Oakmoore Pty Ltd v ARB Corporation Limited

[2015] APO 66

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Oakmoore Pty Ltd v ARB Corporation Limited [2015] APO 66

Patent Application:                2013251243

Title:Utility Vehicle Tub Canopy Attachment Assembly

Patent Applicant:                   ARB Corporation Limited

Requestor:  Oakmoore Pty Ltd

Delegate:  O L Haggar

Decision Date:  12 October 2015

Hearing Date:  7 July 2015 in Canberra

Supplementary written submissions completed on 10 July 2015

Catchwords:  PATENTS – request under section 36 – legal burden of proof – evidential burden of proof – inventive concept – whether the requestor had independently devised the invention – whether information belonging to the requestor had been misused to the advantage of the applicant – invention found to have been conceived by the named inventors alone – declaration under section 36 not appropriate – costs awarded against the requestor

Representation:  Patent applicant:  Cynthia Cochrane and David Larish of counsel instructed by Lachlan Mullane, Stuart Campbell and Patrick Mallane of Hodgkinson McInnes Patents

Opponent:Andrew Crowe QC and Laura Allen of counsel instructed by Paul Davis of Fisher Adams Kelly

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2013251243

Title:Utility Vehicle Tub Canopy Attachment Assembly

Patent Applicant:                   ARB Corporation Limited

Date of Decision:                   12 October 2015

DECISION

It is not appropriate to make any declaration under section 36.  Costs according to Schedule 8 of the Patents Regulations are awarded against Oakmoore Pty Ltd.

REASONS FOR DECISION

Background

1. Patent Application 2013251243 was filed by ARB Corporation Limited (ARB) on 31 October 2013 claiming priority from provisional application 2012904745 filed on 31 October 2012.  The named inventors were Ivan Clencie and James King.  On 8 July 2014 ARB filed a request to amend the names of the inventors by adding Steve Lawn, Andrew Menegazzo, John Krober and Gavin Smith, and removing Ivan Clencie.  The amendment was allowed on 18 July 2014.  On 12 February 2015 ARB filed another request to amend the names of the inventors.  The amendment was allowed on 16 February 2015 as a result of which the named inventors are now Stephen Lawn and John Krober.

2. On 20 June 2014, which is just prior to the first request made by ARB to amend the names of the inventors, Oakmoore Pty Ltd filed an application under section 36 requesting that it be declared sole applicant or, alternatively, co-applicant, in respect of the present application (the section 36 request).  After completion of the normal evidentiary stages, the matter came to hearing in Canberra on 7 July 2015. 

3. ARB was represented by Cynthia Cochrane and David Larish of counsel instructed by Lachlan Mullane, Stuart Campbell and Patrick Mallane of Hodgkinson McInnes Patents.  Oakmoore Pty Ltd was represented by Andrew Crowe QC and Laura Allen of counsel instructed by Paul Davis of Fisher Adams Kelly.  Angela Kasjan of ARB was also in attendance as an observer.  On 9 July 2015 ARB filed a “supplementary note” contesting oral submissions made by Mr Crowe regarding the burden of proof.  Oakmoore Pty Ltd responded to this note the following day. 

4. Oakmoore Pty Ltd has been referred to by its business name EGR (EGR) in the oral and written submissions.  For the sake of convenience I will do likewise for the purposes of this decision. 

   Subject matter

5. As explained by the specification, vehicles such as utility vehicles or pickup trucks, which have an open topped cargo bay or vehicle “tub” positioned behind a driving cab, often have a substantially rigid cover installed over the opening of the tub to prevent moisture and dust ingress and also to provide a lockable volume in which goods may be securely stored.  Such covers are commonly known as “canopies”. 

6. The specification describes a commonplace method of attaching a canopy to a vehicle tub which typically involves either mechanically fixing or clamping the rim of the canopy to a surface of the sidewall of the tub.  Most commonly the canopy is attached directly to a top surface of the tub by connecting a plurality of first extrusions bolted or screwed to the rim of the canopy to a plurality of second extrusions bolted or screed to the vehicle.  The fixings that connect the first extrusions to the canopy rim protrude from the outer surface of the canopy and are generally considered unattractive.  In order to address this issue, an additional trim is often affixed to the outer surface of the canopy to cover the fixings.  Furthermore, attaching the canopy to the top surface of the tub inevitably creates a gap between the first extrusions and the exterior surface of the canopy which has been found to trap and allow ingress of dirt and moisture into the vehicle tub.

7. The specification continues:

   “It would therefore be useful to provide an assembly for fixing a canopy to the vehicle tub which provides a more seamless join between the canopy and the vehicle and improved appearance … Furthermore, it would be advantageous if such an assembly could be readily adjusted to allow the assembly to affix a range of canopies to a range of different vehicle geometries.  Also, it would be useful to provide an assembly that is ‘weather-proof’ and reduces or eliminates regions which collect dirt and/or moisture”.

8. After summarising the attachment assembly the subject of the invention in language which reproduces that of claim 1, the specification proceeds to describe a number of preferred embodiments with the aid of several sheets of drawings.  For ease of understanding I now refer to the embodiment described with reference to Figures 3A and 3B of the drawings (reproduced below).

9. These figures show (with emphasis added) a vehicle tub sidewall (11) having an interior surface (13) that faces towards the interior of the tub, a top surface (14), and an exterior surface (15) that faces away from the tub and is the outer skin of the vehicle.  A canopy shell (10) is affixed to the vehicle by an attachment assembly (30).

