Root Quality Pty Ltd v Root Control Technologies Pty Ltd

[1998] FCA 1778

FEDERAL COURT OF AUSTRALIA

PATENTS – amendment of claims – whether amendment of complete specification of patent should be allowed – factors relevant to the court’s exercise of discretion

Patents Act 1990 (Cth) ss 40, 102, 105

Joseph Lucas (Batteries) Ltd v Gaedor Ltd [1978] RPC 297 cited
Farbwerke Hoeschst A.G. Vormals Meister Lucius & Bruning v Commissioner of Patents (1971) 124 CLR 654 cited
Rescare Ltd v Anaesthetic Supplies Pty Ltd (Gummow J, 4 March 1993, unreported) cited
Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 cited
Wilkinson Sword Ltd v Gillette Industries Ltd and Warner Lambert Co [1975] RPC 101 cited
Mabuchi Motor KK’s Patent [1996] RPC 387 cited

ROOT QUALITY PTY LTD & ANOR v ROOT CONTROL TECHNOLOGIES PTY LTD & ORS

NO. VG 314 OF 1998

JUDGE:        FINKELSTEIN J
DATE:          11 JANUARY 1999
PLACE:        MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VG 314 OF 1998

BETWEEN:	ROOT QUALITY PTY LTD and R & R OWEN NOMINEES PTY LTD Applicants
AND:	ROOT CONTROL TECHNOLOGIES PTY LTD MARK STYAN and JAMES TROWBRIDGE Respondents

JUDGE:	FINKELSTEIN J
DATE:	11 JANUARY 1999
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. On 9 December 1998, upon the application of Root Control Technologies Pty Ltd (Root Control), the proprietor of Australian Patent No. 629067 (the patent), I directed the amendment of the complete specification of the patent in certain respects stating that my reasons for judgment would be published in due course.  What now follows are my reasons for giving that direction.

2. Root Control is one of a number of respondents in this proceeding which was commenced on 10 July 1998 by Root Quality Pty Ltd (Root Quality) and R & R Owen Nominees Pty Ltd seeking relief in relation to certain conduct said to be in contravention of s 52(1) of the Trade Practices Act 1974 (Cth) and s 128 of the Patents Act 1990 (Cth). By its cross-claim Root Control alleges that Root Quality has infringed the patent. That claim is defended on a number of grounds, some of which go to the validity of the patent. A notice of motion to amend the patent was issued in the proceeding and I ordered that it be heard and determined before the trial.

3. The complete specification of the patent is entitled “Plant Growth Container” and concerns a container suitable for growing plants which are later to be transplanted.  In the body of the specification the invention is given the following description:

   “A container according to the invention is comprised of the flexible strip of material having a length greater than its width and having an inner and outer surface, said inner surface being formed in part by a lattice of root guiding recesses, at least some of said recesses being of substantially truncated conical form having a wall which converges towards a hole through the strip, said outer surface being formed in part by a lattice of protruberances (sic) at the same relative positional arrangement as the recesses, said strip arranged in a cylinder with its opposite ends overlapping and the protuberances on the outer surface of one end nesting within the recesses on the inner surface of the other end at the overlap, fastening means being provided to hold the strip in said overlapping, nested engagement.”

4. The main aim of the invention is to provide a container that guides the primary roots of plants radially towards the holes in the container walls.  As the roots approach the holes they are “air pruned” causing secondary roots to branch from the primary roots forming a cohesive root ball which is said to be ideal for planting.

5. It is an object of the invention to provide a container which is easily adaptable in diameter.  According to the specification the size of the container can be increased as is desired by disconnecting the end of the strip that overlaps with and nestles within the recesses of the opposite end, adjusting the degree of overlap by either increasing or decreasing the area of overlap and then reconnecting the ends. 

6. The specification states that it is necessary to provide a fastener to hold the overlapping ends in their engaged and overlapped condition.  It continues: “The fastener may comprise a rivet but if it is desirable to reuse, or expand the diameter of the container, a releasable fastening means may be provided.  For example a strap or tie which passes through aligned holes at the overlap could be used, or an adjustable strap or belt which extends around the circumference of the container could be used for this purpose.”

