Polaris IP Pty Ltd v Brolock Pty Ltd 2025 & TCT Group Pty Ltd v Brolock Pty Ltd
[2025] APO 30
•16 September 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Polaris IP Pty Ltd v Brolock Pty Ltd 2025 & TCT Group Pty Ltd v Brolock Pty Ltd [2025] APO 30
Patent Application: 2021271942
Title:A hinge
Patent Applicant: Brolock Pty Ltd
Opponents: Polaris IP Pty Ltd;
TCT Group Pty LtdDelegate: Dr W.E. Guinea
Decision Date: 16 September 2025
Hearing Date: 19 & 20 February 2025, in Canberra, by videoconference
Catchwords: PATENTS – s59 – opposition by two opponents – TCT opposition – novelty – no claims found to lack novelty – inventive step – no claims lacking inventive step – clarity – no claims lacking clarity – clear enough and complete disclosure – lack of clear enough and complete enough disclosure for all claims – support – lack of support for all claims – utility – no claims lacking utility – best method – no failure to provide best method – Reg 5.23 request – Reg 5.23 request refused – TCT opposition successful – costs – costs awarded against applicant – Polaris opposition – priority date – Reg 5.23 considered – priority does not affect grounds raised – Reg 5.23 unnecessary – inventive step – s60(3) considered – s60(3) unnecessary – no claims lacking inventive step – clear enough and complete disclosure – Reg 5.23 considered – Reg 5.23 unnecessary – no claims lacking clear enough and complete disclosure – support – no claims lack support – best method – no failure to provide best method – utility – no claims lacking utility – Polaris opposition unsuccessful – costs – costs awarded against Polaris
Representation: Patent Attorney for the Applicant: Lorne Wood-Roe of Adams Pluck
Counsel for TCT Group Pty Ltd: Gilbert Tsang
Patent attorney for TCT Group Pty Ltd: Philip Gehrig of Wrays
Counsel for Polaris IP Pty Ltd: Angela McDonald
Patent attorney for Polaris IP Pty Ltd: Simon Reynolds, David Müller-Wiesner & Andrew Bayliss of GLMR
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2021271942
Title:A hinge
Patent Applicant: Brolock Pty Ltd
Date of Decision: 16 September 2025
DECISION
The opposition by TCT Group Pty Ltd
The opposition by TCT Group Pty Ltd under s59 is successful. I am satisfied that the invention as claimed in claims 1 to 7 fail under s40(2)(a) as the complete specification fails to disclose this invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. I am also satisfied that claims 1 to 7 lack support under s40(3). No other grounds of opposition are made out.
I award costs according to Schedule 8 against Brolock Pty Ltd.
I allow the Applicant two (2) months from the date of this decision to propose amendments that address the defects outlined in the decision concerning the opposition by TCT Group Pty Ltd.
The opposition by Polaris IP Pty Ltd
The opposition by Polaris IP Pty Ltd under s59 is unsuccessful. None of the grounds of opposition were made out.
I award costs according to Schedule 8 against Polaris IP Pty Ltd.
Subject to final determination in the opposition by TCT Group Pty Ltd, I direct that the application proceed to grant.
REASONS FOR DECISION
Background
1. Patent application 2021271942 (the “application” or “specification”) entered national phase on 23 November 2021 from PCT/AU2021/050427. PCT/AU2021/050427 was filed on 10 May 2021 in the name of Brolock Pty Ltd (the “Applicant” or “Brolock”). The application has an earliest priority date of 11 May 2020 from AU 2020901504 (the “priority document”).
2. Polaris IP Pty Ltd (“Polaris”) and TCT Group Pty Ltd (“TCT”) separately filed notices of opposition to the application under s59 of the Patents Act 1990 (the “Act”) on 27 April 2022. The respective statements of grounds and particulars (“SGP”) for each of the s59 oppositions were filed on 27 July 2022. Importantly, while this decision concerns both oppositions the oppositions have not been joined and stand to be separately determined on their merits. Amendments, which were allowed, were proposed to the Polaris SGP on 24 November 2022 and to the TCT SGP on 8 July 2024. Hereon, references to the Polaris SGP and the TCT SGP will be to these as they stand after amendment.
3. Amendments to the specification were requested on 30 December 2022. While both Polaris and TCT opposed these amendments, Polaris subsequently withdrew its opposition. Ultimately, TCT was unsuccessful in its opposition under s104 as per TCT Group Pty Ltd v Brolock Pty Ltd [2024] APO 7. The amendments were incorporated into the specification on 22 March 2024. References to the specification from hereon are to the specification as it stands as a result of those amendments.
4. The evidence in support (“EIS”) was completed for the TCT opposition on 27 October 2022. This consisted of:
· a first declaration by Mr William Samuel Hunter (“Hunter1”), dated 27 October 2022, with supporting annexures WSH-1 to WSH-12; and
· a declaration by Mr Philip Walter Gehrig (“Gehrig”), dated 27 October 2022,with supporting annexures PWG-1 to PWG-3.
5. The filing of evidence in answer (“EIA”) for the TCT opposition was completed on 31 January 2023. This consisted of:
· a declaration by Mr Michael Murauer (“Murauer1”), dated 30 January 2023, with supporting annexure MM-1; and
· a declaration by Mr Robert Graham (“Graham1”), dated 24 January 2023, with supporting annexure RG-1.
6. The filing of evidence in reply (“EIR”) in the TCT opposition was completed on 30 March 2023. This consisted of:
· a second declaration by Mr William Samuel Hunter (“Hunter2”), dated 29 March 2023, with supporting annexures WSH-13 and WSH-14.
7. The filing of EIS was completed for the Polaris opposition on 27 October 2022. This consisted of:
· a first declaration by Mr Craig Schroder (“Schroder1”), dated 27 October 2022, with supporting annexures CS-T1 and CS-T2 and CS-1 to CS-10.
8. The filing of EIA for the Polaris opposition was completed on 27 January 2023. This consisted of:
· a declaration by Mr Michael Murauer (“Murauer2”), dated 25 January 2023, with supporting annexure MM-1; and
· a declaration by Mr Robert Graham (“Graham2”), dated 24 January 2023, with supporting annexures RG-1 and RG-2.
9. The filing of evidence in EIR in the Polaris opposition was completed on 30 March 2023. This consisted of:
· a second declaration by Mr Craig Schroder (“Schroder2”), dated 30 March 2023, with supporting annexure CS-11.
10. For convenience, I note that annexures MM-1 to Murauer1 and Murauer2 are identical. I will therefore simply refer to MM-1 in either opposition without distinction to each of the declarations. Similarly, RG-1 to Graham1 and Graham2 are also identical, and will also be referred to without distinction to each of the declarations.
11. On 10 July 2024, TCT filed a further declaration by Mr Hunter dated 9 July 2024 (“Hunter3”) with supporting annexures WSH-15 and WSH-16.[1] TCT requested that the Commissioner consider the filed documents pursuant to Reg 5.23 of the Patents Regulations 1991 (the “Reg 5.23 request”). A delegate of the Commissioner wrote to TCT and the Applicant on 26 July 2024, informing them that TCT’s Reg 5.23 request would be considered as part of determining TCT’s substantive opposition to the application, and that both parties should put forward their views on the Reg 5.23 request in their written and oral submissions for the TCT opposition.
[1] WSH-16 is a copy of US 2019/0040667 A1, referred to below as “D7”.
12. The TCT opposition was heard on 19 February 2025, whilst the Polaris opposition was heard on the following day. For the TCT opposition, TCT filed its written summary of submissions (“TS”) on 5 February 2025, while the Applicant filed its written summaries of submissions (“ATS”) on 12 February 2025. For the Polaris opposition, Polaris filed its written summary of submissions (“PS”) on 6 February 2025, while the Applicant filed its written summary of submissions (“APS”) on 13 February 2025.
The invention as described
13. The invention for this application relates to a hinge, particularly those used in the context of glass panels for pool gates or showers, as apparent from the “Technical Field” given on page 1, lines 4 to 6.
14. The specification then comprises a “Background” section that extends from page 1, line 8 to page 2, line 2. This discusses some features and issues with hinges as known in the prior art. It is noted that prior art hinges typically include a spring that biases the gate towards the closed position, whilst it is also known to use a damping mechanism that retards the force of the spring so as to prevent the gate being slammed shut under the influence of the spring. The specification notes that such dampers typically include what would be understood as a type of hydraulic plunger i.e. a movable plunger mounted in a fluid filled chamber, with movement of the plunger into the chamber forcing the fluid through a small aperture.
15. The specification then observes that:[2]
“The hinges are typically attached to glass door or fence panels by way of insert components which locate in an aperture provided in the glass panel. The dampers are located inside the insert components and move in a direction which is orthogonal to the hinge axis and coplanar with the panel i.e. lying between the planes of the two planar surfaces of the panel.
The dampers are selected so that they provide an overall damping effect such that the door closes slowly, but does not take a very long time to close. However, it has been found that the damping action of these hydraulic dampers is somewhat variable and it can be difficult to achieve the desired damping characteristics.
There remains a need for improved hinges.”
[2] Specification page 1, line 25 to page 2, line 2
16. The “Summary of the Invention” then runs from page 2, line 5 to page 3, line 5. This simply comprises consistory statements that appear commensurate with somewhat broader claims than as presently on file, or, for that matter, as accepted. However, like the claims as they presently stand, and as accepted, the consistory statements refer to the hydraulic damper being located outside of the planes which describe the faces of the glass panel and inside one of the hinge portions, with the damper moving in a direction substantially parallel to the hinge axis.[3]
[3] Specification page 2, lines 14 to 21.
17. There then follows a “Brief Description of the Drawings” and “Detailed Description of the Preferred Embodiment” which comprise the remainder of the description.[4] The nature of the invention described is best understood by reference to the figures. A first embodiment of a hinge 10 in the closed position is illustrated by figures 1 to 5, of which figures 1 and 2 are reproduced below. The hinge 10 comprises first and second hinge portions 20, 30 each with respective first and second hinge members 21, 31 and first and second clamping members 22, 32.
[4] Specification page 3, line 7 to page 9, line 32.
18. As can be seem from figures 3 and 4, reproduced below, the hinge 10 is attached to glass panels 100, 101 by locating insert portions 28, 38 in recesses machined in glass panels 100, 101. The glass panels 100, 101 are then clamped between hinge members 21, 31 and clamping members 22, 32 using fasteners 26. Spring tensioner assembly 40 is housed in hollow barrel portion 23 of first hinge member 21, and comprises tensioning member 41, spring 42 and coupling 43. Although there is some discussion of the spring tensioner assembly 40 and associated features, for present purposes it is sufficient to simply note that spring 42 operates so as to bias the hinge 10 towards the closed position as discussed earlier in this decision.
19. The hinge 10 also comprises damper 51 housed within sleeve 53 and located in a cavity of the second hinge member 31. Cam 27 is attached to arm 25 of hollow barrel portion 23. Consequently, cam 27 pushes against sloped surface 54 of sleeve 53 such that damper 51 is in a compressed state. Opening of the hinge 10 leads to cam 27 moving from bearing on the upper part of sloped surface 54 towards the lower part of the sloped surface 54 such that the damper 51 moves from a compressed state towards an extended position. The damper 51 will then provide a damping action as it is progressively compressed as the hinge moves back towards the closed position. It is apparent that the damper 51 moves in a direction parallel to the hinge axis.
20. The specification also notes that:[5]
“The damper 51 is not mounted inside the insert component. As best seen in figure 3, it is mounted outside of the glass panel, to one side of the glass panel in a well in one of the hinge members. This means that the length of the damper is not constrained to fit inside the inert (sic), which in turn must fit inside the edge aperture formed in the glass panel. This allows use of a damper of longer length, which can provide a more significant damping effect when compared with damper of shorter length.”
