Pty Ltd (ACN 111 991 596) and Others (2008) 79 IPR 236
Rolawn Ltd v Turfmech Machinery Ltd [2008] RPC 27
Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd and Others (2005) 64 IPR 281
The Owners of the Ship “Shin Kobe Maru” v Empire Shipping Company Inc. (1994) 181 CLR 40
Windsurfing International Inc and Another v Petit and Another [1984] 2 NSWLR 196
Woodhouse UK PLC v Architectural Lighting Systems [2006] RPC 1Australian Law Reform Commission Report No. 74, Designs (Sydney, 1995)
Date of hearing: 10, 11, 12 October, 6, 28 November 2012 Date of last submissions: 14 December 2012 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 294 Counsel for the Applicant: Ms S Chrysanthou with Ms S Ross Solicitor for the Applicant: Chrysiliou Lawyers Counsel for the Respondent: Mr M Elliott with Mr B Jacobs Solicitor for the Respondent: Horton Rhodes Lawyers
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1273 of 2010
BETWEEN: MULTISTEPS PTY LIMITED (ACN 065 425 434)
ApplicantAND: SOURCE AND SELL PTY LIMITED (ACN 065 425 434)
Respondent
JUDGE:
YATES J
DATE OF ORDER:
31 JULY 2013
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The parties bring in agreed draft orders giving effect to these reasons.
2.In the absence of agreement, each party provide a draft of the orders it proposes, supported by written submissions not exceeding three pages in length.
3.The agreed draft, or proposed drafts and submissions, be provided by no later than 4.00 pm on 7 August 2013.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1273 of 2010
BETWEEN: MULTISTEPS PTY LIMITED
ApplicantAND: SOURCE AND SELL PTY LIMITED
Respondent
JUDGE:
YATES J
DATE:
31 JULY 2013
PLACE:
SYDNEY
REASONS FOR JUDGMENT
The applicant is the owner of the following registered designs:
1.Design No. 312205 (RD 1);
2.Design No. 312206 (RD 2);
3.Design No. 319009 (RD 3);
4.Design No. 330158 (RD 4);
5.Design No. 330159 (RD 5); and
6.Design No. 328917 (RD 6).
Each design is registered in respect of a produce container.
The respondent sells three kinds of empty “clamshell” containers, which it calls:
(a)“Taste Bomb” (the Taste Bomb container);
(b)“Medley Mix” (the Medley Mix container); and
(c)“Kumato” (the Kumato container).
Each of these is a produce container. The containers are purchased by fruit packers who pack them with fruit (specifically in this case, tomatoes) and on-sell the packed containers to retailers for ultimate sale to consumers. The respondent has also sold, but no longer sells, another clamshell container (the first Kumato container).
The applicant alleges that the respondent has, by reason of certain acts:
(a)in relation to the Taste Bomb container, infringed RD 3 and RD 4;
(b)in relation to the Medley Mix container, infringed RD 4; and
(c)in relation to the Kumato container, infringed RD 6.
The applicant’s claim in each case is that the design of the accused container is substantially similar in overall impression to the registered design or designs identified above: see s 71(1)(a) and (3), and s 19 of the Designs Act 2003 (Cth) (the Designs Act). The respondent denies each claim.
Originally, the applicant alleged that the respondent had also infringed RD 1, RD 2, and RD 5. It no longer maintains those claims. RD 1 and RD 2 nevertheless remain relevant as prior art on which the respondent relies to limit the scope of the monopoly attaching to each of RD 3, RD 4, and RD 6. RD 5 no longer has a role to play in the proceeding.
The applicant is the patentee of Patent No. 2008100153 for an invention entitled “A produce container assembly” (the first patent) and Patent No. 2009100783 for an invention entitled “Improved produce container” (the second patent). Each patent is a certified innovation patent containing five claims.
The applicant alleges that the respondent has infringed each of the claims of the first patent. At the hearing, the acts of exploitation relied upon were the respondent’s sale and supply of the first Kumato container. The respondent does not dispute that it has infringed the first patent. It says, however, that the applicant’s claim for infringement cannot be maintained because it was resolved by contract. Although the respondent had pleaded an alternative defence based upon estoppel, it no longer presses that defence.
The applicant also alleges that the respondent has infringed each of the claims of the second patent. At the hearing, the acts of exploitation relied upon were the respondent’s sale and supply of the Kumato container. As the matter came to be finally argued, the respondent does not dispute the acts relied upon or that the Kumato container possesses the essential features of each of claims 1 to 4 of the second patent. It does dispute, however, that the Kumato container possesses all the essential features of claim 5.
The respondent disputes the validity of each of claims 1 to 4 of the second patent and seeks the revocation of those claims. The only grounds of invalidity ultimately advanced at the hearing were that the invention, as claimed in each of those claims, is not a patentable invention because it is not novel and, separately, does not involve an innovative step, when compared with the relevant prior art base before the priority date of the claims: see s 138(3)(b) and s 18(1A)(b) of the Patents Act 1990 (Cth) (the Patents Act). No challenge to the validity of claim 5 of the second patent was pleaded.
I have concluded that: (a) the respondent has not infringed RD 3 or RD 4; (b) the respondent has infringed RD 6; (c) the applicant is not precluded from maintaining its claim against the respondent for infringement of the first patent; (d) the respondent has not infringed claims 1 to 4 of the second patent because those claims are not valid; and (e) the respondent has not infringed claim 5 of the second patent.
The evidence
The lay witnesses
The applicant’s Sales Manager, Ping Ching Tse, made two affidavits, which were read at the hearing. He was cross‑examined.
In his first affidavit, Mr Tse gave evidence about the following matters: the nature of the applicant’s business, including its dealings with one of its customers, Moraitis Pty Ltd (Moraitis) – a leading wholesale supplier of fruit and vegetables to supermarkets and other outlets in Australia; details of the first patent and of RD 1 to RD 5; the applicant’s supply of its CJ‑200H, CJ-200HA, CJ-250H, and CJ-250HA containers to Moraitis; the applicant’s discovery of the respondent’s supply of the first Kumato container to Moraitis, and the correspondence which followed with the respondent and its then solicitors; and the applicant’s discovery of the respondent’s supply of the Taste Bomb container to Moraitis. Certain paragraphs of this affidavit were admitted provisionally under s 57 of the Evidence Act 1995 (Cth) (the Evidence Act). I am satisfied that the material in these paragraphs is relevant and should be admitted unconditionally.
In his second affidavit, Mr Tse gave evidence about the following matters: details of the second patent and RD 6; the applicant’s exclusive supply of its CJ‑200L container to CostaExchange Limited; the applicant’s discovery of the respondent’s supply and continuing supply of its Kumato container to Moraitis after Moraitis had requested that the applicant supply it with the CJ-200L container; the applicant’s supply of its CJ‑300M container to Moraitis and its discovery of the respondent’s subsequent supply and continuing supply of the Medley Mix container to Moraitis; and the respondent’s continuing supply of the Taste Bomb container.
The respondent’s Managing Director, Robert Galombik, made one affidavit, which was read at the hearing. He was cross-examined. Mr Galombik gave evidence about the following matters: the nature of the respondent’s business; the design requirements for containers used for packaging tomatoes; the containers produced for the respondent, including those produced for supply to Moraitis; the respondent’s notice of the applicant’s claims of infringement of the first patent and the correspondence which followed with the respondent and its then solicitors; the steps taken by the respondent as a consequence of this correspondence; certain alleged prior art; and the respondent’s notice of the applicant’s claims of infringement of its design rights. One paragraph of this affidavit was admitted provisionally under s 57 of the Evidence Act. I am satisfied that the material in this paragraph is relevant and should be admitted unconditionally.
The lay evidence makes clear that in 2009 the respondent approached Moraitis with a view to supplying it with produce containers. At a meeting in about June 2009 between Mr Galombik and a category manager at Moraitis, Mr Galombik was handed a sample of the applicant’s CJ‑200H container. Mr Tse’s evidence was that the applicant had commenced to supply this container (represented by exhibit PCT-4) to Moraitis in around May 2009. Mr Galombik was asked whether the respondent could supply containers like the CJ‑200H container. One of Moraitis’ requirements was that the container have a heat transfer label, as opposed to a stick‑on label.
In the period June to early December 2009, a manufacturer in China produced sample moulds, and then mass production moulds, for two containers for the respondent – the first Kumato container, and a precursor to the Medley Mix container. Production from the mould of this version of the Medley Mix container was never supplied to the respondent. However, production from the mould of the first Kumato container was supplied to the respondent and later supplied by the respondent to Moraitis.
On about 3 December 2009, Mr Galombik received a complaint from Moraitis that the first Kumato container was not closing securely and was popping open during transport. At an inspection of a packing facility in Queensland that was using various containers, including the first Kumato container, Mr Galombik was shown a container produced by Raptis (another packaging supplier in the Australian market) that had an “overlocking clip locking method” that, according to the packing shed manager, worked well on the machinery used at the facility. Mr Galombik formed the belief that this would be the most reliable and efficient closure method. This particular method of closure is employed in each of the accused containers. The applicant’s expert witness gave evidence that this form of closure was common to punnets in the food packaging industry.
In March 2010, the respondent received a letter of demand from the applicant’s then patent attorneys. The letter alleged that the respondent had infringed the first patent. Mr Galombik assumed that the letter was referring to the applicant’s supply of the first Kumato container. I will deal with this correspondence, and the steps taken by the respondent as a consequence of the demands made in it, in more detail below.
