Razmik Abnoos v CSR Building Products Limited

[2009] APO 7

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 2007264407 in the name of CSR BUILDING PRODUCTS LIMITED

Title:          Interleave Assembly and Method for Manufacturing Fibre Cement Panels

Action: Requests under sections 32 and 36 of the Patents Act

by RAZMIK ABNOOS

Decision:          Issued  20 April 2009

Abstract

The applicant did not dispute that the requestor independently arrived at the invention and disclosed it to them in December 2005, but contended that the invention had by that time already been conceived by the named inventor.

The evidence, although problematic, was sufficiently persuasive in establishing that the invention was embodied in a drawing when first created by the named inventor in October 2005.  The requestor’s claim to inventorship was therefore unsuccessful.   

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.2007264407 in the name of CSR Building Products Limited, and requests under sections 32 and 36 of the Patents Act by Razmik Abnoos

BACKGROUND

1. Patent application 2007264407 (the present application) was filed on 28 June 2007 by CSR Building Products Limited (CSR) under the provisions of the Patent Cooperation Treaty claiming priority from provisional application 2006903538 (the provisional application) filed on 29 June 2006.  The present application names Peter Levander as the sole inventor.

2. On 27 November 2006, requests under sections 32 and 36 of the Act were filed by Raznik Abnoos claiming entitlement in respect of the provisional application. Mr Abnoos filed evidence in support of his claim to entitlement on 4 April 2007. On 11 April 2007, CSR were provided with a copy of the evidence in support and given until 4 June 2007 to complete their evidence in response. CSR were granted five extensions of this deadline without objection during which time they filed part evidence in response on 8 October and 5 November 2007. On 4 December 2007, CSR requested a further extension of time to 4 January 2008. This extension was opposed by Mr Abnoos, and the matter was set for hearing on 15 January 2008. On 4 January 2008, CSR requested another extension of time to 4 February 2008. The Office advised the parties that the further request for an extension of time would also be considered at the hearing on 15 January 2008.

3. In the event, the delegate did not grant either extension of time sought by CSR, but allowed them seven days from the date of his decision to file any evidence they had at hand (see Razmik Abnoos v CSR Building Products Limited [2008] APO 5). On 31 January 2008, CSR advised that they did not wish to serve any further evidence in response.

4. The legality of the requests under sections 32 and 36 was called into question consequent upon the lapsing of the provisional application pursuant to section 142(1) of the Act. This precipitated the filing of fresh requests under sections 32 and 36 on 22 January 2008 in which Mr Abnoos asked that CSR’s international application PCT/AU2007/000898 (the international application) be made subject of the existing proceedings.  As foreshadowed by the Office on 20 November 2007, the proceedings continued in respect of the national application arising from the designation of Australia in the international application, viz. the present application.

5. The section 32 and 36 requests were heard concurrently in Sydney on 29 January 2009. Mr Abnoos was represented by Mr Anthony Franklin of counsel assisted by Mr Leonard Mancini of Peter Maxwell and Associates. CSR were represented by Mr Christian Dimitriadis of counsel assisted by Mr Lachlan Mullane of Hodgkinson McInnes Patents. Mr Bill Thompson of CSR and Mr Abnoos were also present as observers. Both parties filed useful written submissions prior to the hearing.

   THE SPECIFICATION    

6. The specification filed in respect of the present application indicates that the invention relates to an interleaving element, and an interleave assembly made up from a multiplicity of such elements, which can be used in the manufacture of fibre-cement panels.

7. The specification explains that during the manufacture of fibre-cement panels, it is common to place a number of stacks of panels into an autoclave for curing.  To ensure that all fibre-cement panels within each stack are properly cured, spacers or “interleaves” are positioned between adjacent stacks to assist with the penetration of heat and steam in the autoclave around and among the fibre-cement panels, particularly those that are near the centre of the stacks.

8. The interleaves are typically made from segments taken from the fibre-cement panels themselves, but the use of fibre-cement interleaves is inefficient and potentially dangerous.  On the other hand, interleaves made from stainless-steel, while more durable than fibre-cement interleaves, are difficult and expensive to produce.

9. The invention seeks to ameliorate these drawbacks or to offer a useful alternative.

10. The specification summarises the invention in language which corresponds to that of claim 1.  According to the specification, the invention resides in an interleaving element having a profile of constant cross-section extending in the direction of a first axis and a substantially void interior.  The interleaving element is comprised of opposed first and second panel members interconnected by opposed side wall members which are provided with engagement means adapted to allow the interleaving element to be removably connected to at least one like element.   

11. The specification next describes various embodiments of the invention with reference to a set of drawings.  In these the engagement means of one of the side wall members is male and the engagement means of the other of the side wall members is female such that the interleaving element is adapted to be slidably engaged with an adjacent like element.  The male and female engagement means may take the form of tongue and groove joins, mortise and tenon type joins, lap joins or dovetail joins.  Each of the engagement means may have a notch formed therein so that on engagement of like interleaving elements, an aperture is formed by the opposing notches into which a screw or the like may be inserted to fix the elements in place.   

12. The interleaving element is formed from any suitable material such as stainless-steel or plastics, and most preferably extruded aluminium.  The first and second panel members may be further interconnected by at least one web member located between the side wall members.

13. In use, a number of like interleaving elements may be connected together to form an interleave assembly which is positioned between adjacent stacks of fibre-cement panels prior to curing the stacks in an autoclave.

14. The specification ends with fourteen claims.  Claim 1 is in the following terms:

    “ An interleaving element for use in the manufacture of fibre-cement panels, said interleaving element having a profile of constant cross-section extending in the direction of a first axis and a substantially void interior, said interleaving element comprising opposed spaced apart first and second panel members interconnected to each other by two opposed spaced apart side wall members, wherein each of said side wall members have engagement means that are adapted to allow said element to be removably connected to at least one like interleaving element, to allow said first and second panel members to abut corresponding first and second panel members of said like interleaving element.