[5] Specification page 6, lines 24 to 29.
21. An alternative embodiment is illustrated by figures 6 to 8, and is said to be “…used with with a pool fence and gate which are formed from square or round cross section tubular metal components.[6] Figures 6 and 8 are reproduced below. These show a hinge 100 comprising first and second hinge portions 121, 131. Although not shown, a spring arrangement similar to that of the first embodiment biases the hinge 100 towards the closed position. In use, respective planar engagement surfaces 122, 132 of the first and second hinge portions 121, 131 are fixed to surfaces of gate and fence members without the use of recesses in the fence members as was the case for the first embodiment.
[6] Specification page 7, lines 10 to 12.
22. A damper 151 is located in cavity 155 of second hinge portion 131. Respective upper and lower sleeves 153a, 153b are provided at the upper and lower ends of damper 151. Respective upper and lower cam regions 127a, 127b are provided on first hinge portion 121 and engage respective helical surfaces 154a, 154b of the upper and lower sleeves 153a, 153b. In the fully open position, cams 127a, 127b are not in contact with helical surfaces 154a, 154b such that damper 151 is extended. When hinge 100 is at a 35 degree open position, the cams 127a, 127b come into contact with helical surfaces 154a, 154b, thereby progressively compressing damper 151 as the hinge 100 moves towards the closed position and damping the closing action of the hinge 100.
23. Figure 9 (not shown) illustrates a variation of the embodiment of figures 6 to 8, where the cams are provided in form of rollers. The hinge of figure 9 is otherwise the same as hinge 100.
24. After discussion of the embodiments of the invention it is noted that:[7]
“It can be seen that embodiments of the invention have at least one of the
following advantages:
· The hydraulic damper is mounted in a cavity in one of the hinge members and lies outside of the plane of the panel. This further allows for longer damper travel when compared with hinges in which the dampers are mounted inside one of the hinge insert components and further improves the predictability of the speed and smoothness of the closing action.
· The hydraulic damper is mounted so that it moves in a direction which is parallel to the hinge axis. This allows for longer damper travel in a smaller assembly which in tum spreads the resistance force over a longer distance for a more predictable and smoother closing action.”
[7] Specification page 9, lines 13 to 25.
The claims
25. The application comprises seven claims of which claim 1 is the only independent claim. Claim 1 is reproduced below; the full claim set can be found at Annex A to this decision. For convenience I have provided feature labels for claim 1.
1.1 A hinge including:
1.2 a first hinge portion;
1.3 a second hinge portion;
1.4 a biasing spring; and
1.5 at least one hydraulic damper;
1.6 the first and second hinge portions are connected together and are arranged to pivot with respect to one another about a hinge axis between an open condition and a closed condition;
1.7 the biasing spring is arranged to bias the hinge towards the closed condition;
1.8 in use the at least one hydraulic damper is compressed from an extended condition to a retracted condition as the hinge moves from the open condition to the closed condition;
1.9 the first hinge portion includes a first hinge member, and a first clamping member;
1.10 the hinge is arranged to attach to a glass panel which is provided with an edge recess, the first hinge portion is arranged to attach to the glass panel by sandwiching the glass panel between the first hinge member and the first clamping member;
1.11 and when attached to the panel in use the at least one damper is located outside of the planes which describe the faces of the glass panel and inside the first hinge member; and
1.12 wherein the damper moves in a direction which is substantially parallel to the hinge axis.
The oppositions
26. The application was filed on 16 February 2017. Consequently, substantive amendments of the PatentsAct 1990 (the “Act”) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 apply to the application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Notably each Opponent’s bears the onus of proving their case to the requisite standard in each of their oppositions.
27. As there are two distinct oppositions, I will consider each of these in turn, starting with the TCT opposition.
THE TCT OPPOSITION
28. In the TCT SGP, TCT pursued grounds under:
· s59(b) and s18(1)(b)(i) – the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;
· s59(b) and s18(1)(b)(ii) – the invention as claimed is not inventive in view of the prior art base as it existed before the priority date of the claims;
· s59(c) – the specification does not comply with s40(3), in that the claims are not clear and succinct;
· s59(c) – the specification does not comply with s40(3), in that the claims are not supported by matter in the specification;
· s59(b) and s18(1)(c) – the claimed invention lacks utility;
· s59(c) – the specification does not comply with s40(2)(a); and
· s59(c) – the specification does not comply with s40(2)(aa).
29. All of these grounds were pursued by TCT in its written submissions and at the hearing.
30. I note that TCT’s SGP comprised an allegation that the claims were only entitled to claim priority from the filing date of the application, rather than the priority document, but this was not pressed in the TS or at the hearing. I have decided the TCT opposition on the basis that the priority claim is correct. I note that my decision concerning Polaris’s opposition includes an analysis of whether the priority date is valid, and casts doubt over whether the claims may in fact take priority from the priority document. However, given the publication dates, and the disposition of the documents pressed by TCT for both novelty and inventive step as discussed further below, it will make no difference to the outcome in the TCT opposition whether the claims are entitled to take priority from the priority document or not. Consequently, I have not contemplated raising any priority date issues in the TCT opposition using s60(3), or, to the extent necessary, Reg 5.23.
TCT’s Reg 5.23 request
31. As observed earlier, TCT filed a Reg 5.23 request which I must necessarily determine as part of deciding the TCT opposition. As noted in Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8, a number of factors are relevant to whether Regulation 5.23 should be invoked with respect to a document. These include:
a) the circumstances leading up to the evidence not being filed earlier;
b) what the evidence shows and whether the information is likely to be crucial to the delegate’s decision;
c) the public interest; and
d) the balance of convenience of the parties if the information is considered.
32. While there are four factors listed, what the evidence shows and whether it is likely to be crucial to my decision is of preponderant weight in the present circumstances. If the material concerned helps make out a ground of opposition that would not otherwise be made out without it, then admission of the material is clearly in the public interest and outweighs any balance of convenience concerns or why the material was not filed earlier in the present circumstances.[8] Conversely, if the material does not lead to a ground of opposition being made out in its absence, then any further delay brought by introduction of the material is clearly not in the public interest, would simply lead to further unnecessary inconvenience to both parties, all of which would outweigh any considerations in favour due to why the material was not filed earlier. Hence, my approach will be to consider the Reg 5.23 request as though the material concerned was actually in evidence, and use this through the lens of the relevant analysis for the grounds to which the Reg 5.23 request relates to inform whether I should invoke Reg 5.23 as requested by TCT.
Who is the skilled addressee?
[8] I did not take it that there were any issues concerning convenience or why the material was not filed earlier that would outweigh the relevance of the material in making a decision under Reg 5.23.
33. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to possess the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
34. There was little discussion by the parties on the nature of the skilled addressee, either in the written submissions or at the hearing. The nature of the skilled addressee, and the suitability of the expert declarants to represent the same, was simply absent in written and oral submissions by the Applicant. At the hearing, Mr Tsang noted that Mr Hunter had been accepted as a skilled addressee in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 (“TCT Group”) but otherwise referred to the OS at section E concerning the skilled addressee. No comment has been provided by the Opponent concerning the suitability of the Applicant’s experts to represent the skilled addressee, leading to the rather rare absence of a dispute over which party has the better experts. At [19] of the OS, the Opponent has reiterated Justice Burley’s formulation of the skilled addressee from TCT Group at [86], which I also adopted in TCT Group Pty Ltd v Polaris IP Pty Ltd [2024] APO 5 (“TCT APO”) at [39]. Given the matters concern the same field, I again adopt this formulation of the skilled addressee for this matter, namely “…a person engaged in, or who has experience in, the design of mechanical devices and, in particular, in respect of hinges used in domestic and commercial applications”.
35. Despite the lack of disagreement, I have reviewed the declarations, and, where given, the CVs provided by each of the expert declarants, and I am satisfied that each is able, at least in some way, to adequately represent the views of the skilled addressee as I have defined it. In this regard I note that:
· Mr Hunter is a mechanical engineer with bachelor’s and master’s degrees in that discipline.[9] He has extensive experience in product design and development, including of hinges;[10]
· Mr Murauer is a director of the Applicant and has worked for/in the Applicant for about 25 years designing and manufacturing tools and mechanical components.[11] Mr Murauer has not provided a CV/resume and does not claim any formal qualifications but states that he is a mechanical engineer, as well as being the inventor for the opposed application.[12]
· Mr Graham is an owner and operator of Lox Locking Pty Ltd, a company that “designs and distributes various items of door hardware including door and gate locks, cabinet locks and latches, door closers and door retainers”.[13] Mr Graham has a Bachelor of Education (Industrial Arts) and has gained extensive knowledge and understanding of doors, gates, and their associated hardware through his line of work.[14]
[9] Hunter 1 at [5] and [6].
[10] Hunter1 at [7] to [11] and WSH-2.
[11] Murauer1 at [1] and [2]).
[12] Murauer1 at [1]).
[13] Graham1 at [1].
[14] Graham1 at [4] and [5].
36. Particularly given the lack of dispute, I do not propose to make any general statements or conclusions here about the relative suitability of any of the experts to represent the skilled addressee. Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, or where I seek to make findings of fact based on the expert evidence, it will be up to me to weigh each declarant’s evidence accordingly in view of the particular context concerned and their skills, knowledge and experience.
Clarity
37. The statutory basis for clarity is given at s40(3) of the Act which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (“Austal Ships”) at [14]:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use...The consideration is whether, on any reasonable view, the claim has meaning...In determining this, the expressions in question must be understood in a practical, commonsense manner… Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection...”
38. In particular one can consider that the claims provide a workable standard if a third party could, without difficulty, determine whether an act falls within the scope of the claim; see Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 (“Monsanto”) at 60-61:
“There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim…For these reasons I do not regard the use of the adjective ‘substantial’ as giving rise to any uncertainty.”
39. The only claim the Opponent has objected to for lack of clarity is claim 6. In the OS, the Opponent argues:
“113. Claim 6 lacks clarity for the simple reason that it refers to ‘contact between the cam and the housing’ in circumstances where none of the previous claims on which it depends introduces or identifies ‘the housing’.
114. Claim 3 refers to the damper being ‘housed inside a sleeve’, but that only serves to highlight the problem. ‘Housed’ is used here as a verb. The only noun is the word ‘sleeve’. The skilled addressee is therefore left to guess or presume, as Mr Hunter did (see Hunter 3, [37]), that the ‘housing’ in claims 6 is in fact the ‘sloped surface at the end of the sleeve’. However that residual uncertainty is precisely what s 40(3) is intended to prevent.”
40. Mr Tsang did not add anything further regarding the clarity of claim 6 at the hearing, merely referring to the TS and noting that the Applicant conceded the issue in the ATS and was amenable to an amendment to rectify the same.[15] Mr Wood-Roe confirmed this at the hearing.
[15] ATS at [52].
41. Despite cessation of hostilities between the parties over this issue, I do not accept that claim 6 is unclear as argued by TCT. Claim 6 is directly appended to only claim 5 and indirectly appended to claim 3 via claims 4 and 5, with claims 4 and 5 respectively dependent on only claims 3 and 4. As noted by TCT, claim 3 refers to the hydraulic damper being housed “inside a sleeve”. TCT’s suggestion that “housed” is used in claim 3 as a verb is clearly correct, but the notion this somehow makes the nature of the “housing” in claim 6 unclear seems little more than a metaphysical abstraction. If an object is housed by a thing, then that thing is undoubtedly a housing – to entertain, particularly in the present context, the alternative is merely an apagoge that undermines TCT’s position. I am not satisfied that claim 6 lacks clarity.