7. The claims in the complete specification are of four kinds.  First there are claims to a container for growing plants (claims 1, 2 and 3).  The principal and the broadest claim is to be found in claim 1 and it follows the description of the invention set out in the body of the specification.  According to that claim the container has the following features:  (i) it is formed from a flexible strip of material that has a length greater than its width; (ii) the inner surface is formed in part by a lattice of root guiding recesses; (iii) some root guiding recesses have a substantially truncated conical form having a wall which converges towards a hole; (iv) the outer surface is formed by a lattice of protuberances; (v) the protuberances are at the same relative position or arrangement as the recesses; (vi) the strip is arranged in a cylinder with the opposite ends overlapping; (vii) the protuberances on the outer surface of one end nest within the recesses on the inner surface of the other end at the overlap; and (viii) the container has a fastening means to hold the strip in the overlapping nested engagement. 

8. Claims 2 and 3 depend upon claim 1.  Claim 2 provides for the flexible strip of material to be formed of a relatively thin sheet of plastic and that the formation of the root guiding recesses in the inner surface produce the protuberances on the outer surface.  Claim 3 provides for each recess to lead towards a hole through the strip. 

9. Secondly there are claims for a strip of material for forming an open topped container within which a plant can be grown (claims 4, 5, 6 and 7).  Claim 4 describes the features of the strip of material and they comprise the same features as are to be found in claim 1 with one additional feature namely that the “strip [be] formed of a material which is sufficiently flexible so that strip can be rolled into a cylindrical form”.  The means of fastening the overlapping ends is not mentioned.  Claims 5 and 6 repeat the features described in claims 2 and 3 and claim 7 is for a strip according to the features of claims 4 to 6 but where the material is made of foamed polystyrene. 

10. Thirdly there is a claim for a method of growing a plant which is intended to be transplanted (claim 8).  The method is by use of the strip of material according to claim 4.

11. Finally there are three “as described” claims (claims 9, 10 and 11), one for a container, one for a strip of material and one for a method of growing plants.  The claims are for a container, strip of material and method as described in the body of the specification and as illustrated in the drawings which form part of the complete specification. 

12. It is convenient to set out the amendments in an appendix to these reasons.  They comprise both deletions that are indicated by square brackets and additions that are indicated by underlining.

13. The provisional application for the patent was filed on 20 November 1989 by Ronneby Tree Farm Pty Ltd (Ronneby).  Before the provisional specification had been drawn Ronneby was aware of another expandable container that was being used for the growing of plants.  Searches disclosed that this container was the subject of a United States patent 4716680 and an Australian patent application that corresponded to the United States patent.  Also discovered was an Australian patent application 18331/88 for an expandable container.  The inventors named in the United States patent and the Australian patent application 18331/88 were Carl Whitcomb and Harold Stephens.  Ronneby also had a brochure concerning the container the subject of Australian patent application 18331/88 that was written by Dr Whitcomb and Mr Stephens.

14. The patent attorney acting on behalf of Ronneby, Mr Paul Savage of Phillips Ormonde & Fitzpatrick, Patent Attorneys (Phillips Ormonde), considered the complete specification of the United States patent and an abstract of the Australian patent application 18331/88 and formed the opinion that the “SpringRing” container (the name given to the Ronneby invention) was different from and had certain advantages over the container described in those documents.  With regard to the container described in the United States patent, Mr Savage formed the opinion that it did not appear to be possible to vary the size of the container in the same manner as the SpringRing, that the SpringRing container employed a simpler means of connecting the ends and that it would be cheaper and simpler to manufacture the material used to make the SpringRing container as it could be formed in a continuous roll whereas the container described in the United States patent required the use of panels that would need to be individually moulded.  There were other differences that he noticed.

15. Mr Savage’s examination of the Australian patent application 18331/88 and the brochure that described the container the subject of that application led him to the opinion that the containers there described also differed from the SpringRing container.  The differences included the following.  The root guiding recesses of the SpringRing container also functioned to act as the means to join together the ends of the material to form the container.  The container disclosed in the Australian patent application and the brochure was comprised of panels of a pre-determined length that had special joints that were more complicated to engage and that the panels would be more difficult and expensive to manufacture than the material in the SpringRing container.  He also formed the view that the SpringRing container could be easily varied to alter the size of the container whereas the size of the container disclosed in the Australian patent application and the brochures could only be altered by adding or removing panels.

