NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited
[2017] APO 29
•13 June 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited [2017] APO 29
Patent Application: 2013202231
Title:Apparatus for handling containers
Patent Applicant: Australian Mobile Mining Equipment Systems and Accessories Pty. Limited
Opponent: NSL Engineering Pte Ltd
Delegate: Ed Knock
Decision Date: 13 June 2017
Hearing Date: 22 March 2017, in Canberra
Catchwords: PATENTS - section 59 – opposition to grant of patent – shipping container tippler – whether claims fairly based – whether the invention useful - whether claimed invention was novel – whether claimed invention had inventive step – ground of novelty only ground upheld – a number of claims not novel – applicant allowed an opportunity to amend.
Representation: Counsel for the applicant: Ian Horak
Patent attorney for the applicant: Catherine Hustwick of Australian Patent & Trademark Services Pty Ltd, Sydney
Also present for the applicant: Murray Bridle
Counsel for the opponent: Craig Smith
Also present for the opponent: Cameron Hay
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202231
Title:Apparatus for handling containers
Patent Applicant: Australian Mobile Mining Equipment Systems and Accessories Pty. Limited
Date of Decision: 13 June 2017
DECISION
Claims 1, 2, 5 to 15 and 17 to 19 are not novel.
I allow a period of two (2) months from the date of this decision for Australian Mobile Mining Equipment Systems and Accessories Pty. Limited to file amendments to overcome this ground.
I award costs according the Schedule 8 against the applicant, Australian Mobile Mining Equipment Systems and Accessories Pty. Limited.
REASONS FOR DECISION
Background
1.The present patent application 2013202231 was filed as a divisional application of parent application 2010306065 on 31 March 2013 in the name of Australian Mobile Mining Equipment Systems and Accessories Pty. Limited (“AMMESA”). Two other applications - 2013100396 (which is now a certified innovation patent) and 2014253502 – were also filed as divisional applications of application 2010306065, and are thus siblings of the present application. To complete the picture, I note that the present application has itself spun-off a divisional innovation application – 2015100682 – but the resultant granted innovation patent has now ceased.
2.The progenitor of this family of patent applications - application 2010306065 - started life as an international application PCT/AU2010/001337, and entered the national phase on 4 November 2011. PCT/AU2010/001337 claims priority from Australian provisional application 2009904983 filed on 14 October 2009. Present application 2013202231 was made open to public inspection on 2 May 2013 and was advertised accepted on 7 May 2015.
3.Two notices of opposition to the granting of a patent on application 2013202231 were filed on 7 August 2015. The two opponents were the opponent in the present opposition, NSL Engineering Pte Ltd (“NSL”), plus Qube Bulk Pty Ltd (“Qube”). The opposition processes proceeded uneventfully, from the filing of statements of grounds and particulars on 9 November 2015, and through the evidentiary stages up to the completion of evidence in answer on 6 May 2016 (NSL) and 12 May 2016 (Qube). However, on 8 July 2016 Qube withdrew its opposition. The NSL opposition, on the other hand, persisted, with NSL duly filing its evidence in reply on 12 July 2016.
4.On 2 August 2016 NSL requested a direction by the Commissioner under regulation 5.23 that all documents filed by Qube in its opposition “form part of this opposition proceeding.” This was objected to by AMMESA, and after several rounds of submissions by AMMESA and NSL a delegate of the Commissioner ultimately directed that just one particular declaration from Qube’s evidence in support – referred to as “the Christy declaration” - be considered in the present opposition. This declaratory evidence concerns an instance of alleged prior use. As a quid pro quo the delegate also admitted for consideration in the present opposition certain evidence from the evidence in answer from the Qube opposition, namely, a declaration by a declarant Mr Hunter for AMMESA, responding to the Christy declaration. Corresponding amendments were allowed to the original statement of grounds and particulars for the NSL opposition.
5.As further background I note that there has already been court action involving the present parties with respect to innovation patent 2013100396 (NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited [2016] FCA 614). The applicants in that action (NSL) had received correspondence from the respondents (AMMESA) said to have amounted to threats of infringement. NSL sought a declaration under section 128(1)(a) of the Patents Act 1990 (“the Act”) that the threats were unjustifiable, and sought an injunction and damages under paragraphs (b) and (c) of that subsection, respectively. As both defence and cross-claim AMMESA alleged that certain equipment supplied by NSL infringed its certified innovation patent 2013100396. The Court found that no infringement had occurred, upon which more will be said presently.
6.The opposition was heard on 22 March 2017 in Canberra. The applicant AMMESA was represented by Mr Ian Horak of counsel, and the opponent NSL was represented by Mr Craig Smith of counsel.
The specification
7.The specification commences by outlining the background to the invention, stating that it relates to the handling of bulk materials for shipping purposes. More particularly, it involves a system of transferring such materials from a cargo container to a designated area by tipping the cargo container, and is said to involve an improved system for handling shipping containers where the side access to a container is limited, such as by the presence of other containers. The invention has particular application to gantry cantilevered cranes which engage with a container and then lift the container, horizontally transport it to a desired location, and once there rotate it in order to discharge its contents. Reference is made in the specification to a prior art US Patent No. 4,496,275. The specification goes on to refer to a difficulty with that prior art, which is that when the containers are packed together tightly in a horizontal plane, there is insufficient room between containers to accommodate the tipping apparatus (called a “tipping adapter” in the specification), which must engage the container at its sides. However, apart from this one reference to that difficulty with the prior art, there is no implication in the specification that the present invention is about seeking to alleviate that “difficulty”, but instead the thrust of the specification is that it is addressed to the broader problem of being simply to provide a more effectively-supporting container support arm than that of the prior art US 4,496,275.
8.Following this is a heading “Summary of the Invention,” and then under this heading is what is clearly intended to be a consistory statement. I observe, however, that this consistory statement is not quite coterminous with claim 1 (the broadest of the claims), insofar as it does not include an integer of there being a twist-lock system included in the container support arms as is present in claim 1. The remainder of the description is in conformity with the consistory statement, and treats the twist-lock locking means as being an optional feature of the invention.
9.In preferred embodiment the apparatus of the invention in side view looks as follows:
12: container
16: crane
22: support member
24: sub-frame
26: motor
32: drive shaft
34: container support arm
38: twist-lock system
10.Claim 1 reads:
“1. Apparatus for engaging and handling a cargo container, said apparatus having a frame assembly including:
(a)a longitudinal support member;
(b)two spaced apart sub-frames depending from the longitudinal support member;
each sub-frame having a container support arm pivotally mounted by means of a rotating assembly on the inner face of the sub-frame, said rotating assembly connecting the sub-frame to its respective container support arm; and
(c)a drive means to rotationally drive the rotating assembly connecting the sub-frame to its container support arm;
wherein the container support arms have a substantially planar region on the inner surface of each container support arm, the inner surface of each container arm being the surface which faces toward a cargo container when held partially or wholly in the space between the two sub-frames of the apparatus;
wherein each container support arm includes one or more twist-lock system, being an engaging member for cooperation with a cargo container;
the cargo container being rotatable by the apparatus to discharge its contents.”
11.Present claim 1 differs from the corresponding claim in the innovation patent 2013100396 which was in issue in NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited (supra), despite being identical at filing. Each set of claims was amended in the course of examination. Present claim 1 deviates from the certified claim 1 of innovation patent 2013100396 in the following respects:
·Present claim 1 no longer explicitly states that the “substantially planar regions” are “support surfaces” (emphasis added) which “will abut and support the end walls of a cargo container.”
·Present claim 1 also lacks the feature of “wherein each container support arm includes one or more movable component [sic] having an engaging member for cooperation with a cargo container.”
12.Thus it is fairly apparent that having won the day on the question of whether they have infringed innovation patent number 2013100396, NSL are now intent on pre-empting the threat posed by the accepted form of the present application by opposing the grant of a patent on it.
13.The remaining nineteen claims of the specification are as set out below:
“2. Apparatus according to Claim 1, wherein the container support arms are rotatable through 360°.
3. Apparatus according to Claim 1 or Claim 2, wherein each container support arm includes one or more movable component [sic] having a twist-lock system, being an engaging member for cooperation with a cargo container; the movable components of the container support arms being movable such that:
a cargo container engaged by the engaging members is movable between at least two positions with respect to the sub-frames,
in the first position, the container being located beyond the space between the two sub-frames and, in the second position, the container being located partially or wholly in the space between the two sub-frames, and
the cargo container being rotatable by the apparatus to discharge its contents.4. Apparatus according to Claim 3, wherein the movable components of the container support arms include one or more extendible member on each container support arm which enable the engaging member of that container support arm to be extended beyond the perimeter of that container support arm.
5. Apparatus according to any one of Claims 1 to 4, including locking means capable of locking at least one of the container support arms in a preferred position.
6. Apparatus according to any one of Claims 1 to 4, including locking means capable of locking each of the container support arms in a preferred position.
7. Apparatus according to any one of Claims 1 to 6, including a mechanical or electrical stop to prevent rotation of at least one of the container support arms beyond a pre-determined position.
8. Apparatus according to any one of Claims 1 to 6, including mechanical or electrical stops to prevent rotation of each of the container support arms beyond a pre-determined position.