    Claims 2 to 11 are ancillary to claim 1 and all relate to an interleaving element.  Claim 12 is directed to an interleave assembly for use in autoclaving fibre-cement panels during their manufacture which comprises at least two interleaving elements according to any one of claims 1 to 11 connected to each other.  Claims 13 and 14 are directed to the interleave assembly according to claim 12 when used in the manufacture of fibre-cement sheets.  There is no need to repeat the terms of any of these claims.

    THE ABNOOS APPLICATION

15. It is convenient to mention here that on 14 January 2008 Mr Abnoos filed patent application 2008200191 (the Abnoos application) which claims priority from provisional application 2007900238.  The Abnoos application designates Mr Abnoos as the sole inventor.

16. While the Abnoos application and the present application are essentially concerned with the same subject matter, the Abnoos application is not covered by the section 32 and 36 requests. Nevertheless, it is conceivable that my findings in relation to the present application will be relevant to any related proceedings that may be instigated under section 32 or section 36 in respect of the Abnoos application.

    EVIDENTIARY MATERIAL

    Evidence in support

17. The evidence in support filed by Mr Abnoos consists of a statutory declaration made by him on 3 April 2007 with exhibits RA-1 to RA-31, and a statutory declaration made by Armik Kocharians on 24 March 2007 with exhibits AK-1 and AK-2.

    Evidence in response

18. The evidence in response filed by CSR consists of a statutory declaration made by Graeme Edward Tuckerman on 5 November 2007 with exhibit GET-01, and

    a statutory declaration made by Peter James Levander on 5 October 2007 with exhibits PJL-1 to PJL-07.

    Notices to produce

19. At the request of Mr Abnoos, the Commissioner issued a notice to produce on Capral Limited (Capral) and first and second notices to produce on CSR pursuant to section 210 of the Act.  No dispute arose as to whether all reasonable steps were taken by Capral or CSR to obtain the documents sought by Mr Abnoos.

20. I will make further reference to the evidentiary material where necessary in this decision.

    RELEVANT LAW    

    Statutory framework

21. Section 32 provides that, if a dispute arises between any two or more interested parties, the Commissioner may make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the interested parties or for regulating the manner in which it is to proceed, as the case requires.

22. Under schedule 1 of the Patents Act, “interested party”, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person.

23. Mr Abnoos has claimed that he is entitled to the grant of a patent to the exclusion of CSR, and thus clearly meets the description of an interested party for the purposes of section 32.

24. Section 36(1) provides for a person to apply to the Commissioner for a declaration that the nominated person is not an eligible person, but that some other person is an eligible person. “Nominated person” is defined by schedule 1 to mean the person identified in a patent request as the person to whom the patent is to be granted, and “eligible person” is defined as a person to whom a patent may be granted under section 15.

25. Section 15(1) provides that a patent for an invention may only be granted to a person who:

    a)is the inventor, or

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

    c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or

    d)is the legal personal representative of a deceased person mentioned in paragraph (a), (b), or (c).

26. Thus section 15 contemplates the grant of a patent only to a person who falls into one of the four specified categories.  It makes a distinction between the inventor in paragraph (a) and a person who derives title to the invention from the inventor under paragraph (b).  Further, the Act recognises that each of the categories of person within section 15(1) may be made up of a body of persons and that, for example, a body of persons who, together, are “the inventor”, is “a person” entitled to the grant of a patent (University of British Columbia v Conor Medsystems, Inc [2006] FCAFC 154 at [75]).

    The authorities

27. The law on inventorship was most recently discussed by the Federal Court in University ofWestern Australia v Gray (No 20) 76 IPR 222 (UWA) and Polwood Pty Ltd v FoxworthPty Ltd 75 IPR 1. The Federal Court considered a number of authorities in this country, Canada, the United States and the United Kingdom which were observed to draw a distinction between the conception of an invention and its verification or implementation (called “reduction to practice” under US patent law).

28. As noted in University of Southampton’s Application [2005] RPC 11 (at [46]) (and cited with approval in Synthon BV v SmithKline Beecham [2005] 235 All ER (D) at [28] and IDA Ltd v The University of Southampton [2006] EWCA Civ 15), devising an invention and disclosing a means of enablement may both be necessary to secure valid patent protection, but they relate to different aspects of patent law. This was elaborated in IDA at [39]:

    “In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the devisor.  Those who contribute enough information by way of necessary enablement to make the idea patentable would count as “actual devisors”, having turned what was “airy-fairy” into that which is practical … On the other hand those who contribute no more than essentially unnecessary detail cannot on any view count as “actual devisors””. (original emphasis)

29. In UWA French J said at [1433] that “[w]hile UK authorities applying the 1977 UK Act have to be read in the light of the particular definition [of the term “devisor”] the general jurisprudence is still relevant for Australia.”

30. This approach is similar in concept to that adopted in the United States.

    In Gunter v Stream 573 F.2d 77 (1978) the “conception” of the invention was described as the complete performance of the mental part of the inventive act. That is to say the invention is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. What remains belongs to the department of construction, not invention. A concept can be complete although experimentation may continue. It is complete when a person of ordinary skill in the art could construct the invention without unduly extensive research or experimentation. In Polwood (at [46]) the Full Court referred to Mueller Brass Co v Reading Industries Inc 17 USPQ 361 for the proposition that inventorship is a role in the final conception of that which is sought to be patented:

    “It is clear that, in working out the inventive concept in a patent, each patent will be different and it will be necessary to ascertain the inventive concept from the whole of the specification.  Contribution after the invention was fully conceived where that contribution was under the direction of the inventor does not give rise to entitlement to the invention.  A person must be able to say that without his or her contribution to the final conception it would have been less.”

    The Full Court described this philosophy as “apt”.

31. The reference in Mueller to “the final conception” does not mean that a co-inventor need necessarily devise the final form of the invention.  As noted in Monsanto Co v Kemp 154 USPQ 259, a co-inventor’s role could occur at any stage in the development of the invention:

    ”Each needs to perform but a part of the task if an invention emerges from all of the steps taken together.  It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work together.  One may take a step at one time, the other an approach at different times.  One may do more of the experimental work while the other makes suggestions from time to time.  The fact that each inventor plays a different role and that the contribution of one may not be as great as that of another does not detract from the fact that the invention is joint, if each makes some contribution, though partial, to the final solution of the problem.” 

