Roy Edward Labounty v. Hydraulic Machinery Company of New Zealand Limited
[1991] APO 31
•23 August 1991
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 562750 by ROY EDWARD LaBOUNTY and Opposition to the Grant of a Patent thereon by HYDRAULIC MACHINERY COMPANY OF NEW ZEALAND LIMITED.
Background
Application 562750 for an invention entitled "Metal Demolition Shear" was lodged by ROY EDWARD LaBOUNTY on 5 September 1983. The application claims priority from an earlier application filed in the USA on 13 September 1982. Acceptance of the application was advertised in the Official Journal on 18 June 1987 and on 18 September 1987 HYDRAULIC MACHINERY COMPANY OF NEW ZEALAND LIMITED ("HYDRAULIC") lodged a notice of opposition under s.59 of the Patents Act 1952 to the grant of a patent on the application.
Service of evidence in support of the opposition was completed on 31 October 1988 and LaBOUNTY served evidence in answer on 19 May 1989. No evidence in reply was served by HYDRAULIC.
The matter was heard in Canberra on 15 May 1990. Mr Barry J. Hess of Counsel appeared for the applicant, LaBOUNTY. By correspondence received on 14 May 1990, the patent attorneys acting for HYDRAULIC informed the Patent Office that the opponent would not be represented at the hearing but asked that written submissions included with the correspondence be considered.
The notice of opposition lists seven of the grounds of opposition available under s.59, including prior publication and lack of novelty.
The Specification
The invention is broadly described in the introductory paragraph of the specification thus:
"This invention relates to a heavy duty shear, especially adapted to be mounted on a rigid boom of a mobile vehicle and particularly adapted to be mounted on the dipper stick of a backhoe."
The specification indicates that such shears, which can be powered by hydraulic means, are useful in handling and severing scrap materials, especially metal scrap of all forms. The object of the invention is to provide an improved heavy duty shear.
The specification ends with 22 claims, claims 1, 11 and 20 being independent. The invention, in its broadest form is that defined by claim 1. This claim reads as follows:
1. A heavy duty shear for attachment to the boom structure and hydraulic system of a backhoe, comprising:
a lower jaw and an upper jaw and pivot means interconnecting the jaws together, the lower jaw having mounting means for attachment to the boom structure of the backhoe and the upper jaw having means for attachment to the hydraulic system of the backhoe for closing and opening the upper jaw relative to the lower jaw,
the lower jaw and the upper jaw having rigid lower and upper shear blades extending along each other for shearing a workpiece of such scrap metal when the upper blade is closed onto the lower shear blade,
the upper and lower shear blades having inner and outer workpiece engaging edge portions opposite to each other and also having intermediate portions between said inner and outer edge portions, the inner and outer edge portions of the upper shear blade extending obliquely of each other,
the lower jaw also having a rigid guide blade lying along and spaced from the lower shear blade to permit the upper shear blade to pass therebetween,
and the guide blade having a top supporting surface spaced below the cutting edge of the lower shear blade by a distance approximating the thickness of the lower shear blade so as to be spaced below the workpiece on the shear blade, the top supporting surface extending along both the inner and outer edge portions of the lower shear blade to receive and support the workpiece after the workpiece is severed by the shear blades."
The Evidence
The opponent lodged two statutory declarations in support of its opposition. They are as follows:
(a)A declaration by Leon Keith Allen, who declares as follows:
"1.I am a Registered Patent Attorney employed by Shelston Waters.
2.Annexed hereto and marked LKA1 is a photocopy of a letter dated 20 June, 1982 from The Dudley Shearing Machine Manufacturing Co. Ltd. to Coutinho Caro and Co (Australia) Pty. Limited. The letter is marked for the attention of Mr P. Treichel.
3.Annexed hereto and marked LKA2 is an original Cleaver 150R brochure and a photocopy of a Cleaver 200 brochure which are referred to in the letter of annexure LKA1.