10. The attachment assembly (30) comprises a mount rail (31).  The rail (31) is supported by the top surface (14) of the sidewall (11) and extends towards the exterior surface (15) to form a flange (32).  The rail is removably attached to the interior surface (13) of the sidewall (11) by a plurality of mechanical fasteners such as bolts.

11. The attachment assembly (30) further comprises a bracket (33) that has a first portion (34) adapted to receive and grip the rail flange (32) to hold the rail (31) firmly in place, and a second portion (36) arranged at an angle to the first portion (34) so as to conform to the inner surface of the canopy shell (10).  The first portion (34) is preferably retained in connection with the rail (31) by an adhesive or a plurality of mechanical fasteners, or a combination of such means.  The second portion (36) has a pair of channels (35, 37) that house the same or different adhesive means, depending on design requirements.  In a most preferred arrangement, the upper channel (35) contains double-sided tape while the lower channel (37) contains glue or epoxy resin.  

12. As can be seen from the figures, the second portion (36) of the bracket (33) is attached proximal to the lower edge of the canopy shell (10) such that the lower edge is suspended below the top surface (14) of the sidewall (11).  This is said to create a seamless join between the canopy and the vehicle that can improve the aerodynamics of the vehicle as well as enhancing visual appeal. 

13. The specification ends with 21 claims.  Claim 1 is the sole independent claim and reads as follows:

    “An assembly for attaching a rim of a canopy shell adjacent to an exterior surface of a vehicle tub, the assembly comprising:

    at least one rail adapted to be connected to a side-wall of the vehicle tub, the rail having a flange extending towards the exterior surface of the vehicle tub; and

    at least one bracket having a first portion affixed to the flange and a second portion adapted to be affixed to an inner surface of the canopy shell;

    wherein the second portion has one or more regions containing adhesive means configured to affix the bracket to the canopy shell.”

    The section 36 request

14. The alleged facts on which EGR relies to establish its entitlement are stated in the section 36 request as follows:

    • “[The present application] is directed toward canopies for utility vehicles.
    • From 2001 to 2005, [EGR] employed James King as a Design and Engineering Manager for its Thermoformed Products Division.  In 2005, [EGR] promoted Mr King to General Manager of Product Development.  Mr King acted in this role until he resigned from the company on 10 February 2012.  Mr King was [EGR’s] lead designer for [EGR’s] canopies.
    • Mr King was employed by [ARB] soon after he left [EGR].
    • The canopies shown in [the present application] are virtually identical in design, material, appearance, and specifications to many of the [EGR] canopies that Mr King designed.
    • [The present application] lists two inventors one of whom is James King.”

15. As stated earlier, the names of the inventors were amended on two separate occasions after the section 36 request had been filed.  The effect of the most recent amendment is that Mr King is no longer named as an inventor.

    The evidence

16. The parties have filed the following evidence in this matter:

    ARB’s evidence in support consisting of declarations by:

    • Ivan Mark Clencie dated 10 November 2014 (Clencie) with Exhibits IC-01 to IC-18; and
    • John Krober dated 10 November 2014 (Krober 1) with Exhibit JK-01.

    EGR’s evidence in support consisting of declarations by:

    • Andrew Edward Irving dated 12 November 2014 (Irving 1) with Exhibits AEI-01 to AEI-04; and
    • Gregory Miles Horwill dated 12 November 2014 (Horwill) with Exhibits GMH-1 to GMH-9.

    ARB’s evidence in response consisting of declarations by:

    • John Krober dated 10 February 2015 (Krober 2) with Exhibit JK-01;
    • James Somerville King dated 10 February 2015 (King) with Exhibits JSK-01 and JSK-02;
    • Stephen Lawn dated 11 February 2015 (Lawn) with Exhibit SL-01; and
    • Andrew Guy Menegazzo dated 11 February 2015 (Menegazzo) with Exhibit AM-01.

    EGR’s evidence in response consisting of a declaration by Andrew Edward Irving dated 7 February 2015 (Irving 2).

17. I will refer to the relevant parts of the evidence where appropriate. 

18. For the meantime I note that ARB’s submissions were accompanied by a declaration made by Gavin James Smith on 3 July 2015.  Mr Smith’s declaration does not form part of the evidence in these proceedings, and from a preliminary assessment of the information it provides goes no further than the evidence already adduced by ARB.  I therefore do not intend to take account of Mr Smith’s declaration pursuant to regulation 5.23.     

    Burden of proof

19. It is not disputed that Dunlop Holding Ltd’s Application [1979 RPC 523 is well settled authority for the proposition that in a proceeding such as this EGR carries the legal burden of proof on the balance of probabilities. The Full Court in Grove Hill Pty Ltd v Great Western CorporationPty Ltd [2002] FCAFC 183 at 221 held that although decided under English legislation, this approach was entirely consistent with principle.

20. However, in its supplementary note at [7] ARB submits that:

    “Contrary to EGR’s oral submissions, Dunlop Holdings does not stand for the proposition that the evidentiary onus ought to shift in relation to the ultimate issue at hand – here, the entitlement to an invention – especially in circumstances where, unlike in Dunlop Holdings, the patent applicant has not remained silent but has filed evidence on the ultimate issue.”

21. I do not detect any suggestion on the part of EGR that the legal burden it carries is not determinative.  Mr Crowe was on my understanding simply reflecting the further proposition advanced in Dunlop Holdings that the evidential burden may shift from time to time, particularly where the relevant facts are likely to be within the exclusive knowledge of one party or the other. 