32. I understand this to mean that where one person makes an initial step leading toward the invention and their work is taken up and finalised by another, both may be considered to have jointly contributed to the invention.  This of course does not generally apply to someone who merely points out the state of the art or explains well known principles.

33. There has been some consideration of the principles of joint inventorship in Australia.  In Costa v G R and I E Daking Pty Ltd 29 IPR 241 and Row Weeder Pty Ltd vNielsen 39 IPR 400 joint inventorship was found where one person had a general idea of what was required in a machine but did not necessarily know how to put those ideas into effect and the other person did so. In Costa the delegate said that, in his view, the question was whether the invention would have occurred without the second person’s involvement (at 246). In Row Weeder joint inventorship was said to arise where one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to do so.  The delegate concluded in Row Weeder (at 405) that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others, had a material effect on the final concept of the invention.

34. The same point was made in Mueller at 372:

    “... it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed.  To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented.  Perhaps one need not be able to point to a specific component as one’s sole idea, but one must be able to say that without his contribution to the final conception, it would have been … less something of benefit.”

35. This was reinforced in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32:

    “… it seems to be the case that a second person, engaged because of that person’s expertise to construct a device or prototype based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation.  However if the second person’s suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device.” (original emphasis)

    Although not referring to the distinction drawn in other jurisdictions between inventorship based on conception and verification or implementation, the delegate in Falkenhagen did differentiate between the involvement of a person in the final concept of the invention as opposed to a preferred working embodiment of it.

    BASIS OF THE DISPUTE

36. To help understand the competing claims to entitlement, I will now broadly outline each party’s version of events as to how the invention arose.

    Mr Abnoos’ version of events

37. Mr Abnoos is a qualified mechanical engineer employed by Applied Robotics Pty Limited (Applied Robotics) who design and supply automation machine systems for clients worldwide.    

38. From about April 2004, Applied Robotics were involved in a project for CSR at their Wetherill Park factory in Sydney.  The project related to the in-situ detection of interleaves and was subsequently expanded to include the installation of a robotic arm for use in the fibre-cement panel production line.  Mr Abnoos was assigned full responsibility for the project as a consequence of which he was taken on a tour of the entire CSR factory in August 2005 when he was first made aware of a problem associated with the fibre-cement interleaves then in use.

39. In the week following the tour, Mr Abnoos discussed the interleave problem with Peter Naylor, the plant manager for CSR.  Mr Naylor confirmed that CSR were researching alternative methods, but were yet to “come up with something better”.  It was suggested to Mr Abnoos that if he had a good idea CSR would be interested to hear it.  Mr Abnoos undertook to look into possible solutions on the understanding that this would be in his own time and at his own expense.  Mr Naylor informed Mr Abnoos that one of CSR’s engineers, Matthew Ridderhof (“Matt”), had been assigned to “look after the interleave problem” and that Mr Abnoos could liaise with him.    

1. Sometime after this conversation, Mr Ridderhof took Mr Abnoos on a further tour of the factory to demonstrate the problem associated with the then current interleaves, and provided him with information regarding interleave sizes, autoclave temperatures and pressures, and stack quantities.

2. A week later, Mr Abnoos asked Graeme Tuckerman, a project manager with CSR, whether they could “work out a deal” for Mr Abnoos to manufacture “these components for you” if he successfully resolved the interleave problem.  Mr Tuckerman told him that CSR were not interested in making interleaves and would not jeopardise the good business relationship they had with their suppliers.  Mr Abnoos accepted this response.  

3. Mr Abnoos began developing prototype interleave elements in August 2005, mostly after work and on weekends.  The first of these was constructed from two sheets of panel rib material bonded together to form a composite assembly having deep channels to assist with the penetration of heat and steam involved in autoclaving (exhibit RA-19).  The prototype was provided to Mr Ridderhof in early October 2005 for testing, but the bonding agent quickly degraded during the autoclave process.  Mr Abnoos provided more prototypes to CSR for testing in late 2005, using different bonding agents (including a product specified to withstand temperatures of up to 300^oC), which were again shown to be inadequate for their intended purpose. According to Mr Abnoos, it had become clear to him that an alternative approach to CSR’s interleave problem was needed.

4. Mr Abnoos says that in November 2005 he “came up with the idea of using an extruded section with one or more internal cavities for the penetration of heat, made out of aluminium and able to withstand high heats, corrosive environments and pressure.”  He also claims to have conceived the idea:

   “of making the new interleaves modular, with the ability to modify the width of the overall assembly by providing male and female fittings on each side for connection.  The modularity was to decrease downtime, maintenance and wasted capital associated with having interleave assemblies which were unable to be modified in their width.  This inflexibility would have led to the production of many different shaped interleave assemblies with the associated cost of producing them and storing and maintaining them.  The modularity allowed the individual interleave assemblies to be joined to form any of the lengths necessary and to facilitate the efficient utilisation of materials and space.  Further the design of the connections were such that they should avoid marking the [fibre-cement panels] as other prototypes did when the heat applied to the [panels] was unevenly applied in any way.”

5. On or about 1 December 2005, Mr Abnoos set about finalising his interleave element design using AutoCAD.  He disclosed his design at around this time to Mr Ridderhof in confidence, and provided him with a copy of the drawing contained in exhibit RA-21.  Mr Abnoos explained to Mr Ridderhof that the design used aluminium “because of the problem of the glue disintegrating in the autoclaves” and was modular “so you can build them up as you wish.”  Mr Abnoos undertook to have the design fully costed. 

6. Further designs were created by Mr Abnoos on 5 December and 8 December 2005 (exhibits RA-22 and RA-24).  On 7 or 8 December, Mr Abnoos telephoned Len Bombas of Capral Aluminium (Capral), a major supplier of aluminium products, to obtain an estimate of the cost of producing one tonne of interleave assemblies according to his design.  Mr Abnoos subsequently facsimiled some documents to Mr Bombas, including a drawing which corresponds to the design of exhibit RA-24.  On 15 December 2005, Mr Bombas confirmed that the interleave element which Mr Abnoos had designed could be produced by Capral.  Mr Abnoos also spoke with other aluminium extruders on the basis of which he compiled a spreadsheet of production costs (exhibit RA-26).  On 8 December 2005, he provided copies of the spreadsheet and other design drawings to Mr Ridderhof.  Mr Ridderhof said that he would get back to Mr Abnoos after speaking with his “manager”.