9. Apparatus according to any one of Claims 1 to 8, wherein at least one of the sub-frames includes a motor and gears, being the drive means for rotationally driving the rotating assembly connecting the sub-frame to its respective container support arm.
10. Apparatus according to any one of Claims 1 to 8, wherein each of the sub-frames includes a motor and gears, being the drive means for rotationally driving the rotating assembly connecting the sub-frame to its respective container support arm.
11. Apparatus according to any one of Claims 1 to 10, wherein the drive means drives a shaft which is linked by means of a boss to its respective container support arm.
12. Apparatus according to Claim 11, further including a shaft locking system.
13. Apparatus according to any one of Claims 1 to 12, further including one or more brake assembly to provide positive braking to either side of the container being handled.
14. Apparatus according to any one of Claims 1 to 13, further including one or more devices to keep track of the rotation of the container support arms and/or the container that is being handled.
15. Apparatus according to Claim 14, wherein the devices are selected from proximity sensors and encoders.
16. Apparatus according to Claim 14 or Claim 15, wherein the devices include an encoder for keeping track of and synchronising the rotation of the container support arms at either end of the container being handled.
17. Apparatus according to any one of Claims 1 to 16, said apparatus further including a hoist for supporting and for raising and lowering the frame assembly.
18. Apparatus according to Claim 17, wherein said hoist is a crane.
19. Apparatus according to any one of Claims 1 to 18, said apparatus being mounted on a forklift or reach stacker.
20. Apparatus for engaging and handling a cargo container, substantially as described herein with respect to any one or more of the accompanying drawings.”
Grounds of opposition
14.The grounds of opposition relied upon at the hearing by the opponent are ones coming under subsections 59(b) and 59(c) of the Patents Act 1990, in particular, firstly, as regards 59(b), that the invention as claimed is not a patentable invention as it does not comply with subsection 18(1)(b) (that is, the claimed invention is not novel and does not involve an inventive step) or subsection 18(1)(c) (that is, the claimed invention is not useful), and, secondly, as regards 59(c), that the specification filed in respect of the complete application does not comply with subsection 40(3) (that is, the claims are not fairly based on the matter described in the specification).
15.The grounds of novelty and inventive step were founded on four patent documents plus one instance of prior use. The four patent documents in question were (employing the designations D1-D4 used in the statement of grounds and particulars):
·D1 JP 07-061760 A in the names of Endo Kogyo K.K. and Sumiyoshi Heavy Industries Co., Ltd. (Publication date: 7 March 1995);
·D2 EP 1 319 628 A1 in the name of Huffermann Fahrzeugtechnik GmbH (Publication date: 18 June 2003);
·D3 US 4,496,275 A in the name of Resource Ventures, Inc. (Publication date: 29 January 1985) (referenced in the specification of the opposed application);
·D4 WO 1985000347 A1 in the name of Orange County Steel Salvage (Publication date : 31 January 1985)
16.The instance of prior use was contained in a series of photographs of a tippler manufactured by South African company Arlona Engineering (Pty) Ltd in 2003 for Bluff Mechanical Appliance (“BMA”) and designated D5 in the statement of grounds and particulars.
Evidence in support
17.The evidence in support consists of two statutory declarations, as follows:
·A declaration by Cameron Hay. Mr Hay is a qualified engineer who has the position of Chief Sales Officer with a subsidiary organisation of NSL, with NSL in turn appearing to be part of a larger multinational organisation. As requested by NSL, he gives evidence on the “state of knowledge” in the field of the invention and what he would have done if he were “asked to design an apparatus for engaging and handling containers in circumstances where side access is limited”. He does not directly address the question on the state of knowledge, but instead recounts some events in 2008-9 which he says “best represent” the state of knowledge at that time. According to Mr Hay, in late 2008 he was approached by Flinders Ports and DP World to design and supply a container tippler for the export of iron ore from the container port. He states that as a preliminary step he “performed a survey” and in his evidence he itemizes the pieces of prior art which his survey turned up. Those pieces of prior art were: D3 and D4, plus some items of non-patent literature which included details of D5. He provides no further information on the survey apart from that outcome. He also outlines the steps he would have taken to design and build a revolving spreader in early 2009, the first being to “review prior art and designs.” None of the steps expressly involve patents. He then proceeds to analyse the disclosures of claims 1 to 3 in suit against the items of prior art identified at [15] and [16], above – plus some others which were in the statement of grounds and particulars but were not relied upon at the hearing.
·A declaration by Virginia Benaic-Brooks, a principal of the law firm representing the opponent NSL. The purpose of this declaration is to put in evidence copies of some documents from the file on innovation patent 2015100682 which relate to the examination of that innovation patent, as well as a copy of a Section 27 notice which had been filed on 5 August 2015 in respect to the present application. These documents were said to be an adjunct to the Hay declaration referred to in the previous dot-point.
Evidence in answer
18.The evidence in answer also consists of two statutory declarations. These are:
·A declaration by William Hunter. Mr Hunter is a qualified engineer who is said to “have had a broad range of mechanical design experience across a wide variety of market sectors”. Those market sectors extend to heavy industries, but not, it would appear, to shipping containers or container tipplers. This declaration disputes key assertions made by Mr Hay in relation to the prior art addressed by Mr Hay in his evidence in support.
·A declaration by Murray Bridle, the Managing Director of the applicant company AMMESA and the inventor of the invention in suit. Mr Bridle describes himself as a “specialised tradesperson” whose work included involvement with container handling equipment. He states that AMMESA took up the business of the manufacture and sale of bulk container handling systems in 2010, and this has been very commercially successful. It is his evidence that he had not seen the items of prior art referred to in Mr Hay’s declaration before the priority date of the present claims. He also declares that he did not consult patent literature when developing the present invention, and further declares that he does not “believe a person designing these type [sic] of containers would normally consult patent literature.”
Evidence in reply
19.The evidence in reply consists of a second declaration by Mr Hay which is confined to contesting various points of detail in Mr Hunter’s evidence in answer.
Regulation 5.23 evidence
20.This evidence (see [4], above) is a statutory declaration by Steve Christy, who is the Managing Director, and majority shareholder, of Arlona Engineering (Pty) Ltd (referred to at [16], above). Arlona Engineering developed and manufactured a tippler device known as the “BMA Tippler”, c. 2003. In this declaration Mr Christy gives details (including photographic evidence) of the device and its history.
Response to regulation 5.23 evidence
21.This evidence (see [4], above) is a statutory declaration by Mr Hunter in the evidence for the (now withdrawn) Qube opposition. It nominates a number of detail differences between the BMA Tippler which are said to result in the BMA Tippler lying outside the scope of the claims in suit.
22.The evidence will be addressed in greater detail, where appropriate, later in this decision.
Hearing submissions
23.In their written submissions the opponent NSL indicated that it opposed the grant of a patent upon the present application on the grounds of lack of fair basis (twofold aspects), lack of utility, lack of novelty and lack of an inventive step.
24.Mr Smith generally agreed that the “practically certain” standard of proof applied to the present matter, but submitted that this “higher standard” is only to be applied to a finding of fact if that finding itself comprises the test for determination from the Patents Act 1990, and does not apply to findings in relation to the underlying primary facts, including as to the state of the common general knowledge. In support of this he cited Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 and Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52. I took AMMESA to hold similar views.
25.It was submitted that the only disclosure “as the invention” is of a tippler apparatus that has movable components that move relative to the sub-frame (such that the container can be picked up from among other closely-located containers). The failure to reflect this by limiting the claim appropriately was alleged by the opponent to not only give rise to a lack of fair basis, but also to cause the claimed invention to be lacking utility.
26.A second lack of fair basis was said to arise in regard to there being “no disclosure of a relevant apparatus with ‘substantially planar regions’ on the inner surfaces of the container support arms without the further limitation that those surfaces act as support surfaces.”
27.The submissions then discussed the meaning of the term “frame” and the meaning of the phrase “substantially planar region on the inner surface of each container support arm” as being integers of the claims which Mr Hunter had asserted were not disclosed by the prior art. Following this, the submissions compared each of citations D2, D3, D4, D1 and the BMA Tippler D5 (in that order - at the hearing Mr Smith said that this ordering of the citations represented the opponent’s informal ranking of them according to order of importance) in respect to the novelty of claim 1 and various appended claims.
28.In relation to inventive step it was submitted that all claims apart from claims 3 and 4 are lacking an inventive step. This was on the basis that the use of a rotating container-handling apparatus formed part of the common general knowledge, and all of the other features of the claims set out standard engineering design features. According to the opponent, “no assertion is made by AMMESA that any feature has any special significance such that its use was other than obvious.” The submissions went on to say that even putting such common general knowledge to one side, the concept of having a rotating container-handling apparatus is obvious, as are the minimum necessary features – an external frame that is supported by a crane, and an internal frame that holds the container and rotates relative to the external frame.
29.It was also submitted that each of D1 to D4 would have satisfied the requirements of subsection 7(3) – that is, they would have been ascertained, understood and regarded as relevant, and each of the claims is obvious over the subject matter of each of those disclosures considered separately.