Novelty
42. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
43. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:
“…if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee’s invention will not suffice.”
44. Of relevance to this decision, s7(1)(c) of the Act provides for prior art information for the purposes of “whole of contents” novelty by referring to subparagraph (b)(ii) of the definition of “prior art base” in Schedule 1 of the Act. This subparagraph provides criteria that determine whether a document may be used as prior art information for the purposes of whole of contents novelty as follows:
“(b) in relation to deciding whether an invention is or is not novel:
………
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published.”
45. With respect to “whole of contents” objections, it was noted by Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [178][16] (“Danisco”) that:
“A ‘whole of contents’ objection under s 7(1)(c) and paragraph (b)(ii) of the definition of ‘prior art base’ in the Dictionary in Schedule 1 to the Act attracts additional considerations. The usual rules as to clarity of disclosure to the skilled addressee apply but, in addition, it must be possible to draft a notional claim (assuming there is not an actual claim to the relevant subject matter) that is fairly based on the disclosure of the prior specification relied upon (E I Du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd (2005) 66 IPR 462 at [80]–[84] per Emmett J).”
[16]Undisturbed on appeal in Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417.
TCT’s novelty arguments
46. TCT’s novelty case is premised on AU 2020277205 A1 (“D1”) and CN 110259302 A (“D3”). D1 was published on 18 February 2021, but has an earliest priority date of 29 July 2019. D1 therefore nominally qualifies as prior art for the purposes of “whole of contents” novelty. D3 is the Chinese family member of D1, and a translation of this is in evidence as WSH-9. Whilst having the same priority date as D1, D3 was published on 20 September 2019, and therefore is prior art for novelty without any need for “whole of contents” considerations. Unsurprisingly, except for immaterial formatting differences, D1 and D3 are identical, and it is therefore somewhat unusual that TCT seeks to press both of these documents separately and to rely on D1 on a whole of contents basis when D3 alone would suffice. As the TS and TCT’s oral submissions at the hearing primarily proceeded by way of D1, I will consider D1 below for novelty purposes, on the understanding that my findings will equally apply to D3.
AU 2020277205 A1 – D1
47. D1 discloses a hinge. The embodiment of D1 most relevant for present purposes is illustrated in figures 1 and 2, reproduced below. As may be seen on these figures, the hinge is suitable for glass doors and comprises a hinge body 1 with first and second clamp plates 4, 5 which are able to clamp glass panels within the hinge via opposing plates, fasteners, gaskets and inserts - these last features are visible on figure 2, but are unlabelled. D1 also comprises a damping mechanism 3. As may be seen by reference to figures 2 and 5 and 6, also reproduced below, the damping mechanism 3 comprises a pair of hydraulic dampers 33 each with its own fixed pressure block 31 and movable pressure block 32 connected to respective ends of the hydraulic damper 33. Each movable pressure block 32 has a first inclined surface 34, whilst each fixed pressure block 31 has a second inclined surface 35. The hydraulic dampers 33 are respectively accommodated in first and second clamp plates 4, 5 and reside on respective damper bases 2, and are arranged parallel to the hinge axis.
48. As may be appreciated from figure 2, the hydraulic dampers 33 are arranged in the hinge in an opposed manner such that the first inclined surface 34 associated with one hydraulic damper 33 can abut the second inclined surface 35 associated with the other hydraulic damper 33 and vice versa. In use, each of the moveable pressure blocks 32 can displace along a line parallel to the hinge axis such that the first inclined surface 34 moves along the second inclined surface 35 of respective fixed pressure blocks 31 so as compress the hydraulic dampers 33 or allow them to extend, depending on the direction of movement. Although various modes of action between the inclined surfaces 34, 35 are discussed in D1,[17] it is clear that the hydraulic dampers 33 reach their maximum possible extension when the hinge is open and are progressively compressed as the hinge closes, the hinge being biased towards the closed position by torsion spring 63.
[17] For example, the inclined surfaces 34, 35 may always be in contact or may lose contact when the hinge is fully open and come into contact during the closing of the hinge; see D1 at [0050] and [0051].
49. The only feature of claim 1 in dispute between the parties, in terms of whether it is disclosed in D1 or not, is feature 1.11, discussed as feature 1(k) by the parties. I agree that D1 discloses all the other features of claim 1.
50. TCT[18] relied upon Mr Hunter’s evidence in support of its case that feature 1(k) is disclosed in D1. Specifically, TCT referred to [85] to [88] of Hunter1 and Mr Hunter’s annotated partial copy of figure 2 of D1. These are reproduced below:
“85. As can be seen in Fig. 2 and Fig. 5 of D1, the damper base 2 includes a rectangular cavity for accommodating the hydraulic damper 33 with the fixed pressure block 31 and movable pressure block 32 of the damping mechanism 3. As I have noted above, part of the damper base 2 forms an insert portion to be received in the edge recess of the glass panel. Fig. 2 of D1 shows bosses protruding from an underside of one of the two damper bases 2, which bosses will sit within the conventional rounded regions of the ‘mouse-eared’ shaped edge recess in the glass panel. This shape is also seen in the gaskets lying below the damper bases 2 in the exploded view of Fig. 2. On a close inspection of the drawings in D1, it is clear, however, that not all of the rectangular cavity accommodating the hydraulic damper 33 will, in use, sit within the edge recess of the glass panel - i.e., the rectangular cavity will not lie entirely within the plane of the glass panel.
86. To illustrate this point, an excerpt from Fig. 2 of D1 is reproduced below in Figure 9 of this declaration. As can be seen in Figure 9 below, the triangle-shaped and angled extensions are provided on flanges which extend from the sides of the rectangular cavity. As shown by the two red lines, the bottom of these flanges is set below the top of the rectangular cavity. In addition, the bottom of these flanges presents a surface against which the gasket (shown in green) bears when the hinge is assembled. That is, the gasket (in green) is sandwiched between these flanges of the damper base 2 and the outer face of the glass to protect the glass from excessive stress as the front and rear plates of the hinge clamp are tightened. The green line (i.e., below the two red lines) thus illustrates where the gasket would lie in relation to the rectangular cavity housing the damping mechanism 3.
87. It is therefore apparent from Fig. 2 of D1 that about two thirds of the cavity housing the damping mechanism 3 will lie within the edge recess of the glass panel, noted by marking ‘x’ in Figure 9 above. As the fixed pressure block 31 appears dimensioned to closely fit or match the rectangular cavity and the hydraulic damper 33 itself appears only marginally smaller than the fixed pressure block 31 which holds it, one can then appreciate that a considerable portion of the damper 33 will not be within a plane of the glass panel. The portion of the damper 33 which is outside the plane of the glass panel has been coloured in red and green to correspond with the red and green lines marked against the width of the rectangular cavity.
88. In my view, therefore, D1 discloses all the features 1(a) to 1(k) of claim 1. In this connection, I consider that feature 1(k) is satisfied because this feature does not require or specify that the entirety of the damper must be located outside of the planes which describe the faces of the glass panel and inside the first hinge member. This feature is therefore realised when at least part of the damper is located outside of the planes of the glass. As such, in my view, D1 discloses all the features of claim 1.” (emphasis in original)
[18] TS at [120] to [123].
51. A further reason TCT made in support of its views are that:[19]
“Mr Hunter interprets the language of integer 1(k) as requiring that only part of the damper be located outside of the planes of the glass panel. Mr Hunter holds this view because nothing in the claim requires or specifies that the entirety of the damper must be located outside of the planes describing the faces of the glass panel: Hunter 1, [88]. Consistently with this, Mr Hunter observes that having the ability to use a longer damper – being one of the professed advantages of the Opposed Application (see p 6, lines 28-29) – does not require that the entire damper be located outside of the panel at all. This is because, as Mr Murauer has himself observed, ‘if the dampener was mounted in the hinge in a vertical orientation, then this would also allow a longer dampener to be used’ (Murauer, [11]). In other words, it would be sufficient to simply change the dampener’s orientation (from that of the Polaris 120 as depicted in Annexure MM-1) to be parallel to the hinge axis. This is precisely the orientation of the dampeners shown in D1. Further, Mr Hunter observes that a damper need not be constrained in its length when part of the damper lies within the plane of the glass panel – i.e., when the damper lies only partly outside of the glass panel, as is apparent from D4 and D5. That is, it is not necessary for the damper to be located wholly or entirely outside of the glass panel in order to achieve a longer damper. (Hunter2, [11]).” (emphasis in original)
[19] TS at [123].
52. Mr Tsang essentially reiterated the same arguments at the hearing.
53. The Applicant contested TCT’s position in the ATS[20] by reference to the evidence of Mr Murauer and Mr Graham:
[20] ATS at [55] to [58].
“55. This view of Mr Hunter is contradicted in the declarations of Murauer[21] and Graham[22].
[21] Murauer1.
[22] Graham1.
56. In Murauer, at paras 21 and 22:
21. It does not make sense to me for something that is mostly ‘inside’ something to be considered to be ‘outside’ of it. That is not the normal meaning of the word ‘outside’.
22. Furthermore, the dampener in D1 is located inside the insert portion of the hinge which in use locates in the mouse-ear cutout in the glass. The dampener in D1 is therefore constrained in size because it must fit within the mouse-ear cut out in the glass. The definition in the claims of the Opposed Application that ‘damper is located outside of the planes which describe the faces of the glass panel’ was not intended to include arrangements like D1 and I believe this is clear from a reading of the specification of the Opposed Application.
57. In Graham, at paras 16 to 18:
16. The inventor has explained that by locating the dampener outside of the planes of the faces of the glass panel, that this allows use of a longer dampener. However, in D1, this is not the case. The length of the dampener is still constrained by being located within an insert component which in turn locates inside a cut out in the glass. I therefore do not think that the inventor intended the meaning of the phrase ‘located outside of the planes of the glass’ to encompass the arrangement seen in D1.
17. I do not think that the normal meaning of the word “outside” means only a small portion of something is outside. I also do not think that this is the intended meaning of the word in the context of the claims of the Opposed Application.
18. I do not think that feature 1(k) is seen in D1.
58. Applicant therefore rejects the complaint that claim 1, or any of the dependent claims, are not novel in light of D1. The same considerations apply to D3.” (emphasis in original)
54. Mr Wood-Roe essentially reiterated these arguments at the hearing but noted that the Applicant would not have a problem with further defining the claim to avoid the issue as raised by TCT.
55. It is perhaps helpful to reproduce the relevant passage from claim 1 the centre of the dispute:
“…the at least one damper is located outside of the planes which describe the faces of the glass panel…”
The Macquarie Dictionary Online, 2025, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd (the “Macquarie Dictionary”) defines “locate” as:
“verb (located, locating)
–verb (t) 1. to discover the place or location of: to locate a leak in a pipe.
2. to set, fix, or establish in a place, situation, or locality; place; settle: to locate one’s headquarters in Norfolk Island.
3. Australian History
a. to grant (land) to settlers: grants of 50 acres were located.
b. to establish (oneself, someone) in a place with a view to settling: they located themselves on undeveloped land.4. to refer (something), as by opinion or statement, to a particular place: locate the garden of Eden in Babylonia.
–verb (i) 5. to find a suitable location: the new Sydney airport must locate somewhere.”
56. For present purposes, the verb form of definition 2 is most appropriate. That is “located” as used in claim 1 refers to setting, fixing, situating, placing etc. the damper in a certain way. That “way”, of course, is “outside the planes which describe the faces of the glass panel”. As far as that goes, the Macquarie Dictionary defines the noun “outside” as:
“1. the outer side, surface, or part; the exterior.