22. As stated by Buckley LJ at 544:

    “Where the relevant facts are peculiarly within the knowledge of one party, it is perhaps relevant to have in mind the rule as stated in Stephen’s Digest, which is stated at page 86 of Cross on Evidence:

    ‘In considering the amount of evidence necessary to shift the burden of proof, the court has regard to the opportunities of knowledge with respect to the facts to be proved which may be possessed by the parties respectively.’

    ‘This does not mean’, Sir Rupert continues, ‘that the peculiar means of knowledge of one of the parties relieved the other of the burden of adducing some evidence with regard to the facts in question … ‘”

23. Thus Mr Crowe is correct in submitting that while the legal burden remains upon EGR, the evidential burden may shift where knowledge of the relevant facts is found to lie peculiarly with ARB (the emphasis is mine).  There seems little doubt that in saying this Mr Crowe particularly had in mind the events alleged to have transpired at a “brainstorming” session held by ARB’s canopy development team in October 2012.  This matter will be dealt with separately.  Suffice to observe at this juncture that knowledge of the conduct of the canopy development team clearly lies exclusively with ARB.

    Relevant law

24. Subsection 36(1) was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which applies in the present case since the section 36 request was filed after the commencement date.   

25. Subsection 36(1) as so-amended provides:

    “(1) If:

    (a) a patent application has been made and, in the case of a complete application, the
         patent has not been granted; and
    (b) an application for a declaration by the Commissioner is made by one or more persons
         (the section 36 applicants) in accordance with the regulations; and
    (c) the Commissioner is satisfied, on the balance of probabilities, in relation to an
         invention disclosed in the specification filed in relation to the application for the patent:

    (i)that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or

    (ii)that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons,

    the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention so disclosed.”

26. The present application clearly satisfies paragraph 36(1)(a).  Schedule 1 of the Patents Act defines an “eligible person” in relation to an invention as meaning a person to whom a patent may be granted under section 15.  Subsection 15(1) provides:

    “(1) Subject to this Act, a patent for an invention may only be granted to a person who:

    (a) is the inventor; or
    (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned

    to the person; or

    (c) derives title to the invention from the inventor or a person mentioned in paragraph (b);
         or
    (d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”

27. Thus it is apparent that if the Commissioner is satisfied that a person derives title from the inventor(s) in relation to an invention disclosed in a patent application (whether those inventors are named in the application or not), the Commissioner may declare in writing that that person is an eligible person either solely or jointly with another person who is similarly found to be entitled.

28. The law governing disputes over entitlement was most recently considered by the Full Court in University ofWestern Australia v Gray [2009] FCAFC 116; 179 FCR 346 (UWA). The Full Court at [253] cited with approval the matters identified at first instance by French J (as he then was) to be considered when assessing entitlement, namely:

    1. identify the “inventive concept” of the invention as defined in the claims;
    2. determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
    3. determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.

29. In the present case EGR seeks only to establish its entitlement and does not assert inventorship.  However, it has emerged from the section 36 request that EGR claims to be entitled to the benefit of the invention on the basis that it was made by Mr King during the course of his employment with EGR.  Clearly, then, my determination of whether EGR is an eligible person within subsection 15(1) as contended is critically dependent upon the true identity of the inventor. 

30. The Full Court had earlier considered this issue in Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9; 165 FCR 527. There the Full Court formulated a number of propositions based on existing authority in various jurisdictions. These were conveniently summarised in Neobev Pty Ltd vBacchus Distillery Pty Ltd (Administrators Appointed) (No 3) [2014] FCA 4 at [108] (with references omitted):

    “First, whether someone is properly described as a joint inventor is not determined by quantitative contribution, but rather, qualitative contribution. The contribution does not have to be equal to the other person’s and the key question is whether there has been a contribution to the invention. Secondly, in some cases it may be helpful to look to the claims and in some cases evidence may assist.  It is important to look at what the invention is said to be.  For example, a contribution to the construction of an apparatus may be sufficient where the invention is the apparatus and insufficient where the construction of the apparatus can be done by simply following the instructions in the specification.  Thirdly, the key question is whether the person’s contribution had a material effect on the final invention.  Fourthly, it is sometimes useful to approach the issue by asking who conceived the solution to a problem, but that will not always be so because not all inventions are susceptible to a problem and solution analysis.  Fifthly, rights to an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions and if the final concept of the invention would not have come about without a particular person’s involvement, then that person has an entitlement to the invention.  Finally, a person may be considered a joint inventor where they had a general idea of what was required, but someone else was required to put the ideas into effect and did so.”

31. The authorities examined in Polwood (and subsequently in UWA) were further observed by the Full Court to draw a distinction between the conception of an invention and its verification or implementation (otherwise called “reduction to practice”).  The same approach has been adopted in many Office decisions: see for example Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 where the delegate differentiated between the final concept of an invention as opposed to a preferred working embodiment of it.

32. For present purposes the key question is therefore whether Mr King contributed in any material way, either solely or jointly, to the conception of the invention.  As I have said, to this end EGR ultimately carries the legal burden of proof on the balance of probabilities.

    The competing claims

33. To help understand the competing claims to entitlement, I will now outline each party’s version of events which allegedly led to the conception of the invention.

    EGR’s version

34. EGR was co-founded by Mr Horwill and his brother.  It manufactures and supplies products such as hard tonneau covers and canopies to original equipment manufacturers (OEMs) and sold under their own label as aftermarket accessories for the automotive industry.  These products are manufactured through the process known as thermoforming (Irving 1 at [3]; Horwill at [8]).