30.The applicant’s written submissions commenced by acknowledging that the opponent must prove its opposition to beyond reasonable doubt, but observed that the opponent’s evidence on inventive step does not “grapple with this factual question.”
31.The submissions then drew distinctions between this matter and the court proceedings involving the present parties in relation to innovation patent 2013100396.
32.Comparisons were made between the applicant’s expert, who is an independent expert with extensive mechanical engineering design experience, and the opponent’s expert Mr Hay who, because he is an employee of the opponent, has a partisan interest in the present matter and holds the role of Chief Sales Officer.
33.Addressing the invention, the submissions noted the evidence of Mr Hunter in relation to the claimed apparatus that the defined configuration is advantageous in that it reduces the weight of the device by dispensing with a frame and providing for independently-operable container support arms. Mr Hunter also points to advantages from the 360° continuous rotation capability.
34.In regard to fair basis, the written submissions fell back on the consistory statement and on certain disclosures (albeit indications of preferment) in the specification to rebut the opponent’s contentions on lack of fair basis.
35.On utility, the line taken was that there was no promise that had been made by the present application, and hence it could not be said that any promise remained unfulfilled. At the hearing Mr Horak also noted Mr Bridle’s assertion of the commercial success of the present invention as being relevant to the consideration of its utility.
36.Regarding the word “frame”, it was contended that Mr Hunter’s interpretation of this term as “a frame is a plurality of connected elements, which are not collinear with respect to one another” is correct, and was not satisfied by “simply a structural component.”
37.With the phrase “substantially planar region,” it was said that this was not a construction issue, but rather whether the prior art properly discloses such a region which provides direct or indirect support, and Mr Hunter’s evidence was that none of the citations disclosed such a feature.
38.In the present application the “container support arm” is connected to the sub-frame via a drive means and has a twist-lock device. According to Mr Hunter, in citations D1 to D4 the corresponding element does not hold the twist-lock device and is not directly attached to the container during lifting. Generally speaking, the arm is, in turn, connected to a separate frame which, in turn, is equally positioned between the two arms. In the BMA Tippler the container support arm is dispensed with altogether, and employs a direct rotational connection between the separate support frame for the container and the sub-frame without any intermediate arm. In all prior art, it is the support frame which engages the container and includes the twist-locking device.
39.On the issue of novelty, the applicant’s written submissions on D1 vis à vis present claim 1 were that D1 does not disclose sub-frames, the rotating assembly does not connect a sub-frame to a container support arm, and it does not disclose the use of twist-locks. On D2 it was asserted that there was no disclosure of sub-frames depending from a longitudinal support member, nor was there a substantially planar region on the container support arms, and nor is there a twist-lock system included with each container support arm. In the case of D3 there is no substantially planar region on the inner surface of each container support arm, and twist locks are not located on the container support arm. For D4, the sub-frames depend from a lateral support member rather than a longitudinal support member, container support arms are not directly connected to a sub-frame via a rotating assembly, there is no substantially planar support region and there is no disclosure of the use of twist-locks. Finally, with the BMA Tippler there is only a single arm connected to both sub-frames by means of a rotating assembly, rather than each sub-frame having a container support arm, and the tippler does not include substantially planar surfaces which in any way would support the container, and that includes the guide pieces.
40.On inventive step, in its written submissions the applicant did not accept any of the opponent’s assertions as to the state of the common general knowledge in the art at the priority date of the claims in suit (as outlined in [28], above). In particular, according to the applicant it is not clear which particular tipping apparatus the opponent is suggesting is common general knowledge. In addition, it was claimed the opponent has not provided adequate evidence to establish what the common general knowledge in the art is, and consequently none of the documents - patent literature and non-patent literature - referred to by Mr Hay in his first statutory declaration has been established to be common general knowledge, or even known to the extent that they would have been ascertained, understood or regarded as relevant. The same was said to hold with the BMA Tippler.
41.The written submissions on inventive step went on to point out that the only case advanced in the opponent’s evidence is that of obviousness in light of the common general knowledge. However, Mr Hay is said to have taken the wrong approach in advancing this case by mosaicking documents, and his assertion that he determined that there was simply no possibility that anyone could obtain a valid patent should not be given any weight because he was not qualified to express such a view and because his view was likely infected by hindsight. But in any case, Mr Hay does not give any evidence that having received an order from a company called “DP World” to design and fabricate a revolving spreader, he was able to end up making modifications or changes to the prior art, and in particular none which led to the present invention.
42.At the hearing, in addition to reiterating the written submissions, Mr Smith discussed in detail Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (2011) 119 IPR 194 as authority for the present claims lacking fair basis.
43.Mr Smith also questioned the weight that could be accorded Mr Hunter’s evidence by listing numerous, somewhat technically disparate patent cases for which he had provided expert evidence, referring to him as being “widely travelled.”
44.Mr Smith drew attention to the fact that no explanation of the purpose(s) of the planar surfaces on the container support arms had been provided: it is, he alleged, just a feature which has been brought in to distinguish the claimed invention from the prior art. It is not limited by any function. He cited the “5¼ inch plate paradox” referred to by Jacob LJ in Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 (17 February 2010) at [36].
45.Mr Horak commenced his submissions at the hearing by quoting the evidence from Mr Hunter that the difference between the present invention and the prior art was to dispense with the usual frame or cradle bearing the load of the container and simply use container support arms to bear the load of the container. This was said to create a considerable weight saving. Further, the planar surfaces defined by the claim were said by Mr Hunter to allow the container support arms to be configured without using a frame or other form of support to support the container, and thus do away with other forms of support.
46.Mr Horak initially focussed on document D3, and, in particular, the marked up Figure 1 from D3 shown at [95], below, that was contained in the applicant’s written submissions. Mr Horak’s principal defence against D3 as an anticipation was: if items (60) and (62) (highlighted in purple) and items (68) and (70), respectively, were considered to be the two support arms, then these did not include the twist-locks (58), contrary to the claim. Alternatively, if carrier frame (12) (highlighted in green) was considered to be part of the support arm(s), then this meant that there was just a single support arm (61), (62), (68), (70) and (12), also contrary to the claim.
47.On fair basis, Mr Horak noted that Mr Hunter in his first declaration seems to accept that the claimed invention is what has been described, implying that a fair basis exists.
48.So far as the 360° rotation feature of claim 2 is concerned, Mr Horak disagreed with the approach that Mr Smith had taken on this, which was to view this feature as being an “inevitable creation.”
49.In relation to common general knowledge, Mr Horak pointed out “the distinction between publication and assimilation of knowledge in the art,” and alleged that the opponent had not observed that distinction. Mr Hay’s evidence fell short of asserting assimilation.
50.Mr Hay gave evidence in his first declaration of seven items of prior art that he had been able to find in response to a request to design and supply a container tippler. Mr Hay’s evidence was that this had played out before the priority date of the present claims, but Mr Horak pointed to facts in evidence suggesting that this had occurred after the priority date. Mr Horak also noted the evidence of Mr Bridle that he had never come across these seven documents, as well as the evidence of Mr Bridle that he never searched patent literature. Moreover, Mr Hunter has said in his evidence that, having viewed the prior art in the evidence, there is nothing in those documents which would lead him to create an apparatus in accordance with the present invention.
51.Mr Horak submitted that the reference in the present specification to D3 did not establish that this document is common general knowledge.
52.I will traverse the parties’ submissions in greater detail, where necessary to do so, later in my decision.
Applicable law
53.On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations, including the standard of proof required for an opposition to succeed. However, as the request for examination with respect to the present application was filed on 31 March 2013, this means that the Act and Regulations as in force before the amended provisions of the Raising the Bar Act came into operation are applicable to the present opposition proceedings.
Evidentiary principles
54. Because the Act and Regulations as in force before the amended provisions of the Raising the Bar Act came into operation are applicable to the present opposition proceedings, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). A tribunal is entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 Emmett J found that in opposition proceedings the Court (and ergo the Commissioner of Patents as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved, "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
55. This was in essence the approach argued by Mr Smith on behalf of the opponent, citing Aspirating IP Ltd v Vision Systems Ltd (supra) at [33], in which Besanko J summarised the effect of the authorities as follows:
“It is well established that an opposition will be upheld only where it is practically certain that the patent, if granted, would be invalid (Commissioner of Patents v Microcell Ltd [1959] HCA 71; (1958) 102 CLR 232 at 244-245; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; (1999) 92 FCR 106 at 112 [17]). Other formulations of the relevant test have been used, but they are to similar effect: Austal Ships v Stena RederiAktiebolag [2005] FCA 805; (2005) 66 IPR 420 (‘Austal Ships’) at 422 [6] per Bennett J and Commissioner of Patents v Sherman [2008] FCAFC 182 at [18] ‘clearly satisfied’; F Hoffman-La Roche AG v New Zealand Biolabs Inc (‘F Hoffman-La Roche AG’) [2000] FCA 283; (2000) 99 FCR 56 at 70 [67] per Emmett J “appear clear to the Court”; Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v Commissioner of Patents [1971] HCA 7; (1971) 124 CLR 654 at 664 per Gibbs J (as he then was) ‘unless it clearly appears.’”