7. In or about mid December 2005, Mr Abnoos was told by Mr Ridderhof that CSR did not wish to pursue his interleave design “due to cost and some other issues”.  He was asked to stop developing prototypes for the time being.  Mr Abnoos was disappointed but discontinued work on his design as requested.

8. Mr Abnoos did not consider his interleave design again until on or about 15 July 2006 when he had occasion to visit CSR on business related to that of Applied Robotics.  Upon arrival, Mr Abnoos noticed a large number of aluminium interleave assemblies built in accordance with his design.  Exhibit RA-29 consists of photographs he took “of the product assembled in CSR’s yard and inside its factory.”  Mr Abnoos immediately proceeded to locate Mr Naylor who said that the interleave elements were so good CSR were planning to patent them.  Mr Abnoos was upset and complained to Mr Naylor that the elements were his design which he had disclosed to Mr Ridderhof but was told CSR were not interested.  Mr Naylor undertook to look into the matter, but Mr Abnoos did not hear from him again. 

9. Mr Kocharians attests to the authenticity of Mr Abnoos’s computer records in respect of exhibits RA-21, RA-22 and RA-24, however, this has no present significance.

   CSR’s version of events

10. Mr Levander, the named inventor, is a contract draftsman who began employment with CSR in 2001.  He claims to have little, if any, knowledge of Mr Abnoos.  In mid-2005, Mr Levander was asked by Mr Naylor to join a project team which was attempting to resolve CSR’s interleave problem.   

11. Mr Levander explains that:

    “When I joined the project, the team was investigating alternatives to the traditional interleave.  A number of different types of new interleaves were being prototyped and tested.  One prototype was an aluminium interleave which I believe involved a composite material sourced from Germany used to manufacture aircraft bulkheads.  This prototype involved a top and bottom layer having a number [of] intermediate spacing elements, the various layers of this sandwich material being glued together with an epoxy resin.  Another approach was to use two layers, each having a undulating [sic] shape of peaks and troughs that are were [sic] to be fixed together back-to-back, with trough against trough, to create a platform containing voids in between the two layers.  Other prototypes involved using pressed steel to make a platform having a void in between the top and bottom layers.  There was considerable interest at that time in bonding the layers together using an adhesive material such as epoxy resin … In practice, it was discovered that the high temperature and corrosive environment in the autoclave soon destroyed any chemical adhesive …”

12. Mr Levander had previously worked in the yachting industry where he says he became acquainted with the extensive use of aluminium extrusions that interlocked with each other.  Exhibit PJL-04 is a drawing of a “self-mating” extrusion he developed in 1980 which has a male and a female connector. 

13. According to Mr Levander, it occurred to him that a similar concept could be utilised to address CSR’s interleave problem.  He therefore:

    “took the yachting concept of [sic] and flattened it out to provide a series of interlocking interleave elements, each having an interior void, but which could be assembled together to provide a flat platform onto which fibre-cement panels could be stacked.  An interleave assembly comprised of a number of interlocking elements could be easily assembled at any desired width.  Another advantage is that any damage to the assembly could easily be repaired by removing the damaged elements and replacing them with a new element.”

14. Mr Levander put forward his proposal to the CSR project team on 14 October 2005.  Exhibit PJL-05 is a hard copy of a preliminary drawing of an interleave element which was created by Mr Levander using the AutoCAD system at the premises of CSR on 18 October 2005.

15. In November and December 2005, a number of trials were conducted to test the suitability of aluminium for the autoclaving process.  While aluminium was found to be corrosion resistant, the use of interleave assemblies formed of aluminium box sections which were bolted together proved unsatisfactory due to the difficulties experienced in aligning the box sections, and hence extruded interleave elements having male and female connectors became the preferred option.  As a consequence, Mr Levander also became involved in locating a manufacturer to produce the extruded interleave elements.  Discussions were first held with Capral, but another manufacturer, G. James Extrusion Co Pty Ltd (James Extrusion), was ultimately selected.

16. Consideration was also given to developing a means of securing the interleave elements so that they did not slide relative to one another.  It was eventually decided to provide a semi-circular aperture in the male and female connectors which would enable the insertion of a self-tapping screw to fix adjacent elements together.  This fixing means was incorporated into the interleave elements before an initial order was placed with James Extrusion around 2 February 2006.  Some photographs of the final product are shown in exhibit PJL-07.

17. As mentioned earlier, Mr Tuckerman is a project manager with CSR.  He recalls the conversation where Mr Abnoos asked “something about what would be in it for him, if an idea of his turned out to benefit CSR.”  Mr Tuckerman does not relate the actual details of this conversation, but posits that in responding to Mr Abnoos he would have expressed the belief that CSR “would appreciate any favours done by its suppliers, to the extent that this is possible bearing in mind normal commercial considerations, and CSR’s procedures in this regard.”   However, Mr Tuckerman states that it should have been apparent to Mr Abnoos that he was not authorised by CSR to take the matter further and that, as a result:

    “I cannot believe that Mr Abnoos took this casual conversation to mean that he had a commercial agreement with CSR to provide to it any intellectual property.  He should know that CSR is a large and experienced commercial organisation, and for any such agreement to exist, then he would have had to go through the proper channels, and conclude a written agreement with the company.”

    ISSUES FOR DETERMINATION

18. Mr Abnoos claims sole entitlement under section 15(1)(a) of the Act.  CSR rely on Mr Levander’s alleged original entitlement as sole inventor as the source of their rights in the invention under section 15(1)(b). 

