R.D. Werner Company Inc. v Bailey Aluminium Products Pty Ltd

[1987] FCA 356

NOT FOR DISTRIBUTION

a

J	r.
IN THE FEDERAL COURT OF AUSTRALIA )
VICTORIA D STRICT REGISTRY ) V. No. G 91 of 1987

)

GENERAL DIVISION )

R. D. WERNER CO. Applicant INC.

and

BAILEY ALUMINIUM PRODUCTS PTY. LTD. Respondent

COURT: NORTHROP J.

U: 18 MAY 1987

PLACE: MELBOURNE

M TEMPORE REASONS FOR JWMENT

I should indicate at the very beginning that I

propose to give leave to appeal in this case.

The applicant makes this application for leave to appeal from the judgment given by King J. in the Supreme

Court of Victoria on 2 April 1987. The application is

Australia Act 1976 and pursuant to Order 52 of the Federal brought pursuant to sub-section 2 5 ( 2 ) of the Federal Court of application before the Court constituted by a a Full Court.

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Under sub-section 148(2) of the Patents Act 1952,

where a ~udgment or order of a prescribed Court, and here the

Supreme Court 1s a prescribed Court, appealed from was pronounced or made in the exerclse of its ~urisdiction to hear and determine appeals from declsions or directions of the Commissioner of Patents, an appeal to the Federal Court of Australia does not lie without leave of the Federal Court. In the present case, the proceedings before King J. were in

the nature of an appeal from a decision of a delegate of the

Commissioner dated 5 July 1984 to the effect that the opposltion lodged by the present applicant, R.D. Werner Co. Inc., against the grant of a standard patent to Ealley

Aluminium Products Pty. Ltd., on the letters patent

application no. 517200 be dismissed. The Supreme Court

dismissed that appeal and it is from that order of the

Supreme Court that the present application 1s made.

Using the language of the patents ~urlsdiction, the

proceedings before King J. were oppositlon proceedings based upon sub-section 59(1) of the Patents Act and a number of grounds of opposition were stated, including grounds (g) and

(h); (g) being that the invention, so far as claimed in any

claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim, and (h) being that the invention, so far as claimed in any clam, was, before

the priority	date	of that claim, otherwise not novel	In
Australia.

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During the hearing of the application, reference

was made also to paragraph (1). namely, that the complete

specificatlon does not comply wlth the requlrements of s . 4 0 ,

but for the purposes of this applicatlon I do not propose to

consider that matter any further. I merely mention it to

note that lt was raised and argued. It should be noted

further that under s.148 of the Patents Act, an appeal lies

to the Federal Court of Australia from a ~udgment or order of

a prescribed Court exerclslng ~urlsdlctlon under the Act.

The prescribed Court, in this case would be the Supreme	Court
of Victoria.

Under 3.99 of the Patents Act, any person may present a petition to a prescribed Court for the revocation

of a patent and 6.100 specifies the grounds of revocation.

Paragraph lOO(l)(g) is equivalent to paragraph 59(l)(h), namely, that the invention, so far as claimed in any claim of the complete specification, or in the claim of the petty patent speclfication, as the case may be, was not novel in

Australia on the priority date of that claim.

The patent application relates to a mechanism by

which rungs of metal, normally aluminium, ladders are swaged

to secure them to the uprights of the ladder. There is in

existence a specification for a simllar type of mechanism

held by the applicant where the mechanism operates in such a way that of the two arms of the mechanlsm, only one arm moves

and that arm also moves the ladder parts so as to bring the

two parts of the mechanism against each other under pressure

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to enable the swaglng to occur at the same tlme on each slde

of the ladder. The patent, the sublect of the present

application, dlffers from that In that the two arms of the

mechanism work or move but the ladder remalns substantially

stable.

I do not propose to go through the whole question

of the legal principles involved, but the Federal Court in a

number of decisions has expressed principles to be applied in

considering applications for leave to appeal. Most of these cases relate to leave to appeal from decisions of Supreme

Courts under the Income Tax Assessment Act 1936 (Cth), and

for present purposes I refer to Federal Commissioner of

Taxation v. Forsvth (1979) 37 F.L.R. 430. In that case

reference is made to two	earlier cases, namely, Lombardo v.
Federal Cornmissioner of	Taxation (1979) 9 A.T.R. 550 per

Toohey J. and Federal Commissioner	of Taxation v.
(1979) 37 F.L.R. 135.