56.Mr Smith also cited the following statement by Bennett J in Austal Ships v Stena Rederi Aktiebolag (supra) [2005] FCA 805 [35] regarding expert evidence:
“I can accept that a lower standard may apply to proof of evidence such as whether a document has been published or, indeed, whether a prior art vessel was well-known. I do not accept that it properly applies to the factual question that itself is the test for obviousness or lack of inventive step. Where the factual question is itself the legal test, as set out in s 7(3) of the Act, it seems to me that it should be determined at the higher standard. That means that where there are two opposing expert views that are conclusive on obviousness, both presented bona fide by witnesses of accepted expertise, unless one set of views can be rejected on proper grounds, the legal burden to establish a ground of opposition is not discharged; the court cannot be practically certain that obviousness or lack of inventive step is established.”
57.Finally, for completeness it is worth noting that the construction of documents is always ultimately the responsibility of the hearing officer, and moreover, in particular, novelty is basically a question of construction. To quote from Blanco White, Fifth Edition, 4-105:
"The question whether a claim has novelty over what is disclosed in an earlier document is primarily one of construction of the two documents, once the court has been put by evidence of the state of the art into the position of a skilled reader of them. For this purpose the earlier document must be construed in the usual manner, but as of its own date; that is to say, its meaning must be the meaning it bore at the date when it was written. Just as in the case of infringement, however, the further question, whether or not what the prior document ought to be regarded as disclosing is or is not substantially within the claim, is a question of fact."
Decision
Person skilled in the art (PSA)
58.The PSA for any given specification is the addressee of the specification and is the hypothetical non-inventive skilled workman in the field in Australia before the priority date (Minnesota Mining and Manufacturing Co and 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd [1980] 144 CLR 253, Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610, Populinv HB Nominees Pty Ltd (1982) 41 ALR 471 at 476, Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 254, 260, Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 397). The PSA may be a team of people from different disciplines - see, for example, Root Quality Pty Ltd v Root Control Technologies Pty Ltd 49 IPR 225, American Cyanamid v Ethicon Ltd (1979) RPC 215 and Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd (1961) ALJR 212. In the more recent case of Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] 212 CLR 411; 56 IPR 129 at [148] - [154], the PSA in the context of pharmaceutical formulations was discussed as follows:
“In the area of pharmaceutical development, the hypothesised formulator will ordinarily have postgraduate qualifications in science, just as in other fields it has been acknowledged that skilled formulators will be ‘trained engineers and scientists, who are well versed in the periodical literature of their subjects.’”
59. As well, in VIP Plastic v BMW Plastics [2011] FCA 660 at [23] it was stated that the PSA should be a person “with practical knowledge and experience” in the subject matter of the invention.
60. In the present matter, Mr Smith postulated that:
“The skilled addressee is a person with a mechanical engineering degree, and knowledge of, and experience in the design of container-handling equipment.”
61. The applicant appeared to accept this formulation of the person skilled in the art, and I, likewise, hold to this view. However, both parties’ experts were the subject of criticism from the other side in regard to the reliability of their evidence. Mr Horak expressed the opinion that the applicant’s declarant Mr Hunter “is clearly someone to whom the Opposed Application would be directed to and would be suitably qualified.” He drew support for that assertion from the fact that in NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited (supra) Mr Hunter was, as Mr Horak put it, “accepted by the Opponent … as being appropriately qualified.” This does not quite accurately reflect what that decision says, which is that “[t]he relevance of their expertise to the matters in contest was accepted by both sides,” but in any case it was clear that in the current proceedings the opponent had strong reservations about the suitability of Mr Hunter’s background. I think those reservations have at least some foundation in light of an apparent absence of any experience in the shipping container industry.
62.Mr Horak also drew attention to Mr Hay’s non-independence by virtue of being an employee of the opponent company, and also his position as Chief Sales Officer for the opponent company, the suggestion being, I think, that this was not all that a technical role. I will take those factors into account, but observe that Mr Hay’s role, it would seem to me, ought to make him reasonably well-placed to have some insight into the background knowledge of the person skilled in the art.
Construction issues
63.In Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, Sheppard J reviewed the authorities and set out ten principles of construction:
1.The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
2.It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
3.Nevertheless, in approaching the task of construction, one must read the specification as a whole.
4.In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
5.If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
6.A patent specification should be given a purposive construction rather than a purely literal one.
7.In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
8.The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
9.Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
10.If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.
64.There are a number of terms and expressions in the claims whose scope and meaning were contested by the parties, and which require a resolution before arrival at any concluded view on the grounds of opposition raised in this matter is possible.
65.In their order of appearance in the claims, the first of these terms is “frame” and “sub-frame“, whose initial occurrence is in claim 1. In his evidence Mr Hunter interprets “frame” as meaning
“a plurality of connected elements, which are not collinear with respect to each other.”
Mr Hay, on the other hand, refers to a frame as simply being “a structural component” (emphasis added). The word “frame” is quite broad in scope, and has a wide range of meanings (the Macquarie Dictionary 7th Edition lists 32 meanings in all). Mr Hay’s interpretation bears a passing resemblance to one of those Macquarie Dictionary meanings, which is:
“anything composed of parts fitted and joined together; a structure.”
However, more relevant to the present issue is, in my view, another of the definitions:
“a structure for admitting or enclosing something.”
Thus, in the drawing of the present invention shown at paragraph [9], above, the sub-
frame 24 is shown as enclosing, inter alia, the motor 26 and the drive-shaft 32. Apropos the noun “structure” appearing in the above definitions, it, in turn, is relevantly defined as:“… organisation of parts, elements or constituents.”
66.Although, as I have said, Mr Hay’s interpretation of “frame” bears a passing resemblance to one of the Macquarie Dictionary meanings, Mr Hay’s interpretation diverges from the Macquarie Dictionary definition in one important respect: Mr Hay appears to interpret a “frame” as including just a single structural component, rather than being composed of multiple components joined together as the dictionary definition requires. (I consider “components” and “parts” to be interchangeable.) In the upshot, Mr Hunter’s interpretation of “frame” appears closer to the mark, although his use of the expression “collinear” in his definition seems somewhat obscure. What Mr Hunter appears to be trying to do is to get across the concept that a frame is inherently two- or three-dimensional, as reflected by the notion of “enclosing” which crops up several times in the Macquarie Dictionary definitions. Since I would regard such elongate structural components as a pole, a column or a beam as being essentially one-dimensional in the present context, I do not consider them to come within the meaning of a “frame” or a “sub-frame.”
67.The next expression to attract controversy was “depending from,” which also appears in claim 1, as in: “two spaced apart sub-frames depending from the longitudinal support member.” The applicant took the view that the expression “depending from” meant that the two spaced-apart sub-frames had to depend directly from the longitudinal support member, that is, there could not be any intervening structural elements between the sub-frames and the longitudinal support member. To my mind this is an unduly constrictive interpretation of the expression in question that is not conveyed by the words themselves. Any structural element which bears the load of the sub-frames is entitled to be regarded as having the sub-frames depending from it.
68.Central to this opposition is the scope to be afforded to the feature of the “container support arms” defined by the claims. Having recourse again to the Macquarie Dictionary, it is apparent that the term “arm” is once again one whose scope is very broad and which has a plethora of possible meanings. It would appear that its most applicable meaning for the present context is: “any arm-like part, as of a lever or of the yard of a ship (the yardarm).” (Emphasis in the original.) The “arm” in “arm-like” I take to mean the human arm, which according to the dictionary is the primary meaning of “arm”. Just how like an arm something has to be to fall within the scope of the container support arm of the present claims is a vexed question, but I would say that, so far as configuration is concerned, not particularly so. This conclusion is based on the broad nature of the term itself, but also takes its cue from what the term “arm” embraces according to the preferred embodiment of the present specification, which shows “arm” 34 being thus:
69.This an end view to that side view of the drawing of the preferred embodiment of the present invention which is shown at [9], above, with the container support arm being numbered as “34” in each case. It is clear from consideration of the two drawings (the description is non-forthcoming in this regard) that the container support arm illustrated is an inverted triangular plate-like member, possibly hollow. The two upper vertices carry the two twist-lock systems which attach to either end of the container 12, and the lower vertex carries the rotating assembly. Clearly, arm 34 is only “arm-like” in a very broad sense. I note also that according to the description arm 34 can comprise a multiplicity of components, which are referred to as “sub-arms” in the specification.
70.Taking into account these considerations, I am led to conclude that the only limitation placed upon the container support arm as claimed by claim 1 is that it be a structural element which provides a mechanical interconnection between the rotating assembly and a container 12 via twist-lock systems located in the arm in such a way that a rotational force can be transmitted from the rotating assembly to the container.