19. The essence of Mr Abnoos’ claim to entitlement is that he conceived the invention in November 2005, and communicated the invention to CSR through Mr Ridderhof on or about 1 December 2005.  CSR do not dispute “Mr Abnoos’ evidence as to the timing of the conception of his design and the preparation of drawings relating to it”, but nevertheless contend that the invention had already been conceived in October 2005 by Mr Levander independently of Mr Abnoos.  As submitted by Mr Dimitriadis:

    “… for a person to be an inventor, he or she must actually have made a contribution to the invention.  The independent development of a similar or even the same concept by one person without communication to the named inventor is irrelevant and cannot establish joint (or sole) entitlement on the part of such a person.  In the present case, whatever Mr Abnoos did, there is no evidence that he contributed to Mr Levander’s conception of the invention”.  (original emphasis)

20. According to authority (see eg. Polwood at [60]), the question of inventorship is considered by reference to the invention as discerned from the whole of the specification, including the claims. Mr Franklin submitted that for present purposes the invention is as broadly stated by the consistory clause on page 4 of the specification which is couched in the same terms as claim 1. This approach was not contested by Mr Dimitriadis who himself acknowledged the need to ascertain the nature of the invention in a broad sense by reference to the description and claims. It is also not in dispute that the interleave elements respectively designed by Mr Abnoos and Mr Levander are within the ambit of the invention as reflected by the broad disclosure of the specification.  One need go no further than the designs depicted in exhibits RA21 and PJL-05 in this regard. 

21. Consequently, and as noted by Mr Franklin, the principal issue for determination is whether Mr Levander devised the invention without contribution by Mr Abnoos, or whether he only became aware of the invention through information imparted by Mr Abnoos to Mr Ridderhof.  This may be otherwise stated as did Mr Abnoos conceive the invention prior to the time at which Mr Levander says the invention was conceived by him, and in this Mr Abnoos carries the legal burden of proof on the balance of probabilities.  However, the evidential burden may shift from time to time, particularly where knowledge of the relevant facts lies peculiarly with one party or the other (Dunlop Holdings Ltd’s Application [1979] RPC 523 at 542-4).

    PRELIMINARY CONSIDERATIONS

22. Mr Abnoos’ unchallenged version of events has revealed that Mr Ridderhof is a central figure in the dispute.  In this circumstance it is unfortunate that I do not have the benefit of evidence from Mr Ridderhof as clearly he was uniquely placed to confirm whether or not the CSR interleave project team received any direction from Mr Abnoos.  Nevertheless, I have no reason to believe that CSR were reluctant to put on evidence from Mr Ridderhof through fear that his evidence may have exposed facts unfavourable to their case (cf. Jones v Dunkel 101 CLR 298 at 321) as Mr Franklin has suggested. To the contrary, CSR’s applications for extension of time show that attempts were made to secure evidence from Mr Ridderhof without success.

23. Mr Dimitriadis has in turn pointed to the absence of direct evidence from Mr Abnoos to counter the proposition that the invention originated with Mr Levander.  He attaches some significance to the failure of Mr Abnoos to seek to address this deficiency by calling Mr Levander to be cross-examined.  However, while cross-examination may have been of assistance in deciding who between Mr Levander and Mr Abnoos first arrived at the invention, I do not draw any conclusion from the manner in which Mr Abnoos has elected to conduct his case.

24. It also transpires that the meeting notes in which the activities of the CSR interleave project team were recorded (the meeting notes) constitute a key contemporaneous document in the proceedings.  Exhibit PJL-02 is a copy of the meeting notes maintained by Mr Levander which he copied from the meeting notes of David Talbert, the project manager.  Mr Talbert’s original meeting notes were produced in response to the first notice to produce issued on CSR and are seen to differ in some respects from the notes belonging to Mr Levander.  Mr Dimitriadis submitted that these differences had simply arisen from updates respectively made by Mr Levander and Mr Talbert from time to time to their own “working copy” of the meeting notes, and as such did not alter the fact that both sets of meeting notes were derived from the same source.  In view of the obvious similarities between the two sets of meeting notes, I am prepared to accept this submission.  Mr Franklin did not debate the authenticity of either set of notes during the hearing, and in fact placed direct reliance upon them. 

    DECISION AS TO ENTITLEMENT

25. The disputed facts in these proceedings are quite straightforward.  As I have already explained, Mr Abnoos claims that he conceived the invention in November 2005, and disclosed the invention to CSR through the agency of Mr Ridderhof on or about 1-2 December 2005.  CSR’s opposing contention is that the invention was devised by Mr Levander in October 2005 unaided by any knowledge of Mr Abnoos’ interleave design.

26. The difficulty arises in that both accounts are largely unsubstantiated.  I particularly note in this regard that although relied upon by CSR, there is no corroborative value in Mr Tuckerman’s evidence.  He was not involved in the interleave project, and thus his belief that Mr Levander “came up with the idea of the interleave assembly” without “any input from Mr Abnoos” cannot be viewed as anything more than speculation on his part.  In perhaps recognising the paucity of directly supportive evidence, each party sought to draw inferences from the meeting notes which were favourable to their case.  I will as a consequence have regard to those portions of the meeting notes referred to by the parties before returning to the remaining body of evidentiary material.  Importantly, it is at this juncture that the evidential burden shifts from Mr Abnoos since knowledge of the conduct of the project team lies exclusively with CSR. 

    The search for alternative interleaves

27. The meeting notes record that the CSR project team commenced on 30 June 2005, and subsequently investigated a range of alternatives to the interleaves then in use.  The following entries from Mr Talbert’s notes are illustrative of the lines of enquiry pursued by the project team:

    • On 22/7 there is a note (item 11) for MR and EP to trial 24x12 with 100mm spacing with panel rib without reinforcement.
    • On 1/8 there is a note (item 16) for JH and KR to investigate metallic spacers (as an alternate trial).
    • On 19/8 there is a note (item 27) for KS to rivet panel rib back to back for trial.
    • On 26/09 it is recorded (item 26) that KS and MR are to complete trials of a number of things including “Panel Rib Back to Back” and “Aluminium Sample to check integrity at temperature”.
    • On 5/10 there is a note (item 46) for MR to check to see “if can use high temp glue as used in current inter manufacture”.  On the same day there is a note (item 49) for DK to investigate high temperature glues suitable for bonding metal interleaves. 
    • On 14/10 there is a note (item 50) for MR to obtain 24x12mm sheets of aluminium and complete trial with higher temperature adhesive.  On the same day there is a note (item 53) for MR to trial “wavey” (ie. corrugated) aluminium sheet and to obtain information of corrosion and strength properties of aluminium interleaves.
    • On 21/10 there is a note (item 55) for JH, PL and MR to obtain a flat sheet of anodised aluminium and complete trials to determine corrosion resistance of material.
    • On 2/11 there is a note (item 55) for MR to trial aluminium samples with thermoelastic glue (suitable for 300^oC).
    • On 30/11 there is a note (item 58) for Matt to trial Applied Robotics samples with different glues.  On the same day there is a note (item 63) for Matt to trial “Al box sections as per Peter Naylor’s idea”, as well as a note (item 64) for PL to obtain pricing on weight reduced steel interleaves.
    • On 9/12 there is a note (item 69) for MR and DT to manufacture (bolt together) Al box section and trial.