2. the external aspect or appearance.
3. something merely external.
4. the space without or beyond an enclosure, boundary, etc.
5. seaward, beyond the point where the waves break.
6. Rugby Football
a. a back.
b. any player other than a forward.7. Colloquial the world outside prison.”
57. Definition 4 is most apposite for present purposes. That is the damper is set, fixed, placed, situated etc. without or beyond the planes which describe the faces of the glass panel. Applying this to Mr Hunter’s annotated copy of figure 2 of D1, it is difficult to see how the damper there, of which about two thirds to three quarters lies within the planes of glass panel, can be said to be set, fixed, placed, situated etc. without or beyond the planes which describe the faces of the glass panel. To use an agricultural analogy, one would not say that a cow which has stuck its head through a fence to avail itself of the grass growing on the other side is beyond the fence as such, even if part of it is.
58. Mr Hunter and TCT are correct in that the claim does not explicitly state that the entirety of the damper be located outside the planes concerned. However, that does not mean that any damper which has any part of itself located beyond the planes concerned can be considered to be located “outside” those planes as such – the claim language clearly adverts to a situation whereby the damper itself is actually located beyond the planes concerned. There may well be situations where part of a damper lies within the planes but one would still consider the damper itself to be beyond the planes – to use an agricultural analogy again, a cow that has escaped its fencing would be considered to be beyond that fencing even if it is standing adjacent to the fence with its tail within the fence boundary. However one wishes to put it, it is simply an unnatural distortion of the claim language to consider that the damper of D1 is located “outside” the planes describing the faces of the glass panel.
59. TCT’s argument, based on Mr Hunter’s views that one does not need to have the damper within the planes concerned to allow for a longer damper, is merely extraneous in constructional terms. The words of the claim are clear on their own terms and cannot be varied in view of whether one considers they achieve a certain purpose or are necessary for that purpose – such considerations are more relevant to matters of support, sufficiency, or utility.
Novelty – conclusion
60. On balance I am not satisfied that any of the claims lack novelty in view of D1 or D3. TCT has been unsuccessful in making out this ground of opposition.
Inventive step
61. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of 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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
62. Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140.
The approach to obviousness
63. In terms of inventive step, the TS did not explicitly put forward an approach to be taken. Rather, it seems TCT has identified the closest items of prior art to the invention as claimed and refers to the differences between these and the claims as being conventional, known in the art or obvious in view of Mr Hunter’s evidence.[23] At the hearing, Mr Gehrig framed the question of obviousness per one of the ways that Justice Nicholas outlined in Hood v Bush Pharmacy Pty Ltd [2020] FCA 1686; 158 IPR 229 (“Hood”) at [116] and references therein, as follows:
“Something may be ‘obvious’ in light of the common general knowledge, or the common general knowledge coupled with relevant s 7(3) information, if it is ‘plain or open to the eye or mind, something which is perfectly evident to the person thinking on the subject’ (Olin Mathieson Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157 at 188) or something which ‘would at once occur to anyone acquainted with the subject and desirous of accomplishing the end’ (Vickers, Sons & Co Ltd v Siddell (1890) 15 App Cas 496 at 502)”.
[23] For example, the TS at [136], [139] and [146].
64. Justice Nicholas[24] also identified other common ways of assessing obviousness, namely:
“An invention may also be obvious in light of the common general knowledge if the person skilled in the art faced with the same problem as the inventor 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 (Wellcome at 286 per Aickin J) or (using the language of the ‘modified Cripps question’) if the person skilled in the art would be directly led as a matter of course to take such steps in the expectation that doing so might well produce a useful or better alternative to the prior art (Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 at [50]-[53]). However, a claimed invention is not obvious merely because the person skilled in the art would consider that it was ‘worthwhile to try’.”
[24] Hood at [117].
65. The Applicant, in discussing inventive step in the ATS[25], refers to Hood[26] and later identifies the problem to be solved as improving damping performance[27]. At the hearing, Mr Wood-Roe referred, at various points, to the skilled addressee not being led as a matter of course or being led to solve a different problem instead of the problem referred to in the ATS.
[25] ATS at [59].
[26] Hood at [116] and [117].
[27] ATS at [82].
66. In terms of the problem-solution approach, I tend to agree with the Applicant, in that I consider the problem to be solved, if one were to frame the matter in those terms, is improving the damping performance of hinges used with glass panels having an edge recess. As I understand it from the TS and from Mr Gehrig at the hearing, TCT did not necessarily dispute the Applicant’s formulation of the problem. Rather, TCT took issue with the suggestion[28] that Mr Hunter had solved a problem that was not posed; Mr Gehrig argued that rather, Mr Hunter was considering what is plain or open to the mind of the skilled person.
[28] ATS at [82].
67. As apparent from Hood and references therein, there are a variety of ways of assessing inventive step, and one need not resort to a problem-solution approach as such. However, it will be the case, where an approach is properly and appropriately applied, one would expect that the outcome from each approach will yield the same result. It is not apparent to me that any of the approaches in the present matter would be inappropriate in some way. I will utilise the reformulated Cripps question as per Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411; 77 ALJR 398; 194 ALR 485; 56 IPR 129 (“Aktiebolaget”) at [53] as follows in assessing inventive step:
· Would the [skilled addressee] at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result].
The “useful desired result” in this case is improving the damping performance of hinges used with glass panels having an edge recess.
TCT’s inventive step case
68. Whilst US 2019/040667 A1 (“D7”) and US 2018/010376 A1 (“D8”) were particularised for the purposes of s7(3) in the SGP, TCT’s case has understandably shifted in view of amendments to the claimed invention. Ultimately lack of inventive step was pursued in the TS based on s7(3) with regard to D3 and D7. The shift in TCT’s case has led to a number of procedural issues that I will briefly consider before moving onto whether either of D3 or D7 deprive any of the claims of inventive step under s7(3).
69. In that regard, the position of D7 is somewhat unusual. While cited in the TCT SGP, the document was not filed with the SGP on 27 July 2022. This means that D7 was not covered by the Commissioner’s usual direction, made on 28 July 2022, making documents accompanying the TCT SGP part of the EIS. Whilst D7 was filed on 28 July 2022, this was after the aforementioned direction was made. D7 was not otherwise filed into evidence during the evidentiary stages of the opposition. The upshot is that D7, as best understood, is not actually in evidence and as per Coal Corporation of Victoria v David William Hinkley & Brian Alan Nugent [1993] APO 56, is not available to TCT in its opposition.
70. However, D7 was filed as part of the Reg 5.23 request. Consequently D7, if I were to accede to the Reg 5.23 request, would become available to me in deciding the TCT opposition, even if not still formally part of TCT’s opposition as such. As previously noted, the Reg 5.23 request also comprises Hunter3, which discusses the inventiveness, amongst other things, of the claims as amended in view of D3, D7 and D1”[29].
[29] As D1 has not been pressed by the Opponent in the TS or at the hearing for inventive step, I have given it no further consideration, though I could not anyway, since D1 does not form part of the prior art base for inventive step purposes.
71. Conversely, D3 was filed as EIS[30] and pressed for inventive step purposes in the TCT SGP. TCT does not need the Reg 5.23 request to introduce D3 into the opposition. However, as may be apparent, the attempted introduction of Hunter3 is (in part) sought by TCT to help establish that the claims as amended lack inventive step in view of D3.
[30] WSH-8 and WSH-9 (English translation).
D3 + CGK
72. The arguments presented in the TS[31] proceeded on the basis that feature 1(k) would be found absent in D1/D3. Moving the damper 33 outside the planes which describe the faces of the glass panel was said to be “natural and obvious” to allow the hinge to be used in a wider range of applications, for example solid panels[32]. Mr Gehrig made similar arguments at the hearing. These arguments are based on Hunter3 at [57], which is reproduced below:
“Considering the hinges shown in D3 for glass panels having an edge recess, and faced with the task of adapting those hinges to use with panels (glass or otherwise) not having an edge recess, it seems to me that it would be a natural and obvious consideration to displace the damping mechanism of those hinges laterally into the hinge member of the leaf assembly. This is because the damping mechanism of those hinges is designed to operate generally parallel to the plane of the panel. By displacing the damping mechanism laterally, not just the damper 33 but also the movable pressure block 32 and the fixed pressure block 34 can be moved entirely out of the plane of the panel, thereby enabling the panel to be solid. This could be expected to lead to some extra bulk or volume in the hinge member and could be expected to involve some tests or trials of a narrower profile damping mechanism, but the hinges would then be adapted to use in a much broader range of applications with basically the same damping mechanism as in D3.” (emphasis in original)
[31] TS at [143] to [149].
[32] TS at [146].
73. At least two problems for TCT’s case emerge from [57] of Hunter3. The first is that the modification posited by Mr Hunter changes the hinge in D3 from a hinge which “…is arranged to attach to a glass panel which is provided with an edge recess…” as recited in claim 1 to one which is attached to something that does not have such a recess. Mr Hunter does not indicate that a hinge so modified in the way he indicates would still be capable of being attached to a glass panel with an edge recess. It is a simple matter of logic that it would seem unlikely that that is the case with Mr Hunter’s “modified” hinge absent any evidence to the contrary. While essentially fatal to TCT’s arguments with respect to D3, this also undermines Mr Hunter’s evidence vis-à-vis D3 and inventive step, since it suggests that Mr Hunter simply concentrated on achieving an end result that provided the missing feature (i.e. 1(k)) thereby indicating that his evidence is confounded by ex post facto analysis.
74. A second issue is that Mr Hunter concedes that the changes he has outlined “…could be expected to involve some tests or trials of a narrower profile damping mechanism”[33], but he does not elaborate on the nature or degree of such experimentation. It could be simple or routine testing and experimentation or a major research project. The absence of elaboration on this undermines any ability to infer that claim 1 lacks an inventive step in view of D3.
[33] Hunter3 at [57].
75. I am not satisfied that any of the claims lack inventive step in view of D3.
D7 + CGK
76. Unsurprisingly D7 discloses a door hinge[34], which is best understood by reference to the figures, of which 1 to 3 and 7 are reproduced below. As may be seen from these figures, the hinge 10 comprises left and right leaves 34, 35 extending from respective parts of cylinder 36 that, when the hinge 10 is assembled, forms the barrel of hinge 10. As may be understood from figures 1 and 7, a number of components reside within cylinder 36. These include top cap 11, shaft casing 12, bearing ring 13, shaft sleeve 14, ring placement groove 15, ball bearing ring 16, O ring 17 and oil seal 18 that together define an upper rotatable assembly that allows the upper part of the hinge 10 to rotate between an open and closed position. Adjustment pin 19 threadedly engages rotation control mechanism 20 at its lower end, with its upper end being accessed via a hole in top cap 11. Rotation control mechanism 20 comprises a slot for housing pin 22 that engages spring 24 which biases the hinge to the closed position. Rotation of adjustment pin 19 thereby adjusts tension in the spring 24.
[34] See for example D7 at [0011] to [0013] and [0029].