71.The final aspect of claim 1 which presents difficulties in its construction is the definition of there being “a substantially planar region on the inner surface of each container support arm”. I note that in claim 1 as filed these planar regions were explicitly defined as being “support surfaces,” but explicit definition of that function is not in the accepted version of claim 1. Just why that has been done is not obvious, but it may have something to do with the problems that that terminology ran into in the court action on innovation patent 2013100396. It might also have been unintentional. Whatever the case, in both his written and oral submissions Mr Horak seemed to proceed on the assumption that the support function provided by the planar regions is implicit from the reading of the specification as a whole. In this regard I note that the “substantially planar regions” feature is introduced into the description as an exemplification of “support surfaces,” in the following terms:
“With the container thus held between the sub-frames 24, the end walls of the containers receive at least some degree of support from a support surface 35 of each of the container support arms 34. These support surfaces 35 are, for example, substantially planar regions on the surface of each of the container support arms, which support surfaces will abut and support the end walls of the container when held in this raised position, with the container being located at least partially between the sub-frames 24, ready for rotating to discharge its contents. The support provided to the end walls of the container by the support surfaces 35 of the container support arms will normally mean that other forms of support (such as the supporting pistons of many prior art systems) will not be needed.”
Applying a purposive construction to the specification, I think it is apparent from this passage that where the expression “substantially planar region” is employed in this specification it is to be regarded as implying that the substantially planar region has a support capability as deployed in the present invention.
72.It is clear that this feature is not necessarily defining the whole of the inner surface as being a planar region, but instead allows any region within the inner surface to be planar and still be within the scope of the claim, so long as it provides a support function. The upper limit for the size of this region is thus the whole of the inner surface. However, settling upon anything like a definite value for the lower limit for the size of this region according to function alone is more problematic since the specification does not provide any assistance in this regard. It would appear that the most prescriptive it is possible to be in regard to that lower limit is, as surmised by Mr Smith, that a planar region of a container support arm would need to be discernibly capable of providing at least minimal support to a container in order to be regarded as coming within the ambit of claim 1.
Fair basis
73.The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [69] and [98] - [99] as being relevant to the consideration of fair basis is:
·whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
·whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge [1977] HCA 23; (1977) 180 CLR 236].
74.An essential feature of an invention cannot be used for the determination of fair basis. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (supra), the High Court stated:
“The comparison which s40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ ‘an over meticulous verbal analysis’. It is wrong to seek to isolate in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.”
75.It would appear that what has led the opponent to challenge the fair basis of the claims in suit results from the presence in the description of two passages which seem to be at odds with the overall direction of the specification. It is possible to speculate that these imperfections have been introduced in the course of the drafting of the present divisional application, but whether or not that is the case is not of any relevance to the outcome of this opposition.
76.The first of these passages is the final paragraph to the “Background of the Invention,” mentioned previously at [7], above. This paragraph discusses a purported problem with the prior art. This problem appears to be unrelated to the present invention. The problem in question is concerned with a tipping adapter for working with closely stacked containers and, as is subsequently revealed in the specification, is solved by use of movable components in the form of extendible members which form “sub-arms” of the container support arms 34. However, it is also worth noting that, despite its prominent location in the description, at no point does the specification (description and claims) suggest that that problem and its solution constitute the invention which is the subject of the present application, or that the subject matter of the solution is anything other than an optional feature of the invention.
77.The second passage relates to the “substantially planar region” feature of claim 1. Apart from the consistory clause, this feature is not mentioned until practically at the end of the specification, and then (as already commented upon at [71], above) only as being a preferred feature (actually, the specification does not even go that far, instead referring to the substantially planar region as being an “example”). This is obviously somewhat at odds with its treatment in the remainder of the specification as being a core feature of the invention, specifically in the consistory statement and in the claims. Notwithstanding, the opponent did not seem so much concerned with this as with the failure to include as a feature of the claims that the substantially planar region is a “support surface” (emphasis added). However, as I have already stated at [71], above, I consider this requirement to be imported into the claims by the presence of the “substantial planar region” feature in claim 1.
78.I do not understand the opponent as suggesting that there had not been a disclosure of the features which were included in the claims and that there was thus a lack of fair basis arising from that, but rather that there were limitations omitted from the claims which caused them to travel beyond the subject matter described in the specification. This is based on the two passages referred to above.
79.It is not unusual for a specification to disclose plural inventions. Indeed, in situations where divisional applications are involved (such as here) it is self-evidently the norm. In the present matter it is clear from the specification that the two passages discussed, when they are considered in isolation, should be regarded as being aberrant ones in respect to what they convey as to the nature of the invention that is the subject of this application. When the specification as a whole is considered, there is no real basis to construe the subject matter of these passages as being core to the invention, especially if one is endeavouring to be "willing and wishing" to understand the specification (Philpot v Hanbury (1885) 2 RPC 33).
80.Therefore, applying the test for fair basis as accepted in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd ( supra), I conclude that the claims do not travel beyond the subject matter of the invention described in the specification and there is a real and reasonably clear disclosure of the claimed invention in the specification, and thus the claims are fairly based.
Utility
81.The situation that has given rise to the allegation of lack of utility is that which is outlined in [75] et seq., above. The opponent sees the circumstances outlined at [75] et seq. as being the advantage or promise which is intended by the patent to be achieved. Mr Smith cited Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449; FCAFC 82 at [141] and Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd (2016) 117 IPR 210 at [120]-[121].
82.The applicant, on the other hand, not only disputed the opponent’s assertion that the “problem” addressed by the passage which is referred to in [76] constituted a promise, but questioned even whether there was any promise at all in the present specification. Mr Horak pointed out that the opponent has not led any evidence in support (or reply) to suggest that the person skilled in the art would consider whether there are any promises in the present specification or that those promises are unfulfilled. Mr Horak did tentatively surmise that the present invention allowed weight savings, based on the evidence of Mr Hunter, and that the apparatus could operate without other forms of support and could therefore be made more compact.
83.I am in agreement with the applicant so far as utility is concerned. There is no lack of utility with the present invention. The problem outlined in [76], above merely involves a preferred aspect of the present invention. So far as the main invention is concerned I see the promise of that invention as being to devise a more structurally efficacious, higher strength-to-weight container tippler device. I have no evidence before me which indicates that this promise is not achieved, and no other reason to doubt that this promise is achieved. I therefore find that the present invention is useful in compliance with sec 18(1)(c).
Novelty
84.The law on novelty is well-settled. The test for determining whether the invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement."
85.Infringement occurs when "each and every one of the essential features" of the claim has been disclosed by the alleged anticipation (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391). Furthermore, as stated in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486, in order to meet this requirement, the prior art must:
"contain clear and unmistakeable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the Applicant's invention will not suffice. The prior inventor must clearly be shown to have planted his flag at the precise destination before the patentee.”
86.For anticipation to occur, the disclosure in the prior art document must be sufficient to 'enable' the skilled person to produce the invention, with nothing remaining to be ascertained and no additional inventive input required. Recently, in Samsung Electronics Co Ltd v Apple Inc. (2011) 286 ALR 257, the Full Court of the Federal Court of Australia (at [127]) reiterated the fundamental principle stated in Hill v Evans 1A IPR 1 at 7:
“that the information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent”.
87.Among recent cases, Mr Smith cited Bennett J in Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848 at 93 in pointing out that the disclosure made in a prior art document is to be viewed through the eyes of the hypothetical skilled addressee: the relevant question is what is disclosed to the skilled reader. Bennett J stated:
“Such a disclosure may be explicit or, in certain circumstances, may amount to a sufficient disclosure of each integer to a skilled worker even though not explicit (H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; (2009) 177 FCR 151; Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513). This may occur where, for example, the prior art information is a publication which does not specify an integer but the skilled reader would understand that integer to be present in the subject matter described. The same applies to what is disclosed to the person of skill in the art by a prior product. If the prior art does not expressly specify each and every essential integer of the claimed invention, the evidence must clearly establish that, to the skilled reader, each and every essential integer is included in that prior art.”
88.Mr Horak, on the other hand, drew my attention to Ranbaxy Australia Pty Ltd v AstraZeneca AB [2013] FCA 368 at [170] in which Middleton J set limitations to the reliance on non-explicit features for anticipation in the following terms:
“The cases emphasise that for anticipation to be made out, a clear and precise disclosure of the subject matter of the claim is required. A prior publication will only anticipate if it discloses all of the essential integers of the claimed invention. It must contain “clear and unmistakable directions” to carry out the invention in order to render it not novel: see General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1971) 1A IPR 121 at 137-138. Thus, it has been said that “[a]nticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun”: Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485; [2008] FCA 1194 at 524 [91], approved in H Lundbeck [2009] FCAFC 70; (2009) 177 FCR 151 at 189 [170]. Further, it is not sufficient for a prior publication to merely “include” or “encompass” the claimed invention – a broad disclosure will not necessarily anticipate a later, more specific claim: see eg Eli Lilly [2013] FCA 214 at [272] to [293] and the authorities cited therein”.
89.I turn now to the prior art which is relied on in the present matter and will apply the principles set out above in relation to novelty, as well as the various findings on the construction of the present specification which I have made so far. As already noted at [15], above, there are five items of prior art – designated D1 to D5 – which are relied on by the opponent against the novelty of the claims in suit. I will consider each in turn.