4.I have been requested by Messrs Kelvin Lord & Company who are acting for the opponent in the above matter to obtain evidence as to the date of receipt of the letter and brochures in Australia. I have learnt that Coutinho Caro and Co. (Australia) Pty. Limited of 11th Floor, 55 Clarence Street, Sydney changed its name in February 1988 to Stemcor (A/Asia) Pty. Limited and has also changed its address to 9th Floor, 68 Alfred Street, Milsons Point, New South Wales.
5.I have learnt that Mr Paul Treichel is the current Managing Director of Stemcor (A/Asia) Pty. Limited.
I have made attempts to have Mr Treichel execute a statutory declaration confirming the date of receipt of the latter of annexure LKA1, however, Mr Treichel has declined to provide such a declaration. Annexed hereto and marked LKA3 is an original letter from Mr Treichel confirming the date of receipt of the letter but declining to provide a statutory declaration."
(b)A declaration by Brian Dempster Dennis of Lugarno, Sydney, operations director of Metal Recyclers (NSW) Pty. Ltd. of Sydney. Annexures to his declaration are:
BDD1- a photocopy of the opposed specification 562750.
BDD2- a photocopy of a brochure illustrating the CLEAVER 150R scrap shear.
BDD3‑ the claims of specification 562750 in paraphrased form and including reference numerals, etc.
BDD4‑ a key to symbols used in annexure BDD3 referring
to integers of the Cleaver 150 device.
Concerning annexure BDD2, Mr Dennis declares that with regard to the brochure of which BDD2 is a photocopy, "I am told (it) arrived in Australia prior to the earliest priority date of Patent Application No. 562750".
Two statutory declarations were lodged on behalf of the applicant as evidence in answer, namely,
(a)a declaration by the applicant, LaBOUNTY, and
(b)a declaration by EARLE EMBREY of San Remo, Victoria, Managing Director of LaBounty Manufacturing Australia Pty. Ltd.
The opponent's main attack on the opposed application is one of prior publication of the claimed invention based on the disclosures in the Cleaver 150R or Cleaver 200 brochures. Mr Hess discussed at some length the nature of the opponent's evidence in this matter, particularly that concerning which of the brochures may have been available in Australia and when. Accordingly, I will briefly describe the evidence including the brochures referred to and annexed.
(a) Allen's declaration
Annexure LKA1 is a copy of a typed letter signed by Brian Purser. The letter of the exhibit bears a letterhead of "The Dudley Shearing Machine Manufacturing Co. Ltd." ("DUDLEY") of "Off Engine Lane, .... West Midlands" in the UK, and bears a somewhat illegible block stamp from which "‑ 1 JUL" is only clearly evident. Brian Purser is indicated as Managing Director of DUDLEY. The letter of annexure LKA3 refers in part to an earlier letter "dated 6th January 1986 in which we informed you that our records indeed show that we received the said letter on 1st July, 1982".
The text of the letter of annexure LKA1 reads in part thus:"We are pleased to announce the Cleaver is now ready for sale, after a considerable period of research and development.
Production has started of the Cleaver 200 and we are currently looking for agents worldwide. If this information is of interest to you, would you please contact us as soon as possible. At that time we can give you more information regarding Dealer Price, Recommended List Price, Delivery Times and the type of Excavator our machine would be suitable for.
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Encs:Cleaver 150R and 200 Brochures."
Annexure LKA2 includes a colour brochure printed at the top of the front sheet with a bold heading "CLEAVER 150R" and thereunder "PATENT PENDING No. 8217842". On the last or fourth sheet is printed the name of the company, DUDLEY, with an address of "Nevada Lane, ... Stoke on Trent", and a sticker thereunder indicates a local dealer as "Morrison Marshall & Hill" of Surrey in the UK. Also included in this annexure are three photocopied sheets referring to a Cleaver 200, the first sheet bearing a bold heading of "CLEAVER 200" and the third sheet identifying the company DUDLEY of "Engine Lane, .... West Midlands".
(b) Dennis declaration
Clause 6 of the Dennis declaration states:"Annexed hereto and marked "BDD2" is a photocopy of a brochure illustrating the CLEAVER 150R scrap shear which brochure I am told arrived in Australia prior to the earliest priority date of Patent Application No. 562,750. I confirm that I have had the opportunity to examine in detail an original of the CLEAVER 150R brochure which I understand has been lodged as part of the evidence in support of these opposition proceedings."