It seems that, at some time after receipt of this letter and before June 2010, the respondent redesigned the first Kumato container, and a mould had been created for the respondent’s continued supply of containers to Moraitis. However, the respondent’s Chinese manufacturer, who had manufactured the first Kumato container, ceased producing containers for it. The respondent therefore needed to find an alternative supplier.
Mr Galombik formed the view that “the only offending component” of the first Kumato container was “the vents at the rim of the punnet, which also operate as the mechanism to open the punnet and the closure mechanism”.
In mid-June 2010, Mr Galombik had a meeting with the category manager at Moraitis with whom he had previously dealt. Mr Galombik informed him that, because of the applicant’s claim, the respondent was no longer able to supply certain containers. Mr Galombik also said that the respondent had engaged another manufacturer. An arrangement was made that the respondent would supply Moraitis with another container which would be labelled in Australia.
At this meeting, the category manager handed another of the applicant’s containers to Mr Galombik and asked whether the respondent “could do this punnet”. Mr Galombik said that the closure on the container would need to be redesigned “to ensure that there are no further problems with the registered patent”. This led to the respondent’s development, and eventual production in China by another manufacturer, of the Kumato container.
The first shipment of the Kumato container was received by the respondent on about 2 February 2011. In the meantime, the respondent had redesigned the Medley Mix container. The first shipment of the Medley Mix container was received by the respondent on about 20 January 2011. Previously, on about 31 December 2010, the respondent had received its first shipment of the Taste Bomb container. Shortly after 2 February 2011, the respondent commenced to supply the accused containers to Moraitis.
The expert witnesses
Introduction
Each of the parties called an independent expert to give evidence in respect of particular aspects of the registered designs and the designs of the accused products. The applicant called Maurice Tabone who had been involved for a number of years in the food packaging industry including with Tacca Plastics Australia Pty Ltd and SCS Plastics Pty Ltd. Mr Tabone is also an inventor and designer of food packaging products. In 2002, he invented a tamper evident dual-lid feature for fruit and vegetable punnets for which a patent application was filed. His claimed invention is embodied in a 200 g grape tomato punnet that was sold through Coles and Woolworths stores. This container won an International Produce Marketing Association Award for Food Safety in 2007. Since 2007, he has continued to develop further improved tamper evident/safety seal inventions and designs, as well as other design features beneficial for use in fresh produce punnet packaging.
The respondent called Luciano Papi. Mr Papi has worked for over 28 years in polymer processing technologies and was the Manufacturing Manager at Sebel Furniture with responsibility for all research and development and processing of all plastic furniture. Since 1994, he has been involved in the design and development of polymer‑based products in the injection moulding, rotor moulding, vacuum forming, and reaction moulding processes. He has wide experience in new product development from design through to manufacture. The projects with which he has been involved include products with medical and paramedical applications, automotive accessories, stadium seating, lighting and bathroom accessories, biomedical products, and batteries for electric cars and for two-way radios. He has received a number of design awards. He has also been a judge on the Engineering and Furniture panels of the Australian Design Awards. He is qualified as a mechanical engineer and holds a postgraduate diploma in technology management from the Macquarie University Business School.
Mr Tabone’s particular experience and background in relation to food packaging represent more closely the standard of the informed user. Mr Papi is obviously an engineer of wide experience, particularly in relation to the production of articles made from plastics materials. However, his experience was not specifically directed to the production of food packaging, even though it did extend to packaging involving engineering and design aspects common to food packaging and the packaging of other products in plastic materials.
That said, neither party challenged the qualification of the other party’s expert witness to give, as admissible evidence, the opinions that each expressed. Each party did, however, criticise the evidence of the other party’s expert including, in the case of the respondent, by way of a significant challenge to Mr Tabone’s credit.
In addition to other expressions of opinion, each expert expressed an opinion on the ultimate question that arose in respect of each allegation of design infringement, namely, whether the design of each accused product was substantially similar in overall impression to any of the relevant registered designs: see s 80 of the Evidence Act; Flexible Steel Lacing Company v Beltreco Ltd and Another (2000) 49 IPR 331 at [168]-[171]. The experts conferred and produced a joint report which was tendered at the hearing. Although it was originally envisaged that the experts would give concurrent evidence, a decision was taken at the hearing to abandon that course. I am satisfied that that was the appropriate decision in all the circumstances. Each expert was cross-examined after discussing in evidence in chief various aspects of the registered designs and the designs of the accused containers specifically referred to in the joint report.
As a general observation, I found the evidence of the two experts to be helpful in only a very limited way. The utility of their evidence concerning design comparison was adversely affected – and significantly so – by a number of matters, which I will discuss below.
Before doing so, I should mention that the experts gave evidence touching upon the validity of claims 1 to 4 of the second patent. I will discuss this evidence in greater detail when dealing with the respondent’s case in that regard. They also each expressed the opinion that the Kumato container possesses the essential features of each claim of the second patent. As I will come to explain, I do not accept the correctness of their opinions insofar as they concern claim 5. As I have noted, the respondent does not dispute that the Kumato container possesses the essential features of each of claims 1 to 4 of the second patent. It is therefore not necessary for me to consider the experts’ evidence in that regard.
Mr Tabone
Mr Tabone made three affidavits that were read. These affidavits contained a number of exhibited documents and articles. The exhibited documents were treated as annexures to the affidavit. The articles were not tendered; it was not necessary to do so in the circumstances.
As to the particular challenge to Mr Tabone’s credit, I do not consider that he was motivated to give any particular evidence because of his commercial dealings with the applicant (which he had disclosed in his first affidavit) or any desire to obtain favour from the applicant by way of licensing his designs. This was the substantial basis on which the reliability of his evidence, and his credit specifically, was challenged by the respondent. Nevertheless, I do have significant reservations about the reliability of the evidence given by him, for the following reasons.
Mr Tabone’s evidence showed that he did not undertake his design comparisons consistently. For example, there is no doubt that, when undertaking his comparison of the Taste Bomb container and RD 4, Mr Tabone did not regard the ventilation holes in the lid of RD 4 to be a significant feature of the overall appearance of RD 4. Consistently with that approach, he advanced the general proposition that the number and location of ventilation and drainage holes in containers of this type was one aspect of the limited freedom of the designer to innovate: see [79] below.Accordingly, he discounted the significance of that feature (as well as certain other features) and placed far greater significance upon the appearance of the protruding, ribbed corner pillars of the base of the RD 4 container, amongst other features. In his affidavit evidence, he included the particular appearance of the corner pillars in RD 4 as one of its most significant features.
Paradoxically, when Mr Tabone gave evidence in cross‑examination about the differences between RD 3 and RD 4 – that is, outside the context of design infringement – he placed significant weight on the presence of ventilation holes in the lid of RD 4, over other design features. Mr Tabone labelled these ventilation holes as the “most obvious” difference between the two designs. On any reasonable view, there are plain visual differences between RD 3 and RD 4 – represented in part by the shape and configuration of the distinctive corner pillars of the base of the container in RD 4 – which are of far greater visual significance than the ventilation holes in the lid of that design. Under cross-examination, Mr Tabone treated the corner pillars in RD 4 as only having, for him, a newly-appreciated significance because attention had been drawn to them in his cross-examination. I gained the impression that, when giving a number of subsequent answers on this topic, Mr Tabone deliberately sought to downplay the significance of the appearance and prominence of these corner pillars.
For completeness, I would add that Mr Tabone also sought to give greater visual significance to the ventilation holes in the lid of RD 4 than to the heavily ribbed perimeter of the lower section of the base of the container. In exhibit 3, which was a copy of the design representations for RD 4 annotated by him, Mr Tabone indicated that this ribbed feature was “not so obvious”, compared to the ventilation holes in the lid. I do not accept the correctness of that opinion.
I am unable to reconcile or explain the different approaches adopted by Mr Tabone in these strands of evidence. I do not accept that, prior to being cross‑examined, Mr Tabone did not appreciate, and did not hold the view, that the particular appearance of the corner pillars in the base of the container in RD 4 represented a significant visual feature of that design. I do not accept that, on any reasonable view, the ventilation holes in the lid of RD 4 are of greater visual significance than a number of other features of RD 4 when that design is considered as a whole.
I also doubt the genuineness of Mr Tabone’s opinion that the design of the Medley Mix container is substantially similar in overall impression to RD 4. Mr Tabone adhered to this opinion under reasonable challenge. I will deal later with the comparison of the design of the Medley Mix container and RD 4. For present purposes, it is sufficient to say that I have difficulty in accepting that his opinion in relation to that comparison could have been held genuinely by him unless, when giving it, he was labouring under a fundamental misunderstanding of the prescriptions in s 19(1) of the Designs Act. I cannot readily see any alternative explanation for him giving that particular evidence.
There are other matters of comment in relation to Mr Tabone’s approach to design comparison. First, in his affidavit and oral evidence, Mr Tabone, on occasions, resorted to what he considered to be the likely impressions of the general body of consumers when viewing or inspecting packed produce containers in a retail setting. In my view, such impressions do not represent the standard of the informed user that is relevant in the present case: see s 19(4) of the Designs Act. In any event, Mr Tabone had no qualification beyond his own idiosyncratic views that would enable him to express an opinion about consumer perceptions and impressions. There is a real likelihood that this erroneous approach informed at least some of the ultimate opinions expressed by him about design similarity.