35. Mr King commenced working for EGR on 5 September 2001 initially as a design and engineering manager within the Thermoforming Product Division due to his expertise in thermoforming plastic sheeting.  His employment contract is dated 14 July 2001 (GMH-2).  It sets out a number of non-competition obligations.

1. In 2005 Mr King was promoted to General Manager Product Development within the Thermoformed Product Development Department of EGR.  As stated in Horwill at [17]:

   “James King was very good at developing products, developing tooling for those products, selecting appropriate material type and designing the manufacturing process to both satisfy the customer as well as providing EGR with an appropriate financial return.  This was largely the reason he was promoted as General Manager …”

2. As General Manager Product Development, Mr King’s responsibilities included developing new products for the automotive industry (Horwill at [11]).  By the time of his promotion the Thermoformed Product Development Department had over 20 employees all of whom reported to Mr King. 

3. EGR commenced tonneau cover development in 2004.  Prompted by customer concerns regarding the quality of fibreglass tonneau covers being manufactured by EGR at that time, EGR developed a cover made from an alternative material using thermoforming.  Mr King was part of the team tasked with addressing this quality issue (Horwill at [21]).

4. Buoyed by the commercial success of its redeveloped tonneau covers, in 2008 EGR, through the agency of the team led by Mr King, saw a market for and commenced designing canopies.  The evidence for EGR suggests that the team was chiefly focused on developing a design for an “over-the-rail” canopy.  Put simply, this type of canopy design is such that when installed its lower edge extends below the top surface of the sidewall of the vehicle tub to create a seamless transition between the canopy and the vehicle body.  The present invention is directed to a canopy having the same design features. 

5. On 19 August 2008 Mr King circulated a “first round draft” of the “Nissan Canopy technical approach presentation” (which included a number of concept drawings) to a select group of EGR employees for input (GMH-3).  The draft presentation had been prepared by Mr King and related to an over-the rail canopy designed for the Nissan D40 motor vehicle (Horwill at [22]). 

6. AEI-03 exhibits a marked-up copy of the “Bed Rail Attachment” drawing (reproduced below) included in the draft presentation, together with a novelty table, which Mr Irving says illustrate the similarities between the subject invention and the Nissan D40 over-the-rail design.

7. Mr Irving (or, for that matter, Mr Horwill) does not say anything more on these alleged similarities.  Nevertheless, it can be readily deduced from Mr Irving’s novelty-style analysis that in his opinion the above drawing reads onto claim 1 as follows:

   • An assembly for attaching a rim of a canopy shell adjacent to an exterior surface of a vehicle tub (item A), the assembly comprising:
   • at least one rail adapted to be connected to a side-wall of the vehicle tub (item B), the rail having a flange extending towards the exterior surface of the vehicle tub; and
   • at least one bracket having a first portion affixed to the flange and a second portion adapted to be affixed to an inner surface of the canopy shell (item C);
   • wherein the second portion has one or more regions containing adhesive means configured to affix the bracket to the canopy shell (item D).

8. Nissan apparently did not show any interest in the over-the-rail design.  EGR nevertheless revisited this concept by diverting attention to the Holden Colorado vehicle.  On 15 September 2009 Mr King sent an email “!!IMPORTANT!! CANOPY DEVELOPMENT KEY DECISION ON DIRECTION” to a large group of EGR employees who were all specifically requested to provide input (GMH-4).  His email shows that although “the ARB approach [was] what [EGR had] allowed for in the current costing exercise”, EGR was keen to gain a “competitive advantage” over ARB in two areas: “Delete the ARB style extrusion rail on the outside and also cover the over rail bedliners with a painted canopy edge extending over the tub down the exterior sides”.  The email noted that a meeting to review and discuss these matters was scheduled for 22 September 2009.

9. A number of canopy concept drawings were attached to Mr King’s email.  He says in relation to these concepts (with original emphasis):

   “[Concept 02 is] our preferred direction at the moment to provide a “seamless” style to the canopy from the outside in body colour, but relies on glue to attach the aluminium lower extruded rails to the mould canopy shell.  The problem here is this relies on glue only with no mechanical fix.  We are concerned we will end up with warranties [sic] if the glue fails over time without having a mechanical fix as well – but how do we obtain a non-visual mechanical fix through a single skin canopy?”

10. In AEI-04 Mr Irving provides a comparison between a marked-up copy of the Concept 02 drawing and the features of the claimed invention.  AEI-05 repeats the same exercise with respect to the Concept 11 drawing.  A further series of canopy concept drawings are exhibited in GMH-5 which Horwill at [25] states were prepared by Mr King “in about October 2009 for the Holden Colorado”.   No particular reliance has been placed by EGR on this exhibit.    

11. It is not clear whether EGR made any presentations to Holden regarding its Colorado over-the-rail canopy designs.  However, what the evidence does establish is that EGR has never sold a canopy of this type.  As confirmed in Horwill at [26]:

    “Even though these presentations were produced, the conclusion by EGR was that the marketplace was still unwilling to accept the over-the rail design at that time.  Accordingly, none of those design concepts were ever manufactured by EGR.”

12. Mr King remained in the position of General Manager Product Development until his resignation from EGR on 10 February 2012.

    ARB’s version

13. ARB is an automotive aftermarket product manufacturer which was formed in 1975.  It commenced sales in 1998 of the first canopy, known as the “Classic”, developed by it.  A drawing of the Classic canopy is exhibited as IC-02 and is reproduced below.