90.D1: JP 07-061760. This device is entitled (in translation) “Container Reversing Device,” but that may be a slight mistranslation and should perhaps more correctly read: “Container Inverting Device.” It is a device for transporting waste soil away from a construction site after placing it in a container 14. In side- and end- elevation it is shown as follows:
91.The main defence raised by the applicant against this document concerns whether the structural elements 2 each constitute a “frame” (or “sub-frame” as it is referred to in present claim 1). This would be necessary in order for D1 to read onto the present claim. The applicant maintains that they do not fit the meaning of a frame. I disagree. When each structural element 2 is considered with its ancillary components 8 (“hoisting member”) and 42 (“mounting frame material”), the resultant structure would appear to constitute a two-dimensional structure and thus fall within the definition of a “frame” (see [65] and [66], above), as best illustrated by Figure 6, above.
92.However, I do agree with the applicant (or, more precisely, the evidence of Mr Hunter) that there is no view of the structural element 42 that shows conclusively that it has a substantially planar region as defined in present claim 1. I also agree with Mr Hunter’s opinion that the structural element 42 cannot be said to face towards a cargo container being held partially or wholly within the apparatus, something which I adverted to at the hearing. Since these differences over D1 are both essential features of the claimed invention, I find that the claims under consideration are novel over D1.
93.D2: EP 1 319 628 A1. This device 40 (see Figure 1, below) is for lifting and relocating a container 1, and, once it is at its point of relocation, then tilting it to empty it of its contents. It is particularly intended for disposing of waste materials. Its basic configuration is a carrier unit 45 for lifting and relocating container 1 and a tilting unit 51 for rotating the container to empty it. The lifting function is carried out by extending and contracting structural element 49, which is telescopically located within “support device” 50.
94.It is the opponent’s contention that structural elements 49 and 50 constitute a “sub-frame” within the meaning of that integer in claim 1, and that struts 52 equate to the “support arms” defined in claim 1. As should be apparent from my comments in [66], above, regarding the scope and meaning of the terminology “frame” in the context of the present specification, I do not think that arrangement 49, 50, being essentially one-dimensional, comes within the meaning of “sub-frame”. Moreover this situation is not altered, as was suggested by Mr Smith it might be, by the triangular-shaped piece attached to the top of arrangement 49, 50, since that triangular-shaped piece does not appear to alter the substantially one-dimensional nature of that overall structure. Struts 52 together, on the other hand, I would consider to be a frame, but then, as was pointed out by Mr Horak at the hearing, the prior art arrangement would lack something which is identifiably a “support arm.” While the sub-frame feature would appear to constitute the only distinction between D2 and the claim 1 in suit, it would appear to nonetheless result in D2 falling short of being clear and unmistakeable directions to the claimed invention, thus rendering the claims novel over D2.
95.D3: US 4,496,275. This patent was referenced as prior art in the present specification. Figure 1 of the prior art specification (including highlighting provided by the applicant in its written submissions) is thus:
96.The applicant relies on two features of claim 1 to differentiate its invention over D3. These are:
·The container support arms (shown purple) are said to not have the requisite planar region on the inner surface of each container support arm. The two sets of gusset and plate members 60, 62, 64 and 68, 70, 72 are conceded to collectively have a small planar area facing the end wall of the container, but it was asserted this area would not provide any functional benefit of supporting the end walls of the container, and the prior art does not refer to any particular advantages of providing support.
·The twist-lock members 58 in D3 are included on cross-members 54 and 56. These cross-members are attached to the pivotal frame member longitudinal elements 46 and 48, and not the two container support arms (gusset members 60, 62 and 68, 70, respectively). Hence it was said that the cross-members are not part of the container support arm, and that as a consequence the twist-lock members could not be regarded as being included in the container support arms. Alternatively, if the container support arm was taken to be the whole structure as shown in both purple and green in Figure 1, above, plus gusset and plate members 68, 70, 72, there would only be one container support arm and not two (one per sub-frame) and the requirements of the claim would not be fulfilled in any event.
97.On the first of these features, the opponent’s countering argument against the planar surfaces of the two sets of gusset and plate members 60, 62, 64 and 68, 70, 72 of D3 not providing any functional benefit of supporting the end walls of the container seems to rely on the absence of any explicit reference to a support surface in present claim 1. Therefore, the argument goes, it is irrelevant whether the two sets of gusset and plate members 60, 62, 64 and 68, 70, 72 provide any support function or not. All that is required is substantially planar surfaces. My approach on this is somewhat different, but ends at the same conclusion. As observed at [71], above, when regard is had to the specification in its entirety there would seem no doubt that there is an implicit requirement in claim 1 that the substantially planar region on the inner surface of each container support arm which is defined in claim 1 be capable of serving a support function. However, it is obviously the case that the two sets of gusset and plate members 60, 62, 64 and 68, 70, 72 do serve a supporting function: they support the container 41 (not shown in Figure 1), and every intermediate structural element between the two sets of gusset and plate members 60, 62, 64 and 68, 70, 72 and a container. In operation they also “enclose” the container 41 at its ends, and in particular it is the inwardly-facing substantially planar regions which enable this. In so doing the substantially planar regions provide a tacit form of “support” to the container which constitutes a support to the container in the broad sense in which I believe that term should be interpreted. Having reached this latter conclusion, it is unnecessary that I enter into the question of whether the substantial planar regions exhibited by the device of D3 contribute any support to the support arms by rendering them capable of bearing greater loads. Nonetheless I will venture the view that having regard to the physical form of the prior art arrangement, I consider it practically certain that they do.
98.With regard to the second of these features, as to whether in D3 the locating of the twist-lock members 58 on cross-members 54 and 56, rather than gussets 60, 62 and 68, 70 results in D3 falling outside the scope of claim 1, it follows from the broad scope which I have attributed to the expression “container support arm” at [70], above, that I consider that claim 1 is broad enough to encompass the arrangement of D3. In particular, in D3 the gussets 60, 62 and 68, 70 in combination with sides 46 and 48 of pivotal frame 12 provide a mechanical interconnection between the rotating assemblies 42, 76, 80 and 44, 92, 98, respectively, and a container 41 via twist-lock systems in such a way that a rotational force can be transmitted from the rotating assembly to the container.
99.In consequence of the above, in my view the device disclosed in D3 possesses every integer of the claim 1 in suit, and thus renders it not novel.
100.Turning now to the claims appended to claim 1 - claims 2 to 19 - the added subject matter of claim 2 (rotation of the container support arms through 360°) is, to my mind, clearly disclosed in D3, as the applicant appeared to accept.
101.With regard to claims 3 and 4 (the movable components of the container support arms feature), the opponent conceded that this integer was not disclosed by D3, and I concur.
102.With regard to claims 5 and 6 (locking means for the container support arms), the opponent equated “locking means” to “braking means” and to the use of limit switches to control the rotation of the container support arms. I have a contrary view. A lock, which is a device for securing a device in (in this case) an inoperative condition, is conceptually different to braking or controlling. I therefore conclude that claims 5 and 6 are novel in light of D3.
103.With regard to claims 7 and 8 (mechanical or electrical stopping means to prevent rotation of the container support arms), these are clearly anticipated by the following passage at column 2, lines 60 to 66 of D3:
“The tipping adapter permits controlled tipping of the container and thereby renders practical the containerized transport of bulk materials. In the specific embodiment disclosed, there are limit switches provided for limiting the drive motor actuation to strokes of 180° and 360°; of course, strokes of different angular distance may be employed where desired.”
104.With regard to claims 9 and 10 (each of the sub-frames includes a motor and gears), the applicant disputed whether D3 disclosed a gear-driven mechanism. At the hearing Mr Smith drew my attention to claim 19 of D3, which states:
“19. The apparatus according to claim 17 wherein said drive transmission means comprises first and second endless gear trains extending between each drive shaft and a respective driven shaft.”
There is no question that the added subject matter of claims 9 and 10 is disclosed by D3, and therefore claims 9 and 10 are not novel in light of D3.
105.With regard to claim 11 (driven shaft linked by means of a boss to its respective container support arm), the opponent submitted that the shaft 76 in D3 displayed two enlarged sections meeting the definition of a “boss”, the second of which was labelled 78 and identified as a flange. The applicant did not take issue with the opponent’s contention on this, and I agree also. Claim 11 is therefore not novel in light of D3.
106.The opponent did not raise any novelty issues in light of D3 with respect to claims 12 to 16 and omnibus claim 20. These claims relate to features upon which, so far as I can discern, D3 appears silent, and consequently I find that these claims are novel in light of D3.
107.Claims 17 to 19 merely introduce aspects of conventional container cranes with which the tipping adapter of the present invention is designed to be used, and likewise for which the tipping adapter of D3 is disclosed as being intended for use. Given that claims 17 to 19 are appended to claim 1, which has been found to be not novel, it follows that, as submitted by the opponent without challenge from the applicant, claims 17 to 19 are also not novel.
108.In summary, claims 1, 2, 7 to 11 and 17 to 19 lack novelty in light of US 4,496,275.
109.D4: WO 1985000347. This is another apparatus for lifting, transferring horizontally and rotating a shipping container. It looks thus:
110.Figure 12 is a plan view, Figure 13 is a side elevation and Figure 14 is an end elevation from the direction indicated in Figure 13, of the second embodiment of D4. This is the embodiment which the opponent stated that they wished to rely upon for the purposes of the present opposition. The applicant has sought to differentiate its invention from the prior art D4 in a number of respects.