Secondly, Mr Tabone acknowledged, in relation to RD 4, the existence of a statement of newness and distinctiveness. I will discuss this statement below. The point of present importance is that, when carrying out his design comparisons involving RD 4, Mr Tabone had regard to the appearance of that design only by reference to those features that were claimed in the statement to be new and distinctive. In so doing, Mr Tabone effectively ignored a feature of RD 4. In my view, this approach misapplies the test prescribed in s 19(2)(b) of the Designs Act, which requires that particular, but not sole, regard be had to the features identified in the statement of newness and distinctiveness.
These various matters lead me to treat with considerable caution Mr Tabone’s opinions as they relate to the comparison of designs under s 19 of the Designs Act.
Mr Papi
Mr Papi made a report, which was tendered as exhibit 7. A large number of passages in it were either not read or rejected. A number of paragraphs were admitted subject to a limitation on their use under s 136 of the Evidence Act.
The reliability of Mr Papi’s evidence was challenged on a number of bases. First, he was challenged on the basis that he compared the design of the accused containers to containers that had been put to him as commercial embodiments of the registered designs. Mr Papi accepted that he undertook his comparison in relation to the Kumato container on that basis. He could not say whether he conducted his comparison in relation to the Taste Bomb container on the same basis. He denied undertaking a comparison in relation to the Medley Mix container in that way. Plainly, the correct comparison in each case is between the design of the accused article and the design as shown in the representations accompanying the application for each registered design. The evidence shows that, certainly in his comparison of the Kumato container and RD 6, Mr Papi’s opinions were affected by extraneous considerations. The position in relation to his comparison in relation to the Taste Bomb container is uncertain. For this reason, I treat his evidence in relation to these comparisons with considerable caution.
Secondly, Mr Papi was challenged on the basis that he was more intent on looking for differences than in looking for similarities between the designs. He did not shy away from accepting that he looked for, relied on, and emphasised differences in expressing his opinions. He said, however, that he gave a balanced view. As I note below, s 19(1) of the Designs Act prescribes that, in considering the question of substantial similarity based on overall impression, greater weight must be given to similarities than to differences between the compared designs. In my view, the ultimate opinions given by Mr Papi on this question showed a clear inclination to favour individual design differences rather than to consider the overall impression created by the registered designs and the design of each accused container. This is another reason to consider his evidence with considerable caution.
Thirdly, a number of statements made by Mr Papi on similarities and differences were informed by his own research on containers, including purchasing containers in supermarkets and looking at the websites of manufacturers and suppliers of produce containers, including in foreign countries. Much of this material was not specifically identified in his report or tendered in evidence. One cannot tell to what extent this material (whatever it may have been) truly affected the opinions he gave. This factor plainly diminishes the weight that can be given to his evidence and stands as a further reason to view that evidence with considerable caution.
Generally
Thus, it can be seen that the probative value of the evidence of each expert suffers significantly from what I regard to be justifiable criticisms. Nevertheless, in the context of the design infringement case, each expert was able to direct my attention to similarities and differences between the designs. I have found this process, and the debate that it generated, to be of some help. It has assisted my consideration of the comparison that the Court is required to undertake under s 19 of the Designs Act. Having been so assisted, I have proceeded on the basis of my own evaluation of the visual significance of similarities and differences, not that of the experts: Keller v LED Technologies Pty Ltd (2010) 185 FCR 449 at [36]‑[37]; Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8 at [4].
The written and oral evidence of the experts, including their joint report, together with the parties’ submissions and aids provided in the course of submissions, are replete with references to the asserted similarities and differences between the relevant designs. Although I have had regard to all this material, I do not propose to recite the detail of it in these reasons. In general, I have used it to focus my attention on the various visual features of the designs being compared. Furthermore, in providing these reasons, I have generally preferred my own descriptions of the visual features of the designs to more faithfully record my own perceptions and evaluation of them. In doing so, I have focused on what I regard to be the main visual features of the designs, acknowledging that there are other matters of detail which nevertheless contribute in some way, although not in a significant way, to the similarities and differences between them.
In making these comments, I bear in mind the following observations of Jacob LJ in Procter & Gamble at [3]:
The most important things in a case about registered designs are:
1. the registered design;
2. the accused object; and
3. the prior art.And the most important thing about each of these is what they look like. Of course parties and judges have to try to put into words why they say a design has “individual character” or what the “overall impression produced on an informed user” is. But “it takes longer to say than to see” as I observed in Philips Electronics NV v Remington Consumer Products Ltd (No. 1) [1998] RPC 283 at 318. And words themselves are often insufficiently precise on their own.
design infringement
Legislative framework
For the purposes of the Designs Act, a design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product: s 5. A visual feature, in relation to a product, includes the shape, configuration, pattern, and ornamentation of the product, but does not include the feel of the product, the materials used in the product, indefinite dimensions (in the case of a product that has one or more indefinite dimensions) or more than one repeat of a pattern (if the product has a repeating pattern): s 7(1) and 7(3). A visual feature may, but need not, serve a functional purpose: s 7(2).
Section 71(1) of the Designs Act provides:
A person infringes a registered design if, during the term of registration of the design, and without the licence or authority of the registered owner of the design, the person:
(a)makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; or
(b)imports such a product into Australia for sale, or for use for the purposes of any trade or business; or
(c)sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product; or
(d) uses such a product in any way for the purposes of any trade or business; or
(e)keeps such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d).
In the present case, there is no dispute that the respondent has imported for the purposes of sale, trade or business, sold or otherwise disposed of, and offered to sell or dispose of, in Australia, each of the accused containers. As I have noted, the applicant’s case is that the design of each container is substantially similar in overall impression to one or more of RD 3, RD 4, and RD 6. Section 71(3) provides that in determining whether an allegedly infringing design is substantially similar in overall impression to the registered design, the Court is to consider the factors specified in s 19 of the Designs Act.
Section 19 provides:
(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i)have particular regard to those features; and
(ii) if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
(5) In this section, a reference to a person includes a reference to a court.
These factors can be summarised as follows:
(a)More weight is to be given to similarities between the designs than to differences between them: s 19(1).
(b)Regard must be had to the state of development of the prior art base for the design: s 19(2)(a).
(c)If there is a statement of newness and distinctiveness identifying particular visual features of the designs as new and distinctive, particular regard must be had to those features. If those features relate to only part of the design then particular regard must be had to that part of the design, but in the context of the design as a whole: s 19(2)(b). If there is no statement of newness and distinctiveness in respect of particular visual features of the design, regard must be had to the appearance of the design as a whole: s 19(3).
(d)If only part of the design is substantially similar to another design, regard must be had to the amount, quality, and importance of that part in the context of the design as a whole: s 19(2)(c).
(e)Regard must be had to the freedom of the creator of the design to innovate: s 19(2)(d).
(f)In having regard to these considerations, the standard to be applied is that of a person who is familiar with the product to which the design relates or similar products: s 19(4). This is referred to as the standard of the informed user.
What this shows is that, although the test is based on impression, it is not based merely on a casual comparison between designs for a given article. There needs to be a studied comparison based on the prescriptions of s 19 of the Designs Act. Thus, the notion of “imperfect recollection” – familiar in trade mark law – has no application when determining design similarity: cf Procter & Gamble at [23]-[28]; Rolawn Ltd v Turfmech Machinery Ltd [2008] RPC 27 at [111].
Statements of newness and distinctiveness in the present case
In the present case, of the designs alleged to be infringed, only RD 3 and RD 4 contain statements of newness and distinctiveness. In the case of RD 3, newness and distinctiveness is said to reside “in the features of the design as shown in the representations”. The statement thus directs attention to all the visual features depicted in the representations accompanying the design application. In the case of RD 4, the statement says that newness and distinctiveness reside “in the features of the design shown in solid lines in the representations excluding those features shown in broken lines”. The only feature in broken lines is a “figure 8” or “peanut shape” feature – I prefer to refer to it as “peanut‑shaped” – formed in the bottom panel of the base of the depicted container. This feature is also present in RD 3 but not excluded as one of the claimed new and distinctive features of that design.
The standard of the informed user
In Review 2 Pty Ltd (in liq) v Redberry Enterprise Pty Ltd (2008) 173 FCR 450 at [19]‑[27], Kenny J discussed the introduction into Australian designs law of the concept of the informed user. Her Honour observed (at [21]) that the concept of the informed user had been adopted in the Registered Designs Act 1949 (UK) (the UK Designs Act), with the consequence that decisions under that Act can provide some guidance in this country.
The UK Designs Act was amended, by means of the Registered Designs Regulations 2001 (UK), under s 2(2) of the European Communities Act 1972 (UK), to give effect to Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (the Designs Directive). These amendments included s 7(1) of the UK Designs Act which now provides that registration of a design under that Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression. The characteristics of the informed user are not defined. Provisions corresponding to the Designs Directive also find expression in Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (the Community Designs Regulation), which provides for the creation of a scheme of Community designs.
Decisions under the UK Designs Act and the Community Designs Regulation stress the dual character of the notional person – who must not only be informed, but be a user. This dual character was at the forefront of the description of the informed user in Woodhouse UK PLC v Architectural Lighting Systems [2006] RPC 1 where, at [50], Judge Fysh QC said:
First, this notional person must obviously be a user of articles of the sort which is subject of the registered design – and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of “the man in the street”. “Informed” to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of “what’s about in the market?” and “what has been about in the recent past?”. I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the “man skilled in the art” whose “nerd-like” (and other) attributes seem too technical: Technip France SA’s Patent [2004] R.P.C. 46 at [6–12] (CA).