77. Rotational control mechanism 20 comprises a ribbed portion 38 at its lower end which is complementarily received in the upper portion of control cylinder 26, such that the rotational control mechanism 20 and control cylinder 26 are fixed with respect to each other. A flat “D” shaped edge on the upper part of rotational control mechanism 20 engages a complementary flat section in the shaft casing 12 such that rotational control mechanism 20 is fixed with respect to, and rotates with, right leaf 35. Consequently, control cylinder 26 is also fixed with respect to right leaf 35
78. A leaf ring 21 separates the leaves 34, 35 and the upper and lower portions of the cylinder 36. The lower portion of the barrel/cylinder 36 comprises a hydraulic damper 39 housed within hydraulic cover 23. Hydraulic damper 39 includes control cylinder 26, control pin 28, outer casing 29, hydraulic pin 30 and bottom cap 31. Control cylinder 26 is positioned within outer casing 29 and has a pair of spiral slots 40. Control pin 28 is fixedly mounted with respect to outer casing 29 via being received within a hole therein. Control pin 28 is also received in spiral slots 40 and may also have a pair of sleeves 25 which act as ball bearings in the spiral slots 40. Outer casing 29, and thereby control pin 28, is fixed with respect to, and rotate with, left leaf 34.
79. Hydraulic pin 30 extends from base cap 31 with its upper end being operably connected to the control cylinder 26 via a plunger (not illustrated). The plunger and base cap 31 define a fluid chamber, thereby providing a means to apply a force against control cylinder 26, with the result that hydraulic damper 39 is operable to provide a force against spring 24. Hydraulic pin 30 is threaded, such that it can be axially translated via being rotated by a user through a hole in end cap 31. This allows a user to vary the hydraulic pressure of hydraulic damper 39 via raising/lowering the plunger and control cylinder 20 thereby increasing/decreasing the volume of the fluid chamber and so decreasing/increasing resistance to the hinge closing.
80. When hinge 10 is, for example, 90 degrees open (as seen on figure 2), control pin 28 is closer towards the lower part of slots 40[35] with the result that control cylinder 26 is in a higher position in the hinge barrel such that it compresses spring 24. This compression of spring 24 provides a biasing force to close the hinge, and in doing so movement of the right leaf 35 causes the control cylinder 26 to rotate in a downward direction, with control pin 28 moving upward in the spiral slots 40 until they reach the terminus of the spiral slots 40. At this point, which is associated with hinge being open by about 20 degrees[36], the hydraulic damper 39 applies a force against the spring 24 so as to slow the closing of the hinge 10 towards the closed position (as seen on figure 3). As may be seen from figure 7, the hinge 10 is capable, at least in some embodiments, of opening to around 180 degrees, and indeed this is apparent in D7 at [0028].
[35] That is, for example, the part of the slots 40 closer to the bottom of the page on figure 7.
[36] The degree of angular opening at which the damper 39 begins to operate is user adjustable, however the degree of user adjustability of these ranges is not clear in D7.
81. An obvious difference between D7 and the claimed invention is that D7 discloses a door hinge. In that regard, TCT considers that D7 does not disclose features 1.9 and 1.10,[37] based on Hunter3.[38] As I understand it, both parties do not disagree that these are the only differences between claim 1 and D7; that is, I took it that both parties otherwise accepted the presence of the remaining integers of claim 1 in D7. I agree with that position.
[37] Called features 1(h) to 1(j) by the Opponent
[38] TS at [135].
82. Unsurprisingly, TCT’s case that claim 1 lacks an inventive step in view of D7 is based on Hunter3:[39]
[39] TS [136] to [140].
“136. The difference between the hinge of D7 and the hinge defined in claim 1 of the Opposed Application relates to the hinge portions being designed for use with glass panels having an edge recess. That is, the hinge portions are designed for a glass panel to be clamped or sandwiched between the two parts of the hinge portion – namely, between a ‘hinge member’ and a ‘clamping member’ as they are denoted in the Opposed Application with an insert provided to sit snugly within the edge recess between those two parts of the hinge portion. This is a conventional hinge leaf configuration for glass panels having an edge recess and corresponds to integers 1(h) to 1(j) of claim 1: Hunter 3, [19].
137. As observed by Mr Hunter, glass panels are preferred for certain applications. Further, Mr Hunter noted that there were well-known engineering advantages associated with using glass panels with edge recesses, including ease of installation and alignment of the hinge assemblies, and less stress on the glass panel during the assembly and operation of the hinge by virtue of the recess: Hunter 3, [23].
138. Indeed, it is also apparent from the Opposed Application itself that hinges are designed for use with a range of different doors, gates, and panels. The Opposed Application at p9, lines 7-11 states:
Although the embodiment described above described the hinge in use with a glass pool fence, in other embodiments the hinge can be used with other types of glass panels, such as a glass shower screen door. For example, hinge 100 is designed to be surface mounted and used with fence or gate structures formed from extruded metal square sections or glass panels.
139. In addition to identifying a motivation for the ordinary skilled person to adapt the hinge portions or leaves 34, 35 of the hinge 10 of D7 for use with glass panels, Mr Hunter also observed that the design of such ‘hinge portions’ for glass panels with an edge recess was commonly known and understood by skilled persons in the field before May 2020: see Hunter 3, [12], [13], [22]. Further, Mr Hunter observed that it would not have required any inventive effort for a skilled person to adapt the leaves 34, 35 of the hinge in D7 to the alternative well-known design for glass panels having an edge recess in order to make that hinge suitable for use with those glass panels. See Hunter 3, [23].
140. For the above reasons, claim 1 of the Opposed Application lacks an inventive step in light of D7.”
83. The Applicant refuted the Opponent’s case with respect to claim in the ATS at [61] to [70]:
“61. The immediate difficulty which is apparent with the device of document D7 is that it is a door hinge, and not a gate hinge. At para 15 of Hunter 3, Mr Hunter states that ‘D7 describes a self-closing hinge for a door or gate’. But Mr Hunter is mistaken in this belief. We have word-searched D7 and at no point does it teach the use of its hinge on a gate. Mr Hunter appears to have inadvertently imported this purpose into D7.
Closed and Open positions are incompatible with pool gate usage
62. The relevance of D7 being a door hinge becomes apparent when one comes to consider how D7 operates between its open and closed conditions. Figures 2 and 3 of D7 are reproduced below. In the section ‘Description of the Drawings’ in D7 it is explained that Figure 2 shows the hinge in its open position, and Figure 3 shows the hinge in its closed condition.
63. In the closed position of figure 3, the two leaves 34, 35 of the hinge are in a close facing parallel relationship. In use, the leaves are affixed respectively to the edge of a door and the inside surface of a door frame using countersunk screws in the countersunk holes which are best seen in Figure 2 of D7.
64. The barrel of the hinge which joins the leaves will sit outside the joint between the door and the doorframe on the inwardly opening side of the door. This type of hinge mounting is commonly seen used with doorways inside buildings.
65. The closed and open positions of the hinge of D7 are completely different to those required for use in a pool gate hinge. Figure 3 of the present application is reproduced below. This image shows the hinge in its closed condition. As can be readily appreciated, in this position the two leaves of the hinge are pointing outwardly 180 degrees away from each other.
66. If the hinge of D7 were repurposed for use as a hinge in a pool gate then it would actually serve to bias the pool gate to a completely open position and would never return the pool gate to the closed position. This would not be a workable solution and would not even be contemplated by the skilled person.
67. There are additional countervailing issues which the skilled person would face if they tried to repurpose the hinge of D7.
Not intended for outdoor use
68. The hinge of D7 is for use on doors in internal applications. Even if mounted on the entrance door to a building, the damping and spring components of D7 are not exposed to the elements. The hinge of D7 does not need to withstand direct sunlight, rain, wind, frost and wide ranging temperature fluctuations. The skilled person would not adapt a hinge designed for internal use for external use. And if they did, this would introduce a significant burden of redesigning the assembly to withstand outdoor use.
Not intended for use with glass panels
69. At para 18 of Huner 3 [sic], Mr Hunter acknowledges that the hinge of D7 is not designed for use with glass panels having edge recesses. Mr Hunter asserts that the skilled person would find it obvious to modify the leaves 34, 35 of D7 for use with clamping members and using an insert portion. There is no reason provided by Mr Hunter for the motivation of the skilled person to do this. Mr Hunter only refers to this being a ‘conventional hinge leaf configuration’.
70. The relevant enquiry here then is would the skilled person be “directly lead as a matter of course” to redesign a hinge that does not bias or close to the correct positions, is not used with glass, and is not deigned [sic] for use on gates, to do all of these things. We believe the preferred finding is that they would not.” (emphasis in original)
84. Mr Gehrig made similar submissions at the hearing as in the TS, as well as addressing the ATS as it concerns D7. Similarly, Mr Wood-Roe largely reiterated the Applicant’s position in the ATS, as well as addressing Mr Gehrig’s further arguments.
85. As noted, TCT’s case concerning inventive step and D7 essentially rests on Hunter3. It is worthwhile considering some aspects of Hunter3 in rather more detail than has been considered by either party in their submissions. In that regard Hunter3 observes that:
“12. The prior art is replete with examples of generic hinges designed for use with glass panels having features 1(a) to 1(j). Examples are illustrated in documents D1 to D5 referenced in my first declaration and in Australian Patent Application No. 2017201858 referenced in the Annexure MM1 of the declaration of Mr Murauer dated 30 January 2023.
13. Where this type of generic hinge has a central barrel formed by the two ‘hinge portions’ for housing a spring as ‘biasing means’ for the self-closing action, the typical position of the barrel is illustrated in Fig. 1 of D3 and in Fig 1A of Annexure MM1, reproduced below:
”
86. This builds into the crux of Mr Hunter’s argument that it would be obvious to modify D7 to include features 1(h) to 1(j) in Hunter3:
“20. As is clear from the hinges in paragraphs 12 and 13 of this declaration, the hinge barrel of this arrangement is located offset from, or outside of, the planes of the glass panels. It is apparent, therefore, that simply adapting the leaves 34, 35 of the hinge described in D7 for use with glass panels having an edge recess (i.e., as described in paragraphs 12 and 13 of this declaration) would necessarily result in a hinge that has all the features 1(a) to 1(l) of claim 1 of the Amended Claims.[40]
21. This is the case because the Opposed Application specifies the barrel as part of the ‘hinge member’ (see p.4, 1.21-22). By arranging the linear damper within the barrel or cylinder 36, the damper will clearly be outside of the planes describing the faces of the glass panel and inside the first hinge member when the hinge is attached to a glass panel, as in feature 1 (k) of claim 1 of the Amended Claims. This is also the case because the hydraulic damper 39 is arranged in the barrel or cylinder 36 for movement in a direction which is substantially parallel to the hinge axis, as set out in feature 1(l) of claim 1 of the Amended Claims.
22. It is clear from the prior art, and also from the declaration of Mr Murauer referring to the fact that the Polaris 120 hinge was already ‘popular’ by 2019, that the design of hinge leaves or ‘hinge portions’ for glass panels with an edge recess (as described above in paragraphs 12 and 13 of this declaration) was commonly known and understood by skilled persons in the field before May 2020.
23. It is therefore my view that it would not have required any inventive effort for a skilled person to adapt the leaves 34, 35 of the hinge in D7 to the alternative well-known design for glass panels having an edge recess in order to make that hinge suitable for use with those glass panels. On the contrary, this would involve a straight-forward substitution of one well-known hinge leaf design for another. In this context, I note that glass panels are preferred for certain applications and that long before May 2020 there were well-known engineering advantages associated with using glass panels with edge recesses, including firstly ease of installation and alignment of hinge assemblies, secondly less stress on the glass panel during assembly and operation of the hinge by virtue of the recess.”
[40] That is, all the features of claim 1 as it currently stands.