Annexure BDD2 comprises four photocopied sheets. The first sheet bears printing on both sides including a bold heading "CLEAVER 150R", refers to "specification sheet", includes the company name DUDLEY of "Nevada Lane .... Stoke‑on‑Trent" and identifies a local (apparently Australian) dealer as "BRENTWOOD" and an address of "Unanderra 2526". A further name of "The Dudley Shearing Machine Manufacturers Co. Ltd." (my underlining) appears at the bottom of the second side. The remaining three sheets relate to a Cleaver 150R machine and appear to comprise photocopies of the first three sheets of the colour brochure of Annexure LKA2 or a similar brochure, on which Dennis has marked certain reference symbols in red.
(c) Other material before the Commissioner
In the course of his submissions, Mr Hess also referred to material given directly to the Commissioner on 26 May 1988 by the company DUDLEY under cover of a "With Compliments" slip. A copy of this material had been provided to the applicant by the Patent Office. There are two parts to this material. The first part contains a photocopy of a letter with equivalent text to that annexed as LKA1 although there are differences including the layout of the text and the style of signature of Brian Purser when compared to the LKA1 letter. Also included in this part are:
(i)a colour brochure with bold headings "NEW" and "CLEAVER 150R" at the top of the front sheet, and reference to DUDLEY and its address of "Engine Lane, ... West Midlands" on sheet 3 (this brochure is substantially different to the CLEAVER 150R brochure of annexure LKA2), and
a colour brochure headed CLEAVER 200, bearing pictures on sheets 1 to 3 but no further written material, quite unlike the photocopied sheets referring to a CLEAVER 200 included with annexure LKA2.
The second part comprises various photocopied sheets apparently related to some action involving LaBOUNTY before the US Patent Office. This material appears irrelevant to the present matter so I will not describe it further.
(d) Further evidence
At the hearing Mr Hess tabled a statutory declaration by Raymond Roy Prentice, a Chartered Patent Agent of the United Kingdom, and he sought to have this declaration included as evidence in this opposition. I indicated to him that to be admitted as evidence, the requirements of regulation 59 needed to be satisfied. Mr Hess explained that the material had only been received by his instructing attorneys the day prior to the hearing and thus there was insufficient time to address regulation 59 requirements. In any event, Mr Hess submitted that certain annexures to the declaration were copies of public material on the public records in the United Kingdom and ought to be considered by the Commissioner, whether adduced under the further evidence provisions or supplied in a certified form. At the hearing I indicated to Mr Hess that I would allow his client time subsequent to the hearing to reconsider his position regarding this "further" evidence and decide whether to pursue regulation 59 requirements or another avenue.
Subsequent to the hearing Mr Dyson, patent attorney for the opponent, advised me that the opponent did not intend to pursue the lodging of further evidence under regulation 59, but wished to place certain certified material from the public record in the United Kingdom before the Commissioner. In fact, the attorneys lodged this material on 7 August 1990. It comprises certified copies of records concerning the registration of the company DUDLEY namely:
Certified copy of "Declaration of compliance with the Requirements on Application for Registration of a Company" (Form 41a) dated 7 July 1982.
Certified copy of "Statement on Formation of a Company to be incorporated with Limited Liability under Companies Act 1948" (Form PUC1 Revised) dated 7 July 1982.
Certified copy of Memorandum of Association of "The Dudley Shearing Machine Manufacturing Co. Ltd." dated 8 July 1982.
A certificate under the Companies Act 1985 stating that DUDLEY was incorporated on 2 August 1982 with registered company number 1655743.