This passage has been quoted in decisions of this Court: see Review 2 at [21]; Review Australia Pty Ltd (ACN 122 295 836) v New Cover Group Pty Ltd (ACN 111 991 596) and Others (2008) 79 IPR 236 at [24]; LED Technologies Pty Ltd (ACN 100 887 474) v Elecspress Pty Ltd (ACN 104 535 597) and Others (2008) 80 IPR 85 at [58]. When discussing the requirements of Australian designs law, Kenny J in Review 2 made reference (at [19]) to this dual character:
Who is the informed user? Plainly, the informed user must be a person who is familiar with the product to which the design in question relates. Moreover, the informed user must be a user of the class of product in question, in this case, ladies’ garments, or perhaps, more narrowly, ladies’ dresses. A designer or manufacturer of such garments is not an informed user merely because he or she designs or manufactures them. Further, this user is not simply an ordinary consumer: the user must be an informed user.
In LED Technologies Pty Ltd v Roadvision Pty Ltd and Another (2012) 199 FCR 204, Besanko J (at [74], with whom Mansfield J (at [1]) and Flick J (at [96]) agreed) observed that although the UK Designs Act was in different terms from the Designs Act, the difference did not suggest that the approach of Judge Fysh in Woodhouse should not be adopted in appropriate circumstances. Although this comment was made in the context of discussing a particular passage in Woodhouse concerning whether, in conducting a design comparison, more emphasis should be placed on the appearance of the product in situ, Besanko J’s contemporaneous reference to Review 2 at [21] and Elecspress at [58] suggests that his Honour might also have had in mind the passage in Woodhouse quoted above.
Decisions under the UK Designs Act and the Community Designs Regulation draw distinctions regarding who can and cannot be a user. In Dyson Ltd v Vax Ltd [2010] FSR 39, Arnold J (at [19]) referred with approval to the observation of the General Court of the European Union (the General Court) in Grupo Promer Mon Graphic, SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T‑9/07) [2010] ECR II-981 that the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The same observation of the General Court was referred to with approval in the appeal from his Lordship’s judgment: Dyson Ltd v Vax Ltd [2012] FSR 4 at [14]. In J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [7], Floyd J reasoned that a designer would not be a user even though the informed user must have knowledge of the design of products to which the design relates (in that case, handbags).
Uninstructed by the decisions of this Court which accept the quoted passage in Woodhouse as providing guidance, I would not, myself, have considered that a person’s status as a user had a direct role in applying the standard defined in s 19(4) of the Designs Act. In cases decided under legislation reflecting the provisions of the Designs Directive – in particular, the UK Designs Act – the emphasis on the notional person being a user of the articles in respect of which the design is registered can be explained by the fact that the informed user is the touchstone specifically provided by that legislation. The position is not quite the same under the Designs Act. Section 19(4) explicitly states that the standard is that of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates. Section 19(4) uses the expression “the standard of the informed user”, but merely as a tag. In my respectful view, it is not a statement of the content of the test. The expression “the standard of the informed user” is defined by the preceding words of the provision. So viewed, the expression cannot colour the meaning of the express words of the test. To allow the expression to colour the statement of the standard would be tantamount to construing, impermissibly, the words of a definition by reference to the term defined: The Owners of the Ship “Shin Kobe Maru” v Empire Shipping Company Inc. (1994) 181 CLR 404 at 419.
The Australian Law Reform Commission Report No. 74, Designs (Sydney, 1995) (the ALRC Report) – to which the Designs Act responds – adopted, as its recommended standard, the idea of the informed user. It seems that, in doing so, it was inspired by European developments in relation to the protection of Community designs. However, in adopting this idea, the Australian Law Reform Commission (the Commission) was not dogmatic about the status of the notional person as a user of products. At [6.13] of the ALRC Report, the Commission said:
… The informed user will usually be the consumer or person using the design article, depending on the nature of the decision, but will not be a design expert. For example, the informed user of car replacement parts may be the mechanic who repairs the vehicle, but for domestic items it may be the consumer. The concept of ‘informed user’ is discussed in … paragraph 5.17.
Paragraph 5.17 of the ALRC Report is illuminating:
Informed user. The Commission recommends that the novelty and distinctiveness of designs should be assessed from the perspective of the ‘informed user’. The concept of the informed user is flexible enough to incorporate where relevant the views of consumers, experts, specialists and skilled tradespersons. At the same time it does not, and should not, require that the expert or consumer be the test in all cases. The informed user would be defined as a person who is reasonably familiar with the nature, appearance and use of products of the relevant kind…
The test in s 19(4) of the Designs Act reflects this more general approach. Apart from the tag “the informed user”, the standard prescribed by s 19(4) appears to be indifferent as to how and in what circumstances familiarity is acquired. In my respectful view, the standard does not proceed on the requirement that the notional person be a user of the products in question – although, obviously, familiarity can be gained through use. Similarly, it does not proceed on the distinctions that the United Kingdom and European cases draw about who can and who cannot be a user.
Importantly, however, s 19(4) does not impose a standard higher than familiarity. The standard fixes the appropriate level of generality (or particularity) at which a design is to be assessed: see the discussion in Rolawn at [112]. This may be a reason for saying that the notional person is not a design expert, lest it be thought that a standard of design evaluation more rigorous or exacting than familiarity is involved. However, in my view, it is not a reason for excluding, necessarily, a design expert from being a person having the required familiarity.
In the present case, the standard of the informed user is the standard of a person who is familiar with produce or similar containers. So much is clear from an application of the text of s 19(4) of the Designs Act. No greater elaboration is required.
The applicant submits that, relevantly, “[t]he informed user is a purchaser or seller of fresh produce punnets who considers the needs of the packer and the eye appeal of the filled container to the consumer”. The respondent submits that the informed user is a “fruit packer” who uses the plastic containers in question for that purpose.
In my view, the class of persons whose attributes might be taken as representing the standard of the informed user is not as confined as the applicant or the respondent would have it. The text of s 19(4) does not require that confinement. The standard of the informed user in the present case might well be represented by a person who acquires produce containers for the purpose of using them, or having them used, in packing operations to produce packaged products. The standard of the informed user might be represented by the person who is the producer of the packaged product (relevantly, on the evidence in the present case, the producer of packaged fruit such as small tomatoes) or by a person engaged in packing operations on behalf of such a producer. The standard of the informed user might also be represented by a sophisticated purchaser at wholesale of the packaged product who has particular requirements in relation to, for example, the storage, transport, and display of the packaged product in such containers. There may be others whose perceptions could be taken as representing the standard of the informed user. However, in all cases, the necessary and only qualification is that the person be familiar with produce or similar containers. No matter how such a person might come to be appropriately qualified, he or she will have an awareness and appreciation of the visual features of a produce container that serve its functional as well as its aesthetic purposes.
I do not regard the perceptions of the general body of consumers who purchase packaged products at retail to be indicative of the standard of the informed user in the present case. It is entirely possible, of course, that some consumers, for whatever reason, might have a particular interest in produce containers and, because of particular circumstances, possess the requisite familiarity to meet the standard under s 19(4). However, as a matter of general approach, I would regard this to be the exception rather than the rule. Neither the applicant nor the respondent advanced a case that the general impressions of retail consumers, as such, set the proper standard by which the relevant designs were to be evaluated and compared in the present case.
Relevant functional aspects of produce containers
Generally
There is evidence before me, which I accept, that a number of visual features of a produce container, specifically for use with tomatoes, may also be present to serve a functional purpose in relation to the storage, transport, and display of the fruit. This evidence was given principally by Mr Galombik and Mr Tabone. The evidence is not specific as to when these features were first used in Australia. The parties nevertheless proceeded on the basis that the following features were present in produce containers in Australia before the earliest possible priority date in this case, namely, 19 February 2008.
Lid and base
So-called “clamshell” containers have a lid and a base which are attached to each other by a hinge. There is no functional difference in the length of the hinge between the lid and the base. The hinge length usually varies between container shapes, sizes, and designs to account for the cutting tool and matters that affect the wear and tear of the cutting tool. In containers made of PET, the hinge is typically created by an embossed line on the join between the lid and the base. Closure points between the lid and the base are also provided. There are a number of different methods employed in clamshell containers by which closure can be achieved. Commonly, indentations in the lid section are designed to catch the rim of the base. Other closure methods include press stud points on the rim of the lid and the base, tabs which fit into slots, and an overlocking rim whereby the rim of the lid fits over the rim of the base.
Shape
Containers of this kind are typically rectangular or square in shape, with dimensions that will fit an optimum number of containers into the crate used by the wholesaler. The containers must fit snugly so as to not move around during transport or to waste space in transport or storage.
Rounded internal corners ensure that the produce fits into the container evenly and without creating pressure which may result in bruising. Similarly, the ribbing which is employed in maintaining the integrity of the container must not create sharp pressure points on the container’s internal surface.
Ribbing
Ribbing is employed to give support and stability to the thin PET material typically used in the construction of containers of this kind. The ribbing reduces the cost of manufacture (because less PET can be used) and increases the integrity of the structure. The ribbing is preferably arranged to provide for large, clear surface areas to enable the contents of the container to be viewed. Although a completely clear container would be preferred, the integrity of the structure would be compromised. Therefore, the functionality of the container represents a compromise between cost and aesthetics.
Mr Tabone gave evidence that the earliest designs of containers used for packing small tomato varieties and strawberries were generally open-topped receptacles made of thermoformed plastic in which the fruit was covered by a cellophane-type sheet material (held in place by a rubber band) or a cling-type over‑wrap film material. The containers had substantially vertical ribbing all around the container, with no corner pillars, to add strength and integrity. Mr Tabone said that this ribbing developed a reputation for damaging the fruit within the container. He noted that, as lidded containers became more common, there was a reduction in much of the ribbing, leading to substantially clear (that is, plain, unribbed) side panels. He spoke of the general concept of corner pillars being used “in some earlier, smooth (un‑ribbed) container design versions”.
