Re James Earl Winner and Donna C Winner v Ammar Holdings Pty. Limited

[1992] FCA 561

Re: JAMES EARL WINNER and DONNA C. WINNER
And: AMMAR HOLDINGS PTY. LIMITED
No. N G847 of 1991
FED No. 561
Patents
(1992) AIPC 90-916

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Heerey J.(1)

CATCHWORDS

Patents - motor vehicle steering wheel lock - validity - obviousness - whether identification of problem an inventive step - discussion in specification of prior art and problems encountered in use - provision of solution to problem - known device - ratchet and pawl - operation in known manner - known result achieved - novelty - prior publications - anticipation - whether publications to be considered separately or in combination - whether suggested combination of publications discloses claimed combination - fraud, false suggestion and misrepresentation - non-disclosure of overseas patent applications.

Patents Act 1990 (Cth): Ss 18(1)(b)(ii), 40(2)(a) and 138 (3)(c)

Acme Bedstead Co Ltd v Newlands Brothers Ltd (1937) 58 CLR 689

Adelmann and Ham Boiler Corporation v Llanrwst Foundry Co (1928) RPC 413

Asahi v W R Grace and Co (1991) 22 IPR 491

Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261

The General Pipe and Rubber Co v The Firestone Tyre and Rubber Co Ltd (1972) RPC 457

Longbottom v Shaw (1891) RPC 333

Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513

Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262

Re: James Earl Winner and Donna C Winner v Ammar Holdings Pty Limited (NG 847 of 1991)

HEARING

SYDNEY

#DATE 6:8:1992

Counsel for the cross-respondents: Mr D.K. Catterns

Solicitors for the cross-respondents: Williams Niblett

Counsel for the cross-claimant: Mr J.J. Garnsey QC

Solicitors for the cross-claimant: Baskin and Associates

ORDER

IT IS DECLARED THAT:-

1. Australian Patent No. 599863 is and always has been invalid.

IT IS ORDERED THAT:-

2. Australian Patent No. 599863 be wholly revoked on the ground that the invention is not a patentable invention.

3. The Registrar or other appropriate officer of the Court serve an office copy of this Order on the Commissioner of Patents.

4. The cross-respondents pay the cross-claimant's costs of the preliminary issue as to validity.

5. The proceedings be otherwise adjourned to a date to be fixed by the District Registrar.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules

JUDGE1

The cross-respondents are the holders of Australian Patent No. 599863 (the patent in suit) for a motor vehicle steering wheel lock sold under the name "Super Club".

1. The cross-claimant has sold a similar device under the name "Patriot". The cross-respondents have brought infringement proceedings. The cross-claimant alleges invalidity on the grounds of (i) obviousness, (ii) want of novelty and (iii) fraud, false suggestion or misrepresentation.

2. On 15 April 1992 Hill J ordered by consent that the issue as to validity be determined as a preliminary issue under O.29 r.2.
   The Patent in Suit

3. The Super Club is a telescopic tubular metal device which can be fitted to the steering wheel of a motor vehicle. One end protrudes beyond the rim of the wheel so that, until the device is unlocked and removed, contact with the windscreen or other parts of the vehicle will prevent the steering wheel being turned.

4. At each end of the tube there is a U shaped hook which fits against the inside of the steering wheel rim. The tube consists of an outer sleeve and an inner shaft. The device is fitted by moving the shaft outwards until both hooks engage the inside of the rim of the wheel, one opposite the other.

5. The critical feature of the Super Club for present purposes is that the shaft has ratchet teeth which are engaged by a pawl on the sleeve. The pawl is lockable. When in a locked position, the shaft can be moved outwards so as to engage the rim, but not inwards. The practical effect is that a user can unlock the device, remove it from the steering wheel and lock it. When the time comes to fit the device again, there is no need to use the key. The shaft is simply extended outwards until the lock engages the rim. Once in position, the device cannot be removed without using the key.

6. The specification includes the following drawing. The features identified in the drawing and relevant for present purposes are:
   

DRAWING OMITTED

10 tubular member

12 shaft member

14 lock housing (pawl enclosed)

16 first rim hook

18 second rim hook

44 ratchet teeth

78 keyhole

R steering wheel rim

Other Patents

1. Much of the argument in the present case concerned patents for similar devices. The most important of these were as follows.