111.Firstly, the applicant maintains that sub-frames 66 depend from lateral support members of “chassis” 62 (as it is referred to in the specification), not the longitudinal support members of chassis 62. As already explained at [67], above, I consider that a broad approach needs to be taken to the notion of dependency in this context. Furthermore, from a quick perusal of Figure 12, above, the role that the longitudinal support members play in the support of sub-frames 66 is readily apparent. But even so, as was noted by Mr Smith, the diagonal components of the sub-frames directly connect to the location of the longitudinal members, as shown for example in Figure 14. I am therefore of the view that the sub-frames in D4 can be said to “depend” from the longitudinal support member.
112.In connection with the container support arm defined in present claim 1, the applicant seemed to assume that the opponent was relating this to the placement guides 80. Mr Smithdenied this, stating that the opponent’s approach was to relate the container support arms to the latching frames 74 that actually hold the container. This seems to me to be a viable approach, in the sense that it leads to an outcome where the disclosure of D4 can be read onto claim 1.
113.The applicant has also asserted that the container support arms do not have a substantially planar region on the inner surface of each arm being a surface that would provide any support. However, this assertion is based on the assumption that the placement guides 80 correspond to the container support arms. If that assumption is moved to the latching frames 74, then I think the legs of the latching frame 74 provide the “substantially planar surface” defined by present claim 1. I should note however that I have not reached this conclusion without some hesitation in light of the fact that the drawings of the prior art D4 specification are not of particularly good quality, and the description of the preferred embodiment which relates to them is barely a page long and makes no overt reference to the feature in question.
114.The final argument put up by the applicant against D4 being an anticipation of present claim 1 is that D4 does not disclose the use of twist locks on the container support arms. Part of this argument comes about by taking the placement guides 80 to be the container support arms, and this approach may be rejected, as discussed above. The other part of this argument arises because D4 only makes reference to there being “locking pins” located on the container support arm, rather than there being a twist-lock system as is defined by present claim 1. It is clear from various references throughout the evidence in this matter that the utilization of standardized twist-locks for the application at hand – moving shipping containers by crane – is a standard practice which the players in the field have strong imperatives to adhere to. For this reason I regard the twist-lock system as being an inherent characteristic in the context in consideration.
115.In consequence of the above, I find that claim 1 in suit is not novel in light of D4. So far as the appended claims 2 to 19 are concerned, Claim 2 is novel as there is no disclosure in D4 of 360° rotation. Claims 3 and 4 are novel, since there is no disclosure in D4 of the movable components of the container support arms feature defined by these claims. Claims 5 and 6 are novel, for equivalent reasons to those given in [102], above. Claims 7 and 8 are not novel, since from the reading of the specification it is clear that the manner of operation of the tippler is to rotate it through about 180° in order to empty it. As regards clams 9 and 10, the motor and gears of the apparatus of D4 are expressly described at page 18, lines 11 to 12, while Figure 13 shows that they are located at both ends of the apparatus. Accordingly claims 9 and 10 are not novel in light of D4. So far as claim 11 is concerned, the existence of a shaft 76 is expressly disclosed at page 18, line 13, but there does not appear to have been any disclosure of a boss, and accordingly claim 11 is novel in light of D4. Claims 12 to 16 and 20 are novel in light of D4 in similar manner to D3, as discussed at [106], above. Claims 17 to 19 are not novel in light of D4, as per with D3, as explained at [107], above.
116.In summary then, I find that claims 1, 7 to 10 and 17 to 19 are lacking in novelty in light of D4.
117.D5: The Arlona/BMA Tippler. The Arlona/BMA tippler was manufactured by Arlona Engineering (Pty) Ltd for BMA (now known as “Bulk Connections”), and is referred to by either name (that is, BMA Tippler or Arlona Tippler) at various spots in the evidence. The following drawing is a side-elevation view of the Arlona/BMA tippler taken from the regulation 5.23 evidence of Mr Hunter:
118.The Arlona/BMA tippler bears a passing resemblance to that of D3 discussed at [95] to [108], above, as commented upon by Mr Hunter in his declaration in response to Mr Christy’s regulation 5.23 evidence. The pivoting inner frame of the Arlona/BMA tippler (also referred to as a “rectangular perimeter frame” by Mr Christy) when viewed from above is rectangular in structure, in similar manner to the pivoting frame of D3 (see [95] et seq., above). In like manner to D3, the opening formed by the pivoting inner frame is intended to accommodate a container in use. The “container support arms” (adopting the terminology of present claim 1) of D3 and D5 differ somewhat in their detail, but operate according to the same principles and appear to read onto present claim 1 equally readily. One particular distinction resides in the “substantially planar region” aspect. While in D3 this integer of present claim 1 is represented by two sets of gusset and plate members 60, 62, 64 and 68, 70, 72, in D5 this integer is provided by the “guide pieces” 206 (using Mr Christy’s numbering regime). These guide pieces satisfy the definition in present claim 1 of there being
“a substantially planar region on the inner surface of each container support arm … being the surface which faces toward a cargo container when held partially or wholly in the space between the two sub-frames of the apparatus,”
and also provide support to that cargo container both in functioning as a guide to the container when it is being lifted into the rectangular perimeter frame, as well as helping to secure it in position in its final resting place within the inner frame assembly.
119.Therefore I find the device disclosed in D5 possesses every integer of claim 1 in suit, and thus renders it not novel. With regard to the remainder of the claims, while the evidence indicates that that the container support arms are alternatively rotatable 180° to either side of the upright position, this is not the same as being rotatable through 360°, which has the sense of needing to be a continuous rotation in a single direction. Claim 2 is therefore novel in light of D5. Claims 3 and 4 are novel, since there is no disclosure in D5 of the movable components of the container support arms feature defined by these claims. Claims 5 and 6 are not novel, in light of the locking pins 302 (Mr Christy’s numbering) disclosed in D5. Claims 7 and 8 are not novel, since from the reading of the specification it is clear that the manner of operation of the tippler is to rotate it through about 180° in order to empty it. As regards clams 9 and 10, while the apparatus of D5 employs a sprocket, this is a form of gear, and thus claims 9 and 10 are not novel. So far as claim 11 is concerned, the evidence of Mr Christy expressly refers to the existence of such a shaft and boss in D5, and accordingly claim 11 is not novel. Claim 12 is also referred to by Mr Christy as having a locking element associated with it, making claim 12 not novel. Claims 13 to 15 would appear to be anticipated by the shaft rotation safety system outlined by Mr Christy. The use of an encoder does not appear to be encompassed in the disclosure of D5, and hence claim 16 is novel in light of D5. Claims 17 to 19 are not novel in light of D5, as per with D3, as explained at [107], above. Given the substantial differences that are present in the details contained in the preferred embodiment of the present invention, including with respect to the core features of the present invention, omnibus claim 20 is novel in light of D5.
120.To summarise, claims 1, 5 to 15 and 17 to 19 lack novelty in light of the Arlona/BMA tippler.
121.Thus my overall finding in relation to novelty is that claims 1, 2, 5 to 15 and 17 to 19 are lacking in novelty in light of the various items of prior art in the evidence of this opposition. Claims 3, 4, 16 and 20 are novel.
Inventive step
122.The state of the law on inventive step seemed to be common ground between the parties. Subsections 7(2) and 7(3) of the Act state that:
“(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the relevant art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person ... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
123.While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient, and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd
25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
124.As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (supra) at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
125.The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.
126.In regard to the assessing of inventive step, there are a number of approaches which the courts have used. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at 286, Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
127.More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 56 IPR 129 at 142-143 referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
128.However in Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 at [71] the Full Court of the Federal Court stated:
“We do not think that the plurality in Alphapharm were [sic] saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm.”
It is noteworthy that Alphapharm concerned a pharmaceutical preparation, compared to the mechanical nature of the present invention.
129.There have also been a number of Federal Court decisions in recent years which seem to cast doubt on the applicability of the “expectation that it might produce a useful result” test in mechanical-type inventions. These decisions are Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCAFC 96; Ely Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214; and Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) [2011] FCA 1002. The decisions suggest that, in the case of mechanical or electronic inventions, once an inventive step is made, no doubt would ordinarily arise as to capability of that invention to produce the desired result, thus prompting an expectation of success.
130.The only prior art explicitly claimed by the opponent to be common general knowledge was the use of tipping apparatus for discharging the contents of a container. I will assume here that by “container” Mr Smith means “shipping container.” Mr Smith pointed to three indicators of this, the first of these being the fact that the present application acknowledges that such tipping adapters were known. This approach is based on the reference made in the “background to the invention” in the present specification to US Patent No. 4,496,275. Bristol Myers v F H Faulding [2000] FCA 316; (1999) 46 IPR 553 provides authority for the principle that where a patent application which has been lodged in Australia refers to matters which are known, the Commissioner would ordinarily proceed upon the basis that the knowledge thus described is common general knowledge. I note, however, the presence of the term “ordinarily” in this quote, and the absence of the use of the term “known” in the present specification in relation to US Patent No. 4,496,275.