Feet
Feet at the base of the container facilitate airflow and the release of any built‑up moisture from the ventilation holes at the bottom of the container when the container sits on the base of a crate or when a number of containers are stacked. The function of the feet on the containers is therefore achieved regardless of the shape of the feet. Sometimes the containers are flat-based with indentations at the ventilation holes to achieve airflow. Mr Tabone gave evidence that having “legs” (or feet) on the bottom of the container was “not a new concept at 7 August 2009”.
Ventilation holes
Ventilation holes at the top of the lid of the container allow the release of gas, in particular, ethylene gas and carbon dioxide, as the fruit ripens. These holes also facilitate airflow for even and quick cooling after the fruit has been packaged. Supermarkets require an ambient temperature of between 11 and 14 degrees centigrade. It is important to keep tomatoes within this temperature range. The holes on the lid are normally positioned at the corners because most growers want a large flat surface area on the lid on which to place their label. Ventilation holes at the base of the container facilitate airflow for even and quick cooling after the fruit has been packaged and during storage as well as allowing for the release of any built‑up moisture. The function of the ventilation holes is not affected by their shape. Some manufacturers prefer circular holes as the blades used to make the holes are cheaper and more readily available. Oval holes are also used, but this is for aesthetic, and not functional, reasons. Mr Tabone gave evidence that ventilation holes were “not a new concept at 7 August 2009”. He gave evidence that ventilation holes were an example of a limitation on the freedom of the designer to innovate. Mr Papi gave similar evidence: see [83] below.
Constraints on the freedom to innovate
There is a question whether these considerations, or at least some of them, relevantly impose constraints on the freedom of the designer to innovate. The import of Mr Galombik’s evidence was that these considerations do impose constraints.
Mr Tabone’s evidence was that the designer has “limited freedom to innovate in the punnet production industry”. In this connection, he gave the following evidence:
In relation to the freedom to innovate, it would be expected, in theory, that designers of punnets for fruit and vegetable goods would have a wide ability to innovate. This may include the designing of punnets in different shapes, or innovation in terms of ventilation design. However, in my experience, the punnet production industry embraces change very slowly and is also constrained by practical considerations. For instance, as mentioned above, ventilation and drainage holes are placed on a punnet in certain positions because it is convenient to the machinery used by the manufacturer of the punnet rather than for precise design purposes. Also, a square or rectangular shaped product is likely to be preferred to a round shaped product as less space is wasted in packaging many punnets together in transit trays. Also, the three designs that I have compared are usually used to carry a weight of 250 grams, which is ideal for kumato tomatoes and strawberries. As kumato tomatoes and strawberries are small and can fall out of packaging, punnets are produced so that the base is deeper than the lid.
Mr Tabone was not challenged on this evidence, although, as I have noted (see [35]‑[38] above), his observations in the above-quoted passage and elsewhere in his affidavit evidence about the placement of ventilation holes sits somewhat inconsistently with his other evidence that the number and positioning of ventilation holes are “more in the nature of a design concept”.
Mr Papi gave the following evidence:
… Punnet sizes, vent hole sizes, vent geometry, vent hole shapes, radius and rib design and geometry are … dictated by the somewhat limited capability of the thermo form process.
It can be seen that the applicant’s and the respondent’s evidence speaks of the limited freedom of the designer to innovate, although the precise nature and extent of any limitation is not clear. Another difficulty is that the witnesses appeared to address this issue in terms of containers for small tomatoes or strawberries, whereas the registered designs in suit are for produce containers whose end use is not so limited.
Nevertheless, in accordance with the evidence, I accept that, before the earliest relevant priority date, there were features of produce containers, where the intended use was for fruit such as small tomatoes and strawberries, that limited the freedom of the designer to innovate. Specifically, I accept that such containers typically were required to be square or rectangular in shape with dimensions to facilitate packing for storage and transport, and ultimate display of the packaged product at retail (including having a base that is deeper than the lid); that ventilation and drainage holes were required and that the size, shape, location, and number of ventilation holes could well be a function of the limitations of the particular machinery that, in a given case, might be available to manufacture the container; that feet would assist in achieving ventilation and drainage; that extensive ribbing or other sharp features were to be avoided in order to prevent damage to some contents; and that pillars were preferred in order to ensure the structural integrity of the container and to provide substantially clear panels between the pillars. Moreover, these constraints are likely to have been reflected by a degree of standardisation. I have proceeded on the basis that, at the earliest relevant priority date, these features were common to designs applied to produce containers and do not themselves signify aspects of design innovation. In cross‑examination, Mr Tabone accepted that, before 2008, plastic containers for fruit and vegetables on retail shelves possessed common features, which could include, separately but not necessarily in combination, a “boxish” shape; a hinged lid; holes for ventilation; small protruding feet on the lower surface of the base; and ribbing at the corners or ribbed pillars, for strength or decoration, with otherwise clear surfaces or panels between the corners or pillars.
The prior art base
Introduction
Section 15(2) of the Designs Act defines the prior art base for a design in the following terms:
The prior art base for a design (the designated design) consists of:
(a) designs publicly used in Australia; and
(b) designs published in a document within or outside Australia; and
(c) designs in relation to which each of the following criteria is satisfied:(i) the design is disclosed in a design application;
(ii) the design has an earlier priority date than the designated design;
(iii)the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
The prior art base consists of designs, not design features or, indeed, design concepts: Keller at [53] and [244]-[245]; Elecspress at [55]. As the case came to be argued, the respondent relies upon the following specific designs as comprising the prior art base for the purpose of considering the scope of RD 3:
·RD 1;
·RD 2;
·The designs of the container depicted in the first patent;
·A container referred to by the respondent as the “Tacca punnet”: exhibit RG‑6;
·One of the respondent’s containers referred to by it as the “Source and Sell container”: exhibit RG‑10;
·A design registered in the name of Infia S.r.L. (the Infia design).
The respondent relies upon the same designs, as well as RD 3 and the design of the container shown in the second patent, as comprising the prior art base for the purpose of considering the scope of RD 6. The respondent relies upon all the above designs, as well as RD 6, as comprising the prior art base for the purpose of considering the scope of RD 4. The respondent does not allege that the prior art deprives any of the registered designs in suit of validity.
In light of the evolving prior art base that is relied upon for each registered design, I will consider the applicant’s case for infringement in the following order: RD 3; RD 6; and then RD 4.
Aspects of proof of the prior art base
There is a dispute about whether the respondent has proved that the Tacca punnet and the Source and Sell container form part of the prior art base. The evidence concerning these matters was given by Mr Galombik, initially in his affidavit. Certain parts of his affidavit were rejected in relation to his evidence concerning the Tacca punnet; other parts were admitted subject to a limitation under s 136 of the Evidence Act. Leave was granted to the respondent to adduce further evidence from Mr Galombik orally, in relation to both the Tacca punnet and the Source and Sell container.
In his affidavit, Mr Galombik said that he had “seen the Tacca Containers in retail shops since at least 2007”. In oral evidence in chief, he was shown a sample of what purports to be the Tacca punnet, which was later tendered as exhibit RG-6. The following exchange took place:
Are you able to tell me when you obtained possession of that container?---No, I can’t tell you exactly when I’ve taken possession of this container.
Can you give me an approximate date?---Well, I was always around this – the supermarkets, looking at containers.
An objection was made, which led to the following exchange:
HIS HONOUR: … Can you just concentrate on that question. It seems to me it’s capable of being answered with a yes or no answer. Are you able to give an approximate date?---Of this specific container?
Yes?---Well, I don’t – well, no, because I don’t know when – what this specific container is.
Very well.
MR ELLIOTT: Do you recognise that container or that specific design of container as one that you have seen before?---Yes.
And when have you seen that specific design of container before?---Around 2007 when I started about in this industry.
And where did you see it?---In the supermarkets.
Which supermarkets?---Well, I couldn’t tell you exactly.
In Australia?---Yes, in Australia.
In cross-examination, Mr Galombik accepted that he could not produce a receipt for the purchase of a container that “looked like that” prior to 2010.
In his affidavit, Mr Galombik also gave evidence that, on about 8 August 2007, the respondent engaged a manufacturer, Turbo Plastics, to produce the Source and Sell container. A copy of the sales confirmation, specification sheet, and other commercial documents – said to relate to this container – were in evidence.
In oral evidence in chief, Mr Galombik was shown a sample of what was said to be the Source and Sell container. This was later tendered as exhibit RG-10. The following exchange took place:
And what do you recognise it to be?---A – this is a container that I would have got from the factory in 2007 because we always write the date on the labels when we – that’s part of our process. We put the sticker on and put the date that we acquired it. And the supplier is on here, Forever Gain, Forever Gain Enterprise. It would be a Chinese factory.
When you say “we obtained” is that Source and Sell?---Yes.
And was it a container of that particular design utilised by Source and Sell in the marketplace?---Well, we imported a container in 2007. I think it is this code, this number. We got it produced – I’m not 100 per cent sure if it’s this number but it’s very similar and we imported them into Australia.
And for what purpose?---For the strawberry market in Western Australia.
And was it used for that purpose?---It was used for that purpose.
And over what time period?---Well, frankly, we used – we gave one container and they were popping open so we stopped importing them because it wasn’t fit for purpose. But originally, we imported this container.