2. US Patent No. 3,462,922 (Moore) published in Australia 30 April 1970 shows a steering wheel lock with one wheel rim hook carried on a lock member which slides along a ratchet bar. As with the Super Club, the bar can, in a locked position, be slid outwards but not inwards and thus applied without the use of the key. The hooks also engage the inside of the steering wheel rim. In contrast to the Super Club, the two members cannot rotate axially in relation to each other.

3. US Patent No. 3,664,164 (Zaidener) published in Australia on 7 February 1973 shows two telescopic members of rectangular section. The hooks engage the outside of the rim of the wheel. The inner member has a series of recesses and the outer member a detent spring which engages the recesses. When locked the inner rod can be moved inwards, but not outwards.

4. US Patent No. 4,738,127 and its equivalent Australian Patent no 561885 both show a device which is the immediate predecessor to that shown in the patent in suit. It is marketed under the name "Club". But the Club lock does not have the one way ratchet of the Super Club. It is necessary to use the key to lock the telescopic members in position.
   Obviousness

5. The cross-claimant relied on s.138(3)(c) of the Patents Act 1990 (the Act) combined with s.18(1)(b)(ii). The Act, unlike the 1952 Act, does not use the term "obvious", but counsel agreed it remained a convenient label and I shall use it on the basis that it connotes the lack of an inventive step referred to in s.18(1)(b)(ii). It was not suggested that the previous case law on obviousness had to be qualified in any way.

6. The cross-claimant contended that the only feature of the patent in suit claimed as an invention was the adoption of a locking means to achieve movement, when in the locked position, in one direction only. In particular, this was the only difference from what was disclosed in the Club patent. A ratchet and pawl is a familiar mechanical device, known since Roman times. The cross-claimant relied on Acme Bedstead Co Ltd v Newlands Brothers Ltd (1937) 58 CLR 689 which coincidentally also concerned a ratchet and pawl - in that case as part of a device for the raising and lowering of a hospital bed. The conclusion of Dixon J in that case was said to be directly applicable. His Honour said (at 708):
   

"To my mind the truth of the present case is that once mechanical means of raising and lowering a hospital bed were asked for, the task of supplying them became one of selecting the most convenient and satisfactory out of a host of mechanical expedients all lying ready to hand. The actual inventor has narrated how matrons of hospitals asked him for such a bed and how he set to work to devise it. He has stated and illustrated expedients which he adopted or with which he experimented. The whole process through which he went affords, to my mind, confirmation of the view that he was not employed in invention but in supplying out of an embarrassing number of choices open to him that which in its practical application would prove most useful and commercially successful. The case falls, I think, within the language used by Maugham J., as he then was, in Adelmann and Ham Boiler Corporation v Llanrwst Foundry Co. (1928) RPC 413 at 420: 'The alleged invention, though possessing the advantages of being an excellent design, is simply the application of a well-known and well-understood piece of mechanism to achieve an obvious advantage, and is not the proper subject of letters patent.'"

1. The cross-respondents joined issue with this argument at a fundamental level. It was contended that the invention disclosed by the patent in suit involved two steps: the identification of the problem and the provision of a solution to that problem.

2. In my view the cross-claimant's contention is correct. There may of course be cases where:
   

"... the perception of the true nature of the problem was the inventive step which, once taken revealed that straightforward experiments will provide the solution."

1. See Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 281 per Aickin J, with whom all the other members of the Court agreed.

2. However in the present case there is no suggestion in the specification itself that discovery of the problem involved an inventive step.

3. Under the heading "Background of the Invention" the specification discusses the prior art, described as "the art of motor vehicle anti-theft devices."

4. After referring to alarms and other electronic devices mention is made of "(a)nother type of anti-theft device" in which a locking device engages a foot pedal of the vehicle. The comment is made:
   

"Such connecting type anti-theft devices suffer from the serious disadvantage of being inconvenient and difficult for most consumers and motorists to use. Installation cannot be easily accomplished while sitting behind the wheel, as one must reach down to the foot pedals to manipulate the lower hook into position, and must first extend the other hook upwardly beyond the steering wheel in the direction where one would ordinarily be seated before that hook can be contracted back downwardly into engagement with the steering wheel rim. These manipulations of the anti-theft device would best been carried out form the exterior of the vehicle with the door open, but that approach suffers from obvious disadvantages in terms of adverse weather conditions, available space and parking locations, and simple preference for convenience. Furthermore, the lock on a device of that type is located inconveniently out of reach beneath the steering wheel."