87. Putting aside the CGK status of hinge leaves for glass panels with an edge recess, as asserted by Mr Hunter, I have several reservations about the line of reasoning adopted by Mr Hunter to arrive at claim 1 in view of D7. The first proceeds from the nature of the “conventional” hinge leaves for glass panels with an edge recess as identified by Mr Hunter at [12] and [13] of Hunter3. As apparent from the reproduction of figure 1 of D3 and 1A of MM-1, the hinge leaves of these documents cooperate to form the hinge barrel in a different way to that of the hinge of D7. As can be seen from figures 1 to 3 of D7, each hinge leaf 34, 35 comprises half of the barrel, with the left leaf 34 comprising the lower part of the barrel and the right leaf 35 comprising the upper half of the barrel. The upper and lower halves of the barrel appear as offset appendages to the comparatively thin, plate-like material that defines the remainder of each leaf 34, 35. The leaves 34, 35 are brought together to form the barrel with leaf ring 21 separating the upper and lower halves of the barrel.
88. In contrast, the hinge leaves of D3 and MM-1 comprise one leaf (for example item 22 of figure 1A of MM-1) having a comparatively long contiguous barrel portion, while the other leaf (for example item 32 of figure 1A of MM-1) has smaller upper- and lower-barrel portions such that this other leaf has a somewhat “u” shaped profile. In use the leaf with the contiguous barrel portion is slotted between the upper- and lower-barrel portions defining the arms of the “u” so that all the barrel portions cooperate to form a complete barrel. Consideration of D4 (see for example figure 2) and D5 (see for example figure 1) demonstrates the same type of barrel arrangement as per D3 and MM-1.[41] If, as asserted by Mr Hunter,[42] these represent the conventional hinge leaf configuration for glass panels having an edge recess, then it follows that design of these leaves is also “conventional” including the way in which they cooperate to form the barrel of the hinge. For convenience I will call these conventional hinge leaves for a glass panel with an edge recess the “conventional hinge leaves” and a hinge using these as the “conventional hinge”.
[41] I have not considered D1 or D2, as these are published too late for inventive step purposes, although D1 is redundant with respect to D3 anyway.
[42] Hunter3 at [19].
89. If the skilled addressee sought to simply keep the conventional hinge leaves as they stand, i.e. forming the barrel as they stand, then this would seem to be taking the conventional hinge leaves and modifying the internal barrel components of D7 so that they work with the barrel of the conventional hinge, noting the differences in the barrel between D7 and that formed by the conventional hinge leaves. Whether, or if, this would be straightforward is not immediately clear, particularly given, for example, the weight difference to be expected between a door comprising a glass panel and the doors that D7 appears to be made for. For example, would the arrangement of hydraulic damper 39 and spring 24 allow for sufficient forces for self-closing of a glass door without it slamming or taking too long to close? Are further modifications to the damping and/or self-closing mechanisms of D7 needed to achieve this for a glass door, particularly in view of the various considerations that go into the damping effect of a hydraulic damper as noted by Mr Hunter.[43] Are routine or complex changes and experimentation needed? Nothing in Mr Hunter’s evidence addresses these issues.
[43] Hunter1 at [47] and [48].
90. Alternatively, if the skilled addressee intended that the barrel style of D7 should be kept, but the leaves 34, 35 simply adapted to accommodate a glass panel with an edge recess, then further questions arise. In addition to the above issues concerning the hydraulic damper 39 and spring 24, a more fundamental question exists as to whether a skilled addressee would in fact abandon the “u” shaped barrel-forming arrangement of the conventional hinge for the upper and lower offset arrangement of D7. As noted, the fact that the conventional hinge has this “u” shaped arrangement for forming the barrel is highly suggestive that this is a desirable arrangement when applying hinges to glass panels with an edge recess. Again, the differences in weight between glass panels and doors seems highly relevant in this regard. Mr Hunter has not addressed whether this is the case, leaving one to wonder whether the skilled addressee simply would not adopt the barrel arrangement of D7 for glass panels with an edge recess due to some detriment in doing so.
91. Altogether, Mr Hunter’s conclusions of the obviousness of claim 1 in view of D7 appear rather peremptory and lack any material details concerning design issues that would be expected to arise in modifying D7 to work with glass panels with an edge recess. The lack of detail concerning these issues, whilst quickly arriving at the “missing” features of claim 1, where Mr Hunter already knew what those missing features were, smacks of ex post facto analysis.[44] All of this leaves significant doubt as to what the skilled addressee would do in modifying D7 when trying to improve the damping of a hinge for use with a glass panel comprising an edge recess, even assuming they set out to do so to begin with. On balance, I do not consider Hunter3 to provide a basis to conclude that claim 1 lacks an inventive step in view of D7 when combined with the CGK.
[44] Mr Hunter was provided with a copy of the amended claims and D7 before making Hunter3 – see Hunter3 at [4] and [5].
92. Turning to TCT’s arguments in support of obviousness in view of D7, even assuming that it is well known and desirable to use glass panels with an edge recess as part of a gate or door,[45] this is simply no answer to the matters discussed above. Similarly, the fact that the application indicates that its hinges may be used with other types of glass panels or other materials[46] does not mean that, somehow, the hinges of D7, which are for a door, would be necessarily understood as suitable in some way for glass panels with an edge recess as defined in claim 1. At the hearing, Mr Gehrig went to some lengths to note that claim 1 is simply a hinge with the claim being silent on the application of that hinge. These arguments were made by Mr Gehrig in the context of submissions made by the Applicant concerning alleged distinctions between gates and doors. On one level Mr Gehrig is correct – what the context of the end use of the hinge is not inherently important, but, again, this in no way addresses whether D7 would be modified by a skilled addressee in some way to be suitable for a glass panel with an edge recess.
[45] See TS at [137] and [139]. Mr Gehrig made similar arguments at the hearing.
[46] See TS at [138]. Mr Gehrig made similar arguments at the hearing.
93. I am not satisfied that any of the claims lack inventive step in view D7 when read with the CGK.
Conclusion on inventive step
94. I am not satisfied that any of the claims lack inventive step in view of either of D3 or D7 when read with the CGK. TCT has been unsuccessful in this ground of opposition.
Section 40(2)(a) – clear enough and complete enough disclosure
95. The requirement for clear enough and complete enough disclosure was introduced into the Act as part of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) reforms. Specifically, s40(2)(a) reads as follows:
“(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;…”
96. As indicated in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 (“Encompass”) at [167] the requirements of s40(2)(a) equate to enablement of the invention; I note that this was undisturbed in the appeal to Encompass in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161. As explained in the Explanatory Memorandum (“EM”) to the RTB legislation at item 8, enablement amounts to a requirement that “…sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”.
250. Noting the criteria for invoking Reg 5.23, as outlined earlier in the TCT opposition, it is necessary for me to understand whether introducing material from the TCT opposition will lead to grounds being made out in the opposition that would not otherwise be made out. Essentially, this boils down to two questions 1) will this in fact change the priority date of the claims such that Polaris’s document for inventive step (WO 2020/237303 A1 “D6”) becomes prior art for the purposes of s7(3) and 2) does D6 deprive any of the claims of inventive step?
251. With respect to the first question, it is reasonable to believe that the priority for each of the claims would not be valid in view of my findings on the multiple damper issue in the TCT opposition. However, that does not automatically mean D6 becomes relevant prior the entire scope of claim 1. As one can appreciate from s43(3), where a claim comprises more than one form of an invention, each of those forms must be treated as though they are separate claims for the purposes of determining a priority date. The fact that claim 1 recites “at least one hydraulic damper” in several places at least notionally raises the prospect of there being different alternatives or forms of the invention within claim 1, and therefore the possibility of different priority dates.
252. The issue of alternative forms was considered in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324; 312 ALR 1; 107 IPR 177 (“AstraZeneca”) at [250] and [251], and at some length in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 (“Nichia”) at [58] to [87]. Crucially, both these cases highlight the importance of understanding whether the claim concerned encompasses genuine alternatives or forms of an invention, or merely variants of an invention. It is helpful to reproduce [58] to [70] of Nichia, which also provides a useful overview of the position in AstraZeneca:
“58. The plurality in AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324 at [250] briefly discussed the history of s 43(3) of the Act and its predecessor provision in the Patents Act 1952 (Cth), noting that these provisions were included to overcome the ruling in Thornhill’s Application [1962] RPC 199.
59. In Thornhill’s Application, consideration was given to the drafting of the following claim. It should be noted that the indices (a), (b)(i), (b)(ii), (c) and (d) were added to the claim at the hearing before the Hearing Officer in that case to illustrate the argument made. The indices did not appear in the printed specification:
1. A method of producing a black tea concentrate (a) which consists in cutting, grinding, or otherwise finely dividing fresh green leaves of the tea tree, and (b) oxidising the comminuted particles either (i) by exposing the raw mass to the action of the oxygen of the air until the mass becomes dark brown in colour and subsequently extracting by boiling water or steam the water-soluble constituents of the leaves, or (ii) initially after comminuting the leaves extracting in the same way by percolation the soluble constituents of the leaves and introducing into the obtained solution a minute quantity of an oxidising inorganic substance, (c) subjecting the solution obtained in either way to heating in the open air at a temperature approaching the boiling point of water for a duration up to six hours until the required degree of oxidation is attained and until as a result of heating there occurs the polymerisation of the tannin compounds polyphenol and catechol with constituents of the solution and the solution has lost its bitter taste inherent in the solution of the constituents of the green tea leaf, and (d) evaporating excess water.
60. The Hearing Officer described the claim as follows:
It will be noted that claim 1 embodies two alternatives, i.e. it may be regarded as two claims 1A and 1B, wherein:—
1A = a + b(i) + c + d
and the method which may be represented as
1B = a + b(ii) + c + d
61. The Hearing Officer concluded that, as the claim could be regarded as two notional claims, each notional claim could be afforded its own priority date. However, on appeal, Lloyd-Jacob J concluded (at 207) that there was no provision in the Patents Act 1949 (UK) that would warrant the attribution of two different priority dates to different parts of the one claim.
62. In AstraZeneca, one of the claims in question (claim 1 of what was called the 842 or cation patent) was as follows:
1. A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that:
(i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and
(ii) the counter anion to the inorganic salt is not a phosphate.
63. At [251], the plurality concluded (Jessup J agreeing at [447]):
251 In our view, claim 1 of the 842 or cation patent does not define more than one form of the invention. Unlike the claim in issue in Thornhill’s Application, claim 1 of the 842 or cation patent does not by its terms allow for any alternatives or, adopting the language of s 43(3), different forms of the same invention. Claim 1 defines only one form of the invention even though there will be any number of potential variants that are within its scope. We do not think s 43(3) is intended to treat every potential variant of the defined invention as if it was a form of the invention that must be treated as a separate claim which is to be given its own priority date. Rather, it is intended to deal with very different situations such as that which arose in Thornhill’s Application or where, to take a slightly different example, a claim is dependent on one or more independent claims (claim 3 of the 842 or cation patent takes this form) each of which has a different priority date. We therefore reject AstraZeneca’s submission based upon s 43(3) of the Act.
(Emphasis in original.)
64. The corresponding provision in the United Kingdom is s 125 of the Patents Act 1977 (UK). Section 125 relevantly provides:
125 Extent of invention
(1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.
(2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above.
…
65. In Miller R, Burkill G, Birss C and Campbell D, Terrell on the Law of Patents (17th ed, Sweet and Maxwell, 2011), the authors state (at 7-12):
When can a claim have multiple priorities?
7-12 If a claim is drafted in such a way that it encompasses clear alternatives—for example, a claim which defines a chemical compound by reference to a structure which may take identified alternative forms—then attributing multiple priorities is unlikely to cause difficulty. In effect, the claim can be regarded as being made up of several discrete claims or—in the words of section 125(2) —as specifying more than one invention, each with a different priority date. However, it is difficult to see how a broad claim which does not set out alternatives as such could be regarded as specifying more than one invention, and it is hard to see how such a claim could allow for multiple priorities to be claimed. This is in line with the approach taken by the European Patent Office.