Yes. I understand that. And I’m asking you a new question now. You said you imported them for the purpose of selling strawberries in Western Australia?---For packing strawberries.
Packing strawberries?---We don’t sell strawberries. We pack strawberries, yes.
And when did you sell them for that purpose? What year would that have been?---I think about 2007, that time.
The terms of the sales confirmation required the logo “S&S” to be printed on each container to represent the respondent’s corporate name. Further, the specification sheet required the mould identification number to be placed on each container. Exhibit RG‑10 did not bear these markings, thereby calling into question whether that container was an example of the container that was supplied pursuant to the order of 8 August 2007.
In cross-examination, Mr Galombik said that, although each container was to be imprinted with the “S&S” logo, this was “not necessarily done”. In that connection, he said:
… We don’t have a mould invoice for this product which means that it very well could be the supplier’s product. So we’ve just taken the standard product. And if it is standard product, it’s theirs. They won’t put your logo on it.
In re-examination, Mr Galombik repeated this explanation, with an added explanation:
… Well, as I said, if we’re buying it from the factory then we don’t pay for the mould. And they wouldn’t put our name on it because that would preclude them from selling it to anybody else. And, secondly, sometimes our customers don’t [put] our name on the bottom because they don’t want their competitors knowing where to get the punnet. So they ask us specifically not to put it.
Following this explanation, the following exchange took place:
HIS HONOUR: Well, I have a question to ask.
Why then is it specified that there be a logo print S and S?---In this one?
Yes?---Well, we probably put this on, your Honour. What happened is we have a standard order, basically. I mean, if you – you know, there’s a lot of cut and pasting so we have a standard order and then it would come back with a – we would get a sample back from the supplier and we would either accept it or reject it and in this instance we accepted it because it’s a – we don’t – we’re not great marketers. We don’t really, you know, insist on “Source and Sell” on a punnet, as I just said. It doesn’t really matter to us because we work specifically with customers. We have a few customers and a lot of it is design so we don’t have a multitude of customers selling one punnet to a lot of people.
In relation to the absence of the mould identification number on exhibit RG‑10, Mr Galombik gave the following explanation in re‑examination:
… What I was saying was that we often put information on orders that we require that don't get done. We have never ever had this information on any punnet. And often things [don’t] get done. Again, in China, you can write out detailed orders and things don't get done. In this instance this is just a punnet for strawberries. I mean, the fact that – I mean, as I have said now before, this is probably, because we don't have an invoice for moulds and we always have separate mould invoices, this is very likely come out of the factory. And they wouldn't do – because we can ask for what we want but at the end of the day if you want the punnet and it is theirs and you don't want to pay mould charges, then you get what's in the factory.
The ground for contending that the Tacca punnet and the Source and Sell container formed part of the prior art base is prior public use: s 15(2)(a) of the Designs Act. In the context of discussing the proof of prior public use in the law of patents for inventions, Besanko J in Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52 said at [200]:
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.
In that connection, his Honour quoted the following finding by Menzies J in Commonwealth Industrial Gases Limited v M.W.A. Holdings Pty. Limited and Others (1970) 180 CLR 160 at 165-166:
… It is not that I dismiss the evidence as deliberately untruthful – although I am disposed to think that the evidence relating to Ex. 8 and Ex. 9 – which was a less than accurate representation of Ex. 8 – was not wholly frank – it is rather that I cannot accept as reliable, oral evidence relating to particular pieces of equipment to which some reference has been found in the records of the defendant company, and then, as if by unaided recollection of observations made up to twenty-eight years ago, that equipment has been identified and described by the witnesses. It is apparent that during the long period since the equipment was seen, the witnesses must have looked at hundreds, if not thousands, of unremarkable pieces of similar equipment, and I have no confidence in their stated recollections of particular pieces of equipment among those numbers.
In Aspirating IP, Besanko J also referred to:
(a)the observation of Gummow J (when in this Court) in Nicaro Holdings Pty Ltd and Others v Martin Engineering Co and Another (1990) 91 ALR 513 at 524-525 that proving an alleged anticipation by the recollection of witnesses and drawings in catalogues and brochures is to be approached with “some caution”; and
(b)the observation of Waddell J in Windsurfing International Inc and Another v Petit and Another [1984] 2 NSWLR 196 at 231 which supports the principle adopted by Besanko J at [100] above, that uncorroborated evidence of an alleged prior public use must be scrutinised with particular care and such use should be strictly proved.
The same general principle applies to the proof of prior public use in the law of registered designs: J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd and Another (1989) 90 ALR 288 at 299. This principle typically applies where the evidence of prior public use is an oral description based on recollection. In this case, Mr Galombik has identified the containers said to have been previously used and, in the case of the Source and Sell container, produced commercial documentation said to relate to it. Nevertheless, I have significant reservations about accepting that evidence.
First, Mr Galombik’s evidence about seeing “that container or that specific design of container” – with reference to the Tacca punnet (exhibit RG-6) – is very general. The highest he could put his recollection of first seeing the container was “[a]round 2007 when I started about in this industry” and that he saw it “[i]n the supermarkets” in Australia. I have no confidence from this evidence, including from the manner in which it was given (see [91] to [92] above) and the level of generality with which it was given, that Mr Galombik did see the Tacca punnet in supermarkets in 2007 or that, if he did see a punnet sourced from Tacca, it was a container in the specific form of exhibit RG-6. It is for the respondent to prove the prior art base on which it relies. It has not been suggested that the respondent could not have called direct evidence from the supplier of the Tacca punnet as to when and where the particular container represented by exhibit RG-6 was first supplied or otherwise used publicly in Australia. I am simply left with Mr Galombik’s very general and uncorroborated say‑so. I am not persuaded that this evidence – from this single source and given in this form – provides a sound basis for making a positive finding that the Tacca punnet in the form of exhibit RG‑6 was publicly used in Australia before any relevant priority date in the proceeding.
Secondly, in relation to the Source and Sell container, there are clear discrepancies between the container which is exhibit RG-10 and the requirements in the contemporaneous documents said to relate to it. Mr Galombik’s explanation about these discrepancies is unpersuasive. It is possible, as he said, that the container was supplied without the markings referred to in the sales confirmation and specification sheet. But the tenor of Mr Galombik’s evidence in this regard presented this possibility as somewhat speculative. His evidence in this regard is also hard to reconcile with the objective facts. The sales confirmation presents as a document prepared by the manufacturer, Turbo Plastics, which was signed on behalf of the respondent. In these circumstances, it is difficult to comprehend why, if the “S&S” logo was not required to be imprinted on each container to designate the corporate name of the respondent, the sales confirmation specifically provided for the presence of this feature. The fact that the sales confirmation prepared by the manufacturer specifically provided for this feature is plainly inconsistent with the suggested possibility – for that is as high as Mr Galombik could put it – that the respondent was purchasing a standard product in respect of which the manufacturer was not prepared to imprint the respondent’s logo. It is also plainly inconsistent with the alternative possibility advanced by Mr Galombik that the respondent’s “customer” did not want the respondent’s “name” on the container. Similarly, it is difficult to comprehend why the specification sheet specifically provided for the mould identification number to be placed upon each container, if this was not a requirement intended to be fulfilled.
I do not leave out of consideration the fact that exhibit RG-10 bears a sticker showing the date of 21 September 2007. This sticker was not placed on the container by Mr Galombik, although he said that “somebody in my office did”. I am not satisfied as to the circumstances in which the sticker came to be placed on exhibit RG‑10.
Overall, on the confusing state of the evidence, I am certainly not persuaded that I should make a positive finding that exhibit RG-10 represents a container that was supplied in fulfilment of the sales order given on about 8 August 2007, or that it was a container in public use in Australia at any time before any relevant priority date in the proceeding.
Conclusion
For these reasons, I am not satisfied that either the Tacca punnet represented by exhibit RG‑6 or the Source and Sell container represented by exhibit RG-10 has been shown to be part of the prior art base. The consequence of this finding is that neither the Tacca punnet nor the Source and Sell container can be taken into account when considering the scope of each registered design in suit.
RD 3
Description
The application for RD 3 was filed on 19 February 2008, which is the priority date for the design.
As I have noted, the application included a statement of newness and distinctiveness in the following terms:
Newness and distinctiveness reside in the features of the design as shown in the representations.
As I have also noted, it is apparent from this statement that the applicant relies upon all the visual features of the design, without particular regard to one or more of those features.
The design is disclosed in the following filed representations, which are reproduced in Schedule 1 to these reasons:
(a)Top perspective view – lid open (representation 1);
(b)Top perspective view – lid closed (representation 2);
(c)Front view – lid open (representation 3);
(d)Front view – lid closed (representation 4);
(e)Side view – lid open (representation 5);
(f)Side view – lid closed (representation 6);
(g)Rear view – lid open (representation 7);
(h)Rear view – lid closed (representation 8);
(i)Top view – lid open (representation 9);
(j)Top view – lid closed (representation 10);
(k)Bottom view – lid open (representation 11); and
(l)Bottom view – lid closed (representation 12).
In general terms, the representations depict a squarish container having a hinged lid and base. The base is deeper than the lid. As a matter of impression, the container appears to be slightly longer from front to back than it is from side to side: see representations 3, 7, and 9 to 12.
The base has curved and ribbed corner pillars which converge towards the lower surface of the base to create a soft chamfer between each pillar and the lower surface of the base: see representations 3 to 8. The side walls of the base are substantially perpendicular. They are plain and unribbed: see representations 1 to 8. The lower surface of the base is disposed orthogonally to the side walls.