131.The second indicator was a copy of a c.1987 news article in the evidence relating to a tipping adapter branded “ROCON”, which was being evaluated by the Port of Geelong Authority, publishers of the periodical in which the news article appeared. The article stated that the system in question “had been used successfully in North America and Africa for several years”. The third indicator was evidence that both parties in this opposition had been approached before the priority date of the present application by two port authorities to quote on the supply of a tipping adapter. Mr Smith also observed that there was no suggestion to the contrary by Mr Hunter that the use of tipping apparatus for discharging the contents of a container was not common general knowledge.
132.The remaining features of the claims were said by Mr Smith to be “standard engineering design features.” It is not certain whether or not the intended imputation of this is that these features are common general knowledge, but the fact is that there is no evidence to support that proposition. All the evidence that is provided is a few published documents and an instance of prior use, with no attempt to establish that all or part of what is in these documents or prior use is common general knowledge.
133.As to the use of tipping apparatus for discharging the contents of a container, I have strong doubts whether even this can be regarded as being common general knowledge. Although there are in the evidence some cursory comments vaguely suggesting that such tipping apparatus is in widespread use around the world, the details contained in the evidence seem to give a somewhat different view of things. One particular passage in the evidence seems to be especially telling in this regard. This is from an article by R. Szejwallo in a journal Bulk Solids Handling Vol. 29 No. 8 2009 contained in the declaration in the evidence in support by Mr Hay. It appears Mr Szejwallo is an employee of South African company ThyssenKrupp Engineering (Pty) Ltd. He states:
“During the 1980s, the South African company Rocon introduced the concept of loading ships using a standard GP container with a tipping device. Unfortunately information with regards to this pioneering development is scarce and it is unknown if any Rocon devices are still in operation at present.
20 years later the concept re-emerged when Bulk Connections, a bulk materials terminal in Durban South Africa, sought ways to optimize their port operations. After a developmental phase the first container tippler was commissioned in 2003. Based on this earlier installation, ThyssenKrupp Materials Handling has further developed the concept culminating in a second generation container tippler.”
134.The article goes on to reveal that a problem with the first generation tippler was its excessive weight, and the second generation tippler was almost 50% lighter. It is Mr Christy’s evidence that:
“After about two to three years’ public commercial operation of the BMA Tippler [that is, the 2003 tippler], BMA developed an alternate system for their bulk material handling needs. As a result, the BMA Tippler was decommissioned and mothballed for some time.”
135.The article also mentioned that the first generation tippler had been recently overhauled, and the evidence on file indicates that this was part of a purchase agreement with an Australian company Bulk Connections Australia Pty Ltd, and that this delivery had occurred in about March 2010 after the priority date of the present application.
136.The overall impression I get from the evidence in this matter is that before the priority date of this application, actual shipping container tipplers were fairly thin on the ground, particularly in Australia. Furthermore, neither party’s experts, who in any case do not seem particularly well-placed to provide evidence on the background information of the skilled workman in the field of shipping containers (see [61] and [62], above), gives convincing first-hand evidence that that person skilled in the art would be aware of the use of tipplers in relation to shipping containers. Also, the smattering of prior art foreign patent documents that have been turned up by the opponent (D1, D2, D3 and D4) and applicant (D3) over the two decades from 1983 to 2003 do not appear significant enough to tip the balance towards shipping container tipplers having been common general knowledge in Australia at the priority date of the claims. Accordingly my conclusion on this is that the evidence on common general knowledge in this opposition is not sufficiently convincing as to sustain a finding that the invention which is defined by the claims in suit does not involve an inventive step when considered in light of common general knowledge separately.
137.Given the apparent dearth of common general knowledge in the field of the present invention, and given that under subsection 7(2) obviousness must be considered in the light of the common general knowledge, there may not be any necessity to go into subsection 7(3) issues. However for the sake of completeness I will do so.
138.The opponent has submitted that each of D1 to D4 satisfies the requirements of subsection 7(3). He continued:
“The subject matter of the alleged invention is plainly of a technical nature, and a search of patent literature would be logical to conduct. Each of D1 to D4 is plainly relevant to the design of a container handling apparatus.”
139.Further, Mr Smith drew my attention to the decision in Commissioner of Patents v Emperor Sports Pty Ltd (2006) 67 IPR 488 in which the Full Court of the Federal Court said, in relation to the requirements of subsection 7(3):
“The Australian Patent Office Manual of Practice and Procedure says (par 4.2.5.1):
‘Examiners should generally proceed on the basis that it would be reasonably expected that the person skilled in the art would conduct a search of patent literature, including the patent specifications of major countries, and that [subject to certain exceptions not relevant for present purposes] any patent document located in a patentability search would reasonably be expected to be ascertained by the person skilled in the art.’
We would not wish to cast any doubt on the general correctness of that statement. However, in its own terms it allows that it is not necessarily universally applicable; there may be situations where it would not be reasonable to have such an expectation.”
140.The practice set out in the MPP has more to do with the practicalities of patent examination than setting down any hard-and-fast rule as to what documents fall within the description in subsection 7(3), and this is reflected in the hedged tenor of the Full Court’s comments. It is also worth noting that in the present case the search which was carried out in the course of examination did not turn up any of D1 to D4. While I do not think that in this case it is possible to draw any negative inference on ascertainability from this given the particular search strategy which appears to have been adopted, clearly neither can there be any positive inference. Moreover, immediately prior to its above-quoted comments in relation to the MPP the Full Court stated that
“…when identification of the relevant prior art is in dispute it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office.”
The practice in the MPP simply reflects the reality that sometimes during examination an examiner will have neither of those resources available to them. In opposition proceedings that should not normally be the case.
141.Mr Hay states in his first declaration that he was asked by two parties in late 2008 to design and supply a container tippler for the export of iron ore from a container port. This caused him to “perform a survey” which resulted in him finding several items of non-patent literature as well as patents D3 and D4. Then in the first quarter of 2009 Mr Hay is said to have received an order from one of the parties to “design and fabricate a Revolving spreader” (my understanding is that a “revolving spreader” and “rotating spreader” are alternative terms for “container tippler”) and, as a consequence, he reviewed the items found in the survey. There is no indication as to the methodology used for the survey, and indeed there is no documentary evidence at all to support Mr Hay’s claims to have “performed a survey.” Mr Bridle’s evidence challenged the timing Mr Hay had given for these events, but I think Mr Bridle’s documentary evidence, in the form of tender documents, on this is far from conclusive, relating, as it appears, to a spreader beam and a “half height” container.
142.Mr Hay attests to the fact that the first of the steps he would have taken to design and build the revolving spreader in early 2009 would be to review prior art and designs. He does not say anything about searching patent documentation explicitly, nor for that matter does he refer to searching at all (simply “surveying”). Moreover, according to his first declaration, his legal representatives had asked him to describe those steps in the context of designing an apparatus for engaging and handling containers in circumstances where side access is limited, i.e., where the containers are packed tightly together in a horizontal plane. However, this not what the present invention purports to be about. Rather, it is about better supporting a container, which may suggest more of an engineering problem and solution dealing with things such as strength and power-to-weight, where a search of patent literature might be less fruitful. In this context I agree with Mr Smith’s assertion (see [138], above) that this invention is of “a technical nature” (which is inferable just from it being a manner of manufacture), but clearly, at least as claimed, it is far from being “hi-tech.”
143.Mr Bridle, on the other hand, says that he “does not believe that a person designing these types of containers would normally consult patent literature,” that “it is not my practice to commission patent searches when designing equipment” and that he “did not consult patent literature when developing the invention.” Mr Hunter states that he also was not aware of D1 to D4 prior to the priority date, and the first time he could recall seeing them was when he was provided with them for the purposes of this opposition. However, Mr Hunter’s evidence in this regard needs to be treated with caution, as, as I have already noted, his very wide-ranging experience does not appear to extend to shipping containers and container cranes.
144.The upshot is that there is negligible evidence to support the contention by the opponent that D1 to D4 would fulfil the requirement in subsection 7(3) that they “could, before the priority date of the relevant claim, be reasonably expected to have [been] ascertained” by the person skilled in the art, given the nature of the problem to be solved. As a consequence, the opponent has, in the exceptional circumstances prevailing in this matter, failed to discharge the onus of proof upon it in respect to ascertainment. Given this absence of prior art information available by operation of subsection 7(3) for consideration under subsection 7(2), there is no basis upon which to conclude that the invention defined by the claims in suit does not involve an inventive step in light of such prior art information.
145.Accordingly I find that the evidence in this matter does not succeed in establishing that the claimed invention fails to involve an inventive step.
Conclusion
146.My finding in this opposition is that the opposition succeeds on just one of the grounds relied on, that of novelty. Claims 1, 2, 5 to 15 and 17 to 19 are not novel, while claims 3, 4, 16 and 20 are novel.
147.Clearly there is some prospect of amendment of the specification to overcome the deficiencies which have been found to exist. Apart from the claims 3, 4, 16 and 20 which have been found valid, the preferred form of the invention bears marked differences over the prior art that seem to have the potential to support a valid patent. I allow the applicant two months from the date of this decision to propose amendments to that effect. If suitable amendments are not filed within that time, I will refuse the application.
Costs
148.In accordance with the general principle that costs follow the event, I award costs against the applicant, Australian Mobile Mining Equipment Systems and Accessories Pty. Limited.
E J Knock
Delegate of the Commissioner of Patents
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