28. These entries indicate that the project team initially investigated the suitability of single sheets of rib panel material as replacement interleaves before directing their attention in August 2005 to the use of such sheets when joined “back-to-back”.  Mr Abnoos’ first prototype was constructed in the same way, but as he did not provide this prototype to Mr Ridderhof until October 2005 it is clear that the idea of joining two sheets of rib panel material back-to-back could not have originated with him.   This is also apparently the case regarding the use of high temperature adhesives to bond the sheets together.  According to the meeting notes, high temperature glues suitable for bonding metal interleaves were to be evaluated by the project team during October 2005, yet on his own evidence Mr Abnoos did not contemplate using a high temperature bonding agent until “late 2005”.    

1. Nevertheless, the note on 30 November 2005 for Mr Ridderhof to “trial Applied Robotics samples with different glues” verifies that Mr Abnoos contributed independently to the work of the CSR project team.  In the context of these proceedings, the “Applied Robotics samples” could only have meant the prototypes provided by him to Mr Ridderhof for testing.  

   The 14 October 2005 meeting notes

2. On joining the CSR project team, Mr Levander was asked to contribute ideas for solving CSR’s interleave problem.  He asserts that he proposed the invention as a solution at a project team meeting on 14 October 2005 as evidenced by the reference to “Investigate Al extrusion as an alternate to sheet – [Team Member Responsible] PL” at item 53 of the meeting notes for that day.

3. Mr Franklin submitted that it is improbable that this note is a reference to the invention.  He pointed to the fact that while an original target date of 21 October 2005 was set by the project team for Mr Levander to complete his investigation, the notes of the meeting held on that day make no mention of extruded aluminium and instead indicate (along with subsequent meeting notes) that the CSR project team persisted with their evaluation of other alternatives.  Mr Franklin next drew attention to the interleave assessment matrix which is attached to the meeting notes for 2 November 2005.  One of the interleave options listed in the matrix is “Aluminium extrusion” which is characterised as “easily joined”.  Mr Franklin argued that when this is read in conjunction with the handwritten note on the back of the matrix to “manufacture bolted together Al section”, it is apparent that the project team were not looking to assemble the aluminium sections in a modular fashion by means of male and female connectors.  On this basis, so the argument continues, the invention could not have been the genesis of Mr Levander’s investigation of extruded aluminium as alleged.

4. Mr Dimitriadis countered that this view of matters overlooked the evidence of Mr Levander that the aluminium sections were trialled merely as an interim measure “before being able to obtain the actual extrusions which take some time to manufacture”.  Thus, according to Mr Dimitriadis, the aluminium extrusion option was an alternative version of how Mr Levander’s original concept could be reduced to practice.  He said that other interleave options remained under investigation, particularly given concerns that aluminium may not have been suitable for use in the corrosive autoclave environment.  As indicated by the interleave assessment matrix, another potential problem with the aluminium extrusion option was that “join lines may cause board marks”.  Mr Levander has explained that by “join lines” is meant the slight gap where each extruded aluminium section sits flush against an adjacent section which Mr Dimitriadis submitted was clearly suggestive of a modular construction.  He then noted that trials were conducted by the project team to assess whether aluminium was corrosion resistant, and whether the join lines between the aluminium sections would mark the fibre-cement panels during curing in the autoclave.  Mr Dimitriadis contended that this set of activities closely followed the disclosure of the invention to the project team by Mr Levander on 14 October 2005.

5. There seems little doubt that the primary focus of the CSR project team was to assess the suitability of extruded aluminium for use in a replacement interleave element.  It is common ground between the parties that the trials conducted in respect of the aluminium extrusion option included the use of a number of extruded aluminium sections which were fastened to one another by bolts.  The meeting notes for 30 November and 9 December 2005 identify these sections as “box sections”.

   The parties are, however, in disagreement as to whether the aluminium extrusion (box section) trials involved a practical example of the invention.

6. The invention may be said to essentially comprise two components:

   1)opposed spaced apart first and second panel members interconnected to each other by two opposed spaced apart side wall members such that the interleaving element has a profile of constant cross-section extending in the direction of a first axis and a substantially void interior; and

   2)engagement means on each side wall member that are adapted to allow the interleaving element to be removably connected to at least one like interleaving element to allow the first and second panel members to abut corresponding first and second panel members of the like interleaving element.   

7. As a matter of plain language, it is clear that the second component of the invention is not necessarily confined to the provision of male and female connectors on the side wall members.  Nevertheless, this specific form of engagement means features in the design drawings of exhibits RA21 and PJL-05, and remained at the forefront of the party’s respective claims to inventorship.

8. It is not disputed that an aluminium “box section” falls squarely within the ambit of the first component of the invention.  The disagreement arises over whether the box sections were able to be fitted together in a modular fashion to make up an interleave assembly.  This issue can be easily resolved.  Although rudimentary in nature, it seems reasonable to assume that the bolts used in the box section trials were at least capable of enabling individual box sections to be selectively connected to or disconnected from other box sections to form a modular construction.  Nevertheless, this is insufficient in itself for me to conclude that the box section trials represented an implementation of the invention in its totality.  Nothing in the meeting notes for 14 October 2005 suggests that the bolts were intended by the project team to serve as an alternative form of engagement means according to the second component of the invention.