There is a rim with an associated planar lip around the upper part of the base: see representations 3, 5, 7, and 9 to 12. The lip is disposed orthogonally to the side walls. The rim has a particular shape and configuration, best illustrated by representation 1. This particular shape and configuration includes three substantial recessed areas located on the perimeter of the front and two sides of the base: see representations 1 and 5.
The lower surface of the base includes a distinctive ribbed peanut‑shaped element: see representations 9, 11, and 12. The lower surface of the base has four curved feet located at its corners, substantially in the shape of arcs which straighten at one end: see representations 9, 11, and 12.
The lid has round corners but no pillar elements. The lid is raised with substantially perpendicular side walls that, at their upper ends, curve to an upper, orthogonally‑disposed surface: see, for example, representations 1, 2, and 4 to 6. There is a centrally‑located raised area on this surface. This feature is rectangular in appearance with concave corners. The longer sides of this feature are orientated longitudinally with the lid (that is, from the front to the back of the lid): see representations 3, 7, and 10.
There is a rim with an associated planar lip around the lower part of the lid. The rim is disposed orthogonally to the side walls. The rim has a particular shape and configuration, best illustrated by representation 1. This particular shape and configuration includes three substantial recessed areas located on the front and two sides of the lid: see representations 1 and 5.
When the lid and the base are closed, the surfaces of the lid and the base forming the interface between those two components are “parallel”, to use Mr Tabone’s expression. In this state, the recessed areas in the rim of the lid and in the rim of the base cooperate to form three elongated openings or vents at the front and two sides of the container: see representations 4 and 6. These features are conspicuous. They serve the dual functional purpose of providing ventilation and a means of readily opening the container after it has been closed.
The same principles were discussed by Kirby P at 527F to 529A.
I am not persuaded that the applicant’s silence – such as it was – or its conduct should be taken as signifying that it had accepted the respondent’s counter-offer. It was, no doubt, the respondent’s earnest hope that the applicant would be persuaded to accept it. In the period immediately following the respondent’s solicitors’ letter dated 25 May 2010, the respondent may have been buoyed by the thought that “no news” was “good news”. But the applicant was entitled to digest the counter-offer and weigh the situation so that it could come to an informed and considered decision as to whether the counter-offer should be accepted. It could not be bound by the respondent’s unilaterally proclaimed assumption that the applicant’s requirements would be satisfied by what the respondent was prepared to offer on 25 May 2010. As events transpired, the applicant’s silence was relatively short‑lived.
On 22 June 2010, the applicant’s attorneys asked the respondent to make good its assertion that the first patent was “fatally flawed and unenforceable”. In the email of 24 June 2010, the attorneys pressed for a response and made explicit their reasons for seeking that information:
We require that information, if it exists, to assess our client’s position with regard to enforcement of our client’s patent.
But for the applicant’s silence – which, in the interim, was at best equivocal – nothing had occurred between 25 May and 24 June 2010 that would signify that the applicant had accepted the counter-offer. Even the respondent had taken no steps that would show that it was proceeding on the basis of a concluded and binding agreement. Indeed, to the contrary, it had taken no steps to deliver up its remaining stock of the first Kumato container, as it had represented it would do in the Deed it had provided. The attorneys’ email of 24 June 2010 makes sufficiently clear that the applicant was still considering its position. The respondent could not reasonably think that its counter-offer had been accepted.
On 1 July 2010, after receiving the respondent’s explanation for its assertion that the first patent was unenforceable, the applicant’s attorneys persisted in the applicant’s claim for compensation and for the provision of information from which it could accurately identify all the revenue received by the respondent from the sale of the first Kumato container. By that response, the applicant made clear that the respondent’s counter‑offer was rejected. In substance, the applicant advanced a further revised proposal that did not require the respondent to make the public acknowledgements that it had sought on 21 May 2010. The question of compensation, and the provision of financial information, remained the applicant’s unfulfilled requirements.
The present case is not one where, by reason of the custom of a particular trade, or by reason of a course of dealing or previous relationship between the parties, it could be argued, as it has been in some jurisdictions, that a duty was imposed on the applicant, as offeree, to reject the respondent’s counter-offer or be bound by it: see Empirnall at 534G. Nor is the present case one where, knowing of the terms of an offer, and an offeror’s intention to enter into a contract on those terms, the applicant has exercised a choice and taken the benefit of the offer: see Empirnall at 535A-535D.
In this latter connection, the respondent submits that the applicant has taken the benefit of the counter-offer by retaining and relying on the Deed. I do not accept that submission. In my view, the applicant’s retention of the Deed is without legal significance in the present case. The respondent provided the Deed in circumstances of its own choosing, and as part of a strategy to force the issue with the applicant by giving it what the respondent thought might be enough to resolve the controversy between them. To hold that the applicant’s mere retention of the Deed in the period up to 1 July 2010 – when it clearly rejected the counter‑offer – would be to hold that the applicant came under an immediate obligation to return the Deed to the respondent, even while it was considering the counter‑offer. This plainly cannot be taken to have been the respondent’s intention at the time. Moreover, the applicant cannot be taken to have relied upon the Deed in any operative way by its attorneys merely noting in their letter of 1 July 2010 that, despite delivery of the Deed, the respondent had failed to deliver up the stock of the first Kumato container. In context, that observation appears to be no more than a reflection of the applicant’s concern regarding the respondent’s preparedness to genuinely settle the dispute: the respondent had not done what it had said it would do.
My conclusion means that the applicant has remained free to bring proceedings against the respondent for infringement of the first patent. In the circumstances, it is not necessary to decide the alternative basis on which the applicant says it can proceed, namely, through the operation of clause 5 of the Deed.
Relief
The applicant has sought an injunction to restrain further infringement of the first patent. Mr Galombik has given evidence that the respondent no longer supplies the first Kumato container. There was no challenge to this evidence. There is no evidence to suggest any continued threat of infringement of the first patent. I am not satisfied that, in the circumstances, an injunction is warranted.
The applicant has also sought orders for an inquiry as to damages or, alternatively, an account of profits. It has sought directions (including as to the giving of discovery) to enable it to make an election between those remedies. The respondent resists the granting of any such relief.
There is evidence that the respondent has supplied in excess of 500,000 units of the first Kumato container to Moraitis. The evidence makes clear that this occurred as part of an attempt to copy a sample of the applicant’s CJ-200H container, at Moraitis’ behest, which the applicant was then supplying to Moraitis. It is at least possible – I do not say more at the present time – that these sales, or some part of them, were made at the expense of sales that might otherwise have been made by the applicant of its own container and that, as a result, it suffered loss.
As to profits, the applicant has maintained that it made a loss in relation to its supply of the first Kumato container. It certainly asserted that it had made no profit at the time of its counter‑offer. The applicant was not prepared to act on that assertion. After the commencement of the present proceeding, the respondent supplied the applicant with material in an attempt to persuade it of that fact. This material included a letter from a firm of chartered accountants, stating that a loss had been made. The letter makes clear, however, that the accountants relied on unaudited information provided by the respondent. I do not consider that letter to be of any real probative value for present purposes. At an interlocutory stage in the proceeding, the applicant sought, and the respondent resisted, the giving of discovery in relation to certain financial material. At that time, the respondent’s position was that discovery in that regard would not then be appropriate and should only be given in the event that liability against it was found. The applicant did not press its claim for discovery at that time. Moreover, during the hearing, some documents in relation to sales and costs were produced by the respondent in response to a call from the applicant. However, Mr Galombik made clear in his cross-examination that, although the production represented the respondent’s best efforts on short notice, he had not personally satisfied himself that the production represented complete and accurate information on that question.
In this state of affairs, I do not think that it would be an appropriate exercise of discretion to deny the applicant the opportunity to pursue a claim for pecuniary relief, as the respondent contends I should. It seems to me that the applicant is at least entitled to discovery to enable it to decide whether it wishes to pursue such a claim, including as to the specific form of relief.
The applicant has made a claim for additional damages. Although the parties have made submissions on the applicant’s entitlement to such damages, I do not propose to make any findings on that question at the present time. As the text of s 122(1A) of the Patents Act recognises, that question can only be addressed sensibly in the context of the applicant’s final claim for pecuniary relief.
The second patent
Introduction
The issues in relation to the second patent are whether (a) claims 1 to 4 are valid in light of the allegation that the invention as claimed in those claims is not novel and does not possess, in any event, an innovative step, and (b) whether the Kumato container possesses all the essential features of claim 5.
The second patent was filed on 7 August 2009. This is the relevant priority date of the claims: see s 43(2) of the Patents Act.
The claims are as follows:
1.A plastic container suitable for fruit, the container including a bottom having a plurality of protruding legs, each leg following a curved path which is parallel to the bottom.
2.The plastic container of claim 1, which has a hinged lid which includes a plurality of ventilation holes.
3.The plastic container of claim 2, wherein the lid is generally rectilinear in shape and has two ventilation holes located in a first side near the hinge, two ventilation holes located in a second side opposite the first side and one ventilation hole in each of the other two sides.
4.The plastic container of claim 2 or 3, which also includes ventilation holes in the bottom.
5.A plastic container substantially as herein described with reference to any one of the accompanying drawings.
The specification records that the alleged invention “relates to improvements in devices in plastic container [sic] for fruit packaging”. These “improvements” are said to involve “six major aspects” which are identified as eight friction points; six ventilation holes on the lids and eight ventilation holes at the bottom of the container; four protrusions (legs) at the bottom of the container; the notch to open the container; two ventilation openings at the two sides of the container; and a wider hinge.