16. After reviewing the material Mr Savage drafted the provisional specification for the SpringRing container and in 1990 he prepared the complete specification that was subsequently accepted. 

17. On 15 May 1998 the business and assets of Ronneby were sold to Root Control and an associated company and the patent was assigned to Root Control. 

18. In late March 1998, Mr M Styan, a former employee of Ronneby and now employed by Root Control as its general manager, located in his garage a number of panels for forming an air root pruning container.  Each panel had a series of recesses extending across its surface with holes in each recess.  At the ends of the panels there were arrangements of tongues and grooves and buttons and rings for securing one panel to an adjacent panel.  At one end of each panel there was also an additional two rows of recesses.  Each recess led to a hole.

19. It appeared to Mr Styan that the panels that he had located had been developed by Dr Whitcomb and were the panels the subject of Australian patent application 18331/88.  At the time Mr Styan did not consider that the panels were of any particular relevance to the validity of the patent.  However on 1 July 1998, during the course of a conversation concerning the institution of proceedings against Root Quality for infringement of the patent, Mr Styan mentioned that he had located the panels in March 1998 and that he understood that those panels had been produced by Dr Whitcomb in accordance with those illustrated in Australian patent application 18331/88.  He arranged to send the panels to Phillips Ormonde, which had been engaged by Root Control to prosecute the claim against Root Quality.

20. In this way the panels came into the possession of Mr T Collins, a patent attorney with Phillips Ormonde.  He first viewed the panels on 2 July 1998.  He formed the opinion that the panels were a modified version of the panel disclosed in Australian patent application 18331/88.  He noticed that when the panels were joined to form a container the two rows of recesses located at the end of the panel nested within the protuberances of the adjacent end.  Accordingly Mr Collins decided that it would be appropriate to amend the claims of the patent to clarify the invention defined by the claims, in particular to clarify that the SpringRing was distinguishable from the features of the panel, to better describe the invention and finally to correct a minor clerical error that had been noticed.  The amendments

    
    
    

    were drafted shortly thereafter and a request for amendment was filed in the Patents Office on 17 July 1998. 

21. The nature and effect of the amendments is as follows.  With regard to claim 1 there are three amendments.  The first requires each recess to be of substantially truncated conical form and to have a hole in the end wall of the recess.  The second is to require the lattices of recesses and protuberances to extend from one end of the side wall to the other.  It is possible that claim 1 in its unamended form requires this to be the case but it is by no means clear.  The amendments to claim 1 have the effect of limiting the scope of the claim by adding additional integers.  Each additional integer is described in the general body of the complete specification and the requirement that each recess is to have a hole at the end is apparent from the drawings that form part of the specification.

22. The next amendment is the deletion of claim 3.  Root Control considers that in consequence of the amendments to claim 1, claim 3 is redundant and that certainly appears to be the case. 

23. New claim 3 is dependent on claim 1 and is directed to the use of a separately formed fastener.  It will be recalled that the complete specification describes a variety of fasteners that may be used to keep the overlapping ends of the strip in an engaged position.  They include the use of fasteners that are separate from the flexible strip.

24. New claim 4 is also a dependent claim and is directed to one of the fasteners that is described in the complete specification being the fastener that is depicted in drawing number 5 in the specification. 

25. New claim 5 is dependent on claim 1 and requires two or more rows of protuberances to nest within the respective rows of recesses at the overlap between the ends of the side wall.  The principal reason for this amendment is to distinguish the SpringRing container from the Whitcomb panel.  It is an amendment that limits the scope of claim 1 by the addition of a new feature.

1. New claim 6 requires at least three rows of protuberances to nest within the respective rows of recesses at the overlap between the ends of the side wall.  It also limits the scope of

   
   

   claim 1.

2. New claim 7 requires the container according to claims 5 and 6 to have each adjacent row of protuberances nest fully within the recesses of the rows of recesses.  It is likely that new claims 6 and 7 do no more than reinforce the features introduced by new claim 5. 