14. As explained in Clencie at [5]:

    The “Classic” canopy shell is attached to the side-walls of a vehicle tub with a mount assembly.  The mount assembly includes a “mount rail” which is attached to the sidewall of the tub and extends across a top surface of the tub, and a “bed rail” which is connected between the “mount rail” and the canopy shell.  The “bed rail” is clamped to an external surface of the canopy shell by fasteners, and a trim is fitted into a channel in the “bed rail” to cover the heads of the fasteners.”

15. The Classic canopy was not an over-the-rail design (Clencie at [7]). 

16. In May 2007 Mr Clencie prepared a brief for a new project, known as “2007”, to update the Classic canopy (IC-03).  The principal focus of this project was “to improve the appearance of the canopy by concealing the join between the canopy and the tub”, and represented ARB’s first attempt at producing an over-the-rail canopy design.

17. ARB started developing the updated canopy later that year.  The project team consisted of Mr Krober alone “who consulted with other engineers at ARB when required.”  However, the 2007 project was placed on hold in late 2008 because ARB considered it to be too costly and risky to commercialise.

18. This allowed ARB to focus on a “fastback” style of over-the-rail canopy first considered by Mr Clencie and Mr Krober “around late 2007” and subsequently approved for development by the ARB Board in October 2008.  The project was originally known as “Sport”, and then renamed as “Sprint”.  Development work commenced on the Sprint project in December 2008, and the intention was “to apply the knowledge gained in the ‘Sprint’ canopy project to the development of the ‘2007’ canopy” (Clencie at [10]).    

19. After commencing employment with ARB in September 2008, Mr Smith became part of the canopy development team working on the Sprint project.

20. When released in August 2010, the Sprint canopy was the first over-the rail canopy sold by ARB.  It was also the first “dual skin” canopy ARB had produced (Clencie at [12]-[13] and [19]).  IC-06 exhibits some photographs taken in January 2010 of a prototype Sprint canopy mounted on a Toyota Hilux motor vehicle.  As shown by these photographs, the prototype canopy is similar to hard tonneau covers in that it is pivotally mounted at one end to the vehicle driving cab to enable access to the vehicle tub.  This means that the canopy is not affixed indirectly to a sidewall of the tub as in claim 1.  

21. IC-08 to IC-10 are visual diagrams of over-the-rail canopy designs which were provided by ARB as marketing material to Nissan, Isuzu and Toyota on 4 March 2009, 11 December 2009, and 10 January 2010, respectively (Clencie at [16]-[18]).  The drawings do not contain any technical details.

22. Following the release of the Sprint canopy, ARB’s canopy development team returned its focus to the 2007 project, which was renamed the “Adventure” project.  Using the knowledge gained in the Sprint project, a concept Adventure over-the-rail canopy design was developed which also had a dual skin construction (IC-11).  However, ARB abandoned this concept in late 2010 because dual skin construction was considered too expensive, and it was accordingly decided to develop a conventional single skin canopy design.  The Adventure project was renamed the “Next Generation Canopy” (“NGC”) project. 

23. By this time Mr Menegazzo had become part of the canopy development team, initially working on the Adventure project and then the NGC project.  Mr Lawn joined ARB in July 2011 and also became part of the canopy development team working on the NGC project.

24. Shortly after his resignation from EGR, Mr King was engaged by an engineering consultancy which on 26 February 2012 placed him in a role as a quality manager with ARB where he was responsible for managing its quality management systems and certification (King at [8]-[9]).  From October 2012 Mr King “was consulted on various issues relating to the development of canopies due to his experience with vacuum forming” (Krober 2 at [2]).

25. From late 2010 to October 2012, the canopy development team considered and rejected various ideas in respect of the NGC project, including:

    • Bonding a metal bed rail to the canopy shell using adhesive (Clencie at [23]-[24]; Krober 2 at [6]-[7]).
    • Co-extrusion which included a conventional metal mount rail attached to the vehicle tub and an extrusion having a groove which received the mount rail.  The vehicle canopy was clamped between the extrusion and another extrusion and fixed with adhesive and screws (Clencie at [25]; IC-15).
    • Using plastic injection moulded bedrails to attach the canopy to the tub (Clencie at [26]; Krober 1 at [12]-[13]; IC-16 to IC-18).

26. Regarding the first dot point, Mr Krober became intimately concerned with adhesives in 2011 and 2012 because the bonding between the canopy windows and the canopy shell in the Sprint canopy started to fail in the market.  Due to this bonding issue, customers were returning Sprint canopies under warranty.  The process of solving this issue involved consulting the glue manufacturer, and receiving extensive advice on the type and amount of glue recommended for fastening the windows to the canopy shell (Lawn at [5]).  By mid-2012 the canopy development team had resolved the bonding issue by determining that it had not arisen from an inherent problem with the adhesive itself, but was due to the inadequate bond line height (ie. the depth of the adhesive bead) being applied to bond the window to the canopy shell (Krober 1 at [7]).  Mr Krober confirmed this through onsite testing (Lawn at [6]).

27. Furthermore, as stated in Krober 1 at [15]:

    “Part of the problem that was facing the ‘NGC’ project team was developing a canopy concept which would fit the variations in geometry of different ute beds, as modern utes have become more stylised and have a gentle curve from front to back, whilst also providing an ‘over the rail’ canopy.”   

28. In October 2012 the canopy development team were directed by ARB management to develop new NGC canopy concepts because the concepts to date had failed to achieve the “clean lines” of the Sprint canopy (Krober 2 at [3]; Lawn at [7]).