In relation to the “legs”, the specification states:
This innovation consists of 4 small protrusions or called legs at the bottom of the container (see item “3” in Figure 1) to provide extra friction to the container to enable it to sit on any surface stably.
No other reference or description of the legs appears in the specification other than in claim 1 which characterises each leg as “following a curved path which is parallel to the bottom” and in the illustration of that feature depicted in figure 1 (which I have included in Schedule 7 to these reasons).
The prior art base
As originally particularised, the prior art base for the purpose of determining the validity of claims 1 to 4 of the second patent was confined to prior art information consisting of the sale and distribution in Australia from at least about 2006 of two containers referred to as “the Tacca Containers” and the sale and distribution in Australia from at least about 2007 of a container referred to as “the Source and Sell Container”. As the hearing proceeded, the respondent only relied, in this regard, on the Tacca punnet represented by exhibit RG‑6 and the Source and Sell container represented by exhibit RG‑10.
For the reasons set out in [101] to [109] above, I am not satisfied that either the Tacca punnet represented by exhibit RG-6 or the Source and Sell container represented by exhibit RG‑10 has been shown to be part of the prior art base for the invention claimed in the second patent. The consequence of this finding is that these containers cannot be taken into account when considering the grounds of invalidity.
During the course of the hearing, I granted leave to the respondent to amend its particulars to rely on Mr Tabone’s evidence that plastic containers suitable for fruit included containers with four legs. In that connection, Mr Tabone gave the following evidence in paragraph 12 of his second affidavit:
In relation to the four legs at the bottom of the container, it is my opinion that having legs on a container was not a new concept at 7 August 2009. However, I was not aware of the use of protruding legs in the noted shape, which is in an arc type shape, prior to 7 August 2009 and this may be a new concept.
This statement was also referred to in paragraph 21 of his second affidavit.
In submissions, the respondent also sought to rely on RD 1 and RD 2 as relevant prior art. The publication of these designs was not pleaded as prior art for the purpose of the second patent, and no leave was sought to amend the respondent’s particulars in that regard. The respondent should be held to its pleaded and particularised case.
Novelty
An invention will not be a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim, is not novel when compared with the prior art base as it existed before the priority date of that claim: s 18(1A)(b)(i) of the Patents Act. Relevantly to the present case, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of prior art information made publicly available in a single document or through doing a single act: s 7(1)(a) of the Patents Act.
In the present case, the prior art base particularised and established by the respondent contains limited prior art information. It is essentially confined to the fact that containers of the kind referred to in paragraphs 12 and 21 of Mr Tabone’s second affidavit had four legs.
In my view, the respondent’s case falls well short of establishing that the invention, as claimed in claims 1 to 4 of the second patent, is not novel.
Innovative step
An invention will not be a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim, does not involve an innovative step: s 18(1A)(b)(ii) of the Patents Act. Relevantly to the present case, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the art, in the light of the common general knowledge as it existed in the patent area before the priority date, only vary from certain forms of prior art information in ways that make no substantial contribution to the working of the invention: s 7(4) of the Patents Act.
The relevant principles are discussed in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 at [49]-[79] and [91]-[98]. The essential task is to compare the invention as claimed with the relevant prior art information; to identify the difference or differences between that which is claimed in the patent and that which is disclosed in the relevant prior art information; and to determine whether the difference or differences make a substantial contribution to the working of the invention as claimed. A substantial contribution is one that is “real” or “of substance”.
Mr Tabone and Mr Papi addressed the following question in their joint report:
Second Patent 2009100783: Innovative step: does each or any integer make a substantial contribution to the working of the invention?
In addressing this question, Mr Tabone and Mr Papi systematically considered each integer of claims 1 to 4. Other than for one integer, each expressed the opinion that none of the integers of those claims makes a substantial contribution to the working of the invention over the prior art. There is no evidence to the contrary. The integer in dispute is the following emphasised integer of claim 1:
A plastic container suitable for fruit, the container including a bottom having a plurality of protruding legs, each leg following a curved path which is parallel to the bottom.
Mr Tabone’s evidence, on which the applicant relies, was that this integer makes a substantial contribution to the working of the invention as claimed. Mr Papi disagreed.
Mr Tabone and Mr Papi did not identify any particular prior art information when expressing these opinions in the joint report. There is no doubt, however, that the prior art information includes the fact that plastic containers suitable for fruit included containers with four legs: see [269], [270], and [273] above.
In the joint report, Mr Tabone explained the contribution he understood the curved legs to make:
… [T]he protruding feet at the four corners of the base, in following a curved path, have a significant function when the plastic container has a raised section on the lid as illustrated in Figure 1 of the second Patent. The curved feet locate with the raised section when one plastic container is stacked on another, in store or when on a pallet. This adds further stability to the stacked containers.
This evidence repeated the substance of earlier evidence given by Mr Tabone in his third affidavit. It is clear that Mr Tabone’s evidence speaks of a particular working interrelationship between the curved legs identified in claim 1 and another specific component: a plastic container which has a lid of a particular shape and configuration with which the legs of the first container are to engage when the first container is stacked on the other container, to provide further stability.
Leaving aside the question of whether this particular working interrelationship can provide the requisite innovative step, there are two matters to note.
First, it is a legal requirement that a complete specification must describe the invention fully, including the best method known to the applicant of performing the invention: s 40(2)(a) of the Patents Act. The interrelationship which Mr Tabone’s evidence addresses is not described in the complete specification of the second patent. This clearly suggests that it is not within the contemplation of that patent. The function ascribed to the curved legs in the complete specification is that they provide “extra friction” to enable the container to sit stably on any surface.
Secondly, and more fundamentally, the interrelationship which Mr Tabone’s evidence addresses is not secured by the wording of any of claims 1 to 4. In other words, absent appropriate words of limitation to confine the invention to embodiments having this interrelationship, claims 1 to 4 extend to include embodiments that do not possess the asserted innovative step. This is fatal to the validity of these claims because, on the evidence, no other innovative step exists to support them.
Mr Papi challenged Mr Tabone’s opinion that, as a matter of fact, the curved legs do provide a substantial contribution to the working of the invention as claimed. He gave evidence that the curved legs are too far outside the raised section of the illustrated lid and that the raised section of the illustrated lid is too shallow to engage with the curved legs to provide additional stability. As the discussed interrelationship is not claimed or even contemplated by the second patent, it is not necessary for me to resolve that debate.
As claims 1 to 4 of the second patent are not valid, they cannot be infringed.
Infringement of claim 5
Mr Tabone and Mr Papi each expressed the opinion that the Kumato container possesses all the essential features of claim 5 of the patent. As I have noted, I do not accept the correctness of their opinions.
Claim 5 is an omnibus claim. It claims a plastic container “substantially as herein described with reference to any one of the accompanying drawings”. There is, in fact, only one such drawing, namely, figure 1 reproduced in Schedule 7 to these reasons. This is significant. Figure 1 plainly identifies the particular embodiment of the invention to which claim 5 is directed.
Moreover, the words “substantially as herein described” plainly refer to the description of the container in the body of the specification. I reject the applicant’s submission that these words refer to the container defined in the preceding claims. In form and in substance, claim 5 is not a dependent claim. In particular, it is not dependent on claim 1. The position in relation to claim 5 is to be contrasted with claims 2 to 4, which are expressed to be dependent on claim 1 or a claim dependent on claim 1.
Further, due recognition must be given to the word “substantially”. This means “in substance”. So expressed, the claim defines a plastic container in which each of the “six major aspects” described in the specification are present as essential features. Each of these features is discussed in the body of the specification with reference to the container illustrated in figure 1. I accept the applicant’s submission that, in the present case, it is not necessary for every detail in figure 1 to be present in order for infringement to be found: see the observations of Middleton J in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019 at [44]; cf Beltreco at [153]; Synthetic Turf Development Pty Ltd v Sports Technology International Pty Ltd and Others (2005) 64 IPR 281 at [247]. I do not accept, however, that this means that claim 5 can be infringed by a container that does not possess each of the “six major aspects”. These are not matters of mere detail. They are essential features of the embodiment that is illustrated and described. Claim 5 claims, in substance, the same container illustrated in figure 1, minor variances aside: Raleigh Cycle Coy. Ld. and Another v. H. Miller and Coy. Ld. (1948) 65 RPC 141 at 159.
When this is appreciated, it can be seen that the Kumato container does not have all the essential features of the container described with reference to figure 1. It does not have the notch to open the container or the two ventilation openings at the two sides of the container. It does not have the eight friction points described in the body of the specification. It does not have six ventilation holes in the lid and eight ventilation holes at the bottom of the container. The absence of any of these features means that the Kumato container cannot infringe claim 5. The contrary opinions expressed by Mr Tabone and Mr Papi reflect that, in expressing their opinions, they did not have regard to the proper construction of the claim.
Conclusion on infringement of the second patent
The respondent has not infringed claims 1 to 4 of the second patent because those claims are invalid. The respondent has not infringed claim 5 of the second patent.
DISPOSITION
The parties are to bring in draft orders giving effect to these reasons. In the absence of agreement, each party is to provide a draft of the orders it proposes, supported by written submissions not exceeding three pages in length. The agreed draft, or proposed drafts and submissions, are to be provided within seven days.
I certify that the preceding two hundred and ninety-four (294) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. Associate:
Dated: 31 July 2013
Schedule 1
Schedule 2
Schedule 3
Schedule 4
Schedule 5
Schedule 6
Schedule 7
Schedule 8
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