3. New claim 8 is for a container having the features described in claim 1 and certain additional features which may, in part, be no more than a clarification of what is contained in claim 1.  One additional feature is that the recesses on the inner surface of the flexible strip produce the protuberances on the outer surface.  It is also indicated that the extent of the overlap of the strip can be selectively increased or decreased so as to increase or decrease the diameter of the cylinder.  Finally a fastener is described, being a fastener extending through a hole of each of two protuberances. This is a limitation to claim 1.

4. New claim 9 is substantially the same as claim 5 but is dependent on new claim 8.  It requires the protuberances on the inner surface of the strip to be disposed between two adjacent recesses of the lattice of recesses.

5. New claim 10 is not a dependent claim but a new claim.  It is directed to a container as described in claim 1 but with the following additional features.  It provides for an adjustment to the degree of overlap at the end of the container side wall and includes the features in new claims 3 and 4.  Mr Collins said that the adjustment feature is implicit in claim 1 but thought it prudent to include the feature in a new claim lest his construction of claim 1 turns out to be incorrect.  The introduction of the features of new claims 3 and 4 are primarily designed to distinguish the invention from the Whitcomb panel. 

6. The amendments to claims 13, 14, 15 and 18 are consequential and the amendments to claims 16 and 17 correspond to the original claims 9 and 10.  They need not be separately discussed.

7. The final amendment is to original claim 11 (now renumbered as claim 21) and this involves the correction of a clerical error in the drafting of the complete specification.  There was a mistake in the identification of the drawings appearing in the general body of the specification.

8. A copy of the motion seeking the amendments was served on the Commissioner of Patents (see s 105(3) of the Patents Act 1990) and an advertisement giving notice of the application was published in the Official Journal. The Commissioner has advised the Court that in his view the proposed amendments comply with s 102 of the Patents Act and, in consequence, he did not appear on the return of the motion.  No other person appeared to oppose the motion.  The applicants had originally indicated that they would oppose the motion but, for reasons not explained, they did not prosecute their objections.

9. Section 105(4) of the Patents Act provides that the court is not to direct an amendment to a complete specification that is not allowable under s 102. Section 102 relevantly provides:

   “(1)    An amendment for complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

   (2)      An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:

   (a)a claim of the specification would not in substance fall within the scope of the claims for the specification before amendment; or

   (b)the specification would not comply with subsection 40(2) or (3).

10. For completeness it is also necessary to set out subsections 40(2) and (3).  They provide:

    “(2)   A complete specification must:

    (a)   describe the invention fully, including the best method known to the applicant of performing the invention; and

    (b)   where it relates to an application for a standard patent - end with a claim or claims defining the invention; and

    (c)   where it relates to an application for a petty patent - end with a single claim , or a single independent claim and not more than 2 dependent claims, defining the invention.

    (3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.”

11. For reasons which should be by now apparent from my description of the amendments it is my view that each amendment that has been sought is in relation to matters that have in substance been disclosed in the specification, that the claims as amended fall within the scope of the claims of the specification before amendment and that the amendments comply with subsections 40(2) and (3). In arriving at these conclusions I am comforted by the fact that the Commissioner has indicated that in his view the amendments are not prohibited by s 102. Most (but not all) of the amendments have reduced the scope of the claims by taking out of infringement something that would otherwise be an infringement by the addition of extra integers. Subject to the applicable discretionary considerations and compliance with s 102 there is usually no good reason why such amendments should not be allowed. It also appears clearly enough that some amendments, particularly the amendments to claim 1 (in part) and new claims 8 and 10 (in part), do no more than clarify or explain more clearly the meaning of the invention.