29. In response to this direction from management, the canopy development team held a “brainstorming” session to attempt to develop a more seamless over-the rail canopy concept.  The session consisted of two stages, both of which took place on the same day.  The first stage was attended by Messrs Krober, Lawn, Smith, Menegazzo and King (Krober 1 at [14]).  Although not a member of the team, Mr King was invited to attend this initial stage because of his knowledge of ARB’s canopy warranty claims and his experience with thermoforming plastics (King at [13]).  Mr Clencie did not attend either stage.  He supervised but was not part of the canopy development team.  In the first stage of the brainstorming session:

    a)The team discussed having a laser cut mount rail attached to the vehicle.  The team was aware from ARB’s production of the Classic canopy that a mount rail could be cut to match the curve of the vehicle tub and easily attached to the tub (Krober 1 at [16]).

    b)Messrs Lawn and Krober suggested using an extruded bed rail as they knew it could be bent by hand and riveted to the curved mount rail during assembly (Krober 1 at [16], [19]).  ARB had already gained experience with bending extruded bed rails for use in the Classic canopy.

    c)Mr Krober proposed connecting the canopy shell to the vehicle tub by mechanically attaching a bracket to the tub and bonding the bracket to an inside surface of the shell.  He was confident that bonding alone would provide a sufficiently strong connection between the bracket and the canopy (Krober 2 at [9]).  Mr King suggested using methacrylate as the adhesive (King at [16]).  Mr Krober disagreed with this suggestion and recommended using the same adhesive that ARB had used with the Sprint canopy. 

    d)Mr King was sceptical as to whether bonding could be used as the primary fixing mechanism between the bracket and the canopy shell.  In his opinion a secondary connection, such as an additional mechanical fixing method and/or double sided tape, would be required as a “fail safe” measure”.  He asked Mr Menegazzo to perform calculations on the required strength of the adhesive Mr Krober had recommended.  Mr Menegazzo subsequently confirmed that applying the necessary thickness of adhesive was possible within the geometric constraints that were present (Menegazzo at [6]; Krober 2 at [11]; King at [14]-[17]).

    e)The canopy development team then decided to use double-sided tape, in addition to the adhesive, to attach the bed rail to the canopy shell.  The combination of tape and adhesive had been used by ARB in the Sprint project in which the tape held the canopy windows in place during assembly while the adhesive cured (Krober 1 at [17]; Lawn at [10]). 

30. The second stage of the brainstorming session involved Messrs Krober and Lawn only (Krober 2 at [5], [11]; Lawn at [8]) who between them consolidated the ideas that had been discussed in the first stage, and from them developed the final canopy concept.  The developments included:

    • The decision to use an extruded mounting bracket having a groove to receive the mount rail, and affixed between the mount rail and the inside of the canopy shell (Krober 2 at [13]; Lawn at [10]).
    • The decision to add two channels to the extruded bracket: one for containing an adhesive and the other for housing double-sided tape.

31. As stated in Krober 2 at [13], the first development listed above:

    “… solved the problem of how to get the attaching assembly to follow the curve of the vehicle, ie. the curve along the ute  bed, in an efficient way: the steel mount rail could be laser cut to follow the vehicle’s individual curve and the aluminium extrusion receiving it would then be hand bent and fixed to the mount rail.  The extrusion would then follow the vehicle’s curve and contain the adhesive for adhering to the canopy shell, eliminating the need for an array of complex tooling to produce different mount assemblies for different vehicles.”

32. At the conclusion of the second stage of the brainstorming session, Mr Lawn created a CAD model of the final canopy concept, and produced an engineering drawing labelled “Beadrail concept” from the model for review by ARB management (Lawn at [11]; Krober 2 at [15]).  A copy of the drawing is exhibited as JK-01.  As a matter of substance, the cross-sectional representations contained in the drawing are identical to Figures 3A and 3 B of the present specification which I have previously discussed in detail.  

    The inventive concept 

33. The inventive concept is to be ascertained by reference to the specification as a whole including the claims.  As affirmed in Polwood at [61]:

    “The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims.  The body of the specification describes the invention and should explain the inventive concepts involved.  While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed.  The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it.”

34. It is common ground that in the present case the inventive concept originated from the need to provide an assembly for attaching a canopy to a vehicle tub which:

    • provides a more seamless join between the canopy and the tub;
    • can be readily adjusted to allow the assembly to affix a range of canopies to a range of different vehicles; and
    • is weather-proof and reduces or eliminates regions which collect dirt and/or moisture.

35. However, there is some disagreement between the parties as to the features embraced by that concept.  Mr Crowe’s primary submission was that the inventive concept is as broadly stated by the consistory clause on page 3 of the specification and claimed in claim 1.  He then further submitted that the alternative embodiment of an integrated rail and bracket contemplated in the passage bridging pages 7 and 8 as well as claim 20 also falls within the inventive concept.  The reason for EGR’s dependence on this alternative embodiment will soon become apparent.  In any event, I am not persuaded by Mr Crowe’s further submission.  The specification only briefly mentions the alternative embodiment but even so clearly indicates that its application is limited to those situations, for example common makes of vehicles, where a mass produced unitary rail and bracket is feasible.  On the other hand, it is apparent from reading the specification as a whole that in line with the inventive concept a separate rail and bracket allows a canopy to be fitted to a wide range of vehicle geometries.                

36. For its part ARB submits that the inventive concept instead resides in:

    • the use of adhesives, double sided tape and channels to bond the canopy to a bracket which is itself attached to the body of the tub in some way (at [42]-[45]); and
    • the bracket to which the canopy is affixed is a separate integer to a rail which is actually affixed to the tub of the vehicle, but is still affixed to said rail (at [46]-[48]).