1. The specification then turns to discuss a "third and more successful type of vehicle anti-theft device" which is one "mounted solely on the steering wheel to prevent the wheel from being turned". However known steering wheel locks of this type are said to "suffer from several disadvantages associated with mounting of the metal bar across the steering wheel rim". Thus one patent (US 4,103,574 Mitchell) is limited to rims having a diameter corresponding to the fixed hook spacing. This problem is overcome in US 4,304,110 Fain which has adjustable separate rod members. This is said to be "an improvement over the arrangement in the Mitchell patent, but ... not entirely convenient and easy to use as it would be somewhat time consuming to make the required adjustments". Another device, shown in British Application GB 2039840A, has rim hooks on separate elongated members which are telescopically axially shiftable with respect to each other. The specification comments:
   

"However, that device requires the two telescopic members manually be held in position to align apertures extending therethrough such that a pad lock shaft can be inserted through the apertures to lock those members in the desired axial position. The user must inconveniently manipulate the pad lock with one hand while holding the telescopic members with the other."

1. The specification then states that the "adjustment and handling problems associated with the aforementioned steering wheel locks are substantially overcome" by the Club patent because the:
   

"... closely spaced rod grooves advantageously define a great number of positions at which the rim hooks may be spaced apart, and the retainer advantageously holds the spaced hooks at the desired position to free the user's hands for attention to the key and lock."

1. However the Club lock is said to be:
   

"... still ... not ideally convenient and easy to use. Although the retainer conveniently holds the hooks in the desired spaced location on the steering wheel rim, the user must use a key to lock the telescopic members in that position. Use of the key is again required when the steering wheel lock is to be removed. Each use of the steering wheel lock between operations of the motor vehicle thus requires two operations with the key lock. Since speed and convenience are strict requirements of most motorists, and since one usually operates an automobile several times daily, these repeated operations with a key in addition to those normally required to enter and operate an automobile could be prohibitively cumbersome whereby a motorist may frequently neglect to use the steering wheel lock and may ultimately abandon it."

1. This passage encapsulates the "problem" said to be solved by Super Club.

2. The survey of the prior art concludes with a discussion of Moore which, by reason of its ratchet mechanism, does reduce the frequency of key use. But Moore is said to suffer from several other disadvantages, and in particular the exposure of the ratchet bar and connecting elements which might injure the user's fingers and also present pry points for a thief to insert a crowbar.

3. I do not accept the cross-respondents' submission that those parts of the specification which deal with existing problems in the art are part of the inventor's description of his invention required by s.40(2)(a) of the Act. The specification itself does not suggest that such is the case. The sub-heading "Background of the Invention" is, I think, a fair description of the discussion which follows. That discussion does not purport to disclose an inventive step but reviews the known prior art, the practical disadvantages in the use of known devices and in particular the inconvenience of having to use a key to lock the Club lock. This is not describing the invention but rather the background against which the inventive step is said to have been taken. Moreover, in the context of the particular devices discussed, the various problems are dealt with in terms which suggest that the draftsman recognises them as obvious to ordinary users.

4. The fact that the Club lock has to be locked with a key is something which would be obvious to the user, as would the corollary that it would be convenient to be able to secure the lock without a key. I think this was sufficiently a "recognised problem" or "recognised need" (cf Beecham Group Ltd's (Amoxycillin) Application (1980) RPC 261 at 291). To make out a case of obviousness it is not in my opinion necessary to show that some identifiable person or persons other than the inventor in fact recognised the problem or need, at any rate when the subject matter is an improvement on a simple item in everyday use by members of the public and the inventor does not claim in the specification that the perception of the true nature of the problem was the inventive step, or part thereof. Although the judgments in Acme Bedstead refer to hospital matrons asking for beds which could be mechanically raised and lowered, I do not read the case as suggesting that proof of disclosure of the problem or need by identifiable persons such as the hospital matrons was essential to show obviousness. Counsel for the successful respondent merely argued (at 696) that the need for the modification "was well known and obvious, and the means were also obvious".

5. A similar approach was taken in Adelmann and Ham Boiler Corporation v Llanrwst Foundry Co (1928) RPC 413, cited by Dixon J in Acme Bedstead. In Adelmann the patent showed an improved vessel for boiling hams under pressure. Such vessels were well known, but it was claimed the invention provided "greater convenience and rapidity in manipulation" (at 418). Maugham J described the alleged invention in these terms (at 418):
   

"In non-technical language what the inventor has done in substance is to take a ham container and to apply or add to the two ends of it teeth so that the pressure plate adapted to compress the ham may be engaged or locked to the container by means of a clamp. The inventor was apparently desirous of adapting the known ham boilers for the purposes of firms who have occasion to boil large quantities of hams per day."