1. In considering whether to allow the amendments the following are matters that I have also taken into account.  First, there is no opposition to the orders sought, in particular there is no opposition by the parties against whom the infringement proceeding has been brought.  Second, on the evidence that has been tendered, I am satisfied that Mr Savage, the draftsman of the provisional specification and the complete specification, seems to have acted in good faith and with reasonable skill in the way the claims were originally drafted:  Joseph Lucas (Batteries) Ltd v Gaedor Ltd [1978] RPC 297 at 386-387. If the applicants intend to rely upon s 115 of the Patents Act in the infringement claim this issue will need to be revisited.  Third, and this follows from my previous finding, I cannot detect any intention on the part of Ronneby to draw the complete specification so as to claim an invention that was neither believed nor suspected to be valid for the purpose of claiming a monopoly that was not in fact available:  Farbwerke Hoeschst A.G. Vormals Meister Lucius & Bruning v Commissioner of Patents (1971) 124 CLR 654 at 667. Fourth, there was no delay in making the application to amend the specification after the existence of Dr Whitcomb’s panel was brought to the attention of those advising Root Control. Indeed it was only a matter of two weeks or so before the application was made: Rescare Ltd v Anaesthetic Supplies Pty Ltd (Gummow J, 4 March 1993, unreported) at 10-12; Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 at 567-569, 577; Wilkinson Sword Ltd v Gillette Industries Ltd and Warner Lambert Co [1975] RPC 101 at 105. Finally, I have left out of account the possibility that, by making the amendments, it might be more difficult for Root Quality and R & R Owen Nominees to defend the infringement claim that has been brought against them. By itself that is not a sufficient reason to refuse the amendments: Mabuchi Motor KK’s Patent [1996] RPC 387 at 400.

2. It is for these reasons that I directed the amendments be made.

I certify that the preceding thirty-eight (38) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein

Associate:

Dated:            11 January 1999

Solicitor for the Applicant:	Slonims
Counsel for the Respondent:	Mr G McGowan
Solicitor for the Respondent:	Minter Ellison
Date of Hearing:	9 December 1998
Date of Judgment:	11 January 1999

Appendix

THE CLAIMS DEFINING THE INVENTION ARE AS FOLLOWS:

1.        A container for growing a plant comprised of a flexible strip of material having a length greater than its width and having an inner and an outer surface, said inner surface being formed in part by a lattice of root guiding recesses, [at least some of] each said recess[es] being of substantially truncated conical form having a wall which converges towards a hole through the strip, said outer surface being formed in part by a lattice of protruberances (sic) at the same relative positional arrangement as the recesses, said strip arranged in a cylinder with its opposite ends overlapping and the protruberances (sic) on the outer surface of one end nesting within the recesses on the inner surface of the other end at the overlap, said lattice of root guiding recesses and said lattice of protruberances (sic) each extending completely from one end of the strip to the other end, fastening means being provided to hold the strip in said overlapping, nested engagement.

2.        A container according to claim 1 wherein said strip is formed of a relatively thin sheet of plastics material and the formation of said recesses in said inner surface produces said protruberances (sic) in said outer surface.

[3.       A container according to claim 1 or 2 wherein each recess leads towards a hole through said strip.]

3.        A container according to any preceding claim, wherein said fastening means includes a fastener which is formed separate from said flexible strip.

4.A container according to claim 3 when appended to claim 2, wherein each said hole is formed through the apex of a respective one of said protruberances (sic), and said fastener extends through a said hole of each of two said protruberances (sic), one of which protruberance (sic) is nested within the other.

5.A container according to any preceding claim, wherein said recesses and said protruberances (sic) are each arranged in rows extending transverse to the longitudinal axis of said strip, and the protruberances (sic) of two or more adjacent said rows of said protruberances (sic) nest within respective rows of said recesses at said overlap.

6.        A container according to claim 5, wherein said recesses and said protruberances (sic) are each arranged in rows extending transverse to the longitudinal axis of said strip, and the protruberances (sic) of at least three said adjacent rows of said protruberances (sic) nest within respective rows of said recesses at said overlap.

7.A container according to claims 5 or 6 wherein said protruberances (sic) of each of said adjacent rows of protruberances (sic) nest fully within said recesses of the respective said row of recesses.