(Citations omitted.)
66. Section 125(2) of the Patents Act 1977 (UK) was considered in Hallen Company v Brabantia (UK) Ltd [1990] FSR 134. In that case, a particular claim (claim 9) claimed ‘an apparatus according to any preceding claim’. Aldous J construed the claim as being a number of discrete claims, and not a composite claim. At 140, Aldous J said:
The use of the words ‘apparatus according to any preceding claim’ is a shorthand way of writing out a large number of claims. For instance, if those words are used in claim 3 of a patent having three claims, what is being claimed, and claimed separately, is the combination of claims 1 and 3 and claims 1, 2 and 3. To hold to the contrary … would mean that the patentees in the future would have to write out each combination as a separate claim which would lead to even more claims in patents than there are now.
67. In Merck & Company (Macek’s) Patent [1967] RPC 157, Lloyd-Jacob J considered an allegation of prior claiming in relation to a number of claims in a granted patent, including the following:
1. A composition having enhanced bactericidal activity comprising novobiocin in combination with at least one other antibiotic selected from the following, namely, penicillin, tetracycline, oxytetracycline, chlortetracycline, streptomycin, chloramphenicol, bacitracin, neomycin, spiramycin, streptothricin and grisein.
68. As to the construction of this claim, Lloyd-Jacob J said:
The claim, it will be seen, is of the comprehensive type permitting of alternative additions to novobiocin, which alternative additions consist of one or more of the named antibiotics. It is a convenient summation of what is in effect a number of separate claims to different compositions of which some will relate to compositions having two ingredients and some to three or more ingredients.
The first notional rewriting of this claim to make plain this differentiation would be: (A) ‘A composition having enhanced bactericidal activity comprising novobiocin in combination with one other antibiotic selected from the following, namely, penicillin, tetracycline, oxytetracycline, chlortetracycline, streptomycin, chloramphenicol, bacitracin, neomycin, spiramycin, streptothricin and grisein.’ (B) ‘a composition…comprising novobiocin in combination with two or more antibiotics selected from the following, namely, penicillin, tetracycline, oxytetracycline, chlortetracycline, streptomycin, chloramphenicol, bacitracin, neomycin, spiramycin, streptothricin and grisein.’
Of these two notional divisions of claim 1 only ‘A’is relevant and this may be notionally further rewritten in the form of eleven independent claims in the form, (C) ‘A composition…comprising novobiocin in combination with penicillin’; (D) ‘A composition…comprising novobiocin in combination with tetracycline’; (E) ‘A composition…comprising novobiocin in combination with oxytetracycline’; (F) ‘A composition…comprising novobiocin in combination with chlortetracycline’; and so on through the list.
69. Although dealing with prior claiming, Merck provides guidance on how claims of the kind there under consideration are to be construed. The applicant placed reliance on Merck because the relevant claim had drafting similarities to claims 1 and 3 of the 355 specification in that each of these claims provides an explicit selection step leading to various combinations and hence various phosphors within the scope of the claim. The applicant submitted that if the claim in Merck was written out as described by Lloyd-Jacob J, it would comprise 2,047 claims.
70. The applicant also referred to ‘claim splitting’ cases where, in order to avoid the problem posed by Thornhill’s Application, amendments were sought to split a composite claim into various forms of the invention so as to render each as a separate claim with its own priority date. Farbenfabriken Bayer AG’s Patent [1966] RPC 278 and Anderson’s Application [1966] FSR 218 are two such examples. It is not necessary for me to refer to these cases in greater detail.”
253. It is also helpful to reproduce Justice Yates’s consideration in Nichia, as this helps illustrate the principles cited above and the differences between variations of an invention and different forms thereof:
“84. In AstraZeneca, the Full Court emphasised the terms in which the claim is drafted and directed attention to whether the claim, according to its terms, allows for alternatives.
85. Claim 1 and claim 3 of the 355 specification are cast in terms that are different to the claim considered in AstraZeneca. Claim 1 includes two discrete and express selection steps—one referable to the selection of the ‘large’ metal ions and the other referable to the selection of the ‘small’ metal ions in the fluorescent material—providing for differently constituted phosphors, depending on the selections made and the combinations arrived at.
86. Claim 3, although differently drafted, also contains discrete and express selection steps. Similarly to claim 1, there is a stated, but different, selection with respect to the ‘large’ metal ions in the fluorescent material. The constituents of this material are also determined by the selection of a value for r from the given range. The general formula in claim 3 also provides for a selection in relation to the ‘small’ metal ions of the fluorescent material by providing a range of values for s. These various selection steps combine to provide differently constituted phosphors.
87. I am satisfied that, by their terms, each of claims 1 and 3 of the 355 specification envisage and provide for different forms of the invention, as understood by s 43(3) of the Act. In each case, these forms are represented by the individual phosphors obtained after the selection steps have been undertaken.”
254. Given the principles that emerge from AstraZeneca and Nichia, I am of the view that claim 1 of the application comprises different alternatives or forms of the invention. Specifically, the use of “at least one hydraulic damper” leads to forms of the invention with only one damper and other forms with two or more dampers. It is also possible to further split two or more into only two dampers, only three dampers, only four dampers etc., each defining a distinct form of the invention. Although perhaps not necessarily relevant to the present issue, I observe that while the claim nominally includes the possibility of an infinite number of dampers, it is quite apparent that the skilled addressee would consider a number of dampers much less than the amount needed for a hinge to imitate a blackhole to be so silly as to be beyond the terms of the claim. In short, the alternatives or forms are countably non-infinite and probably much less than the 2047 claims referred to in Nichia.[111]
[111] At [69].
255. While there may be several forms of the invention within claim 1, for present purposes it is sufficient to consider these as two forms: hinges with only one damper and hinges with two or more dampers. As noted, I am satisfied that the disclosure of the PD with respect to dampers is materially the same as for the application. In view of my discussion of the multiple damper issue in the TCT opposition, it follows that there is no enabling disclosure in the PD with respect to hinges having more than one damper. This means a notional claim formed from claim 1 comprising only two or more dampers cannot claim priority from the PD, such that its priority date is the filing date of the application i.e. 10 May 2021. Conversely, there is an enabling disclosure in the PD for a notional claim that is restricted to only one damper, and thus this claim can take its priority from the PD i.e. 11 May 2020.
256. Consequently, even if I were to incorporate material from the TCT opposition to deal with the priority date issue, D6 cannot deprive a notional claim restricted to only one damper of inventive step, since D6 was published on 3 December 2020. Whether, or if, D6 may deprive a notional claim based on two or more dampers of inventive step is something I will consider below in connection with Polaris’s inventive step arguments. As will be seen, for completeness, my inventive step analysis will also extend to the case where there is only a single damper.
Inventive step
257. I have outlined the relevant principles concerning inventive step above in connection with the TCT opposition.[112] Other than some specific comments I will make below, I refer to those passages and do not see any need to repeat those here.
[112] At [61] to [67].
258. In terms of the approach, I note that Polaris adopted the test for obviousness[113] as per Aktiebolaget that I also adopted in the TCT opposition. The APS did not provide any submissions on the approach to be taken with respect to inventive step, nor was one provided by Mr Wood-Roe at the hearing. As noted above, I see no issue with also adopting the modified Cripps test for assessing inventive step in the Polaris opposition, particularly in view of the submissions provided by the parties.
[113] PS at [129]. I note that Polaris also cited Hood at [130] of the PS.
259. In terms of the “useful desired result”, I note that the APS did not provide any submissions on the problem to be solved or the useful desired result, nor did Mr Wood-Roe provide anything on these at the hearing. The PS does not specifically single out a problem or useful desired result, but refers to Mr Schroder identifying that:
“…D6 addressed the problem of the variability of the dampening characteristics of the damper by transferring the force to the damper quite early during the movement to the closed position and increasing the stroke length.”[114]
[114] PS at [143], referring to Schroder1 at [16].
260. The PS then refers to a “range of problems”[115] that Mr Schroder considers he would need to solve with respect to the hinge of D6, including:
“In my view, dust, dirt and the like which could be located between the cammed surfaces could introduce additional friction which could introduce variability in the movement of the hinge from the open position to the closed position.[116]”
[115] PS at [144].
[116] Schroder1 at [17], cited at [144] of the PS.
261. As I understand it, the problem, or the useful desired result, adopted by Polaris is to remove variability or inconsistencies in the damping characteristics of hinges. While not the “useful desired result” I have adopted in the TCT opposition, it clearly falls within the remit of improving the damping performance of hinges used with glass panels having an edge recess. That is the approach taken by Polaris is somewhat narrower than I took in the TCT opposition, which, if taken in this opposition, seems rather more detrimental to the Applicant than Polaris. In any case, while the application does refer to variability in damping characteristics, it also refers to achieving the desired damping characteristics, which is rather broader than simply the variability in damping per se. I am satisfied that it is appropriate to also adopt the “useful desired result” from the TCT opposition in the Polaris opposition as well, namely improving the damping performance of hinges used with glass panels having an edge recess. As will be seen, nothing turns on the precise formulation of the “useful desired result” in any case.
Polaris’s inventive step case
262. As noted, Polaris’s inventive step case is based on the application having a deferred priority date, thereby allowing D6 to become prior art for the purposes of inventive step. Polaris’s contentions on inventive step extend from [132] to [150] of the PS. Here Polaris asserts that claims 1 and 2 as they stand lack inventive step in view of D6 when read with the CGK, based on Mr Schroder’s evidence. At the hearing Ms McDonald was content to simply rely upon the PS.
D6 + CGK
263. D6 relates to a frameless glass hinge for a self-closing gate or door, including a swimming pool gate.[117] While D6 discloses a total of five hinge embodiments, for present purposes it is convenient to restrict discussion to the fourth embodiment. This embodiment is represented by figures 10 to 16, of which figure 10 is reproduced below.
[117] D6 at [0001].
264. As can be seen from figure 10, the frameless glass hinge 100 comprises first and second leaf assemblies 112, 114. Leaf assemblies 112, 114 have respective first and second knuckle bodies 120, 124 each with first and second cam surfaces 122, 126. Cam surfaces 122, 126 provide a cam formation 118. In use, when the hinge moves about the hinge axis, the cam formation 118 causes the second leaf assembly 114 to move axially upward along the hinge axis from a rest position, as shown in figure 12 to a biassed position as shown in figure 13. Both these figures are reproduced below.
a)
b)
265. As may also be seen on figures 12 and 13, the hinge 100 also includes a damping assembly 128 comprising a piston 130 fixed to first knuckle body 120. Although the means of operation are described in some detail in connection with the first embodiment [118], the hinge 100 comprises a seal (not shown) that acts as a high pressure seal to the damping chamber 132 when its volume is reduced but allows air to easily pass as the volume of the damping chamber 132 increases. In effect this results in the piston 130 compressing air inside damping chamber 132 when the hinge moves from the biased position to the rest position so as to provide a soft close action for the hinge 100. As should be apparent, the damper assembly 128 works on air compression, rather than hydraulics.
[118] See D6 at [0060] to [0066].
266. Damping assembly 128 also includes a pair of biassing springs 133 housed in damper slots 135 of piston 130. These exert an upward force on the contact position between the cam surfaces 122, 126, thereby creating friction between these surfaces as the first and second leaf assembles 112, 114 undergo relative pivotal movement. When the hinge 100 is near to closing or moving slowly, the biasing springs 133 are arranged so as to not to induce friction between cam surfaces 122, 126 so as to allow the gate to close.