1. His Lordship said (at 420):
   

"In considering the question whether the device has the quality of invention, I think I must be guided by two considerations. The first is that the idea of providing a rapid method of locking the lid to the container is obviously not such an idea as can itself be regarded as possessing the quality of invention. It was an obvious desideratum for large users. The second is that the applying to the ham boiler of a rack and catch is the addition of something which has in itself no novelty whatever. It is indeed a device of great antiquity, and had already been suggested in connection with ham pressing and cooking in the Specification of Butz, pleaded as one of the prior publications. As I have already stated, the Patentee starts with a ham boiler completely invented as a cooking apparatus, though no doubt a ham boiler slow in operation and unsuitable for the mass production of cooked hams;..." (Emphasis added.)

1. The judgment concludes with the passage cited by Dixon J in Acme Bedstead (supra).

2. I note that the cross-respondents did not call any direct evidence as to invention nor evidence of a long-felt want: cf Longbottom v Shaw (1891) RPC 333 at 336.

3. In my opinion, the invention claimed is for a combination patent for an invention to achieve a known result by a combination of known means operating in a known manner. It is a mere collocation, without invention.

4. I find therefore that the cross-claimant succeeds on the ground of obviousness.
   Novelty

5. I refer to, without repeating, the passages from the authorities on novelty cited in Asahi v W R Grace and Co (1991) 22 IPR 491 at 520-522.

6. The cross-claimant bases its case on combinations of prior publications viz (i) Club plus Moore, which are both referred to in the patent in suit or alternatively (ii) Club plus Zaidener, which is referred to in Club.

7. The cross-respondents contend that the circumstances of this case do not warrant a departure from the general rule that publications relied on as constituting anticipation of a patent must be considered separately.

8. In Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 Gummow J (with whom Jenkinson J agreed) said (at 526):
   

"The inhibition against the making of a mosaic applies with even greater force in Australia where the challenge to validity is based on lack of novelty. In Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 292-293; 29 ALR 29 at 57-8, Aickin J (with whom the other members of the High Court agreed) after dealing in the manner I have above described with the inhibitions upon making a mosaic to support an allegation of obviousness, went on to deal with novelty in the following terms: 'The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process.'"

1. Later in his judgment his Honour said (at 538-9):
   

"In my view, it will not necessarily be making a forbidden mosaic merely to rely upon two or more documents, none of which by itself discloses material sufficient for an anticipation of the invention in suit. What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe and Dohme case. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharpe and Dohme case indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J called 'one consistent whole'." (Emphasis added.)

1. Importantly for the present case, his Honour also pointed out (at 522) that where a combination patent is involved, it is the combination which must be shown to be disclosed, as distinct from the separate integers.

2. I do not think it is permissible in the case of either suggested combination to read the publications together. They do not form "one consistent whole". They are individual exercises by different authors at different times in the art of motor vehicle anti-theft devices. In any case, neither pair of publications discloses the claimed combination. I do not think they provide a signpost along the road to the invention alleged in the patent in suit, still less has the prior inventor "planted his flag at the precise destination": The General Pipe and Rubber Co v The Firestone Tyre and Rubber Co Ltd (1972) RPC 457 at 486; Asahi at 52l.

3. In my view the challenge on want of novelty fails.

4. Fraud, false suggestion and misrepresentation The cross-claimant's case was that the cross-respondents did not bring to the attention of the Commissioner the prosecution of and the results of the examination of the corresponding US patent, which had been granted in more limited terms.

5. I reject this ground. In fact the principal prior art was before the Australian Patents Office. Moore is referred to in the specification, as is Club, which in turn refers to Zaidener.

6. In any case there was no evidence as to the law and practice of the US Patent Office. For all I know they might be different in relevant respects from that which obtains in Australia.

7. There is not necessarily an obligation to disclose the fate of overseas applications. Their whole or partial failure is as irrelevant to the grant of a patent as their success is to its validity.
   Orders

8. I make the following orders on the cross-claim:
   

1. Declare that Australian Patent No. 599863 is and always has been invalid.

2. Order that Australian Patent No. 599863 be wholly revoked on the ground that the invention is not a patentable invention.

3. Order that the Registrar or other appropriate officer of the Court serve an office copy of this Order on the Commissioner of Patents.

4. Order that the cross-respondents pay the cross-claimant's costs of the preliminary issue as to validity.

5. Proceedings be otherwise adjourned to a directions hearing on a date to be fixed by the District Registrar.