The declaration of Prentice had included, as an annexure, a copy of Form 41a (item 1 above), and a file copy of the certificate of incorporation. That declaration had also included as an annexure, (a) a copy of a Form 1 "Statement of first directors ..." which was signed by the named directors, etc on either 23 or 24 June 1982, and gave an intended company address of "RIDGWAY ROAD, HANDLEY, STOKE‑ON‑TRENT, and (b) a first "Notice of change in situation of registered office" (Form 4a) for DUDLEY to the address "BOTT LANE, LYE, WEST MIDLANDS", dated 17 August 1982, and a second Form 4a notifying a new address "Nevada Lane, ... Stoke‑on‑Trent", dated 20 June 1984.
The opponent was provided with an opportunity to comment on the material lodged by the applicant on 7 August 1990. On 20 December 1990, the opponent's attorneys provided some comments, but it is clear from them that the New Zealand agents for the opponent
had been unable to obtain replies to enquiries arising from the lodged material directed to DUDLEY in the UK.
Applicant's submissions
Mr Hess presented lengthy submissions at the hearing. In doing so he provided a detailed analysis of the opponent's evidence filed in this matter. He canvassed in-depth issues relating to what material may have been available in Australia before the priority date and whether such material was "published" in accordance with patent law. These submissions were directed at answering the evidence of the opponent which alleges that the claimed invention is either prior published or not novel in the light of the disclosures in the CLEAVER 150R or CLEAVER 200 brochures. Mr Hess' main submissions may conveniently be summarised as follows:
1. The DUDLEY letter
Whilst an inference could be drawn from the opposition evidence that a letter, a copy of which appears as annexure LKA1, was received by the addressee on 1 July 1982, there is no satisfactory evidence proving receipt on that date. Mr P. Treichel, to whom the letter was marked for attention, has not provided evidence on this point. Furthermore, the letter of annexure LKA3 signed by "Paul Treichel" refers to "said letter" but whether by this reference the letter from DUDLEY dated 20 June 1982 is meant is uncertain. There is also no evidence to establish that the letter in question was in fact prepared and sent by DUDLEY to Australia on or about 20 June 1982. Consequently, given the absence of evidence of the type mentioned, it is uncertain whether the letter had been received on 1 July 1982 as alleged.
Additionally, Mr Hess drew attention to the fact that firstly, there were copies of two versions of the DUDLEY letter on the official file, and secondly, those letters bore a DUDLEY company letterhead and an address "BOTT LANE ...". On the second point, public records indicated that DUDLEY was first registered as a limited company on 2 August 1982 and notified an address of "Bott Lane ..." on a form dated 17 August 1982.
2. Cleaver 150R and Cleaver 200 brochures
Even assuming that the DUDLEY letter was received in Australia on 1 July 1982, there is no conclusive evidence concerning what brochures (if any) may have been enclosed with the letter. Allen in his declaration, when identifying the brochures of annexure LKA2, merely states that they "are referred to in the letter of annexure LKA1". Allen was not the addressee of the DUDLEY letter and thus is in no position to identify what brochures were enclosed with the DUDLEY letter. Similarly declarant Dennis is not in a position to so declare. In any event, the opponent's evidence is inconsistent on the brochures since different versions of the Cleaver 150R and Cleaver 200 brochures are annexed to the declarations of Allen and Dennis, and further versions were included with the material DUDLEY (independently of the opponent) sent to the Patent Office.
Given the lack of consistency regarding the brochures and the fact that there is no direct evidence of what brochures were sent with the DUDLEY letter received in Australia, it is uncertain whether any of the brochures lodged in evidence were enclosed with the letter and allegedly received in Australia on 1 July 1982.A further point which creates doubt regarding whether the CLEAVER 150R brochure of annexure LKA2 could have been enclosed with the DUDLEY letter arises from the printing thereon of the patent pending No. 8217842. Mr Hess submitted that it was a matter of public record that this number related to an application for a patent made in the United Kingdom on 19 June 1982, which it should be noted is one day prior to the date appearing on the DUDLEY letter. Mr Hess added that without explanation to the contrary, it seemed highly improbable that a printed brochure bearing that patent pending number could have been available for inclusion with a letter dated, and presumably sent, one day after patent documents were filed at the British Patent Office to which that application number was allocated.