37. Ms Cochrane pursued the same line of argument at the hearing.  I disagree that the use of double sided tape and channels to bond the canopy to the bracket forms part of the inventive concept.  While the specification broadly provides for the use of “adhesive means” to achieve bonding between the bracket and the canopy, it makes no particular mention of double sided tape or channels except in the context of what is plainly a practical application of the inventive concept.

    Who was responsible for the inventive concept?

38. The evidence shows that EGR developed an over-the-rail canopy design for the Nissan D40 motor vehicle as early as 2008, and continued work on this concept for the Holden Colorado vehicle in 2009.  The evidence also establishes that ARB had in 2007 commenced work on improving the appearance of the Classic canopy which, although first sold in 1998, was not an over-the-rail design.  Irrespective of the different lines of enquiry pursued by them, the evidence leaves no doubt that both parties shared the common objective of concealing the join between the canopy shell and the vehicle tub.  

1. EGR has relied upon the Bed Rail Attachment drawing of AEI-03 and the Concept 02 drawing of AEI-04 to substantiate its assertion of sole entitlement.  Mr Crowe acknowledged at the hearing that while Mr Irving’s novelty-style analysis had treated the rail and bracket as separate items, as depicted in both drawings they are in fact integrally formed.  As I have already found, an arrangement of this kind is not embodied by the inventive concept.  It also means Mr Irving’s reasoning that the features he has marked as items C and B in the drawings respectively constitute a bracket having “a first portion affixed to” the flange of a rail is fundamentally flawed.  I note for the sake of completeness that the rail and bracket shown in the Concept 11 drawing of AEI-05 are separately formed but, in contrast to the inventive concept, both appear to be affixed to the canopy shell.

2. Furthermore, AEI-03 reveals that in EGR’s Nissan D40 design concept the double sided tape disposed between the canopy shell and the bed rail attachment served as a “secondary fix” only and, when read in conjunction with GMH-3, confirms that the primary means of affixing the canopy shell to the bed rail attachment was mechanical in nature.  EGR has not attempted to argue the contrary view, and nor has it led any evidence to demonstrate that in later arriving at the Holden Colorado design concept EGR had by then resolved the problem of concealing the join between the canopy shell and the vehicle tub without recourse to a mechanical attachment.  In this respect the question “how do we obtain a non-visual mechanical fix through a single skin canopy?” posed by Mr King in his email of 15 September 2009 to EGR employees regarding the Concept 02 is not in my opinion merely rhetorical as submitted by Mr Crowe, but rather is indicative of the fact that EGR was persisting with a mechanical fix.  Nevertheless, I note with interest that the Concept 02 drawing has been annotated “!!! ISSUE: No mechanical attachment of canopy shell to … rail” which possibly reflects an intention by EGR to investigate the use of non-mechanical fixes alone.  However, there is no evidence to corroborate this.  That aside, and as best can be understood, the Concept 02 drawing shows that a plastic liner is interposed between the bracket and the canopy shell.  The liner is mechanically attached to the bracket and glued to the canopy.  In other words, there is no direct attachment between the bracket and the canopy, mechanical or otherwise.   

3. For the above reasons I find that the evidence upon which EGR relies does not substantiate its assertion of sole entitlement.  This brings me to the alternative proposition put by EGR that it is jointly entitled. 

4. Central to EGR’s claim to joint entitlement is the contribution it says Mr King made to the brainstorming session held by the ARB canopy development team in October 2012.  ERG submits it is beyond coincidence that “it was only after King’s involvement in the ‘brainstorming’ session that a solution was found.  It was found immediately.”  The clear inference that arises, so the argument continues, is that during the course of the brainstorming session Mr King communicated information belonging to EGR to the ARB canopy development team.  ARB’s opposing contention is that the invention was conceived by the canopy development team unaided by any knowledge of EGR’s over-the-rail canopy designs.

5. Mr King states at [21] that he has “little memory of developing any of the canopy concepts” exhibited by EGR in these proceedings.  This evidence is not entirely convincing.  Nevertheless, I accept that his inability to recall specific events may to some extent be due to the fact that as General Manager Product Development at EGR, a position he held for some 7 years, Mr King was involved with many concept designs as well as being responsible for a considerable range of activities other than new product development (Horwill at [11]).

6. Furthermore, Mr King does not deny that he “was integral to EGR’s canopy design” as submitted by Mr Horwill at [22], but expresses the belief that since joining ARB he has “complied with my contractual obligations to EGR”.  Ms Cochrane took this matter further in submitting that in order to uphold his obligations to EGR, Mr King had “quarantined” himself from product design by undertaking a quality assurance role with ARB.  It is true that Mr King was not a member of the canopy development team.  Nevertheless, given the warranty problems ARB had experienced with the Sprint canopy up until “mid-2012” (Lawn at [5]; Krober 2 at [6]-[7]), and the view held by ARB management that “the current ‘NGC’ concepts were going backwards” (Krober 1 at [14]), I think it highly likely that as a quality manager Mr King would have taken a keen interest in the work of the canopy development team.  It will be recalled that according to Mr King, he was invited to attend the first stage of the brainstorming session partly because of his knowledge of ARB’s canopy warranty claims.  The other reason given in evidence for Mr King’s attendance is his expertise in plastic thermoforming.  However, as submitted by ARB at [29], this “is relevant to the canopy itself, but not the assembly that attaches it to the vehicle tub”.   