9. A somewhat related point of contention concerns the timing of the box section trials.  Mr Levander has deposed that the project team conducted the box section trials “shortly after 9 December 2005” as an interim measure while awaiting the manufacture of the “actual extrusions”, a term he appears to have used synonymously with the interleaving elements of the invention.  Mr Franklin said Mr Levander’s evidence implied that the extrusions were ordered prior to the box section trials, whereas the meeting notes show that the first orders for aluminium extrusions were not made until 19 January 2006 at the earliest.  He submitted that this delay was because Mr Levander had not conceived the invention at the time of the box section trials.  

10. The meeting notes demonstrate that the project team had by then engaged in a program of continuing research into the extruded aluminium option.  For instance, the meeting notes for 21 October and 2 November 2005 refer to corrosion resistance testing of aluminium sheeting, while those for 30 November include a note for KS/MR to “sand and resubmit aluminium scribbed sheet into pack to see if sheet marked” which on Mr Levander’s evidence is a reference to the marks scored on a sheet of aluminium to simulate the join lines between the box sections.  Mr Levander states that it became apparent from these tests that “aluminium stood up very well to the conditions in the autoclave” and “the joins would not leave marks on the fibre-cement [panels].”  It seems highly unlikely that the project team would be inclined to commit CSR to the full cost of manufacturing and exploiting the extruded aluminium option until their investigations had confirmed a favourable outcome.  The notion that the decision to defer placing an order for the manufacture of the extrusions in the interim period was motivated by business interests receives support from the meeting notes for 30 November and the handwritten note on the back of the meeting notes for 21 October 2005 which establish that the idea of the box section trials came from Mr Naylor who, as plant manager, was presumably a person of authority within CSR.

11. However, while plausible, this explanation still does not say anything of whether the box section trials were modelled on both components of the invention.  More particularly, the meeting notes provide no indication of whether the “actual extrusions” included male and female connectors. Consequently, I am unable to accept the meeting notes for 14 October 2005 as conclusive evidence of the conception of the invention by Mr Levander on or before that date.

    The 20 December 2005 meeting notes

12. Before dealing with this piece of evidence, it will be recalled that CSR do not dispute that Mr Ridderhof was provided with copies of Mr Abnoos’ interleave design drawings on or about 1 December and again on 8 December 2005.

13. As events unfolded this was just prior to the box section trials which were assigned a target date of 19 December 2005.  Mr Franklin noted that the trials drew attention to the difficulty in aligning the box sections, thus implying that the trials were not a success.  On the very next day, the meeting notes record that “PL” was to “Initiate extrusion design discussions”.  Mr Franklin submitted that this surely means what it says, namely, a decision was taken on 20 December for Mr Levander to begin extrusion design discussions by which time Mr Abnoos had given copies of his interleave design drawings to Mr Ridderhof.  Mr Franklin said that it is also beyond coincidence that it was only after information concerning the invention was transmitted to Mr Ridderhof by Mr Abnoos that “having interlocking extruded elements with male and female connectors” became the “preferred approach”, and orders were placed for the manufacture of the “actual” aluminium extrusions.

14. In response Mr Dimitriadis maintained that the extrusion design discussions were an extension of the project work on which CSR had embarked following the conception of the invention by Mr Levander.  He submitted that the emergence of the alignment problem during the box section trials had simply returned the focus of the project team to the use of male and female connectors to interlock the aluminium extrusions, and it was telling in this regard that Mr Levander refers in his evidence to the project team’s preference for this “concept”.  Mr Dimitriadis submitted that as a matter of logic this presupposed that the concept of an interlocking interleave design was already in existence, having been devised by Mr Levander.

15. I agree with Mr Franklin that on the plain meaning of the language used in the meeting notes, the decision taken by the CSR project team on 20 November 2005 was for Mr Levander to begin certain discussions.  The evidence regrettably does not shed any light on the nature of those discussions. Nevertheless, if Mr Franklin is correct in his submission that the project team were previously unaware of the invention, it is possible that the decision to pursue the concept of interlocking interleaves as the “preferred approach” reflected a realisation on their part that the alignment problem exposed during the box section trials could be avoided by the interlocking concept which Mr Abnoos’ design had unveiled to them for the first time.  However, given the history of events, I think the decision could equally be said to have marked the commencement of discussions between CSR and Capral regarding tooling, production and delivery of the “actual extrusions”, and this follows logically if it is assumed that the project team were already conscious of Mr Levander’s interlocking concept but nonetheless pressed ahead with the box section trials as a cost-effective means of testing the viability of the extruded aluminium option in practice.  

16. As inferences are available favourable to each party, it is simply not possible to reach a definite view on what the extrusion design discussions entailed.  Relevantly, however, CSR have failed in their attempt to prove that these discussions were not prompted by knowledge of Mr Abnoos’ interleave design.

17. Overall, then, I am not satisfied that the meeting notes for 14 October or 20 December 2005 attest to Mr Levander’s authoring of the invention.  However, this does not settle the question of inventorship since there are other portions of the evidentiary material relied upon by the parties that I now need to take into account.

    The meeting with Mr Ridderhof

18. As mentioned earlier, on 8 December 2005 Mr Abnoos provided Mr Ridderhof with copies of additional design drawings as well as a spreadsheet setting out costing for the production of his interleave design.  Mr Ridderhof said that he would get back to Mr Abnoos after speaking with CSR management.

19. In or about mid December 2005, Mr Abnoos met with Mr Ridderhof who allegedly said words to the following effect:

    “Razmik, I had a chat to management and they said that we won’t be going ahead with the implementation of the design provided to us by you due to cost and some other issues.  In fact, I have been asked to tell you to stop developing prototypes for the time being.”

20. Mr Dimitriadis emphasised that the decision of CSR management related to the implementation of the design provided to them by Mr Abnoos.   He said the decision not to proceed with Mr Abnoos’ design reflected the fact that the invention had already been conceived by Mr Levander, and as such the CSR project team did not require further input from Mr Abnoos.  Mr Dimitriadis  also submitted that Mr Ridderhof’s response is understandable in circumstances where CSR did not wish to disclose confidential information regarding the interleave project to Mr Abnoos who had, in effect, developed a competing design.