Those cases refer to the difficulty of a single

Judge of this Court exercising power in such a way as to

express an opinion as to the correctness or otherwise of a

decision of a Judge of a Supreme Court when considering

whether leave to appeal should be granted. In Federal

Commissioner of Taxation v. Forsvth, I made reference to that

fact and referred to the other authorities at p.432. The

same difficulty arises in the present case and it 1s not

appropriate that I should express any views a5 to the

correctness or otherwise of the ~udgment of King J..

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I am satisfied on the materlal before the Court

that the appeal 1s genulne and that there 1s a substantial or real question to be raised on the appeal. This substantial

or real question relates to the proper construction to be

given to the provisions of 6.59 of the Patents Act,

particularly the two paragraphs I referred to earlier, and

expressions of opinion both in the High Court, in the Federal

Court of Australia in Dennison Manufacturinu Co. v. Monarch

Markinu Systems Inc. (1983) 66 A.L.R. 265, and in the Supreme

Court of New South Wales in Windsurfincr International Inc. v.

Petit 3 I.P.R. 449. It also involves a consideration and

application of a number of principles expressed in the High Court, for instance, in Griffin v. Isaacs (1942) 12 Official

Journal of Patents Trade Marks and Designs 739, Hume Pipe

Companv (Australia) Ltd. v. Monier Industries Ltd. (1943) 13

Official Journal of Patents Trade Marks and Deslgns 575 and

the more recent decision of the High Court in Minnesota

Mininu and Manufacturinq Company v. Beiersdorf (Australia)

N. (1980) 144 C.L.R. 253. It is not for me to attempt to

analyse those various expressions of opinion or how they are

to be applied to the facts of this case. That will be a

matter for the Full Court to determine. It is sufficient for

me to say that, in my opinion, the appeal does give	rise to a
consideration of these questions of law.

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t

It was argued against the granting of leave that

the ludgment under appeal should not be considered as a final

]udgment in that the present applicant could bring

proceedings under s.99 of the Patents Act where the very same

issues could be raised in the hearing before the Supreme

Court. If those proceedings failed, that would be a final

decision and the applicant would then have an appeal as of

right to this Court. It seems to me that that argument

should not be accepted in this case for a number of reasons. First, the granting of a patent itself, although it does not

prevent other proceedings being taken under s.99, does glve

rise to a position where the public generally can perceive

the xistence of the patent which, accordlng to the

submissions of the applicant, has some taint of incorrectness about it, and it would be unsafe to allow that patent to

remain in existence when it is subject to attack under 5.99,

particularly when the applicant, by being forced to go

through other proceedings to raise the very same issue, could

bring the matter before the Full Court but only after the

expenditure of a large amount of money. It seems to me in

these circumstances that the Court should have regard to the

fact that the questions raised here should be determined by a

Full Court without forcing the applicant to go through the

charade of other proceedings under the Patents Act.

Having decided, as I have, that this is a genuine

appeal which raises for determination serious questions of

law, it seems to me that leave should be granted. This is a

case where there is no question of the credibility of

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L

witnesses to be declded by the Court. The facts have been

found and the issue 1s the application of the law to those

facts. The real nub of the questlon is set out at pp.17-18

of the judgment of K m g J.. At p.18 he says:-

"The above differences in mechanical operation of the pieces of apparatus under consideration stem from Greenman describing apparatus with one movable

connection forming assembly and Claim 1 describing apparatus with two such assemblies. I think that they confirm the view which I had already formed

that prior publication of the Greenman apparatus

did not clearly disclose a workshop variation or a

mechanical equivalent of the invention claimed in

Claim 1 of the specificatlon in suit."

That paragraph refers to phrases which have been

used in other cases but his Honour did not refer Specifically to the provisions of the Act itself. He adopted glosses on

those sections and then decided the case by reference to

those glosses, and it is because of this that counsel for the

appllcant has made an attack on the reasons for ~udgment of

King J.. I express no views on that but, In my view, that

does support clearly the fact that here there are substantial

questions to be raised on the appeal.

On an appeal of this kind, the Full Court 1s able

to draw inferences from the undisputed facts found by the

trial Judge, and such application and inferences are equally

questions of law as well as the correct construction and

appllcation of 6.59 of the Patents Act. They all give rise to, on the facts of this case, substantial or real questions

to be answered on the appeal, and accordingly, leave to

appeal is granted.

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.

I certlfy that the seven (7) precedlng pages are a true copy of the Reasons f o r Judgment hereln of the Honourable

Mr. Justlce R.M. Northrop.

Associate	. .	.<l.&TiL. :F.	.,LAi4?. . .
18 May 1987