Mr Hess concluded his submissions summarised under this and the preceding heading thus:
"The opponent, who has the burden of proving publication, has totally failed to prove, by direct evidence or by any inferential material, any basis whereby the Commissioner could safely conclude against the applicant that the material purportedly put forward in the Allen declaration was ever sent from the United Kingdom to Australia or was ever received in Australia, and equally whether any material put forward in the s.57 documentation was ever sent from the UK or received in Australia."
3. Whether material published in Australia
Mr Hess submitted that even if it be assumed that a CLEAVER 150R and a CLEAVER 200 brochure were received in Australia by Mr P. Treichel with the letter on 1 July 1982, mere receipt does not constitute publication in Australia of those brochures in accordance with established patent law. There is no evidence indicating the fate of the brochures on receipt of the letter and in particular whether they were viewed, read and understood by Mr Treichel or anyone else. Mr Hess submitted that if on receipt of the brochures Mr Treichel merely glanced at them and then filed them away, say, because his company had no interest in that type of equipment, then application of the relevant case law leads to the conclusion that there was no publication of the brochures and of their subject matter in Australia at that time.
4. Whether brochures publish the invention
Mr Hess submitted that even were I to find that the brochures were published in Australia before the priority date of the claims, their contents were not such as to disclose the present invention. He argued that there was no evidence adduced by suitably qualified persons to indicate the disclosure of the brochures at their alleged publication date in Australia. As the brochures contain photographs of apparatus, it was encumbent upon the opponent to provide relevant evidence to establish their disclosures.
5. Onus on opponent
The onus is on the opponent to provide evidence to establish the grounds of opposition alleged. The applicant should be afforded the benefit of any doubt arising from uncertain or inconclusive aspects of the opponent's case. Mr Hess referred to the often cited judgement in Montecatini Edison SpA v Eastman Kodak Co (1971) ALJR 593 at 595 to support his submission on this point.
Opponent's written submissions
The opponent's patent attorneys, Kelvin Lord and Company, lodged written submissions in support of the opposition on 14 May 1990. These submissions, firstly, briefly refer to the various declarations lodged as evidence in this matter and secondly, also rather briefly, indicate the basis for the opposition grounds alleged. Those grounds are these:
(a)the invention claimed is prior published given the disclosure of the Cleaver brochures; and
(b)the invention claimed (whether or not it is anticipated by the Cleaver disclosure) is not a truly inventive combination and is obvious.
In respect of ground (b), reliance is placed on Dennis' evidence where he comments on the relative sizes of the jaw components of the claimed invention.
The submissions by the opponent's attorneys lodged on 20 December 1990 include the following points:
(c)the evidence adduced by the opponent establishes that the DUDLEY letter dated 20 June 1982 and brochures were received in Australia on 1 July 1982. The status of the company called DUDLEY has no bearing on the publication of the Cleaver 150R brochure;
(d)the "Prentice evidence appears to be suggesting that there has been a forgery of dates or something of that nature. However, the letter signed by Paul Treichel on behalf of Stemcor clearly establishes that the relevant letter was received by them on July 1, 1982. It is our suggestion that you are not allowed to draw any further conclusions from the materials on file"; and
(e)the evidence of "LaBOUNTY should be treated with the utmost caution" given a decision in relation to LaBOUNTY's corresponding US patent where LaBOUNTY was found to have "deliberately withheld information from the US Examiner".
Decision
In my view, the crucial issues to decide in this matter relate to the DUDLEY letter and the Cleaver brochures (see Mr Hess' submissions 1 and 2 above). In particular, if the evidence does not establish
(i)whether the DUDLEY letter was received in Australia in July 1982, or
what brochure or brochures were received in Australia before September 1982,
then the opponent's opposition on the grounds of prior publication and lack of novelty must fail. The claims have an earliest priority date of 13 September 1982, thus only published material available in Australia before that date can be considered in assessing those grounds.