21. This submission is unconvincing.  It seems the meeting between Mr Abnoos and Mr Ridderhof most likely took place before the completion of the box section trials on 19 December 2005, and thus the “other issues” mentioned by Mr Ridderhof could have been a reference to the then unconfirmed viability of the extruded aluminium option.  When placed in this timeframe, the meeting also preceded the adoption of interlocking interleave elements as the project team’s preferred approach which, on Mr Levander’s evidence, followed from the results of the box section trials.  It is further possible that CSR’s rejection of Mr Abnoos’ design “due to cost” was governed by the same business interests which had led them to withhold placing an order to manufacture the “actual extrusions” until after the results of the box section trials were known. 

22. This is certainly not direct evidence that Mr Levander had disclosed the invention to the CSR project team prior to December 2005, but it does in my opinion dispel the suggestion of an endeavour by CSR to appropriate or deal dishonestly with Mr Abnoos’s interleave design.  Nevertheless, I agree with Mr Franklin that if the project team were already in possession of the invention, it is quite surprising Mr Ridderhof would not have informed Mr Abnoos of this when Mr Abnoos gave Mr Ridderhof his design drawings and explained the benefits of the design to him.  After all, CSR had on a number of occasions openly discussed their interleave problem with Mr Abnoos and invited him to propose solutions of his own. 

23. In view of the uncertainties inherent in this evidence, I do not consider that it assists either party.  As before, though, it fails to corroborate that Mr Levander was the original source of the invention.

24. This brings me to the final piece of evidence relied upon by the parties which has proven to be most decisive.

    Mr Levander’s drawing file

25. Mr Levander claims that he prepared a preliminary drawing of his proposed extruded aluminium interleave element using AutoCAD in preparation for the project team meeting on 21 October.  He relies on item 57 of the notes of the meeting to prove that he was “involved with preparing a sketch of the interleave and obtaining a rough pricing for its manufacture” at this time.  Mr Levander is plainly mistaken here.  The item referred to says “Draw a sketch of interleave manufacture jig & obtain the rough price to manufacture” which refers to equipment previously discussed at the project team meeting on 26 September  (see item 48 of the meeting notes for that day) and had nothing to do with the invention.

26. This faulty account would not reflect well on Mr Levander’s evidence generally were it not for exhibit PJL-05 which confirms that the aforementioned AutoCAD file (the file) was created on 18 October 2005.  This accords with Mr Levander’s stated belief that he prepared the initial drawing shortly after the project team meeting on 14 October.  Mr Dimitriadis submitted that the notation “Aluminium Interleave 18/10/05” at the bottom of the document provides additional evidence of its date of creation.

27. Mr Franklin did not contest this submission but observed that the total editing time for the file since its creation exceeded 41 hours.  The file was last modified on 27 September 2006.  He said this cast serious doubt on the original content of the file, and it was noteworthy in this respect that information contained in the file as to extrusion size and cost stemmed from later  decisions of the CSR project team.

28. Specifically, the file nominates various sizes for the interleave elements so as to permit interleave assemblies of different widths to be formed, and illustrates an example of an interleave assembly having a total width of 1200mm made up of eight equally-sized elements.  Mr Franklin submitted that the size of the interleave assembly was not discussed by the project team until 19 January 2006, and thus it was self-evident that information of this kind must have been added to the file after it had been created.  Mr Dimitriadis responded that the size of the interleave assembly, and hence the individual interleave elements, was dictated by the production width of the fibre-cement panels which meant that the file material singled out by Mr Franklin related to the practical implementation of the invention, as opposed to its conception.                

29. This is a persuasive argument.  The meeting notes for 19 January 2006 record that a decision was taken to “optimise extrusion size to 1200mm” (my emphasis) which clearly relates to the subsequent development of the invention, and I have no difficulty in accepting that this refinement amongst others was progressively implemented once the project team had decided to proceed with the production of a working embodiment of the invention.  In this light I think it is entirely plausible that the editing time merely represents the total time spent by Mr Levander on incorporating such refinements into the file as they arose.  Most relevantly, there is no evidentiary basis whatsoever for any suggestion that the fundamental character of the interleave element as originally depicted in the file was altered during this time.

30. As I have already said, that interleave element is encompassed by the invention.  Briefly, the element has an interior void, and a male flange on one side wall member that slides into a correspondingly-shaped female groove on the other side wall member of an adjacent like element to enable the elements to be locked together.  Interestingly, Mr Levander’s design differs from that of Mr Abnoos in that it does not include a web member extending across the interior void of the interleave element.  Prima facie, the omission of a web member lends credence to Mr Levander’s evidence that his proposal was based on a “flattened out” modification of cylindrical aluminium extrusions in use in the yachting industry.

31. Accordingly, I am satisfied that Mr Levander had conceived the invention by the time he created the file.  

    Overall summary

32. I have found that even though the meeting notes do not on balance substantiate Mr Levander’s claim to inventorship, the file establishes to my satisfaction that he had conceived the invention by 18 October 2005.  CSR have as a result discharged the evidentiary burden on them and the onus is very much back with Mr Abnoos to prove his case.  On his own evidence, Mr Abnoos did not conceive the invention until November 2005.  I am, as a consequence, compelled to the conclusion that Mr Levander arrived at the invention without contribution by Mr Abnoos. 

    CONCLUSION

100. I have found that Mr Abnoos’ claim that he rather than Mr Levander was the first to independently devise the invention to be unsustainable.  Further, there is nothing in the evidentiary material before me to displace CSR’s reliance on Mr Levander’s original entitlement as sole inventor as the source of their rights in the invention. 

101. Accordingly, I declare pursuant to section 36(1) that CSR is the sole eligible person in relation to the invention. I determine under section 32 that the present application is to continue to proceed in the name of CSR alone.

COSTS

102. I see no reason to depart from the usual practice that costs follow the event.  I therefore award costs under schedule 8 against Mr Abnoos, noting that the only costs applicable are those relating to the hearing itself.

O L Haggar
Delegate of the Commissioner of Patents
20 April 2009

Patent attorneys for the applicant:  Hodgkinson McInnes Patents, Sydney

Patent attorneys for the requestor:  Peter Maxwell and Associates, Sydney