267. Figure 16, reproduced below, shows an exploded view of hinge 100. As can be seen from this figure, the piston 130 and biassing springs 133 are located along the axis of the hinge. With respect to the second lead assembly 114, the glass panel (not shown) is sandwiched between clamping cover plate 156, clamping plate 154 and clamping plate gasket 158 on one side and side gasket 150 on the other, with side gasket 150 adjoining the body of the second leaf assembly 114. Bolts of the clamping plate 154 (not labelled) pass through clamping plate gasket 158, bushes 143, glass panel, holes in the second leaf assembly 114 and clamping washer 160 so as to ultimately fix the glass panel in place by tightening clamp fasteners 164 on the bolts of the clamping plate 154. It can be seen by this arrangement that the damping assembly 128 is located outside of the planes which describe the faces of the glass panel and inside the second knuckle body 124 of the second leaf assembly 124. It is apparent that an identical arrangement secures a glass panel to the first leaf assembly 112, with the same relative disposition of the damping assembly with respect the glass panel and the first knuckle body 120.
268. Polaris’s inventive step case relies upon combining D6 with the CGK,[119] with the CGK in question said to be the Polaris 120 hinge, as outlined in AU 201701858 A1.[120] While this document does not appear anywhere in Polaris’s evidence, it does appear as annexure MM-1 to Mr Murauer’s declaration but is not particularised in any way in the SGP. It is well understood that an opponent’s case is constrained to what is in the SGP, and any evidence not encompassed by the SGP cannot form part of an opponent’s case. It follows that Polaris’s inventive step case has suffered a fatality on procedural grounds.
[119] PS at [143] to [150].
[120] PS at [136] to [142].
269. However, it is possible for me to determine whether the claims lack inventive step in view of D6 via using the Commissioner’s powers under 60(3) – I note that Reg 5.23 is not available for D6, since it has been filed as evidence and therefore fails the criteria to enliven Reg 5.23 as specified at Reg 5.23(1)(b). Be that as it may, whether I should exercise any power under s60(3) in connection with D6 is, in my view, rather similar in these circumstances as if one were to actually utilise Reg 5.23. This essentially boils down to whether MM-1 is likely to make out a ground of opposition that would not otherwise be made out. Consequently, I will consider Polaris’s inventive step case in view of D6 and MM-1 for the purposes of determining whether I should exercise the Commissioner’s powers under s60(3).
270. Turning to the inventive step case in more detail, as I understand it, the parties agree that D6 discloses all the integers of claim 1, except 1.4, 1.6 and 1.7.[121] After considering the disclosure of D6, I agree with that assessment.
[121] See PS at [140]. The APS, at [51] to [59] does not dispute that these are the absent features but rather concentrates on how the skilled addressee would not modify D6 to arrive at the invention of claim 1. Similar submissions were made by Mr Wood-Roe at the hearing.
271. The only evidence that Polaris relies upon for MM-1 being CGK is this from [3] of Mr Murauer’s declaration, cited at [136] of the PS:
“In around the year 2019, a popular soft close hinge on the market was the Polaris 120 hinge. I refer to the document attached as annexure MM-1. This document is published Australian Patent Application No. 2017201858A1 and I recognise the hinge described in the application to be the Polaris 120. I devised the invention specifically to improve upon this hinge.” (emphasis added)
272. It is not clear to me that a hinge being merely “popular” means that its technical features, as appreciated by a skilled addressee, have been assimilated into the CGK. At best, popularity is suggestive that something might have become CGK. The Applicant also disputed that MM-1 was CGK at [50] of the APS. It is true that Mr Schroder does in fact state, at [9] of Schroder2, that the Polaris 120 hinge was “well-known”, but, again’ this seems to be a statement of popularity as opposed to CGK.[122] On balance, I do not consider that MM-1 was CGK in view of the evidence before me. This is yet another point that is fatal to Polaris’s inventive step case (and whether I should exercise any power under s60(3) or Reg 5.23, as the case may be).
[122] To the extent Mr Schroder’s evidence here could be taken to help establish MM-1 as being CGK, this aspect of his evidence is, in my view, not properly in reply.
273. In any event, even if I assume that MM-1 was CGK, it, ultimately, does not assist Polaris’s position.. Polaris looks to MM-1 to provide the missing integers 1.4, 1.6 and 1.7, as apparent from this table presented at [140] of the PS:
274. I agree that MM-1 discloses the features concerned as per Polaris’s table. Polaris’s arguments,[123] are essentially premised on Schroder2 at [6], though in my view, one should consider [6] to [9] of Schroder2, reproduced below:
[123] At [145] to [150] of the PS.
“6. I was asked what changes, if any, I would make to the proposed embodiments of D6 to address the problem of ‘consistent closing action’. In my view, a hydraulic dampening system is far superior to an air dampened system at the magnitude of forces being experienced in heavy glass gates. The lower dampening force provided by an air dampener would have to be coupled with a very strong resistive spring which would make it much more difficult to adjust the tension of the closing spring such that the hinge reliably and quickly closes in the installed environment. Additionally, the strong resistive spring would cause oscillations about the end point which would further negatively impact the hinge’s ability to consistently close. It is preferable to have stronger damping forces such that a stronger closing action can be provided, and adjusted. It would be relatively straightforward to simply replace the air restriction of D6 with a hydraulic restriction and use the damping assembly of D6 as a hydraulic damping assembly.
7. Lastly, in my view the invention claimed in the Opposed Application is generally related to the position and orientation of the dampener. The type of dampener, in the context of the Opposed Application, seems to me to be a minor design choice rather than an essential integer to achieve the effects claimed by the Opposed Application.
The Graham Declaration
8. The Graham Declaration seems to be mostly in support of the statement that D6 does not disclose a hydraulic dampener. I refer to [5]-[7] of this declaration in response to those statements.
9. The Graham declaration states that a gasket would be required at the top of chamber 70. One embodiment of D6, disclosed at [0075] of D6, specifically contemplates the addition of such a gasket in the form of O-ring 202. The O-ring 202 is mounted to form part of the damping assembly so that compressed air will provide friction to facilitate additional gate slowing properties. I note in this regard, that the manufacture or properties of the hydraulic dampener of the Opposed Application are not discussed and assume therefore that they are off-the-shelf components. Thus, as stated at [6] in this declaration, I would consider it a simple change of shelf-ready components to replace the air dampeners of D6 with hydraulic dampeners as used in the well-known Polaris 120 hinge, or the hinge described in the Opposed Application.”
275. There are number of issues with Mr Schroder’s evidence concerning inventive step and Polaris’s case based on the same. Firstly, I find parts of Mr Schroder’s evidence here to be inherently contradictory. Mr Schroder suggests that a hydraulic damper is superior to air dampeners for heavy glass gates[124] but in the next paragraph[125] suggests that the type of dampener in the context of the application is a minor design choice. It is worth noting that claim 1 explicitly defines attaching the hinge to a glass panel, and this would seem to be context that Mr Schroder overlooked in providing his evidence, perhaps similar to how Mr Schroder assumed in his first declaration[126] that the second embodiment of D6 comprised a hydraulic damper when that is not the case. Either way, this apparent contradiction means I cannot be satisfied that the skilled addressee would in fact replace the air dampener of D6 with a hydraulic damper as asserted by Polaris. If anything, it tends to suggest that Mr Schroder was seeking to discredit the inventiveness of claim 1, rather than providing careful and objective evidence relevant to the matter at hand.
[124] Schroder2 at [6].
[125] Schroder2 at [7].
[126] See Schroder1 at [15], Murauer2 at [18] and [19] and Schroder2 at [5].
276. This impression is further enhanced by the fact that D6, as best understood, has deliberately opted for an air dampener over a hydraulic damper:
“It is desirable that self-closing hinges include a soft-close assembly to ensure the long-term reliability of such hinges. This is particularly desirable in frameless glass fencing installations as such hinges will lower impact forces when the gate is closed to avoid damage to glass panels. Existing hinges with an inbuilt soft-close assembly, however, suffer from various drawbacks which often result in premature failure. For example, self-close hinge assemblies which employ a spring mechanism often fail due to corrosion or fatigue. Hydraulically actuated self-close hinges, in turn, are prone to failure resulting from hydraulic fluid leakage. Other self-close assemblies are prone to failure as a result of continued exposure to environmental factors such as sunshine and rain.[127] (emphasis added)
[127] D6 at [0004].
277. D6 outlines, in some detail, how an air bleed assembly is used to provide a soft close function.[128] D6 also refers to the air damper as “enabling operative soft closure of the embodiment [sic] frameless glass fencing hinge 10”[129], that “[t]his feature provides a preferred soft-closing action”[130] and “[o]nce a person has opened such gate and released their hold on the gate, the gate will close under the influence of gravity to provide self-closure. The damping assembly 28, in turn, will then operate to arrest movement of the gate during closing to enable soft closure.”[131] Despite this, Mr Schroder does not explain in any detail why D6 would fail to achieve soft closing. In this light, Mr Schroder appears to make a glib assumption that, as, in his view, hydraulic dampers provide superior damping performance in the context of glass panels compared to air dampeners, the skilled addressee would simply swap out the air dampener in D6 for a hydraulic dampener.
[128] D6 at [0060] to [0066].
[129] D6 at [0061].
[130] D6 at [0063].
[131] D6 at [66].
278. Similar may be said regarding Mr Schroder’s comments at [6] of Schroder2 concerning the air dampener needing to be coupled with a very strong resistive spring, which, Mr Schroder stated, would cause oscillations about the closing point. This part of Mr Schroder’s evidence seems to overlook that the biassing springs in D6 operate in a completely different and, if anything, opposite manner to typical biassing springs that bias the hinge towards the closed position. The biassing springs in D6 operate to provide friction about a cam that in fact resists closing until near to the closing point when they are arranged to reduce that friction. In giving his evidence, Mr Schroder appears to have overlooked what the biassing springs of D6 actually do, and instead assumed that these are biasing springs that bias the hinge towards the closed position. Indeed, in view of how the hinge of D6 operates, it is hard to see how one would either actually change the biasing springs to bias the hinge of D6 to a closed position, or add such springs to the existing biasing springs of D6. All of this further undermines Mr Schroder’s contention that a skilled addressee would replace the air dampener of D6 with a hydraulic damper.
279. Putting the preceding passages together, it is apparent that Mr Schroder’s proposed changes to D6 are not so much modifications as a radical change of the hinge of D6 into something substantially different from what is described. As explained above, Mr Schroder’s reasons for affecting this radical change appears to reside on assumptions that overlook the disclosure of D6 per se, putting aside any inconsistencies in Mr Schroder’s evidence. I fail to see how the changes suggested by Mr Schroder would be relatively straightforward. It follows that, putting aside any procedural difficulties, Polaris would not have been successful in establishing that any of the claims lack inventive step in light of D6. In particular, this applies to all forms of the invention encompassed within claim 1.
Conclusion on priority, inventive step and Reg 5.23 or s60(3)
280. I am satisfied that Polaris would be unsuccessful in establishing the obviousness of any of the claims if I were to arrive at a “deferred” priority date by incorporating material from the TCT opposition under Reg 5.23. It follows that I do not see any need to exercise Reg 5.23 with respect to any material from the TCT opposition, nor do I see any need to exercise s60(3) in connection with MM-1.
Conclusion for the Polaris opposition
281. Polaris’s opposition is unsuccessful. None of the grounds pursued by Polaris have been made out. Subject to final determination concerning the TCT opposition, I direct the application proceed to grant.
Costs for the Polaris opposition
282. Costs usually follow the event. I see no reason to do otherwise in the Polaris opposition. I award costs against Polaris IP Pty Ltd according to Schedule 8 of the Regulations.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Claims of the 2021271942 Application.
0
19
0