As to the DUDLEY letter, the collective evidence relating thereto, whilst not necessarily conflicting, does raise some doubts as to its origin and alleged receipt in Australia by Mr Treichel on 1 July 1982. There are indeed two versions of the letter on file. Whilst no explanation for the different versions has been provided, it is conceivable that DUDLEY, in order to have a file copy of the original, actually had to retype it (perhaps they had no ready access to a photocopier). As to the DUDLEY company letterhead appearing on the letter, again no explanation has been provided, but it may have been created and used in anticipation of gaining company registration. On the other point regarding receipt of the letter in Australia on 1 July 1982, there is only the indirect reference by Mr Treichel in his letter (annexure LKA3) to "the said letter".
In general, I agree with Mr Hess' submissions regarding the DUDLEY letter. The absence of direct evidence from persons concerned with either the preparation and dispatch, or receipt of the letter, creates doubt as to the true position regarding the letter. As a consequence, it leaves me to decide as to its receipt in Australia by applying the standard of proof appropriate to these proceedings, that is, the civil standard of proof on the balance of probabilities (Dunlop Holdings Ltd's Application [1979] RPC 523). In my view, based on the material before me, that balance is slightly in favour of the opponent, and thus I conclude that the DUDLEY letter (copy at annexure LKA1) was received by Mr Treichel on 1 July 1982.
The second crucial issue concerns the brochures allegedly received with the DUDLEY letter. Mr Hess, in his submissions, accurately identified differences between the various Cleaver 150R and Cleaver 200 brochures lodged as evidence or provided to the Patent Office by DUDLEY independent of the opponent. These different versions of the brochures are all said to have accompanied the DUDLEY letter, the relevant version depending on the source of the evidence or material before me. That being the case, I am left without substantiated evidence concerning the brochures actually sent, or allegedly received in July 1982 with the DUDLEY letter.
There is a further point concerning the brochures and that is the following. On examining the various brochures, I cannot determine from them that it was more likely that, say, one version of the Cleaver 150R brochure accompanied the DUDLEY letter than another. In fact, on reviewing the various brochures and noting the material printed thereon including references to a UK pending patent number, company addresses and distributor details, and noting also Mr Hess' submissions and the copies of company records supplied by the applicant, to me the probability that any of these versions of the brochures may have accompanied the letter is low. Accordingly, I am not satisfied, given the evidence before me, that any of the brochures on file were received with the DUDLEY letter in July 1982, or for that matter were published in Australia prior to 13 September 1982.
In view of my finding immediately preceding, further consideration of the disclosure of the brochures and of matters raised in Mr Hess' submissions 3 and 4 is unnecessary. However, I observe that the brochures illustrate a shear device consisting of hydraulically actuated clamping jaws, the construction of which closely resembles that of the present invention.
Mr Hess correctly pointed out that in an opposition action, the onus rests with the opponent to provide evidence to support its alleged grounds of opposition, especially those concerning want of novelty or obviousness. I am mindful that the opponent, for whatever reason, chose not to lodge any evidence in reply, and did not attend the hearing. Nevertheless, the opponent has not been denied a reasonable opportunity to present its case. If there is doubt as to alleged facts in support of a ground of opposition, as I believe there is in this case, the applicant should receive the benefit of such doubt.
I have decided that the opponent has not established that any of the brochures showing Cleaver devices submitted in evidence were available and published (in the patent law sense) in Australia before the priority date of the claims of the opposed application. Furthermore, the opponent has not advanced any other material to support its opposition on the grounds of prior publication or lack of novelty, nor am I aware of any other material which may deprive the claims of novelty.
The opponent in its submissions, also alleges that the invention claimed is obvious. A consideration of the question of obviousness must be made against the background of the common general knowledge in the art in Australia at the priority date. In this case the evidence adduced does not establish the common knowledge in the art. Accordingly, I am unable to consider the obviousness ground further.
Conclusion
I have found that the opposition fails on all grounds relied upon by the opponent. Furthermore, I am satisfied that no other ground of opposition applies to the application and complete specification. Accordingly, I dismiss the opposition and direct that the application proceed to sealing, subject of course to any appeal which may be made.
I award costs against the opponent.
(T.R. BRUHN)
Supervising Examiner of Patents
Patent attorneys for the applicant: Watermark, Melbourne
Patent attorneys for the opponent : Kelvin Lord and Company, Perth
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