8.        A container for growing a plant comprised of a flexible strip of material having a length greater than its width and having an inner and an outer surface, said inner surface being formed in part by a lattice of root guiding recesses, each said recess being of substantially truncated conical form having a wall which converges towards a hole through the strip, said outer surface being formed in part by a lattice of protruberances (sic) at the same relative positional arrangement as the recesses, the formation of said recesses in said inner surface producing said protruberances (sic) in said outer surface and each said hole being formed through the apex of a respective one of said protruberances (sic), said strip arranged in a cylinder with its opposite ends overlapping and the protruberances (sic) on the outer surface of one end nesting within the recesses on the inner surface of the other end at the overlap, said lattice of root guiding recesses and said lattice of protruberances (sic) each extending completely from one end of the strip to the other end and said protruberances (sic) and said recesses being arranged such that the extent of said overlap can be selectively increased or decreased so as to thereby decrease or increase respectively the diameter of said cylinder, and a fastener formed separate from said flexible strip being provided to hold the strip in said overlapping, nested engagement, said fastener extending through a said hole of each of two protruberances (sic), one of which protruberance (sic) is nested within the other.

9.        A container according to any preceding claim, wherein said inner surface is formed by said lattice of recesses and a lattice of inner surface protruberances (sic), said inner surface lattices being relatively arranged such that each protruberance (sic) of said lattice of inner surface protruberances (sic) is disposed between a respective two adjacent recesses of said lattice of recesses.

10.      A container according to any preceding claim, wherein such outer surface is formed by said outer surface lattice of protruberances (sic) and a lattice of outer surface recesses, said outer surface lattices being relatively arranged such that each recess of said lattice of outer surface recesses is disposed between a respective two adjacent protruberances (sic) of said lattice of outer surface protruberances (sic).

11.A container according to claim 10 when appended to claim 9 wherein each said outer surface recess forms a respective one of said inner surface protruberances (sic).

12.      [4]      A strip of material for forming an open topped container within which a plant can be grown, said strip having a length greater than its width and an inner surface and an outer surface, the inner surface being formed in part by a lattice of root guiding recesses, [at least some of] each said recess[es] being of substantially truncated conical form having a wall which converges towards a hole through the strip, the outer surface being formed in part by a lattice of protruberances (sic) at the same relative positional arrangement as the recesses, said strip being formed of a material which is sufficiently flexible so that strip can be rolled into a cylindrical form with opposite ends of the strip overlapping and the protruberances (sic) on the outer surface of one end nesting within the recesses on the inner surface of the other end, said lattice of root guiding recesses and said lattice of protruberances (sic) each extending completely from one end of the strip to the other end.

13.      [5]      A strip according to claim 12 [4] wherein the material is a thin thermoplastic plastics material, the recesses on the inner surface forming the protruberances (sic) on the outer surface.

14.      [6]      A strip according to claims 12 or 13 [4 or 5] wherein each recess leads towards a hole through the strip.

15.      [7]      A strip according to any one of claims 12 to 14 [4 to 6] wherein the material from which the strip is made is a foamed polystyrene material.

16.A strip according to any one of claims claim 12-15, wherein said inner surface is formed by said lattice of recesses and a lattice of inner surface protruberances (sic), said inner surface lattices being relatively arranged such that each protruberance (sic) of said lattice of inner surface protruberances (sic) is disposed between a respective two adjacent recesses of said lattice of recesses.

17.A strip according to any one of claims 12-16, wherein said outer surface is formed by said outer surface lattice of protruberances (sic) and a lattice of outer surface recesses, said outer surface lattices being relatively arranged such that each recess of said lattice of outer surface recesses is disposed between a respective two adjacent protruberances (sic) of said lattice of outer surface protruberances (sic).

18.      [8]      A method of growing a plant which is intended to be transplanted including the steps of providing a strip according to claim 12 [4], rolling said strip into a cylindrical form to form a container of relatively small diameter, retaining said container in said rolled condition with adjustable fastening means, filling said container with growing medium and planting a plant in said growing medium, allowing said plant to grow for a selected period of time, releasing said fastening means, unrolling said strip to a degree to expand the diameter of said container, refastening the fastening means, and filling the expanded container with additional growing medium.

19.      [9]      A container substantially as hereinbefore described with reference to one of the embodiments shown in the drawings.

20.      [10]     A strip of material substantially as hereinbefore described with reference to one of the embodiments depicted in the drawings.

21.      [11]     A method of growing plants substantially as hereinbefore described with reference to Figures 1 to 9 [11 to 13] of the drawings.