7. The evidence for ARB as to what occurred at the brainstorming session is not altogether enlightening, and I note in this regard that it is not until his second declaration that Mr Krober recalls particular details of the brainstorming session, including that it involved more than one stage.  However, despite suggestions to the contrary by EGR, I do not consider that this casts any doubt on the veracity of Mr Krober’s evidence.  EGR has also placed a good deal of reliance upon the mechanical solution suggested by Mr King at the first stage of the brainstorming session.

8. EGR’s reliance upon this suggestion is clearly misplaced in the present context.  Mr Krober states that during the first stage he “proposed connecting a canopy shell to a ute bed by attaching a bracket to the ute and bonding the bracket to an inside surface of the shell” (Krober 2 at [6]; [9]).  Mr King was sceptical of Mr Krober’s suggestion to use bonding as the primary means of fixing, and therefore recommended that in accordance with standard engineering practice “an additional mechanical fixing method and/or double sided tape” be used as a “fail safe” measure (King at [14-[17).  The same concern regarding the use of adhesive alone had been raised a few years earlier by Mr King in relation to the EGR Concept 02 canopy design.  Importantly, Mr King was here referring to an additional mechanical fix between the bracket and the canopy shell which is not part of the inventive concept, and was in any event discounted by the canopy development team.  It seems that at most the canopy development team may have adopted the suggestion of double sided tape due to its known usefulness “as a fixing agent while the glue cures” (King at [17]; Krober 1 at [17).  This is hardly confirmation that Mr King had misused EGR’s confidential information to ARB’s advantage.      

9. To the contrary, what does emerge from the totality of ARB’s evidence is that Mr Krober’s bracket proposal, which is undoubtedly a key element of the inventive concept, was an extension of the work on which the canopy development team had previously embarked.  The idea of bonding a rail to a canopy shell had been explored during the course of the Sprint project, but due to problems encountered with the use of adhesive alone was initially considered to be potentially unreliable.  Nevertheless, these bonding problems had been resolved by the time of the brainstorming session.  Furthermore, the use of a pair of connected rails in a canopy mount assembly was a feature of the Classic canopy well known to the canopy development team.  Mr Krober’s proposal involved the notion of a “bracket” as opposed to a “rail”, but these terms seem to have been used interchangeably in ARB’s evidence. 

10. The evidence also firmly establishes that Messrs Lawn and Krober were the only members of the canopy development team present at the second stage of the brainstorming session.  However, their respective accounts of what transpired at the second stage are somewhat sketchy.  Krober 2 at [12] states:

    “During the second stage of the ‘brainstorm session’, [Mr Lawn] and I developed the ideas that were discussed during the first stage, particularly in line with the suggestions that I put forward during the first stage of the ‘brainstorm session’”.

11. Mr Lawn has given evidence to similar effect.  Neither declarant has elaborated upon the full range of ideas discussed during the first stage of the brainstorming session, or the source of them.  However, in the absence of rebutting evidence from EGR, I am left to accept that as put by Mr Lawn at [9] “other than John [Krober] suggesting using adhesive to bond the canopy shell to the bedrail … the main session did not provide any real direction to the final ‘NGC’ canopy concept that was developed”.  

12. It is quite surprising though that Mr Lawn has understated Mr Krober’s bracket proposal which, as made apparent by what I have said above, did not simply reside in the use of an adhesive as a bonding agent.  Mr Lawn sheds further light on this aspect of his evidence at [10] where he states in keeping with Krober 2 at [12] (and with emphasis added) that “[Mr Krober] and I developed the idea of using an extruded mounting bracket to connect between a bedrail and the inside of the canopy shell”.  On its face this suggests that Mr Lawn’s contribution went no further than assisting to produce a workable embodiment of the invention the conception of which had already been completed by Mr Krober.  His suggestion “to incorporate two channels in the bracket to house two different adhesives” clearly relates to a means of reducing the inventive concept to practice.  However, Krober 1 at [16] states that Mr Lawn did in fact materially contribute to the first stage of the brainstorming session.  Most importantly, the evidence for ABR is consistently to the effect that the inventive concept was together devised by Messrs Krober and Lawn without input from any other participant in the brainstorming session.  In this respect I note Mr King’s evidence at [24] that “… I am confident that I did not contribute to the invention beyond … general engineering knowledge”.          

13. In stating this I am acutely conscious of the fact that after a history of unsuccessful attempts the canopy development team responded to the directive from ARB management to resolve their problems with the NGC design with remarkable alacrity.  However, as I have said, the evidence for ARB although lacking in specificity is sufficient to satisfy me that resolution of these problems was achieved without the assistance of any information conveyed by Mr King.  ARB has as a result discharged the evidentiary burden on it, and I should add here that the evidence presented by Messrs Krober, Lawn and King concerning the brainstorming session does not reveal any deliberate attempt on their part to remember only those details that are favourable to ARB.      

14. I have found that Mr Krober and Mr King conceived the invention without contribution by Mr King.  EGR’s claim to be jointly entitled is therefore unsustainable. 

    Contractual or fiduciary relationships

15. This issue is a nullity as I have found that Mr King cannot on any view be regarded as an inventor.

    Conclusion

16. The evidence does not establish that EGR is an eligible person either solely or in part and, consequently, it is not appropriate to make any declaration under section 36.

    Costs

17. EGR has not successfully pursued the section 36 request and I can see no reason why costs should not follow the event.  I therefore award costs against EGR.

    O L Haggar
    Delegate of the Commissioner of Patents